External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All, During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs). An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks. Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark. During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs). I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question: " Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?" In getting this legal advice, I would propose that: - any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral. - the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country. This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy. Please let me know if the group would like to proceed down this path, and if so how should the question be formulated. Regards, Bruce Tonkin
Hi, I think this is an excellent way forward and look forward to your guidance. Regards, Göran -----Original Message----- From: <discussion-igo-rc-bounces@icann.org> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org" <discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Hello All, During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs). An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks. Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark. During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs). I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question: " Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?" In getting this legal advice, I would propose that: - any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral. - the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country. This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy. Please let me know if the group would like to proceed down this path, and if so how should the question be formulated. Regards, Bruce Tonkin _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans! Markus Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org" <discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
Dear Markus, As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first? Thank you Carlos Raúl Gutiérrez +506 8837 7176 Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica) On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org" <discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
Markus et al: First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity. The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result. Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms. Third, our WG has just concluded a multi-week review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting. The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report. Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input. Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg@gmail.com] Sent: Wednesday, April 26, 2017 9:01 AM To: Markus Kummer Cc: Goran Marby; discussion-igo-rc@icann.org; Phil Corwin Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Markus, As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first? Thank you Carlos Raúl Gutiérrez +506 8837 7176 Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica) On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org" <discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
Phil, Raùl, all, Please accept my apologies if my comment came across as being flippant or superficial. I am not a lawyer nor am I an expert in international law, but as a former Swiss diplomat and UN official I am familiar with some fundamental principles. I also learned during my professional career that the way you approach a question can depend greatly on you own background, such as which school of thought you belong to or your cultural background. A native Spanish,German or French speaker will think in a different legal and logical context than a native English speaker, not to mention the different traditions of common law and civil law or monistic and dualistic systems in applying international law. Please also note that I did not speak on behalf of the Board, but just expressed an opinion based on my own experience. I am aware that the question addressed by the legal expert retained by your PDP WG was different than the question now proposed by Bruce and I was by no means trying to criticize or belittle the opinion of your legal expert as being US-centric. However, while a European expert may well have reached the same result, the report might have read differently. The simple point I was trying to make was that by selecting an expert all these factors ought to be taken into account and all parties concerned ought to feel comfortable with the expert chosen. I am confident that ICANN staff will help find a legal expert with adequate experience and awareness for the different cultural and political sensitivities. I hope this helps clarify misunderstandings I may have created. Markus On Wed, Apr 26, 2017 at 3:38 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
Markus et al:
First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity.
The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result.
Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms.
Third, our WG has just concluded a multi-week review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting.
The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report.
Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input.
Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS.
Best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg@gmail.com] Sent: Wednesday, April 26, 2017 9:01 AM To: Markus Kummer Cc: Goran Marby; discussion-igo-rc@icann.org; Phil Corwin Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Dear Markus,
As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first?
Thank you
Carlos Raúl Gutiérrez +506 8837 7176 Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica)
On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org" <discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
Thanks very much for your feedback, Marcus. Rest assured that I have never regarded any of your statements as flippant or superficial, as they are generally quite serious and insightful. I was only trying to be very precise in differentiating the legal advice our WG requested and fully considered from what the discussion group is contemplating, and alerting members of the discussion group of the very advanced nature of the WG’s deliberations as we have sought to meet pour commitment to deliver a Final Report before the Johannesburg meeting so that it can be the subject of informed discussion there. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Markus Kummer [mailto:markus.kummer@board.icann.org] Sent: Wednesday, April 26, 2017 2:46 PM To: Phil Corwin Cc: Carlos Raúl Gutiérrez G.; Goran Marby; discussion-igo-rc@icann.org; Petter Rindforth (info@fenixlegal.eu); Mary Wong (mary.wong@icann.org); Steve Chan <steve.chan@icann.org> (steve.chan@icann.org) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Phil, Raùl, all, Please accept my apologies if my comment came across as being flippant or superficial. I am not a lawyer nor am I an expert in international law, but as a former Swiss diplomat and UN official I am familiar with some fundamental principles. I also learned during my professional career that the way you approach a question can depend greatly on you own background, such as which school of thought you belong to or your cultural background. A native Spanish,German or French speaker will think in a different legal and logical context than a native English speaker, not to mention the different traditions of common law and civil law or monistic and dualistic systems in applying international law. Please also note that I did not speak on behalf of the Board, but just expressed an opinion based on my own experience. I am aware that the question addressed by the legal expert retained by your PDP WG was different than the question now proposed by Bruce and I was by no means trying to criticize or belittle the opinion of your legal expert as being US-centric. However, while a European expert may well have reached the same result, the report might have read differently. The simple point I was trying to make was that by selecting an expert all these factors ought to be taken into account and all parties concerned ought to feel comfortable with the expert chosen. I am confident that ICANN staff will help find a legal expert with adequate experience and awareness for the different cultural and political sensitivities. I hope this helps clarify misunderstandings I may have created. Markus On Wed, Apr 26, 2017 at 3:38 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: Markus et al: First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity. The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result. Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms. Third, our WG has just concluded a multi-week review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting. The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report. Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input. Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg@gmail.com<mailto:carlosraulg@gmail.com>] Sent: Wednesday, April 26, 2017 9:01 AM To: Markus Kummer Cc: Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Phil Corwin Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Markus, As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first? Thank you Carlos Raúl Gutiérrez +506 8837 7176<tel:%2B506%208837%207176> Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica) On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org<mailto:goran.marby@icann.org>> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org>> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au<mailto:Bruce.Tonkin@melbourneit.com.au>> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>" <discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
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Dear Bruce, Dear All, I sincerely appreciate the efforts to move this issue forward but would appreciate some clarification as to why this step is being proposed at this particular time, and its potential impact on the progress we have already made. I am deeply concerned that this process will be dragged out even longer—I thought we were all in agreement that prolonging this was in nobody’s best interest. I take this opportunity to clarify that the public interest basis for protecting IGO names and acronyms stems not only from the facts you present in your email (treaty protection) but also from GAC advice extending back at least as far as 2012 (cf GAC Communiqués from Toronto forward). I am troubled by the fact that IGOs have been singled out for greater scrutiny than other rights holders and note that other acronyms enjoy protection without any legal basis at all (e.g. ICANN and GNSO). ICANN's recent professed need to see legal grounds beyond the protections afforded to IGOs under Article 6ter of the Paris Convention suggests that IGOs are not given the same treatment as other rights holders. For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. Further, in light of Mr Corwin's email below, we are unsure where this exercise fits into the bigger picture. I would be grateful for your clarifications in this regard. Best regards, Jon [logo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73 From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Phil Corwin Sent: jeudi 27 avril 2017 04:45 To: Markus Kummer Cc: discussion-igo-rc@icann.org; Carlos Raúl Gutiérrez G.; Petter Rindforth (info@fenixlegal.eu) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Thanks very much for your feedback, Marcus. Rest assured that I have never regarded any of your statements as flippant or superficial, as they are generally quite serious and insightful. I was only trying to be very precise in differentiating the legal advice our WG requested and fully considered from what the discussion group is contemplating, and alerting members of the discussion group of the very advanced nature of the WG’s deliberations as we have sought to meet pour commitment to deliver a Final Report before the Johannesburg meeting so that it can be the subject of informed discussion there. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Markus Kummer [mailto:markus.kummer@board.icann.org] Sent: Wednesday, April 26, 2017 2:46 PM To: Phil Corwin Cc: Carlos Raúl Gutiérrez G.; Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Petter Rindforth (info@fenixlegal.eu<mailto:info@fenixlegal.eu>); Mary Wong (mary.wong@icann.org<mailto:mary.wong@icann.org>); Steve Chan <steve.chan@icann.org<mailto:steve.chan@icann.org>> (steve.chan@icann.org<mailto:steve.chan@icann.org>) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Phil, Raùl, all, Please accept my apologies if my comment came across as being flippant or superficial. I am not a lawyer nor am I an expert in international law, but as a former Swiss diplomat and UN official I am familiar with some fundamental principles. I also learned during my professional career that the way you approach a question can depend greatly on you own background, such as which school of thought you belong to or your cultural background. A native Spanish,German or French speaker will think in a different legal and logical context than a native English speaker, not to mention the different traditions of common law and civil law or monistic and dualistic systems in applying international law. Please also note that I did not speak on behalf of the Board, but just expressed an opinion based on my own experience. I am aware that the question addressed by the legal expert retained by your PDP WG was different than the question now proposed by Bruce and I was by no means trying to criticize or belittle the opinion of your legal expert as being US-centric. However, while a European expert may well have reached the same result, the report might have read differently. The simple point I was trying to make was that by selecting an expert all these factors ought to be taken into account and all parties concerned ought to feel comfortable with the expert chosen. I am confident that ICANN staff will help find a legal expert with adequate experience and awareness for the different cultural and political sensitivities. I hope this helps clarify misunderstandings I may have created. Markus On Wed, Apr 26, 2017 at 3:38 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: Markus et al: First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity. The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result. Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms. Third, our WG has just concluded a multi-week review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting. The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report. Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input. Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg@gmail.com<mailto:carlosraulg@gmail.com>] Sent: Wednesday, April 26, 2017 9:01 AM To: Markus Kummer Cc: Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Phil Corwin Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Markus, As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first? Thank you Carlos Raúl Gutiérrez +506 8837 7176<tel:%2B506%208837%207176> Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica) On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org<mailto:goran.marby@icann.org>> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org>> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au<mailto:Bruce.Tonkin@melbourneit.com.au>> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>" <discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org<mailto:Discussion-igo-rc@icann.org> https://mm.icann.org/mailman/listinfo/discussion-igo-rc
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Hello Jonathan,
I take this opportunity to clarify that the public interest basis for protecting IGO names and acronyms stems not only from the facts you present in your email (treaty protection) but also from GAC advice extending back at least as far as 2012 (cf GAC Communiqués from Toronto forward).
Thanks - as noted in Copenhagen I think all have accepted the public interest issues.
For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms.
We may be talking cross purposes here. Article 6ter is a basis for preventing an entity for registering a trademark that uses the IGO name or acronym related to the class of that trademark. It doesn’t actually stop someone from mis-using the IGO name or abbreviation. It does stop a third party applying for a trademark in the subject area of the IGO, and then that third party taking advantage of trademark protection to take legal action to stop others (including an IGO) using that as a mark. The question I have proposed is different. I am trying to establish the legal mechanisms that IGOs, or a Government on their behalf, could use to take action against mis-use of an IGO name or abbreviations. I am assuming that it is in the "public interest" for an IGO or Government to take some action to stop the mis-use - just trying to be clear "how" that would be done. I gave the example that in Australia, the Government would most like have to rely on Consumer Protection law. e.g see https://en.wikipedia.org/wiki/Australian_Consumer_Law This law is not a specific protection for the names and abbreviations IGOs but does stop various practices such as "misleading or deceptive conduct". I simply thought it would be useful to understand what laws are available in different jurisdictions and how they are applied - to help refine thinking about a dispute resolution mechanism. For IGOs that don’t have trademarks and have other legal rights, then they (or a Government on their behalf) would not be able to use trademark law to take action for a party that was mis-using the IGO name or abbreviation. I hope that is clearer. Any examples you can provide where a Government has taken legal action to protect an IGO name or abbreviation not protected via a trademark would be very helpful of course. My proposal is merely to get some additional facts to help all parties - not disputing the facts that you and others have already established. These additional facts may also be relevant for other situations - e.g protecting country names or ccTLDs for example. Regards, Bruce Tonkin
In regard to this – For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. If the OECD view is shared by other IGOs then it is possible that this proposed new legal inquiry may not be undertaken. While awaiting that decision, the Co-Chairs of the IGO CRP WG just concluded a previously scheduled call with the Chair and Vice-Chairs of the GNSO Council. While we have not yet discussed this new potential development with members of the WG (that will take place 90 minutes from now) the Co-Chairs tentatively agreed with Council leadership that the WG will continue to drive forward to producing a draft final report with the expectation of delivering that shortly before the Johannesburg meeting. However, if this new legal inquiry is undertaken the Co-Chairs will engage in further dialogue with Council leadership to determine the best path forward, which may include delaying formal release of the Final Report until the new legal memo is delivered and can be fully considered. In that regard, if such an effort is undertaken we would seek a good faith estimate of the projected delivery date of the resulting legal memo. Let me know if you have any questions. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Jonathan.PASSARO@oecd.org Sent: Thursday, April 27, 2017 3:22 AM To: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Bruce, Dear All, I sincerely appreciate the efforts to move this issue forward but would appreciate some clarification as to why this step is being proposed at this particular time, and its potential impact on the progress we have already made. I am deeply concerned that this process will be dragged out even longer—I thought we were all in agreement that prolonging this was in nobody’s best interest. I take this opportunity to clarify that the public interest basis for protecting IGO names and acronyms stems not only from the facts you present in your email (treaty protection) but also from GAC advice extending back at least as far as 2012 (cf GAC Communiqués from Toronto forward). I am troubled by the fact that IGOs have been singled out for greater scrutiny than other rights holders and note that other acronyms enjoy protection without any legal basis at all (e.g. ICANN and GNSO). ICANN's recent professed need to see legal grounds beyond the protections afforded to IGOs under Article 6ter of the Paris Convention suggests that IGOs are not given the same treatment as other rights holders. For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. Further, in light of Mr Corwin's email below, we are unsure where this exercise fits into the bigger picture. I would be grateful for your clarifications in this regard. Best regards, Jon [logo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73 From: discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org> [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Phil Corwin Sent: jeudi 27 avril 2017 04:45 To: Markus Kummer Cc: discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Carlos Raúl Gutiérrez G.; Petter Rindforth (info@fenixlegal.eu<mailto:info@fenixlegal.eu>) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Thanks very much for your feedback, Marcus. Rest assured that I have never regarded any of your statements as flippant or superficial, as they are generally quite serious and insightful. I was only trying to be very precise in differentiating the legal advice our WG requested and fully considered from what the discussion group is contemplating, and alerting members of the discussion group of the very advanced nature of the WG’s deliberations as we have sought to meet pour commitment to deliver a Final Report before the Johannesburg meeting so that it can be the subject of informed discussion there. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Markus Kummer [mailto:markus.kummer@board.icann.org] Sent: Wednesday, April 26, 2017 2:46 PM To: Phil Corwin Cc: Carlos Raúl Gutiérrez G.; Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Petter Rindforth (info@fenixlegal.eu<mailto:info@fenixlegal.eu>); Mary Wong (mary.wong@icann.org<mailto:mary.wong@icann.org>); Steve Chan <steve.chan@icann.org<mailto:steve.chan@icann.org>> (steve.chan@icann.org<mailto:steve.chan@icann.org>) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Phil, Raùl, all, Please accept my apologies if my comment came across as being flippant or superficial. I am not a lawyer nor am I an expert in international law, but as a former Swiss diplomat and UN official I am familiar with some fundamental principles. I also learned during my professional career that the way you approach a question can depend greatly on you own background, such as which school of thought you belong to or your cultural background. A native Spanish,German or French speaker will think in a different legal and logical context than a native English speaker, not to mention the different traditions of common law and civil law or monistic and dualistic systems in applying international law. Please also note that I did not speak on behalf of the Board, but just expressed an opinion based on my own experience. I am aware that the question addressed by the legal expert retained by your PDP WG was different than the question now proposed by Bruce and I was by no means trying to criticize or belittle the opinion of your legal expert as being US-centric. However, while a European expert may well have reached the same result, the report might have read differently. The simple point I was trying to make was that by selecting an expert all these factors ought to be taken into account and all parties concerned ought to feel comfortable with the expert chosen. I am confident that ICANN staff will help find a legal expert with adequate experience and awareness for the different cultural and political sensitivities. I hope this helps clarify misunderstandings I may have created. Markus On Wed, Apr 26, 2017 at 3:38 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: Markus et al: First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity. The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result. Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms. Third, our WG has just concluded a multi-week review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting. The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report. Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input. Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg@gmail.com<mailto:carlosraulg@gmail.com>] Sent: Wednesday, April 26, 2017 9:01 AM To: Markus Kummer Cc: Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Phil Corwin Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Markus, As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first? Thank you Carlos Raúl Gutiérrez +506 8837 7176<tel:%2B506%208837%207176> Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica) On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org<mailto:goran.marby@icann.org>> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org>> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au<mailto:Bruce.Tonkin@melbourneit.com.au>> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>" <discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org<mailto:Discussion-igo-rc@icann.org> https://mm.icann.org/mailman/listinfo/discussion-igo-rc
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Bruce, Phil, Thank you for this additional information. I will consult with my colleagues at the other IGOs and will get back to you. Jon From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: jeudi 27 avril 2017 16:36 To: PASSARO Jonathan, SGE/LEG; discussion-igo-rc@icann.org Subject: RE: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs In regard to this – For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. If the OECD view is shared by other IGOs then it is possible that this proposed new legal inquiry may not be undertaken. While awaiting that decision, the Co-Chairs of the IGO CRP WG just concluded a previously scheduled call with the Chair and Vice-Chairs of the GNSO Council. While we have not yet discussed this new potential development with members of the WG (that will take place 90 minutes from now) the Co-Chairs tentatively agreed with Council leadership that the WG will continue to drive forward to producing a draft final report with the expectation of delivering that shortly before the Johannesburg meeting. However, if this new legal inquiry is undertaken the Co-Chairs will engage in further dialogue with Council leadership to determine the best path forward, which may include delaying formal release of the Final Report until the new legal memo is delivered and can be fully considered. In that regard, if such an effort is undertaken we would seek a good faith estimate of the projected delivery date of the resulting legal memo. Let me know if you have any questions. Thanks and best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org> [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Jonathan.PASSARO@oecd.org<mailto:Jonathan.PASSARO@oecd.org> Sent: Thursday, April 27, 2017 3:22 AM To: discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org> Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Bruce, Dear All, I sincerely appreciate the efforts to move this issue forward but would appreciate some clarification as to why this step is being proposed at this particular time, and its potential impact on the progress we have already made. I am deeply concerned that this process will be dragged out even longer—I thought we were all in agreement that prolonging this was in nobody’s best interest. I take this opportunity to clarify that the public interest basis for protecting IGO names and acronyms stems not only from the facts you present in your email (treaty protection) but also from GAC advice extending back at least as far as 2012 (cf GAC Communiqués from Toronto forward). I am troubled by the fact that IGOs have been singled out for greater scrutiny than other rights holders and note that other acronyms enjoy protection without any legal basis at all (e.g. ICANN and GNSO). ICANN's recent professed need to see legal grounds beyond the protections afforded to IGOs under Article 6ter of the Paris Convention suggests that IGOs are not given the same treatment as other rights holders. For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. Further, in light of Mr Corwin's email below, we are unsure where this exercise fits into the bigger picture. I would be grateful for your clarifications in this regard. Best regards, Jon [logo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73 From: discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org> [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Phil Corwin Sent: jeudi 27 avril 2017 04:45 To: Markus Kummer Cc: discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Carlos Raúl Gutiérrez G.; Petter Rindforth (info@fenixlegal.eu<mailto:info@fenixlegal.eu>) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Thanks very much for your feedback, Marcus. Rest assured that I have never regarded any of your statements as flippant or superficial, as they are generally quite serious and insightful. I was only trying to be very precise in differentiating the legal advice our WG requested and fully considered from what the discussion group is contemplating, and alerting members of the discussion group of the very advanced nature of the WG’s deliberations as we have sought to meet pour commitment to deliver a Final Report before the Johannesburg meeting so that it can be the subject of informed discussion there. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Markus Kummer [mailto:markus.kummer@board.icann.org] Sent: Wednesday, April 26, 2017 2:46 PM To: Phil Corwin Cc: Carlos Raúl Gutiérrez G.; Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Petter Rindforth (info@fenixlegal.eu<mailto:info@fenixlegal.eu>); Mary Wong (mary.wong@icann.org<mailto:mary.wong@icann.org>); Steve Chan <steve.chan@icann.org<mailto:steve.chan@icann.org>> (steve.chan@icann.org<mailto:steve.chan@icann.org>) Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Phil, Raùl, all, Please accept my apologies if my comment came across as being flippant or superficial. I am not a lawyer nor am I an expert in international law, but as a former Swiss diplomat and UN official I am familiar with some fundamental principles. I also learned during my professional career that the way you approach a question can depend greatly on you own background, such as which school of thought you belong to or your cultural background. A native Spanish,German or French speaker will think in a different legal and logical context than a native English speaker, not to mention the different traditions of common law and civil law or monistic and dualistic systems in applying international law. Please also note that I did not speak on behalf of the Board, but just expressed an opinion based on my own experience. I am aware that the question addressed by the legal expert retained by your PDP WG was different than the question now proposed by Bruce and I was by no means trying to criticize or belittle the opinion of your legal expert as being US-centric. However, while a European expert may well have reached the same result, the report might have read differently. The simple point I was trying to make was that by selecting an expert all these factors ought to be taken into account and all parties concerned ought to feel comfortable with the expert chosen. I am confident that ICANN staff will help find a legal expert with adequate experience and awareness for the different cultural and political sensitivities. I hope this helps clarify misunderstandings I may have created. Markus On Wed, Apr 26, 2017 at 3:38 PM, Phil Corwin <psc@vlaw-dc.com<mailto:psc@vlaw-dc.com>> wrote: Markus et al: First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity. The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result. Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms. Third, our WG has just concluded a multi-week review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting. The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report. Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input. Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597<tel:202-559-8597>/Direct 202-559-8750<tel:202-559-8750>/Fax 202-255-6172<tel:202-255-6172>/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg@gmail.com<mailto:carlosraulg@gmail.com>] Sent: Wednesday, April 26, 2017 9:01 AM To: Markus Kummer Cc: Goran Marby; discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>; Phil Corwin Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Dear Markus, As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first? Thank you Carlos Raúl Gutiérrez +506 8837 7176<tel:%2B506%208837%207176> Skype: carlos.raulg Current UTC offset: -6.00 (Costa Rica) On 26 Apr 2017, at 2:50, Markus Kummer wrote:
I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!
Markus
Sent from my iPad
On 26 Apr 2017, at 05:25, Goran Marby <goran.marby@icann.org<mailto:goran.marby@icann.org>> wrote:
Hi,
I think this is an excellent way forward and look forward to your guidance.
Regards, Göran
-----Original Message----- From: <discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org>> on behalf of "Dr. Bruce Tonkin" <Bruce.Tonkin@melbourneit.com.au<mailto:Bruce.Tonkin@melbourneit.com.au>> Date: Tuesday, April 25, 2017 at 03:10 To: "discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>" <discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org>> Subject: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs
Hello All,
During the discussion in Copenhagen it was agreed that there was a public interest goal in protecting the Names and abbreviations of International InterGovernmental Organizations (IGOs).
An example of such a protection in an international treaty is in Article 6ter of the Paris Convention for the Protection of Industrial Property protects the names and abbreviations of International interGovernmental Organizations (IGOs) against unauthorized registration and use as trademarks.
Dispute mechanisms developed by the GNSO for gTLDs need to conform with relevant principles of international law and international conventions and applicable local law. The UDRP was built on trademark law for example. As IGOs often use Article 6ter to prevent the registration as trademarks of an IGO name or abbreviation they cannot then use trademark law to take legal action against a mis-use of a trademark.
During the discussions in Copenhagen it was not clear what applicable local laws can be used by IGOs, or Governments on their behalf, to tackle infringements in the offline world - e.g. printed publications or signs that mis-use the names and abbreviations of International interGovernmental Organizations (IGOs).
I propose asking the ICANN organization, on behalf of this discussion group, to get some expert external legal advice on the following general question:
" Separately from any trademark rights, what substantive legal rights (if any) do International interGovernmental Organizations (IGOs) have in their acronyms under specific national laws and/or international law? For instance, are there consumer protection statutes or other causes of action that an IGO can rely on to assert specific legal rights in its acronym?"
In getting this legal advice, I would propose that:
- any legal opinion should be obtained from a third party, preferably a person or entity that can be regarded by the GNSO Council, the GAC, and the affected parties (ie IGOs) as neutral.
- the question and scope of such an enquiry should be agreed by this group and be as specific as possible to ensure it can be provided in a timely fashion and at reasonable cost - e.g. we might want to select a small subset (e.g. 5) of countries for a survey that are representative of the approach in various regions of the world - given that legal advice would be needed from law firms in each country.
This advice would then help inform the work of the GNSO Working Group on IGO-INGO Curative Rights Protections Policy.
Please let me know if the group would like to proceed down this path, and if so how should the question be formulated.
Regards, Bruce Tonkin
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org<mailto:Discussion-igo-rc@icann.org> https://mm.icann.org/mailman/listinfo/discussion-igo-rc
_______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org<mailto:Discussion-igo-rc@icann.org> https://mm.icann.org/mailman/listinfo/discussion-igo-rc
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Hello Phil,
In that regard, if such an effort is undertaken we would seek a good faith estimate of the projected delivery date of the resulting legal memo.
That is a fair question – I will ask the ICANN organization if they can provide some estimates. I expect it will depend on when the text of the question can be agreed, a legal advisor selected, and how many legal jurisdictions are involved. In proposing getting the legal advice it has never been my intention to slow down the community work that is underway. It was just that during our session in Copenhagen the answer to the general question was not clear. The assumption is that legal mechanisms exist to take action over the mis-use of IGO names and abbreviations - but the specifics were not available. It was also clear that different countries may use different approaches. Regards, Bruce Tonkin
Thanks for that response, Bruce. Following up on my previous comments, let me add these thoughts. There is a threshold issue here. Since its inception, the only alternative to judicial process that ICANN has provided has been in relationship to trademark rights; through the UDRP and, more recently, the URS. If ICANN now sets a precedent of providing such an alternative based upon a different kind of legal right it may open a Pandora's box leading other interests to request similar treatment of their DNS-related legal concerns. So I think we should be very careful in regard to the possibility of a very expanded ICANN remit being created, and that is an issue separate and apart from IGO protections. Also, if there is a decision to do additional legal research in this area, I believe it should be restricted solely to identifying laws that create a private right of action. That is, if it found that some nation's consumer protection regime arguably establishes protections for IGO names and acronyms separate from trademark law, but the enforcement mechanism is solely regulatory, that should not be the basis for proposing a new IGO-focused CRP. The UDRP and URS exist to provide alternatives to litigation, and ICANN should definitely not be in the business of creating a right to initiate an administrative dispute where there is no corresponding right to initiate litigation. I hope those thoughts are useful. Best regards, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Bruce Tonkin Sent: Thursday, April 27, 2017 7:39 PM To: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Hello Phil,
In that regard, if such an effort is undertaken we would seek a good faith estimate of the projected delivery date of the resulting legal memo.
That is a fair question – I will ask the ICANN organization if they can provide some estimates. I expect it will depend on when the text of the question can be agreed, a legal advisor selected, and how many legal jurisdictions are involved. In proposing getting the legal advice it has never been my intention to slow down the community work that is underway. It was just that during our session in Copenhagen the answer to the general question was not clear. The assumption is that legal mechanisms exist to take action over the mis-use of IGO names and abbreviations - but the specifics were not available. It was also clear that different countries may use different approaches. Regards, Bruce Tonkin _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
Hello Phil,
That is, if it found that some nation's consumer protection regime arguably establishes protections for IGO names and acronyms separate from trademark law, but the enforcement mechanism is solely regulatory, that should not be the basis for proposing a new IGO-focused CRP. The UDRP and URS exist to provide alternatives to litigation, and ICANN should definitely not be in the business of creating a right to initiate an administrative dispute where there is no corresponding right to initiate litigation.
Just taking the Australian example - Competition and Consumer Act 2010 is administered by the Australian Competition and Consumer Commission (ACCC), which is a regulator, but it also gives some rights for private action. It am not aware of whether it gives any specific rights to IGOs compared to other organizations or individuals, but it could probably handle the situation where consumers were being mislead by the mis-use of an IGO name and abbreviation. Regards, Bruce Tonkin
Thanks for pointing that out, Bruce. I believe that some US consumer protection laws also provide for private enforcement rights, although whether any might arguably be applicable to IGO names and acronyms is a different question. If a legal inquiry is initiated I believe it should not only identify relevant laws but evaluate how common such statutes are across national jurisdictions and the extent to which they are similar in approach. While there are variations in national trademark laws, the concept of trademark law is universal across all national jurisdictions (if there are any exceptions they are certainly outliers and the exceptions that prove the rule). Trademark law also has overarching international agreements such as the Madrid Treaty and Article 6ter of the Paris Convention. I know of no similar international agreements in such areas as consumer protection or unfair competition. In closing, I would again caution that ICANN should think long and hard about setting the precedent of providing any dispute resolution system as an alternative to judicial redress for any category of law other than trademark. Names are clearly a part of ICANN's remit, and the potential clash between domain names and trademarks justifies the existing RPMs. Such justification is arguably absent from other categories of laws. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Bruce Tonkin Sent: Friday, April 28, 2017 10:08 PM To: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs Hello Phil,
That is, if it found that some nation's consumer protection regime arguably establishes protections for IGO names and acronyms separate from trademark law, but the enforcement mechanism is solely regulatory, that should not be the basis for proposing a new IGO-focused CRP. The UDRP and URS exist to provide alternatives to litigation, and ICANN should definitely not be in the business of creating a right to initiate an administrative dispute where there is no corresponding right to initiate litigation.
Just taking the Australian example - Competition and Consumer Act 2010 is administered by the Australian Competition and Consumer Commission (ACCC), which is a regulator, but it also gives some rights for private action. It am not aware of whether it gives any specific rights to IGOs compared to other organizations or individuals, but it could probably handle the situation where consumers were being mislead by the mis-use of an IGO name and abbreviation. Regards, Bruce Tonkin _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org<mailto:Discussion-igo-rc@icann.org> https://mm.icann.org/mailman/listinfo/discussion-igo-rc ----- No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
Hello Phil,
I believe that some US consumer protection laws also provide for private enforcement rights, although whether any might arguably be applicable to IGO names and acronyms is a different question.
In the US, are their federal consumer protection laws, or is it state based? If it is state based - would be interesting to understand if they have some common elements that may relate to misleading and deceptive conduct.
If a legal inquiry is initiated I believe it should not only identify relevant laws but evaluate how common such statutes are across national jurisdictions and the extent to which they are similar in approach.
Yes - that is exactly what I had in mind.
I know of no similar international agreements in such areas as consumer protection or unfair competition.
I assume there may be some agreements that are more regional or bi-lateral - e.g. trade agreements or the European Union. I expect such agreements may cover unfair competition and intellectual property protection , but not sure about consumer protection. I know though that WHOIS provisions are in some trade agreements with the USA.
In closing, I would again caution that ICANN should think long and hard about setting the precedent of providing any dispute resolution system as an alternative to judicial redress for any category of law other than trademark. Names are clearly a part of ICANN's remit, and the potential clash between domain names and trademarks justifies the existing RPMs. Such justification is arguably absent from other categories of laws.
Yes - ultimately we need to follow our bylaws and registry agreements in this area. I think the logical flow is something like this: - the ICANN community develops policies concerning the registrations of second level domain names in gTLDs for which uniform or coordinated resolution is reasonably necessary to facilitate the openness, interoperability, resilience, security and/or stability of the DNS - consensus policies may relate to the resolution of disputes regarding the registration of domain names (as opposed to the use of such domain names, but including where such policies take into account use of the domain names) - ICANN must employ open, transparent and bottom-up, multistakeholder policy development processes that are led by the private sector (including business stakeholders, civil society, the technical community, academia, and end users), while duly taking into account the public policy advice of governments and public authorities. - ICANN must carry out its activities in conformity with relevant principles of international law and international conventions and applicable local law In this case we received public policy advice as it relates to the need for protections of the names and abbreviations of IGOs. Where IGOs have a trademark, they can take advantage of the existing UDRP. We have received information that many IGOs choose not to take advantage of trademark law - and in fact many take advantage of Article 6ter to stop others registering trademarks using their names. We are then left with considering how we can protect IGO names and abbreviations that are not trademarks. Hence I thought it would be useful to better understand what applicable local law there is that the ICANN Community could consider, as it doesn't appear there is any other international law to consider. Whether a separate dispute mechanisms is needed or some tweaks to the wording to the existing UDRP - I have no view - that is for the community to decide. I just feel it would be useful to have the additional facts available to help guide the community's work. Regards, Bruce Tonkin
participants (6)
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Bruce Tonkin -
Carlos Raúl Gutiérrez G. -
Goran Marby -
Jonathan.PASSARO＠oecd.org -
Markus Kummer -
Phil Corwin