[GNSO-RPM-WG] Edits and updates

Mon Oct 26 16:28:47 UTC 2020

Dear Rebecca and all,

Staff will prepare a fuller response shortly, but in the meantime we’d like to point out that the context language was indeed discussed by the WG during the ICANN69 meeting sessions on 13 October.  Please see the brief notes from that meeting as follows:

c. New Contextual Language About GIs in TMCH – pages 9-10

Discussion:
-- The term should be geographical indications (not indicators).
-- Suggestion: "entered into the TMCH" is a hot button. "entered into a database maintained by the TMCH operator" avoids that.
-- Go one step further and refer to "an additional database" or "ancillary database”.
-- Staff will check as to whether it is “TMCH operator” or “TMCH provider”.
-- The WG accepts the text as modified to be included in the Final Report.

Please also note that the item was on the agenda for the 13 October working session with a link to the Google doc, as follows:

Review draft Final Report – please review only the new highlighted text in the Google docs at the links below and in the following order:
Introduction to Final Recommendations<https://docs.google.com/document/d/1aSFKsXW9Z3CfBODC_T_7kY_rCVo_pTkiWUH0cFG1Gac/edit>:
                Unresolved recommendation text --- see: https://docs.google.com/document/d/1Re1gmf1qbfl969fILQYQjhvGQdH2fBr500-V0o-bicw/edit
                a. Revised URS Recommendation #9 and Converted Individual Proposal #34 – pages 1-6
b. New Draft WG Discussion Language on ALP – pages 6-7
c. New Contextual Language About GIs in TMCH – pages 9-10

Kind regards,
Mary, Ariel, and Julie

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of "Tushnet, Rebecca" <rtushnet at law.harvard.edu>
Date: Monday, October 26, 2020 at 12:15 PM
To: Griffin Barnett <Griffin at Winterfeldt.law>, Paul Tattersfield <gpmgroup at gmail.com>, Kathy Kleiman <kathy at kathykleiman.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Edits and updates

Just to comment on Griffin's characterization of "proposed revisions" versus "prior version"--the "context" language Paul is commenting on was, as far as I can tell, added by Staff and not previously agreed to by the WG, so it shouldn't be characterized as somehow the default. I  think the best course of action might be simply to remove that additional language, which as Paul notes is basically a third restatement of text we agreed to but with small differences that can only risk  confusion.

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> on behalf of Griffin Barnett <Griffin at Winterfeldt.law>
Sent: Monday, October 26, 2020 11:47 AM
To: Paul Tattersfield <gpmgroup at gmail.com>; Kathy Kleiman <kathy at kathykleiman.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Edits and updates

Paul,

I don’t agree with your proposed revisions to this text.  I think the previous language more accurately reflected the WG discussions.  First, “TMCH Validation Provider” is not a new concept – we have used this term before to specify Deloitte as compared to IBM who is a “TMCH Provider” but is specifically the database provider and does not perform the validation role.  I think it is a useful distinction that should be preserved for the sake of clarity.  Further, your proposed revised text starting with “(1) mandatory RPMs should only be for word marks….” does not fully capture the appropriate scope of what we agreed to in our recommendations, and also moves away from the crux of the distinction being drawn in that section which relates to appropriate treatment of “trademarks” versus GIs and other types of source indicators that are not “trademarks” specifically.

Accordingly, I would oppose the adoption of these proposed revisions and support the prior version of the text here.

Thank you,

Griffin

________________________________

<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.winterfeldt.law_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=ZHRQkYYyLz4uFHkt_VQWEZULSpI3PkaAjyjWZkOXjOk&s=9Us2eE6sb1SD8PacT308SUf6kzvxR73vvgOi02IVpD4&e=>[cid:image001.png at 01D6AB93.8D1A46A0]<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.winterfeldt.law_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=ZHRQkYYyLz4uFHkt_VQWEZULSpI3PkaAjyjWZkOXjOk&s=9Us2eE6sb1SD8PacT308SUf6kzvxR73vvgOi02IVpD4&e=><https://urldefense.proofpoint.com/v2/url?u=https-3A__www.winterfeldt.law_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=ZHRQkYYyLz4uFHkt_VQWEZULSpI3PkaAjyjWZkOXjOk&s=9Us2eE6sb1SD8PacT308SUf6kzvxR73vvgOi02IVpD4&e=>

Griffin M. Barnett

Associate

Winterfeldt IP Group

1601 K Street NW, Ste 1050

Washington, DC  20006

griffin at winterfeldt.law<mailto:griffin at winterfeldt.law>

+1 202 759 5836

From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Tattersfield
Sent: Friday, October 23, 2020 7:14 PM
To: Kathy Kleiman <kathy at kathykleiman.com>
Cc: gnso-rpm-wg <gnso-rpm-wg at icann.org>
Subject: Re: [GNSO-RPM-WG] Edits and updates

Dear All,

Recommendation TMCH #1 Edits and Updates

I am concerned that the new language and the titles, separates and diminishes well-developed recommendation and guidance from each other. The precisely drafted clauses seem to be more separated from the policy principles than in the final language draft which published to the WG list for review September, 14th. The whole point of drafting precise language was to make sure unintended consequences were minimised in a way that is very hard to do with policy principles. It’s really a question of emphasis and weight. It feels the new language is introducing more and more potential for problems down the line.

Someone has introduced the new concept of “TMCH Validation Provider” and I wasn’t aware of this change being flagged to the working group. (Highlighted in the attached document)

This seems to me to be a new concept and potentially infers changes to the role of the TMCH provider whose job is primarily to authenticate rather than validate. Validation currently is for Sunrise and the newly introduced language may lead to the impression that  the working group wished a significant role change. Rebecca & I were very careful to ensure we did not take the ‘validation’ role for entry into the clearinghouse away from the trademark offices alone.

I am not aware of any of the above being highlighted on the call. Ideally I think we should return to the recommendation language of September 14th if there is to be no further discussion.

Context language

I believe the context language was very new and for me password protected until just before the RPM WG call at ICANN 69. So the review time for this language was very short and outside the normal working group weekly meetings times.

Again the Context language seems to me to want to put more distance between the precisely drafted clauses and the policy language. The policy recommendation came from the implementation guidance so this doesn’t seem quite right to say – “The Working Group ultimately agreed on the policy principles reflecting those ideas, which guides the suggested amendment to the Applicant Guidebook (AGB) text in the Implementation Guidance.

The second paragraph of the new context language needs a lot of work. It also just seems to triplicate (and triplicate incorrectly) what is already there twice. If it is necessary it would be an improvement to say:

(1) mandatory RPMs should only be for word marks, not other types of intellectual property or geographical indications; (2) while other types of marks can be entered into an additional/ancillary database maintained by the TMCH Provider, they are not eligible for Sunrise and Claims; and (3) the ability for the TMCH Provider and Registry Operators to offer additional/voluntary ancillary services should be preserved (e.g., via ancillary database).

Best regards, Paul

On Fri, Oct 23, 2020 at 11:20 PM Kathy Kleiman <kathy at kathykleiman.com<mailto:kathy at kathykleiman.com>> wrote:

Hi All,

Attached please find my proposed edits to the Background section of our report. We had a little more interaction with the EPDP report than noted -- and went past the summary wave table to the actual EPDP recommendations to determine that there was no conflict between them and our WG recommendations. I've proposed revisions to the background text to show this process with the steps involved. As a WG, we certainly did our due diligence on this important task!

Best and have a good weekend,

Kathy

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