[GNSO-RPM-WG] Actions & Notes: RPM PDP WG Meeting 02 October 2019

[Julie Hedlund]

Dear All,

Please see below the action items captured by staff from the RPM PDP Working Group call held on 02 October 2019 at 17:00 UTC.  Staff have posted these to the wiki space.  Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-02+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG.

Best Regards,
Julie
Julie Hedlund, Policy Director

==

NOTES & ACTION ITEMS

Actions: Charter Q12: Staff to check with ICANN Org to see if there are data on outages of the TMCH.

Notes:

1. Updates to Statements of Interest: No updates provided.

2. Conclude discussion of proposals relating to Open TMCH Charter Questions:

a. Revised Proposal(s) re: Charter Question 7:

Proposal submitted by Greg Shatan for Q7<https://community.icann.org/download/attachments/109482780/Clean%20Version%20of%20Revised%20Q7%20Proposal%20Submitted%20by%20Greg%20Shatan.pdf?version=1&modificationDate=1570019781000&api=v2> (1 Oct 2019) (comparison version<https://community.icann.org/download/attachments/109482780/Comparison%20of%20Revised%20Proposal%20to%20Original%20Proposal.pdf?version=1&modificationDate=1570019803000&api=v2>) – Discussion postponed.

b. Revised Proposal(s) re: Charter Question 8:

Proposal submitted by Rebecca Tushnet for Q8<https://community.icann.org/download/attachments/109482780/proposal.pdf?version=1&modificationDate=1569963050000&api=v2> (1 Oct 2019)
-- Areas of disagreement – term “source identifier”, more detail and statutes or treaties, and ancillary services.
-- Re: “other IP” – On 3.2.4 – not sure the amendment is necessary, but no TMCH material where Deloitte does not make it clear that other marks are not included in the TMCH.
-- But main page seems to suggest that if you are in the TMCH you get Sunrise and Claims.  Could separate out from policy recommendation and text for AGB, but still noted.  Be clear about text that goes into the AGB and what is a policy recommendation.  What we obligate the TMCH provider to do could be noted for implementation.
-- Has the rather loose use of "marks" and "Trademarks" been addressed?  I would prefer use of some other term, like "designation", rather than "marks" if these are to be contrasted to "Trademarks".  Otherwise, and in common use, "marks" and "Trademarks" or used and considered synonyms.
-- The term “ancillary services” describes services that the TMCH might want to provide, but is subject to approval by ICANN in the contract.  With regard to all of the categories, they all go into TMCH and all are eligible for the TMCH and get the protections.  The “other marks” are included in the TMCH, but not for Sunrise and Claims.  So, marks that go into the Clearing House but are not otherwise eligible for RPMs.
-- Harmonizing the language used in the AGB could have policy implications.
-- Need to be clear that only things in the categories designated by the WG get Sunrise and Claims RPMs.
-- From TRIPS Art. 15(1): “Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs,
in particular words including personal names, letters, numerals, figurative elements and combinations
of colours as well as any combination of such signs, shall be eligible for registration as trademarks”.
-- Some obvious problems w/that one (it jumps us right back into word marks, and it is about what is capable of being a TM, which is not our issue--our issue is what is in a statute or treaty, including GIs)
-- The starting point for that category is that it must, first of all, be a “trademark” - so what Michael and others seem to be saying is that it may be helpful to at least have a pointer/description about what that word means.
-- Except it's not helpful for our purposes--I have proposed "trademark, service mark, collective mark, or certification mark" which gives guidance at the level necessary rather than for the more general theoretical question "what is capable of being a trademark"?
-- For proponents of the TRIPS definition: do you intend to include GIs? If not, how do you intend to exclude them?

Proposal submitted by Claudio DiGangi<https://community.icann.org/download/attachments/109482780/Question%208%20Proposal%20on%20GIs.docx?version=1&modificationDate=1569962980000&api=v2> for Q8 (1 Oct 2019)
-- Continue discussion at the next meeting.

3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions):

TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13
-- Could we count as benefit the situation where the probability that two TMCH providers are down the same time is lower than the single one (given historical exp.)?
-- Request from ICANN the periods of unavailability of the TMCH.
ACTION: Staff to check with ICANN Org to see if there are data on outages of the TMCH.

TMCH Category 5: Access & Accessibility: Charter Question 15 – Proposal submitted by Michael Karanicolas for Q15<https://community.icann.org/download/attachments/109482780/Transparency%20Proposal%20Rev.docx?version=1&modificationDate=1569963124000&api=v2> (1 Oct 2019)
-- This was heavily discussed in the development of the TMCH because opening the TMCH would give a glimpse into a company’s business strategy.
-- There was a proposal in the Sunrise Sub Team recommendation that a search could be allowed if there was sufficient rationale, on a case-by-case basis.  (John McElwaine and Kathy Kleiman draft).
-- Not clear that there will be agreement in the WG on this proposal.
-- Could put it out for public comment in absence of agreement.
-- Could the TMCH be quasi open?  Where access can be achieved under a certain process.
-- Open TMCH could aid both TM owners and potential registrants, reducing cost burdens.
-- QUESTION: Will the fact that some jurisdictions do not have a “use” requirement to register a TM affect the question of openness of the TM database?
-- Talking about disclosure of business strategies to their competitors; from the EU side there are very different competition and TM rules.
-- Could include in the Initial Report for public comment with both sides presented.

4. AOB: Schedule meeting week of 07 October to Thursday, 10 October at 17:00 UTC due to conflicts.
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