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

[<Mary.Wong@xxxxxxxxxxx>]

Greg has voiced my concerns far more eloquently than I could have
(which is one reason why I've not posted an answer that could come close
to a coherent one to the question!).  

It seems to me that what we are striving to get to is a minimum
standard to qualify for special protections (of whatever nature), and
that many of those that have been suggested already, e.g. treaties,
national laws, organizational mandates etc., are a form of proxy for the
vague concept that "an organization be international in scope and
operations, and its primary mission be of such public importance that
some form of special protection for its name and acronym can be
justified." 

If that is the case, then a set of qualifying criteria, phrased in the
alternative but that are not overly broad, could be developed that would
*not* lead to the result Greg has highlighted. 

Cheers 
Mary


Mary W S Wong
Professor of Law
Director, Franklin Pierce Center for IP
Chair, Graduate IP Programs
UNIVERSITY OF NEW HAMPSHIRE SCHOOL OF LAW
Two White Street
Concord, NH 03301
USA
Email: mary.wong@xxxxxxxxxxx
Phone: 1-603-513-5143
Webpage: http://www.law.unh.edu/marywong/index.php
Selected writings available on the Social Science Research Network
(SSRN) at: http://ssrn.com/author=437584  


>>> 


From:  
"Shatan, Gregory S." <GShatan@xxxxxxxxxxxxx> 

To: 
"gnso-igo-ingo@xxxxxxxxx" <gnso-igo-ingo@xxxxxxxxx> 

Date:  
2/13/2013 1:24 PM 

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


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 
   
  
   

From: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; 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] On Behalf Of Jim Bikoff
Sent: Monday, February 11, 2013 6:43 PM
To: rickert@xxxxxxxxxxx; 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 

  

  

  

-----Original Message----- 

From: 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 

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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