You Can’t Always Get What You Want (With New gTLDs)… Unless You’re a Trademark (Or Copyright) Holder

By January 20, 2011 Governance No Comments

Following efforts by the well-funded trademark holder’s lobby to browbeat ICANN into submission over their desire (only partially successful) to scuttle the introduction of new gTLDs, the Recording Industry Association of America has also joined the fight.

The RIAA’s Deputy General Counsel has written a threatening submission to ICANN that begins, albeit not too threateningly, saying the RIAA’s “overriding concern is to ensure that any music themed gTLD is used productively and responsibly, and not as a means to facilitate copyright or trademark infringement.”

ICANN though is not the content police, and has just as much a role in ensuring that content (or behaviour) on any TLD, not just new gTLDs, abides by laws around the world as I would have thought does a recording company have on what one of its artists says or does.

The RIAA ridiculously says that “under the current proposed standard, we fear that we will have no realistic ability to object if a pirate chooses to hijack a music themed gTLD to enable wide scale copyright infringement of our works.” The RIAA then complains about ICANN’s lack of transparency.

Then comes the threat of legal action in a direct copy of the threats from the trademark holder’s lobby playbook. The RIAA says “we strongly urge you to take these concerns seriously, and expeditiously implement appropriate changes to the DAG to address these critical concerns. We prefer a practical solution to these issues, and hope to avoid the need to escalate the issue further.”

However, while trademark holders have been vociferous in the main, there have been some thoughtful contributions to the debate such as that from Hogan Lovells’ David Taylor.

In the Hogan Lovells submission, Taylor, a long term contributor to the debate, is concerned that there have been too many changes to the Draft Applicant Guidebook, but there are still not “strong enough Rights Protection Mechanisms.”

“When one compares the original proposals from the Implementation Recommendation Team (IRT) on the overarching issue of suitable Rights Protection Mechanisms with those proposed in the AGB (Applicant Guidebook) it is clear that there is a large divide between what the intellectual property community would like to see as a minimum level of protection and what ICANN proposes as a suitable level of protection.”

Taylor concludes that “it has been a long journey and much hard work has gone into getting the new gTLD AGB to this point. However, Hogan Lovells believe that more work is required before the Proposed Final AGB can be progressed to a finished product.

“Hogan Lovells congratulates ICANN on getting to this point in the new gTLD program, but strongly urges the ICANN Staff and Board not to push forward until the overarching issue of Rights Protection Mechanisms has been revisited. As matters currently stand the overwhelming feedback in each of the Public Comments period for each version of the AGB has been one of dissatisfaction with Rights Protection Mechanisms.”

And finally, “without consensus on the issue of workable Rights Protection Mechanisms for trade mark holders there is a real risk that the new gTLDs will not live up to their enormous potential with wide-ranging consequences for trade mark holders, new gTLD registries, domain name registrants and wider Internet governance.”

One may or may not agree with the issues raised by Hogan Lovells, but it is a good deal more thoughtful than those from the RIAA.

The full text of the RIAA letter is available at:
forum.icann.org/lists/5gtld-guide/msg00120.html

The full submission from Hogan Lovells is available at:
forum.icann.org/lists/5gtld-guide/msg00048.html