RE: [gnso-igo-ingo] Qualification Criteria

[<Mary.Wong@xxxxxxxxxxx>]

I agree with Greg, whose comments here are similar to the points I made
on the call last week, viz. the nature and extent of the protective
measures to be recommended ultimately are relevant to determining who
and what qualifies.  

(I'll add that many members of NCUC are strongly opposed to anything
resembling a pre-emptive blocking of names, or a reserved names list. It
may be - though we have not yet reached that point - that some will find
the concept of RPMs, including a TMCH-like mechanism, more acceptable as
(1) not being an automatic protection trigger, requiring as it does some
application or other voluntary act on the part of the institution
seeking protection; and (2) provided that sufficient safeguards are in
place to ensure adequate protection of innocent registrants' free
expression rights and fair use flexibilities.) 

As to Chuck's question, I'm one of those who have championed the
"public service" mandate, but I'll be the first to acknowledge that this
is not only subjective but likely impossible for this WG - or even ICANN
- to define. There is no universally accepted definition even in public
international law for "the public interest" and personally I think it
unwise for us to try to come up with one.  

That said, I can't conceive of any other possible justifiable policy
ground upon which special protections ought to be given to any
organization. Perhaps the only alternative other than no such
protections is to allow organizations which can document their
international scope and public interest/service claim to have access to
limited RPMs tailored to identical matches of their names and acronyms,
with, as mentioned earlier, certain safeguards built into the process. 

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: 
"'Claudia  MACMASTER TAMARIT'" <MACMASTER@xxxxxxx>, "Gomes, Chuck"
<cgomes@xxxxxxxxxxxx>, Thomas Rickert <rickert@xxxxxxxxxxx>,
"gnso-igo-ingo@xxxxxxxxx" <gnso-igo-ingo@xxxxxxxxx> 

Date:  
3/6/2013 11:30 AM 

Subject:  
RE: [gnso-igo-ingo] Qualification Criteria 


I agree with Claudia that the proposed requirement that an organization
receive “multilateral or multinational protection beyond ordinary
trademark laws” be rejected. 
   
I disagree for the most part with “extraordinary public service” as a
criterion or even as an inspiration for objective criteria, although
this gets to the “three dimensional” nature of the discussion.  In other
words, if we are talking about extraordinary remedies and prophylactic
measures, I am more inclined to support a higher bar.  However, if we
are merely talking about making sure that IGOs/INGOs have full access to
existing RPMs (or RPMs that track to existing RPMs), then  I think that
“ordinary” reach and public service (i.e., being an IGO or INGO)
should be sufficient; if we still need some threshold to distinguish
INGOs from non-international NGOs, that threshold should be relatively
low (and objective and fair (not tailored)). 
   
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 Claudia MACMASTER
TAMARIT
Sent: Wednesday, March 06, 2013 8:40 AM
To: Gomes, Chuck; Thomas Rickert; gnso-igo-ingo@xxxxxxxxx
Subject: RE: [gnso-igo-ingo] Qualification Criteria 

  
Chuck and all, 
   
It’s not a broken record at all.  I think it’s at the very heart of the
matter.  We’ve suggested criteria to try to get at that idea.  And we’ve
seen evolution as the weeks go by and we struggle for some direction and
agreement. 
   
We might look to several benchmarks of international and national
recognition of extraordinary reach and public service from an
international organization.  We have mentioned including room for
evidencing it with organizational mandates, formal membership by
governmental or public institutions and corresponding financing, etc. 
And we’ve looked at the possibility of recognizing established lists
where these kinds of criteria might have already been shown. 
   
In any regard, I support your conclusion (which I pray I don’t
mischaracterize) that any criteria should be reviewed in light of the
public interest. 
   
Sincerely, 
Claudia 
   

From: Gomes, Chuck [mailto:cgomes@xxxxxxxxxxxx]
Sent: 2013-03-06 14:23
To: Claudia MACMASTER TAMARIT; Thomas Rickert; gnso-igo-ingo@xxxxxxxxx
Subject: RE: [gnso-igo-ingo] Qualification Criteria 

  
Claudia, 
   
I apologise for what must sound like a broken record for me but I have
some questions for you or others: 
1.       How do we define ‘extraordinary public service’? 
2.       How do we measure ‘extraordinary public service’? 
3.       Who would evaluate whether or not ‘extraordinary public
service’ applies? 
   
Whatever criteria we ultimately agree on, each of these questions will
need to be answered by this WG. 
   
Chuck 
   

From:owner-gnso-igo-ingo@xxxxxxxxx
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Claudia MACMASTER
TAMARIT
Sent: Wednesday, March 06, 2013 5:46 AM
To: Thomas Rickert; gnso-igo-ingo@xxxxxxxxx
Subject: RE: [gnso-igo-ingo] Qualification Criteria 

  
Dear colleagues, 
   
As a very quick but strong objection, please note that the below added
requirement that an organization receive “multilateral or multinational
protection beyond ordinary trademark laws” is not only unsupported and
ambiguously worded but is exceedingly discriminatory without any
justification.  We therefore strongly object to its inclusion in any
final recommendation. 
   
This biased criteria could unjustifiably exclude established
international non-profit organizations with (special national legislated
recognition of its) broad geographic scope and exceptional international
service simply because they can point to “only” multinational trademark
protection of its name without any regard for the public interest. 
   
The Unredacted version of the Board Workshop Paper from 28 August 2012
(which might not be binding but is certainly informative) stated that
criteria “must be tailored so the reservation is limited to a few with
extraordinary reach and public service.”  Short of where the law
requires it, shouldn’t special protection be tailored to get at that
kind of an idea – extraordinary reach and public service?  Criteria
surely cannot be shaped to simply shut the door on other established
non-profit INGOs with extraordinary public service simply because they
rely different legal protections than the IOC. 
   
The Internet spans national borders (wherein legislation may often
require a showing of abuse) – granting special protection must clearly
be hinged on the public interest. 
   
Sincerely, 
Claudia MacMaster Tamarit 
(ISO) International Organization for Standardization 
   

From:owner-gnso-igo-ingo@xxxxxxxxx
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Thomas Rickert
Sent: 2013-03-01 20:29
To: gnso-igo-ingo@xxxxxxxxx
Subject: [gnso-igo-ingo] Qualification Criteria 

  

All, 

we have discussed the question of qualification criteria (again) during
our last call, as you will recall.  

  

What we have on the table at the moment are the two proposals below.  

  

Do you think we can merge them or come up with a new set of criteria? 


  

Following the last call, let me also remind you that these criteria are
the first hurdle to be taken qualify for the protections. # 

  

We discussed that there might be additional criteria (admission
criteria) for the protection mechanism in question.  

  

I guess Alan was the first to make the point during the call. Can I ask
all of you (and Alan in particular :-)) to think of whether and what
additional criteria you would like to set up as a second hurdle for
admission to the protections? 

  

Thanks, 

Thomas 

  

Here come the two sets of qualification criteria: 

  

1. What I amalgamated from Mary's proposal and our previous
discussions: 

  

  

Organizations that serve the global public interest, that are
international in scope and operations, and whose primary mission is of
such public importance that some form of special protection for its name
and acronym can be justified 

  

Meeting two of the following criteria is deemed to be sufficient
evidence of the above requirements for an organization to be eligible
for protections. The protection encompasses the name and the acronym of
the respective organization as well as designations that - as the case
may be - are explicitly mentioned in a treaty as a protected
designation.    

  

- Protection by treaty   

- Protection in multiple national jurisdictions (either by virtue of a
specific law or treaty protection that is enforceable in a multiple
jurisdictions without the requirement of a specific enactment  

- Mission serving the global public interest 

- inclusion in the Ecosoc list  

  

1. What Mary/Jim have recently submitted: 

  

“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 [must] be 

  

· international in scope and operations, and 

  

· its primary mission be of such public importance 

  

· that it receives multilateral or multinational protection beyond
ordinary trademark laws, and 

  

· that some form of special protection for its name and acronym can be
justified." 
  
  

  


  
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