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Nathalie Peregrine's Personal Meeting Room
Lori Schulman
33:37
Hello
Andrea Glandon
35:11
I don’t see Brian online yet
Amr Elsadr
35:58
Hi all. Haven’t been on a call with this WG for a couple of years. Hope you’re all well.
Kathy Kleiman
36:25
Welcome Amr!
Martin Silva
36:40
Hi all
Ariel Liang
39:02
Open TMCH Charter Questions doc: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit
julie.hedlund
41:54
Defer to Mary
Michael
42:14
Perhaps each of the proponents could draft a 1/2 or so just summarizing their argument for their position being preferable.
Mary Wong
45:12
@Rebecca, we were not specifically commenting on Kathy’s and Zak’s proposal, but referring to the fact that the Charter question which these proposals attempt to address does use the term “design mark” and the WG did have certain doubts about whether that term includes stylized text marks, or whether those are considered “word marks”.
Brian Beckham
45:50
Fully agree with Greg on "we the WG" starting points
Griffin Barnett
46:07
It seems to me that each proposal should put forward their own definition of "word mark" as part of what gets included in the initial report for consideration
Griffin Barnett
47:02
Greg's proposal, as he noted, sort of implicitly gets to that definition, but perhaps it can be made more explicit, so it is more directly comparable to the Kleiman/Muscovitch proposal
Kathy Kleiman
47:25
@Julie: it might be useful to put the links to the proposals here in chat.
John McElwaine
48:02
I don't think that Greg's proposal needs any further definition.
Griffin Barnett
48:22
I like Susan's idea of setting out visual examples of the various forms
Griffin Barnett
48:30
Might be helpful
Mary Wong
48:32
There is a staff-prepared table from 2017 that tries to show the different examples of types of marks, and the WG did discuss visual examples drawn from USPTO practice.
julie.hedlund
48:39
@Kathy: They are here and the link sent above: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit
Brian Beckham
49:16
Thanks Mary - that might be a useful addition to this discussion.
Kathy Kleiman
51:22
Good reminder!
Rebecca Tushnet
52:48
That's not the proposal, John--it's purely disclaimer based which doesn't require an affirmation that there definitely are rights in the extracted text
Griffin Barnett
52:57
John's point is well taken... not sure further revision of either proposal is needed, although I agree with Phil's/Staff's earlier point about introducing the proposals with appropriate context
David McAuley (Verisign)
53:34
The context that Phil mentioned will be quite important inasmuch as this topic is hard for us even to grapple with, much less the community that has not been engaged in these discussions
julie.hedlund
56:38
BTW - as an action item last week staff circulated the document “List of Terms and Descriptions Relating to Design Marks and GIs.” We’ll send it again.
Ariel Liang
57:03
Please scroll by clicking the link here: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit
julie.hedlund
57:25
Again: Here is a link to the document we are looking at so you can scroll: https://docs.google.com/document/d/18jtYYKQfZd1vVM7ePS6PlxVDqgBZEsrY/edit
Paul Tattersfield
58:40
I think they are allowed to accept them just not use them in the RPMs
Paul Tattersfield
58:53
i.e. they should be in 3.2.4
Scott Austin
59:28
What's wrong with adding an affirmation? Tthat would at least give Deloitte some basis that the identified rightsholder is willing identify itself and provide a contact to stand behind the text if challenged.
David McAuley (Verisign)
59:37
Thanks Ariel and Julie - one Zoom drawback - by scrolling out of zoom we lose sight of chat. For the punch list of changes to zoom we would like at some point - ability to scroll by each user
julie.hedlund
01:00:05
@David: That has been requested. Not sure if it’s a possibility though.
David McAuley (Verisign)
01:00:15
Thanks Julie
Susan Payne
01:01:02
so,when the proposal is put out it has to be made absolutely clear that these are the assertions of some WG members (ie as to improper acceptace of marks by Deloitte) and there is strong disagreement with that assertion by many others
Griffin Barnett
01:01:26
+1 Susan, just for any other non-consensus proposals, that context should be included
Mary Wong
01:01:42
@Susan, the staff assumption is that it will indeed be the case - i.e. proposals will clearly be noted as being from a WG member, or 2 WG members, etc.
Scott Austin
01:02:03
+1 Susan
Steve Levy
01:04:13
How about “a segment of the WG recommends…”?
Lori Schulman
01:04:37
Why label them with indivudual names? Maybe just offer as proposals that have not met concensus.
Susan Payne
01:04:54
Needs to be made clear that statements of "facts" are assertions which not all agree with
Lori Schulman
01:04:54
Yes, anonymize and neutrality
Michael Karanicolas
01:05:08
Why are we relying on Staff to contextualize rather than having each of the proposal’s authors express their own justification? I would support each side making their case.
claudio
01:05:13
Zak/Kathy - under the existing "3.2.4 Other marks that constitute intellectual property." - this is the current provision and it is not limited to word marks, so why doesn't this allow design marks in under the current rules?
julie.hedlund
01:05:20
Staff routinely summarizes the deliberations around the proposals in Initial Reports without attribution but indicating level of support.
Lori Schulman
01:05:23
Per Susan, agree on that the "facts" are not as black and white as suggested.
Griffin Barnett
01:05:24
Let's simplify as much as possible: strip out anything extraneous and just include the meat of the proposals - what they are suggesting as recommendations/changes
Kathy Kleiman
01:05:59
@All - we are going to be here forever... now we are rewriting the proposals.
Griffin Barnett
01:06:03
And introductory language ill clarify any context, including that each proposal is not a WG consensus but has some support among certain WG members or something to that effect
Kathy Kleiman
01:06:36
Agree with Griffin - introductory language makes senses.
Kathy Kleiman
01:06:48
As does stripping out "WG Agreement" --
Zak Muscovitch
01:06:49
Also agree
Kathy Kleiman
01:06:52
that's the whole question :-)
Mary Wong
01:06:56
All, if it helps, this is not the first time staff has had to deal with such situations. We will do our best, when preparing the first draft of the initial report, to capture what the proposals are and what they are not.
Griffin Barnett
01:07:30
Perhaps we can ask staff to prepare "stripped down" formulations of the proposals that capture the substance of the recommendation/change (we as a WG will obviously then have the chance to confirm or revise what staff has prepared)?
Griffin Barnett
01:07:57
That will save us from trying to re-wordsmith everything on the fly right now
Zak Muscovitch
01:08:35
Gees, that sounds like it will lead to much further discussion, Griffin on two proposals that have no consensus.... :)
Scott Austin
01:08:47
+1 Greg; Shatan proposal permits "go/no go" analysis by Deloitte with a brightline standard to permit a protection of some portion of design marks to be achieved based on some level of distinctiveness.
Griffin Barnett
01:09:03
Not looking for conseuss, but just sign-off from the drafters of the proposals that staff's versions capure the substance
Scott Austin
01:09:05
Typed form?
Kathy Kleiman
01:09:10
Huh?
Zak Muscovitch
01:10:41
Agree with what Brian said which followed on Phil and Mary's suggestion for contextual intros, essentially
Scott Austin
01:10:45
+1 Brian
claudio
01:11:39
@Zak/ @Kathy - just trying to understand your proposal - under 3.2.4, "other marks that constitute intellectual property" is not limited to "word" marks, so why do you feel design marks are not allowed in under this provision?
Paul Tattersfield
01:12:18
+100 claudio :)
Rebecca Tushnet
01:12:27
Claudio, other IP doesn't get Claims/Notice,
Rebecca Tushnet
01:12:48
Also, you still have to figure out what the subject matter of the IP claim is: what does the claimant have rights in, which is the point here.
Kathy Kleiman
01:13:11
We're stripping down the proposals?
Mary Wong
01:13:34
Still here for another minute or two :)
Paul Tattersfield
01:13:39
@rebecca why is that a problem?
Lori Schulman
01:13:56
Claims notices serve both the rights holder and registrants interests by providing notice. So I am still perplexed as to why limit them rather than to better explain them which all agree needs to be done.
claudio
01:14:03
Rebecca, sorry where are you getting that 3.2.4 doesn't get Claims notice?
Kathy Kleiman
01:14:23
@Claudio - 3.2.4 is next question. Q8
Rebecca Tushnet
01:14:38
Right now, Deloitte lets everything--including marks where the words are fully disclaimed--into the TMCH and gives them Claims and Notice. If you want to let design + word marks into ancillary databases where they don't let Claims and Notice, that's a very different thing and this proposal doesn't prevent that kind of thing
Rebecca Tushnet
01:14:50
*don't get Claims and Notice
Kathy Kleiman
01:14:54
+1 Zak
julie.hedlund
01:15:14
@Zak: There will be links to the full text of the proposals.
claudio
01:15:25
Kathy, 3.2.4 applies to what is allowed in the TMCH generally. it says "other MARKS that constitute IP"; the other provisions say "word marks" but 3.2.4 does not
Scott Austin
01:15:54
There are also some words plus design marks protected by treaty. Are they admitted to TMCH?
Mary Wong
01:16:10
@Rebecca, that is not the case, actually.
Mary Wong
01:16:46
Claims and Sunrise are mandatory and provided ONLY for registered trademarks, court-validated marks and marks protected by statute or treaty (hence the GI issue). “Other marks that constitute IP” do not get Sunrise and Claims services.
Paul Tattersfield
01:16:55
the rpms flow from 7.1 & 7.2 and 3.2.4 is not referenced in either
Mary Wong
01:17:08
@Paul, yes, exactly.
Kathy Kleiman
01:17:18
we have some great examples from Deloitte.
claudio
01:17:37
@Mary, where it does it say that in the ABG? (I haven't seen it, just curious)
Rebecca Tushnet
01:17:38
+1 Paul.
Kathy Kleiman
01:17:47
that's a valuable idea, Phil, thank you.
Rebecca Tushnet
01:18:02
“7.1 For Trademark Claims services - Registries must recognize and honor all word marks that have been or are: (i) nationally or regionally registered; (ii) court-validated; or (iii) specifically protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion. No demonstration of use is required.7.2 For Sunrise services - Registries must recognize and honor all word marks: (i) nationally or regionally registered and for which proof of use – which can be a declaration and a single specimen of current use – was submitted to, and validated by, the Trademark Clearinghouse; or (ii) that have been court-validated; or (iii) that are specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008.”
claudio
01:18:04
OK, I'll look at 7.1 and 7.2
Rebecca Tushnet
01:18:14
Other IP is for ancillary services that may be used at a registry's request
Paul Tattersfield
01:18:39
GIs :)
Rebecca Tushnet
01:18:55
Mary, I don't understand the basis for your disagreement with this statement.
claudio
01:18:57
my fav ;)
claudio
01:20:16
I'm going off chat...will be on audio only for a bit
Rebecca Tushnet
01:21:25
Fine by me
julie.hedlund
01:21:33
Happy to defer to Rebecca and Claudio
Kathy Kleiman
01:21:57
What is Claudio's starting point?
Kathy Kleiman
01:22:00
Is it written down?
Griffin Barnett
01:22:19
@Kathy I think it comes from the latest email exchanges from Claudio/Rebecca
Ariel Liang
01:22:40
Staff are trying to locate the email and then will display on the screen
Rebecca Tushnet
01:22:40
That's my present point #2 (specifically, GIs are not TMs) but I don't mind the merger.
Kathy Kleiman
01:23:06
Rebecca's 6 points are out - and have support
Kathy Kleiman
01:23:11
from cross-community folks
Rebecca Tushnet
01:23:14
I can post it in chat if that would be any help
Brian Beckham
01:23:40
I wonder if this is the latest: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-September/003881.html
Kathy Kleiman
01:24:18
Adding where?
Kathy Kleiman
01:24:25
what provision?
Kathy Kleiman
01:24:39
can Claudio link this to Rebecca's points?
julie.hedlund
01:26:03
@Phil: There is no combined text that’s been provided. There have been comments from each — Claudio and Rebecca.
Brian Beckham
01:27:13
I had not understood that was being proposed, Greg
Paul Tattersfield
01:27:13
3.2.4 would allow it
Brian Beckham
01:27:27
But that an "ancillary database" would be allowed
Susan Payne
01:27:31
@Greg - no, not affirmatively setting up a GI database
Ariel Liang
01:29:51
We are displaying Rebecca’s email sent on Mon 1:28 UTC on the screen: https://mm.icann.org/pipermail/gnso-rpm-wg/2019-September/003878.html (perhaps that’s the proposal in the rough form)
Griffin Barnett
01:30:28
Hi folks, apologies, but I need to jump off for another meeting at 2
Kathy Kleiman
01:30:33
What Brian outlined makes sense to me.
julie.hedlund
01:30:36
Mary has had to leave the call
Brian Beckham
01:31:06
From here, it seems we have a basis for Staff to get us to the Initial Report language?
Kathy Kleiman
01:32:05
Do we have to go that far, Phil?
julie.hedlund
01:32:17
@Brian: It might be helpful first for Rebecca and Claudio to agree on specific text for what they agree on as to changes the rules and/or AGB.
Paul Tattersfield
01:33:26
Exactly Rebecca
Susan Payne
01:34:49
@Rebecca, I think we do need to amend the AGB language to some extent because Deloitte's nterpretation here is AN interpretation and if we all agree we don't want that to continue then we need greater clarity
Rebecca Tushnet
01:37:00
I'm cool with amending--I think the cross references turned out to be too complicated.
Susan Payne
01:37:31
yes I think we're on the same page
Rebecca Tushnet
01:38:44
I'm still not sure whether Claudio has withdrawn his additional proposals.
Paul Tattersfield
01:41:15
we should be doing it not asking the public
julie.hedlund
01:41:48
@All: It might be more helpful to include suggested amendments to the AGB when submitting for public comment, to be more clear.
Susan Payne
01:41:49
@Phil - no I really don't think we can ask the community that. That is our job
Rebecca Tushnet
01:42:33
I'm fine with relaxing that language as long as 1-2 get said because there is an existing problem with GIs.
David McAuley (Verisign)
01:42:51
what if it said other things that are not trademarks, like GIs, etc
Rebecca Tushnet
01:43:16
I won't use that
Kathy Kleiman
01:43:22
@David, that makes sense to me.'
Kathy Kleiman
01:43:32
I think we have some definitions of ancillary databases floating around...
Kathy Kleiman
01:43:55
@Rebecca - how would you phrase it?
Rebecca Tushnet
01:44:03
I am also fine with an intro on ancillary services. That may also be in the AGB enough that if we are proposing language changes it can be worked in.
Scott Austin
01:45:30
+1 Greg
Paul Tattersfield
01:45:55
I agree with Greg but we need to communicate it toDeloitte
Maxim Alzoba
01:51:27
Limited periods are after sunrise
Greg Shatan
01:51:58
Antitrust concerns are not necessarily “monopoly” concerns — they are usually “market power” concerns or other concerns about harming competition....
Maxim Alzoba
01:52:08
and ALP did not work well this round
Kathy Kleiman
01:52:13
+1 Maxim - Is LRP in our purview?
Maxim Alzoba
01:52:56
Claudio was talking about that, I just wanted clarity
Maxim Alzoba
01:53:14
we reviewed it
Greg Shatan
01:53:23
We agree that GIs are a problem and they need to clear out of the TMCH. After that not so much.
David McAuley (Verisign)
01:55:44
+1 @Phil if we can enlist such folks, an effort to do a final polish of this question
Paul Tattersfield
01:56:29
The revised wording for 3.2.3 is not good too the original was better
Ariel Liang
01:57:23
This is the document https://docs.google.com/document/d/1PG_-rjslTTcUYrMNpuwo5_YWvSu40cc3/edit#heading=h.gjdgxs
julie.hedlund
01:57:47
All: You can use the above link to scroll.
Ariel Liang
01:58:04
The “deferred questions” are mainly Q12, 13, 15, 16
Ariel Liang
02:00:10
Questions on page 11 and beyond haven’t been discussed by the WG (Q1-Q6)
Kathy Kleiman
02:01:29
Tx Phil!
julie.hedlund
02:02:06
Thanks for joining everyone!
julie.hedlund
02:02:32
And thanks for chairing Phil!
Amr Elsadr
02:02:38
Thanks all. Bye.
julie.hedlund
02:02:41
Bye!
Paul Tattersfield
02:02:42
bye all
David McAuley (Verisign)
02:02:43
Thanks and good bye