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

[Phil Corwin <psc@xxxxxxxxxxx>]

Appreciate the feedback, J. Scott.

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 1:54 PM
To: mike@xxxxxxxxxxxxxx; Phil Corwin; bc-gnso@xxxxxxxxx
Subject: Re: [bc-gnso] Report on Geograhic Indicator Debate at Durban

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<mailto:jscottevans@xxxxxxxxx>

________________________________
From: "icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx>" 
<icann@xxxxxxxxxxxxxx<mailto:icann@xxxxxxxxxxxxxx>>
To: 'Phil Corwin' <psc@xxxxxxxxxxx<mailto:psc@xxxxxxxxxxx>>; 'J. Scott Evans' 
<jscottevans@xxxxxxxxx<mailto:jscottevans@xxxxxxxxx>>; 
bc-gnso@xxxxxxxxx<mailto: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<http://rodenbaugh.com/>

From: owner-bc-gnso@xxxxxxxxx<mailto: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<mailto: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<mailto: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<mailto:psc@xxxxxxxxxxx>>;
To: bc-gnso@xxxxxxxxx<mailto:bc-gnso@xxxxxxxxx> 
<bc-gnso@xxxxxxxxx<mailto: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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