Basking in reflected glory here - Prof Lipton is a friend and my
co-author, and we'd discussed the communique prior to her filing her
comment :) 

(We are writing a paper on closed generics, having done several others
already on trademarks and domain name issues. Our views are very similar
- on that and the current issue - to those of many members.) 

Cheers 
Mary


Mary W S Wong
Professor of Law
Faculty Chair, Global IP Partnerships
Chair, Graduate IP Programs
UNIVERSITY OF NEW HAMPSHIRE SCHOOL OF LAW
Two White Street
Concord, NH 03301
USA
Email: [log in to unmask]
Phone: 1-603-513-5143
Webpage: http://www.law.unh.edu/marywong/index.php


>>> 


From:  
Jorge Amodio <[log in to unmask]> 

To: 
<[log in to unmask]> 

Date:  
5/10/2013 6:18 PM 

Subject:  
Re: [NCSG-Discuss] Prof. Jacqueline Lipton comments to ICANN on GAC
Beijing Communique 

Excellent !

-Jorge 


On May 10, 2013, at 12:14 PM, Robin Gross <[log in to unmask]> wrote:




Noted law professor Jacqueline Lipton submitted clear, powerful
comments to ICANN regarding the GAC's advice: 



http://forum.icann.org/lists/comments-gac-safeguard-advice-23apr13/msg00010.html

Comments to ICANN: GAC Beijing Communique 

To: "comments-gac-safeguard-advice-23apr13@xxxxxxxxx"
<comments-gac-safeguard-advice-23apr13@xxxxxxxxx> 

Subject: Comments to ICANN: GAC Beijing Communique 

From: "Lipton, Jacqueline D" <jdlipton@xxxxxxxxxxxxxx> 

Date: Tue, 7 May 2013 15:04:43 -0500 

  
May 7, 2013

Comments on GAC Beijing Communiqué Issued on April 11, 2013

I write in response to ICANN’s call for public comments on the GAC’s
Beijing 
Communiqué issued on April 11, 2013 (Beijing Communiqué) with specific

reference to Section IV and Annexes I and II.

In particular, the GAC has advised the Board:

a. 	 Not to proceed beyond Initial Evaluation with certain strings
including 
.amazon, .patagonia, .date, .spa, .wine, .vin, and .yun (clause
IV.1.c.i);
b. 	 To implement new general Safeguards for all gTLDs (Annex I);
c. 	 To implement new specific Safeguards for particular categories
of gTLDs 
identified by the GAC (Annex I);
d. 	 To implement restricted registration policies for certain
categories of 
gTLDs (Annex I); and,
e. 	 To implement a “public interest goal” requirement with respect
to 
exclusive registry access for generic terms (Annex I).

I am a professor of law whose expertise resides in the field of law and
digital 
technology, with particular focus on trademarks, free speech, and
Internet 
governance.  I am the author of “Internet Domain Names, Trademarks, and
Free 
Speech” (Edward Elgar, 2010) as well as more than forty law review
articles 
dealing with Internet domain name disputes and Internet governance more

generally.  I also co-author the leading American Internet law
casebook, 
“Cyberspace Law:  Cases and Materials” (2 ed, 2005, and 3 ed, 2010)
(with R. 
Ku).  I hold Ph.D.s from both Cambridge University and Griffith
University, 
both in the fields of regulating digital technology.  My teaching is
focused in 
the areas of International Intellectual Property, International
Business 
Transactions, Trademark and Unfair Competition, and Internet Law.

In my view, ICANN should not adopt any of the recommendations raised in
the 
Beijing Communiqué.  These recommendations have been made too late in a
process 
that is already underway, and under which large sums of money have been

invested by applicants in reliance on previously released ICANN
guidelines.  
Additionally, many applicants have made plans for innovative business
models in 
new domain spaces that would be severely restricted, if not effectively

prohibited, if the GAC’s proposals were implemented.

Rules for granting and managing new gTLDs should not be changed at this
point 
in the system’s development.  The current procedures already contain
safeguards 
with respect to the issues raised in the Beijing Communiqué.  For
example, 
governments – and others – are entitled to object to the grant of
applications 
for particular gTLDs on previously articulated grounds.  Under the
Beijing 
Communiqué, the GAC seeks to add an additional and unnecessary layer of
rules 
that serves no clear purpose over and above safeguards currently in
place, and 
that may chill online innovation.  Many of the GAC’s suggestions are
also 
framed in terms that are too vague to be implemented in practice in a 
consistent and meaningful way, despite apparently laudable policy
goals.  I 
have detailed some specific concerns below.  

1. 	 In the Beijing Communiqué, the GAC tends to rely on broad,
undefined 
terms as criteria to impose restrictive conditions on applications for,
or 
administration of, new gTLDs.  An obvious example is the reference in
Annex I 
to implementing new gTLDs “in a manner that is fully respectful of
human rights 
and fundamental freedoms”.  While this is clearly a laudable
aspirational goal, 
any international human rights lawyer or advocate can attest to the
difficulty 
of defining such terms in a harmonized manner at the global level. 
Even the 
most basic of human rights – such as free speech – connotes different
things in 
different jurisdictions.  For example, while the United States has a
powerful 
First Amendment jurisprudence, Australia has no express constitutional

guarantee of free speech.  There is no way to enshrine a meaningful
concept of 
human rights or fundamental freedoms in a uniform and workable set of
rules for 
domain names.  

Another example of a tendency to rely on vague and undefined language
in the 
Beijing Communiqué arises with respect to the notion that registries be

required to operate “in an open manner consistent with general
principles of 
openness and non-discrimination”.  Again, these are laudable
aspirational goals 
that are impossible to reduce to concrete and workable rules in
practice.  They 
should not be imposed on the new domain name system at this point in
its 
development, at least not in the terms suggested in the Beijing
Communiqué.  
Their application would be fraught with too much practical difficulty
and would 
tend to have a chilling effect on online innovation.

2. 	 The GAC suggests in the Beijing Communiqué that exclusive
registry 
access for generic terms should serve a public interest goal.  As noted
in my 
comments on the “closed generic” issue in March of this year, “generic”
is not 
a term that can be meaningfully defined in the context of Internet
domain 
names.  Genericness always relies on context.  A term that is generic
in one 
context may well be proprietary in another.  It is impossible to
distill a 
general rule to apply to all new gTLD registries to identify terms that
should, 
as a general rule, be subject to a “public interest goal” requirement. 
For 
example, depending on the context, “Delta” is a proprietary trademark
(for 
airlines, hardware fixtures etc.) as well as a mathematical symbol, a
Greek 
letter, and a word in the English language.  

Even if it were possible to create a meaningful definition of “generic”
in the 
context of gTLDs, it would be equally problematic to define the concept
of a 
“public interest goal”.  Many of the difficulties in creating such a
definition 
have already been identified in Annex II of the Beijing Communiqué
itself.

3. 	 The Beijing Communiqué also fails to provide a clear rubric for
the 
treatment of specific strings it has identified as requiring further 
consideration in Clause IV.1.c.i.  The GAC has suggested that
applications for 
a series of strings including several valuable trademarked terms (such
as 
.amazon, .spa, and .patagonia) should not proceed past Initial
Evaluation.  
Several business entities have expended significant resources in
developing 
these brands and applying for the corresponding gTLDs in good faith
under 
existing guidelines.  It would be unfair to effectively veto their
efforts at 
this stage when no specific harm has been articulated by the GAC with
respect 
to the possibility of granting the applications.  While the Beijing
Communiqué 
may reflect genuine concerns about conflicts between a trademark and
another 
interest in a new gTLD space, there are procedures in place – including
under 
national laws – to deal with such challenges.  There is no
justification for 
removing applications for these gTLDs from consideration at this point
in 
ICANN’s process.

4. 	 In Annex I of the Beijing Communiqué , the GAC seeks to impose
heavy 
administrative obligations and attendant costs on registries of new
gTLDs in 
terms of its proposed Safeguards.  These include monitoring and
documentation 
requirements that have not been imposed on domain name registries in
existing 
domain spaces.  The imposition of such obligations at this point in the

development of the new system would likely go a long way toward
chilling 
innovation online by imposing significant financial and administrative
burdens 
on those who would otherwise provide commercially valuable spaces for 
innovation.

5. 	 Annex I of the Beijing Communiqué requires registry operators
and 
registrars to “respect all substantive and procedural laws under the
applicable 
jurisdictions”.  It is not immediately clear that this needs to be
implemented 
as a particular new safeguard within the system, or indeed that it can
be 
implemented by ICANN meaningfully in any event.  It goes without saying
that 
registry operators and registrars are subject to national laws, as well
as to 
provisions set out in the new gTLD Registry Agreement requiring
compliance with 
national laws.  As with existing gTLD spaces, domestic courts and
legislatures 
will govern acceptable online conduct in new gTLD spaces in terms of
compliance 
with national law.  There is no need for any new preemptive regulation
by 
ICANN. 

6. 	 In Annex I, the GAC attempts to create a list of strings linked
to 
regulated or professional sectors that merit special consideration,
along with 
the imposition of additional administrative safeguards and associated
burdens 
on relevant registries. The Beijing Communiqué further states that this
list of 
strings is “non-exhaustive” which seems a little problematic in
potentially 
creating uncertainty in practice.  Under this approach, the GAC appears
to be 
attempting to create a general veto power or at least exercise an
unjustifiable 
level of control over any new gTLD application without having to go
through the 
already established process for objecting to specific gTLD
applications.  At 
best, this approach seems like an attempt to pre-emptively regulate
something 
that doesn’t clearly need regulation outside the procedures already in
place. 
At worst, this approach will have a significant chilling effect on
innovation 
in new gTLD spaces and will lead to wasted resources.  If the risks
associated 
with applying for, or managing, new gTLD registries that may be
regarded as 
falling within the categories identified by the GAC become too high,
potential 
registrants may be deterred from developing strategies for online
innovation in 
those spaces.  As a result, gTLDs that may otherwise have been applied
for and 
utilized for socially or commercially useful purposes will simply
become wasted 
resources.

In sum, the new gTLD spaces should be allowed to develop as the
existing gTLD 
spaces have grown, subject to national laws, and free from the
implementation 
of ex ante rules developed in a context of uncertainty about how
registries, 
registrars, and consumers will use the new system in practice.  In
other words, 
the concerns raised in the Beijing Communiqué seem almost like a
solution in 
search of a problem.  The gTLD expansion should be given the
opportunity to 
develop organically so that new registries can innovate subject to the

constraints of national laws and the objection procedures set out in
existing 
ICANN guidelines.

Again, I would urge ICANN to maintain consistency with its stated
procedures 
for applications for new gTLDs and not to impose a complicated and
unnecessary 
new system for imposing additional safeguards the need for which has
not been 
clearly articulated by the GAC.  There has been adequate time during
the 
development of the system to consider the issues raised in the Beijing

Communiqué.  Procedures have already been implemented to deal with
those 
concerns, notably the ability of governments and others to object to
specific 
gTLD applications.  It would be inappropriate now to change the rules. 
While 
the GAC’s motives are laudable, the execution of the suggestions made
in the 
Beijing Communiqué would be unworkable and is unnecessary at this point
in the 
development of the system.  

Thank you for the opportunity to comment on this issue.  If you have
any 
queries in relation to the above, my contact details are below.
Sincerely,

Jacqueline D. Lipton, Ph.D.
Baker Botts Professor of Law
Co-Director, Institute for Intellectual Property and Information Law
University of Houston Law Center

--------- end --------