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> Sent: Tuesday, October 1, 2019 4:11 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg <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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In GI-world, they distinguish between levels of GI-ness. Some geographic terms merely identify the geographic "source" of a product, while others indicate more in the way of specific qualities. So "source indicator" is in fact widely used to describe GIs (though many GIs are said to be source-plus-some-other-quality). Some examples https://www.origin-gi.com/images/stories/PDFs/English/E-Library/geographical... https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf... Geographical Indication Protection in the United States United States Patent and Trademark Office - uspto.gov<https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf...> Geographical Indication Protection in the United States United States Patent and Trademark Office What Are “Geographical Indications”? “Geographical indications” (“GIs”) are defined at Article 22(1) of the World Trade www.uspto.gov Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Michael Graham (ELCA) <migraham@expediagroup.com> Sent: Tuesday, October 1, 2019 8:31 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu>; claudio di gangi <ipcdigangi@gmail.com>; Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] Proposal re Q8. 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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] From: GNSO-RPM-WG <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>; Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <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. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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That's a really interesting suggestion, but I would like to know a little more about what we in the group know: Does this happen to GIs (not in the US but in other countries) in order to let national TM offices avoid GI/TM conflicts? If it does (which it sure seems like it might) do we want the notification to the TM office to trump the fact that it's a GI? I'm open to that language as a change but we should probably understand what it means for GIs. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup@gmail.com> Sent: Wednesday, October 2, 2019 9:03 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu> Cc: Michael Graham (ELCA) <migraham@expediagroup.com>; claudio di gangi <ipcdigangi@gmail.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. Perhaps the heavy lifting could be done elsewhere? 3.2.3 Any word mark notified to a national trademark office as protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion On Wed, Oct 2, 2019 at 2:14 AM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: In GI-world, they distinguish between levels of GI-ness. Some geographic terms merely identify the geographic "source" of a product, while others indicate more in the way of specific qualities. So "source indicator" is in fact widely used to describe GIs (though many GIs are said to be source-plus-some-other-quality). Some examples https://www.origin-gi.com/images/stories/PDFs/English/E-Library/geographical_indications.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.origin-2Dgi.com_images_stories_PDFs_English_E-2DLibrary_geographical-5Findications.pdf&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=7s8Z71SEOge5sFwz9QH1S2IWHNP9TisJOPm_i4yk5Zc&s=WK20kgaZCGKBQ4B94sPoo-KjPEtqUB-JqZNZnaXbgPo&e=> https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_system.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_sites_default_files_web_offices_dcom_olia_globalip_pdf_gi-5Fsystem.pdf&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=7s8Z71SEOge5sFwz9QH1S2IWHNP9TisJOPm_i4yk5Zc&s=yfv5W4B4dW_rAFsJ15ZtYMrXT-h9lL5CEDEdvXLwziI&e=> Geographical Indication Protection in the United States United States Patent and Trademark Office - uspto.gov<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.uspto.gov_sites_def...> Geographical Indication Protection in the United States United States Patent and Trademark Office What Are “Geographical Indications”? “Geographical indications” (“GIs”) are defined at Article 22(1) of the World Trade www.uspto.gov<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.uspto.gov&d=DwMFaQ&c...> Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>> Sent: Tuesday, October 1, 2019 8:31 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; 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. 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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] 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. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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"Marks protected by statute or treaty" is meant to cover the relatively limited instance where the rights to a specified mark are established in a statute or treaty and not (initially, at least) in a trademark office. The key is that the specific mark must be stated in the statute or treaty itself and not in a list or registry established by the statute or treaty, and that it must be a "mark" (trademark, service mark, certification mark or collective mark). This was never meant to create trademark rights for non-trademarks. 6ter is a textbook example of what this provision does *not* cover. GIs as a general class is another example of what this provision does *not* cover. If we need to we can go back to the original deliberations that produced this category. Right now, it's in danger of becoming a runaway train. Unfortunately, I have a business meeting in conflict with today's call and my ability to attend will be very limited at best. I would really, really, really like to put this genie back in the bottle. It may (or may not) be desirable to offer Sunrise and Claims protection to national emblems or geographic indications or book titles or surnames or culturally significant words or common-law marks or works of art. But this is not the way to get there. Greg On Wed, Oct 2, 2019 at 11:46 AM claudio di gangi <ipcdigangi@gmail.com> wrote:

Paul T., all,

I like how you think - this is an original/creative idea.

It would appear to work well for U.S, but I’m unclear on status re every jurisdiction worldwide. Do we know whether every jurisdiction handles marks protected by statute or treaty in the same way as the PTO in the States, or may there be some exceptions?

I agree with your point about the heavy lifting being done elsewhere, i.e. by staff or by the Implementation Recommendation Team (IRT) that will follow this PDP.

In fact, I was thinking along the same lines (on the heavy lifting point) which led me to rely upon Mary’s suggested text for 3.2.3 (which she included in an email to the full WG a few weeks ago).

Other solutions include keeping the existing text for 3.2.3 (as it currently appears in the AGB) or the text that Mary drafted (as contained in my proposal), with an added ‘disclaimer’ - “marks that constitute GIs or Appellations of Origin do not qualify under 3.2.3” or “marks that constitute GIs or Appellations of Origin do not qualify under this provision”.

We can add that language in 3.2.3 itself, or in the Section that is below 3.2.1-3.2.4 in the AGB. I say this because if you look in the AGB, directly below 3.2.1-3.2.4, there are a set of provisions or rules that apply to the system overall. So we can add the ‘disclaimer’ there and not worry so much about the exact wording in 3.2.3, because that Section is applicable and governing. In both proposals, we have made modifications to clarify or change some provisions in this Section, so we wouldn’t be breaking any new ground.

In my personal view, this latter approach - of adding the disclaimer accomplishes the objective on Q#8.

Cheers, Claudio

On Wednesday, October 2, 2019, Paul Tattersfield <gpmgroup@gmail.com> wrote:

...

Perhaps the heavy lifting could be done elsewhere?

3.2.3 Any word mark notified to a national trademark office as protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion

On Wed, Oct 2, 2019 at 2:14 AM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

...

In GI-world, they distinguish between levels of GI-ness. Some geographic terms merely identify the geographic "source" of a product, while others indicate more in the way of specific qualities. So "source indicator" is in fact widely used to describe GIs (though many GIs are said to be source-plus-some-other-quality). Some examples

https://www.origin-gi.com/images/stories/PDFs/English/E-Library/geographical...

https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf... Geographical Indication Protection in the United States United States Patent and Trademark Office - uspto.gov <https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf...> Geographical Indication Protection in the United States United States Patent and Trademark Office What Are “Geographical Indications”? “Geographical indications” (“GIs”) are defined at Article 22(1) of the World Trade www.uspto.gov

Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------ *From:* Michael Graham (ELCA) <migraham@expediagroup.com> *Sent:* Tuesday, October 1, 2019 8:31 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; claudio di gangi < ipcdigangi@gmail.com>; Paul Tattersfield <gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] Proposal re Q8.

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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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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---

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.

True, but I don’t see the relevance. On Wed, Oct 2, 2019 at 12:52 PM Paul Keating <Paul@law.es> wrote:

Greg,

Regarding Statute or Treaty, this is jurisdictionally based. Statutes are not global by definition. Treaties are not signed by all and in many cases allow for objections by individual nation states.

*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Greg Shatan <gregshatanipc@gmail.com> *Date: *Wednesday, October 2, 2019 at 6:47 PM *To: *claudio di gangi <ipcdigangi@gmail.com> *Cc: *gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] Proposal re Q8.

"Marks protected by statute or treaty" is meant to cover the relatively limited instance where the rights to a specified mark are established in a statute or treaty and not (initially, at least) in a trademark office. The key is that the specific mark must be stated in the statute or treaty itself and not in a list or registry established by the statute or treaty, and that it must be a "mark" (trademark, service mark, certification mark or collective mark).

This was never meant to create trademark rights for non-trademarks. 6ter is a textbook example of what this provision does *not* cover. GIs as a general class is another example of what this provision does *not* cover.

If we need to we can go back to the original deliberations that produced this category.

Right now, it's in danger of becoming a runaway train.

Unfortunately, I have a business meeting in conflict with today's call and my ability to attend will be very limited at best. I would really, really, really like to put this genie back in the bottle.

It may (or may not) be desirable to offer Sunrise and Claims protection to national emblems or geographic indications or book titles or surnames or culturally significant words or common-law marks or works of art. But this is not the way to get there.

Greg

On Wed, Oct 2, 2019 at 11:46 AM claudio di gangi <ipcdigangi@gmail.com> wrote:

Paul T., all,

I like how you think - this is an original/creative idea.

It would appear to work well for U.S, but I’m unclear on status re every jurisdiction worldwide. Do we know whether every jurisdiction handles marks protected by statute or treaty in the same way as the PTO in the States, or may there be some exceptions?

I agree with your point about the heavy lifting being done elsewhere, i.e. by staff or by the Implementation Recommendation Team (IRT) that will follow this PDP.

In fact, I was thinking along the same lines (on the heavy lifting point) which led me to rely upon Mary’s suggested text for 3.2.3 (which she included in an email to the full WG a few weeks ago).

Other solutions include keeping the existing text for 3.2.3 (as it currently appears in the AGB) or the text that Mary drafted (as contained in my proposal), with an added ‘disclaimer’ - “marks that constitute GIs or Appellations of Origin do not qualify under 3.2.3” or “marks that constitute GIs or Appellations of Origin do not qualify under this provision”.

We can add that language in 3.2.3 itself, or in the Section that is below 3.2.1-3.2.4 in the AGB. I say this because if you look in the AGB, directly below 3.2.1-3.2.4, there are a set of provisions or rules that apply to the system overall. So we can add the ‘disclaimer’ there and not worry so much about the exact wording in 3.2.3, because that Section is applicable and governing. In both proposals, we have made modifications to clarify or change some provisions in this Section, so we wouldn’t be breaking any new ground.

In my personal view, this latter approach - of adding the disclaimer accomplishes the objective on Q#8.

Cheers,

Claudio

On Wednesday, October 2, 2019, Paul Tattersfield <gpmgroup@gmail.com> wrote:

Perhaps the heavy lifting could be done elsewhere?

3.2.3 Any word mark notified to a national trademark office as protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion

On Wed, Oct 2, 2019 at 2:14 AM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

In GI-world, they distinguish between levels of GI-ness. Some geographic terms merely identify the geographic "source" of a product, while others indicate more in the way of specific qualities. So "source indicator" is in fact widely used to describe GIs (though many GIs are said to be source-plus-some-other-quality). Some examples

https://www.origin-gi.com/images/stories/PDFs/English/E-Library/geographical...

https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf...

Geographical Indication Protection in the United States United States Patent and Trademark Office - uspto.gov <https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf...>

Geographical Indication Protection in the United States United States Patent and Trademark Office What Are “Geographical Indications”? “Geographical indications” (“GIs”) are defined at Article 22(1) of the World Trade

www.uspto.gov

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ------------------------------

*From:* Michael Graham (ELCA) <migraham@expediagroup.com> *Sent:* Tuesday, October 1, 2019 8:31 PM *To:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; claudio di gangi < ipcdigangi@gmail.com>; Paul Tattersfield <gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* RE: [GNSO-RPM-WG] Proposal re Q8.

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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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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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> 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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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.

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 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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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.

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> 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> 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

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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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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> 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> 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> 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> 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_usc...>

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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.

Thanks Paul T. What does “notified to” mean? Best, Paul This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> On Behalf Of Paul Tattersfield Sent: Thursday, October 10, 2019 8:36 AM To: claudio di gangi <ipcdigangi@gmail.com> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. 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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] 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. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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.

Paul T., Thanks for this; have you been able to sort out the question about the overall uniformity of this approach? Unfortunately, 3.2.3 has to be a one-size-fits-all rule that covers every jurisdiction worldwide. Finally, if you see any shortcomings on the new text that Rebecca and I settled on earlier this week, please let us know. I think it accomplishes the goal without implicating the various practices of the TMOs, but of course I am interested in your views. Best regards, Claudio On Thursday, October 10, 2019, Paul Tattersfield <gpmgroup@gmail.com> wrote:

told officially

On Thu, Oct 10, 2019 at 2:46 PM McGrady, Paul D. <PMcGrady@taftlaw.com> wrote:

...

Thanks Paul T.

What does “notified to” mean?

Best,

Paul

This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments.

*From:* GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> *On Behalf Of *Paul Tattersfield *Sent:* Thursday, October 10, 2019 8:36 AM *To:* claudio di gangi <ipcdigangi@gmail.com> *Cc:* gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.

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> 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> 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> 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> 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> 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_usc...>

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg <https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_li...> _______________________________________________ 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_p...>) 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_t...>). 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.

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> 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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] 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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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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] 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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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. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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.

It would be great if you could forward it Claudio. Thanks! Julie From: claudio di gangi <ipcdigangi@gmail.com> Date: Thursday, October 10, 2019 at 1:02 PM To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu> Cc: Julie Hedlund <julie.hedlund@icann.org>, Paul Tattersfield <gpmgroup@gmail.com>, gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: [Ext] Re: [GNSO-RPM-WG] Proposal re Q8. Julie, We haven't as of yet taken the step of combining the proposals, i.e. in the areas where they are both in alignment on substantive policy. So perhaps we can just display both of the proposal in their current forms? I previously sent mine to the list, contained as an attached in PDF. I can forward that over to you for ease of reference. Best, Claudio On Thu, Oct 10, 2019 at 12:25 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: 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<mailto:julie.hedlund@icann.org>> Sent: Thursday, October 10, 2019 12:21 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; 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. 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<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Date: Thursday, October 10, 2019 at 12:13 PM To: 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. 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<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 11:58 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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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I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark"). 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 12:41 PM 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. We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in” 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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: 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<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 11:58 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] 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. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _______________________________________________ GNSO-RPM-WG mailing list GNSO-RPM-WG@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_listinfo_gnso-2Drpm-2Dwg&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=sIWgLf6tJOr4bVrRl2Kq-iflUaAJ5xM7solSCPqTSEM&e=> _______________________________________________ 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_policy&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=ACGGg3oDhOg63w3gCmDwRhR4IOgKM68xVpS38jPW6Ek&e=>) 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_tos&d=DwMFaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=zNkRTU6mF0Z0D3-x2yYFYqRN-laL_rrDxkm1t3nS1D0&s=FFCUiGsakbAYTolDM5UiMxZBkB4wC55n8jDUnUzd3Uk&e=>). 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Paul, I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world. Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU? Thanks, Claudio On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

‘specified in’ would be ok.Personally I wouldn't define trademark here.

On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

...

I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark").

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 12:41 PM *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.

We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in”

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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

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> 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> 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> 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> 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> 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> 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> 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_usc...>

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

[image: cid:image001.png@01D49D39.23E390C0]

*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 <migraham@expediagroup.com>*

[image: cid:image002.png@01D49D39.23E390C0]

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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

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But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in. 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 3:52 PM To: claudio di gangi <ipcdigangi@gmail.com> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; Michael Graham (ELCA) <migraham@expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text. Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes. On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Paul, I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world. Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU? Thanks, Claudio On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: ‘specified in’ would be ok.Personally I wouldn't define trademark here. On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark"). Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 12:41 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in” 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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: 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<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 11:58 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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. [cid:image001.png@01D49D39.23E390C0] 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> [cid:image002.png@01D49D39.23E390C0] 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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Dear all, I hope it’s appropriate for staff to comment here, as a relatively similar discussion took place in the IGO-INGO Curative Rights PDP. As with RPMs, the fundamental principle was that any domain name policy protections should reflect, and not expand, existing legal rights. The issue was the existence of substantive legal rights (if any) in the names, acronyms, signs and emblems of international organizations (both governmental and non-governmental), e.g. the Red Cross, other NGOs, agencies of the United Nations, other international organizations established by treaty, etc. The question was whether the sort of legal protections offered by Article 6ter of the Paris Convention for the Protection of Industrial Property are equivalent to, or confer, substantive legal rights (Article 6ter obligates member states to, in part, “refuse or to invalidate the registration, and to prohibit by appropriate measures the use… either as trademarks or as elements of trademarks … emblems, abbreviations and names of international intergovernmental organizations”). Legal commentators have noted that this treaty provision does not itself create an industrial property right; rather, it creates an obligation for states to prevent third party registrations of the protected names, abbreviations and so on as trademarks. In addition, as the treaty is not self-executing, it does not confer a right of action in member states unless those states enact legislation that allow the protected organizations such a means of enforcement. Finally, it may also not be enough to rely on a notification procedure, since that may simply indicate the existence of a form of protection, and not necessarily a substantive right. Therefore, and in line with what Rebecca has noted, a treaty provision that does not clearly indicate that a mark is a trademark could place it into a similar type of “protected” category as geographical indicators, unless there exists specific national legislation that actually specifies it to be a trademark. This could be the case, for instance, for an NGO such as the Red Cross or the International Olympic Committee, where the applicable international treaties may not explicitly state that they are trademarks, but one or more national statutes may do. Cheers Julie, Ariel & Mary From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> Date: Thursday, October 10, 2019 at 17:46 To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu> Cc: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. “I don't see how that's different conceptually from "the marks that the national GI Registry accepts," - It’s different because it’s the marks of the specific [treaty] organization, rather than a registry full of third party marks / GIs etc. What compounds the problem is the Paris Convention requires that a state refuse to register designations that have been notified (deposited) pursuant to Article 6ter and to which the state has notified (transmitted) no objections. eg. the UNHCR 89 serial 89000825 which effectively blocks everyone; even their own organizations’ trademark applications e.g. 77663317 for “UNHCR BLUE KEY” which was refused / had to be withdrawn. On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 3:52 PM To: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text. Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes. On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>> wrote: Paul, I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world. Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU? Thanks, Claudio On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> wrote: ‘specified in’ would be ok.Personally I wouldn't define trademark here. On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark"). Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Paul Tattersfield <gpmgroup@gmail.com<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 12:41 PM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] Proposal re Q8. We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in” 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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> wrote: 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<mailto:gpmgroup@gmail.com>> Sent: Thursday, October 10, 2019 11:58 AM To: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Cc: claudio di gangi <ipcdigangi@gmail.com<mailto:ipcdigangi@gmail.com>>; Michael Graham (ELCA) <migraham@expediagroup.com<mailto:migraham@expediagroup.com>>; gnso-rpm-wg <gnso-rpm-wg@icann.org<mailto: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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The GAC have been very clear that they [rightly] wish IGOs to enjoy access to ICANN mandated RPMs. The registration of trademarks simply evidences the existence of marks of the underlying goods and services. 6ter of the Paris Convention evidences IGO marks in a similar way. UDRP is very well drafted there is nothing in it that precludes a determination involving unregistered marks whereas the TMCH as a matter of process requires word marks to be evidenced prior to submission for use in the RPMs (registered, court validated etc.). There seems to be degree of concern that there may be a [continuing] misunderstanding by the TMCH operators of what should and should not be included and that more precise language will be required for 3.2.3 and this as presently proposed would exclude the unregistered marks of IGOs. I appreciate there are only a relatively small number of IGOs however some of them are very well known such as the UNHCR, NATO, Council of Europe, African Union, European Union, World Health Organization, World Trade Organization, United Nations etc. With the above in mind Rebecca, would the following additional subsection be acceptable to your proposal? 3.2.3 (b)* Word marks of treaty organizations protected under 6ter of the Paris Convention and notified to a national trademark office [*Again section numbering and ordering can be tidied later but the new subsection should be one that flows to 7.1 & 7.2 and the RPMs.] On Fri, Oct 11, 2019 at 8:57 AM Paul Keating <paul@law.es> wrote:

Thank you Mary

However, to clarify, the treaty allows any member to list an acronym. There is no requirement that it be otherwise registered or treated as a trademark/service mark (even in the “sponsoring member state). It also allows members to object to any specified acronym.

The USPTO’s position is that such acronyms are merely common law claims which require proof or a formal registration as a trademark.

For these (and other) reasons the WG on this issue (of which I was a part) declined to grant them any special rights under the UDRP other than to the extent the holder could satisfy the requirements for a common law trademark.

I see no reason for GIs to be treated any differently.

And of course these same issues should preclude the holder from participating in the TMCH process.

Sent from my iPhone

On 10 Oct 2019, at 23:58, Mary Wong <mary.wong@icann.org> wrote:



Dear all,

I hope it’s appropriate for staff to comment here, as a relatively similar discussion took place in the IGO-INGO Curative Rights PDP. As with RPMs, the fundamental principle was that any domain name policy protections should reflect, and not expand, existing legal rights. The issue was the existence of substantive legal rights (if any) in the names, acronyms, signs and emblems of international organizations (both governmental and non-governmental), e.g. the Red Cross, other NGOs, agencies of the United Nations, other international organizations established by treaty, etc. The question was whether the sort of legal protections offered by Article 6ter of the Paris Convention for the Protection of Industrial Property are equivalent to, or confer, substantive legal rights (Article 6ter obligates member states to, in part, *“refuse or to invalidate the registration, and to prohibit by appropriate measures the use… either as trademarks or as elements of trademarks … emblems, abbreviations and names of international intergovernmental organizations”*).

Legal commentators have noted that this treaty provision does not itself create an industrial property right; rather, it creates an obligation for states to prevent third party registrations of the protected names, abbreviations and so on as trademarks. In addition, as the treaty is not self-executing, it does not confer a right of action in member states unless those states enact legislation that allow the protected organizations such a means of enforcement. Finally, it may also not be enough to rely on a notification procedure, since that may simply indicate the existence of a form of protection, and not necessarily a substantive right.

Therefore, and in line with what Rebecca has noted, a treaty provision that does not clearly indicate that a mark is a trademark could place it into a similar type of “protected” category as geographical indicators, unless there exists specific national legislation that actually specifies it to be a trademark. This could be the case, for instance, for an NGO such as the Red Cross or the International Olympic Committee, where the applicable international treaties may not explicitly state that they are trademarks, but one or more national statutes may do.

Cheers

Julie, Ariel & Mary

*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, October 10, 2019 at 17:46 *To: *"Tushnet, Rebecca" <rtushnet@law.harvard.edu> *Cc: *gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] Proposal re Q8.

*“I don't see how that's different conceptually from "the marks that the national GI Registry accepts,"* - It’s different because it’s the marks of the specific [treaty] organization, rather than a registry full of third party marks / GIs etc.

What compounds the problem is the Paris Convention requires that a state refuse to register designations that have been notified (deposited) pursuant to Article 6*ter* and to which the state has notified (transmitted) no objections.

eg. the UNHCR 89 serial 89000825 which effectively blocks everyone; even their own organizations’ trademark applications e.g. 77663317 for “UNHCR BLUE KEY” which was refused / had to be withdrawn.

On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in.

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 3:52 PM *To:* claudio di gangi <ipcdigangi@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Michael Graham (ELCA) < migraham@expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.

Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text.

Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes.

On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

Paul,

I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world.

Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU?

Thanks, Claudio

On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

‘specified in’ would be ok.Personally I wouldn't define trademark here.

On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark").

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 12:41 PM *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.

We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in”

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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

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> 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> 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> 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> 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> 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> 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> 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_usc...>

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

*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 <migraham@expediagroup.com>*

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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

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_______________________________________________ GNSO-RPM-WG mailing list 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_li...> _______________________________________________ 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_p...>) 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_t...>). 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.

Greg, it seems to me there is a disconnect between Q7 and Q8 In Q7 a proposal from a major stakeholder group is asking the community to clarify/extend RPM protections from ‘pure’ word marks to marks with some ‘non pure’ word mark elements, which of course may have in some instances been requested as part of a registration strategy to get around the problem of where registration of a ‘pure’ word mark would not initially be possible. Whereas here in Q8 the view being expressed is, others (in this case minority working group stakeholders) should have their ‘pure’ word marks excluded even though measures to protect them are specifically included* in a convention in force since 1884 with a 177 nation states as contracting parties and which the USPTO chooses to reflect the wishes of those signatories to the treaty through a comprehensive level of protection in the 89 serials. With an additional suggestion being that that any language which permits their inclusion may run the risk that somehow their other signs and marks with ‘non pure’ word mark elements may be inadvertently allowed in to the TMCH. Best regards, Paul *Paris Convention for the Protection of Industrial Property (1883) 6ter (1)(b) “…abbreviations, and names, of international intergovernmental organizations..” On Sun, Oct 13, 2019 at 3:37 AM Greg Shatan <gregshatanipc@gmail.com> wrote:

Adding a name or acronym to 6*ter* of the Paris Convention is not similar to registration of trademarks. 6*ter* creates no substantive legal right. 6*ter *does not create trademarks, even broadly defined. 6*ter *applies to "armorial bearings, flags, other emblems, abbreviations, and names of international intergovernmental organizations" and to "armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view." Not trademarks.

6*ter* does not provide an appropriate basis for entry into the Trademark Clearinghouse.

That the proposal excludes the unregistered marks of IGOs is a feature, not a bug.

I'll point up the thread to Mary Wong's email, which reports on similar points.

Best regards,

Greg

On Sat, Oct 12, 2019 at 5:42 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

...

The GAC have been very clear that they [rightly] wish IGOs to enjoy access to ICANN mandated RPMs. The registration of trademarks simply evidences the existence of marks of the underlying goods and services. 6ter of the Paris Convention evidences IGO marks in a similar way.

UDRP is very well drafted there is nothing in it that precludes a determination involving unregistered marks whereas the TMCH as a matter of process requires word marks to be evidenced prior to submission for use in the RPMs (registered, court validated etc.).

There seems to be degree of concern that there may be a [continuing] misunderstanding by the TMCH operators of what should and should not be included and that more precise language will be required for 3.2.3 and this as presently proposed would exclude the unregistered marks of IGOs.

I appreciate there are only a relatively small number of IGOs however some of them are very well known such as the UNHCR, NATO, Council of Europe, African Union, European Union, World Health Organization, World Trade Organization, United Nations etc.

With the above in mind Rebecca, would the following additional subsection be acceptable to your proposal?

3.2.3 (b)* Word marks of treaty organizations protected under 6ter of the Paris Convention and notified to a national trademark office

[*Again section numbering and ordering can be tidied later but the new subsection should be one that flows to 7.1 & 7.2 and the RPMs.]

On Fri, Oct 11, 2019 at 8:57 AM Paul Keating <paul@law.es> wrote:

...

Thank you Mary

However, to clarify, the treaty allows any member to list an acronym. There is no requirement that it be otherwise registered or treated as a trademark/service mark (even in the “sponsoring member state). It also allows members to object to any specified acronym.

The USPTO’s position is that such acronyms are merely common law claims which require proof or a formal registration as a trademark.

For these (and other) reasons the WG on this issue (of which I was a part) declined to grant them any special rights under the UDRP other than to the extent the holder could satisfy the requirements for a common law trademark.

I see no reason for GIs to be treated any differently.

And of course these same issues should preclude the holder from participating in the TMCH process.

Sent from my iPhone

On 10 Oct 2019, at 23:58, Mary Wong <mary.wong@icann.org> wrote:



Dear all,

I hope it’s appropriate for staff to comment here, as a relatively similar discussion took place in the IGO-INGO Curative Rights PDP. As with RPMs, the fundamental principle was that any domain name policy protections should reflect, and not expand, existing legal rights. The issue was the existence of substantive legal rights (if any) in the names, acronyms, signs and emblems of international organizations (both governmental and non-governmental), e.g. the Red Cross, other NGOs, agencies of the United Nations, other international organizations established by treaty, etc. The question was whether the sort of legal protections offered by Article 6ter of the Paris Convention for the Protection of Industrial Property are equivalent to, or confer, substantive legal rights (Article 6ter obligates member states to, in part, *“refuse or to invalidate the registration, and to prohibit by appropriate measures the use… either as trademarks or as elements of trademarks … emblems, abbreviations and names of international intergovernmental organizations”*).

Legal commentators have noted that this treaty provision does not itself create an industrial property right; rather, it creates an obligation for states to prevent third party registrations of the protected names, abbreviations and so on as trademarks. In addition, as the treaty is not self-executing, it does not confer a right of action in member states unless those states enact legislation that allow the protected organizations such a means of enforcement. Finally, it may also not be enough to rely on a notification procedure, since that may simply indicate the existence of a form of protection, and not necessarily a substantive right.

Therefore, and in line with what Rebecca has noted, a treaty provision that does not clearly indicate that a mark is a trademark could place it into a similar type of “protected” category as geographical indicators, unless there exists specific national legislation that actually specifies it to be a trademark. This could be the case, for instance, for an NGO such as the Red Cross or the International Olympic Committee, where the applicable international treaties may not explicitly state that they are trademarks, but one or more national statutes may do.

Cheers

Julie, Ariel & Mary

*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, October 10, 2019 at 17:46 *To: *"Tushnet, Rebecca" <rtushnet@law.harvard.edu> *Cc: *gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] Proposal re Q8.

*“I don't see how that's different conceptually from "the marks that the national GI Registry accepts,"* - It’s different because it’s the marks of the specific [treaty] organization, rather than a registry full of third party marks / GIs etc.

What compounds the problem is the Paris Convention requires that a state refuse to register designations that have been notified (deposited) pursuant to Article 6*ter* and to which the state has notified (transmitted) no objections.

eg. the UNHCR 89 serial 89000825 which effectively blocks everyone; even their own organizations’ trademark applications e.g. 77663317 for “UNHCR BLUE KEY” which was refused / had to be withdrawn.

On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in.

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 3:52 PM *To:* claudio di gangi <ipcdigangi@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Michael Graham (ELCA) <migraham@expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.

Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text.

Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes.

On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

Paul,

I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world.

Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU?

Thanks, Claudio

On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

‘specified in’ would be ok.Personally I wouldn't define trademark here.

On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark").

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 12:41 PM *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.

We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in”

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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

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> 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> 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> 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> 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> 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> 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> 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_usc...>

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

*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 <migraham@expediagroup.com>*

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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

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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.

Greg, Sorry I really should have been clearer on the source of the additional suggestion I used to reinforce the disconnect I see. It seems to me marks like UNHCR function as a source so function as a trademark would. The purpose of the 89 serials is to evidence such marks and prevent others from registering any trademarks containing those marks, and not in just a single class or small number of classes, resulting in a ‘comprehensive level of protection’. Whilst mechanically different it is not clear to me how this is so functionally different that it would be an ‘apples and oranges comparison’? Best regards, Paul. On Mon, Oct 14, 2019 at 11:05 PM Greg Shatan <gregshatanipc@gmail.com> wrote:

Paul,

I think the point is that 6ter only creates a “negative trademark right.” TMEP 1205.02 states if a 6ter “designation” is accepted by the USPTO, “it is entered into the USPTO records to assist USPTO examining attorneys” and “the designation Is assigned a serial number in the “89” series code (I.e., serial numbers beginning with the digits “89,” sometimes referred to as “non-registrations”).”

This is a non-registration of a non-trademark “designation” for the sole purpose of advising examiners of a negative right. Not “word marks” and not a “comprehensive level of protection.”

As for the “additional suggestion” you mention, it was not one I made, but I suppose it was useful in assembling your parallel construction of what is in reality an apples and oranges comparison.

In sum, there is a significant distinction between Q7 and Q8, not a disconnect.

Best regards,

Greg

On Mon, Oct 14, 2019 at 5:39 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

...

Greg, it seems to me there is a disconnect between Q7 and Q8

In Q7 a proposal from a major stakeholder group is asking the community to clarify/extend RPM protections from ‘pure’ word marks to marks with some ‘non pure’ word mark elements, which of course may have in some instances been requested as part of a registration strategy to get around the problem of where registration of a ‘pure’ word mark

would not initially be possible.

...

Whereas here in Q8 the view being expressed is, others (in this case minority working group stakeholders) should have their ‘pure’ word marks excluded even though measures to protect them are specifically included* in a convention in force since 1884 with a 177 nation states as contracting parties and which the USPTO chooses to reflect the wishes of those signatories to the treaty through a comprehensive level of protection in the 89 serials. With an additional suggestion being that that any language which permits their inclusion may run the risk that somehow their other signs and marks with ‘non pure’ word mark elements may be inadvertently allowed in to the TMCH.

Best regards,

Paul

*Paris Convention for the Protection of Industrial Property (1883) 6ter (1)(b) “…abbreviations, and names, of international intergovernmental organizations..”

On Sun, Oct 13, 2019 at 3:37 AM Greg Shatan <gregshatanipc@gmail.com> wrote:

...

Adding a name or acronym to 6*ter* of the Paris Convention is not similar to registration of trademarks. 6*ter* creates no substantive legal right. 6*ter *does not create trademarks, even broadly defined. 6*ter *applies to "armorial bearings, flags, other emblems, abbreviations, and names of international intergovernmental organizations" and to "armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view." Not trademarks.

6*ter* does not provide an appropriate basis for entry into the Trademark Clearinghouse.

That the proposal excludes the unregistered marks of IGOs is a feature, not a bug.

I'll point up the thread to Mary Wong's email, which reports on similar points.

Best regards,

Greg

On Sat, Oct 12, 2019 at 5:42 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

...

The GAC have been very clear that they [rightly] wish IGOs to enjoy access to ICANN mandated RPMs. The registration of trademarks simply evidences the existence of marks of the underlying goods and services. 6ter of the Paris Convention evidences IGO marks in a similar way.

UDRP is very well drafted there is nothing in it that precludes a determination involving unregistered marks whereas the TMCH as a matter of process requires word marks to be evidenced prior to submission for use in the RPMs (registered, court validated etc.).

There seems to be degree of concern that there may be a [continuing] misunderstanding by the TMCH operators of what should and should not be included and that more precise language will be required for 3.2.3 and this as presently proposed would exclude the unregistered marks of IGOs.

I appreciate there are only a relatively small number of IGOs however some of them are very well known such as the UNHCR, NATO, Council of Europe, African Union, European Union, World Health Organization, World Trade Organization, United Nations etc.

With the above in mind Rebecca, would the following additional subsection be acceptable to your proposal?

3.2.3 (b)* Word marks of treaty organizations protected under 6ter of the Paris Convention and notified to a national trademark office

[*Again section numbering and ordering can be tidied later but the new subsection should be one that flows to 7.1 & 7.2 and the RPMs.]

On Fri, Oct 11, 2019 at 8:57 AM Paul Keating <paul@law.es> wrote:

...

Thank you Mary

However, to clarify, the treaty allows any member to list an acronym. There is no requirement that it be otherwise registered or treated as a trademark/service mark (even in the “sponsoring member state). It also allows members to object to any specified acronym.

The USPTO’s position is that such acronyms are merely common law claims which require proof or a formal registration as a trademark.

For these (and other) reasons the WG on this issue (of which I was a part) declined to grant them any special rights under the UDRP other than to the extent the holder could satisfy the requirements for a common law trademark.

I see no reason for GIs to be treated any differently.

And of course these same issues should preclude the holder from participating in the TMCH process.

Sent from my iPhone

On 10 Oct 2019, at 23:58, Mary Wong <mary.wong@icann.org> wrote:



Dear all,

I hope it’s appropriate for staff to comment here, as a relatively similar discussion took place in the IGO-INGO Curative Rights PDP. As with RPMs, the fundamental principle was that any domain name policy protections should reflect, and not expand, existing legal rights. The issue was the existence of substantive legal rights (if any) in the names, acronyms, signs and emblems of international organizations (both governmental and non-governmental), e.g. the Red Cross, other NGOs, agencies of the United Nations, other international organizations established by treaty, etc. The question was whether the sort of legal protections offered by Article 6ter of the Paris Convention for the Protection of Industrial Property are equivalent to, or confer, substantive legal rights (Article 6ter obligates member states to, in part, *“refuse or to invalidate the registration, and to prohibit by appropriate measures the use… either as trademarks or as elements of trademarks … emblems, abbreviations and names of international intergovernmental organizations”*).

Legal commentators have noted that this treaty provision does not itself create an industrial property right; rather, it creates an obligation for states to prevent third party registrations of the protected names, abbreviations and so on as trademarks. In addition, as the treaty is not self-executing, it does not confer a right of action in member states unless those states enact legislation that allow the protected organizations such a means of enforcement. Finally, it may also not be enough to rely on a notification procedure, since that may simply indicate the existence of a form of protection, and not necessarily a substantive right.

Therefore, and in line with what Rebecca has noted, a treaty provision that does not clearly indicate that a mark is a trademark could place it into a similar type of “protected” category as geographical indicators, unless there exists specific national legislation that actually specifies it to be a trademark. This could be the case, for instance, for an NGO such as the Red Cross or the International Olympic Committee, where the applicable international treaties may not explicitly state that they are trademarks, but one or more national statutes may do.

Cheers

Julie, Ariel & Mary

*From: *GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Paul Tattersfield <gpmgroup@gmail.com> *Date: *Thursday, October 10, 2019 at 17:46 *To: *"Tushnet, Rebecca" <rtushnet@law.harvard.edu> *Cc: *gnso-rpm-wg <gnso-rpm-wg@icann.org> *Subject: *Re: [GNSO-RPM-WG] Proposal re Q8.

*“I don't see how that's different conceptually from "the marks that the national GI Registry accepts,"* - It’s different because it’s the marks of the specific [treaty] organization, rather than a registry full of third party marks / GIs etc.

What compounds the problem is the Paris Convention requires that a state refuse to register designations that have been notified (deposited) pursuant to Article 6*ter* and to which the state has notified (transmitted) no objections.

eg. the UNHCR 89 serial 89000825 which effectively blocks everyone; even their own organizations’ trademark applications e.g. 77663317 for “UNHCR BLUE KEY” which was refused / had to be withdrawn.

On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in.

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 3:52 PM *To:* claudio di gangi <ipcdigangi@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Michael Graham (ELCA) <migraham@expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org

...

*Subject:* Re: [GNSO-RPM-WG] Proposal re Q8.

Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text.

Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes.

On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi@gmail.com> wrote:

Paul,

I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world.

Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU?

Thanks, Claudio

On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com> wrote:

‘specified in’ would be ok.Personally I wouldn't define trademark here.

On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark").

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 12:41 PM *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.

We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in”

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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca < rtushnet@law.harvard.edu> wrote:

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> 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> 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> 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> 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> 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> 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> 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_usc...>

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> 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> *Sent:* Thursday, October 3, 2019 1:15 PM *To:* Michael Graham (ELCA) <migraham@expediagroup.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield < gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

*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 <migraham@expediagroup.com>*

*From:* GNSO-RPM-WG <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>; Paul Tattersfield < gpmgroup@gmail.com> *Cc:* gnso-rpm-wg <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> *Sent:* Tuesday, October 1, 2019 4:11 PM *To:* Paul Tattersfield <gpmgroup@gmail.com> *Cc:* Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg < 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> 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> 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

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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.

personally I do not believe that GIs (or IGOs) should be included as there is insufficient global adoption for such to be treated in the same level as registered trademarks. IF GIs are to be included then I agree with Rebecca on this one. At the very least, it be included the owner should be identified specifically in the statute AND any notification should state the nature of the claimed right and the basis for the claim. It should also state a disclaimer to the extent not all jurisdictions recognize the right as anything beyond a common law right. Sent from my iPhone

On 10 Oct 2019, at 23:59, Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote:

 But if there's no specification requirement, under your terms, then a statute that protects GIs approved by the national authority, which GIs are then notified to the TM registry pursuant to the statute--which appears to be a common model--should lead to those GIs being accepted into the TMCH as protected by statute. I understand your concern for IGOs but I don't understand how your language would preclude covering GIs. Your proposal doesn't, for example, require that the mark owner be specified in the statute (which I still find troubling, but would at least provide a basis for distinguishing the situations).

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 5:46 PM 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 don't see how that's different conceptually from "the marks that the national GI Registry accepts," - It’s different because it’s the marks of the specific [treaty] organization, rather than a registry full of third party marks / GIs etc.

What compounds the problem is the Paris Convention requires that a state refuse to register designations that have been notified (deposited) pursuant to Article 6ter and to which the state has notified (transmitted) no objections.

eg. the UNHCR 89 serial 89000825 which effectively blocks everyone; even their own organizations’ trademark applications e.g. 77663317 for “UNHCR BLUE KEY” which was refused / had to be withdrawn.

On Thu, Oct 10, 2019 at 9:20 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: But then the acronym is only "protected by" the treaty/statute in the same way that unregistered marks are "protected by" Lanham Act 43(a) in the US--I'd be willing to say that a statute that says "the United Nations Human Rights Commission and its acronym" specifies UNHRC, but not that "the marks of the United Nations Human Rights Commission" specifies what's to be protected. I don't see how that's different conceptually from "the marks that the national GI Registry accepts," which I think there is consensus should not count as protected by statute. Those GIs are, as far as I can tell, often sent to national TM registries so it seems to me that your proposal puts them right back in.

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 3:52 PM To: claudio di gangi <ipcdigangi@gmail.com> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; Michael Graham (ELCA) <migraham@expediagroup.com>; gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] Proposal re Q8.

Rebecca, The danger of posting on the fly during the WG call, sorry ‘specified in’ would have too limited scope, for example an organization’s acronym may not be actually spelt out in the body of the treaty text.

Claudio, The scope needs to be defined sufficiently precisely for it not to matter, because it is impossible to second guess future statutes.

On Thu, Oct 10, 2019 at 6:27 PM claudio di gangi <ipcdigangi@gmail.com> wrote: Paul,

I didn't catch/understand your earlier response on the uniformity of this approach by every trademark office in the world.

Have you confirmed whether every TMO is notified and keeps a separate record of the marks protected by statute/treaty under their national laws, in the same approach as the U.S. or EU?

Thanks, Claudio

On Thu, Oct 10, 2019 at 1:16 PM Paul Tattersfield <gpmgroup@gmail.com> wrote: ‘specified in’ would be ok.Personally I wouldn't define trademark here.

On Thu, Oct 10, 2019 at 6:04 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: I could get comfortable with "specified in" but "established" seems wiggly to me--how would you feel about "specified in" instead? Relatedly, would you propose to not define trademark? Given its use through the AGB, I'd still be in favor of a definition for greater certainty (understanding that we have a separate issue about the meaning of "word mark").

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 12:41 PM 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.

We need a way to include marks like UNHCR because they are established under their own specific treaty (or convention). What we don’t want is for the language to be too loosely drawn so it inadvertently protects GIs etc. simply because they are protected collectively under the Paris Convention or TRIPS etc. Hence the words “established in”

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 Thu, Oct 10, 2019 at 5:13 PM Tushnet, Rebecca <rtushnet@law.harvard.edu> wrote: 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> 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> 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> 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> 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> 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> 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> 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

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> 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> Sent: Thursday, October 3, 2019 1:15 PM To: Michael Graham (ELCA) <migraham@expediagroup.com> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; Paul Tattersfield <gpmgroup@gmail.com>; gnso-rpm-wg <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> 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.

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

From: GNSO-RPM-WG <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>; Paul Tattersfield <gpmgroup@gmail.com> Cc: gnso-rpm-wg <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> Sent: Tuesday, October 1, 2019 4:11 PM To: Paul Tattersfield <gpmgroup@gmail.com> Cc: Tushnet, Rebecca <rtushnet@law.harvard.edu>; gnso-rpm-wg <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> 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> 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

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