2019-09-25 Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP WG

Notes/ Action Items

Actions:

1. Staff will circulate the table of definitions collated in 2017 (DONE – Attached)
2. Question 7: Proponents (Kleiman/Muscovitch and Greg Shatan) have until 19:00 UTC on Tuesday, 01 October to provide any revisions to their proposals.
3. Question 8: Rebecca Tushnet, Claudio diGangi, Jason Schaeffer, Susan Payne (and any WG member interested in joining the small group) provide a final revised proposal by Tuesday, 01 October at 19:00 UTC.
4. Deferred Questions: WG members may proposal relating to any of the deferred questions by 19:00 UTC on Tuesday, 01 October for discussion on the call on 02 October.

TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13

TMCH Category 5: Access & Accessibility: Charter Question 15

TMCH Category 6: Balance: Charter Question 16

TMCH Category 1: Education: Charter Questions 1, 2, and 3

TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6

Notes:

1. Updates to Statements of Interest: No updates provided.

2. Conclude discussion of proposals relating to Open TMCH Charter Questions (see attached Summary document updated as of 18 September 2019):

a. Charter Question 7

Discussion:

-- On the question of design marks, it was agreed at the last meeting to put two proposals out for public comment: Kleiman/Muscovitch and Shatan.

-- What hasn’t been discussed is any countervailing definition of “design mark”.  May miss an elemental point in the discussion.

-- No legal definition of the term “design marks”.  For the Initial Report we can refer to the WG’s discussions around the various marks and the WG can develop language of what they mean by “design marks”.

-- Kleiman/Muscovitch proposal defines “word marks” so don’t need to define “design marks”.  Actually, it includes both.

-- Neither proposal should start with “We the WG” as neither has consensus, just putting them out for discussion.  The competing proposals need to be managed appropriately.

-- Each proposal should put forward their own definition of "word mark" as part of what gets included in the initial report for consideration.

-- Not just talking about “word marks”.   Should Greg Shatan explain in more detail the types of marks, or staff may have some examples?

-- There is a staff-prepared table from 2017 that tries to show the different examples of types of marks, and the WG did discuss visual examples drawn from USPTO practice.  This information could be included in an introduction.

-- One proposal defines “design marks” and the other doesn’t say that’s the definition.  Try to put out something that can be understood.

-- Important to have the context for the discussions.  The context that Phil mentioned will be quite important inasmuch as this topic is hard for us even to grapple with, much less the community that has not been engaged in these discussions

-- So, when the proposal is put out it has to be made absolutely clear that these are the assertions of  some WG members (ie as to improper acceptance of marks by Deloitte) and there is strong disagreement with that assertion by many others.  The staff assumption is that it will indeed be the case - i.e. proposals will clearly be noted as being from a WG member, or 2 WG members, etc.

-- Let staff prepare the language for the Initial Report, providing the context, essence of the proposals, level of support.

-- Greg Shatan: Brief addition to his proposal to compare and contrast with Kleiman/Muscovitch proposal.

-- Both proponents can provide any changes by Tuesday, 01 October at 19:00 UTC.

b. Charter Question 8

From Rebecca:

1. The TMCH 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 (as opposed to, for example, Lanham Act §43(a), which grants statutory protection to unregistered marks but doesn’t specify the marks covered).  What counts as a trademark should be determined by national law, not by the TMCH.
2. Specifically, GIs (that do not also fall under (1)) are not trademarks. 
3. GIs, like other things that are not trademarks, can be the subject of ancillary services.  These ancillary services are voluntary, not mandatory, in new gTLDs. Different providers should be able to compete to provide them if desired. There is no existing barrier to multiple registries using the same ancillary service, nor should we impose any barriers to that possibility.
4. GIs and other subject matter of ancillary services should not be subject to Sunrise or Notice under the existing RPMs.
5. Deloitte is (a) registering GIs under the theory that they are covered by "statute/treaty," and (b) indicating to TMCH potential registrants that "other IP" is eligible for Claims and Notice in the TMCH by grouping “other IP” with registrations, court-confirmed marks, and marks protected by statute or treaty in its public-facing materials.  Both of these practices should stop.
6. As long as the public-facing aspects of the RPMs operate properly, we should be indifferent to the “back end”—whether ancillary databases are in the “same database” or a “different database,” should Deloitte choose to operate an ancillary database.

Discussion:

-- Don’t need to call out what Deloitte is doing, but clarifying misunderstanding and to stop doing what they are doing.

-- Key points: GIs shouldn’t be registered pursuant to the statute or treaty, but if they are protected as trademarks.

-- Other IP shouldn’t get Sunrise and TM Claims.

-- Need an amendment to the AGB since Deloitte’s interpretation needs to be corrected.

-- Shouldn’t expand/make mandatory Deloitte providing ancillary databases.

-- Don’t pick out GIs for ancillary services.  Don’t need to say it, or if we do, then don’t address how GIs would be protected.  Anything can go into an ancillary database.  Could say things that are not trademarks can be the subject of ancillary services.

-- Include an intro on ancillary services. That may also be in the AGB enough that if we are proposing language changes it can be worked in.

-- If a registry has multiple new gTLDs and they want to connect to an ancillary database, we shouldn’t put up a barrier.

-- GIs are a problem; they are not trademarks.  GIs, unless they are trademarks, should not get claims notice or Sunrise.

ACTION: Rebecca Tushnet, Claudio diGangi, Jason Schaeffer, Susan Payne (and any WG member interested in joining the small group) provide a final revised proposal by Tuesday, 01 October at 19:00 UTC.

3. Discussion of Deferred Questions:

TMCH Category 4: Costs & Other Fundamental Features: Charter Questions 12 & 13

TMCH Category 5: Access & Accessibility: Charter Question 15

TMCH Category 6: Balance: Charter Question 16

TMCH Category 1: Education: Charter Questions 1, 2, and 3

TMCH Category 2: Verification & Updating of TMCH Database: Charter Questions 4, 5, and 6

ACTION: WG members may proposal relating to any of the deferred questions by 19:00 UTC on Tuesday, 01 October for discussion on the call on 02 October.