Phil:

In addition to the point made by Mike, marks that have a trademark reputation prior to the advent of something new generally can claim (and do) trademark rights in areas where trademark law would not generally afford protection. For example, Playboy sought to obtain a trademark registration in the US covering jewelry for a charm designed in the shape of its world-famous bunny head logo. The USPTO denied the registration claiming that the charm had no source identifying significance, but was merely ornamental as applied to jewelry. This determination was overturned on appeal. The final determination was that Playboy had substantial goodwill for the bunny head logo for publishing and entertainment services such that the recognizable goodwill and source identifying significance of the charm was there and was protectable. What I am saying about the .amazon, .spa, .date objections is that if GAC members want to object to the .amazon or other geographic terminology contained in a gTLD application under the Legal Objection process, let them do so. They don't want to do so, because they will lose. I am very concerned about the GAC becoming a legislature that grant rights/remedies that are unavailable under national and international law. The role of the GAC, as I stated at the public forum in Durban, is to advise the ICANN board on the rights, laws, treaties etc that exist and help guide the board to remain in compliance: not create new rights unrecognized by the legal schemes in national and international law.

J. Scott

j. scott evans - head of global brand, domains & copyright - Yahoo! Inc. - 408.349.1385 - jscottevans@yahoo.com

From: "icann@rodenbaugh.com" <icann@rodenbaugh.com>
To: 'Phil Corwin' <psc@vlaw-dc.com>; 'J. Scott Evans' <jscottevans@yahoo.com>; bc-gnso@icann.org
Sent: Thursday, August 1, 2013 10:41 AM
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban

I agree this is an issue the BC should address, as it is another bad precedent of “GAC Rule”.

Phil, you state the US legal position re TLD strings as trademarks, but outside the US, at OHIM, in Denmark and quite a few other countries, trademark authorities have granted trademark registration to TLD strings, covering domain registry services and a wide variety of ancillary or additional services.

Mike Rodenbaugh

RODENBAUGH LAW

Tel/Fax: +1.415.738.8087

http://rodenbaugh.com

From: owner-bc-gnso@icann.org [mailto:owner-bc-gnso@icann.org] On Behalf Of Phil Corwin
Sent: Thursday, August 1, 2013 10:10 AM
To: J. Scott Evans; bc-gnso@icann.org
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban

J. Scott:

Without taking any position at this time as to whether the BC should weigh in on this issue or what our position should be, I want to raise a point of information –

As I understand it, your concern is that the GAC has created a regional right in two geographic indicators which does not exist at law and that this is trumping a trademark right registered in multiple nations, including those raising objections . Putting aside the fact that the GAC can object for any reason without citing a legal basis (although the basis or lack thereof can be taken into account by the ICANN Board when considering whether to adopt the GAC advice), what is the strength of the purported trademark rights at the top level of the DNS when, up to now, trademark authorities and courts have held the position that no trademark rights can exist in a TLD because it cannot (examples: .com, .uk) serve as a source identifier? I concede that this view could change for at least some TLDs (e.g., .brands) as the new ones roll out, but that is the state of the law at this time as I understand it.

Thanks for any light you can shed on this question.

Regards,

Philip

Philip S. Corwin, Founding Principal

Virtualaw LLC

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Washington, DC 20004

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From: J. Scott Evans [mailto:jscottevans@yahoo.com]
Sent: Thursday, August 01, 2013 12:10 PM
To: Phil Corwin; bc-gnso@icann.org
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban

I am telling you all this is a dangerous precedent. I hereby request that the BC take up this issue and develop a formal opinion in this specific issue and the broader issue of the GAC's role.

I am happy to lead this effort.

J. Scott

Sent from Yahoo! Mail for iPhone

From: Phil Corwin <psc@vlaw-dc.com>;
To: bc-gnso@icann.org <bc-gnso@icann.org>;
Subject: [bc-gnso] Report on Geograhic Indicator Debate at Durban
Sent: Thu, Aug 1, 2013 3:58:37 PM

http://www.ip-watch.org/2013/08/01/governments-disagree-on-geographical-indication-protection-at-tld-level/?utm_source=post&utm_medium=email&utm_campaign=alerts