[GNSO-RPM-WG] Proposal re Q8.

Tue Oct 8 14:52:28 UTC 2019

Rebecca,

Thanks for the feedback; I have removed "referenced by" and "legally
recognized as" because 1) by removing, it makes the provision more
concise (which I tend to favor) and precise; and 2) I don't think it
changes the meaning of what we are attempting to clarify here.

Please see below, hope this is satisfactory. I added-in "service mark"
because I recall Greg mentioning that on our call two weeks ago for extra
clarity, but if we just want to say "trademark" I think its OK (as services
aren't referenced in 3.1.1 or 3.1.2..

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; the word mark
protected by statute or treaty must be a trademark/service mark.

On Mon, Oct 7, 2019 at 1:29 PM claudio di gangi <ipcdigangi at gmail.com>
wrote:

> Rebecca, all,
>
> I am making a final attempt below on 3.2.3; I think this version is more
> specific, condense, and in alignment with the original spirit of 3.2.3.
>
> I hope you find this language acceptable.
>
> If the WG isn't able to each consensus on the exact language on 3.2.3 for
> inclusion in the Initial Report, then I recommend we defer to staff and/or
> the IRT that will follow this PDP for developing more exact language.
>
> We have the option to simply put forward a general rule for public comment
> in the Initial Report, i.e. "GIs and Appellations of Origin do not qualify
> for TM Claims and Sunrise, unless those signs are independently registered
> as trademarks," in addition to the other set of provisions which we are
> generally aligned on w/r/t/ this subject matter, e.g. "there shall be no
> prohibition on using the same ancillary database for GIs across multiple
> new gTLDs, etc."
>
> ------
>
> 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; the word mark
> protected by statute or treaty must function as, or be legally recognized
> as, a trademark or service mark.
>
> ------
>
> Of course, I remain open to your thoughts and any additional input WG
> members may have. Thanks!
>
> Best regards,
> Claudio
>
>
>
>
> On Thu, Oct 3, 2019 at 3:26 PM claudio di gangi <ipcdigangi at gmail.com>
> wrote:
>
>> 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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