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Nathalie Peregrine's Personal Meeting Room
Rebecca Tushnet
30:14
I'm not on audio only but I am 6759
Maxim Alzoba
30:21
Hello all
Martin Silva
30:27
Can someone post the link herE?
Martin Silva
30:30
thnks!
Ariel Liang
31:34
Chronological listing: https://docs.google.com/document/d/1jRYPkK-S3TKA9HQIhN-wsn9M8cVg3S5J/edit
Ariel Liang
31:51
STI report: https://gnso.icann.org/sites/default/files/filefield_8000/sti-wt-recommendations-11dec09-en.pdf
Martin Silva
32:55
Thnks!!
Ariel Liang
33:01
np
Philip Corwin
33:51
Hello all
Mary Wong
33:59
Welcome, Phil.
Mary Wong
36:31
All the various AGB iterations were posted as links on the Working Group wiki in 2017.
Lori Schulman
41:57
I found the final report on the recommendations. Looking for final report that Board adoptd.
Lori Schulman
42:53
I know it's embedded in AGB but is there a separate posting for just the STI final recommendations
Mary Wong
44:44
@Lori, here’s the link to the STI final report, including the minority statements that were filed: https://gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf
Susan Payne
47:20
well I think the Policy was the 2007 Policy. Then there was a lot of debate about what the subsequent work was including the IRT, STI and the AGB- policy or implementation
Philip Corwin
47:36
STI is not policy as it was not from a PDP. Both STI and sbsequent AGB are implementation details of a general policy to protect trademarks -- in my view
Rebecca Tushnet
49:38
Wait, are you saying it's not binding policy if it's not applicable to all gTLDs?
Susan Payne
49:57
@Phil, agree,and the STI recommendations from Dec 2009 are not the final word because staff were directed to put them out for public comment "prior to finalisation of the model"
Brian Beckham
50:52
@Rebecca - it is not becaues of their relation to all gTLDs as such, but because of the ICANN Registry Agreement definition of "Consensus Policy"
Rebecca Tushnet
51:28
Right, but "binding" is not equivalent to "consensus" unless we are doing nothing here
Rebecca Tushnet
51:55
*Something* is the official binding policy of ICANN w/r/t the TMCH etc. even though it is not Consensus Policy
Mary Wong
52:19
@Rebecca, staff can provide information on that.
Martin Silva
54:27
so it was a glorified response letter rather than consensus policy
Martin Silva
54:39
It was not binding at any level?
Unknown Speaker
00:54:41 Lori Schulman:https://gnso.icann.org/sites/default/files/filefield_8000/sti-wt-recommendations-11dec09-en.pdf
Lori Schulman
55:22
Final recommenations of STI link attached. Not sure what wording was changed when incorporated into AGB. We would have to look.
Rebecca Tushnet
55:56
That's a clear articulation of the view, but not of the reasons for the view--I did not think Staff got to decide policies, but perhaps I have misunderstood.
Martin Silva
56:03
it’s definitely very interesting
Mary Wong
56:45
@Rebecca, the final form of all the 2012 RPMs were decided with community consultation, including via the various iterations of the Applicant Guidebook.
Martin Silva
57:22
@lori, I noticed they changed some wergild on design marks and like STI said “text” strings and Guide book said “word” strings. Something very revenant in trademark lexic
Mary Wong
57:36
You are correct that ICANN staff does not decide on what is binding policy, or any provisions or processes that bind our Contracted Parties.
Lori Schulman
59:15
@Mary Wong - was there a "final" STI recommendation that exactly mirrors what ended up in the AGB or do we have to look to the AGB doc. Just trying to minimize the paper given the size of the AGB.
Mary Wong
01:00:11
@Lori, staff will have to double check - given that following the Board’s direction to ICANN staff to develop a proposed final model based on the STI recs, there were a few iterations of the AGB.
Terri Agnew
01:00:24
Reminder to mute when not speaking
Ariel Liang
01:04:19
Link to STI report: https://gnso.icann.org/sites/default/files/filefield_8000/sti-wt-recommendations-11dec09-en.pdf
Martin Silva
01:08:46
For me it is clear we cannot give protection to design marks, regardless if they have text or not, because the LAW does not protect the text string of a design mark unless it says so, so TMCH cannot “read” the design to interpretaste
Rebecca Tushnet
01:09:26
You can't represent designs in the TMCH, colors or font or other limitations
Michael R. Graham
01:09:29
@Rebecca -- the STI statement is that the database should not be REQUIRED to include non "text mark" trademarks -- it does not PROHIBIT their inclusion.
Rebecca Tushnet
01:09:46
They were under a mandate (as we are) not to expand TM rights
Michael R. Graham
01:11:00
@Rebecca -- But does not prohibiting registration of the TEXT portion of Design + Text or Stylized Text trademarks contract TM rights?
Greg Shatan
01:11:24
The text in a stylized mark is protected - rights are not being expanded here.
Martin Silva
01:11:33
only if it says so
Martin Silva
01:11:46
You can have text, text+desing or desing
Martin Silva
01:12:03
the problem is when delimit “reads“ simple design and gives text protection
Petter Rindforth
01:12:05
Remember that not all patent offices around the world use clear disclaimer notes
Martin Silva
01:12:51
In any case, if the text as a separate entity of the design, is not protected, then the string should not be protected, because in that case, anyone in the country could use the same string but in a different desing
Cyntia King
01:14:48
Agree w/ @MichaelGraham that design marks may be allowed, but not required. Depending on the TLD this could be a very important allowace. For example, a potential .VERIFIED registry, etc.
Greg Shatan
01:15:32
Martin, when would this be the case? In the US, this would not be the case, absent a disclaimer.
Mary Wong
01:17:09
@Brian, correct - Deloitte currently offers a few Ancillary Services that have been approved by ICANN Org (in accordance with the contract and as permitted by the scope of the AGB).
Martin Silva
01:17:17
Exactly, there are different mechanisms, in continental law we have separate categories, text, design and mix. But my point it, Delloite cannot create a protection the law doesn’t give.
Martin Silva
01:17:27
or the TMCH, deleite or whoever handles it
Susan Payne
01:19:32
@Martin, except it's not really a protection, it's an option to buy a name in a first wave, and an after the event notification of registration. The proposal for a Global Protected Marks List (ie a block) which would have been a protection, were binned by the STI
Greg Shatan
01:19:33
I don’t see any new protections being created when a stylized or composite mark is in the TMCH
Cyntia King
01:19:49
@Mary So we create a definition?
Petter Rindforth
01:20:18
Looking forward to the .fig TLD to solve this problem ;-)
Mary Wong
01:20:19
@Cyntia, more in the way of a clear understanding of what we mean by the different types of “text marks".
Martin Silva
01:20:53
@susan, we give that privilege because it has a legal comercial protection
Cyntia King
01:21:04
@Mary I like it.
Martin Silva
01:21:06
@Peter jajajaj
Mary Wong
01:21:08
e.g. “text-only” (words, letters, numerals); “stylized text”; “text plus design/graphical/visual element”.
Griffin Barnett
01:21:35
Any definition should be broad, basically to cover anything that could be represented technically in a domain name, because the test is confusing similarity/bad faith
Martin Silva
01:21:48
For me the definition is, as long as the law is protecting the string of text in its use in commerce.
Martin Silva
01:22:10
there are cases were a design with text does not protect the text string
Mary Wong
01:22:58
@Martin, so perhaps for those “text plus visual/graphical/design element” marks, it should be matched with the extent to which the particular jurisdiction being relied on to show the TM registration protects the textual element of that composite mark.
Cyntia King
01:24:45
Quick point that the purpose of the policy is to help users. It seems that more info is generally better than less info.
Martin Silva
01:26:34
Exactly, and who ever operate the TMCH is there to do that compliance
Mary Wong
01:29:40
Apologies, I have to leave for another call - but you are in excellent staff hands with Julie and Ariel anyway!
Susan Payne
01:39:59
I thnk it'svery clear that the STI is not the status quo. When council accepted that report they directed a public comment before finalising the model
Maxim Alzoba
01:40:12
sorry, have to drop the call
Susan Payne
01:40:14
and there was endlesspublic comment which shaped the SQ
Lori Schulman
01:40:50
Hi, I think that your presentation was excellent Brian. Thank you.
Lori Schulman
01:41:00
You definitely carried the laboring oar today.
Marie Pattullo
01:41:09
+1 Lori!
Griffin Barnett
01:41:10
Thanks Brian, appreciate all the background here; thanks all, until next time
Susan Payne
01:41:10
+1 Lori
Cyntia King
01:41:20
Thnaks Brian & all!
Lori Schulman
01:41:23
ciao
Terri Agnew
01:41:23
Next call: Review of all Rights Protection Mechanisms (RPMs) in all gTLDS PDP WG call scheduled for Wednesday, 21 August 2019 at 17:00 UTC for 90 minutes
Philip Corwin
01:41:24
Bye all