[GNSO-RPM-WG] Edits and updates

Mon Oct 26 18:07:44 UTC 2020

Hello Paul, Griffin, Rebecca and everyone,

This message is a follow-up on this thread and Paul’s suggested edits that we understand he made to address factual errors in the text of the draft Final Report. The Working Group leadership team discussed Paul’s suggestions on its planning call with staff earlier today, as a result of which staff were directed to provide our response outlined below.

TMCH Validation Provider:
First, as noted subsequently by Griffin, the concept embodied by the term “TMCH Validation Provider” is not new to the Working Group. In the Initial Report, the term used was “Validation Service Provider”, which staff shortened to “Validation Provider” for the draft Final Report, following clarification from our colleagues in ICANN org’s Global Domains & Strategy division (GDS). More substantively significant, however, is that the concept was used throughout the Working Group’s deliberations to distinguish between the services provided by Deloitte (the current TMCH Validation Provider) and IBM (the current TMCH Database Provider) – and this distinction was also reflected in the Working Group’s Initial Report that was issued for public comment in March this year.

In addition, the term “TMCH Validation Provider” is used consistently and uniformly throughout the draft Final Report to reflect this service distinction and to ensure clarity as to when the Working Group means to refer to the TMCH validation service or database administration. Staff therefore respectfully suggests that this terminology, consistency and clarity be retained, especially where the term appears in the text of an actual policy recommendation. We will, however, ensure that a footnote explaining this concept is inserted in the complete final report where the term first appears.

Implementation Guidance:
Similarly, the Working Group has also distinguished between “recommendations” and “implementation guidance” that is intended to illustrate or assist with the implementation of adopted policy recommendations, including the work of the eventual Implementation Review Team (IRT). This was a specific point of agreement in the Working Group in respect of the proposed language for Section 3, Module 5 of the Applicant Guidebook. More generally, the terminology is reflected in various recommendations in the draft Final Report. As such, staff respectfully suggests also retaining this clarity and distinction for this particular TMCH recommendation.

Contextual Language:
As with all the other agreed recommendations, the Context for each recommendation summarizes the issue, problem or topic addressed, the Working Group’s deliberations, concerns noted and eventual agreement, and the rationale for such agreement. While the language may seem repetitive at times, the objective is to provide a reader with a brief sense of why and how the Working Group arrived at its final recommendation in each case. In this particular instance, the Working Group spent a significant amount of time discussing the legal status of geographical indications (GIs) as a form of intellectual property, but as distinct from trademarks per se. As Griffin has noted, this is the key distinction that the Working Group made. Another distinction was between something that could function as a “mark” but without possessing the legal characteristics that are required to be a “trademark” (or service mark).

It would also seem that Paul’s suggested change of language from “mandatory RPMs should only be for trademarks, not other types of non-trademark marks including geographical indications” to “mandatory RPMs should only be for word marks, not other types of intellectual property or geographical indications” contains a technical inaccuracy as to the status of GIs and does not fully capture the Working Group’s extensive discussions over the key distinction between a GI and a trademark. Thus, we respectfully suggest retaining the original wording, at least for that first clause (1) of the three-part sentence highlighted by Paul.

We hope that these notes are helpful in clarifying the language in question. As Julie has mentioned, the language was circulated as a topic for discussion at ICANN69 and reviewed by the Working Group on 13 October.

Best regards,
Julie, Ariel & Mary

From: GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Julie Hedlund <julie.hedlund at icann.org>
Date: Monday, October 26, 2020 at 12:28
To: "Tushnet, Rebecca" <rtushnet at law.harvard.edu>, 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

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 [docs.google.com]<https://urldefense.com/v3/__https:/docs.google.com/document/d/1aSFKsXW9Z3CfBODC_T_7kY_rCVo_pTkiWUH0cFG1Gac/edit__;!!PtGJab4!vNXcIqY5nwRZ51Uo65VwzrLK4Jdw5vAXU6epzwQt3a0tPsv-56zzq43NM_WI9lN5zrEA-jw$>:
                Unresolved recommendation text --- see: https://docs.google.com/document/d/1Re1gmf1qbfl969fILQYQjhvGQdH2fBr500-V0o-bicw/edit [docs.google.com]<https://urldefense.com/v3/__https:/docs.google.com/document/d/1Re1gmf1qbfl969fILQYQjhvGQdH2fBr500-V0o-bicw/edit__;!!PtGJab4!vNXcIqY5nwRZ51Uo65VwzrLK4Jdw5vAXU6epzwQt3a0tPsv-56zzq43NM_WI9lN5o2FZW4Q$>
                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 01D6ABA1.5F9C4710]<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

_______________________________________________
GNSO-RPM-WG mailing list
GNSO-RPM-WG at icann.org<mailto:GNSO-RPM-WG at icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=ZHRQkYYyLz4uFHkt_VQWEZULSpI3PkaAjyjWZkOXjOk&s=4x--g5QB9XOkGmmoAj-aRpkFX4mIE7QrdUYCl_p2tWE&e=>
_______________________________________________
By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_policy&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=ZHRQkYYyLz4uFHkt_VQWEZULSpI3PkaAjyjWZkOXjOk&s=nQsX7iIoZOxM0HeQzgaaceA_S5ZfEeuEYBVlxcEN0lc&e=>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_tos&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=ZHRQkYYyLz4uFHkt_VQWEZULSpI3PkaAjyjWZkOXjOk&s=eMnG-D3BJ1wHQSUfBLmDFYxW7WOHmeroKKOqlnIc21Q&e=>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20201026/4f0ff7ee/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 5912 bytes
Desc: image001.png
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20201026/4f0ff7ee/image001-0001.png>