http://www.circleid.com/posts/20090621_mahmoud_ahmadinejad_globally_protected_marks_list_gpml/

Mahmoud Ahmadinejad and the Globally Protected Marks List (GPML)

Jun 21, 2009 11:21 PM PDT

By Graham Chynoweth

At first blush, Mahmoud Ahmadinejad and the Globally Protected Marks
List (GPML) do not seem to have anything in common. The first is a
politician of debated repute that is seeking to quell disputes over
the legitimacy of his election. The second is a recommendation that
seeks to protect trademark owners and consumers from an explosion of
infringement and source confusion that could be wrought by the
introduction of new Top-Level Domains (TLDs). However, upon a closer
analysis, they do share one common flaw: both have arguably failed to
appropriately prioritize the right to free speech.

In Iran, Ahmadinejad, according to major new organizations, leads a
government that has placed restrictions on what the press can cover
and publish and what people may say in public. Clearly, some, and
certainly Ahmadinejad, would argue that these restrictions on speech
are necessary to protect the orderly occurrence of commercial and
social intercourse in Iran. However, equally clearly, many would argue
that these dictates violate at least one traditional, admittedly
American, norm regarding speech—the prohibition on its 'prior
restraint.' In order words, it isn't 'fair' or 'right' that the
Ahmadinejad government has stopped people from reporting or speaking
before it is known whether what they intend to say or publish will
actually cause unrest.

In the IRT Final Draft Report, a recommended new mechanism, the GPML,
is proposed, which will:

I. prevent individuals from applying to create a new TLD that is
identical or confusingly similar to certain 'globally protected marks'
until the party interested in running the TLD has gone through a not
insignificant administrative process and proven "that the applied-for
TLD is not sufficiently similar (visually, aurally, and in commercial
impression) as to be likely, as a matter of probability and not mere
possibility, to deceive or cause confusion or that it otherwise has
legitimate rights to use the applied-for TLD", IRT Final Draft Report,
p 19., and

II. prevent individuals from registering domain names in a new TLD
that are identical to certain 'globally protected marks' until they
prove that the "registration would be consistent with generally
accepted trademark laws; namely, that its use of the domain name would
not infringe the legal rights of the GPM owner." IRT Final Draft
Report, p 19. Or more explicitly stated, in such cases, "[t]o overcome
the block, the applicant must show that it has a right or legitimate
interest in the initially blocked name." Id.

Just as in the Ahmadinejad case, some would argue that these
restrictions are necessary to protect the orderly occurrence of
commercial and social intercourse on the Internet. However, also as in
the case above, many would argue that these rules violate the
traditional American and Internet norm that prohibits 'prior
restraints.' In other words, it isn't 'fair' or 'right' for ICANN to
stop people from creating TLDs or registering domain names before it
is known whether the use of a word in the TLD or domain name, in fact,
infringe upon the rights of a trademark holder.

Given the centrality of the idea of 'prior restraint' to this post, it
seems important to outline the concept more definitively. Thus, more
specifically, 'prior restraint' is the creation of any mechanism that
effectively prevents or retards an individual from speaking or
publishing material until they can prove the truthfulness or
legitimacy of words they intend to speak or the material they intend
to publish. See Near v. Minnesota, 283 U.S. 697 (1931). In the
Ahmadinejad case we see a 'prior restraint' on speech until the
speaker or publisher can show the Iranian government that the speech
(broadly construed) will not to cause unrest in the population. In the
GPML case, we see a proposed 'prior restraint' on the publishing of a
TLD or domain name into the DNS until the publisher can prove that
they have a 'legitimate' interest in the word or words at issue.

The concept of 'prior restraint,' and rationale supporting the
argument that it is prohibited by the US Constitution, was established
in Near v. Minnesota. In Near, the Court justified its opposition to
'prior restraints' in this way: "The fact that the liberty of the
press may be abused by miscreant purveyors of scandal does not make
any the less necessary the immunity of the press from previous
restraint in dealing with official misconduct. Subsequent punishment
for such abuses as may exist is the appropriate remedy, consistent
with constitutional privilege." 283 U.S. 697, 720. Paraphrasing in
common parlance the essence of the argument, the Court found that just
because some (even many) people behave badly (even very badly),
doesn't mean that their bad behavior justifies prohibitions on
innocent actors. Or, in the current context - don't punish the grower
that wants to register 'apple.food' just because some miscreant wants
to sell knock off computers on 'apple.deals.'

However, notwithstanding the potentially undesirable comparison
between Ahmadinejad and the GPML recommendation in IRT Final Draft
Report, one might legitimately ask—who cares, why does this matter?
GPML proponents may say 'so what if the GPML clamps down a little on
free speech, trademark violators are out there hurting businesses and
individuals every day, it is justified and, come to think of it, who
said we couldn't!?!'.

With regard to the relevance of this issue in the ICANN context (other
spaces are more appropriate to debate the appropriateness of
Ahmadinejad's actions), this burgeoning system of 'prior restraints'
on TLDs and domain name registrations arguably: (I) contradicts one of
the IRT's own "framework and considerations", see IRT Final Draft
Report, P. 11., for the development of a trademark protection scheme
and (II) potentially opens up ICANN and the new gTLD process to a
legal attack from free speech advocates and organizations.

More specifically with regard to the former issue, the IRT Final Draft
Report states that its "recommendation[s] should protect the existing
rights of trademark owners, but neither expand those rights nor create
additional legal rights[.]" Id. Given the importance of the importance
of the concept of 'prior restraint' in the context of the American
legal tradition, not to mention in the context of the Internet's
cultural tradition, it is difficult to imagine how the bestowing the
right of 'prior restraint' on the owners of 'globally protected marks'
meets this test. More specifically with regard to the latter issue,
given the centrality and strength of the prohibition on 'prior
restraints' in United States constitutional jurisprudence and that
ICANN is inextricably linked and/or given authority by a federal
agency of the United States government, it seems apparent that any
opponent to the proposed scheme would have, at least at first blush, a
credible argument to make before US courts, should they desire to
prevent the implementation of the IP Clearing House recommendation
into the new TLD space.

In closing, it is worth noting that nothing in this post should be
construed as a disrespectful to the members of the IRT, all of whom
have good intentions and who worked very hard on the Final Draft
Report, or of the ability of its recommendation to prevent trademark
infringement, clearly they would. Rather, it is my hope that this post
will, at the least, spur debate about the importance of free speech as
an equally important element in the discussion of the appropriate
protections to be afforded to trademark holders in the context of new
gTLDs.

Written by Graham Chynoweth, General Counsel, Dynamic Network Services, Inc.

--
Rebecca MacKinnon
Open Society Fellow | Co-founder, GlobalVoicesOnline.org
Assistant Professor, Journalism & Media Studies Centre, University of Hong Kong

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