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@law.harvard.edu> Date: Thursday, October 10, 2019 at 12:25 PM To: Julie Hedlund <julie.hedlund@icann.org>, Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@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@icann.org> Sent: Thursday, October 10, 2019 12:21 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@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@icann.org> on behalf of "Tushnet, Rebecca" <rtushnet@law.harvard.edu> Date: Thursday, October 10, 2019 at 12:13 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@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@gmail.com> Sent: Thursday, October 10, 2019 11:58 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: claudio di gangi <ipcdigangi@gmail.com>; Michael Graham (ELCA) <migraham@expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg@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@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@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@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@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@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@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@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_uscode_text_36_30905&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=AB-OFCOWkNtMN0rGQpsDXsXljiOXE-4OgNXtMdPp9lA&s=N6x8UPsvMdhkmJxwLwIOP6wkHxGQiGzWyNVc7CYO6EI&e=> 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@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@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Thursday, October 3, 2019 1:15 PM To: Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>>; gnso-rpm-wg <gnso-rpm-wg@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@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&realattid...] 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@expediagroup.com<mailto:migraham@expediagroup.com> [http://mail/u/1/s/?view=att&th=16d8d44103fba857&attid=0.1&disp=emb&realattid...] From: GNSO-RPM-WG <gnso-rpm-wg-bounces@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@gmail.com<mailto:ipcdigangi@gmail.com>>; Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Cc: gnso-rpm-wg <gnso-rpm-wg@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@gmail.com<mailto:ipcdigangi@gmail.com>> Sent: Tuesday, October 1, 2019 4:11 PM To: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; gnso-rpm-wg <gnso-rpm-wg@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@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@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: This is the same text but with the subject line proper. 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