[GNSO-RPM-WG] Proposal re Q8.

Thu Oct 10 14:52:34 UTC 2019

Paul T.,

Thanks for this; have you been able to sort out the question about the
overall uniformity of this approach?

Unfortunately, 3.2.3 has to be a one-size-fits-all rule that covers every
jurisdiction worldwide.

Finally, if you see any shortcomings on the new text that Rebecca and I
settled on earlier this week, please let us know. I think it accomplishes
the goal without implicating the various practices of the TMOs, but of
course I am interested in your views.

Best regards,
Claudio

On Thursday, October 10, 2019, Paul Tattersfield <gpmgroup at gmail.com> wrote:

> told officially
>
> On Thu, Oct 10, 2019 at 2:46 PM McGrady, Paul D. <PMcGrady at taftlaw.com>
> wrote:
>
>> Thanks Paul T.
>>
>>
>>
>> What does “notified to” mean?
>>
>>
>>
>> Best,
>>
>> Paul
>>
>>
>>
>>
>>
>>
>> This message may contain information that is attorney-client privileged,
>> attorney work product or otherwise confidential. If you are not an intended
>> recipient, use and disclosure of this message are prohibited. If you
>> received this transmission in error, please notify the sender by reply
>> e-mail and delete the message and any attachments.
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Paul
>> Tattersfield
>> *Sent:* Thursday, October 10, 2019 8:36 AM
>> *To:* claudio di gangi <ipcdigangi at gmail.com>
>> *Cc:* gnso-rpm-wg <gnso-rpm-wg at icann.org>
>> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>>
>>
>>
>> Hi All. Sorry for the delayed response, would this solve the problem?
>> Best regards, Paul.
>>
>> 3.2.3 Any word mark notified to a national trademark office established
>> in and protected by statute or treaty in effect at the time the mark is
>> submitted to the Clearinghouse for inclusion
>>
>>
>>
>> On Tue, Oct 8, 2019 at 5:54 PM claudio di gangi <ipcdigangi at gmail.com>
>> wrote:
>>
>> Rebecca,
>>
>>
>>
>> That's great, I am happy that you support this
>> revised language (personally, I am fine with removing 'service mark' as I
>> do not see that causing a problem, as it has not been an issue to date).
>> Since I feel this is the most precise text developed to date, let's stay
>> with this going forward (see below).
>>
>>
>>
>> 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.
>>
>>
>>
>> On your other feedback, I did not mean to imply your agreement on 3.2.3
>> impacts the other elements in your proposal; but simply that we
>> combine the areas where we agree, e.g. there should be no bar on ancillary
>> services, etc., and then parse out the other areas for consideration.
>>
>>
>>
>> I believe that is exactly how the consensus-building process is intended
>> to function.
>>
>>
>>
>> From my point of view, an exception to this general rule is the specific
>> case of when the aspects of a particular proposal are so inter-related
>> that they form a package of policy recommendations that can not be
>> untethered, e.g. a "unitary proposal".
>>
>>
>>
>> Or if someone compromises on an issue they believe is critical, I don't
>> think it's fair to then turn around and say "OK you compromised on this
>> important area, so we'll count you in on the compromise but discard the
>> rest of your ideas."
>>
>>
>>
>> I'm glad we were able to make further progress before our call on
>> Thursday.
>>
>>
>>
>> Best regards,
>>
>> Claudio
>>
>>
>>
>>
>>
>> On Tue, Oct 8, 2019 at 11:21 AM Tushnet, Rebecca <
>> rtushnet at law.harvard.edu> wrote:
>>
>> To be clear, my proposal, which is still my proposal, defines trademark
>> to include service marks, collective marks, and certification marks. I
>> believe it makes more sense to do so in a footnote that covers the entire
>> section 3 than in this subsection. I am happy to use the language you
>> proposed several days ago for 3.2.3, or this (I’d remove service mark given
>> the overall definition) but I am not withdrawing the overall proposal.
>>
>> Rebecca Tushnet
>>
>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>>
>>
>>
>> Sent from my phone. Apologies for terseness/typos.
>>
>>
>>
>> On Oct 8, 2019, at 10:52 AM, claudio di gangi <ipcdigangi at gmail.com>
>> wrote:
>>
>> 
>>
>> 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
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_uscode_text_36_30905&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=AB-OFCOWkNtMN0rGQpsDXsXljiOXE-4OgNXtMdPp9lA&s=N6x8UPsvMdhkmJxwLwIOP6wkHxGQiGzWyNVc7CYO6EI&e=>
>>
>>
>>
>> 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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