October 2019 - GNSO-RPM-WG - lists.icann.org

Re: [GNSO-RPM-WG] [ntfy-gnso-rpm-wg] **Call starts in 14 minutes** Meeting invitation: Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call / Thursday, 10 October 2019 at 17:00 UTC
by Mike Oct. 10, 2019

Oct. 10, 2019

Hi all, Due to the shift from Wednesday to Thursday, this now conflicts with a regular meeting I have that ends at half-past the hour. If the agenda moves faster than that, I’d appreciate if you could hold off on the transparency discussion until I can join. Thanks, Michael Karanicolas Sent from my iPhone > On Oct 10, 2019, at 12:46 PM, Andrea Glandon <andrea.glandon(a)icann.org> wrote: > > Dear All, > > Please find the details below for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call scheduled for Thursday, 10 October at 17:00 UTC for 90 minutes. > > 10:00 PDT, 13:00 EDT, 19:00 Paris CEST, 22:00 Karachi PKT, (Friday) 02:00 Tokyo JST, (Friday) 04:00 Melbourne AEDT > For other places see: https://tinyurl.com/yy2gnts2 [tinyurl.com] > > Agenda Wiki: https://community.icann.org/x/TpYCBw > > ZOOM ROOM: https://icann.zoom.us/my/gnso1 [icann.zoom.us] > > You will have VoIP and telecom bridge audio options available to you upon logging in. > > A calendar invitation has equally been sent and an ical (if your inbox doesn’t receive direct calendar invitations) is available here as attachment for you to download to your calendar. > > If you are joining via audio only, please see below: > > One tap mobile > +19294362866,,7441796513# US (New York) > +16699006833,,7441796513# US (San Jose) > > Meeting ID: 744 179 6513 > Find your local number: https://zoom.us/u/aRxRoDRS > > Slides to assist you with Zoom: > > Welcome to Zoom: https://icann.box.com/shared/static/1sal3l5qf4csdukt0pk2c75ey3bte22z.pdf [icann.box.com] > Zoom FAQ: https://icann.box.com/shared/static/d5rap0g6xphevhkdd3mhu2hy753l2m3s.pdf [icann.box.com] > If Zoom disappears, see instructions: https://gnso.icann.org/sites/default/files/policy/2019/presentation/disappe… [gnso.icann.org] > > If you require a dial-out or to send apologies please send an email request with your preferred contact number to gnso-secs(a)icann.org > > Thank you. > Kind regards, > > Julie > > <Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call .ics> > _______________________________________________ > Gnso-secs mailing list > Gnso-secs(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-secs > _______________________________________________ > By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_… ) and the website Terms of Service (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_… ). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. > _______________________________________________ > Gnso-secs mailing list > Gnso-secs(a)icann.org > https://mm.icann.org/mailman/listinfo/gnso-secs > _______________________________________________ > By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_… ) and the website Terms of Service (https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_… ). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. > _______________________________________________ > ntfy-gnso-rpm-wg mailing list > ntfy-gnso-rpm-wg(a)icann.org > https://mm.icann.org/mailman/listinfo/ntfy-gnso-rpm-wg > _______________________________________________ > By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos) You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

1 0

Re: [GNSO-RPM-WG] [Ext] Re: Proposal re Q8.
by Julie Hedlund Oct. 10, 2019

Oct. 10, 2019

Thanks so much Rebecca for your quick and very helpful reply! We’ll have this ready to show in the Zoom room. Kind regards, Julie From: "Tushnet, Rebecca" <rtushnet(a)law.harvard.edu> Date: Thursday, October 10, 2019 at 12:25 PM To: Julie Hedlund <julie.hedlund(a)icann.org>, Paul Tattersfield <gpmgroup(a)gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: [Ext] Re: [GNSO-RPM-WG] Proposal re Q8. Here is what I have: Rationale: 1. The TMCH Database is for trademarks: those that are registered as trademarks, confirmed by court decision as trademarks, or protected by statute or treaty that specifies the trademarks covered. Sunrise and TM Claims are for the protection of trademarks only. Geographical Indications/Appellations of Origin (“GIs”) are not eligible for protection in the mandatory Sunrise or Claims periods, save where they also qualify as trademarks. 2. Non-trademarks or other identifiers can be the subject of ancillary databases that may be voluntarily used by registries to provide additional services other than the Sunrise and Trademark Claims mandated under the existing RPMs Requirements. Other ancillary service providers may compete to provide these services. Required actions: 1. GIs may not be registered in the TMCH Database used for Sunrise or Trademark Claims under the theory that they are marks protected by statute/treaty. If they are not also eligible for the TMCH Database as trademarks, any GIs presently in the TMCH Database should be removed. 2. “Other marks that constitute intellectual property” are not eligible for Sunrise or Trademark Claims. If and when the TMCH provider adds ancillary databases covering “other marks,” it should revise its public-facing materials to make this distinction clear. Proposals for amended language (new language in bold): 3. CRITERIA FOR TRADEMARK INCLUSION IN CLEARINGHOUSE… “3.2.3 Any word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.” This language should be amended to read “3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; the word mark protected by statute or treaty must be a trademark.” An explanatory footnote to 3 should be added: The Clearinghouse is for word marks that are trademarks. “Trademarks” here includes trademarks, service marks, collective marks, and certification marks. Geographic indications (that are not also protected as trademarks) are not trademarks. "3.2.4 - other marks that constitute intellectual property" should be amended: Marks not eligible for inclusion in the Trademark Clearinghouse: Other marks or identifiers that constitute intellectual property may not be used for the purposes of Sunrise or Claims under the existing RPMs, as set forth in Section 7. Such marks or identifiers may be collected to support the services any given registry operator chooses to provide, solely for the purpose of providing ancillary services as set forth in Section 3.6. 3.5 should be amended for consistency with the revisions to 3.2.3. Finally, 3.6 should itself be amended to clarify: “Data supporting entry into databases that are separate from the Clearinghouse and used to provide ancillary services of marks that constitute intellectual property of types other than those set forth in sections 3.2.1-3.2.3 above shall be determined by the registry operator and the Clearinghouse, or other provider chosen by the registry operator, based on the services any given registry operator chooses to provide, consistent with 4.1.” For reference: Current 4.1: … There shall be no bar on the Trademark Clearinghouse Service Provider or other third party service providers providing ancillary services on a non-exclusive basis. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Julie Hedlund <julie.hedlund(a)icann.org> Sent: Thursday, October 10, 2019 12:21 PM To: Tushnet, Rebecca <rtushnet(a)law.harvard.edu>; Paul Tattersfield <gpmgroup(a)gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. Rebecca and Claudio, In addition to any proposed language from Paul, staff is unclear as to what is your proposed final language as there has been quite a bit of back-and-forth on the list. Could you send us final text that we can display in the Zoom room for you? Thank you very much for your assistance. Kind regards, Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> on behalf of "Tushnet, Rebecca" <rtushnet(a)law.harvard.edu> Date: Thursday, October 10, 2019 at 12:13 PM To: Paul Tattersfield <gpmgroup(a)gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. I don't think I understand what your proposal is now. Can you provide the language you think would exclude GIs but allow other non-trademarks? Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup(a)gmail.com> Sent: Thursday, October 10, 2019 11:58 AM To: Tushnet, Rebecca <rtushnet(a)law.harvard.edu> Cc: claudio di gangi <ipcdigangi(a)gmail.com>; Michael Graham (ELCA) <migraham(a)expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg(a)icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. I was under the impression they are established by register (DOOR etc) rather than by established specifically [with]in a statute. If this is not the case then we probably need to split 3.2.3 into 3.2.3 (a) statute & 3.2.3 (b) treaty (We can tidy the numbers later of course). On Thu, Oct 10, 2019 at 4:42 PM Tushnet, Rebecca <rtushnet(a)law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: No, because GIs appear to be formally submitted to a number of TM offices worldwide. As I’ve said, to do this would either admit a bunch of GIs or require “notwithstanding” language. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 10, 2019, at 9:36 AM, Paul Tattersfield <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>> wrote: Hi All. Sorry for the delayed response, would this solve the problem? Best regards, Paul. 3.2.3 Any word mark notified to a national trademark office established in and protected by statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion On Tue, Oct 8, 2019 at 5:54 PM claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Rebecca, That's great, I am happy that you support this revised language (personally, I am fine with removing 'service mark' as I do not see that causing a problem, as it has not been an issue to date). Since I feel this is the most precise text developed to date, let's stay with this going forward (see below). 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; the word mark protected by statute or treaty must be a trademark. On your other feedback, I did not mean to imply your agreement on 3.2.3 impacts the other elements in your proposal; but simply that we combine the areas where we agree, e.g. there should be no bar on ancillary services, etc., and then parse out the other areas for consideration. I believe that is exactly how the consensus-building process is intended to function. From my point of view, an exception to this general rule is the specific case of when the aspects of a particular proposal are so inter-related that they form a package of policy recommendations that can not be untethered, e.g. a "unitary proposal". Or if someone compromises on an issue they believe is critical, I don't think it's fair to then turn around and say "OK you compromised on this important area, so we'll count you in on the compromise but discard the rest of your ideas." I'm glad we were able to make further progress before our call on Thursday. Best regards, Claudio On Tue, Oct 8, 2019 at 11:21 AM Tushnet, Rebecca <rtushnet(a)law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: To be clear, my proposal, which is still my proposal, defines trademark to include service marks, collective marks, and certification marks. I believe it makes more sense to do so in a footnote that covers the entire section 3 than in this subsection. I am happy to use the language you proposed several days ago for 3.2.3, or this (I’d remove service mark given the overall definition) but I am not withdrawing the overall proposal. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 8, 2019, at 10:52 AM, claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Rebecca, Thanks for the feedback; I have removed "referenced by" and "legally recognized as" because 1) by removing, it makes the provision more concise (which I tend to favor) and precise; and 2) I don't think it changes the meaning of what we are attempting to clarify here. Please see below, hope this is satisfactory. I added-in "service mark" because I recall Greg mentioning that on our call two weeks ago for extra clarity, but if we just want to say "trademark" I think its OK (as services aren't referenced in 3.1.1 or 3.1.2.. 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; the word mark protected by statute or treaty must be a trademark/service mark. On Mon, Oct 7, 2019 at 1:29 PM claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Rebecca, all, I am making a final attempt below on 3.2.3; I think this version is more specific, condense, and in alignment with the original spirit of 3.2.3. I hope you find this language acceptable. If the WG isn't able to each consensus on the exact language on 3.2.3 for inclusion in the Initial Report, then I recommend we defer to staff and/or the IRT that will follow this PDP for developing more exact language. We have the option to simply put forward a general rule for public comment in the Initial Report, i.e. "GIs and Appellations of Origin do not qualify for TM Claims and Sunrise, unless those signs are independently registered as trademarks," in addition to the other set of provisions which we are generally aligned on w/r/t/ this subject matter, e.g. "there shall be no prohibition on using the same ancillary database for GIs across multiple new gTLDs, etc." ------ 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; the word mark protected by statute or treaty must function as, or be legally recognized as, a trademark or service mark. ------ Of course, I remain open to your thoughts and any additional input WG members may have. Thanks! Best regards, Claudio On Thu, Oct 3, 2019 at 3:26 PM claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Sorry, but this made me think about the Boy Scouts legislation under U.S. law, see: https://www.law.cornell.edu/uscode/text/36/30905<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.law.cornell.edu_us…> The corporation has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts. This section does not affect any vested rights. ..... So I think we just need to change “identified” with “referenced” because identified is too specific. If the Boy Scout corporation adopts a new mark, it will be protected as a trademark under U.S law, but that trademark is not “identified” within the statue (depending on how strictly one interprets “identified”), but it is “referenced” in the statute. 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion, and which is referenced within the Statute or Treaty as a mark that functions as a trademark. Hope you are still OK with this Rebecca? Thanks! On Thursday, October 3, 2019, Tushnet, Rebecca <rtushnet(a)law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: Claudio's proposal would then read 3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion, and which is identified within the Statute or Treaty as a mark that functions as a trademark I'm fine with that. For comparison purposes, my proposed language (with bold indicating additions to current language) is: Any word marks specified in and protected by a statute or treaty as trademarks in effect at the time the mark is submitted to the Clearinghouse for inclusion. Relatedly, I got further information from Dev Gangjee (who studies GIs) and Robert Burrell (an expert on the Australian registration system), both of whom reported that GIs are listed with the TM offices with which they are familiar (in Australia wine GIs get special treatment), so unless Paul's proposal is also coupled with a "Notwithstanding the foregoing, no GIs," I don't think it would do the job that the consensus appears to want done. For the reasons discussed on the call, I'm uncomfortable with a rule that appears to single out GIs for exclusion while allowing non-TM, non-GIs. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Thursday, October 3, 2019 1:15 PM To: Michael Graham (ELCA) <migraham(a)expediagroup.com<mailto:migraham@expediagroup.com>> Cc: Tushnet, Rebecca <rtushnet(a)law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; Paul Tattersfield <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>>; gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: [GNSO-RPM-WG] Proposal re Q8. Michael, I agree with the points that Rebecca here, just noting that I believe the closest analogy is GIs function in a similar manner as certification or collective trademarks in the U.S. In fact, this is how I believe the USPTO sets forth that GIs are protected in the U.S as per the obligations the U.S has undertaken as a signatory of the international TRIPS agreement. Whereas, collective and certification marks are examined on absolute and relative grounds, GIs are protected through sui generis legislation (in believe in most cases, it’s possible they may be protected under common law in some jurisdictions but I’m not sure) - as certain trademarks like those protected by statue or treaty are sui generis in form. This is why I always felt that the TMCH Operator in good faith interpreted 3.2.3 to potentially allow GIs in the Clearinghouse, with all the qualifying language they added (such as “may be eligible” - I don’t think they ever stated “are eligible”), and we did not know if or any GIs are still recorded in the TMCH. In my personal view, (albeit, I am not an expert on GIs), I believe the number of countries that protect GIs has substantially increased since the First WIPO Process, providing more universality across the spectrum, compared to when this issue was initially considered by the international community under WIPO’s inclusive consultation on IP and DNS policy. In addition, I believe in most countries that protect GIs through sui generis legislation, a senior GI has priority over a later registered trademark for the same class of goods/services. But since trademarks are protected in every country worldwide through a combination of common law, statutory law, or constitutional law, I understand/support the perspective that Sunrise should take place first, based on that correspondence of global protection. The only incongruence that I can potentially see arising is if a junior trademark holder in a certain country uses Sunrise to register a domain during Sunrise when actually the GI rights holder in that country has senior or superior rights. For example, there is often litigation where a national (or district) court in a country will hold that the GI has priority over the junior mark in that country, even if the trademark was registered in good faith. Perhaps this can be addressed by having a provision in the SDRP policy for this very scenario (which registries may voluntarily choose to adopt), or we could consider adding it to the mandatory SDRP (but I defer to the Co-chairs and the WG). In other words, the objective is to match offline IP law with the DNS and the associated rules for allocating domain names, e.g. if the GI rights holder can provide a court decision to the TMCH Operator that demonstrates it has priority under the national law of its country against the junior mark holder in its country. Although, what may occur in practice is the court will require cancellation of the junior trademark, so I’m not sure it’s necessary. I defer to others who have substantive experience practicing law in this space, like Jonathan Agmon to help inform us with their perspective. Rebecca, We can remove source identifier from my definition if that makes you more comfortable; I don’t think it’s necessary to have it included in my 3.2.3. Is that satisfactory for you then to accept my definition? Best regards, Claudio On Tuesday, October 1, 2019, Michael Graham (ELCA) <migraham(a)expediagroup.com<mailto:migraham@expediagroup.com>> wrote: Wondering out loud whether GIs are necessarily “source identifiers”. My understanding is that they are identifiers of particular geographic locations, whereas trademarks are source identifiers. GIs may be source identifiers, but to the extent they are then they would be considered trademarks. So . . . am I missing something in the terminology? Michael R. [http://mail/u/1/s/?view=att&th=16d8d44103fba857&attid=0.2&disp=emb&realatti…] Michael R. Graham Senior Counsel and Global Director, Intellectual Property, Expedia Group T +1 425 679 4330 | M +1 425 241 1459 333 108th Ave. NE | Bellevue | WA 98004 Email: migraham(a)expediagroup.com<mailto:migraham@expediagroup.com> [http://mail/u/1/s/?view=att&th=16d8d44103fba857&attid=0.1&disp=emb&realatti…] From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Tushnet, Rebecca Sent: Tuesday, October 1, 2019 1:50 PM To: claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>>; Paul Tattersfield <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>> Cc: gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. From my perspective, the key problem is that "source identifier" describes, among other things, GIs. We can engage in special pleading against GIs and just carve them out, but I admit that leaves me a bit sour. I also would note that the relevant statutes I've seen don't use the words "source identifier" either, so we are still shuffling off the interpretive weight to Deloitte. (E.g., although the Red Cross also has TM registrations, the Red Cross US statute that has been mentioned in this discussion uses the word "use" to define one prohibited act, and "wears or displays ... for the fraudulent purpose of inducing the belief that he is a member of or an agent for the American National Red Cross" to define the other prohibited act.) For these reasons, I have come around to not wanting to add "source identifier" to the definition--I don't think it actually solves the problem and it might make things even less clear. Other than that, I do think we have gotten a lot closer. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: claudio di gangi <ipcdigangi(a)gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, October 1, 2019 4:11 PM To: Paul Tattersfield <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>> Cc: Tushnet, Rebecca <rtushnet(a)law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; gnso-rpm-wg <gnso-rpm-wg(a)icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. Paul, I agree with you; and you have spotted one of the areas of divergence between my proposal and Rebecca's. My proposal includes alternative language on this provision - that I believe addresses your point, but I am interested in your perspective. Best regards, Claudio On Tue, Oct 1, 2019 at 4:00 PM Paul Tattersfield <gpmgroup(a)gmail.com<mailto:gpmgroup@gmail.com>> wrote: Rebecca, I believe in 3.2.3 you should not add the words "as trademarks" as the marks concerned are not trademarks. For example once such 6ter marks are communicated to the USPTO and are accepted it is not possible for any organization to register a trademark containing the mark and importantly that includes the originating entity itself. Instead an 89 serial is created so the mark turns up in an examining attorney’s search etc. Best regards, Paul On Tue, Oct 1, 2019 at 8:04 PM Tushnet, Rebecca <rtushnet(a)law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: This is the same text but with the subject line proper. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org<mailto:GNSO-RPM-WG@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_l…> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_…>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_…>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG(a)icann.org<mailto:GNSO-RPM-WG@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_l…> _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_…>) and the website Terms of Service (https://www.icann.org/privacy/tos<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_privacy_…>). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

1 0

Proposed Agenda for RPM Meeting on Thursday, 10 October at 17:00-18:30 UTC
by Julie Hedlund Oct. 7, 2019

Oct. 7, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Thursday, 010 October at 17:00-18:30 UTC. See all TMCH proposals at: https://community.icann.org/display/RARPMRIAGPWG/TMCH+Proposals. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Conclude discussion of proposals relating to Open TMCH Charter Questions (see attached document): * Revised Proposal(s) re: Charter Question 7: Proposal submitted by Greg Shatan for Q7 (1 Oct 2019) (comparison version<https://community.icann.org/download/attachments/109482780/Comparison%20of%…>) * Revised Proposal(s) re: Charter Question 8: Proposal submitted by Claudio DiGangi for Q8 (1 Oct 2019) (Proposal submitted by Rebecca Tushnet for Q8 (1 Oct 2019) discussed on 02 October) 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 – Action: Staff to see if there are data on TMCH outages. * TMCH Category 5: Access & Accessibility: Charter Question 15 – Proposal submitted by Michael Karanicolas for Q15 (1 Oct 2019<https://community.icann.org/download/attachments/109482780/Transparency%20P…>) * TMCH Category 6: Balance: Charter Question 16 * TMCH Category 1: Education: Charter Questions 1, 2, and 3 – Proposal submitted by Martin P Valent for Q2 (1 Oct 2019<https://community.icann.org/download/attachments/109482780/Martin%20Pablo%2…>) * TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 4. Discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. See the draft survey at: survey [forms.gle]<https://urldefense.proofpoint.com/v2/url?u=https-3A__forms.gle_kak3MEWFTNeq…> 5. AOB Best Regards, Mary, Julie, Ariel

1 0

Re: [GNSO-RPM-WG] Proposal re Q8.
by Tushnet, Rebecca Oct. 7, 2019

Oct. 7, 2019

While your previous language was ok by me, the new language of “function” doesn’t limit anything. As US practice recognizes, and as we have discussed, GIs routinely “function” as trademarks/source indicators. This language would just confuse matters more. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. > On Oct 7, 2019, at 1:29 PM, claudio di gangi <ipcdigangi(a)gmail.com> wrote: >

1 0

Approaches to Further Review of Individual URS Proposals
by Julie Hedlund Oct. 7, 2019

Oct. 7, 2019

Dear RPMs PDP WG members, On behalf of the WG Co-Chairs, we are asking WG members to consider whether and how to revisit the individual URS proposals for further review. As you may recall, the WG briefly reviewed individual URS proposals in the weeks prior to the ICANN meeting at ICANN63 in Barcelona, Spain in October 2018. Then, during discussions over the course of two sessions at ICANN63, with some specific objections that insufficient attention had been given to the WG’s task of vetting the individual proposals, the WG broadly conceded that all 31 individual URS proposals<https://docs.google.com/document/d/1ky5uajo8WDfY9x6lbtaEQhb0xXzKVlMSZKFQkHX…> would be included in the Initial Report. See specifically the discussions about how individual proposals and Sub Team proposals will be treated in the Initial Report by checking the following transcripts: 21 Oct 2018 (pp.21-42)<https://static.ptbl.co/static/attachments/191827/1540260386.pdf?1540260386>, 22 Oct 2018 (pp.2-25)<https://static.ptbl.co/static/attachments/191831/1540260885.pdf?1540260885>. Several weeks ago the WG Co-Chairs raised the question of whether the WG should revisit the individual URS proposals in some fashion in order to determine if the WG members still wish to include all 31 individual proposals or some subset of them in the Initial Report. Now that the discussion of the open and deferred TMCH charter questions is nearing a conclusion, perhaps as soon as this week, taking a cue from WG members the Co-Chairs understand that the WG may wish to again consider this question of whether and how to further review the individual URS proposals with a view to forming recommendations or more refined proposals in the Initial Report (as e.g., was done with the TM Claims and Sunrise proposals) and is widely understood to be the primary function of a WG. One possibility is for the WG to take a survey<https://forms.gle/kak3MEWFTNeq69wN9>, the purpose of which would be to "take the temperature of the room" and provide a snapshot of what URS individual proposals the WG membership believes may be able to garner substantial agreement to be a WG recommendation, or at least be more usefully refined to publish for public comment to gather community feedback. It is important to emphasize that the survey would not be a formal vote and the results of the survey would not determine which proposals get included in the Initial Report, but would help inform the WG’s decision making based upon the overall levels of support and opposition to each proposal. Participation in the survey would be optional, but could only be completed by current RPM WG members, who wish to reassess the URS individual proposals. Observers and non-members would not be permitted to participate in the survey. For transparency purposes, survey results would be published for the review by the WG. Following the survey, the WG members could, e.g., over the course of a few meetings, review the results and agree on the final determination as to which individual URS proposals would rise to the level of a recommendation or would at least have wide support for inclusion in the Initial Report for obtaining public comment. Alternatively, WG members are welcome to suggest other options for further review of the individual URS proposals, to agree that all proposals will be included in the Initial Report (as was determined at ICANN63), or to agree that all proposals with a ”sufficient level of support/non-objection” (as determined by the WG in the next few weeks) will be included in the Initial Report. The attached timeline and work plan indicate that the WG is currently scheduled to “Review all preliminary recommendations identified for inclusion in Initial Report (for URS, Sunrise, Claims, and TMCH)” at ICANN 66 in Montreal, Canada, at sessions tentatively planned for the afternoons of Saturday, November 2 and Sunday, November 3. If the WG decides to utilize a survey or other editing approach and does not complete its work on individual URS proposals prior to Montreal it is the co-chairs’ intention to stick with the Montreal work plan and then wrap up the URS discussions later in November. In any event, if we include all 31 proposals in the Initial Report we will need to review public comments on all and then decide which have or, with modifications, can garner consensus support for inclusion in the Final Report. If, on the other hand, we revisit the individual proposals now and include a smaller number in the Initial Report, it will allow the community to better focus its attention, and will leave us with fewer proposals and related public comments to consider for inclusion in the Final Report. We welcome WG members’ comments and suggestions concerning this question and time permitting further discussion during the meeting on 10 October. Best regards, Mary, Ariel, and Julie On Behalf of Brian Beckham, Phil Corwin, and Kathy Kleiman, RPMs PDP WG Co-Chairs

1 0

Actions & Notes: RPM PDP WG Meeting 02 October 2019
by Julie Hedlund Oct. 2, 2019

Oct. 2, 2019

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 02 October 2019 at 17:00 UTC. Staff have posted these to the wiki space. Please note that these are high-level notes and are not meant as a substitute for the recording, chat room, or transcript. The recording, Zoom chat, transcript and attendance records are posted on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/2019-10-02+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Charter Q12: Staff to check with ICANN Org to see if there are data on outages of the TMCH. Notes: 1. Updates to Statements of Interest: No updates provided. 2. Conclude discussion of proposals relating to Open TMCH Charter Questions: a. Revised Proposal(s) re: Charter Question 7: Proposal submitted by Greg Shatan for Q7<https://community.icann.org/download/attachments/109482780/Clean%20Version%…> (1 Oct 2019) (comparison version<https://community.icann.org/download/attachments/109482780/Comparison%20of%…>) – Discussion postponed. b. Revised Proposal(s) re: Charter Question 8: Proposal submitted by Rebecca Tushnet for Q8<https://community.icann.org/download/attachments/109482780/proposal.pdf?ver…> (1 Oct 2019) -- Areas of disagreement – term “source identifier”, more detail and statutes or treaties, and ancillary services. -- Re: “other IP” – On 3.2.4 – not sure the amendment is necessary, but no TMCH material where Deloitte does not make it clear that other marks are not included in the TMCH. -- But main page seems to suggest that if you are in the TMCH you get Sunrise and Claims. Could separate out from policy recommendation and text for AGB, but still noted. Be clear about text that goes into the AGB and what is a policy recommendation. What we obligate the TMCH provider to do could be noted for implementation. -- Has the rather loose use of "marks" and "Trademarks" been addressed? I would prefer use of some other term, like "designation", rather than "marks" if these are to be contrasted to "Trademarks". Otherwise, and in common use, "marks" and "Trademarks" or used and considered synonyms. -- The term “ancillary services” describes services that the TMCH might want to provide, but is subject to approval by ICANN in the contract. With regard to all of the categories, they all go into TMCH and all are eligible for the TMCH and get the protections. The “other marks” are included in the TMCH, but not for Sunrise and Claims. So, marks that go into the Clearing House but are not otherwise eligible for RPMs. -- Harmonizing the language used in the AGB could have policy implications. -- Need to be clear that only things in the categories designated by the WG get Sunrise and Claims RPMs. -- From TRIPS Art. 15(1): “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks”. -- Some obvious problems w/that one (it jumps us right back into word marks, and it is about what is capable of being a TM, which is not our issue--our issue is what is in a statute or treaty, including GIs) -- The starting point for that category is that it must, first of all, be a “trademark” - so what Michael and others seem to be saying is that it may be helpful to at least have a pointer/description about what that word means. -- Except it's not helpful for our purposes--I have proposed "trademark, service mark, collective mark, or certification mark" which gives guidance at the level necessary rather than for the more general theoretical question "what is capable of being a trademark"? -- For proponents of the TRIPS definition: do you intend to include GIs? If not, how do you intend to exclude them? Proposal submitted by Claudio DiGangi<https://community.icann.org/download/attachments/109482780/Question%208%20P…> for Q8 (1 Oct 2019) -- Continue discussion at the next meeting. 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 -- Could we count as benefit the situation where the probability that two TMCH providers are down the same time is lower than the single one (given historical exp.)? -- Request from ICANN the periods of unavailability of the TMCH. ACTION: Staff to check with ICANN Org to see if there are data on outages of the TMCH. TMCH Category 5: Access & Accessibility: Charter Question 15 – Proposal submitted by Michael Karanicolas for Q15<https://community.icann.org/download/attachments/109482780/Transparency%20P…> (1 Oct 2019) -- This was heavily discussed in the development of the TMCH because opening the TMCH would give a glimpse into a company’s business strategy. -- There was a proposal in the Sunrise Sub Team recommendation that a search could be allowed if there was sufficient rationale, on a case-by-case basis. (John McElwaine and Kathy Kleiman draft). -- Not clear that there will be agreement in the WG on this proposal. -- Could put it out for public comment in absence of agreement. -- Could the TMCH be quasi open? Where access can be achieved under a certain process. -- Open TMCH could aid both TM owners and potential registrants, reducing cost burdens. -- QUESTION: Will the fact that some jurisdictions do not have a “use” requirement to register a TM affect the question of openness of the TM database? -- Talking about disclosure of business strategies to their competitors; from the EU side there are very different competition and TM rules. -- Could include in the Initial Report for public comment with both sides presented. 4. AOB: Schedule meeting week of 07 October to Thursday, 10 October at 17:00 UTC due to conflicts.

1 0

Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Wednesday, 02 October 2019 at 17:00 UTC
by Julie Bisland Oct. 2, 2019

Oct. 2, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Wednesday, 02 October 2019 at 17:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/DpMCBw> (attendance included) and the GNSO Master calendar <https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> . These include: * Attendance (please let me know if your name has been left off the attendance list) * Audio recording * Zoom chat archive * Zoom recording (including audio, visual, rough transcript) * Transcript As a reminder only members can join the call, observers can listen to the recordings and read the transcript afterwards. Please email gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> if you would like to change your status from observer to member. For additional information, you may consult the mailing list archives <http://mm.icann.org/pipermail/gnso-rpm-wg/> and the main wiki page<https://community.icann.org/x/wCWAAw>. Thank you. With kind regards, Julie

1 0

Apologies for today’s call
by Greg Shatan Oct. 2, 2019

Oct. 2, 2019

I have a business conflict and doubt I’ll be able to be on.. Greg

1 0

TMCH Proposals re: Action Items from 25 September WG Meeting
by Julie Hedlund Oct. 2, 2019

Oct. 2, 2019

Dear RPM WG members, Per the actions below from the WG meeting on 25 September the following proposals have been sent to the WG since the last meeting:  Proposal submitted by Martin P Valent for Q2<https://community.icann.org/download/attachments/109482780/Martin%20Pablo%2…> (1 Oct 2019)  Proposal submitted by Greg Shatan for Q7<https://community.icann.org/download/attachments/109482780/Clean%20Version%…> (1 Oct 2019) (comparison version<https://community.icann.org/download/attachments/109482780/Comparison%20of%…>)  Proposal submitted by Rebecca Tushnet for Q8<https://community.icann.org/download/attachments/109482780/proposal.pdf?ver…> (1 Oct 2019)  Proposal submitted by Claudio DiGangi<https://community.icann.org/download/attachments/109482780/Question%208%20P…> for Q8 (1 Oct 2019)  Proposal submitted by Michael Karanicolas for Q15<https://community.icann.org/download/attachments/109482780/Transparency%20P…> (1 Oct 2019) These are collected for your convenient reference on the wiki at: https://community.icann.org/display/RARPMRIAGPWG/TMCH+Proposals. Kind regards, Mary, Ariel, and Julie From: GNSO-RPM-WG <gnso-rpm-wg-bounces(a)icann.org> on behalf of Julie Hedlund <julie.hedlund(a)icann.org> Date: Tuesday, October 1, 2019 at 11:00 AM To: "gnso-rpm-wg(a)icann.org" <gnso-rpm-wg(a)icann.org> Subject: [GNSO-RPM-WG] REMINDER: Proposed Agenda for RPM Meeting on 02 October at 17:00-18:30 UTC Dear RPM WG members, This is a reminder. Please find the proposed agenda and materials for the WG meeting on Wednesday, 02 October at 17:00-18:30 UTC. As a reminder, please also see the following action items from the meeting on 25 September: * Question 7: Proponents (Kleiman/Muscovitch and Greg Shatan) have until 19:00 UTC on Tuesday, 01 October to provide any revisions to their proposals. * Question 8: Rebecca Tushnet, Claudio diGangi, Jason Schaeffer, Susan Payne (and any WG member interested in joining the small group) provide a final revised proposal by Tuesday, 01 October at 19:00 UTC. * Deferred Questions: WG members may proposal relating to any of the deferred questions by 19:00 UTC on Tuesday, 01 October for discussion on the call on 02 October. Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Conclude discussion of proposals relating to Open TMCH Charter Questions: * Revised Proposal(s) re: Charter Question 7 * Revised Proposal(s) re: Charter Question 8 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 * TMCH Category 5: Access & Accessibility: Charter Question 15 * TMCH Category 6: Balance: Charter Question 16 * TMCH Category 1: Education: Charter Questions 1, 2, and 3 * TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6 4. Time permitting --Initiate discussion of whether individual URS proposals should be revisited by the WG, and methodology for doing so. 5. AOB Best Regards, Mary, Julie, Ariel

1 0

Revised Q7 Proposal
by Greg Shatan Oct. 1, 2019

Oct. 1, 2019

All, I have attached clean and comparison versions of a revised proposal for Q7, as discussed on last week's call. Best regards, Greg

1 0