[GNSO-RPM-WG] Proposal re Q8.

Thu Oct 10 15:58:19 UTC 2019

I was under the impression they are established by register (DOOR etc)
rather than by established specifically [with]in a statute. If this is not
the case then we probably need to split 3.2.3 into 3.2.3 (a) statute &
3.2.3 (b) treaty (We can tidy the numbers later of course).

On Thu, Oct 10, 2019 at 4:42 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:

> No, because GIs appear to be formally submitted to a number of TM offices
> worldwide. As I’ve said, to do this would either admit a bunch of GIs or
> require “notwithstanding” language.
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
>
> Sent from my phone. Apologies for terseness/typos.
>
> On Oct 10, 2019, at 9:36 AM, Paul Tattersfield <gpmgroup at gmail.com> wrote:
>
> 
> 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
>>>>>>
>>>>>> _______________________________________________
>>>>>> GNSO-RPM-WG mailing list
>>>>>> GNSO-RPM-WG at icann.org
>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=>
>>>>>> _______________________________________________
>>>>>> By submitting your personal data, you consent to the processing of
>>>>>> your personal data for purposes of subscribing to this mailing list
>>>>>> accordance with the ICANN Privacy Policy (
>>>>>> https://www.icann.org/privacy/policy
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>)
>>>>>> and the website Terms of Service (https://www.icann.org/privacy/tos
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>).
>>>>>> You can visit the Mailman link above to change your membership status or
>>>>>> configuration, including unsubscribing, setting digest-style delivery or
>>>>>> disabling delivery altogether (e.g., for a vacation), and so on.
>>>>>>
>>>>>> _______________________________________________
>>>>>> GNSO-RPM-WG mailing list
>>>>>> GNSO-RPM-WG at icann.org
>>>>>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=>
>>>>>> _______________________________________________
>>>>>> By submitting your personal data, you consent to the processing of
>>>>>> your personal data for purposes of subscribing to this mailing list
>>>>>> accordance with the ICANN Privacy Policy (
>>>>>> https://www.icann.org/privacy/policy
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>)
>>>>>> and the website Terms of Service (https://www.icann.org/privacy/tos
>>>>>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>).
>>>>>> You can visit the Mailman link above to change your membership status or
>>>>>> configuration, including unsubscribing, setting digest-style delivery or
>>>>>> disabling delivery altogether (e.g., for a vacation), and so on.
>>>>>>
>>>>>>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20191010/3e66e118/attachment-0001.html>