[GNSO-RPM-WG] Proposal re Q8.

Thu Oct 10 17:16:42 UTC 2019

‘specified in’ would be ok.Personally I wouldn't define trademark here.

On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:

> I could get comfortable with "specified in" but "established" seems wiggly
> to me--how would you feel about "specified in" instead? Relatedly, would
> you propose to not define trademark?  Given its use through the AGB, I'd
> still be in favor of a definition for greater certainty (understanding that
> we have a separate issue about the meaning of "word mark").
>
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> ------------------------------
> *From:* Paul Tattersfield <gpmgroup at gmail.com>
> *Sent:* Thursday, October 10, 2019 12:41 PM
> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>
> *Cc:* claudio di gangi <ipcdigangi at gmail.com>; Michael Graham (ELCA) <
> migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>
>
> We need a way to include marks like UNHCR because they are established
> under their own specific treaty (or convention). What we don’t want is for
> the language to be too loosely drawn so it inadvertently protects GIs etc.
> simply because they are protected collectively under the Paris Convention
> or TRIPS etc. Hence the words “established in”
>
> 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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
> wrote:
>
> I don't think I understand what your proposal is now.  Can you provide the
> language you think would exclude GIs but allow other non-trademarks?
>
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
> ------------------------------
> *From:* Paul Tattersfield <gpmgroup at gmail.com>
> *Sent:* Thursday, October 10, 2019 11:58 AM
> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>
> *Cc:* claudio di gangi <ipcdigangi at gmail.com>; Michael Graham (ELCA) <
> migraham at expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.
>
> 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
>
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