The call for the Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group is scheduled for Thursday, 27 April 2017 at 03:00 UTC for 90 minute duration.
(Wed)20:00 PDT, (Wed)23:00 EDT, 04:00 London 05:00 CET
For other times: http://tinyurl.com/l494sev
Agenda:
- Roll call (via Adobe Connect and phone bridge only); updates to Statements of Interest
- Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain & Michael Graham) – 5 minutes for each Sub Team update
- Discuss consolidated table of proposals received on TMCH Open Questions 7, 8 and 10 (see Notes below)
- Notice of deadline for further follow up questions to the Analysis Group
- Next steps/next meeting
Documents:
Remaining Open TMCH Charter Questions - 24 April 2017
Additional Proposals Received and Deferred
Apologies: Susan Payne, Laurie Anderson
Audio only: none
Follow up notes:
Action Items:
- Staff to prepare a glossary of relevant terms preparatory to a survey on whether, if and how the Working Group may distinguish between various types of Design Marks – survey to be reviewed by the co-chairs prior to circulating to the full Working Group. Refer to email from staff containing a glossary of terms related to Design Marks and Geographic Indications: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001814.html
- Staff to provide historical context on how category of marks protected by statutes/treaties came to be. Refer to email from staff containing a briefing on the historic evolution of the category of marks protected by statutes or treaty: http://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/001700.html
Notes:
- Report on progress and status updates from the co-chairs of the Sunrise and Claims Notice Sub Teams:
- Update from the Trademarks Claims Sub Team (https://community.icann.org/x/psrRAw):
- Sub Team making progress on bundling Charter questions, as well as what questions should be referred to other Sub Teams or full Working Group
- Sub Team identifying data that may be helpful in answering Charter questions from both internal and external sources
- Sub Team has until end of day to propose how/if Charter questions being considered need to be reworded or refined – objective is to make Charter questions more neutral/less suggestive of any specific answers
- Update from the Sunrise Registrations Sub Team (https://community.icann.org/x/msrRAw):
- From the AC Chat: I was on the Sunrise call with Lori. We had a good discussion there as well. Those questions have been substantially "bundled" and we're also suggesting language changes as I recall. (If I may be so bold as to speak up for that group).
- Both Sub Teams have made good progress on their tasks, and have additional meetings scheduled on Friday, 28 April to wrap up work on refining/bundling of Charter questions, as well as propose workplans for how and how long it will take full Working Group to address the Charter question
- Update from the Trademarks Claims Sub Team (https://community.icann.org/x/psrRAw):
Proposed recommendations for outstanding TMCH Charter questions (Remaining Open TMCH Charter Questions - 24 April 2017)
2. Proposals on Charter question 7 (How are design marks currently handled by the TMCH provider?):
- Proposal Submitted by Kathy Kleiman
- Recommendations designed to answer both Charter questions 7 (design marks) and 16 (balance of the TMCH)
- Working Group should review the answers from Deloitte on questions regarding design marks
- Recommendations meant to address Deloitte, counter to rules/recommendations, expanding on rules/recommendations of the STI on Design Marks adopted by the GNSO Council and ICANN Board to protect text marks, but not anything in a design or logo
- Amendments to STI recommendations occurred during iterations of the new gTLD Applicant Guidebook in response to community consultation
- Suggestion to clarify what specific categories of marks the Working Group is talking about in Charter Question 7 (e.g.: Design Marks called Figurative Marks in the EU)
- Is Deloitte exceeding the intent of the recommendations, or is it following instructions as per the final version of the new gTLD Applicant Guidebook?
- Proposal submitted by Greg Shatan:
- STI recommendations adopted by the GNSO Council in 2009 made reference to nationally or mutinationally registered Text Marks without further defining what that meant
- TMCH Guidelines do not distinguish between Design Marks with no textual elements, and other mark types such as Stylized Marks/Figurative Marks/Design Marks with textual elements
- Recommendations in proposal meant to modify TMCH Guidelines to permit protection of Stylized Marks (Marks with text + a design element), and exclude Marks from the TMCH where there is no disclaimer on protection of text component in its entirety
- TMCH may be over-inclusive, when accepting Marks in which text component is disclaimed in its entirety
- Instead of pointing out how the STI recommendations were implemented following adoption of the STI Final Report by the GNSO Council/ICANN Board, more productive for the Working Group to clarify how Deloitte handles Design Marks going forward
- The lack of distinction between Design/Stylized/Composite Marks is not helpful, and should be clarified – they should not be referred to, or dealt with collectively
- How should Design/Stylized Marks from countries where there are no disclaimers be handled?
- Continue discussion on proposal for this Charter question until next Working Group call, when members not present have had an opportunity to review the discussion held on this call
- ACTION ITEM: Staff to prepare a glossary of relevant terms preparatory to a survey on whether, if and how the Working Group may distinguish between various types of Design Marks – survey to be reviewed by the co-chairs prior to circulating to the full Working Group
- Survey should not suggest language that collectively refers to Text/Stylized/Composite Marks as Design Marks – existing applicable definitions for each type of Mark should be used
- Proposal Submitted by Kathy Kleiman
3. Proposals on Charter question 8 (How are geographical indications, protected designations of origin, and protected appellations of origin currently handled by the TMCH provider?)
- Proposal submitted by Paul McGrady:
- Geographic Indications (GIs) should not be in the TMCH, if they are not registered trademarks
- European perspective does not exclude GIs, and should be treated like other Marks in that context - discussion on this proposal should continue
- Working Group recommendations should not be restricted to a single jurisdiction, but should reflect the global nature of the DNS
- Deloitte's acceptance of GIs in the TMCH may fall under the category on the TMCH Guidelines concerning marks protected by statutes/treaties as a result of amendments to policies adopted following public comments submitted during community consultation
- Proposal submitted by Kathy Kleiman:
- Meaning of marks protected by statutes/treaties needs to be clarified - different interpretations
- Adopted recommendation was to place non-Trademarks in an ancillary database, not in the TMCH database
- Would it be helpful for the Working Group to agree on what a "Mark" means (something that denotes source or origin) - distinction from "Trademark"?
- From AC chat: trademarks are probably a specific type of mark, but not all marks are TMs (to the extent that marks designate source, for instance)
- Should distinctions be made on what marks prompt a Claims notice based on location of the registrant, possibly regarding GIs only?
- “Is there a basis for including GIs in the TMCH category of marks protected by statutes/treaties” is the question that needs answering, as opposed to trying to determine whether GIs are trademarks (caveat of GIs that are actually registered trademarks)?
- ACTION ITEM: Staff to provide historical context on how category of Marks protected by statutes/treaties came to be, and what it is meant to denote
- There are laws in different countries that assign protections to GIs as a form of Trademark, when they are registered as GIs – this might provide cause to include GIs in the TMCH
- Proposal submitted by Paul McGrady:
4. Notice of deadline for further follow up questions to the Analysis Group:
- To the extent that the Analysis Group can provide answers to follow-up questions based on the data/statement of work, they are happy to do so – more difficult to ask them to do more work that requires expansion of their statement of work, which may require a new contract with ICANN as well as allocation of a budget
- If the Working Group has further questions, these should be submitted before mid May, assuming that they fall within the existing scope of work
- Questions already asked during previous calls have already been sent to the Analysis Group, and answers are forthcoming
5. Next steps/next meeting:
- Next Working Group call is on 3 May at 16:00 UTC, but not the following week (10 May) due to conflict with GDD summit