[GNSO-RPM-WG] 3.2.4 transcript with ICANN General Counsel confirming status
Paul Tattersfield
gpmgroup at gmail.com
Wed Oct 16 22:28:27 UTC 2019
Rebecca, you asked for additional wording which I provided a couple of days
later http://mm.icann.org/pipermail/gnso-rpm-wg/2019-October/003981.html
*“… With the above in mind Rebecca, would the following additional
subsection be acceptable to your proposal? 3.2.3 (b)* Word marks of treaty
organizations protected under 6ter of the Paris Convention and notified to
a national trademark office [*Again section numbering and ordering can be
tidied later but the new subsection should be one that flows to 7.1 & 7.2
and the RPMs.]” *
Unfortunately I didn’t see a reply.
On Wed, Oct 16, 2019 at 10:51 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:
> It was my understanding, as I expressed on the call, that unanimity was
> not required for a consensus proposal. I understand Paul’s position and
> have responded on list in detail—to summarize, GIs often get notified to TM
> offices through a similar process to that described for IGOs, so language
> that lets the latter in for Notice and Claims will also let the former in
> unless there is a “notwithstanding” clause in the definition, which I don’t
> much like. But I thought we had decided to move forward.
>
> 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 5:21 PM, claudio di gangi <ipcdigangi at gmail.com>
> wrote:
>
> Paul,
>
> It looks like we are including some of the open issues in the Initial
> Report, seeking public comment, and then concluding work on them after we
> review the public comments.
>
> That’s the sense I’m getting - Julie or Co-Chairs, please correct me if I
> am mistaken.
>
> On Wednesday, October 16, 2019, Paul Tattersfield <gpmgroup at gmail.com>
> wrote:
>
>> Rebecca, last week you asked me for suggested wording to improve your
>> proposal an I suggested an amendment with detailed reasoning, unfortunately
>> I didn’t see a reply.
>>
>> It is not clear to me under which subsection a mark like UNHCR would
>> enter the TMCH under your proposal please can you explain under which
>> section it would be placed and the reasoning behind it,
>>
>> Many thanks, Paul
>>
>> On Wed, Oct 16, 2019 at 8:54 PM claudio di gangi <ipcdigangi at gmail.com>
>> wrote:
>>
>>> 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>
>>> 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 on behalf of 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> 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> 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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>>>
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