Kleiman's comments on the Trademark proposals

[Kathy Kleiman]

Hi Mary,
I appreciate your welcoming of comments, and appreciate your serving on
the IRT committee. I know this work takes huge amounts  of time, and it
is important for the NCUC to have representatives on the committee. I
hope you can comment as I see Steve Metalitz and others commenting.

What I see see emerging from the IRT Committee is a "wish list" of all
that the Intellectual Property Constituency has wanted since the
beginning of ICANN.  Then we were told that business as we know it would
cease to exist if we did not create massive new rules and protections
for the largest intellectual property owners in the worlds (and those
best able to defend themselves). Yet, in 10 years, we have shown that
the Internet, modern business and the sky have not fallen without these
protections. We have not had to skew the traditional balance of
trademark rights and their protection for free speech and fair use too
badly (although I am not crazy about the UDRP). Why, of all times, would
we give the intellectual property owners their Wish List now?

In 2000, the Famous Marks working group met for months to determine
whether the opening of new gTLDs should be stalled pending protection of
a globally famous marks. After a hue and cry about famous marks, it
turned out that there were no international lists of famous marks -- and
not even any international consensus on what they were (many countries
didn't even have legislation protecting famous marks). Further, the
courts were ruling against the direction the intellectual property
community wanted ICANN to go. In a famous Spanish case, the US NIKE (of
sneaker fame) sued a Spanish NIKE in local court. It turned out that the
Spanish NIKE, far smaller, had been using the mark far longer than the
US company and, as the senior user, was completely protected under
trademark law. Both users could coexist.  That's not the answer the US
NIKE wanted, and under the IRT proposals, equities would flip.

Could you help me understand the Uniform Rapid Suspension System (URS)?
The UDRP is already a system far expedited over a court process, and
far, far cheaper than bringing a court action. It already stretches
domain name registrants incredibly, and results in forfeitures because
registrants don't get the message, or don't have time to act (with
vacations, holidays, family illnesses, etc).

To set up a parallel proceeding will further expedite it will cause real
harm. Every trademark owner I know thinks it has a famous mark. They
will use this Rapid Suspension System (URS) to stomp out all other uses
of what they view as "their words." But companies don't own words.
Further these largest companies in the world have all the time in the
world to prepare their URS filing, with the world's largest law firms,
and then -- from out of nowhere -- individuals, noncommercial
organizations, and political groups have to race against the clock (with
virtually not time), against the equities of trademark law, and against
a stacked deck of rules to defend themselves and their very existence
online -- and pay for it too!

I would really appreciate your insight. Please help me to understand how
the Uniform Rapid Suspension System serves the noncommercial interest --
and the interest of all future companies, organizations, and ideas which
must use the same basic words already trademarked many times over?
Best,
Kathy
> I'm glad to see more comments and contributions from NCUC'ers and
> like-minded friends on the IRT proposals!
>
> While my take on the IRT report may differ to some extent from some of
> you (I'm on the IRT), I think it's important to make those public
> comments so that divergent views and alternative proposals can emerge.
>
> The final IRT report will be released toward the end of this week, and
> I encourage everyone with an interest in the intersection of trademark
> law and domain name policy, as well as those who are concerned about
> how the new gTLDs will operate, to track it and comment.
>
> I will be happy to discuss the final report once it's released; there
> will also be a public forum at the Sydney meeting that I encourage
> everyone who will be there to attend.
>
> Best,
> Mary
>
> *Mary W S Wong*
> Professor of Law
> Franklin Pierce Law Center
> Two White Street
> Concord, NH 03301
> USA
> Email: mwong at piercelaw.edu <mailto:mwong at piercelaw.edu>
> Phone: 1-603-513-5143
> Webpage: http://www.piercelaw.edu/marywong/index.php
> Selected writings available on the Social Science Research Network
> (SSRN) at: http://ssrn.com/author=437584
>
>
> >>> Robin Gross <robin at IPJUSTICE.ORG> 5/25/2009 5:50 PM >>>
> Wonderful, Kathy!  Excellent work!
>
> Thank you,
> Robin
>
>
> On May 25, 2009, at 2:01 PM, Milton L Mueller wrote:
>
>> Really excellent comments, please read
>> http://forum.icann.org/lists/irt-draft-report/msg00068.html
>>
>> Shows how the IRT proposals are a power grab that go way beyond
>> trademark law and ICANN's mission.
>>
>> Milton Mueller
>> Professor, Syracuse University School of Information Studies
>> XS4All Professor, Delft University of Technology
>> ------------------------------
>> Internet Governance Project:
>> http://internetgovernance.org
>
>
>
>
> IP JUSTICE
> Robin Gross, Executive Director
> 1192 Haight Street, San Francisco, CA  94117  USA
> p: +1-415-553-6261    f: +1-415-462-6451
> w: http://www.ipjustice.org     e: robin at ipjustice.org
> <mailto:robin at ipjustice.org>
>
>
>

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