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

ICANN66: GNSO Sessions How to Get Organized and Remote Participation Details
by Julie Bisland Oct. 15, 2019

Oct. 15, 2019

Dear all, The one-stop wiki page for all your Remote Participation queries is now available. This wiki page covers remote participation details for all GNSO open and public meetings. In addition to this, ICANN Meetings’ Team has put together an updated ICANN meeting website which allows you to download all GNSO-related meetings to your inbox calendar in one go. 2 LINKS TO BOOKMARK NOW: ICANN66 Meeting Schedule<https://66.schedule.icann.org/> GNSO Remote Participation Wiki Page<https://community.icann.org/x/LYvkBg> Step 1 – Create a profile and your personalized ICANN66 schedule Go to the Meeting Schedule webpage and create a profile and login. Every session on the full schedule can be selected and added to your individual schedule by clicking the Add box to the bottom right of each meeting, this adds it to your individual schedule which you can then email to yourself or add to your calendar. See next step. Step 2 - There are two ways to import your schedule into Outlook: once you’ve added all your chosen meetings to “My Schedule” go to Export. · Downloading creates a one-time snapshot of your schedule and copies it into Outlook. If you subsequently make changes to your Pathable calendar, they will not be reflected in Outlook. · Subscribing creates a live feed of your schedule in Outlook. Outlook checks for changes every few hours and updates your calendar appropriately. Step 3 All sessions allowing remote participation will use Zoom rooms. You can find the Zoom room links for public meetings on the ICANN66 Meeting Schedule<https://66.schedule.icann.org> and on the <https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_…> GNSO Remote Participation Wiki Page<https://community.icann.org/x/LYvkBg>. Zoom access details for closed meetings will be communicated separately. There are three options to connect your audio: 1) Via VoIP, choose Computer Audio 2) Getting a dial out from Zoom to your phone, choose Call Me 3) Phoning into the audio bridge (access numbers and Meeting ID are provided for that option), choose Telephone Audio If you cannot log into the Zoom room, but wish to connect via telephone only, to dial into the audio refer to the GNSO Remote Participation Wiki Page<https://community.icann.org/x/LYvkBg> for access numbers and individual Meeting IDs. Step 4 Please download the mobile app by searching for “ICANN Meetings” in your app stores. Nathalie Peregrine and Terri Agnew will be onsite in Montreal to assist you directly. For all GNSO meeting related queries (RP or others), please email us at: gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> and we will be more than happy to assist! Kind regards, GNSO SO/AC Support team -- Julie Bisland GNSO SO/AC Support coordinator Internet Corporation for Assigned Names and Numbers (ICANN) Email: julie.bisland(a)icann.org<mailto:julie.bisland@icann.org> Skype ID: 79613b691cb8a6c1 Find out more about the GNSO by visiting: https://learn.icann.org/<https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO<https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> See All SO and AC events on the ICANN Global calendar<https://features.icann.org/calendar>

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Proposed Agenda for RPM Meeting on Wednesday, 16 October at 17:00-18:30 UTC
by Julie Hedlund Oct. 15, 2019

Oct. 15, 2019

Dear RPM WG members, Please find the proposed agenda and materials for the WG meeting on Wednesday, 16 October at 17:00-18:30 UTC. See all TMCH proposals at: https://community.icann.org/display/RARPMRIAGPWG/TMCH+Proposals. Draft Proposed Agenda: 1. Review Agenda and Updates to Statements of Interest 2. Status of Questions Q7, Q8, Q12, and Q15 3. Remaining Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): * Close Discussion: TMCH Category 6: Balance: Charter Question 16 * Discussion: 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…>) * Close Discussion: 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

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Proposal re Q8.
by Tushnet, Rebecca Oct. 14, 2019

Oct. 14, 2019

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

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Q#15 Transparency for the TMCH
by Jason Schaeffer Oct. 14, 2019

Oct. 14, 2019

Hi All, Sorry for not being able to address this on yesterday's call - I was bounced from the Zoom and couldn't reconnect from my mobile. After much consideration of the chat comments and statements during the past two calls I've parsed together the following strategy concerns that might be at issue. It seems the opposition to an open/transparent TMCH have set forth the following rationale: Large brand owners like the ability to file in "remote" jurisdictions with non-searchable DBs to gain a priority date that can later be used for priority presumably in the US under a Section 44 application under the Paris Convention. For example, Party A could "secretly" register in say Mauritius or Jamaica (jurisdictions that I believe do not have searchable DBs), and then file a Section 44 with the USPTO when ready to "go public." In this scenario, large brand owner obtains the earlier priority date in the US without having disclosed its "secret" brand plans or strategy. Alternatively, there may also be a similar use case with a registration in the EU. This is what I understand the opposition was presenting in the comments last week and again yesterday. This use of the "secret TM priority" filing method is one thing, and I understand the ostensible business intelligence concerns to require such a tactic. However, we are discussing this in the context of the TMCH. How can these parties obtain Sunrise protection without proof of use? This is even more challenging in the case of an EU registration that might not be based on actual use. If the project is top secret and subject to heightened secrecy, how can the party then show legitimate use of the mark and obtain TMCH protection while maintaining its purported heightened secrecy? What is the POU and what is the declarant stating to the TMCH? Is this the position that the opposition is proffering to block transparency of the TMCH? In addition, if I am correctly capturing how the method is employed in practice, it would be helpful to know if this practice is really in widespread use or rather an outlier, because I'm not yet seeing an important justification that outweighs the important benefits of an open TMCH. Thanks, Jason

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Post Call | Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG | Thursday, 10 October 2019 at 17:00 UTC
by Andrea Glandon Oct. 10, 2019

Oct. 10, 2019

Dear all, All recordings for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call held on Thursday, 10 October 2019 at 17:00 UTC can be found on the agenda wiki page <https://community.icann.org/x/TpYCBw> (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, Andrea

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Zoom Security Update
by Nathalie Peregrine Oct. 10, 2019

Oct. 10, 2019

https://www.icann.org/news/blog/zoom-security-update · Author: Ashwin Rangan, SVP Engineering & Chief Information Officer · 10 Oct 2019 · · Zoom recently added new settings to increase security and ensure meeting privacy. These new settings will enforce a password on all new meetings scheduled, but will not affect meetings that have been scheduled prior to 29 September 2019. The only participants who will be required to enter a password are those who join a meeting via the Zoom app and manually type in the meeting ID. Participants who join a meeting via a link in a calendar or e-mail invitation will not be required to enter the password upon joining, as it is included in the URL by default. To learn more about the new settings, please visit the Zoom Help Center and read the FAQ here<https://support.zoom.us/hc/en-us/articles/360033331271>. At the recommendation of ICANN’s internal InfoSec team, these new settings will be enabled immediately. Because the vast majority of ICANN meeting participants join via invitation links, we expect the impact on community members and staff to be minimal. Please reply here or contact the Meetings Technical Services team directly at mts(a)icann.org<mailto:mts@icann.org> if you have any questions or concerns regarding this update. Nathalie Peregrine Manager, Operations Support (GNSO) Internet Corporation for Assigned Names and Numbers (ICANN) Email: nathalie.peregrine(a)icann.org <nathalie.peregrine(a)icann.org%20> Skype: nathalie.peregrine.icann Find out more about the GNSO by visiting: https://learn.icann.org/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> See All SO and AC events on the ICANN Global calendar<https://features.icann.org/calendar> Nathalie Peregrine Manager, Operations Support (GNSO) Internet Corporation for Assigned Names and Numbers (ICANN) Email: nathalie.peregrine(a)icann.org <nathalie.peregrine(a)icann.org%20> Skype: nathalie.peregrine.icann Find out more about the GNSO by visiting: https://learn.icann.org/ <https://urldefense.proofpoint.com/v2/url?u=https-3A__learn.icann.org_&d=DwM…> Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO <https://urldefense.proofpoint.com/v2/url?u=https-3A__twitter.com_ICANN-5FGN…> Transcripts and recordings of GNSO Working Group and Council events are located on the GNSO Master Calendar <https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_grou…> See All SO and AC events on the ICANN Global calendar<https://features.icann.org/calendar>

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Actions & Notes: RPM PDP WG Meeting 10 October 2019
by Julie Hedlund Oct. 10, 2019

Oct. 10, 2019

Dear All, Please see below the action items captured by staff from the RPM PDP Working Group call held on 10 October 2019 at 17:00 UTC. Staff will post 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/2019-10-10+Review+of+all+R…. Best Regards, Julie Julie Hedlund, Policy Director == NOTES & ACTION ITEMS Actions: Open and Deferred TMCH Charter Questions: 1. Q 7: Include both proposals (Shatan and Kleiman/Muscovitch) in the Initial Report for public comment. 2. Q8: Agree to a proposal that section 3.2.4 should be a completely separate section. Clarify at a structural level. Move forward as a recommendation for the Initial Report. 3. Q12: Ask Maxim Alzoba to send his proposal to the list for consideration and adding to the archives/record. 4. Q13: Put the proposal (Karanicolas) in the Initial Report for public comment noting pros and cons from deliberations. 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…> and see email from Co-Chairs to WG: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-October/003931.html: Continue discussion on the list and put on the agenda for a meeting on Wednesday, 16 October. Notes: 1. Updates to Statements of Interest: Steve Levy had an update. See: INSERT. 2. Conclude discussion of proposals relating to Open TMCH Charter Questions (see attached document): a. Revised Proposal(s) re: Charter Question 7: Proposal submitted by Greg Shatan for Q7 (1 Oct 2019): https://community.icann.org/download/attachments/109482780/Comparison%20of%… -- Greg added a preamble to make his proposal parallel the proposal from Kleiman/Muscovitch. -- Clarifies the nature of the disagreement. -- Principle differences between the proposals so include both in the Initial Report. -- The last version of the AGB uses “word mark” but it was originally “text mark”. Whatever the WG decides some kind of definition is a good idea. -- I wouldn’t rely on either “text mark” or “word mark” to have a well understood “term of art” meaning, especially globally. So if we stick with the current term, the focus is squarely on the definitional issue. -- This proposal could be simplified by removing the “word mark”/”text mark” aspects (delete #1). -- ACTION: Include both proposals in the Initial Report al for comment. b. Revised Proposal(s) re: Charter Question 8: Proposal submitted by Claudio DiGangi for Q8 (1 Oct 2019) and Proposal submitted by Rebecca Tushnet for Q8 (1 Oct 2019), with comments from Paul Tattersfield: -- Core struggle is the question of what it a trademark. -- Also discussion about trying to do something else. The concern is what about these other things that don’t say they are trademarks in statutes. -- Seems like a non-issue because examples all seem to be trademarks somewhere. -- Paul Tattersfield: Has to be specified in a statute. -- Seems that there are bunch of laws around the world that specify GIs. If there is a national law (such as tequila in Mexico) are we okay with that? -- Currently the AGB apparently *requires* databases to be nonexclusive; we should be clear about whether we want to change that. -- 3.2.4 is needed -- any mark that isn't part of the RPMs. -- It seems as though the basic change ought to be simply NOT including 3.2.4 in the chronological listing; but to explain what it includes elsewhere. So it’s clear that the three categories before it are the ones that qualify for mandatory Sunrise and Claims. -- 3.2.4 seems to be an over the edge case. -- Current 4.1 of the AGB seems to require that anything run by the TMCH be non-exclusive. -- If 3.2.4 can be divorced from the other sections, that would be a big help in clarifying this. -- 3.2.4 could certainly be moved to 3.6 as, say, 3.6.1 -- Right, and maintain the distinction between marks that enter the TMCH for mandatory Sunrise and Claims, and marks that enter the TMCH for other registry-voluntary services. -- 75 as of Feb 2017.  And they had no way of deciding which of the 75 are, or are not, considered GIs under specific laws. -- ACTION: Agree to a proposal that section 3.2.4 should be a completely separate section. Clarify at a structural level. Move forward as a recommendation for the Initial Report. 3. Discussion of Deferred Charter Questions (see the attached Status of WG Discussions on Agreed TMCH Charter Questions): a. TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13 – Action: Staff to see if there are data on TMCH outages. Question 12: -- From Maxim: I came to the conclusion that another option is for the single TMCH operator to have a better design of the system which effectively creates two virtual TMCH operators (with the synchronization and proper redundancy). -- ACTION: Ask Maxim to send his proposal to the list for consideration and adding to the archives/record. Question 13: -- Doesn’t seem to be a concern. Cost allocations might be fine. b. 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…>) -- I went back to check this with my members. They still oppose it being open as their choice of what TMs to put/not out into the TMCH is part of their commercial and/or enforcement strategy. *not put -- ACTION: Put the proposal in the Initial Report for public comment noting pros and cons from deliberations. 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…> -- See email from Co-Chairs to WG: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-October/003931.html -- Continue discussion during the meeting on 16 October.

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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.

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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. 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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

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