[GNSO-RPM-WG] [Ext] Re: 3.2.4 transcript with ICANN General Counsel confirming status

Wed Oct 16 20:03:32 UTC 2019

Claudio,

It was Rebecca’s revised proposal (submitted on 10 October<https://community.icann.org/display/RARPMRIAGPWG/TMCH+Proposals?preview=/109482780/119899179/Rebecca%20Tushnet%20Proposal%20-%20Q8%20-%2010%20Oct%202019.pdf>) as worked out with you and others, and then also the discussion about moving the language in 3.2.4 elsewhere in the AGB.  However, in capturing the exact language on the second item staff will first need to review the transcript, recording, and chat room at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-10+Review+of+all+Rights+Protection+Mechanisms+%28RPMs%29+in+all+gTLDs+PDP+WG.

Kind regards,
Julie

From: claudio di gangi <ipcdigangi at gmail.com>
Date: Wednesday, October 16, 2019 at 3:54 PM
To: Julie Hedlund <julie.hedlund at icann.org>
Cc: "Tushnet, Rebecca" <rtushnet at law.harvard.edu>, Paul Tattersfield <gpmgroup at gmail.com>, "J. Scott Evans via gnso-rpm-wg" <gnso-rpm-wg at icann.org>
Subject: [Ext] Re: 3.2.4 transcript with ICANN General Counsel confirming status

I missed the first ten minutes of the call. It’s not clear to me what final language was settled upon, can someone clarify this?

Thanks

Best regards,
Claudio

On Wednesday, October 16, 2019, Julie Hedlund <julie.hedlund at icann.org<mailto:julie.hedlund at icann.org>> wrote:
Correct Rebecca.  Per the WG agreement on the call today, this item is closed.

Best,
Julie

On 10/16/19, 3:41 PM, "GNSO-RPM-WG on behalf of Tushnet, Rebecca" <gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> on behalf of rtushnet at law.harvard.edu<mailto:rtushnet at law.harvard.edu>> wrote:

    My understanding was that this was closed per our discussion on the call. Can Chairs or staff provide guidance? Claudio’s message came in during the call for me.

    Rebecca Tushnet
    Frank Stanton Professor of First Amendment Law, Harvard Law School

    Sent from my phone. Apologies for terseness/typos.

    > On Oct 16, 2019, at 1:43 PM, Paul Tattersfield <gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>> wrote:
    >
    > Claudio, Thank you for the archive link. Under Rebecca’s and your
    > proposal, including these latest thoughts on section 3.2.4, which
    > section do you feel a mark like UNHCR would be entered in under the
    > proposal/recommendation?
    >
    >> On 10/16/19, claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>> wrote:
    >> All,
    >>
    >> I am very happy that ICANN is transparent and transcribes is meetings,
    >> which is particularly essential in this fluid and complex environment.
    >>
    >> Since I was involved in the ICANN committee that developed the proposal for
    >> the Trademark Clearinghouse, which was called the IP Clearinghouse, I have
    >> known from the start that the concept of allowing other forms of IP in the
    >> Clearinghouse was always part of the concept, because there was always
    >> broad agreement that the ICANN-imposed Mandatory RPMs, were the ceiling and
    >> not the floor.
    >>
    >> The new gTLD Registry controls the allocation of all domain names within
    >> its TLD, and can therefore establish voluntary mechanisms, consistent with
    >> local laws, to protect consumers from confusion and harm from malicious
    >> actors.
    >>
    >> Since the Clearinghouse database is just an administrative tool to support
    >> the implementation of these mechanisms, both mandatory and voluntary, there
    >> was never a reason to exclude certain forms of IP in the Clearinghouse for
    >> the sole purpose of supporting the voluntary RPMS that a specific Registry
    >> may adopt.
    >>
    >> We have reached consensus on this point, in particular through the
    >> ancillary database concept, but have gotten snagged on the wording of
    >> particular provisions, including 3.2.3 and 3.2.4
    >>
    >> Section 3.2.4 currently states: "Other marks that constitute intellectual
    >> property" - and this category: 3.2.4 - is NOT for the mandatory Sunrise or
    >> Claims period, but for voluntary registry-specific RPMs.
    >>
    >> I located the transcript from the ICANN meeting when the Applicant
    >> Guidebook was essentially completed; it had reach the near final stage.
    >>
    >> 3.2.4 was specifically discussing during this meeting; the confusion with
    >> the language was identified (and it was even predicted that it was going to
    >> cause confusion) and ICANN staff and General Counsel agreed that 3.2.4
    >> extended to other forms of IP beyond trademarks. In other words, we have
    >> been confused on this clause simply because of imprecise drafting of this
    >> provision.
    >>
    >> Please see the transcript here: https://urldefense.proofpoint.com/v2/url?u=https-3A__archive.icann.org_en_&d=DwIGaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=adDIs0WEx_lLwFfrsdovxTYY8GkRHo5ibc8SR3Npdh8&m=dMQQGBWfWo48zFbvOyLacmM0-clVWIm-GBUZA-g1PQ0&s=JxrlTJQ81REjQU12K21t83qqhIWNXo70RXqH8jzRNtQ&e=
    >> meetings/singapore2011/bitcache/Trademark%20Clearinghouse%20Implementation%20Plan-vid=26005&disposition=attachment&op=download.txt
    >>
    >> I am quoting the relevant section:
    >>
    >> "J. Scott Evans: Another comment to Amy. Amy, I think that the guidebook's
    >> use of "other marks" confusing, and that needs to be changed to "other
    >> indicia," because we're already talking about marks in trademarks, and if
    >> you just make that
    >> one change, because I think the idea is there are other indicia other than
    >> trademarks that might be protected by the local registry, and we just need
    >> to make that clear.  Because I think there's some confusion, well, if
    >> trademarks are here, what are other marks.
    >>
    >>>> AMY STATHOS:  Right.  And with respect to the assignment issue, sometimes
    >> the database that has the assignment documents may be different than the
    >> actual database that has the actual registration, so looks like it's
    >> something that --
    >>
    >> -------
    >>
    >> So 3.2.4. was always intended to allow other forms of IP to be recorded in
    >> the main TMCH database for implementation of voluntary Registry-specific
    >> voluntary RPMs. I hope this closes the debate on 3.2.4. and here is my
    >> proposed modification to bring clarity to its meaning:
    >>
    >> "3.2.4 Other Signs or Indicia that constitute intellectual property"
    >>
    >> Best regards,
    >> Claudio
    >>
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