Mixed IP reaction to government gTLD advice

IP owners have provided a mixed response to government calls for tougher safety measures applying to new generic top-level domains (gTLDs).

The Governmental Advisory Committee (GAC) issued its  advice in April, calling for two applications – .africa and .gcc – to be rejected and raising concerns about a number of others, including branded bids for .amazon and .patagonia.

In a wide-ranging communiqué, the GAC also recommended that six safeguards, including tougher enforcement penalties, be applied to all new gTLDs. Five more measures should specifically apply to certain gTLD categories, including IP-related strings such as .movie and .music, the GAC said.

The Internet Corporation for Assigned Names and Numbers (ICANN) opened a public comment period asking for reactions to the advice. Before the window closed on May 14, there was a rush of responses, some of which came from trademark and copyright owners.

The Motion Picture Association of America (MPAA), which represents major movie studios, responded through senior vice president Linda Kinney, who urged ICANN to adopt the GAC’s proposed safeguards – especially those applicable to all new gTLDs, which include periodic security checks.

These six safeguards are “critical for new gTLDs at higher risk of abuse, such as those targeted at industries that depend on copyright protection”, Kinney said.

She added: “MPAA member studios already experience consistently high levels of copyright infringement under the current regime, which is much more contained. Without appropriate protections, we are concerned that new gTLDs may develop into havens for piracy and copyright infringement.”

The MPAA believes that predictable, real and immediate consequences for copyright infringers would provide “teeth for enforcement actions to deter and punish violations”.

Kinney’s sentiments were echoed by Meredith Baker, senior vice president, government relations at the recently-merged mass media and telecoms company Comcast/NBC Universal, who said that ICANN should follow the GAC’s advice.

Baker said that while the GAC’s recommendations arrived late in the day, many of them “go to the very heart of the success and stability of the new gTLD programme”. Integrating them now – before the first new gTLDs go live – Baker said, “could decrease the likelihood of abuse”.

Speaking about the five proposed safeguards for specific gTLD categories, which include IP and professional services, Baker said that while there should be a reasoned debate about their definition, “it is more than reasonable that a definition be established, and that new gTLDs meeting that definition be subject to stricter requirements”.

Marques, an association of European brand owners, said it is important for governments to recognise that certain “target sectors face persistent intellectual property abuse”, according to Nick Wood, vice chair of the cyberspace team.

Wood said: “It is time for registry operators to self-regulate more responsibly and to take positive steps to combat abusive behaviours happening under their watch. Registry operators, as intermediaries, rightly enjoy broad safe harbours and immunities for third party conduct; we feel the time has come, however, for them to do more to retain this status.”

But Marques believes that the safeguards should be implemented only after “requisite ICANN community support” and that they should not delay the gTLD programme.

Wood said: “There will always be more safeguards that can be added, and if ICANN does not keep moving, we could find ourselves in this same spot next year, or the year after; for some, the safeguards will never be enough.”

If the GAC’s proposals cannot be introduced in the short term, Wood said, they should form the basis for policies that are enforced after the first gTLD round is completed.

“To introduce post hoc changes to applications and business models now risks the credibility of ICANN and the governments participating in its multi-stakeholder experiment,” Wood said. “ICANN’s commitment to the multi-stakeholder model hangs in the balance.”

In a strongly-worded statement, Wood said Marques is angry about the GAC’s worries over specific gTLD applications – including trademarked terms – which have been deemed potentially problematic.

“The GAC’s suggestion that certain applications should be re-considered turns individual governments into supra-national trademark arbiters, which sets a dangerous precedent. It amounts to individual governments holding a veto over applications, and creating new law through the auspices of ICANN. This plainly exceeds the intended powers of the GAC,” said Wood.

“It allows the sensitivities of individual governments with national or political interests to overturn legitimate global intellectual property rights,” he added.

Marques has called for ICANN to reject this part of the GAC’s advice, because approving it would undermine “ICANN’s credibility and erode global business confidence”.

It is unclear how ICANN will respond to the GAC advice. There is a strong presumption that ICANN follows the GAC’s recommendations if they follow a consensus decision – such as with .africa and .gcc. The GAC is expected to make a final decision about the viability of applications such as .amazon and .patagonia, which have not yet been subject to consensus decisions. A committee dedicated to new gTLDs will now assess the public comments, before deciding how ICANN should respond to government demands.