Paul, I don’t think we are talking about whether ICANN can “censor” something you call a “pre-trademark”. I’m familiar with the arguments made before the Supreme Court in relation to whether booking.com was capable of acquiring secondary meaning to consumers or not. (It apparently did acquire such secondary meaning. It was not the term, booking, alone that acquired the meaning, ( It turned out the trademark office interpretation of .com added to a generic was not particularly relevant.) I don’t think this somehow means that an application for a Closed Generic TLD must be delegated for the purpose of allowing the applicant to develop acquired secondary meaning over time after delegation. Is that your argument? Anne From: McGrady, Paul D. <PMcGrady@taftlaw.com> Sent: Tuesday, June 30, 2020 11:11 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com>; trachtenbergm@gtlaw.com; jeff.neuman@comlaude.com; langdonorr@gmail.com Subject: RE: Package 6 [EXTERNAL] ________________________________ Correct, Anne. So we are no longer talking about whether or not ICANN has the ability to censor so-called “closed generics”, we are taking about whether or not ICANN can censor pre-trademarks. There was a fundamental shift this morning in this area of the law. The WG needs to take that on board. Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>> Sent: Tuesday, June 30, 2020 12:57 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 Booking.com held NOT GENERIC because it already had meaning to consumers – that is the right decision and has nothing to do with Closed Generic TLD applications. https://www.kxlh.com/news/national/supreme-court-upholds-lower-court-ruling-... From: Aikman-Scalese, Anne Sent: Tuesday, June 30, 2020 10:54 AM To: 'McGrady, Paul D.' <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 Paul –I am going to guess, without having read the opinion, that it’s a “secondary meaning” case. Yes or no? Anne From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, June 30, 2020 10:33 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 [EXTERNAL] ________________________________ Thanks Anne. To which I would say that they should read today’s SCOTUS opinion saying the exact opposite. Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>> Sent: Tuesday, June 30, 2020 12:28 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 Paul, Since you and Marc insist on using loaded words like “censorship”, how about if I say there are those in the Working Group who are opposed to “monopoly”. (In other words, compare to the same reason you cannot get exclusive trademark rights to a generic term.) ;-) Anne From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, June 30, 2020 10:19 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 [EXTERNAL] ________________________________ Thanks Anne. It may end up in wasteful litigation, but the multi-stakeholder model is inherently inefficient. That is what keeps it from devolving into a top down model or from being captured by one specific interest. I appreciate your desire to make ICANN efficient, but I’m not on board when the cost of that efficiency is censorship. Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>> Sent: Tuesday, June 30, 2020 12:04 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 This is overall organizational effectiveness improvement 101. GNSO shouldn’t say “we are the policymakers” and then say “the Board will have to decide the policy.” I don’t agree that when GNSO fails to arrive at Consensus Policy on an important issue, the best solution is to let applicants “fight it out” with the ICANN Board. That just costs ICANN (and therefore the Internet community” a bunch of time and money. It’s wasteful litigation. Anne From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Tuesday, June 30, 2020 9:59 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 [EXTERNAL] ________________________________ Thanks Anne. I don’t think it is our job to shelter the Board from litigation risk. That isn’t policy making. That is in-house GC’ing and this WG isn’t that. Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>> Sent: Tuesday, June 30, 2020 11:57 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 Marc, There is no consensus on criteria for judging when a closed generic will serve the public interest and Leadership does not see the WG reaching such a Consensus at this time. Many are dead set against Closed Generics period, the end and others have not provided convincing cases showing a demonstrated public interest. So there is no WG Consensus. To some, that means it’s a “free-for-all” and they may be prepared to sue ICANN to prove their Closed Generic application does, in fact, serve a public interest. Some WG members end up saying “The Board will have to decide” while as to other issues, they say “The Board can’t make policy, only the GNSO makes policy”. Given there is no policy consensus, I think we should affirm the three points below. If nothing else, this would protect the Board (somewhat) from having to bear the litigation risk of our WG not having achieved consensus on a new policy. This solution may “split the baby” but at least it doesn’t prevent the Closed Generic applications and it doesn’t force the Board to make the policy. The Working Group affirms the Board’s action and recommends that in the event Closed Generic applications are received in the next round, then ICANN should allow applicants to (1) make a change to non-exclusive access, (2) maintain & defer until policy on serving a public interest is finalized, or (3) withdraw Anne From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Tuesday, June 30, 2020 9:47 AM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 [EXTERNAL] ________________________________ It doesn’t kick the can down the road – it decides now that closed generics are banned unless and until the policy on serving a public interest is created. I disagree with this approach and believe that others do as well. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: McGrady, Paul D. [mailto:PMcGrady@taftlaw.com] Sent: Tuesday, June 30, 2020 11:37 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 Why not just solve the puzzle instead? The recommendation you propose just kicks the can again. I think we can do it! (but we do have to get the “ban” language out – it just isn’t what happened). From: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>> Sent: Tuesday, June 30, 2020 11:29 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Subject: RE: Package 6 Why don’t we just affirm the Board’s action and recommend that in the event Closed Generic applications are received, then ICANN should allow applicants to (1) make a change to non-exclusive access, (2) maintain & defer until policy on serving a public interest is finalized, or (3) withdraw Then there is an actual recommendation from the WG as to the next round. Anne From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Marc Trachtenberg via Gnso-newgtld-wg Sent: Monday, June 29, 2020 2:44 PM To: PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>; langdonorr@gmail.com<mailto:langdonorr@gmail.com> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Package 6 [EXTERNAL] ________________________________ +1 to Paul. Everyone does not agree with that position. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Monday, June 29, 2020 4:41 PM To: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; Cheryl Langdon-Orr <langdonorr@gmail.com<mailto:langdonorr@gmail.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] Package 6 *EXTERNAL TO GT* Hi Jeff & Cheryl, I was under the impression that we were going to discuss Closed Generics again, but I see it is Package 6. Is Closed Generics not on the agenda for upcoming calls? If it is, how can we be doing the so-called “Can’t live with” exercise when the topic isn’t closed on the calls? Also, I see that the text indicates that the WG agrees the Board instituted a ban on them in the last round. That is not what the Board resolution says – and in fact there was much discussion on the calls and chat about how “ban” does not apply. There were three options: (1) make a change to non-exclusive access, (2) maintain & defer to the next round, or (3) withdraw. Is there a way to make that section reflect the actual facts before we have to undertake the so-called “can’t live with” exercise? The way it is written now essentially takes the starting position of the part of the WG that wants to censor closed generics and implies everyone agrees with it. That isn’t the case. Best, Paul Taft / Paul D. McGrady / Partner Taft Stettinius & Hollister LLP 111 E. 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