WIPO Internet Domain Name Process

Transcript - part 3: Washington, DC regional consultation

Georgetown University
October 1, 1998

Mr. Feld: Thank you. Some of you may have gathered already that my point of view will be somewhat different from what we have heard so far. First, I would like to say that while there have been positive developments and I am pleased to see that the process has expanded from where it was a year ago that there are still concerns that Domain Name Rights Coalition, as an organization, has, with how this process is unfolding. First, let me applaud the positive signs that we see: we are having worldwide meetings on these, the notice of these meetings is not confined only to people who are already familiar with the community and inside the community but notice is getting out and we are no longer expected to come to Geneva to petition that our views should be considered but, in fact, these meetings are being held around the world and that is a very positive development. There has also been an effort for greater both geographic diversity and for a greater presentation of views. The fact that we have somebody from NSI and somebody from the IHAC gTLD MoU plan sitting together on this panel reviewing the opinions that will come in is another very positive development and that these are all things which are to be applauded. However, when Domain Name Rights Coalition learned that the World Intellectual Property Organization was going to be given this study by the White Paper we had, a number of concerns and, unfortunately, there are things that indicate that these concerns are still justified. First, as we noted in our comments to RFC 1, this proceeding, as it is unfolding, exceeds the authority of the White Paper, the White Paper very specifically stated that the White Paper process did not seek to create a global Internet governance system and it did not seek to create a system that would address all disputes globally and yet we see that that is in fact an object of this proceeding. The White Paper limited this proceeding to cyberpiracy but in fact it has exceeded well beyond that and contains the issues pertaining to gTLDs and other important decision in this area which were never intended by the White Paper. Furthermore, the decision to expand this was made before a public interest representative was appointed to the panel, which is something we find very disturbing. We are, of course, very pleased that Professor Froomkin has been appointed and glad that public interest is being represented on this panel but we are extremely concerned that an opinion on something as vital as the way this thing should progress and its scope was made when there were only trademark lawyers and technical people in the room. If my information is wrong on that by the way, I will be very glad to be corrected, but when I looked at the web page, when I saw the results of RFC 1, I noted that it still had the notation that the public interest representative was still to be appointed.

Again, one other point of concern, there is still the heavy emphasis on trademark lawyers and technical people, with very little in between, we now have broadened this out somewhat but, as is represented here I think, there is tremendous difficulty in thinking outside the box in which we have grown up. There is a tremendous problem in having people who all agree with each other and come from the same background making these decision and while things have been opened up, we think that there needs to be broader representation from the diversity of communities that are out there. I would ask that this panel re-evaluate the results of RCF1 and either return to the limits of the White Paper or to openly admit that it has now exceeded the limits of the White Paper and is proceeding entirely under its auspices as the World Intellectual Property Organization and that it is not acting under the mantel of the White Paper or based on the request that the United States government made in that document. Second, there is, of course, some concern on our part that although interest has been broadened that it will remain marginalized and we are very eager to see whether the public interest representation that is here will be given serious consideration or whether, instead, this will be a mere token representation and that the process will continue essentially as a trademark enhancing process.

Finally, I have heard today a number of calls for a speedy process, that we are in a state of crisis, that the Universe is crashing around our ears, I have heard this cry for the last two years in this process. Here we are, October 1, which was to be the great doomsday if a solution was not found, the Internet was supposed to be in flames today, when I got to work and logged-on, I found I could go pretty much anywhere I wanted to go and that my e-mail worked just find, as did both my Internet explorer and my Netscape web browsers. So, I would say that we need deliberation not speed, or as Shakespeare put it "make haste slowly, they stumble that run fast." Turning to the substance of comments, and again I want to stress that we do not feel that it is appropriate for the panel to consider, under the auspices of the White Paper broader issues but because we have always considered debate on these matters important and because this provides a necessary forum for that debate, I am struck by the persistence of an equation that we consider false i.e. that domain name registration is equivalent to trademark registration and that, therefore, rules that are appropriate in the trademark registration world are equally appropriate in the domain name registration world and that this imposes no new burdens on participants. The Internet is a medium of communication on which commerce takes place. It is not itself a medium of commerce. For those of use in the United States this was a key point in Reno versus ACLU which affirmed that the Internet is worthy of the highest degree of first amendment protection, it was not restricted to the level of protection that is afforded to commercial speech, it was given the full range of protections for free speech. Any solution to the perceived problems that flow from this fact is automatically detrimental to the Internet. Any program that precedes from the notion that a domain registration is automatically equivalent to a trademark must be flawed. I also call upon all of those participating in this process to recognize rights in names other than trademark. This was a consistent consensus point in the international forum on the White Paper process which was the open process under which a new corporation was to be formed, under the auspices of White Paper. I further point out that the free speech rights of which, or one of the elements of domain name rights are not limited to the United States, they are incorporated in the United Nations Fundamental Declaration of Human Rights, they are incorporated in European Union documents. They are incorporated in other documents around the world. Free speech and free expression, of course, are just one set of right which domain name holders may own which are not covered by a trademark registration. In the United States it is very common practice for small businesses to begin their development without registering a trademark. Many small businesses and entrepreneurs either do not think of it or cannot afford it and proceed to go on and make money first. There are common law rights of trademark, both in this country and in other countries that need to be recognized and, of course, there are non-commercial uses which are not political speech which are also appropriate to be protected. In considering how to proceed, I draw attention actually to a different WIPO proceeding which were the comments filed by the International Counsel of Scientists in the sui generis protection of databases, that proceeding has some similarity to this proceeding in that what is proposed is a generation of new rights to protect intellectual property extending from an existing structure. The International Counsel of Scientists rightly pointed out that the burden should be on those who are seeking to create a new right to prove that it is necessary and that, with the arsenal of weapons available to rights holders at this time, that case is not met. The International Counsel recognized the detrimental effect that restrictions on communications would have and the restrictions on data transfer would have on individuals, on science and commerce and on developing nations that would feel the brunt of this new restriction. I would say that these arguments are equally applicable in the domain name registration world, that any restrictions on speech, that these restrictions on registration are detrimental not merely to rights of communication but also are detrimental to commerce. I would like to point, in fact, to what I see as a very dangerous direction in which things are moving which is the development of a gild mentality - that the purpose of this proceedings and of other similar proceedings is to protect existing stake holders, that we should proceed slowly and cautiously to determine whether any new gTLDs, for example, enhance commerce as a whole. These are comments we have heard today, this is a comment of the International Chamber of Commerce, which in its principles to address, to create an electronic commerce friendly domain name system has as principle 3: new gTLDs should be created where necessary to improve the functionality and utility of the DNS for businesses and consumers as a whole rather than just to increase business opportunities for new registries themselves. Who decides when a new gTLD enhances the DNS structure? In the free market system, entrepreneurs go out, they develop opportunities and either the market follows or it does not. Sometimes, the market follows, for an institution which is supposed to be unfriendly to commerce such as the Internet, we have seen an astronomical growth in commerce, we have seen commerce grow from being not allowed on the Internet at all, to becoming a major player on the Internet and a driving force behind its further expansion. I put it to you, who are enjoying the benefits of this Internet commerce, under the standards that you would invoke today, if they had been applied in 1990 when the Internet began to transition entirely from an educational network to permitting commercial involvement, whether the Internet would have come into being at all? If we had had a process where for two years the Internet was not permitted to come in while large trademark holders weighed the benefit of allowing new gTLDs to come onto the market and whether this should be allowed under commerce at all, it would not have happened and I submit, that those of you today, who are here arguing for greater restrictions on the development of gTLDs, for the extension of trademark protection, need to keep that in mind. Companies like Bell Atlantic are now making money hand over fist over the Internet, companies like Viacom recognize the importance of the Internet as a means of selling products and as a means of advertisement and perhaps for services yet unknown. We are talking now about broad-bank services coming in, video over the Internet, net services that we cannot even begin to imagine. But how will these new services begin to develop if we cannot allow entrepreneurs the full scope of their creativity. It may seem to us, sitting here today that restricting gTLDs will not create this bottle-neck but how can we tell? How do we know? None of us has a crystal ball to look into the future and again, I posit that if we were having this debate in 1990, based on the evidence that was available then, we would not have gone forward.

Finally, I would like to tell people that in an entrepreneurial world, it is a wild and woolly frontier. No-one argues for the right to infringe, no-one argues for the right to post deceptive information but we have to accept that this is a new era in commerce and that that era implies a period of instability while the laws is resolved and the law is resolving itself. Anybody who follows Internet law knows, as well as I do, that recent decision in the 9th Circuit and in other Circuits in the United States and in other countries, have extended traditional trademark protection to the Internet. There is no need to worry about the case of somebody who takes your name and tries to imply that they are you, traditional trademark law protects you just as much on the Internet as it does anywhere else.

Last, I say that if this proceeds in the way in which it has been proceeding, that we should then turn our attention to the pesky problem of newspapers and magazines which proliferate throughout this country in which anyone may infringe your rights by taking an advertisement in them unchecked by the editorial staff of the newspaper and that if we are to limit gTLDs I propose that we should go to a national newspaper system, one television station and to otherwise restrict those mechanisms in which your trademarks might be infringed.

One last point, actually, which I forgot to mention, I am sorry but I am heard, time and again, the notion that there are consumers out there and there are producers of content out there. On the Internet we are all producers of content, this was again an important point at ACLU versus Reno and it is important to remember that I, as an individual, on my personal website am creating content just as much as those who package it professionally.

Chairperson: Mr. Feld. Thank you very much. Please stay there if I may ask you because I am sure that there is going to be some discussion, I already have one or two person who wish to speak but before they do so, may I just make a few comments?

First of all, your contribution and the contribution of DNRC is most welcome, we regard it as an extremely important contribution to the tension that exists between, and has always existed between intellectual property rights, on the one hand and the discovery of the limits of the intellectual property rights and, as you point out, this is a debate which does not just exist in the area of domain names but it exists in the are of, for example, of the ............... Protection of Databases. So, it is extremely important that we hear your views on this question.

Secondly, I thank you for your observations on the process, we will certainly take them into account. I wanted to ask you one little question on that because it is a process which we do not see as a static process, we have made adaptations to it as we have gone along in response to observations and we will continue to do so. One question I would like to put to you is that, in a very large part of the world, at least in terms of population, there is a fundamental philosophical view that it is impossible to conceive of anything without conceiving of is opposite, that it is impossible to conceive of day without night......................

............... hot without cold, of life without death. So, in the formulation of the details of the terms of reference, one might argue that philosophically it is not possible to conceive of cyberpiracy without conceiving of what is not cyberpiracy. I wonder if you could tell us what cyberpiracy is because, of course, it is a very important design principle, if one were to be looking at a dispute resolution system, to avoid a situation in which the whole of the procedure is taken up with an argument over whether or not the procedure can start. So, can you help us with your understanding of what cyberpiracy is as opposed to what it is not.

Mr. Feld: Well, I think that if that is the question you have based on my criticism of the process then perhaps I have not properly explained myself. I did not object to those elements in the scope of this proceeding which ask for definitions of cyberpiracy, what would essentially amount to what we could, in the United States, a notice of inquiry regarding appropriate definitions. What is objected to by DNRC, as was reflected in our comments, is that there is no need to consider a global solution to these problems, even if you identify problems that are out there, there is no need to consider whether we should add new gTLDs, whether or not we identify that there is a problem of cyberpiracy and whether that problem effects the rights of trademark holders. As for the question you have asked for my definition of cyberpiracy, I would say that, in fact, that is precisely what this proceedings should arrive at, a definition of cyberpiracy, I would be inclined to agree that one might develop indicia, particularly lack of use, registration of large numbers of names, but that caution needs to be exercised in these areas. In particular, that one should look at a number of factors together, for example, if one were to take only the factor of offer to sell the domain name - well it is a very common means of settling trademark disputes, if you have somebody who has a legitimate mark or right to a mark who is challenged by someone who is larger, it is a very common practice for the smaller holder to say "well, I do not admit to wrong-doing, but I will sell the mark". On the other hand, we certainly can find cases where several hundred famous marks have been taken by one person and where there are repeated offers to sell all of these marks - that might be more indicative of cyberpiracy.

Chairperson: Thank you very much. I may have one or two questions if we have time, if I may but I know that Professor Froomkin has been very patient, and who has missed the opportunity several times, would like to say something.

[problem with microphone]

Prof. Froomkin: Is that better, there we go. As I said, if I may have an opportunity this afternoon, I may try to make a fuller statement on some of the things that I am interested and curious about but I did want, since my name was invoked, to make one small point and that is, that it is my understanding, which I would love to have corrected if I have misunderstood it, that everyone on this panel of experts is a public interest representative in an important sense and, certainly from my point of view, they are innocent until proven guilty and I fully expect, based on their reputations although I am not personally acquainted with most of the members of the panel, I have only been on it for about 48 hours, that there would be no question of their guilt. I would be shocked and horrified to find out otherwise. Now, I would be first to recognize, as a lawyer myself, that we are all prisoners of a professional socialization and there is always a danger when you get a group of legal experts together, even those, you know, of different national cultures, that, you know, matters of professional socialization provide a danger of blindness to important interests. For what it is worth, I think my contribution to this policy will be my ignorance, I do not happen to share the professional socialization of a trademark lawyer, not being one and to the extent that I can contribute something here, part of that will be to wave the red flag privately and, if necessary, publicly, those are the dangers of, you know, socialization happening. It has also been my experience in other professional bodies, and in dealing with professionals, that people can rise above professional socialization and one should certainly keep one’s mind open to that theoretical possibility. As I said, on matters of substance, there is a lot that needs to be addressed and if there is a chance this afternoon, perhaps I will do some of that but I just wanted to make that one point now.

Mr. Feld: I would just like to say in response to that, that I certainly agree with both points that we are prisoners of our socialization and that we can rise above it and that certainly it is hoped that we will in this process but that from where we stand that it would be improper not to point to that danger and therefore to be more on guard against it.

Chairperson: Thank you. If I may add also to the observation, because indeed it was one of the points that I was going to make, the point that Professor Froomkin made, in addressing your criticism of the process and I confirm that, indeed, we have proceeded with RFC 2 before the appointment of someone who is coming from the sector of the public interest, I was going to say, as Professor Froomkin has said, that I like to think that even technical persons and lawyers are capable of thinking from time to time about other issues and that public interest matters. Civil libertarian matters are of vital interest to everyone. I came across an interesting statement in the by-laws, iteration of the by-laws that has just been published, concerning the role of directors of the new cooperation and I will refer to it, it says: "Directors shall serve as individuals who have the duty to act in what they reasonably believe are the best interest of the corporation and not as representatives of their supporting organizations, employers or any other organizations or constituencies", which I think is a reasonable statement of what we are expecting, at any rate, of experts, that they are there to articulate the interests of the sector with which they are most familiar, to ensure that those interests, needs and concerns are not over-looked in the process, but not necessarily to be tied down to just one perception of the world. I think Sarah Deutsch on this point, I know John Wood want to make a comment. But if it is on this point, Sarah Deutsch please.

Ms. Deutsch: Yes. I just had two questions. One was a speech question. I wanted to know your view of the Supreme Court case Friedmann versus Rogers and other decisions around the world that have held that misleading speech is not speech. I am also curious as to your saying that trademark owners are alarmist yet you are cooking up one conspiracy theory after another, you know, worthy of an Oliver Stone movie about this whole process but where is your empirical evidence that there is no problem?