FW: [gnso-igo-ingo] Qualification Criteria - common ground?

["Shatan, Gregory S." <GShatan@xxxxxxxxxxxxx>]

I am deeply troubled by both Option A and “Option C” (to use Avri’s term for 
the disjunctive “or” version of Option A).   Unless we adopt broad meanings to 
both the first and second prongs of these option, either of these options will 
have the effect of eliminating virtually every INGO (other than the IOC and the 
RCRC) from our further consideration, and may have similar effects for IGOs as 
well.

This stems from simple facts.  IGOs are created by treaties.  INGOs are not.  
(One of the first definitions of "International NGO", from resolution 288 (X) 
of ECOSOC (the UN Social and Economic Council) in 1950, is "any international 
organization that is not founded by an international treaty" (emphasis added).) 
 Thus, most INGOs will fail the first prong (“protection of a name or an 
organization by virtue of an international treaty”), so long as the treaty 
needs to be specific to that INGO .

Of course, in rare circumstances, an INGO’s “name or organization” will be 
specifically protected by treaty, even though the organization was not created 
by treaty.  The RCRC names are protected by the Geneva Convention.  The IOC and 
the Olympic Rings (but not the Olympic names) are protected by the Nairobi 
Convention.  Thus, the IOC and RCRC will be satisfy this first prong.  However, 
the list may well stop here.   The only way I can think of for non-IOC/RCRC 
INGOs to satisfy the first prong is to take a broader view of “protection by an 
international treaty” and include every INGO whose name is protected as a 
trademark in a country that is a signatory to the Paris Convention.  Are we 
willing to adopt this interpretation?  If not, we have eliminated virtually 
every INGO, at least under Option A.

Under Option C, failing the first prong is not a death sentence.  But, if we 
were to adopt Jim’s proposal that “laws in multiple jurisdictions” should be 
limited to “sui generis laws” that explicitly protect specific organizations or 
names, the second prong would be a death sentence for most INGOs (again with 
the exception of the IOC/RCRC, along with other organizations that managed to 
get entity-specific laws (e.g., the United Way).  In order to avoid this 
result, we would have to take a broader view of “protection of a name or 
organization … under laws in multiple jurisdictions” and include trademark 
protections

Jim’s proposal might even have negative effects for IGOs.  Is the ratification 
of a treaty that created a particular IGO sufficient to be a “sui generis law”? 
 What about self-enacting treaties that don’t require a specific national law 
to be passed?  If these are not acceptable, then many if not most of the IGOs 
will be dead too. This cannot be the rights result.   (See Sam Paltridge’s 
discussion yesterday for more discussion of this aspect).

This Working Group was created in order to pursue a serious substantive 
analysis of whether there are additional protections that should be accorded to 
IGOs and INGOs.  Throwing virtually every INGO out of contention as a threshold 
matter cannot be consistent with that intent.

If we are going to include or eliminate organizations or groups of 
organizations from further consideration based on eligibility criteria, those 
criteria need to justifiable and objective.  They should not be arbitrary.  And 
they should bear a rational relationship to the issue of confusion based on 
names or strings.  As such, I question why the first prong says “name or 
organization”.  If the treaty creates or protects the organization, but does so 
without reference to creating or protecting the name of that organization, why 
is it relevant?  (I am assuming here that most if not all treaties that create 
an IGO create the name of the organization and call on member states to protect 
that name in some fashion.)

On that score, I have long been puzzled by why the Nairobi Convention has any 
relevance in this discussion, since it pointedly does not protect the Olympic 
nomenclature, only the rings.  Of course, if we disregard the Nairobi 
Convention, then the IOC too fails Option A and relies solely on national law 
to stay alive under Option C.  Thus, if we were to adopt Option A, but 
eliminate “or organization” from the first prong, the RCRC would be the last 
INGO standing.

I think part of the problem is that we have inherited criteria that were 
initially selected to distinguish the IOC and the RCRC from all other 
organizations (the “one-eyed, red-headed man with a limp” type of criteria), 
rather than to create a class of IGOs and INGOs worthy of protection based on 
an objective analysis.   As long as we are working from that basis, I think we 
will have serious issues trying to create appropriate filters for eligibility.

I’ll save my comments on Option B for another email.

Best regards,

Greg


Gregory S. Shatan
Partner
Reed Smith LLP
599 Lexington Avenue
New York, NY 10022
212.549.0275 (Phone)
917.816.6428 (Mobile)
212.521.5450 (Fax)
gshatan@xxxxxxxxxxxxx
www.reedsmith.com



From: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] On 
Behalf Of Jim Bikoff
Sent: Tuesday, February 12, 2013 5:54 PM
To: cgomes@xxxxxxxxxxxx
Cc: gnso-igo-ingo@xxxxxxxxx
Subject: [gnso-igo-ingo] Qualification Criteria - common ground?

Dear Chuck,

Thank you for your response.

It is well within the mandate of this group to define “laws in multiple 
jurisdictions.” To clarify, “laws in multiple jurisdictions” should refer only 
to special sui generis laws like those national laws that protect the IOC and 
Red Cross organizations.  As stated by the GAC and the ICANN Board paper on 
IOC/RCRC protections, very few, if any organizations enjoy this special, 
specific protection, which is different from ordinary trademark protection. 
(The Board paper is available here: 
http://www.icann.org/en/groups/board/documents/briefing-materials-unredacted-20jun11-en.
  The GAC paper can be found here: 
https://gacweb.icann.org/download/attachments/1540128/GAC+advice+on+IOC+and+Red+Cross+Sep.+2011.pdf?version=1&modificationDate=1317031625000)

The goal should be to show that a significant number of countries have 
acknowledged a problem and enacted protections.  In addition to international 
treaties, we believe that this can be shown by sui generis laws, enacted in 
multiple jurisdictions, providing special protection beyond ordinary trademark 
protection.

Under Option A, “Protection of a name or an organization by virtue of an 
international treaty and/or national laws in multiple jurisdictions”  is an 
appropriate criterion.

We hope this explanation clarifies why we believe this criterion should be 
phrased this way.

Best regards,

Jim

James L. Bikoff
Silverberg, Goldman & Bikoff, LLP
1101 30th Street, NW
Suite 120
Washington, DC 20007
Tel: 202-944-3303
Fax: 202-944-3306
jbikoff@xxxxxxxxx<mailto:jbikoff@xxxxxxxxx>



From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Gomes, Chuck
Sent: Monday, February 11, 2013 8:20 PM
To: Jim Bikoff; rickert@xxxxxxxxxxx<mailto:rickert@xxxxxxxxxxx>; 
gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: RE: [gnso-igo-ingo] Qualification Criteria - common ground?

Thanks Jim.  I am not sure that an ‘and/or’ wording is consistent with the GNSO 
PDP WG recommendations because it would mean that there in a case where there 
was no international treaty but laws in multiple jurisdictions would qualify 
for protections.   If we applied this approach to trademark protection, that 
would mean that trademarks should be protected if there are multiple 
jurisdictions that protect trademarks even though there is not an international 
treaty to do so.  The GNSO New gTLD  PDP WG was clear that any rights needed to 
be based in international law and not national laws.

Chuck

From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Jim Bikoff
Sent: Monday, February 11, 2013 6:43 PM
To: rickert@xxxxxxxxxxx<mailto:rickert@xxxxxxxxxxx>; 
gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: [gnso-igo-ingo] Qualification Criteria - common ground?

Dear Thomas and All:

We are in favor of Option A with the following revision:

        "Protection of a name or an organization by virtue of an international 
treaty AND/OR national laws in multiple jurisdictions."

Protection either through treaty or through  multiple national laws evinces 
multiple nations' recognition that the organizations are unique, and that 
protecting the terms most directly associated with them advances the global 
public interest.  There is no rational basis for requiring protection both 
through treaties and multiple national laws, as both effect the same end of 
multinational protection. Satisfying either factor should suffice to qualify 
one for protection. Therefore, Option A should be phrased in the disjunctive.

We look forward to discussing the matter further with the group.

Best regards,

Jim

James L. Bikoff
Silverberg, Goldman & Bikoff, LLP
1101 30th Street, NW
Suite 120
Washington, DC 20007
Tel: 202-944-3303
Fax: 202-944-3306
jbikoff@xxxxxxxxx<mailto:jbikoff@xxxxxxxxx>



-----Original Message-----
From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Thomas Rickert
Sent: Thursday, February 07, 2013 3:25 PM
To: gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: [gnso-igo-ingo] Qualification Criteria - common ground?


All,
as discussed during yesterday's call, I would like to sound out whether there 
is some common ground with respect to the qualification criteria regarding the 
following proposals developed during the call. These suggestions seemed to have 
some supporters each:

Option A:

Protection of a name or an organization by virtue of an international treaty 
AND protection in multiple jurisdictions.

Option B:

The existence of a name, acronym or designation by virtue of an international 
treaty AND the requirement of the organization to be mandated to work in the 
global public interest.
(Note: It was proposed that the global public interest can be shown by existing 
protection under multiple national laws).


I repeat my encouragement to continue our vivid exchange of thoughts on the 
mailing list. Please let the group know whether you like both or one or a 
variation of the above or none of the options.

This exercise should help us find out whether we can use one or both options as 
a starting point for developing a proposal supported by a considerable part of 
the group.

Thanks,
Thomas





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