As a signatory: (1) I and many of the other signatories routinely teach trademark law and are pretty clear on the requirements for a valid mark; (2) email, unlike the TMCH, does not exist only to implement rights protection measures, and thus email is not an appropriate target of this working group or the scholars' letter but the TMCH, its contents, its openness, and its uses are; (3) your quotation of ACPA is incredibly misleading. As you must know, trademarks ordinarily and routinely cover identified classes of goods and services, and ACPA doesn't change that--it just provides for liability for specific kinds of bad faith registrations. Rebecca Tushnet Georgetown Law 703 593 6759 On Tue, Apr 11, 2017 at 4:50 PM, Paul McGrady <policy@paulmcgrady.com> wrote:
STRICTLY IN MY PERSONAL CAPACITY
Hi Phil,
Thanks for your note. The “Trademark Scholars Letter” you reference seems to imply that the TMCH is “recently demanded by trademark owners.” Quite the opposite – it is an implemented RPM that has been out there for years now and is up for review. With due respect to the contribution made by the “Trademark Scholars Letter”, it does not appear to be keeping pace with the facts on the ground. It also conflates the TMCH itself with the Sunrise and Claims which draw upon data from the TMCH. The TMCH is a database, not an RPM. While it is used in conjunction with the Sunrise and Claims RPM, so are all sorts of other technologies (email, as an example) and that doesn’t make those other technologies an RPM. Also, the ““Trademark Scholars Letter” doesn’t cite to authorities supporting many of the claims it makes (which is odd for a letter seeking special status as ‘scholarship.”). Lastly, the “Trademark Scholars Letter” contains statements which are questionable at best. For example, the claim that “Under U.S. and most other countries’ trademark laws, ordinarily a trademark right only exists within a distinct class of goods or services” which is exactly the opposite of what the ACPA states about trademark rights as applied in the cybersquatting context namely that the analysis is “without regard to the goods or services of the parties.”
Like you, I’m a great advocate of rigor and accuracy, and as such I am not hanging too many hats on the “Trademark Scholars Letter.”
Best,
Paul
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Phil Corwin Sent: Tuesday, April 11, 2017 2:12 PM To: Greg Shatan <gregshatanipc@gmail.com> Cc: gnso-rpm-wg@icann.org
Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Greg:
To clarify, I was referencing significant TMCH issues that can be addressed, if a WG member or members wish to, by the submission of specific proposals over the coming weeks as we strive to conclude, to the full extent possible, our consideration of TMCH matters and move on to Sunrise Registrations and TM Claims Notices. I was not restricting examples to what is on our agenda for this Wednesday and I was not trying to be inflammatory.
I am frankly quite surprised at your statement, “I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. “
The “Trademark Scholars Letter” transmitted t this WG by EFF and extensively on this list discussed makes precisely that point:
We are concerned that the expansive protections recently demanded by trademark owners
are inconsistent with basic propositions of trademark law.
A case in point is the Trademark Clearinghouse, a mechanism established for the new
gTLDs that gives trademark owners special rights to prevent the registration of domain
names that contain their trademarks. Those registered in the Trademark Clearinghouse have
access to a sunrise period that gives them priority access to domain names in a new gTLD,
and to a trademark claims process that gives them early warning when domains the contain
their trademarks are registered.
I do not presently subscribe to the view that the TMCH is inconsistent with TM law and should be eliminated, but I wouldn’t be at all surprised to see a proposal to that end presented by a WG member given statements that have been made on this list.
Likewise, I am well aware that the TMCH is supportive database and not an RPM in itself, which is why my email used the term “placement in the TMCH database”. I’m also very aware that TM+50 terms are eligible for TMCH registration, as well as terms protected by statute or treaty (which your response neglected to mention), but didn’t think I needed to put all of that in an example relating to possible proposals to expand eligible terms by making trademark+additional word or typographical variations of trademarks into the TMCH for this well-versed audience of WG members.
Lastly I will differ to some extent with your concern about “an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs)” in that, while the TMCH is a database and Sunrise and TM Claims are RPMs, I nonetheless see them as irrevocably interrelated. If there was no TMCH then there would be no foundation for the associated RPMs, and if we contract or expand the terms eligible for placement in the TMCH then the associated RPMs will contract or expand accordingly.
I’m a great advocate of rigor and accuracy, especially when we get to actually debating specific proposals. But I hope the members of this WG will remember that the voluntary co-chairs of this WG are devoting a great deal of effort to trying to keep it moving a long and on track and, cut us a little sympathetic slack when we employ some verbal shorthand on the assumption that sophisticated WG members will know the additional nuances and need not have them repeatedly pointed out.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Tuesday, April 11, 2017 2:33 PM To: Phil Corwin Cc: George Kirikos; gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
I have some problems with the examples given here:
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
In the first example, the first problem is that it is outside the four topics that Phil indicated were open for discussion in his follow-up email (design marks, G.I.s, “identical match” and TMDB confidentiality). So it seems inappropriate (and a bit inflammatory) to suggest that this could be a submission in response to Mary's email. Second, this seems to be yet another example of an unfortunate tendency to roll the TMCH (which is a database) together with Sunrise and Claims (which are RPMs). I am at a loss to see how the TMCH database itself gives unfair advantage to TM owners, nor do I believe I have seen any suggestion to that effect. TMCH on its own does nothing for trademark owners (other than take their money). There have, of course, been suggestions that the RPMs that use the database (Sunrise and Claims) somehow give an unfair advantage to TM owners (not that I agree, of course). So, it would seem that this example is in fact related to Sunrise and/or Claims and not to the TMCH itself, and is both incorrectly framed and premature (were it rewritten to refer to Sunrise and/or Claims rather than "the TMCH"). We need to be much more careful in keeping these concepts separate.
The second example does seem to relate to an extent to one of the four open topics (G.I.s) but the example is factually inaccurate, since additional terms besides registered trademarks are already eligible for placement in the TMCH (TM+50 and "marks protected by statute or treaty"). It's not helpful to give the impression that the TMCH database is currently limited to registered trademarks (I would hope that most of us know that already, but that's not the point). The discussion around G.I.s would more accurately be framed as whether terms that are not trademarks or previously abused strings containing trademarks should be eligible for the TMCH database.
A little more rigor and accuracy will help us all, as we drink from the WG firehose....
Greg
Greg Shatan C: 917-816-6428 S: gsshatan Phone-to-Skype: 646-845-9428 gregshatanipc@gmail.com
On Tue, Apr 11, 2017 at 1:21 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
George:
I am consulting with other co-chairs and support staff in regard to what procedure we will follow when any member of this WG asserts that insufficient data has been obtained to resolve a proposed RPM modification on an informed basis, and that such data exists and can be accessed within a reasonable time. We'll get back to the full WG on that.
In the interim I would point out that the deadline of 19 April was proposed only in relation to the 4 questions on the structure and operations of the TMCH which the WG had agreed were still open (design marks, G.I.s, “identical match” and TMDB confidentiality). Some other questions have been closed for the time being, a few are being tabled for further discussion following WG work on Sunrise and Claims. These 4 questions have been discussed extensively for some time. Data needs were identified and sought. To the extent that a decision on any proposal on any of these 4 TMCH-related questions may be contingent on further data, it will be helpful if the type of data and (if possible) suggested source(s) can be indicated in the proposal.
Also remember that we have always been clear that all decisions by the WG are not final and are subject to being revisited up until the submission of our Phase 1 Finales Report and recommendations, if intervening decisions and new information justifies such revisiting.
So we are not trying to cut off any discussion prematurely. But this is not a debating society but a WG charged with making decisions and forwarding recommendations, and we do have a timeline we are trying to adhere to. That is why the co-chairs are now actively urging that we move the TMCH discussions away from open-ended discussions and toward focused debate on specific proposals.
Finally --and this is solely a personal observation -- I think there are likely some issues where no amount of data will bring about consensus due to substantial differences in perspective.
Thanks and best regards, Philip
Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
-----Original Message----- From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, April 11, 2017 12:33 PM To: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] SOLICITING TMCH PROPOSALS --- RE: Agenda and documents for Wednesday Working Group meeting (12 April)
Phil:
With respect, this timeline is too short, given that we've not even had answers/data to this working group's questions returned from Deloitte. e.g. just last week I specifically asked for the top 500 terms (not just the top 10), and I had asked for that prior to last week (i.e. during the Copenhagen calls in March). Other answers/data have not been provided, either (e.g. ICANN has the right to audit Deloitte's financials, to see if the fees to TMCH applicants/registries are reasonable, etc.), or the entire table of questions, etc. that was prepared that sought out relevant data.
Proper order is: Data first, then analysis of the data, then proposals for changes, then conclusions.
We can't go straight to proposals and then conclusions, without having received back all the data that this working group's members have requested.
At some point, this PDP will have public comment periods, and the public comments will be able to say "you didn't do the work, didn't collect the data, refused to look for data, refused to analyze the data, refused to accept the conclusions that flowed from the data", etc. This PDP should be sensitive to that, and actually do the work, instead of pretending to do the work to support a predetermined (rigged) outcome of "no change to the status quo" that some people seem to feel should happen, despite evidence identifying numerous problems.
This is probably going to be one of the most scrutinized PDPs in ICANN's history --- let's do the work so that its reports/conclusions can stand up to scrutiny.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Tue, Apr 11, 2017 at 12:09 PM, Phil Corwin <psc@vlaw-dc.com> wrote:
WG members:
We have been having some very lively and occasionally heated discussions on TMCH-related matters. However, these discussions have been somewhat amorphous as they have not been focused on any specific proposal for altering the TMCH. That is about to change, as the time for discussion of TMCH matters is closing and the time for decisions is fast approaching..
In that regard, please take special note of this portion of the email sent by Mary---
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
In other words, starting tomorrow we are both soliciting, and will soon be setting a final deadline, for the presentation of proposals to alter the current policy concerning the TMCH and its implementation, with such proposals relating to specific TMCH questions.
That means that if you are of a view that the TMCH should be eliminated because you believe it gives unfair advantage to TM owners you will have a chance to present a proposal to that effect.
Likewise, if you are of the view that additional terms besides registered trademarks should be eligible for placement in the TMCH database you will also have a chance to make your case and seek consensus support.
The above two examples are merely illustrative and by no means intended to limit anyone’s ability to advocate any question-specific response.
In an April 9th email I laid out my expectations for how proposals would be presented -- Since then the co-chairs have engaged in a conference call and concurred on this approach, and that is reflected in Mary’s advisory--
Here’s how this co-chair would hope our internal decision process plays out on this or any other policy/implementation matter:
· A proponent of making a change to present policy and practice should articulate the rationale for the proposal and the benefits expected to flow from its adoption.
· The proponent should also be candid about what costs or burdens might be imposed on various parties if it is adopted and explain why those costs are outweighed by the envisioned benefits.
· If an adopted change would not be self-executing but would require significant implementation details then the proponent should at least explain the basics how that would be practically effected.
I believe that if proponents of making a change follow those suggestions it will set the stage for at least a fully informed debate and subsequent decision-making.
The co-chairs have also agreed that when the WG is presented with a specific proposal we shall, after some reasonable time for discussion, take a straw poll of WG members participating in the meeting in which it is raised to ROUGHLY gauge the level of support/opposition for it. However, that straw poll will not be binding and whether or not consensus exists for a particular proposal will be determined by polling the entire membership of the WG.
If you have any concerns or questions about this approach please let us know. Again, the main message is that, so far as the TMCH is concerned, the time for concluding talk and making decisions is fast approaching.
Thank you and best regards,
Philip
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
Twitter: @VlawDC
"Luck is the residue of design" -- Branch Rickey
From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Mary Wong Sent: Monday, April 10, 2017 5:56 PM To: gnso-rpm-wg@icann.org Subject: [gnso-rpm-wg] Agenda and documents for Wednesday Working Group meeting (12 April)
Dear all,
The proposed agenda for our call this Wednesday (12 April), which is scheduled as a 90-minute call commencing at 1600 UTC, is as follows:
1. Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
2. Discuss remaining open TMCH Charter questions (see attached table and notes, below)
3. Overview by Co-Chairs on preliminary recommendations related to RPMs from the Competition, Consumer Protection & Consumer Trust Review Team (CCT-RT) (see attached document)
4. Administrative details: e.g. Working Group & Sub Team meeting dates for the weeks of 17 & 24 April 2017, confirm scheduled day for 4th rotating (0300 UTC) Working Group call
5. Next steps/next meeting
For Agenda Item #2, please note the following:
As these questions have already been the subject of substantial Working Group discussion, the aim at this meeting is to allow Working Group members who wish to propose recommendations for the full Working Group to consider to do so. Any such proposals or recommendations should be specific, include a list of the benefits and costs, advantages and disadvantages, and be sent to the Working Group mailing list no later than 7 days following the call this week (i.e. 19 April).
Thanks and cheers
Mary
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