[GNSO-RPM-WG] Proposal re Q8.

Thu Oct 3 19:26:59 UTC 2019

Sorry, but this made me think about the Boy Scouts legislation under U.S.
law, see: https://www.law.cornell.edu/uscode/text/36/30905

The corporation has the exclusive right to use emblems, badges, descriptive
or designating marks, and words or phrases the corporation adopts. This
section does not affect any vested rights.

.....

So I think we just need to change “identified” with “referenced” because
identified is too specific. If the Boy Scout corporation adopts a new mark,
it will be protected as a trademark under U.S law, but that trademark is
not “identified” within the statue (depending on how strictly one
interprets “identified”), but it is “referenced” in the statute.

3.2.3 Any word mark protected by a statute or treaty in effect at the time
the mark is submitted to the Clearinghouse for inclusion, and which is
referenced within the Statute or Treaty as a mark that functions as a
trademark.

Hope you are still OK with this Rebecca? Thanks!

On Thursday, October 3, 2019, Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:

> Claudio's proposal would then read
> 3.2.3 Any word mark protected by a statute or treaty in effect at the time
> the mark is submitted to the Clearinghouse for inclusion, and which
> is identified within the Statute or Treaty as a mark that functions as a
> trademark
>
> I'm fine with that.  For comparison purposes, my proposed language (with
> bold indicating additions to current language) is:
>
> Any word marks *specified in and *protected by a statute or treaty *as
> trademarks* in effect at the time the mark is submitted to the
> Clearinghouse for inclusion.
>
> Relatedly, I got further information from Dev Gangjee (who studies GIs)
> and Robert Burrell (an expert on the Australian registration system), both
> of whom reported that GIs are listed with the TM offices with which they
> are familiar (in Australia wine GIs get special treatment), so unless
> Paul's proposal is also coupled with a "Notwithstanding the foregoing, no
> GIs," I don't think it would do the job that the consensus appears to want
> done.  For the reasons discussed on the call, I'm uncomfortable with a rule
> that appears to single out GIs for exclusion while allowing non-TM,
> non-GIs.
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> ------------------------------
> *From:* claudio di gangi <ipcdigangi at gmail.com>
> *Sent:* Thursday, October 3, 2019 1:15 PM
> *To:* Michael Graham (ELCA) <migraham at expediagroup.com>
> *Cc:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; Paul Tattersfield <
> gpmgroup at gmail.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* [GNSO-RPM-WG] Proposal re Q8.
>
> Michael,
>
> I agree with the points that Rebecca here, just noting that I believe the
> closest analogy is GIs function in a similar manner as certification or
> collective trademarks in the U.S.
>
> In fact, this is how I believe the USPTO sets forth that GIs are protected
> in the U.S as per the obligations the U.S has undertaken as a signatory of
> the international TRIPS agreement.
>
> Whereas, collective and certification marks are examined on absolute and
> relative grounds, GIs are protected through sui generis legislation (in
> believe in most cases, it’s possible they may be protected under common law
> in some jurisdictions but I’m not sure) - as certain trademarks like those
> protected by statue or treaty are sui generis in form.
>
> This is why I always felt that the TMCH Operator in good faith interpreted
> 3.2.3 to potentially allow GIs in the Clearinghouse, with all the
> qualifying language they added (such as “may be eligible” - I don’t think
> they ever stated “are eligible”), and we did not know if or any GIs are
> still recorded in the TMCH.
>
> In my personal view, (albeit, I am not an expert on GIs), I believe the
> number of countries that protect GIs has substantially increased since the
> First WIPO Process, providing more universality across the spectrum,
> compared to when this issue was initially considered by the international
> community under WIPO’s inclusive consultation on IP and DNS policy.
>
> In addition, I believe in most countries that protect GIs through sui
> generis legislation, a senior GI has priority over a later registered
> trademark for the same class of goods/services.
>
> But since trademarks are protected in every country worldwide through a
> combination of common law, statutory law, or constitutional law, I
> understand/support the perspective that Sunrise should take place first,
> based on that correspondence of global protection.
>
> The only incongruence that I can potentially see arising is if a junior
> trademark holder in a certain country uses Sunrise to register a domain
> during Sunrise when actually the GI rights holder in that country has
> senior or superior rights. For example, there is often litigation where a
> national (or district) court in a country will hold that the GI has
> priority over the junior mark in that country, even if the trademark was
> registered in good faith.
>
> Perhaps this can be addressed by having a provision in the SDRP policy for
> this very scenario (which registries may voluntarily choose to adopt), or
> we could consider adding it to the mandatory SDRP (but I defer to the
> Co-chairs and the WG).
>
> In other words, the objective is to match offline IP law with the DNS and
> the associated rules for allocating domain names, e.g. if the GI rights
> holder can provide a court decision to the TMCH Operator that demonstrates
> it has priority under the national law of its country against the junior
> mark holder in its country.
>
> Although, what may occur in practice is the court will require
> cancellation of the junior trademark, so I’m not sure it’s necessary. I
> defer to others who have substantive experience practicing law in this
> space, like Jonathan Agmon to help inform us with their perspective.
>
> Rebecca,
>
> We can remove source identifier from my definition if that makes you more
> comfortable; I don’t think it’s necessary to have it included in my 3.2.3.
> Is that satisfactory for you then to accept my definition?
>
> Best regards,
> Claudio
>
>
>
> On Tuesday, October 1, 2019, Michael Graham (ELCA) <
> migraham at expediagroup.com> wrote:
>
> Wondering out loud whether GIs are necessarily “source identifiers”.  My
> understanding is that they are identifiers of particular geographic
> locations, whereas trademarks are source identifiers.  GIs may be source
> identifiers, but to the extent they are then they would be considered
> trademarks.  So . . . am I missing something in the terminology?
>
>
>
> Michael R.
>
>
>
> [image: cid:image001.png at 01D49D39.23E390C0]
>
>
>
>
>
> *Michael R. Graham*
>
> Senior Counsel and Global Director,
>
> Intellectual Property, *Expedia Group*
>
> T +1 425 679 4330 | M +1 425 241 1459
>
> 333 108th Ave. NE | Bellevue | WA 98004
>
> Email: *migraham at expediagroup.com <migraham at expediagroup.com>*
>
>
>
>
>
> [image: cid:image002.png at 01D49D39.23E390C0]
>
>
>
> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Tushnet,
> Rebecca
> *Sent:* Tuesday, October 1, 2019 1:50 PM
> *To:* claudio di gangi <ipcdigangi at gmail.com>; Paul Tattersfield <
> gpmgroup at gmail.com>
> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>
>
>
> From my perspective, the key problem is that "source identifier"
> describes, among other things, GIs.  We can engage in special pleading
> against GIs and just carve them out, but I admit that leaves me a bit
> sour.  I also would note that the relevant statutes I've seen don't use the
> words "source identifier" either, so we are still shuffling off the
> interpretive weight to Deloitte.  (E.g., although the Red Cross also has TM
> registrations, the Red Cross US statute that has been mentioned in this
> discussion uses the word "use" to define one prohibited act, and "wears
> or displays ... for the fraudulent purpose of inducing the belief that he
> is a member of or an agent for the American National Red Cross" to define
> the other prohibited act.)
>
>
>
> For these reasons, I have come around to not wanting to add "source
> identifier" to the definition--I don't think it actually solves the problem
> and it might make things even less clear.  Other than that, I do think we
> have gotten a lot closer.
>
>
>
> 
>
>
>
>
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> ------------------------------
>
> *From:* claudio di gangi <ipcdigangi at gmail.com>
> *Sent:* Tuesday, October 1, 2019 4:11 PM
> *To:* Paul Tattersfield <gpmgroup at gmail.com>
> *Cc:* Tushnet, Rebecca <rtushnet at law.harvard.edu>; gnso-rpm-wg <
> gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>
>
>
> Paul,
>
>
>
> I agree with you; and you have spotted one of the areas of divergence
> between my proposal and Rebecca's.
>
>
>
> My proposal includes alternative language on this provision - that I
> believe addresses your point, but I am interested in your perspective.
>
> Best regards,
> Claudio
>
>
>
>
>
> On Tue, Oct 1, 2019 at 4:00 PM Paul Tattersfield <gpmgroup at gmail.com>
> wrote:
>
> Rebecca, I believe in 3.2.3 you should not add the words "as trademarks"
> as the marks concerned are not trademarks. For example once such 6ter marks
> are communicated to the USPTO and are accepted it is not possible for any
> organization to register a trademark containing the mark and importantly
> that includes the originating entity itself. Instead an 89 serial is
> created so the mark turns up in an examining attorney’s search etc.
>
> Best regards, Paul
>
>
>
>
>
>
>
> On Tue, Oct 1, 2019 at 8:04 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
> wrote:
>
> This is the same text but with the subject line proper.
>
>
>
>
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
>
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