[PC-NCSG] revised draft NCSG statement on staff's strawman proposal

Mon Jan 7 10:08:27 EET 2013

Yes - this is a great statement. Perhaps it would be valuable to include a bit on nominative use (see Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, et al. No. 07-55344 (9th Cir. July 8, 2010), Judge Kozinski gave a great analysis, I had blogged about it here: http://www.komaitis.org/1/post/2010/07/the-lessons-the-trademark-community-should-learn-from-judge-kozinskis-ruling-on-nominative-use.html). Also, on the issue of the GPML that is being sneaked in as blocking, I have written a bit on my book as to how it changes the face of trademark law - both in terms of territoriality as Mary suggests as well as on the basis of its philosophical foundations. 

Hope this helps.

KK

Jan 7, 2013 03:16:05 AM, Mary.Wong at law.unh.edu wrote:

Thanks Robin and Kathy for following up on the strawman proposal and
for the detailed response. I think it  's vitally important that NCSG submit a
strong comment/rebuttal on this, and am glad to support the draft.
>

>
I  'm not sure that I completely understand the 90 days notice = intent to
infringe/willfulness legal standard description on page 2. I agree that an
extended notice period increases the possibility that a registrant could be
accused of willful trademark infringement (i.e. he/she proceeded to register an
identically-matching domain notwithstanding actual notice that this would
infringe a registered trademark) but I don  't quite get how the change from a
60-day period during which a Claims Service will be live to a 90-day period
automatically converts things to a higher legal standard of willful
infringement. 
>

>
Are we saying that the longer the Claims Service period runs, the higher the
possibility that registrants will be exposed to the risk of accusations of
willful infringement should they proceed - on the basis that proceeding with an
exact match registration of a domain name for the same goods or services is
equivalent to infringing activity, possibly willful, since the Claims Notice is
the same thing as actual notice of a trademark registration? I  'm not sure it
comes across as clearly to those not familiar with trademark law, but maybe I  'm
just reading it wrongly.
>

>
Also - what do you think of emphasizing the territoriality concept, i.e.
trademark law is territorial and trademark infringement involves a nuanced and
potentially complex analysis, such that simply disallowing a domain name
registration not tied to a particular use or jurisdiction at the outset on the
basis that it matches a trademark registered somewhere amounts to additional
protections for trademark owners not necessarily justified by trademark law?
>
>Hope this is helpful,
>Mary
>
>
>Mary W S Wong
>Professor of Law
>Director, Franklin Pierce Center for IP
>Chair, Graduate IP Programs
>UNIVERSITY OF NEW HAMPSHIRE SCHOOL OF LAW
>Two White Street
>Concord, NH 03301
>USA
>Email: mary.wong at law.unh.edu
>Phone: 1-603-513-5143
>Webpage: http://www.law.unh.edu/marywong/index.php
>Selected writings available on the Social Science Research Network (SSRN) at: http://ssrn.com/author=437584  
>
>>>> Kathryn Kleiman  01/07/13 11:10 AM >>>
>

Great thanks to Robin for the excellent first draft ? and for all her work, energy and conviction in this Trademark Clearinghouse (TMCH) area. These are powerful
 comments ? tx Robin!

  ?

Kathy

  ?

From: pc-ncsg-bounces at ipjustice.org [mailto:pc-ncsg-bounces at ipjustice.org]
On Behalf Of Robin Gross
>
Sent: Sunday, January 06, 2013 5:11 PM
>
To: NCSG-Policy PC-NCSG at ipjustice.org>
>
Subject: [PC-NCSG] revised draft NCSG statement on staff  's strawman proposal

  ?

Dear All: 

  ?

Attached is the revised draft NCSG statement on staff  's strawman proposal.   ?  ?

  ?

Big thanks to Kathy for her editing of the first draft.   ?I  've removed the procedural concerns at the end of the previous draft and will submit them separately from me personally.

  ?

ICANN  's deadline for comments is 15 January.   ?I  'd like to submit NCSG  's comments early this week.   ?Please send any additional comments and suggestions about the attached draft at your earliest convenience.

  ?

Thank you,

Robin
>

>

>

  ?

  ?

IP JUSTICE

Robin Gross, Executive Director

1192 Haight Street, San Francisco, CA  ? 94117  ? USA

p: +1-415-553-6261   ?   ?f: +1-415-462-6451

w: 
http://www.ipjustice.org  ?   ?   ?e:  ?robin at ipjustice.org

  ?

  ?

>
>_______________________________________________
>PC-NCSG mailing list
>PC-NCSG at ipjustice.org
>http://mailman.ipjustice.org/listinfo/pc-ncsg
>