[Discussion] [Public Comment] GNSO Review of All RPMs in All gTLDs Policy Development Process Phase 1 Final Recommendations

[Mitch Stoltz]

Dear Pedro,
    Thank you for highlighting the problems raised by the definition of “word mark.” I’m one of the authors of the Minority Statement that you referenced. The TMCH provider’s practice of stripping words out of marks that include other design elements, and including those words in the database, effectively gives trademark holders the power to control registrations of common words, and other terms that simply are not trademarks when separated from their design elements. The definition in the report effectively confers new trademark rights that national laws explicitly reject. That’s a serious problem, because the limitations on trademarks that contain common words are an important guarantor of free expression. Simply put, brands do not “own” common words, and ICANN RPM policies should not be written as though they do.

I encourage you to call out this problem prominently in the NCSG’s comments.
     Best,
        Mitch Stoltz
--
Mitch Stoltz
Senior Staff Attorney, EFF | 415-436-9333 x142
https://www.eff.org/join<https://www.eff.org/donate>   | https://act.eff.org/




From: NCSG-Discuss <NCSG-DISCUSS at LISTSERV.SYR.EDU> on behalf of Pedro de Perdigão Lana <pedrodeperdigaolana at GMAIL.COM>
Reply-To: Pedro de Perdigão Lana <pedrodeperdigaolana at GMAIL.COM>
Date: Monday, May 3, 2021 at 1:58 PM
To: <NCSG-DISCUSS at LISTSERV.SYR.EDU>
Subject: [Discussion] [Public Comment] GNSO Review of All RPMs in All gTLDs Policy Development Process Phase 1 Final Recommendations

Dear NCSG,

As suggested by Kathy, there is a relevant discussion about a certain topic in the GNSO Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process Phase 1 Final Recommendations for ICANN Board Consideration.

In Annex D of the Final Report<https://gnso.icann.org/sites/default/files/file/field-file-attach/rpm-phase-1-proposed-24nov20-en.pdf> (starting at p. 131), we can find the Working Group Members’ Minority Statement on TMCH Final Recommendation #1, jointly submitted by Jason Schaeffer, Jay Chapman, Michael Karanicolas, Mitch Stoltz, Nat Cohen, Rebecca Tushnet, and Zak Muscovitch.

They are criticizing the second point of the agreed policy principles and point 3.2.2 of the implementation guide (both state basically the same thing, defining  “word mark” as including "service marks, collective marks, certification marks, and word marks protected by statute or treaty") [1].
This apparently passed the vote without receiving any major attention, but the minority has a very strong argument when they say that this is a bad definition. It is circular[2] and much wider than the ones commonly used in other ICANN-related rules and guides [3], including those marks that - in many jurisdictions - are only considered distinctive by virtue of their conjunction with a figurative/graphical element [4]. In other words, some of these "word marks" are deeply generic words that were deemed distinct from the "commercial commons" because they were presented in a very unique or unusual graphic format.
I may be being overly concerned, but I truly concur with the Minority Statement when they warn us that such a broad definition can open a loophole even for IP rights abuse [5], such as reverse domain name hijacking.

Before developing this topic more on the public comments, since a few NCSG members were in favor of the definition as it was presented, I would just like to consult with the group to get more input about the issue.

Cheers,

[1] "TMCH Recommendation #1 fails to satisfactorily define “Word Marks,”169thereby enabling the continued misapprehension of the scope and applicability of the TMCH by the TMCH Validation Provider. The absence of a satisfactory definition of “Word Mark” will likely contribute to the continuation of the erroneous TMCH Validation Provider practices, which violate the fundamental promise that the TMCH would not expand rights but would rather only recognize existing rights. The problem is compounded by the unwarranted lack of transparency of the TMCH database.", p. 131
[2] Footnote n. 169
[3] See p. 133
[4] See the potentially harmful examples that already exist in Deloitte's database, pointed out in pp. 135-137, such as "Parents", "Dealhunter", "Music", "Cars", "A" and "Own Your Power"
[5] See p. 134

Pedro de Perdigão Lana
Lawyer, OAB/PR 90.600, Faria Santos Advocacia<https://cutt.ly/RfkTFrK>
LLM in Commercial Law at UCoimbra (PT), Researcher at GEDAI/UFPR<https://www.gedai.com.br/>
Board member of Youth SIG<https://youthsig.org/> (Internet Society) and Creative Commons Brazil<https://br.creativecommons.net/>
The information available in this email is restricted to the sender and the intended recipient(s).
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://lists.ncsg.is/pipermail/ncsg-discuss/attachments/20210503/e1ef9979/attachment.htm>