Re: [bc-gnso] Report on Geograhic Indicator Debate at Durban

["J. Scott Evans" <jscottevans@xxxxxxxxx>]

Phil:

In addition to the point made by Mike, marks that have a trademark reputation 
prior to the advent of something new generally can claim (and do) trademark 
rights in areas where trademark law would not generally afford protection.  For 
example, Playboy sought to obtain a trademark registration in the US covering 
jewelry for a charm designed in the shape of its world-famous bunny head logo.  
The USPTO denied the registration claiming that the charm had no source 
identifying significance, but was merely ornamental as applied to jewelry.  
This determination was overturned on appeal.  The final determination was that 
Playboy had substantial goodwill for the bunny head logo for publishing  and 
entertainment services such that the recognizable goodwill and source 
identifying significance of the charm was there and was protectable.  What I am 
saying about the .amazon, .spa, .date objections is that if GAC members want to 
object to the .amazon or other
 geographic terminology contained in a gTLD application under the Legal 
Objection process, let them do so.  They don't want to do so, because they will 
lose.  I am very concerned about the GAC becoming a legislature that grant 
rights/remedies that are unavailable under national and international law.  The 
role of the GAC, as I stated at the public forum in Durban, is to advise the 
ICANN board on the rights, laws, treaties etc that exist and help guide the 
board to remain in compliance:  not create new rights unrecognized by the legal 
schemes in national and international law.

J. Scott
 
j. scott evans -  head of global brand, domains & copyright - Yahoo! Inc. - 
408.349.1385 - jscottevans@xxxxxxxxx




________________________________
 From: "icann@xxxxxxxxxxxxxx" <icann@xxxxxxxxxxxxxx>
To: 'Phil Corwin' <psc@xxxxxxxxxxx>; 'J. Scott Evans' <jscottevans@xxxxxxxxx>; 
bc-gnso@xxxxxxxxx 
Sent: Thursday, August 1, 2013 10:41 AM
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban
 


I agree this is an issue the BC should address, as it is another bad precedent 
of “GAC Rule”.  
 
Phil, you state the US legal position re TLD strings as trademarks, but outside 
the US, at OHIM, in Denmark and quite a few other countries, trademark 
authorities have granted trademark registration to TLD strings, covering domain 
registry services and a wide variety of ancillary or additional services.
 
Mike Rodenbaugh
RODENBAUGH LAW
Tel/Fax: +1.415.738.8087
http://rodenbaugh.com
 
From:owner-bc-gnso@xxxxxxxxx [mailto:owner-bc-gnso@xxxxxxxxx] On Behalf Of Phil 
Corwin
Sent: Thursday, August 1, 2013 10:10 AM
To: J. Scott Evans; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban
 
J. Scott:
 
Without taking any position at this time as to whether the BC should weigh in 
on this issue or what our position should be, I want to raise a point of 
information –
 
As I understand it, your concern is that the GAC has created a regional right 
in two geographic indicators which does not exist at law and that this is 
trumping a trademark right registered in multiple nations, including those 
raising objections . Putting aside the fact that the GAC can object for any 
reason without citing a legal basis (although the basis or lack thereof can be 
taken into account by the ICANN Board when considering whether to adopt the GAC 
advice), what is the strength of the purported trademark rights at the top 
level of the DNS when, up to now, trademark authorities and courts have held 
the position that no trademark rights can exist in a TLD because it cannot 
(examples: .com, .uk) serve as a source identifier? I concede that this view 
could change for at least some TLDs (e.g., .brands) as the new ones roll out, 
but that is the state of the law at this time as I understand it.
 
Thanks for any light you can shed on this question.
 
Regards,
Philip
 
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/cell
 
Twitter: @VlawDC
 
"Luck is the residue of design" -- Branch Rickey
 
From:J. Scott Evans [mailto:jscottevans@xxxxxxxxx] 
Sent: Thursday, August 01, 2013 12:10 PM
To: Phil Corwin; bc-gnso@xxxxxxxxx
Subject: RE: [bc-gnso] Report on Geograhic Indicator Debate at Durban
 
I am telling you all this is a dangerous precedent. I hereby request that the 
BC take up this issue and develop a formal opinion in this specific issue and 
the broader issue of the GAC's role. 

I am happy to lead this effort.

J. Scott

Sent from Yahoo! Mail for iPhone 
 

________________________________

From: Phil Corwin <psc@xxxxxxxxxxx>; 
To: bc-gnso@xxxxxxxxx <bc-gnso@xxxxxxxxx>; 
Subject: [bc-gnso] Report on Geograhic Indicator Debate at Durban 
Sent: Thu, Aug 1, 2013 3:58:37 PM 
 
http://www.ip-watch.org/2013/08/01/governments-disagree-on-geographical-indication-protection-at-tld-level/?utm_source=post&utm_medium=email&utm_campaign=alerts
 
 
Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/cell
 
Twitter: @VlawDC
 
"Luck is the residue of design" -- Branch Rickey
  

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