The doctrine or principle of specialty is most definitely not an “absurd extradition reference.” Quite to the contrary – it is the bedrock principle of extradition law with which I dealt every day of my life. I don’t know trademark law at all – but I do know that, without a doubt, the phrase “specialty” has at least two very distinct and different meanings. We do everyone a disservice if we just try to ignore that and write with ambiguity. Paul Paul Rosenzweig <mailto:paul.rosenzweig@redbranchconsulting.com> paul.rosenzweig@redbranchconsulting.com O: +1 (202) 547-0660 M: +1 (202) 329-9650 VOIP: +1 (202) 738-1739 <http://www.redbranchconsulting.com/> www.redbranchconsulting.com My PGP Key: <https://keys.mailvelope.com/pks/lookup?op=get&search=0x9A830097CA066684> https://keys.mailvelope.com/pks/lookup?op=get&search=0x9A830097CA066684 From: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces@icann.org> On Behalf Of Greg Shatan Sent: Tuesday, November 20, 2018 12:20 PM To: Jorge.Cancio@bakom.admin.ch Cc: gnso-newgtld-wg-wt5@icann.org Subject: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Jorge, Thank you for your email. I think this is a statement of fact and not a point of view. I searched “principle of specialty” to reveal how it would be most commonly cited and used. That does not seem absurd, but the results I got points out the shortcomings in using this term. Obviously, a search adding “trademark” generates a different result; but that was not the point. I also did searches with “trademark” (and “U.S. trademark” and “Canada trademark”), to find U.S. or Canadian trademark. The results indicate that the term is essentially unknown and unused in connection with trademarks in the US and Canada. This is not a “national lens” issue; it’s a matter of being broadly understood. While the term “principle of specialty” may be unknown to many, the concept is not. The concept is very much a part of U.S. and Canadian trademark law. I was just trying to suggest some plainer English, instead of using a term of art understood only in certain jurisdictions. I’m glad you agree that keeping the term but adding an explanatory footnote is a reasonable compromise. On your other point, however, it looks like you may be confused on the law: “descriptive fair use” and “descriptiveness” are two different concepts in trademark law. “Descriptive fair use” allows a trademarked word or phrase to be used by a third party in a non-trademark sense, as a descriptor of the third party’s goods or services or their geographic origin. But this has nothing to do with whether the third party can use the other party’s trademark as their trademark. This would be governed by “likelihood of confusion” analysis (a part of which is the concept you call the “principle of specialty”). Descriptiveness, on the other hand, goes to the question of whether the first party’s mark is legally protected as a mark. A term that is descriptive and lacks secondary meaning is not protected as a mark, and another party can use that term as their mark, either for different goods and services or even for the same goods and services (although it will be seen as descriptive there, too). Perhaps I am misunderstanding you, because you say descriptive fair use “allows the same term to be used by different trademarks.” I’m not sure what you mean by “by”. It is true that a third party can use a trademark term as in its descriptive sense any way they want, including in their trademark as a descriptor (e.g., if Empire raises big red chickens, they can use the phrase Empire Big Red Chickens and “Big Red” Chicken Gravy can’t stop them.). But descriptive fair use doesn’t cover use in a trademark in a trademark sense (e.g., if Empire’s chickens were not big and red, but they were still “Big Red” brand chickens). Either way, “descriptive fair use” has nothing to do with the ability of two parties to register the same trademark in the same jurisdiction, which is the sole subject of the paragraph in the Report. That is what I am trying to fix here by removing the reference to trademark fair use. Again, this is a point of fact, and has nothing to with “perspective.” I don’t see why this is a problem. I should think we all have the same interest in putting out a factually accurate report. Best regards, Greg On Tue, Nov 20, 2018 at 12:54 AM <Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> > wrote: Hi Greg and all I made my points and I stand by them - I‘ll leave it to staff and co-leads to decide whether in such paras we should let others to rewrite others points of view. Btw: looking up „principle of specialty trademark“ (just using Google autocomplete) would spare us your absurd extradition law reference 🙄 and the Wipo doc I referenced is, well, a good source worlwide if you put down some national lens down... As to descriptive use: it is a limit and allows the same term to be used by different trademarks and limits the scope of term monopolization eg of geographic provenience descriptors - that’s why it makes sense here „from this perspective“... You may add your own footnote or additional para if you like, but please let’s make progress Jorge ________________________________ Von: Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> > Datum: 19. November 2018 um 22:09:25 MEZ Bis: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> > Cc: emily.barabas@icann.org <mailto:emily.barabas@icann.org> <emily.barabas@icann.org <mailto:emily.barabas@icann.org> >, gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> >, mmoll@ca.inter.net <mailto:mmoll@ca.inter.net> <mmoll@ca.inter.net <mailto:mmoll@ca.inter.net> > Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Jorge, I’ll skip over your procedural arguments, since debating assumptions or interpretations about the unwritten rules of commenting is tedious. I will just say that I assumed that once the window for comments closed, any remaining comments would be discussed, so your opportunity to comment was not a matter of luck. Turning to substance, which is a more useful discussion: Following your advice I did a search using Google for “principle of specialty”. Here’s the first result: “A principle of international law that is included in most extradition treaties, whereby a person who is extradited to a country to stand trial for certain criminal offenses may be tried only for those offenses and not for any other pre-extradition offenses.” Most of the next 30 results use it this way (and not all are U.S. sources). There are a couple of trademark references: the 9th result is the WIPO document, and there are a couple of UK references. We do finally come to a U.S. source using it as a trademark term: an article on “The Confusing Similarity Standard in Mexican Law,” in “The Trademark Reporter.” I could find no references using it for U.S. or Canadian trademark law, regardless of the nationality of the source. The point is that this term will have no meaning to lay readers and no meaning to a significant portion of knowledgeable readers. I’ve been practicing trademark law in the U.S. for over 30 years (dealing with trademark laws around the world), and I have rarely, if ever, seen the term. I’ll note that I was flexible when the term “bright line rule” was questioned. I think this is a reasonable request; it did not change the meaning and I’m surprised you object. I’m just trying to make our report understood by as many as possible. If you are insistent the term be used, then we need a footnote to explain it. According to the Swissberg law firm’s website “Swiss trademark law is based on the principle of specialty,” so you are comfortable with it. But we can’t assume general familiarity with the term. As for “trademark fair use” I agree the term is widely known (though it may not be widely understood). Nonetheless, the Report is using the term incorrectly. Trademark fair use does not “allow the use [of] the same word for a trademark even within the same jurisdiction.” I don’t know if you looked at the Wikipedia page you cited, but it completely supports my objection — it discusses descriptive fair use (using a trademark term in a generic sense) and nominative fair use (using a trademark to refer to a trademarked good or service that can’t readily be identified another way — like a band). It may be a “limit” to trademark law, but it has nothing to do with the point at hand — whether two brand owners can use the same mark on unrelated goods and services in the same jurisdiction. I hope that you will accept these neutral and well-meant changes, so we can stop wasting each other’s time, which is for me at least as scarce for you (unless the Swiss have devalued the minute) and in some sense more valuable, since I bill by the hour (and can’t bill anyone for this). Kind regards, Greg On Mon, Nov 19, 2018 at 2:53 AM <Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> <mailto:Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> >> wrote: Dear Greg and all Just very quickly: • The wording you aim at amending has been in the working paper for months: “From this perspective, under trademark law, the principles of specialty and of trademark "fair use" apply, according to which it is possible for two brands to register trademarks for the same term in the same jurisdiction, as long as no confusion or infringement pursuant to the law arises.” • It expresses the point of view of “some” (“from this perspective”) • Your comment came in the last minute – so it was perceived as a last minute attempt to change the point of view of others, without a good chance for those others to intervene (unless, as in my case, they were lucky to have the time to look into these comments). • The “principle of specialty” is widely recognized in trademark law –btw we are not talking only about one specific jurisdiction here- (just google it and you’ll find as first result the reference the WIPO definition: “The right of the owner of a mark to prevent third parties from using that mark in trade is subject to the principle of specialty, according to which this right can only be asserted with regard to those goods and services in respect of which the trademark is protected, usually as a result of registration.30.03.2007” SCT/17/3: Relation of Established Trademark Principles to ... – WIPO www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc <http://www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc> <http://www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc> • Also “fair use” is widely known as a limit to trademark law – which is what the wording in the report is explaining (see https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law)). Hence, next to the principle of specialty, it allows to use the same word for a trademark even within the same jurisdiction. I hope that we leave it by this and avoid wasting each other’s time, which at least for me is a quite scarce resource… Regards Jorge Von: Greg Shatan <gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> <mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> >> Gesendet: Sonntag, 18. November 2018 23:54 An: Marita Moll <mmoll@ca.inter.net <mailto:mmoll@ca.inter.net> <mailto:mmoll@ca.inter.net <mailto:mmoll@ca.inter.net> >> Cc: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> <mailto:Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> >>; Emily Barabas <emily.barabas@icann.org <mailto:emily.barabas@icann.org> <mailto:emily.barabas@icann.org <mailto:emily.barabas@icann.org> >>; Icann Gnso Newgtld Wg Wt5 <gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <mailto:gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> >> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 With regard to the objection to my comments (numbered as 69 and 70), the reasons for these were explained in detail in my submission. Unfortunately, those were left out of the document circulated by staff. It is really incorrect and unfortunate to characterize these changes as ones intended to delete anyone's point of view. These comments were on the following text, and suggested that the first text highlighted below should be deleted and the second be added: TLDs are a unique resource. Some Work Track members have contrasted this 33 unique quality of TLDs with the use of names under trademark law. >From this 34 perspective, under trademark law, the principles of specialty and of trademark 35 "fair use" apply, according to which it is possible for two brands to register 36 trademarks for the same term in the same jurisdiction [for unrelated goods and services], as long as no confusion or 37 infringement pursuant to the law arises. I'll explain again and hopefully more clearly. First the term "principle of specialty" is not one generally used in discussing US trademark law (perhaps like "bright line rule" it is a term that does not travel well). I had to look it up to see what it meant. We need to use terms that will be commonly understood, at least by those with some knowledge of the subject matter. The added language "for unrelated goods and services" really covers the same concept. Furthermore the added language corrects what is otherwise an ambiguous (and arguably, misleading) description of basic trademark laws (i.e., without that language, it leaves the impression that the same mark can be registered and used for related goods and services in the same country). In other words, this was merely a clarifying change. The second change (deleting the reference to "trademark 'fair use'") was also intended to be corrective, not to remove anyone's opinion. That is because this is an incorrect use of the term "trademark fair use." Trademark fair use is not in any way related to the right to use a trademark for different goods and services than an existing trademark. Trademark fair use refers to either "descriptive" fair use -- the right to call an apple an apple, regardless of Apple's trademark rights -- or to "nominative" fair use -- the right to call the Spice Girls the Spice Girls (e.g., in a ticket giveaway), even though Spice Girls is a trademark. If these changes (or any others I suggested) are objectionable, they should be responded to in substance, rather than by broad (mis)characterization and/or by introducing ex post facto rules about what changes can be made when, and which seem intended to dismiss changes without reaching their merits. I'm as interested in closure as anyone, but sending out a report with incorrect assertions will delay closure in the long run. Best regards, Greg On Wed, Nov 14, 2018 at 9:03 AM Marita Moll <mmoll@ca.inter.net <mailto:mmoll@ca.inter.net> <mailto:mmoll@ca.inter.net <mailto:mmoll@ca.inter.net> >> wrote: Yes, I think this is a valid comment. We could find ourselves right back at the beginning. Marita On 11/14/2018 8:48 AM, Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> <mailto:Jorge.Cancio@bakom.admin.ch <mailto:Jorge.Cancio@bakom.admin.ch> > wrote: Dear Emily and all Thanks very much for the new text. I will not be able to make the call (am in Paris at the IGF), but let me share the general observation that there should not be changes in the last minute which try to change the balance of the text as had been prepared by staff, especially changes which try to convey a different reflection of the discussions already had in the work track. I also would like to urge that we avoid last minute changes intended to change the description of what was said or argued by “some”. Deleting or rephrasing of others’ opinions by others with a different opinion should be refrained from. For instance, I feel that the comments 69 and 70 from Greg go in that direction – I would urge not to do that – otherwise others may feel the need to edit the opinions expressed by others, which at this stage is really meaningless. Kindly Jorge Von: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces@icann.org <mailto:gnso-newgtld-wg-wt5-bounces@icann.org> ><mailto:gnso-newgtld-wg-wt5-bounces@icann.org <mailto:gnso-newgtld-wg-wt5-bounces@icann.org> > Im Auftrag von Emily Barabas Gesendet: Mittwoch, 14. November 2018 14:26 An: gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <mailto:gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> > Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Dear all, Thanks to those who shared additional comments and suggestions on the list. Please see the attached updated version of the document which we will use on the call shortly. Comments highlighted in purple are those added since last week’s call. Those in yellow require further discussion and will be the focus of the call today. Kind regards, Emily From: Emily Barabas <emily.barabas@icann.org <mailto:emily.barabas@icann.org> <mailto:emily.barabas@icann.org <mailto:emily.barabas@icann.org> >> Date: Tuesday, 13 November 2018 at 12:54 To: "gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <mailto:gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> >" <gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <mailto:gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> >> Subject: Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Dear Work Track 5 members, This is a reminder that the deadline to provide input on the draft Initial Report is Friday 16 November. If you would like the group to discuss you input on the call tomorrow, please make sure to send your input to the mailing list prior to the call. Please find below the proposed agenda for tomorrow’s call: 1. Welcome/Agenda Review/SOI Updates 2. Recommendation 11 - non-capital city names 3. Review new comments, clarifications, and edits to the draft Initial Report 4. AOB Kind regards, Emily From: Emily Barabas <emily.barabas@icann.org <mailto:emily.barabas@icann.org> <mailto:emily.barabas@icann.org <mailto:emily.barabas@icann.org> >> Date: Thursday, 8 November 2018 at 20:09 To: "gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <mailto:gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> >" <gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> <mailto:gnso-newgtld-wg-wt5@icann.org <mailto:gnso-newgtld-wg-wt5@icann.org> >> Subject: Initial Report next steps and deadline for input - Friday 16 November Dear Work Track 5 members, Thanks to all who have submitted comments about the draft Initial Report on the mailing list and those who were able to join the call yesterday to go through some of the comments received that may require further discussion. Please find attached a revised draft of the report incorporating feedback received on the call. As a reminder, the target date for publishing the Initial Report is 20 November. In view of this timeline, the Work Track leadership team kindly requests that members submit any final feedback on the Initial Report no later than Friday 16 November. You can either insert comments in a copy of the attached document and send to the WT5 mailing list or send your comments in the body of an email to the WT5 list, identifying the page and line number of the text you are referencing. Below you will find some of the questions/concerns raised in comments by members that still may need additional input. The leadership team is sending these on the mailing list to make sure that all members have a chance to provide feedback, even if they were not able to join the call. • On page 17 (recommendations section of the report) two WT members commented that they felt it was premature to include any preliminary recommendation in the Initial Report on the topic of non-capital city names. Do you support removing preliminary recommendation 11 on treatment of non-capital city names? Or do you favor leaving the recommendation in the report, noting that it can be changed for the Final Report based on community input and further discussion in the Work Track? Regardless of whether the recommendation is kept or removed, there are two questions for community input on this topic (e10 and e11) included in the Initial Report, so the group can expect additional community feedback through public comment to support further deliberations. • On page 40 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Once a gTLD is registered with an intended use that is geographic in nature, all other variations and translations of this term are unconditionally available for registration.” Another Work Track member requested clarification on the meaning of “unconditionally available” and also requested clarification about which entities might be able to apply for these variations and translations under the proposal. Can the author of this proposal provide any additional clarification? • On page 41 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Applicants for geographic names must apply to the GAC to receive permission to submit an application for the string.” Another Work Track member requested clarification about the scope and meaning of this proposal, including how it would interact with other requirements. Can the author of this proposal provide any additional clarification? • On page 76 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Apply a "bright-line" rule that any geographic term that is not explicitly and expressly protected is unprotected. No objection or non-consent can be used to stop its registration.” Other Work Track members raised concern that the term “bright line” rule may not be widely used and understood, and further requested clarification on the scope of this rule and the basis for protection. Can the author of this proposal provide any additional clarification? Note that Work Track members are welcome to comment on any other parts of the draft in addition to the items listed above. Kind regards, Emily Emily Barabas | Policy Manager ICANN | Internet Corporation for Assigned Names and Numbers Email: emily.barabas@icann.org <mailto:emily.barabas@icann.org> <mailto:emily.barabas@icann.org <mailto:emily.barabas@icann.org> > | Phone: +31 (0)6 84507976 _______________________________________________ Gnso-newgtld-wg-wt5 mailing list Gnso-newgtld-wg-wt5@icann.org <mailto:Gnso-newgtld-wg-wt5@icann.org> <mailto:Gnso-newgtld-wg-wt5@icann.org <mailto:Gnso-newgtld-wg-wt5@icann.org> > https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg-wt5 _______________________________________________ Gnso-newgtld-wg-wt5 mailing list Gnso-newgtld-wg-wt5@icann.org <mailto:Gnso-newgtld-wg-wt5@icann.org> <mailto:Gnso-newgtld-wg-wt5@icann.org <mailto:Gnso-newgtld-wg-wt5@icann.org> > https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg-wt5

Thanks Jorge. I know you didn’t want there to be any discussion on the list, but I really don’t understand what your edits mean or are meant to accomplish. Can you please clarify? I’m not asking to thwart the changes – I just want to understand them. Also, when you say “we would be in a position to accept” can you let us know who the “we” is? Is “we” the GAC or Switzerland or you individually (if individually, don’t feel bad – I use the royal “we” quite a bit. ☺)? Thanks much. Best, Paul From: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces@icann.org> On Behalf Of Jorge.Cancio@bakom.admin.ch Sent: Monday, November 26, 2018 1:38 AM To: gnso-newgtld-wg-wt5@icann.org Subject: [Gnso-newgtld-wg-wt5] WG: Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Dear all Please find attached on pages 38 and 39 in track changes the amendments we would be in a position to accept regarding this issue (principle of specialty and fair use). I’m sharing this only with a view to a constructive solution and would really urge not to start endless email exchanges onlist. Hope this helps Kindly Jorge Von: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Gesendet: Dienstag, 20. November 2018 18:20 An: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>> Cc: emily.barabas@icann.org<mailto:emily.barabas@icann.org>; gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>; mmoll@ca.inter.net<mailto:mmoll@ca.inter.net> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Jorge, Thank you for your email. I think this is a statement of fact and not a point of view. I searched “principle of specialty” to reveal how it would be most commonly cited and used. That does not seem absurd, but the results I got points out the shortcomings in using this term. Obviously, a search adding “trademark” generates a different result; but that was not the point. I also did searches with “trademark” (and “U.S. trademark” and “Canada trademark”), to find U.S. or Canadian trademark. The results indicate that the term is essentially unknown and unused in connection with trademarks in the US and Canada. This is not a “national lens” issue; it’s a matter of being broadly understood. While the term “principle of specialty” may be unknown to many, the concept is not. The concept is very much a part of U.S. and Canadian trademark law. I was just trying to suggest some plainer English, instead of using a term of art understood only in certain jurisdictions. I’m glad you agree that keeping the term but adding an explanatory footnote is a reasonable compromise. On your other point, however, it looks like you may be confused on the law: “descriptive fair use” and “descriptiveness” are two different concepts in trademark law. “Descriptive fair use” allows a trademarked word or phrase to be used by a third party in a non-trademark sense, as a descriptor of the third party’s goods or services or their geographic origin. But this has nothing to do with whether the third party can use the other party’s trademark as their trademark. This would be governed by “likelihood of confusion” analysis (a part of which is the concept you call the “principle of specialty”). Descriptiveness, on the other hand, goes to the question of whether the first party’s mark is legally protected as a mark. A term that is descriptive and lacks secondary meaning is not protected as a mark, and another party can use that term as their mark, either for different goods and services or even for the same goods and services (although it will be seen as descriptive there, too). Perhaps I am misunderstanding you, because you say descriptive fair use “allows the same term to be used by different trademarks.” I’m not sure what you mean by “by”. It is true that a third party can use a trademark term as in its descriptive sense any way they want, including in their trademark as a descriptor (e.g., if Empire raises big red chickens, they can use the phrase Empire Big Red Chickens and “Big Red” Chicken Gravy can’t stop them.). But descriptive fair use doesn’t cover use in a trademark in a trademark sense (e.g., if Empire’s chickens were not big and red, but they were still “Big Red” brand chickens). Either way, “descriptive fair use” has nothing to do with the ability of two parties to register the same trademark in the same jurisdiction, which is the sole subject of the paragraph in the Report. That is what I am trying to fix here by removing the reference to trademark fair use. Again, this is a point of fact, and has nothing to with “perspective.” I don’t see why this is a problem. I should think we all have the same interest in putting out a factually accurate report. Best regards, Greg On Tue, Nov 20, 2018 at 12:54 AM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>> wrote: Hi Greg and all I made my points and I stand by them - I‘ll leave it to staff and co-leads to decide whether in such paras we should let others to rewrite others points of view. Btw: looking up „principle of specialty trademark“ (just using Google autocomplete) would spare us your absurd extradition law reference 🙄 and the Wipo doc I referenced is, well, a good source worlwide if you put down some national lens down... As to descriptive use: it is a limit and allows the same term to be used by different trademarks and limits the scope of term monopolization eg of geographic provenience descriptors - that’s why it makes sense here „from this perspective“... You may add your own footnote or additional para if you like, but please let’s make progress Jorge ________________________________ Von: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Datum: 19. November 2018 um 22:09:25 MEZ Bis: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>> Cc: emily.barabas@icann.org<mailto:emily.barabas@icann.org> <emily.barabas@icann.org<mailto:emily.barabas@icann.org>>, gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org> <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>, mmoll@ca.inter.net<mailto:mmoll@ca.inter.net> <mmoll@ca.inter.net<mailto:mmoll@ca.inter.net>> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Jorge, I’ll skip over your procedural arguments, since debating assumptions or interpretations about the unwritten rules of commenting is tedious. I will just say that I assumed that once the window for comments closed, any remaining comments would be discussed, so your opportunity to comment was not a matter of luck. Turning to substance, which is a more useful discussion: Following your advice I did a search using Google for “principle of specialty”. Here’s the first result: “A principle of international law that is included in most extradition treaties, whereby a person who is extradited to a country to stand trial for certain criminal offenses may be tried only for those offenses and not for any other pre-extradition offenses.” Most of the next 30 results use it this way (and not all are U.S. sources). There are a couple of trademark references: the 9th result is the WIPO document, and there are a couple of UK references. We do finally come to a U.S. source using it as a trademark term: an article on “The Confusing Similarity Standard in Mexican Law,” in “The Trademark Reporter.” I could find no references using it for U.S. or Canadian trademark law, regardless of the nationality of the source. The point is that this term will have no meaning to lay readers and no meaning to a significant portion of knowledgeable readers. I’ve been practicing trademark law in the U.S. for over 30 years (dealing with trademark laws around the world), and I have rarely, if ever, seen the term. I’ll note that I was flexible when the term “bright line rule” was questioned. I think this is a reasonable request; it did not change the meaning and I’m surprised you object. I’m just trying to make our report understood by as many as possible. If you are insistent the term be used, then we need a footnote to explain it. According to the Swissberg law firm’s website “Swiss trademark law is based on the principle of specialty,” so you are comfortable with it. But we can’t assume general familiarity with the term. As for “trademark fair use” I agree the term is widely known (though it may not be widely understood). Nonetheless, the Report is using the term incorrectly. Trademark fair use does not “allow the use [of] the same word for a trademark even within the same jurisdiction.” I don’t know if you looked at the Wikipedia page you cited, but it completely supports my objection — it discusses descriptive fair use (using a trademark term in a generic sense) and nominative fair use (using a trademark to refer to a trademarked good or service that can’t readily be identified another way — like a band). It may be a “limit” to trademark law, but it has nothing to do with the point at hand — whether two brand owners can use the same mark on unrelated goods and services in the same jurisdiction. I hope that you will accept these neutral and well-meant changes, so we can stop wasting each other’s time, which is for me at least as scarce for you (unless the Swiss have devalued the minute) and in some sense more valuable, since I bill by the hour (and can’t bill anyone for this). Kind regards, Greg On Mon, Nov 19, 2018 at 2:53 AM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch><mailto:Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>>> wrote: Dear Greg and all Just very quickly: • The wording you aim at amending has been in the working paper for months: “From this perspective, under trademark law, the principles of specialty and of trademark "fair use" apply, according to which it is possible for two brands to register trademarks for the same term in the same jurisdiction, as long as no confusion or infringement pursuant to the law arises.” • It expresses the point of view of “some” (“from this perspective”) • Your comment came in the last minute – so it was perceived as a last minute attempt to change the point of view of others, without a good chance for those others to intervene (unless, as in my case, they were lucky to have the time to look into these comments). • The “principle of specialty” is widely recognized in trademark law –btw we are not talking only about one specific jurisdiction here- (just google it and you’ll find as first result the reference the WIPO definition: “The right of the owner of a mark to prevent third parties from using that mark in trade is subject to the principle of specialty, according to which this right can only be asserted with regard to those goods and services in respect of which the trademark is protected, usually as a result of registration.30.03.2007” SCT/17/3: Relation of Established Trademark Principles to ... – WIPO www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Fedocs%2Fmdocs%2Fsct%2Fen%2Fsct_17%2Fsct_17_3.doc&data=02%7C01%7Cpmcgrady%40winston.com%7C1d21103879564525186d08d6537217f2%7C12a8aae45e2f4ad8adab9375a84aa3e5%7C0%7C1%7C636788147837095972&sdata=fIdQjaSLwEN%2Bsk%2FdiiA7swy6S4Ef1Vw17d8cG%2FTX2%2Bo%3D&reserved=0><http://www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc<https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.wipo.int%2Fedocs%2Fmdocs%2Fsct%2Fen%2Fsct_17%2Fsct_17_3.doc&data=02%7C01%7Cpmcgrady%40winston.com%7C1d21103879564525186d08d6537217f2%7C12a8aae45e2f4ad8adab9375a84aa3e5%7C0%7C1%7C636788147837105980&sdata=HexGK1HNc8HXFgnzNISz0PDJh6zMi%2F76RtgC2U5oYgk%3D&reserved=0>> • Also “fair use” is widely known as a limit to trademark law – which is what the wording in the report is explaining (see https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law)<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fen.wikipedia.org%2Fwiki%2FFair_use_(U.S._trademark_law)&data=02%7C01%7Cpmcgrady%40winston.com%7C1d21103879564525186d08d6537217f2%7C12a8aae45e2f4ad8adab9375a84aa3e5%7C0%7C0%7C636788147837105980&sdata=xBY%2F2Z5FihKuE6PDjsfzGEBSWyUCUMeF4kAslWb32mU%3D&reserved=0>). Hence, next to the principle of specialty, it allows to use the same word for a trademark even within the same jurisdiction. I hope that we leave it by this and avoid wasting each other’s time, which at least for me is a quite scarce resource… Regards Jorge Von: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com><mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>>> Gesendet: Sonntag, 18. November 2018 23:54 An: Marita Moll <mmoll@ca.inter.net<mailto:mmoll@ca.inter.net><mailto:mmoll@ca.inter.net<mailto:mmoll@ca.inter.net>>> Cc: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch><mailto:Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>>>; Emily Barabas <emily.barabas@icann.org<mailto:emily.barabas@icann.org><mailto:emily.barabas@icann.org<mailto:emily.barabas@icann.org>>>; Icann Gnso Newgtld Wg Wt5 <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org><mailto:gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 With regard to the objection to my comments (numbered as 69 and 70), the reasons for these were explained in detail in my submission. Unfortunately, those were left out of the document circulated by staff. It is really incorrect and unfortunate to characterize these changes as ones intended to delete anyone's point of view. These comments were on the following text, and suggested that the first text highlighted below should be deleted and the second be added: TLDs are a unique resource. Some Work Track members have contrasted this 33 unique quality of TLDs with the use of names under trademark law. From this 34 perspective, under trademark law, the principles of specialty and of trademark 35 "fair use" apply, according to which it is possible for two brands to register 36 trademarks for the same term in the same jurisdiction [for unrelated goods and services], as long as no confusion or 37 infringement pursuant to the law arises. I'll explain again and hopefully more clearly. First the term "principle of specialty" is not one generally used in discussing US trademark law (perhaps like "bright line rule" it is a term that does not travel well). I had to look it up to see what it meant. We need to use terms that will be commonly understood, at least by those with some knowledge of the subject matter. The added language "for unrelated goods and services" really covers the same concept. Furthermore the added language corrects what is otherwise an ambiguous (and arguably, misleading) description of basic trademark laws (i.e., without that language, it leaves the impression that the same mark can be registered and used for related goods and services in the same country). In other words, this was merely a clarifying change. The second change (deleting the reference to "trademark 'fair use'") was also intended to be corrective, not to remove anyone's opinion. That is because this is an incorrect use of the term "trademark fair use." Trademark fair use is not in any way related to the right to use a trademark for different goods and services than an existing trademark. Trademark fair use refers to either "descriptive" fair use -- the right to call an apple an apple, regardless of Apple's trademark rights -- or to "nominative" fair use -- the right to call the Spice Girls the Spice Girls (e.g., in a ticket giveaway), even though Spice Girls is a trademark. If these changes (or any others I suggested) are objectionable, they should be responded to in substance, rather than by broad (mis)characterization and/or by introducing ex post facto rules about what changes can be made when, and which seem intended to dismiss changes without reaching their merits. I'm as interested in closure as anyone, but sending out a report with incorrect assertions will delay closure in the long run. Best regards, Greg On Wed, Nov 14, 2018 at 9:03 AM Marita Moll <mmoll@ca.inter.net<mailto:mmoll@ca.inter.net><mailto:mmoll@ca.inter.net<mailto:mmoll@ca.inter.net>>> wrote: Yes, I think this is a valid comment. We could find ourselves right back at the beginning. Marita On 11/14/2018 8:48 AM, Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch><mailto:Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>> wrote: Dear Emily and all Thanks very much for the new text. I will not be able to make the call (am in Paris at the IGF), but let me share the general observation that there should not be changes in the last minute which try to change the balance of the text as had been prepared by staff, especially changes which try to convey a different reflection of the discussions already had in the work track. I also would like to urge that we avoid last minute changes intended to change the description of what was said or argued by “some”. Deleting or rephrasing of others’ opinions by others with a different opinion should be refrained from. For instance, I feel that the comments 69 and 70 from Greg go in that direction – I would urge not to do that – otherwise others may feel the need to edit the opinions expressed by others, which at this stage is really meaningless. Kindly Jorge Von: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces@icann.org<mailto:gnso-newgtld-wg-wt5-bounces@icann.org>><mailto:gnso-newgtld-wg-wt5-bounces@icann.org<mailto:gnso-newgtld-wg-wt5-bounces@icann.org>> Im Auftrag von Emily Barabas Gesendet: Mittwoch, 14. November 2018 14:26 An: gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org><mailto:gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Dear all, Thanks to those who shared additional comments and suggestions on the list. Please see the attached updated version of the document which we will use on the call shortly. Comments highlighted in purple are those added since last week’s call. Those in yellow require further discussion and will be the focus of the call today. Kind regards, Emily From: Emily Barabas <emily.barabas@icann.org<mailto:emily.barabas@icann.org><mailto:emily.barabas@icann.org<mailto:emily.barabas@icann.org>>> Date: Tuesday, 13 November 2018 at 12:54 To: "gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org><mailto:gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>" <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org><mailto:gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>> Subject: Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018 Dear Work Track 5 members, This is a reminder that the deadline to provide input on the draft Initial Report is Friday 16 November. If you would like the group to discuss you input on the call tomorrow, please make sure to send your input to the mailing list prior to the call. Please find below the proposed agenda for tomorrow’s call: 1. Welcome/Agenda Review/SOI Updates 2. Recommendation 11 - non-capital city names 3. Review new comments, clarifications, and edits to the draft Initial Report 4. AOB Kind regards, Emily From: Emily Barabas <emily.barabas@icann.org<mailto:emily.barabas@icann.org><mailto:emily.barabas@icann.org<mailto:emily.barabas@icann.org>>> Date: Thursday, 8 November 2018 at 20:09 To: "gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org><mailto:gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>" <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org><mailto:gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>> Subject: Initial Report next steps and deadline for input - Friday 16 November Dear Work Track 5 members, Thanks to all who have submitted comments about the draft Initial Report on the mailing list and those who were able to join the call yesterday to go through some of the comments received that may require further discussion. Please find attached a revised draft of the report incorporating feedback received on the call. As a reminder, the target date for publishing the Initial Report is 20 November. In view of this timeline, the Work Track leadership team kindly requests that members submit any final feedback on the Initial Report no later than Friday 16 November. You can either insert comments in a copy of the attached document and send to the WT5 mailing list or send your comments in the body of an email to the WT5 list, identifying the page and line number of the text you are referencing. Below you will find some of the questions/concerns raised in comments by members that still may need additional input. The leadership team is sending these on the mailing list to make sure that all members have a chance to provide feedback, even if they were not able to join the call. • On page 17 (recommendations section of the report) two WT members commented that they felt it was premature to include any preliminary recommendation in the Initial Report on the topic of non-capital city names. Do you support removing preliminary recommendation 11 on treatment of non-capital city names? Or do you favor leaving the recommendation in the report, noting that it can be changed for the Final Report based on community input and further discussion in the Work Track? Regardless of whether the recommendation is kept or removed, there are two questions for community input on this topic (e10 and e11) included in the Initial Report, so the group can expect additional community feedback through public comment to support further deliberations. • On page 40 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Once a gTLD is registered with an intended use that is geographic in nature, all other variations and translations of this term are unconditionally available for registration.” Another Work Track member requested clarification on the meaning of “unconditionally available” and also requested clarification about which entities might be able to apply for these variations and translations under the proposal. Can the author of this proposal provide any additional clarification? • On page 41 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Applicants for geographic names must apply to the GAC to receive permission to submit an application for the string.” Another Work Track member requested clarification about the scope and meaning of this proposal, including how it would interact with other requirements. Can the author of this proposal provide any additional clarification? • On page 76 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Apply a "bright-line" rule that any geographic term that is not explicitly and expressly protected is unprotected. No objection or non-consent can be used to stop its registration.” Other Work Track members raised concern that the term “bright line” rule may not be widely used and understood, and further requested clarification on the scope of this rule and the basis for protection. Can the author of this proposal provide any additional clarification? Note that Work Track members are welcome to comment on any other parts of the draft in addition to the items listed above. Kind regards, Emily Emily Barabas | Policy Manager ICANN | Internet Corporation for Assigned Names and Numbers Email: emily.barabas@icann.org<mailto:emily.barabas@icann.org><mailto:emily.barabas@icann.org<mailto:emily.barabas@icann.org>> | Phone: +31 (0)6 84507976 _______________________________________________ Gnso-newgtld-wg-wt5 mailing list Gnso-newgtld-wg-wt5@icann.org<mailto:Gnso-newgtld-wg-wt5@icann.org><mailto:Gnso-newgtld-wg-wt5@icann.org<mailto:Gnso-newgtld-wg-wt5@icann.org>> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg-wt5<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-newgtld-wg-wt5&data=02%7C01%7Cpmcgrady%40winston.com%7C1d21103879564525186d08d6537217f2%7C12a8aae45e2f4ad8adab9375a84aa3e5%7C0%7C0%7C636788147837115988&sdata=4exPH7nF8UHITW%2FjuNc5wkzZPvqWDOXAHiqF5O4dPTs%3D&reserved=0> _______________________________________________ Gnso-newgtld-wg-wt5 mailing list Gnso-newgtld-wg-wt5@icann.org<mailto:Gnso-newgtld-wg-wt5@icann.org><mailto:Gnso-newgtld-wg-wt5@icann.org<mailto:Gnso-newgtld-wg-wt5@icann.org>> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg-wt5<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-newgtld-wg-wt5&data=02%7C01%7Cpmcgrady%40winston.com%7C1d21103879564525186d08d6537217f2%7C12a8aae45e2f4ad8adab9375a84aa3e5%7C0%7C0%7C636788147837126001&sdata=aU3opeZjO43pgpw%2BrsE8d5zF42NwoZWZyDOpebfXTgs%3D&reserved=0> ________________________________ The contents of this message may be privileged and confidential. If this message has been received in error, please delete it without reading it. Your receipt of this message is not intended to waive any applicable privilege. Please do not disseminate this message without the permission of the author. Any tax advice contained in this email was not intended to be used, and cannot be used, by you (or any other taxpayer) to avoid penalties under applicable tax laws and regulations.

Hohoho Paul. Your sardonic sense of humour hasn’t transmogrified to sarcasm yet! We the royals believe so.

On Nov 26, 2018, at 10:38 AM, <Jorge.Cancio@bakom.admin.ch> <Jorge.Cancio@bakom.admin.ch> wrote:

Dear Paul Sorry for the «we»… it’s an agreed Swiss position… Regarding the rationale: the edits intend to suggest a text that addresses the concerns expressed by Greg (see all the exchange below). Regards Jorge

Von: McGrady, Paul D. <PMcGrady@winston.com> Gesendet: Montag, 26. November 2018 16:35 An: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch>; gnso-newgtld-wg-wt5@icann.org Betreff: RE: [Gnso-newgtld-wg-wt5] WG: Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

Thanks Jorge.

I know you didn’t want there to be any discussion on the list, but I really don’t understand what your edits mean or are meant to accomplish. Can you please clarify? I’m not asking to thwart the changes – I just want to understand them.

Also, when you say “we would be in a position to accept” can you let us know who the “we” is? Is “we” the GAC or Switzerland or you individually (if individually, don’t feel bad – I use the royal “we” quite a bit. J)? Thanks much.

Best, Paul

From: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces@icann.org> On Behalf Of Jorge.Cancio@bakom.admin.ch Sent: Monday, November 26, 2018 1:38 AM To: gnso-newgtld-wg-wt5@icann.org Subject: [Gnso-newgtld-wg-wt5] WG: Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

Dear all Please find attached on pages 38 and 39 in track changes the amendments we would be in a position to accept regarding this issue (principle of specialty and fair use). I’m sharing this only with a view to a constructive solution and would really urge not to start endless email exchanges onlist. Hope this helps Kindly Jorge

Von: Greg Shatan <gregshatanipc@gmail.com> Gesendet: Dienstag, 20. November 2018 18:20 An: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch> Cc: emily.barabas@icann.org; gnso-newgtld-wg-wt5@icann.org; mmoll@ca.inter.net Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

Jorge,

Thank you for your email. I think this is a statement of fact and not a point of view. I searched “principle of specialty” to reveal how it would be most commonly cited and used. That does not seem absurd, but the results I got points out the shortcomings in using this term.

Obviously, a search adding “trademark” generates a different result; but that was not the point. I also did searches with “trademark” (and “U.S. trademark” and “Canada trademark”), to find U.S. or Canadian trademark. The results indicate that the term is essentially unknown and unused in connection with trademarks in the US and Canada.

This is not a “national lens” issue; it’s a matter of being broadly understood. While the term “principle of specialty” may be unknown to many, the concept is not. The concept is very much a part of U.S. and Canadian trademark law. I was just trying to suggest some plainer English, instead of using a term of art understood only in certain jurisdictions. I’m glad you agree that keeping the term but adding an explanatory footnote is a reasonable compromise.

On your other point, however, it looks like you may be confused on the law: “descriptive fair use” and “descriptiveness” are two different concepts in trademark law. “Descriptive fair use” allows a trademarked word or phrase to be used by a third party in a non-trademark sense, as a descriptor of the third party’s goods or services or their geographic origin. But this has nothing to do with whether the third party can use the other party’s trademark as their trademark. This would be governed by “likelihood of confusion” analysis (a part of which is the concept you call the “principle of specialty”).

Descriptiveness, on the other hand, goes to the question of whether the first party’s mark is legally protected as a mark. A term that is descriptive and lacks secondary meaning is not protected as a mark, and another party can use that term as their mark, either for different goods and services or even for the same goods and services (although it will be seen as descriptive there, too).

Perhaps I am misunderstanding you, because you say descriptive fair use “allows the same term to be used by different trademarks.” I’m not sure what you mean by “by”. It is true that a third party can use a trademark term as in its descriptive sense any way they want, including in their trademark as a descriptor (e.g., if Empire raises big red chickens, they can use the phrase Empire Big Red Chickens and “Big Red” Chicken Gravy can’t stop them.). But descriptive fair use doesn’t cover use in a trademark in a trademark sense (e.g., if Empire’s chickens were not big and red, but they were still “Big Red” brand chickens).

Either way, “descriptive fair use” has nothing to do with the ability of two parties to register the same trademark in the same jurisdiction, which is the sole subject of the paragraph in the Report. That is what I am trying to fix here by removing the reference to trademark fair use. Again, this is a point of fact, and has nothing to with “perspective.” I don’t see why this is a problem. I should think we all have the same interest in putting out a factually accurate report.

Best regards,

Greg

On Tue, Nov 20, 2018 at 12:54 AM <Jorge.Cancio@bakom.admin.ch> wrote: Hi Greg and all I made my points and I stand by them - I‘ll leave it to staff and co-leads to decide whether in such paras we should let others to rewrite others points of view. Btw: looking up „principle of specialty trademark“ (just using Google autocomplete) would spare us your absurd extradition law reference 🙄 and the Wipo doc I referenced is, well, a good source worlwide if you put down some national lens down... As to descriptive use: it is a limit and allows the same term to be used by different trademarks and limits the scope of term monopolization eg of geographic provenience descriptors - that’s why it makes sense here „from this perspective“... You may add your own footnote or additional para if you like, but please let’s make progress Jorge

________________________________

Von: Greg Shatan <gregshatanipc@gmail.com> Datum: 19. November 2018 um 22:09:25 MEZ Bis: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch> Cc: emily.barabas@icann.org <emily.barabas@icann.org>, gnso-newgtld-wg-wt5@icann.org <gnso-newgtld-wg-wt5@icann.org>, mmoll@ca.inter.net <mmoll@ca.inter.net> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

Jorge,

I’ll skip over your procedural arguments, since debating assumptions or interpretations about the unwritten rules of commenting is tedious. I will just say that I assumed that once the window for comments closed, any remaining comments would be discussed, so your opportunity to comment was not a matter of luck. Turning to substance, which is a more useful discussion:

Following your advice I did a search using Google for “principle of specialty”. Here’s the first result: “A principle of international law that is included in most extradition treaties, whereby a person who is extradited to a country to stand trial for certain criminal offenses may be tried only for those offenses and not for any other pre-extradition offenses.” Most of the next 30 results use it this way (and not all are U.S. sources).

There are a couple of trademark references: the 9th result is the WIPO document, and there are a couple of UK references. We do finally come to a U.S. source using it as a trademark term: an article on “The Confusing Similarity Standard in Mexican Law,” in “The Trademark Reporter.” I could find no references using it for U.S. or Canadian trademark law, regardless of the nationality of the source.

The point is that this term will have no meaning to lay readers and no meaning to a significant portion of knowledgeable readers. I’ve been practicing trademark law in the U.S. for over 30 years (dealing with trademark laws around the world), and I have rarely, if ever, seen the term.

I’ll note that I was flexible when the term “bright line rule” was questioned. I think this is a reasonable request; it did not change the meaning and I’m surprised you object. I’m just trying to make our report understood by as many as possible. If you are insistent the term be used, then we need a footnote to explain it. According to the Swissberg law firm’s website “Swiss trademark law is based on the principle of specialty,” so you are comfortable with it. But we can’t assume general familiarity with the term.

As for “trademark fair use” I agree the term is widely known (though it may not be widely understood). Nonetheless, the Report is using the term incorrectly. Trademark fair use does not “allow the use [of] the same word for a trademark even within the same jurisdiction.”

I don’t know if you looked at the Wikipedia page you cited, but it completely supports my objection — it discusses descriptive fair use (using a trademark term in a generic sense) and nominative fair use (using a trademark to refer to a trademarked good or service that can’t readily be identified another way — like a band). It may be a “limit” to trademark law, but it has nothing to do with the point at hand — whether two brand owners can use the same mark on unrelated goods and services in the same jurisdiction.

I hope that you will accept these neutral and well-meant changes, so we can stop wasting each other’s time, which is for me at least as scarce for you (unless the Swiss have devalued the minute) and in some sense more valuable, since I bill by the hour (and can’t bill anyone for this).

Kind regards,

Greg

On Mon, Nov 19, 2018 at 2:53 AM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>> wrote: Dear Greg and all

Just very quickly:

• The wording you aim at amending has been in the working paper for months: “From this perspective, under trademark law, the principles of specialty and of trademark "fair use" apply, according to which it is possible for two brands to register trademarks for the same term in the same jurisdiction, as long as no confusion or infringement pursuant to the law arises.”

• It expresses the point of view of “some” (“from this perspective”)

• Your comment came in the last minute – so it was perceived as a last minute attempt to change the point of view of others, without a good chance for those others to intervene (unless, as in my case, they were lucky to have the time to look into these comments).

• The “principle of specialty” is widely recognized in trademark law –btw we are not talking only about one specific jurisdiction here- (just google it and you’ll find as first result the reference the WIPO definition: “The right of the owner of a mark to prevent third parties from using that mark in trade is subject to the principle of specialty, according to which this right can only be asserted with regard to those goods and services in respect of which the trademark is protected, usually as a result of registration.30.03.2007” SCT/17/3: Relation of Established Trademark Principles to ... – WIPO www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc<http://www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc>

• Also “fair use” is widely known as a limit to trademark law – which is what the wording in the report is explaining (see https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law)). Hence, next to the principle of specialty, it allows to use the same word for a trademark even within the same jurisdiction. I hope that we leave it by this and avoid wasting each other’s time, which at least for me is a quite scarce resource… Regards Jorge

Von: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Gesendet: Sonntag, 18. November 2018 23:54 An: Marita Moll <mmoll@ca.inter.net<mailto:mmoll@ca.inter.net>> Cc: Cancio Jorge BAKOM <Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch>>; Emily Barabas <emily.barabas@icann.org<mailto:emily.barabas@icann.org>>; Icann Gnso Newgtld Wg Wt5 <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>>

Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

With regard to the objection to my comments (numbered as 69 and 70), the reasons for these were explained in detail in my submission. Unfortunately, those were left out of the document circulated by staff. It is really incorrect and unfortunate to characterize these changes as ones intended to delete anyone's point of view.

These comments were on the following text, and suggested that the first text highlighted below should be deleted and the second be added:

TLDs are a unique resource. Some Work Track members have contrasted this 33 unique quality of TLDs with the use of names under trademark law. From this 34 perspective, under trademark law, the principles of specialty and of trademark 35 "fair use" apply, according to which it is possible for two brands to register 36 trademarks for the same term in the same jurisdiction [for unrelated goods and services], as long as no confusion or 37 infringement pursuant to the law arises.

I'll explain again and hopefully more clearly. First the term "principle of specialty" is not one generally used in discussing US trademark law (perhaps like "bright line rule" it is a term that does not travel well). I had to look it up to see what it meant. We need to use terms that will be commonly understood, at least by those with some knowledge of the subject matter. The added language "for unrelated goods and services" really covers the same concept. Furthermore the added language corrects what is otherwise an ambiguous (and arguably, misleading) description of basic trademark laws (i.e., without that language, it leaves the impression that the same mark can be registered and used for related goods and services in the same country). In other words, this was merely a clarifying change.

The second change (deleting the reference to "trademark 'fair use'") was also intended to be corrective, not to remove anyone's opinion. That is because this is an incorrect use of the term "trademark fair use." Trademark fair use is not in any way related to the right to use a trademark for different goods and services than an existing trademark. Trademark fair use refers to either "descriptive" fair use -- the right to call an apple an apple, regardless of Apple's trademark rights -- or to "nominative" fair use -- the right to call the Spice Girls the Spice Girls (e.g., in a ticket giveaway), even though Spice Girls is a trademark.

If these changes (or any others I suggested) are objectionable, they should be responded to in substance, rather than by broad (mis)characterization and/or by introducing ex post facto rules about what changes can be made when, and which seem intended to dismiss changes without reaching their merits.

I'm as interested in closure as anyone, but sending out a report with incorrect assertions will delay closure in the long run.

Best regards,

Greg

On Wed, Nov 14, 2018 at 9:03 AM Marita Moll <mmoll@ca.inter.net<mailto:mmoll@ca.inter.net>> wrote:

Yes, I think this is a valid comment. We could find ourselves right back at the beginning.

Marita

On 11/14/2018 8:48 AM, Jorge.Cancio@bakom.admin.ch<mailto:Jorge.Cancio@bakom.admin.ch> wrote: Dear Emily and all Thanks very much for the new text. I will not be able to make the call (am in Paris at the IGF), but let me share the general observation that there should not be changes in the last minute which try to change the balance of the text as had been prepared by staff, especially changes which try to convey a different reflection of the discussions already had in the work track. I also would like to urge that we avoid last minute changes intended to change the description of what was said or argued by “some”. Deleting or rephrasing of others’ opinions by others with a different opinion should be refrained from. For instance, I feel that the comments 69 and 70 from Greg go in that direction – I would urge not to do that – otherwise others may feel the need to edit the opinions expressed by others, which at this stage is really meaningless. Kindly Jorge

Von: Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces@icann.org><mailto:gnso-newgtld-wg-wt5-bounces@icann.org> Im Auftrag von Emily Barabas Gesendet: Mittwoch, 14. November 2018 14:26 An: gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org> Betreff: Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

Dear all,

Thanks to those who shared additional comments and suggestions on the list. Please see the attached updated version of the document which we will use on the call shortly. Comments highlighted in purple are those added since last week’s call. Those in yellow require further discussion and will be the focus of the call today.

Kind regards, Emily

From: Emily Barabas <emily.barabas@icann.org<mailto:emily.barabas@icann.org>> Date: Tuesday, 13 November 2018 at 12:54 To: "gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>" <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>> Subject: Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

Dear Work Track 5 members,

This is a reminder that the deadline to provide input on the draft Initial Report is Friday 16 November. If you would like the group to discuss you input on the call tomorrow, please make sure to send your input to the mailing list prior to the call.

Please find below the proposed agenda for tomorrow’s call:

1. Welcome/Agenda Review/SOI Updates 2. Recommendation 11 - non-capital city names 3. Review new comments, clarifications, and edits to the draft Initial Report 4. AOB

Kind regards, Emily

From: Emily Barabas <emily.barabas@icann.org<mailto:emily.barabas@icann.org>> Date: Thursday, 8 November 2018 at 20:09 To: "gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>" <gnso-newgtld-wg-wt5@icann.org<mailto:gnso-newgtld-wg-wt5@icann.org>> Subject: Initial Report next steps and deadline for input - Friday 16 November

Dear Work Track 5 members,

Thanks to all who have submitted comments about the draft Initial Report on the mailing list and those who were able to join the call yesterday to go through some of the comments received that may require further discussion. Please find attached a revised draft of the report incorporating feedback received on the call. As a reminder, the target date for publishing the Initial Report is 20 November. In view of this timeline, the Work Track leadership team kindly requests that members submit any final feedback on the Initial Report no later than Friday 16 November. You can either insert comments in a copy of the attached document and send to the WT5 mailing list or send your comments in the body of an email to the WT5 list, identifying the page and line number of the text you are referencing.

Below you will find some of the questions/concerns raised in comments by members that still may need additional input. The leadership team is sending these on the mailing list to make sure that all members have a chance to provide feedback, even if they were not able to join the call. • On page 17 (recommendations section of the report) two WT members commented that they felt it was premature to include any preliminary recommendation in the Initial Report on the topic of non-capital city names. Do you support removing preliminary recommendation 11 on treatment of non-capital city names? Or do you favor leaving the recommendation in the report, noting that it can be changed for the Final Report based on community input and further discussion in the Work Track? Regardless of whether the recommendation is kept or removed, there are two questions for community input on this topic (e10 and e11) included in the Initial Report, so the group can expect additional community feedback through public comment to support further deliberations. • On page 40 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Once a gTLD is registered with an intended use that is geographic in nature, all other variations and translations of this term are unconditionally available for registration.” Another Work Track member requested clarification on the meaning of “unconditionally available” and also requested clarification about which entities might be able to apply for these variations and translations under the proposal. Can the author of this proposal provide any additional clarification? • On page 41 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Applicants for geographic names must apply to the GAC to receive permission to submit an application for the string.” Another Work Track member requested clarification about the scope and meaning of this proposal, including how it would interact with other requirements. Can the author of this proposal provide any additional clarification? • On page 76 (deliberations section of the report) the text mentions the following proposal put forward by a Work Track member: “Apply a "bright-line" rule that any geographic term that is not explicitly and expressly protected is unprotected. No objection or non-consent can be used to stop its registration.” Other Work Track members raised concern that the term “bright line” rule may not be widely used and understood, and further requested clarification on the scope of this rule and the basis for protection. Can the author of this proposal provide any additional clarification? Note that Work Track members are welcome to comment on any other parts of the draft in addition to the items listed above.

Kind regards,

Emily

Emily Barabas | Policy Manager ICANN | Internet Corporation for Assigned Names and Numbers Email: emily.barabas@icann.org<mailto:emily.barabas@icann.org> | Phone: +31 (0)6 84507976

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