[GNSO-RPM-WG] Q#8
Kathy Kleiman
kathy at kathykleiman.com
Wed Sep 18 16:33:07 UTC 2019
Claudio and All,
For those who may not be able to follow all of the messages, could you
send a full set of what you are thinking of for new language/Q#8? At
least two Pauls have commented, so I am not sure what you are
referencing. Having it all in one place would be useful.
Tx, Kathy
<<Rebecca, all,
>
> I support John's proposal below as the simplest approach, with Paul's
> language about 3.2.4 being the qualifying text for the inclusion of
> GIs, along with a provision this IP database will be centralized for
> all new gTLD registries.
>
> Rebecca - you asked about the supporting rationale in a recent note,
> so I would like to address your question.
>
> The purpose is to avoid creating a scenario of having 300 (or pick
> some number) of ancillary databases, each requiring separate
> submissions and validations. Again, I say this because Mary
> confirmed that currently the ancillary database concept is
> registry-specific. The main TMCH is not registry-specific, all new
> gTLD registries connect to the database in a unified manner.
>
> For the sake of providing examples, <.tea> launches as a new gTLD in
> the next round; that registry will need to expend time and resources
> to collaborate with Deloitte to establish a new ancillary database,
> and the regional authority/producers of DARJEELING TEA, (under the
> current model) would be required to submit the GI registration to the
> ancillary database of <.tea> and have it validated at that time.
>
> In the same round, <.चाय> launches ("tea" in the Hindi script - a
> language spoken in India, as an IDN), the current model requires
> this same (or different) registry operator to create another new
> ancillary database, with new submissions of registrations,
> additional validations, etc.
>
> <.drinks>, <.beverages>, <.web>, <.internet>, etc.. the list goes on
> and on, for every new gTLD there has to be separate ancillary
> databases. Each registry and registrar will then have to allocate
> resources to promote the registry-specific database to IP owners
> around the world, and connect to the database from a technical level.
> I can only imagine the confusion and unnecessary costs that this
> approach would impose on contracted parties and the public.
>
> It would also defeat the purpose and benefit of a having a
> centralized, unified system that simplifies recordation and
> validation from both an administrative and technical basis for all
> parties.
>
> The Limited Registration Period is an existing RPM that functions
> similar to Sunrise, but takes place after the Sunrise Period, during
> which time these 3.2.4. marks can be protected. Since it is already
> permitted, I propose that we specify there is a voluntary option for a
> IP Claims notice for these 3.2.4 marks (identical to the TM Claims
> notice, i.e. using the same language).
>
> These are completely voluntary RPMs for contracted parties -
> especially, for those that operate in jurisdictions where GIs are
> protected under local laws, and/or for those which decide to take
> proactive measures to prevent abusive registrations in their TLD(s) to
> have a safe namespace for their users. Since registries are already
> allowed to create voluntary RPMs, the proposal is based on improving
> things from a technical and administrative basis, in a manner that is
> fully consistent with the law, and with the overall goal of protecting
> consumers and promoting trust in new gTLDs.
>
> Finally, as Brian noted there is an existing database of GIs, managed
> by OriGin, which Deloitte/IBM can interface with to help simplify the
> process, which is an idea we can include for public comment in
> association with the main recommendation.
>
> All we need to do is agree that this approach makes sense from a
> policy perspective, and the IRT that follows this PDP can develop the
> appropriate implementation procedures to put everything into place.
>
> Please let me know of any questions.
>
> Best regards,
> Claudio
>
>
>
> On Tue, Sep 17, 2019 at 5:23 PM John McElwaine
> <john.mcelwaine at nelsonmullins.com
> <mailto:john.mcelwaine at nelsonmullins.com>> wrote:
>
> I would propose simplifying this a bit. The issue that we have is
> that Deloitte should not be placing “other marks that constitute
> intellectual property” in the “Clearinghouse”. The Trademark
> Clearinghouse is more than just to service Sunrise and Claims
> services. See AGB TMCH Section 1.2 (“The Clearinghouse will be
> required to separate its two primary functions: (i) authentication
> and validation of the trademarks in the Clearinghouse; and (ii)
> serving as a database to provide information to the new gTLD
> registries to support pre-launch Sunrise or Trademark Claims
> Services. Whether the same provider could serve both functions or
> whether two providers will be determined in the tender process.”)
> Unfortunately, Section 3.2 muddies the waters and lists “other
> marks” as being capable of inclusion “in the Clearinghouse”.
>
> However, the purpose behind Section 3.2.2 is provided a bit more
> light in Section 3.6: “Data supporting entry into the
> Clearinghouse of marks that constitute intellectual property of
> types other than those set forth in sections 3.2.1-3.2.3 above
> shall be determined by the registry operator and the Clearinghouse
> based on the services any given registry operator chooses to
> provide.” With respect to such other IP, the “Trademark
> Clearinghouse Service Provider may provide ancillary services, as
> long as those services and _any data used for those services are
> kept separate from the Clearinghouse database_.”
>
> Thus, as I mentioned on the call, a simple solution is that we
> recommend “other marks that constitute intellectual property
> (under 3.2.2 and 3.6)” currently in the Trademark Clearinghouse
> must be placed into a separate ancillary database by the operator
> and not in the Trademark Clearinghouse.
>
> John
>
> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org
> <mailto:gnso-rpm-wg-bounces at icann.org>> *On Behalf Of *Tushnet,
> Rebecca
> *Sent:* Tuesday, September 17, 2019 4:24 PM
> *To:* claudio di gangi <ipcdigangi at gmail.com
> <mailto:ipcdigangi at gmail.com>>; Corwin, Philip
> <pcorwin at verisign.com <mailto:pcorwin at verisign.com>>
> *Cc:* gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> *Subject:* Re: [GNSO-RPM-WG] Q#8
>
> *◄External Email►*- From: gnso-rpm-wg-bounces at icann.org
> <mailto:gnso-rpm-wg-bounces at icann.org>
>
> I'm still quite factually confused by this proposal. "Accepted in
> the Clearinghouse" until now has meant "gets Claims and is
> eligible for Sunrise upon proof of use." It appears to me that
> this is proposing a nontrivial technical change (at the very least
> the implementation of a new coding category, which will have to be
> retrofitted to existing entries), without evidence either of its
> need or its feasibility.
>
> Relatedly: If GIs are to be treated so differently, why put them
> in the Clearinghouse, given that there is consensus that they
> shouldn't be used for Claims or Sunrise? Kathy's clarifying
> language allows for registries etc. to adopt various business
> models and for Deloitte and other operators to run systems that
> facilitate those business models, including the ones Claudio
> hypothesizes. (And I'm not sure we should hand Deloitte an extra
> business that would make competition in the market for providing
> additional services less likely.)
>
> Rebecca Tushnet
>
> Frank Stanton Professor of First Amendment Law, Harvard Law School
> 703 593 6759
>
> ------------------------------------------------------------------------
>
> *From:*GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org
> <mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of claudio di
> gangi <ipcdigangi at gmail.com <mailto:ipcdigangi at gmail.com>>
> *Sent:* Tuesday, September 17, 2019 3:38 PM
> *To:* Corwin, Philip <pcorwin at verisign.com
> <mailto:pcorwin at verisign.com>>
> *Cc:* gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>>
> *Subject:* Re: [GNSO-RPM-WG] Q#8
>
> thanks, Phil. Very helpful as always.
>
> I see your point that proposal #1 and #2 overlap, in the sense
> that they both deal with whether GIs should be recorded in the
> TMCH. My proposal (#3) integrates the other two proposals.
>
> My concern during the call was that I felt a premature signal
> being expressed that agreement was being quickly being reached
> after several members spoke (and I was one of them), while several
> other members asked clarifying questions. I may be mistaken, but
> don't recall Jason or Rebecca objecting to the thoughts I
> expressed during discussion on proposal #1.
>
> If I am mistaken, and there was a meaningfully larger list of
> proponents for proposal #1 expressed on the call, I am happy to be
> corrected - please let me know.
>
> From my perspective, the majority of members did not express a
> position while the discussion was taking place, so I
> was left confused under what basis that statement that consensus
> was reached was based upon.
>
> This is also why I recently expressed not having the benefit of
> the informal poll that you conducted two weeks ago. Can we please
> do this tomorrow to get a better sense of where folks stand?
>
> On this same line of reasoning, I was concerned that we did not
> have full participation on the last week's call (where any
> registries and registrars on the call?). Moreover, I indicated
> last week that I had off-line discussions with WG members who
> expressed support for my suggested approach, but were not able to
> join the call, so I was hoping to hear from them on the list prior
> to Wednesday.
>
> The transcript and recording were posted by Julie on Friday, 13
> Sept. so members did not really have much time (Friday and
> Monday) to reply with input before things (I personally feel)
> got somewhat short-cut this morning with the
> posting that expressed here is the consensus view of the WG, along
> with the associated implementation text.
>
> My concern when this occurs is it changes the dynamic about how
> members feel about weighing-in and 'going against the thread' so
> to speak, and also may create confusion about the accurate state
> of play.
>
> In terms of substance and to clarify, my proposal is based on
> finding common ground and compromise that integrates the two
> proposals, as per the following:
>
> 1) Going forward, GI are accepted in the Clearinghouse or ONE main
> ancillary database that all registries/registrars can connect
> to (which potentially can be integrated with the main external GI
> database that exists, with Deloitte performing validations);
>
> 2) GIs are NOT protected during the Sunrise or Claims period,
> which remain for trademarks; which was something that
> we established during the review of Sunrise and Claims.
>
> 3) the protection of GIs are NOT mandatory for any new gTLD registry
>
> 4) for new gTLD registries that choose and desire to protect GIs
> (as the current rules permit) because of local laws and/or other
> reasons, they are protected during the Limited Registration
> Period, to help prevent abusive registrations before General
> Availability.
>
> The rationale for this approach is that GIs are one of the
> three major forms of IP (patents, trademarks, and GIs) and
> function as source identifiers for goods and services in a manner
> that is similar to trademarks (and can be registered as domains in
> the same manner). For example, GIs are protected in the United
> States (under the TRIPS agreement) as collective or certification
> marks, think FLORIDA ORANGES or IDAHO POTATOES.
>
> But in other countries, outside of the United States, they are
> protected under local laws that place them on a separate registry,
> apart from the trademark register.
>
> Hope this helps clarify status, and thanks for everyone's ongoing
> contributions.
>
> Best regards,
>
> Claudio
>
> On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip
> <pcorwin at verisign.com <mailto:pcorwin at verisign.com>> wrote:
>
> Claudio—
>
> This message reflects the views of the co-chairs.
>
> Q8 and all of its related proposals were extensively discussed
> on the September 4^th call. The meeting on 11 September was a
> continued discussion on Q8 and Q7 in case there were further
> proposals, and the major focus was on Q7 as we had run out of
> time on the prior call and a new modified proposal had been
> submitted for discussion.
>
> As regards Q 8, all of the first three proposals converge in
> that they would limit the registration of GIs in the TMCH to
> “marks” of some sort, whether trademarks or collective marks
> or certification marks; there also seemed to be some
> recognition and agreement that GIs that did not constitute
> “marks” could be recorded in an ancillary database for the
> purpose of assisting certain new gTLDs that recognized and
> provided some additional consideration to them. It appeared to
> the co-chairs that restricting TMCH recordation of GIs to
> those that constituted “marks” had fairly broad support among
> WG members participating on the calls.
>
> In regard to your fourth proposal -- “(1) Add the
> consideration of GIs to the policy review of the Sunrise and
> Claims services; and (2) withhold final consideration of the
> current TMCH proposals relating to GIs, until we conclude the
> policy review of the new gTLD RPMs (as described in the
> Charter).” – the Sunrise and Claims reviews have been
> concluded, and we are now wrapping up (concluding) our review
> of the new gTLD RPMs. So this proposal no longer seems timely
> or relevant; but if you wish to amend it and make a specific
> proposal for the treatment of GIs in the TMCH, tomorrow is the
> time to make it.
>
> Finally, as regards your proposal that we withhold a decision
> until Deloitte participated in a call on this subject, we see
> no reason to do so as there is no indication that Deloitte has
> changed its practice in regard to GI recordation since it
> wrote to the WG two years ago.
>
> In conclusion, we intend to finish the WG’s consideration of
> Q8 tomorrow but will facilitate discussion of an amended
> proposal from you if you wish to offer one.
>
> Regards,
>
> Brian
>
> Philip
>
> Kathy
>
> Philip S. Corwin
>
> Policy Counsel
>
> VeriSign, Inc.
>
> 12061 Bluemont Way
> Reston, VA 20190
>
> 703-948-4648/Direct
>
> 571-342-7489/Cell
>
> /"Luck is the residue of design" -- Branch Rickey/
>
> *From:*GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org
> <mailto:gnso-rpm-wg-bounces at icann.org>> *On Behalf Of *claudio
> di gangi
> *Sent:* Tuesday, September 17, 2019 11:22 AM
> *To:* Kathy Kleiman <kathy at kathykleiman.com
> <mailto:kathy at kathykleiman.com>>
> *Cc:* gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8
>
> Kathy, all,
>
> Last week, we spent the first full hour of the call discussing
> the first Question 8 proposal, and zero minutes on the second
> proposal on Question #8 (In comparison we spent much time
> discussing both proposals for question #7).
>
> I am aware that some members spoke in support of the first
> proposal (I was on audio only), but do not know how many,
> while some others did not speak in support, and that we agreed
> to spend this full week to solicit WG members views on the
> list before moving forward. This week has not yet concluded
> (we have through today), yet new language is being posted
> below now for consideration.
>
> A few additional points, the week prior Phil conducted an
> informal poll using the Zoom room functionality, which helped
> provide transparency on WG members views for consensus
> building, which was not done last week on Question #8.
>
> Nor has there been an effort to bring the various proponents
> together to reach a compromise position, which we recently did
> in the sprint of the consensus-building process on Question
> #7, the design mark topic. So I’m not sure why question #8 is
> being treated so differently in all these various ways (as
> described above) compared to Question #7.
>
> Can someone kindly shed some light on this disparity in
> treatment between the way we are approaching question 7 and
> question 8?
>
> Thanks!
>
> Best regards,
>
> Claudio
>
>
>
> On Tuesday, September 17, 2019, Kathy Kleiman
> <kathy at kathykleiman.com <mailto:kathy at kathykleiman.com>> wrote:
>
> All,
>
> Last week we found considerable overlap and common ground
> on Q#8. I promised to circulate language sharing that
> agreement and slightly refining existing proposals.
>
> Q#8:
>
> 3.2 The standards for inclusion in the Clearinghouse are:
>
> 3.2.1 Nationally or regionally registered word marks from
> all jurisdictions.
>
> 3.2.2 Any word mark that has been validated through a
> court of law or other judicial proceeding.
>
> 3.2.3 Any word marks specified in and protected by a
> statute or treaty /as trademarks /[1]//in effect at the
> time the mark is submitted to the Clearinghouse for
> inclusion.
>
> 3.2.4 Other marks that constitute intellectual property.
> [see below]
>
> 3.2.5 Protections afforded to trademark registrations do
> not extend to applications for registrations, marks.
>
> [1] /By "trademarks," the WG means "trademarks, service
> marks, certification marks and collective marks."/
>
> For purposes of clarity, separate or ancillary databases
> of the Trademark Clearinghouse Provider (or another
> provider) may include other marks, but those databases
> should not be used for Sunrise or Trademark Claims Notices
> under the RPMs. Registries may use those separate or
> ancillary databases to provide additional services but are
> not required to do so under the RPMs.
>
> (Appropriate corresponding changes will be percolated
> across the /Trademark Clearinghouse/ Applicant Guidebook)
>
> -----------------
>
> Best, Kathy
>
>
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