For many years, I have observed that the Internet is adopting many self-regulation frameworks to address a variety of issues. Indeed the Internet has benefited from self-regulation as an efficient way to address jurisdictional conflicts - particularly as compared to traditional law making. Since the Internet is global, jurisdiction is often the most difficult policy issue to address. To this end, voluntary initiatives are becoming increasingly popular in the digital space due to their ability to address dynamically issues related to the Internet. Voluntary, self-regulatory or industry-based are all terms used to identify initiatives that are produced and enforced by independent (private) bodies or trade associations and focus on addressing issues that have a limited scope and are of a specific subject matter.
The United States Patent and Trademark Office (USPTO) recently issued a request for input on voluntary best practices in the context of intellectual property. In light of this request and considering the newly formed Copyright Alert System (CAS) and other similar policy exercises around the world, the Internet Society offers its own reflections on voluntary policy initiatives. By outlining the advantages and disadvantages of self-regulation and identifying a set of best practices for self-regulation that include the need for periodic reviews, external and internal checks and, transparency, amongst others, the Internet Society wishes to promote the thesis that voluntary-based initiatives can prove efficient if they are carefully balanced and do not depart from the established principles and processes of rulemaking.
The scale of Internet growth is reflected in the shear complexity of crafting Internet policies and regulations; it is an undisputable fact that the Internet has put to test the efficiency of traditional law making and its ability to deal with emerging technology trends. In order to deal with the increasing gap between legal and technology frameworks, many policy makers turn to systems of self-regulation and voluntarism. These systems are not new – since lex mercatoria (law of the merchant) in the middle Ages, self-regulation has been a tool for regulators and policy makers to deal with complex commercial issues in an expedient manner.
Self-regulation mechanisms can be efficient and offer a plethora advantages, but they should not be considered a panacea. A clear rationale regarding their mandate and parameters is essential for self-regulation frameworks to address their intended purpose and stand the test of time. At the same time, tools for measuring the effectiveness of these approaches should also be in place to ensure that the outcomes are consistent with expectations and that they continue to meet the public interest over time.
Since the Internet is a global network of networks, national Internet public policies, whether they are based on self-regulation or traditional regulation, often have impacts beyond national borders. Thus, as voluntary-based mechanisms gain traction amongst policymakers as an alternative way to address complex online legal issues, these mechanisms will also have global implications. This is particularly true because, while self-regulatory tools are evolving in different jurisdictions, there are lessons to be learned across all of these experiences. Further, there are global policy lessons to be learned in terms of the effectiveness, processes and sustainability of these kinds of policy tools.
What follows is a set of thoughts concerning self-regulation. Self-regulatory frameworks are appealing because they can be narrowly tailored to deal with specific legal issues but these tools are not the solution to all problems. In fact, successful self-regulation can only happen within established and legitimate frameworks of rule-making.
Advantages and Disadvantages of Voluntary-based Initiatives
The Internet Society is, generally, in favor of industry-based initiatives to address various issues, including those related to intellectual property; however, we are also mindful of the risks associated with these approaches. Whether based on theories of delegation or contract law, facilitated by the State or being a by-product of a “self-enforcing power, stemming from the direct deprivation of a valuable right”, the role of private bodies in self-regulatory environments is key. At the outset, such private entities could prove beneficial in overseeing market participants’ actions through different processes such as standard setting, certification, monitoring, brand approval, warranties, product evaluation and arbitration.
Academic literature and market practices (e.g. the European Advertising Standards Alliance in Europe) indicate that for self-regulatory mechanisms to be successful they should include standards for real consent, which help ensure the legality and legitimacy of contractual agreements as part of private regulation. In cases where consent is not present, public legal institutions are required to specify the criteria that entitle private regulatory regimes to acquiescence and immunity. But, ultimately, it is adherence to minimum standards of justice and fairness that determine the success of industry-based initiatives. Rules, consequential to private regulatory efforts should ensure that – to the extent possible – interested and affected parties are able to participate in voluntary based initiatives on an equal footing.
Based on this set of minimum standards, private regulation offers some notable advantages in allowing the market to take the lead, offer a multitude of alternatives and ensure that fundamental values are protected by allowing interested parties to participate in the formation of rules and principles that are not subject to the cumbersome processes of traditional law making. As David Post, professor at Temple University and Fellow at the Center for Democracy and Technology, accurately put it: “We don’t need a plan but a multitude of plans from among which individuals can choose, and the market [...] is most likely to bring that plenitude to us”.
In a much similar vein, Robert Pitofsky, former Chairman of the Federal Trade Commission (FTC), referring to industry-led regulation, enumerated the following advantages:
· Self-regulatory groups may establish efficient product standards;
· Private standard setting can lower the cost of production;
· Private regulation helps consumers evaluate products and services;
· Self-regulation may deter conduct that is universally considered undesirable but outside the purview of civil or criminal law; and,
· Self-regulation is more prompt, flexible and effective than government regulation.
Industry regulation, however, also has significant disadvantages. The recent failure of self-regulatory models in the financial markets leads many to question industry-based regulation as an efficient model. To this end, some scholars have challenged the legitimacy of private bodies, such as cyber-authorities, to deal with issues emanating from the Internet. Their main concern relates to the ability of such authorities to create policy and enforce rules that traditionally fall within the remit of the democratic state. In the words of a US scholar: "State-centered law - both legislation and constitutional adjudication - carries considerable weight in legitimizing creation beliefs and practices and delegitimizing others. […] A cyberauthority, in contrast, would have to start from scratch". 
One of the most worrying aspects of private regulation is, arguably, that many of its advantages are based on false premises and loose criteria. Amongst other things, private regulation may easily fail to protect democratic values; it can neglect basic standards of justice; and, it is often less accountable compared to traditional governmental rule making. More importantly, because of the Internet, self-regulation is increasingly initiated and imposed by new Internet sovereigns that do not necessarily operate within traditional principles of rule making. To this end, private regulation often suffers from lack of accountability and due process. .
Effectiveness of Voluntary Initiatives
Various countries, including the United States and the United Kingdom, have consistently supported meaningful, consumer-friendly, self-regulatory regimes for various issues ranging from privacy to intellectual property. As the United States government has stated: “To be meaningful, self-regulation must do more than articulate broad policies and guidelines”.
The Internet Society fully agrees with this premise – self-regulation emanating from voluntary based initiatives should extend to incorporate specific and reliable principles that allow participants and consumers/users to have a clear understanding regarding the delineation of the parameters, the scope of self-regulation and the accountability mechanisms for the public interest.
We will approach the effectiveness of self-regulation from the perspective of a) Accountable and Transparent Information Practices; and, b) Characteristics of Effectiveness.
A) Accountable and Transparent Practices
1. Access: At a minimum, users need to be provided with the option of having access to information regarding every voluntary-based mechanism that might affect them and their online experience. In this respect, every actor engaged in voluntary practices should take reasonable steps to ensure that users are kept updated and informed about the process and substance of such self-regulatory initiatives.
2. Enforcement Policies: Enforcement policies articulate the steps that will be taken when illegal action is detected. On this basis, users should be able to understand the scope of enforcement and the parameters of their activity.
3. Notification: Enforcement policies, especially those emanating from self-regulatory schemes, should be made known to users as much in advance as possible. Notification written in language that is clear and easily understood, should be displayed prominently, and should be made available before users are asked to sign any contract regarding their Internet connection.
4. Education: Two things are important in this context: first, education should reflect unbiased opinions and should be conducted by 3rd party trusted sources, including academia. Similarly, education should not be limited only to users but should extent to every single entity or individual who is part of the Internet ecosystem.
5. Data Security: Given the volume of data collected in such industry-based schemes, private bodies creating, maintaining, using or disseminating records of identifiable personal information must take reasonable measures to assure its reliability and take reasonable precautions to protect it from loss, misuse, alteration or destruction.
B. Characteristics of Effectiveness
For a self-regulatory regime to be effective, it needs to include mechanisms that assure compliance with its rules and appropriate recourse to an injured party when rules are not followed.
1. Due process: every voluntary-based initiative should adhere to basic and fundamental principles of justice and fairness, including, but not limited to, the right of a hearing, legal certainty and adherence to the rule of law.
2. Judicial safeguards: all voluntary-based initiatives should encompass internal and external checks and balances. One such balance is the right of an appeal. However, this right is not self-sufficient and should be accompanied by a process that is affordable and accessible; it should further incorporate rules that are clear and incentivize its use. Finally, it also requires independence and impartiality of all the participants.
3. Transparency: Disclosure of information to the public about voluntary schemes is another significant feature of voluntary-based initiatives. This information should include, but should not be limited to, the system’s rationale, end goal, how it affects interested parties, etc.
4. Balanced and proportionate rules: Voluntary based mechanisms should strive towards creating rules that are balanced, reflect the rule of law and are proportionate.
5. Trust: Trust is becoming increasingly important in the spheres of policymaking and law crafting. Any voluntary-driven initiative should seek to build and create an environment of mutual trust first, amongst the actors setting up the system, but also between the actors to which the system is addressed.
6. Periodic reviews: All systems, including public ones, should be periodically reviewed and evaluated as to their effectiveness. Such reviews test the efficacy of policy mechanisms and their ability to provide answers to the issues they were originally created to address. In the context of the United States’ Copyright Alert System (CAS), for instance, the need for a robust review after its first year of operation is key in identifying potential gaps and omissions, a possible revision of its safeguards, a reframing of its deliverables and the precise role of the various actors.
7. Public Interest: To the extent that self-regulation aims at setting standards that principally reflect industry needs, there is a potential for the standards to reflect the industry’s interests rather than the public interest. It is, therefore, essential that self-regulation is neither collusive nor open-ended; it should not operate outside the wider regulatory framework or act independently. In such instances, the role of the government and public interest groups can aid in a monitoring function and lessen the opportunity for abuse and opportunistic changes to the self-regulatory mechanism.
Voluntary-based initiatives can prove valuable tools in the complex environment of policy making. Unlike public regulation, which is increasingly being seen as too slow to address the needs of a fast-paced Internet environment, self-regulation can provide efficient answers to important legal questions. But, self-regulation should not be seen as a cure for all the issues appearing in cyberspace. It is important that mechanisms based on industry initiatives include very specific and solid provisions relating to due process, fairness and justice; in addition, periodic review mechanisms as well as internal and external checks, including the right of an appeal, should also be parts of voluntary-based initiatives. To this end, a careful balance regarding goals and scope is necessary in order to ensure that self-regulation does not become a vehicle of abuse or misuse.
 Henry H. Perritt, Jr., Towards a Hybrid Regulatory Scheme for the Internet, 2001 U. Chi. Legal F. 215
 David G. Post, What Larry Doesn't Get: Code, Law, and Liberty in Cyberspace, 52 Stan L Rev 1439, 1458 (2000)
 Neil Weinstock Netanel, Cyberspace Self-Governance: A Skeptical View from Liberal Democratic Theory, 88 Cal L Rev 395, 497-98 (2000)
 Henry H. Perritt, Jr., Towards a Hybrid Regulatory Scheme for the Internet, 2001 U. Chi. Legal F. 215
This blog post originally appeared at the Internet Society Public Policy page.
What made an organization like the Internet Society draft an issues paper on Intellectual Property? What is the aim of this paper? How does the paper relate to overall Internet governance discussions? And, what – if any – impact does it aim to have on the discussions regarding Intellectual Property?
At a time when there is a desire to resolve policy considerations by employing technological measures, the Internet Society, through an issues paper, amongst other things, seeks to chart a path forward: for the Internet Society, it is vital that policy makers develop public policy approaches that are consistent with the principles that have demonstrably worked. For instance, intellectual property enforcement solutions should not be at odds with the underlying architecture of the Internet -- technology can assist intellectual property rights in other ways (e.g. identification of the intent of the content creator), but enforcement is not one of them. The Internet is a unique tool for economic and social empowerment and we should ensure that it continues to perform this significant role. However, some policy initiatives over the last 18-24 months (SOPA/PIPA and ACTA) resulted in a highly publicized and deep schism between policy, technology and the various stakeholders.
To this end, the Internet Society believes that it is important to articulate a set of minimum standards for all intellectual property discussions. Multistakeholder participation and inclusion, transparency, the rule of law, respect for the Internet’s architecture and upholding the open standards of the Internet, constitute the types of propositions that should be established in intellectual property governance.
Fundamentally, the underlying premise of this paper is neither novel nor new. It is written with the intention to communicate and compile existing ideas that could contribute to the ongoing broad discussions relating to: a) the effect the Internet has on intellectual property rights and, b) the place intellectual property rights should occupy within the Internet ecosystem.
Reflecting on the Intellectual Property discussions thus far, we appear to be lacking such minimum propositions that could help provide a framework for how intellectual property interactions are to be structured, shaped or fashioned. We lack a set of best practices that could provoke forward-looking approaches for how to address this highly contested issue more effectively.
One of the first things we observe is that the realm of intellectual property remains one of the few thematic Internet governance areas that still lacks inclusive structures for stakeholder engagement. This is not to say that multistakeholder discussions relating to intellectual property are not taking place; but such procedural formats are not yet the primary mechanism for discussing intellectual property matters and their potential impact on the Internet. So, although we acknowledge that there is a conscious effort from some stakeholders to end the policy schism and urge the reconciliation of intellectual property with technology, the lack of overall inclusiveness, precludes the emergence of a robust and sustainable way forward.
None of this, of course, is new and the Internet Society’s issues paper does not seek to reinvent the wheel. What it seeks to do, however, is to reflect on the many considerations as they have developed from years of policy making and Internet governance processes. It is through these considerations that the Internet community will much better serve the need to promote the open development and use of the Internet for the benefit of all people throughout the world.
So, the time is right to reflect and strategize on how to strengthen the dialogue through inclusiveness, transparent processes, adherence to the rule of law and respect of the Internet’s architectural design when talking about intellectual property on the Internet.
You can access the paper here!
Policy Advisor for the Internet Society
Note: This blog post originally appeared on the Internet Society Public Policy page
Discussions at annual meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) in Costa Rica have been significantly dominated by the requests submitted by the International Olympic Committee (IOC) and the Red Cross and Red Crescent movement regarding the special protection of their names at the top-level domain name. This issue has actually been at the ICANN’s agenda for quite some time now, but it reached its pinnacle yesterday (March 14, 2012), when, at the request of the Non-Commercial Stakeholder Group (NCSG) the issue was deferred, a move which meant that the Generic Names Supporting Organization (GNSO) Council was unable to vote on this issue. For many, this move signaled the end of ICANN, as we know it, an apocalyptic end to the Internet’s biggest investment – the new gTLD program.
Being present at ICANN 43 and a member of NCSG and of the Drafting Team that has debated on this issue, I feel the need to clarify some things. First of all, the world is not going to come to an end and the new gTLD program is not in jeopardy. It would be outrageous to even suggest that a process, involving a debate of more than six (6) years is dependent upon granting these special protections. This scenario would send a bad signal to the rest of the Internet world and its institutions as to where ICANN’s true priorities lie. And, the world is watching!
But, more importantly, one thing that needs to be made clear is that both these organizations are already ‘specially’ protected in this first round of the new gTLDs. According to the latest version of the Applicant Guidebook, the terms of the International Olympic Committee and the Red Cross and Red Crescent Movement “are prohibited from delegation as gTLDs in the initial application round”. This is clear. These terms are untouched and have been elevated to a completely different status, in comparison to those of other organizations, intergovernmental or not, that one can argue have a more significant mission, at least compared to the one of the International Olympic Committee. (Think here of UNESCO, WIPO, etc.)
Yesterday, the debate, however, was not about substance – it was about process. The reason NCSG requested the deferral was not about whether these organizations deserve these protections; the reason was simple: the public comment period for the Drafting Team’s recommendations is not over and, thus, the GNSO cannot come to a decision unless the public comment period has expired. It is actually surprising that the GNSO did not feel the need to uphold the public comment period, an issue that constitutes a paramount element within ICANN’s processes and is part of its Affirmation of Commitments mandate. Under the Affirmation of Commitments, the document that establishes ICANN’s bottom-up and transparent model, “ICANN commits to maintain and improve robust mechanisms for public input, accountability, and transparency so as to ensure that the outcomes of its decision-making will reflect the public interest and be accountable to all stakeholders”. In particular, ICANN is to achieve these set goals by “continually assessing and improving the processes by which ICANN receives public input (including adequate explanation of decisions taken and the rationale thereof)”. So, questioning the need for the public comment period to make its full circle by some members of the GNSO Council is what puts ICANN and its processes in danger; it is not the deferral, which is aligned with these very principles.
Plato famously said: “a good decision is based on knowledge and not on numbers”. For ICANN, this knowledge derives from public comments – public comments constitute the only way for ICANN to understand and learn the views of the wider community. So, the idea that we can circumvent such a pivotal process within the ICANN ecosystem and sacrifice due process in the name of speed is not only dangerous but it also sends a very bad message as to the democratic fractions that are supposed to be part of ICANN’s multistakeholder model.
Comments submitted by Dr. Konstantinos Komaitis regarding the “Proposals for protection of International Olympic Committee and Red Cross/Red Crescent names at the top-level”
Comments submitted by Dr. Konstantinos Komaitis regarding the “Proposals for protection of International Olympic Committee and Red Cross/Red Crescent names at the top-level”
I would like to thank the Internet Corporation for Assigned Names and Numbers (ICANN) for this opportunity to submit comments in relation to the “Proposals for protection of International Olympic Committee and Red Cross/Red Crescent names at the top-level” domain names.
First of all, I would like to mention that I am the current chair of ICANN’s Non-Commercial Users Constituency (NCUC) and one of the members of the Drafting Team (DT) that has submitted these recommendations for consideration by the wider Internet Community. In this particular instance, however, I am speaking in my own personal capacity as an academic and a Greek citizen.
My concerns over these recommendations relate to issues of process, substance and effectiveness. In particular, I feel that this whole process takes a path that goes contrary to the idea of the bottom-up normative assessment the ICANN community has strived to develop over the years and opens a Pandora’s Box with ramifications that will be impossible to reverse.
The primary flaw of this process that led to these proposals is that it has failed to distinguish between the requests made by the International Olympic Committee (IOC) and the Red Cross/Red Crescent movement and treat them as two separate issues. These are two organizations, which engage in completely different and unrelated activities, are currently being offered different levels of protection through traditional international and national legal instruments and their contribution to society differs significantly. In particular, the fact that the Red Cross/Red Crescent movement is involved in promoting and ensuring humanitarian relief in times of national and international catastrophes offers, at a preliminary level, a more sound foundation for the potential protection of its names and terms in the Domain Name Space (DNS); on the contrary, IOC is an organization, which receives a great amount of sponsorship deals which ensures “more than 40% of Olympic revenues” (some of its commercial partners include SAMSUNG, COCA COLA, GENERAL ELECTRIC (GE) MCDONALDS, VISA and PANASONIC) and its role, albeit significance within the sports industry, should not be mixed with humanitarian or public interest values.
On the issue of process, it has been obvious that ICANN departed significantly from its long-fought and established bottom-up processes. ICANN’s Board decision to prohibit the “delegation [of these names] as gTLDs in the initial application round” went against the bottom-up establishment within ICANN and undermined its main policy multistakeholder body – the Generic Names Supporting Organization (GNSO) Council. (At this stage, it is important to clarify that a decision has already been made concerning the protection of these terms in the first round). This new set of recommendations seek to go beyond and re-enforce the Board’s decision by creating a panoply of various protections and safeguards that, one can argue, re-interpret international law.
What is even worse is the unreasonable pressure that has been placed upon the Drafting Team to come up with these recommendations, which is manifested by the rush and the urgency of this public comment period and the likelihood that the GNSO Council may be asked to vote on this recommendation during the 43rd ICANN meeting in Costa Rica and only a week after the public comment period has opened. This means that the GNSO, when making its decision, will, most likely, not have the appropriate input of the community, within and outside ICANN; this is something that can potentially undermine any of its future work.
On the issue of substance the recommendation of the Drafting Team enters a dangerous territory. Under recommendation 1 - “Treat the terms set forth in Section 188.8.131.52.3 as “Modified Reserved Names” – terms like ‘confusingly similar’ are vague, thus their meaning can easily be twisted, whilst there is also an obvious attempt to disincentivize even legitimate rights holders from engaging in any type of registration at the top-level name [paragraph c (ii) 3 of recommendation 1].
Even more problematic is recommendation 2, which seeks to re-interpret international Treaties and expand the rights traditionally afforded for these terms. This is particularly obvious in the case of the Olympic mark, which seeks to protect the names in multiple languages, including those of States that have not signed the Nairobi Treaty on the Protection of the Olympic Symbol. The Nairobi Treaty is the only standard that can be used by an international organization like ICANN in order to comply with the rule of law. ICANN is not a legislator and should not accept a ‘definitive list’ of languages that constitute an arbitrary compilation of national laws.
Finally, there is no clear justification regarding recommendation 3. Considering the novelty, the time constraints and the controversial nature of these recommendations, in the likelihood that these recommendations pass, ICANN should call for a review after the first round of delegation of the new gTLDs has occurred in an attempt to reassess them.
Considering effectiveness, these recommendations set a very dangerous precedent and send a bad message. Although reassurances have been made that this process is meant to address only the names of these two international bodies, it is the case that, should they be implemented, other international entities and institutions will have valid claims to demand the same levels of protection. If pressure from these other international bodies intensifies, ICANN will have no option but to succumb. Accepting these recommendations leaves the ICANN community with no grounds against other international organizations and sets a dangerously flawed practice for the new gTLD program.
Being a Greek citizen, I am particularly troubled by the levels of protection these recommendations seek to provide to the terms ‘OLYMPIC’, ‘OLYMPIAD’ and their variations in multiple languages. Greece is the place that gave birth to the Olympic games and promoted the Olympic spirit that the world currently enjoys. The idea that the Greek community of Olympia (the place which marks the ceremony of the lighting of the Olympic flame) will have to ask permission from the International Olympic Committee to use a term that is part of its cultural heritage is highly problematic, illegitimate and goes against how the Applicant Guidebook views communities.
I hope the ICANN community takes a much closer look to these recommendations and think carefully about the potential multifaceted impact they may have.
Dr. Konstantinos Komaitis,
Senior Lecturer in Law
 184.108.40.206.3 of the Applicant Guidebook
The last few months have seen the Internet facing one of its most significant challenges in relation to its basic freedoms. It all started with the Combating Online Infringement and Counterfeits Act (COICA), which then became the Protect IP Act (PIPA) and, in its worst manifestation, the Stop Online Piracy Act (SOPA). The common denominator of all these legislative proposals is the apparent willingness of the intellectual property industry to fight piracy and other types of infringement of intellectual property rights – at any cost. I emphasize ‘at any cost’ because this is the point where the legitimate claim to deal with piracy turns into an indecent war, waged against the Internet’s and society’s fundamental freedoms. In this regard, the fact that parts of the most powerful intellectual property interests are not willing to understand the new reality of digital content and creativity, creates a unique problem for a society, which has become so ‘gracefully’ attached to the Internet that it turns into a story worth-telling for the generations to come. It is really important, therefore, that we (at least) pay attention to some issues that have manifested themselves through this process.
The first thing we can observe from this almost 18-month exercise is that intellectual property protection has become the driver of Internet governance. The protection of copyrights and trademarks has lately dominated all Internet governance discussions at the ICANN, the OECD, the European Union and IGF levels – to name but a few. Camps for both sides have been created and debated extensively, whilst America has been sending conflicting messages regarding its own vision of Internet freedom. The world has heard the Secretary of State Hillary Clinton declaring America’s support for Internet freedom, whilst simultaneously witnessing an attempt by the US Congress to pass PIPA and SOPA, suppressing these very freedoms. At an international level, this insistence on intellectual property has given the Internet governance debate a problematic agenda, which focuses on one specific issue. It has distracted attention from other significant issues, creating a faux presumption that the Internet is all about intellectual property rights and their protection.
Another (anthropological) observation is that everybody seems to be talking about piracy - children, grannies, academics, politicians, journalists, civil society groups, the Hollywood, Record Labels, famous and independent artists, the Internet community - all take sides in favour or against the American proposals. Editorials have been written on the impact of PIPA and SOPA and Twitter has been on fire with hashtags encouraging followers to ‘retweet’ and raise awareness. This is significant. The fact that, unlike previously, such a debate is no longer happening within some closed doors of an international organization or other political institution, but instead everybody is involved is truly impressive and we should not take it lightly. This is the greatness of the Internet – it has spread the word that the US is proposing legislation that will change the way we interact on the Internet. And, Internet users have reacted. They are discussing it on Facebook, they blog and tweet about it, they follow and post comments and, in general, they engage in a debate they feel directly concerns them.
Here, an observation of governance can also be made: multistakeholderism is working. In this framework of stakeholder cooperation, we have experienced many changes and shifts. Actors have become more involved and much of the debate on piracy has turned into a debate about freedom of speech, American imperialism and the future of the Internet. Suddenly, the intellectual property community is left behind and civil society groups with the technical community have come together to support the Internet. This was an organic alliance and it appears to be based on the fact that the intellectual property community has managed to alienate the rest of the Internet community. Throughout this exercise, the intellectual property community denied to listen to the techies, who were warning about the dangers of tampering with the DNS and the infrastructure of the Internet; civil society groups were neglected when they talked about the impact on these proposals on free speech, requesting a balanced approach that respects the rights of fair use and freedom of expression. So, the IP folks should really not be frustrated that discussions on PIPA and SOPA were put to rest for the time being and many of their supporters are changing sides. This happened because, in a true multistakeholder environment, where Wikipedia, Amazon, Google and Facebook protest along with civil society, their voices are heard over and above businesses. This is the Internet at its very best.
An additional (political) observation is the wrong incentives SOPA and PIPA can provide to other countries. It has long been a stated fact that certain countries are unhappy with the existence of the “A” Root in the US and the de facto control the US Government appears to have on the DNS. This is a great opportunity for these countries to make some more noise. The fact that both SOPA and PIPA wish to manipulate domain names by taking them down, redirecting them or filtering their content can be a very persuasive argument against the kind of management and administration the US government is exercising upon this global Internet resource. What appeared to be a pure political argument becomes a legitimate one. This, of course, does not suggest that any other country will do a better job, but it certainly attests to the very fact that the US is failing to uphold its end of the deal and conduct appropriate administration of the DNS.
Finally, another (necessary) observation is that this is not the end of the road for either of these proposals or for the overall debate on intellectual property. This is fine. But, the nature of the debate now has to change; it cannot continue under the same premise that only existing creating industries should be protected and it can certainly not continue with only one participant on the negotiations table. The intellectual property community needs to start engaging with the other stakeholders and needs to listen. International institutions, where required, need to step up and need to become careful observers of this debate; civil society groups need to continue tirelessly their work and effort; the technical community needs to persist on preserving the stability and security of the network; and, governments, need to start resisting their lobbying processes and their lobbyists.
Following this debate closely myself, I feel many times like I am watching a Hollywood blockbuster movie - A movie about destruction, revenge, alienation and division, starring the Motion Picture Association of America (MPAA), the Recording Industry Association of America (RIAA) and the US Congress. Guest stars: Google, Wikipedia, Amazon, Facebook, Twitter, Anonymous and civil society.
New generic Top-Level Domain Names (gTLDs) are all about innovation, entrepreneurship and creativity; they are about identifying new entrants, opening up competition and providing the domain name market with the opportunity to explore new means of interaction on the Internet. Equally, new gTLDs are a great opportunity for existing businesses and brands to reconsider their business practices and models and to adapt to new commercial realities and ideals. In both cases, however, it is important that some basic rules and principles are maintained so that terms are not abused, terms are assigned to their rightful owners and, where there are no rightful owners, a robust and fair process is in place to ensure that the assignment of words is done in a manner that does not endanger the Internet, does not confuse consumers or does not obstruct current societal structures.
I, for one, have been a proponent of new gTLDs from the early days of their policy development process within ICANN. I always believed that the existing gTLDs – and mainly the .com space – have created artificial scarcity, which is primarily responsible for much of the cybersquatting and the abuse trademarks experience. I do not share the same fears as those who argue that new gTLDs will create intolerable levels of cybersquatting or will necessitate defensive registrations from brand and trademark owners alike. As for the policy itself, I do not believe it is perfect and I feel that, for certain issues, ICANN could have taken a different direction, but, ultimately I recognize and respect ICANN’S multistakeholder governance structure and the decisions that have come out of it.
Lately, however, something has caught my attention, which can potentially create problems. Almost the same day ICANN opened up its application process, a tiny start-up was granted by the United States Patent and Trademark Office (USPTO) a trademark for .bank (registration number 4085335). What is the problem with this? The problem is twofold: first of all, there is a general principle within traditional trademark law, which instructs that generic terms cannot be trademarked if they are to reflect what the term means. In this context, a company would not be able to register the word coffee and sell coffee. This would provide an unfair competitive advantage to any company and would, most likely, excommunicate all other similar companies selling coffee. Secondly, by granting this application, the USPTO is essentially leaving ICANN and its Governmental Advisory Committee (GAC) with a big problem. Part of the whole exercise regarding the role of the GAC within the new gTLD process related to the GAC’s role; this issue was resolved with the agreement that the GAC would be in the position to provide early advice to any new gTLD application, effectively giving the GAC the right to torpedo and determine the success of an application, which the GAC believes it raises issues of cultural significance or is contrary to national laws. To this end, it is exactly names like .bank that the GAC had in mind when they were pushing ICANN to insert this provision within the Applicant Guidebook: “[The GAC may advise] ICANN that there are concerns about a particular application ‘dot-example’. The ICANN Board is expected to enter into dialogue with the GAC to understand the scope of concerns. The ICANN Board is also expected to provide a rationale for its decision”.
Now, with the USPTO granting trademark rights for .bank, this early warning mechanism becomes superfluous, and multiple rights are created for .bank. On the one side, there are the rights of the trademark owner; on the other, there is the GAC which believes that the term .bank is sensitive enough to interfere and whoever applies needs to go through a scrutiny process; and, finally, there is also the rumoured applicant of .bank – a joint effort made by the American Bankers Association (ABA) and BITS, part of Financial Services Roundtable. So, in practical terms, what the USPTO has essentially done is to provide the opportunity to an independent entity to object the application of .bank by asserting valid trademark rights.
So, this is a mess and a mess that will only get worse unless trademark offices around the world stop granting trademark registrations to .generics. The way things are right now, the GAC may sign off the .bank gTLD to ABA and BITS, but the owner of .bank will have valid claims to stop this application process or at least demand some sort of financial compensation for giving up the name to someone else. And, if he is really pissed off or he wants to retain .bank for his own personal use, he can then sue for trademark infringement. In any case, the trademark owner is the only winner here and both the GAC and the American Bankers should feel very pissed off with the USPTO. At this stage, the only solution is for the USPTO to accept that they screwed up and recall this trademark.
It is not a secret that I have been (and I continue to be) against the requests made to ICANN by the International Olympic Committee (IOC) and the Red Cross for special protection of their names and their variations. I am mainly against because of the problems associated with these types of protection, the potential implications they may have and the fact that any attempt to reserve any names in the Domain Name Space will set a very bad precedent that will be detrimental to the whole new gTLDs experience. Well, the effect of this precedent is right upon us and, once again, ICANN is faced with a big challenge to find ways to accommodate the similar demands of intergovernmental organizations in the new gTLDs space. But, let’s take things from the beginning.
For quite some time now, ICANN has been subjected to a huge amount of pressure by IOC and the Red Cross to protect their names in the new gTLD program. This request, which was also vehemently supported by ICANN’s Governmental Advisory Committee (GAC), was meant to ensure that all the names associated with these two organizations (OLYMPIC, OLYMPIAD, RED CROSS, RED CRESCENT, etc.) are reserved under both the top level and second level domain names. As it normally goes, the justification is that these organizations constitute targets of cybersquatting activities, their non-profit nature (a point which is questionable given their involvement in multi-billion dollar licensing deals) does not allow them to spend money defending their brands as other purely commercial entities do and, in any case, such organizations should receive special treatment especially since Treaties and international commitments provide them with presumed privileges that could justify such levels of protection. Seeking a solution to this issue and given the pressure inflicted upon it, the ICANN Board agreed to initiate a process between the GNSO and the GAC on finding ways to address this issue; in the meantime, IOC’s and the Red Cross’s requests were accommodated – at least partially, as ICANN has committed to reserve their names in the new gTLD space but only for the top level domain names, stating, “the extraordinary step of blocking the requested names at the second level should not be taken as it would deny those with a legitimate interest or rights in registering those names at the second level, e.g., olympic.taxis and redcross.salt.”
I still think that this compromise is problematic and it is not because I don’t believe in the mission of these organizations or what they stand for. My problem is that these organizations are misusing trademark law and international Treaties to receive unprecedented levels of protection, especially when their names (in the case of ‘Olympic’ at least) conflict with other recognized rights, associated with traditional knowledge as well as cultural and geographical identifications. But, ultimately, it is the very dangerous precedent that such policy compensations set.
A recent letter from a number of Intergovernmental Organizations “on the Expansion of Generic Top Level Domains” to ICANN is a case in point. Based on the justifications used by the Red Cross and the IOC, several intergovernmental organizations are requesting ICANN to afford them the same privileges as these two organizations. So, if with IOC and the Red Cross we were stuck between a rock and a hard place, now we are in real trouble. The problem is simple - the argument that all these organizations should be afforded special protection, despite the very valuable work they are doing, is weak and flawed. In the letter, the organizations state that measures to protect their names can “find support in international legal norms”, citing Article 6ter of the Paris Convention for the Protection of Industrial Property, Article 16 of the Trademark Law Treaty and Article 2 of the WTO Agreement on Trademark Related Aspects of Intellectual Property Rights.
It is indeed the case that all these statutes mainly reflect the need for the protection of these organizations; but they are equally being referenced quite widely. In particular, Article 6ter, para. 1(a) states: (a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks [emphasis added], of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view. And, para. 1(c) states: “The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization [emphasis added].” So, here we have provisions that commit to protect the names, abbreviations, flags, etc. of such organizations, but only in relation to trademarks. Neither of these statutes seeks to create or is willing to acknowledge special privileges like the ones being requested from ICANN.
But, the bigger picture here is the position that such pressures place ICANN. ICANN is not a trademark entity and was not created to confirm, amend or re-write trademark law. And, this is essentially what is being asked from ICANN - to interpret old Treaties into the realm of the Internet and, to do so, in a fashion that is not compatible with its governance structure. This is problematic.
It really took ICANN a lot of time to become a body that was not purely seen as a front for trademarks and their protection. The history of the organization is replete with examples of how the trademark lobby has used ICANN as the platform for many expansive policies. But, lately things have changed. For instance, the fact that ICANN resisted the adoption of the Globally Protected Marks List (GPML) is a credit to the organization, since its adoption would place ICANN as the new legislator of trademark law. The fact that such listed never existed and was requested by ICANN to do so is a clear indication of why ICANN should resist meddling with trademarks.
The current requests by all these organizations are not that far away from the GPML idea; they may not be asking ICANN to create something new or novel, but they are asking ICANN to interpret international law instruments and translate them into DNS language. This is not ICANN’s job and ICANN should refrain from engaging in such dialectic. Imagine, for instance, if the World Health Organization were to reserve its abbreviation ‘WHO’. With many existing entities making legitimate use of the word ‘WHO’, it would be contrary to existing trademark law for only one entity to use it. (Examples include the music band ‘The WHO’, ‘Doctor Who’, the biographical encyclopaedia ‘Who’s Who’, etc.). If ICANN complies with this request and continues to grant these privileges, it exposes itself to all sorts of problems. It is time we reconsider the way trademarks fit within the domain name space.
Below find the letter sent by NCUC regarding the PROTECT IP Act (PIPA) and the Stop Online Piracy Act (SOPA).
The US Senate Committee on Commerce, Science and Transportation Hearing on ICANN’s Expansion of Top Level Domain Names on December 8, 2001 was all about strategy. The strategy was simple: while the world has its attention turned to the debate on the copyright legislative proposals of the Stop Online Piracy Act (SOPA) and the PROTECT IP Act, let’s have another ICANN hearing and try to re-open trademark protection for new gTLDs. And this time, let’s have a different crowd submitting the testimonies: Mr. Dan Jaffe of the Association of National Advertisers (ANA); Ms. Angela Williams, of the Young Men’s Christian Association of the United States of America (YMCA); and, Ms. Esther Dyson, first ICANN’s chairwoman.
What was heard at the Hearing was not something inspiringly new: brands will suffer and consumers will be confused. A lot was said about defensive registrations, how the Internet is a scary place for trademark and brand owners, how there is a possibility that child porn will proliferate, how cybersquatters can ‘blow us up’, how law enforcement will not be able to do their jobs and how US senators may not be able to register their names. Innovation was questioned in a much unconvincing way and much was argued about the presumed lack of consensus for the new gTLD program.
The new twist in this Hearing was the participation of non-profits, through the YMCA, which was used by the trademark community as the new vehicle to air trademark concerns and as a further attempt to demonstrate that if these organizations’ brands are suffering, then this should be enough to put the new gTLD program on hold. This might have impressed the Senators at the Hearing but it, ultimately, is a really weak argument. Non-profits are not trademark maximalists, especially in the way trademark interests are represented at the ICANN level. Non-profits are entities that protect their marks (not brands), but following the underpinning principles of goodwill, consumer protection, competition, etc. associated with the mark and the services they provide. So, I am not sure whether the YMCA’s testimony represents an understanding for NGOs and non-profits outside the US; in fact I am pretty sure it doesn’t represent the views of many NGOs and non-profits in Europe and, especially, in the developing world.
On the other hand, ANA’s message was simple: the new program is a threat to companies and consumers and it should be stopped. ANA has been particularly involved in this process after the Special Trademark Issues (STI) team recommendations were released, which were based on a consensus that the trademark community did not agree with. This consensus was highly challenged by ANA, on the basis that, since it didn’t reflect the views of the trademark industry and some non-profits, it was illegitimate. No matter what one thinks about ICANN’s consensus policies, these have been in place for many years, a lot of work to more accurately define it has been done and continues at the level of the GNSO, they are part of ICANN’s ecosystem of procedures and, in many cases, have been instrumental in the trademark community winning many policy battles. So, the idea that this consensus is not working is mistaken: it just didn’t work out this time for the trademark crowd.
I was quite puzzled with Esther Dyson’s testimony, especially the part where she argued that “the process of consulting with the public hasn’t really worked” and that she was representing Internet users, who will be confused through this expansion. There are two mistakes Ms. Dyson made: through NCUC for example, users have participated in the process and, for instance, concerns of free speech and freedom of expression (that no one at the meeting even dared to mention) have been addressed to the fullest extent possible within a multistakeholder model. (The difference is that, contrary to other groups, these groups have accepted the results of such multistakeholder recommendations.) And, as for the argument that users will be confused through this process is really not working any more. Users have become more savvy than any other time; by now the majority knows how to use the Internet, what to suspect and what to avoid. The idea that we need stronger intellectual property protection for the users reflects a time when our parents and grandparents were not logging on to Facebook and they thought computers were aliens.
So, what one should take from this Hearing is that the people who actually have been involved in this process, Ms. Fiona Alexander from INTA and Mr. Kurt Pritz from ICANN, both celebrated and gave their vote of confidence to multistakeholder participation. They both correctly insisted on the fact that the new gTLD program was a consensus policy and that its language is an attempt to represent the multistakeholder environment of ICANN. They addressed how all stakeholders participated in the various policy groups and that, although work needs to be done, a lot has happened towards ensuring that ICANN’s work on the new gTLD program reflects its multistakeholder community in a transparent and accountable way. This is a very crucial point and Hearings like this one demonstrate how foreign multistakeholderism is for many US politicians. So, here’s a suggestion: if we wish to have Hearings like this one, let’s do so, at least with an understanding of how ICANN works, where we were and where we are now. Because it turns out that Hearings like the one of December 8, are not constructive at all; they are highly disruptive, in a time when ICANN should be focusing on finalizing and cross-checking everything in order to make sure that the January 2012 launch goes as smoothly as possible.
Konstantinos Komaitis, the individual!
Views are my own and my own only!