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

[Thomas Rickert <rickert@xxxxxxxxxxx>]

Mary and Greg,
what would a set of qualifying criteria be that you could propose?

Thanks and talk to you tomorrow,
Thomas

Am 13.02.2013 um 20:24 schrieb 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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