[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

Fri Apr 7 05:19:12 UTC 2017

It's important to keep in mind that the rights set forth in the UDHR are
interrelated and interdependent, so understanding the applicability of any
one Article also requires understanding the applicability of the other
rights in the UDHR, including some which may be countervailing to others.
Looking at Article 19 in isolation is "cherrypicking."  A recent CircleID
article by John Levine is quite enlightening on this very point:
http://www.circleid.com/posts/20170401_human_rights_and_regular_internet_users/

The article is short, but for those who don't get there, this quote goes to
the heart of the matter: "it devalues the whole topic of human rights to
pay attention only to a few fashionable rights, while ignoring ones that
are at least as important in people's daily lives."

(It should also be noted that the UDHR, while adopted by the United Nations
and widely used, does not constitute some form of "universal law" nor is it
universally accepted.)

The case mentioned, *Gibson v. Texas*, has portions that are directly
applicable to the discussion at hand.  However, the Gibson decision
actually distinguishes cases involving trademarks from the situation in
that case.  As a matter of fact, the Gibson case tells us that *there are
at least two types of domain names that do not constitute speech protected
by the First Amendment: domain names that infringe trademarks, and domain
names that do not constitute "expressive speech."*

(In other words, there can be no "freedom of expression" issue when the
speech is not expressive.)

Before getting to an excerpt from the case, it's important to note that the
court did not find that domain names are speech, much less find that domain
names are speech protected by the First Amendment.  The court made no
findings about all domain names.  Rather, the court assumed, for the
purpose of considering a motion to dismiss, that the domain name in
question (texasworkerscomplaw.com) constituted commercial speech.  It's
also important to note that the case involved the Constitutionality of a
law that broadly prohibited the use of the terms "Texas" and "workers
comp," and not a trademark infringement matter.

The excerpt is quite instructive:

In order for speech to fall outside of the First Amendment’s protection,
the speech must either be “inherently likely to deceive,” or “the record
[must] indicate[] that a particular form or method of advertising has in
fact been deceptive.” *R.M.J.*, 455 U.S. at 202.

Appellees primarily argue that the Texas statute is constitutional because
Gibson’s domain name amounts to inherently misleading speech. In support of
this proposition, they cite to a series of cases in which *courts have held
that domain names that use trademarks to misidentify the source of a
product are outside the reach of the First Amendment.* The case law cited
by Appellees, however, is unique to the field of trademark infringement,
see, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), and does
not necessarily extend to a case such as this one, where Texas is
prohibiting Gibson from using words that are otherwise in the public domain.
[1] <#_ftn1>* Cases involving trademark infringement involve inherently
deceptive speech because they contain a significant risk that an infringing
party will freeload on the goodwill that has been created by the original
trademark.* See Friedman, 440 U.S. at 11-16. No such risk is present here.
Texas has made no showing that its own talents and energy contributed to
the creation of any goodwill in the name “texasworkerscomplaw.com.” See San
Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522,
533-34 (1987). Instead the regulation at issue is forward-thinking;
intended to prohibit confusion for individuals seeking information from the
government agency. It is not retrospective in the same way as most
trademark litigation, which is generally intended to preserve the
reputation that has been built upon a trade name. See Friedman, 440 U.S. at
11-16. Accordingly, the case law cited by Appellees is inapposite.

------------------------------

[1] <#_ftnref1> *In most of the cases cited by Appellees the domain name
was actually held not to be protected speech because it was not expressive,
not because it was misleading. *See, e.g., Planned Parenthood Fed’n of Am.
v. Bucci, No. 97-cv-0629, 1997 WL 133313, at *10-11 (S.D.N.Y. Mar. 24,
1997); Morrison & Foerster, LLP v. Wick, 94 F.Supp. 2d 1125, 1135 (D. Colo.
2000); Jews for Jesus v. Brodsky, 993 F.Supp. 282, 286 n.1 (D.N.J. 1998).
Here, in contrast, Gibson’s domain name is expressive because it does more
than simply mimic the state agency’s website or identify a source of Texas
Workers’ Compensation Law. See Planned Parenthood, 1997 WL 133313, at *11.
The domain name is intended to direct visitors to a forum for discussing
workers’ compensation laws and their potential reform, as well as to convey
to visitors the message of Gibson’s website as a whole. Accordingly, in the
context of this case, the domain name is “‘sufficiently imbued with the
elements of communication’” to place it in the realm of expressive speech.
Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir.
2000) (quoting Spence v. Washington, 418 U.S. 405, 409-10 (1974)).

Greg Shatan

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com

On Thu, Apr 6, 2017 at 10:58 PM, Michael Karanicolas <mkaranicolas at gmail.com
> wrote:

> It's an interesting question. Different national courts have handled
> the issue in different ways. In the US, for example, the Fifth Circuit
> Court of Appeals found in Gibson v. Texas that domain names are
> protected as speech under the 1st amendment. But freedom of expression
> in the US context tends to be understood differently than elsewhere,
> since the way it's protected under the US constitution is a bit
> different from how most constitutions frame their equivalent
> protections.
>
> That said - when you're asking about Article 19, the discussion comes
> at the international level where, as far as I know, there's no single
> authoritative treatment to point to. Generally, discussions of Article
> 19 by standard setting bodies tend to focus on the sharper and more
> controversial issues: hate speech, defamation, national security
> restrictions, etc.
>
> However - there's a clear and well developed test for restrictions on
> freedom of expression that's built right into the ICCPR, and which
> applies equally to all restrictions, namely that they should be: (1)
> provided by Law (which includes a requirement for clarity and
> transparency), (2) fulfill a legitimate purpose, and (3) be necessary
> and proportionate to the achievement of that goal. If we establish
> that domain names qualify as speech under Article 19 (which, according
> to UN Human Rights Committee in Ballantyne, Davidson & McIntyre v.
> Canada, is a fairly sure interpretation), then understanding the
> applicability of Article 19 just means understanding that three part
> test.
>
> If you want more info, I'd recommend this briefing note as a useful
> (and concise!) introduction to restrictions on freedom of expression
> under Article 19:
> http://www.law-democracy.org/live/wp-content/uploads/2015/
> 02/foe-briefingnotes-2.pdf
>
> Or if you want to go into a little more depth, you can check out this
> one: http://www.law-democracy.org/live/wp-content/uploads/2012/
> 08/Paper-on-Restrictions.10.03.22.rev_.pdf
>
> Unfortunately - neither is specifically about domain names, but the
> discussion is basically analogous to how we understand other kinds of
> restrictions and protections.
>
> On Thu, Apr 6, 2017 at 6:50 PM, Michael Graham (ELCA)
> <migraham at expedia.com> wrote:
> > Michael:
> >
> > Where can I find a discussion how Article 19 and similar "Freedom of
> Expression" requirements relate to or impact the registration of domain
> names?
> >
> >
> > Michael R.
> >
> > Article 19.
> >  Everyone has the right to freedom of opinion and expression; this right
> includes freedom to hold opinions without interference and to seek, receive
> and impart information and ideas through any media and regardless of
> frontiers.
> >
> > -----Original Message-----
> > From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] On Behalf Of Michael Karanicolas
> > Sent: Thursday, April 06, 2017 5:53 AM
> > To: J. Scott Evans <jsevans at adobe.com>
> > Cc: gnso-rpm-wg at icann.org
> > Subject: Re: [gnso-rpm-wg] Action Items, Slides and Notes from the
> Working Group call held earlier today
> >
> > Once again - I have to jump in. Freedom of expression is very much a
> universal concept:
> >
> > http://www.un.org/en/universal-declaration-human-rights/
> > http://www.ohchr.org/EN/ProfessionalInterest/Pages/CCPR.aspx
> >
> > That's why we call them "human" rights. Not "American" rights.
> >
> >
> > On Thu, Apr 6, 2017 at 9:49 AM, J. Scott Evans via gnso-rpm-wg <
> gnso-rpm-wg at icann.org> wrote:
> >> The law is clear: an exact match isn't free speech. It is trademark
> infringement. A domain that coveys a message (e.g., hotels suck.com) is
> free speech and protected accordingly. Also, "free speech" is a US
> constitutional concept adopted by some countries, but it is not a universal
> legal concept. Perhaps universal free speech is aspirational, but it is not
> reality.
> >>
> >> Sent from my iPhone
> >>
> >>> On Apr 6, 2017, at 5:44 AM, George Kirikos <icann at leap.com> wrote:
> >>>
> >>> I'm not sure where J. Scott is getting his "facts", but my company
> >>> doesn't "arbitrage" nor has it registered *any* new gTLD domain names
> >>> (and I have no desire for any), nor is it a "bad actor." If you have
> >>> proof that my company is a "bad actor", put it forward, rather than
> >>> sling unsupported innuendo.
> >>>
> >>> The whole point is that the "barriers" are put forth as *required* to
> >>> deal with so-called "bad actors", but are instead used to advantage
> >>> certain groups, far beyond the "damage" that is claimed to be caused
> >>> by the "bad actors."
> >>>
> >>> I don't want to delve into politics, but some might see parallels to
> >>> certain government measures in some countries, where a "problem" is
> >>> claimed, but a Draconian solution is applied to deal with it.
> >>>
> >>> When it comes to the sunrise periods for new gTLDs, the "problem" is
> >>> claimed to be cybersquatting, but instead of relying on curative
> >>> rights, the Sunrise policy went too far and gave too many advantages
> >>> to TM holders, essentially creating an unlevel playing field between
> >>> *good actors* and TM holders.
> >>>
> >>> Free speech means *no prior restraints* (with very rare exceptions),
> >>> but harsh penalties for unlawful speech (curative rights).
> >>>
> >>> https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.
> >>> law.cornell.edu%2Fwex%2Fprior_restraint&data=02%7C01%7C%7C811dc6e8437
> >>> 245583fce08d47cea9d30%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C63
> >>> 6270794483518369&sdata=IyEiG%2FsY%2BTgJkYPGzDiGtCEbfBWA4SVgJ4g%2FOWfC
> >>> H7s%3D&reserved=0
> >>>
> >>> Sincerely,
> >>>
> >>> George Kirikos
> >>> 416-588-0269
> >>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.l
> >>> eap.com%2F&data=02%7C01%7C%7C811dc6e8437245583fce08d47cea9d30%7Cfa7b1
> >>> b5a7b34438794aed2c178decee1%7C0%7C0%7C636270794483518369&sdata=6BJPNx
> >>> olmCYrJK3jZ5%2B7ZFJhorIvFPrA11%2FRit4QYdY%3D&reserved=0
> >>>
> >>>
> >>>> On Thu, Apr 6, 2017 at 8:08 AM, J. Scott Evans <jsevans at adobe.com>
> wrote:
> >>>> The same logic applies to you and other domaines, cybersquatters,
> speculators and small businesses. The fact that you want to arbitrage in
> terms that are also trademarks is your choice and you have to deal with the
> barriers put in place to deal with the bad actors.
> >>>>
> >>>> Sent from my iPhone
> >>>>
> >>>>> On Apr 6, 2017, at 4:59 AM, George Kirikos <icann at leap.com> wrote:
> >>>>>
> >>>>> Hi folks,
> >>>>>
> >>>>>> On Thu, Apr 6, 2017 at 4:19 AM, Beckham, Brian <
> brian.beckham at wipo.int> wrote:
> >>>>>> Finally, since the chart references the EFF letter, it is worth
> >>>>>> mentioning here that the fact that a trademark owner may pay
> >>>>>> (sometimes extremely high
> >>>>>> amounts) to defensively register a domain name exactly matching
> >>>>>> its trademark in a Sunrise process (and thereby taking it “off the
> >>>>>> market”) does not prevent free expression, which may be undertaken
> >>>>>> in countless other ways.  The number of terms that may be appended
> >>>>>> to a trademark (not to mention typos) to engage in all manner of
> >>>>>> speech – fair or otherwise – is, practically-speaking, all but
> limitless.
> >>>>>
> >>>>> By that "logic", the number of terms that may be appended to a
> >>>>> common dictionary word (not to mention typos) to create a
> >>>>> trademarkable brand is, practically-speaking, all but limitless.
> >>>>> :-)
> >>>>>
> >>>>> In other words, those creating a new brand/trademark certainly had
> >>>>> the opportunity to create a longer (and thus inferior) alternative
> >>>>> to a commonly used dictionary word or other common term. The fact
> >>>>> that they decided instead to choose a common term that is widely
> >>>>> used by the public shouldn't give them any priority access in a
> >>>>> launch of a new gTLD.
> >>>>>
> >>>>> "I created a problem for myself, and I want ICANN to fix it" is the
> >>>>> essence of the sunrise argument for commonly used terms, like
> >>>>> dictionary words and short acronyms.
> >>>>>
> >>>>> Sincerely,
> >>>>>
> >>>>> George Kirikos
> >>>>> 416-588-0269
> >>>>> https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww
> >>>>> .leap.com%2F&data=02%7C01%7C%7C2b7c1e08334543cacbff08d47ce46e63%7Cf
> >>>>> a7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636270767931993418&sdata=
> >>>>> 6px9twhTFpg2YYaKWPoClt%2FQGQKnakm1jerYcSj%2F2w0%3D&reserved=0
> >>>>> _______________________________________________
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