At first blush, Mahmoud Ahmadinejad and the Globally Protected Marks List (GPML) do not seem to have anything in common. The first is a politician of debated repute that is seeking to quell disputes over the legitimacy of his election. The second is a recommendation that seeks to protect trademark owners and consumers from an explosion of infringement and source confusion that could be wrought by the introduction of new Top-Level Domains (TLDs). However, upon a closer analysis, they do share one common flaw: both have arguably failed to appropriately prioritize the right to free speech.
In Iran, Ahmadinejad, according to major new organizations, leads a government that has placed restrictions on what the press can cover and publish and what people may say in public. Clearly, some, and certainly Ahmadinejad, would argue that these restrictions on speech are necessary to protect the orderly occurrence of commercial and social intercourse in Iran. However, equally clearly, many would argue that these dictates violate at least one traditional, admittedly American, norm regarding speech — the prohibition on its 'prior restraint.' In order words, it isn't 'fair' or 'right' that the Ahmadinejad government has stopped people from reporting or speaking before it is known whether what they intend to say or publish will actually cause unrest.
In the IRT Final Draft Report, a recommended new mechanism, the GPML, is proposed, which will:
I. prevent individuals from applying to create a new TLD that is identical or confusingly similar to certain 'globally protected marks' until the party interested in running the TLD has gone through a not insignificant administrative process and proven "that the applied-for TLD is not sufficiently similar (visually, aurally, and in commercial impression) as to be likely, as a matter of probability and not mere possibility, to deceive or cause confusion or that it otherwise has legitimate rights to use the applied-for TLD", IRT Final Draft Report, p 19., and
II. prevent individuals from registering domain names in a new TLD that are identical to certain 'globally protected marks' until they prove that the "registration would be consistent with generally accepted trademark laws; namely, that its use of the domain name would not infringe the legal rights of the GPM owner." IRT Final Draft Report, p 19. Or more explicitly stated, in such cases, "[t]o overcome the block, the applicant must show that it has a right or legitimate interest in the initially blocked name." Id.
Just as in the Ahmadinejad case, some would argue that these restrictions are necessary to protect the orderly occurrence of commercial and social intercourse on the Internet. However, also as in the case above, many would argue that these rules violate the traditional American and Internet norm that prohibits 'prior restraints.' In other words, it isn't 'fair' or 'right' for ICANN to stop people from creating TLDs or registering domain names before it is known whether the use of a word in the TLD or domain name, in fact, infringe upon the rights of a trademark holder.
Given the centrality of the idea of 'prior restraint' to this post, it seems important to outline the concept more definitively. Thus, more specifically, 'prior restraint' is the creation of any mechanism that effectively prevents or retards an individual from speaking or publishing material until they can prove the truthfulness or legitimacy of words they intend to speak or the material they intend to publish. See Near v. Minnesota, 283 U.S. 697 (1931). In the Ahmadinejad case we see a 'prior restraint' on speech until the speaker or publisher can show the Iranian government that the speech (broadly construed) will not to cause unrest in the population. In the GPML case, we see a proposed 'prior restraint' on the publishing of a TLD or domain name into the DNS until the publisher can prove that they have a 'legitimate' interest in the word or words at issue.
The concept of 'prior restraint,' and rationale supporting the argument that it is prohibited by the US Constitution, was established in Near v. Minnesota. In Near, the Court justified its opposition to 'prior restraints' in this way: "The fact that the liberty of the press may be abused by miscreant purveyors of scandal does not make any the less necessary the immunity of the press from previous restraint in dealing with official misconduct. Subsequent punishment for such abuses as may exist is the appropriate remedy, consistent with constitutional privilege." 283 U.S. 697, 720. Paraphrasing in common parlance the essence of the argument, the Court found that just because some (even many) people behave badly (even very badly), doesn't mean that their bad behavior justifies prohibitions on innocent actors. Or, in the current context - don't punish the grower that wants to register 'apple.food' just because some miscreant wants to sell knock off computers on 'apple.deals.'
However, notwithstanding the potentially undesirable comparison between Ahmadinejad and the GPML recommendation in IRT Final Draft Report, one might legitimately ask — who cares, why does this matter? GPML proponents may say 'so what if the GPML clamps down a little on free speech, trademark violators are out there hurting businesses and individuals every day, it is justified and, come to think of it, who said we couldn't!?!'.
With regard to the relevance of this issue in the ICANN context (other spaces are more appropriate to debate the appropriateness of Ahmadinejad's actions), this burgeoning system of 'prior restraints' on TLDs and domain name registrations arguably: (I) contradicts one of the IRT's own "framework and considerations", see IRT Final Draft Report, P. 11., for the development of a trademark protection scheme and (II) potentially opens up ICANN and the new gTLD process to a legal attack from free speech advocates and organizations.
More specifically with regard to the former issue, the IRT Final Draft Report states that its "recommendation[s] should protect the existing rights of trademark owners, but neither expand those rights nor create additional legal rights[.]" Id. Given the importance of the importance of the concept of 'prior restraint' in the context of the American legal tradition, not to mention in the context of the Internet's cultural tradition, it is difficult to imagine how the bestowing the right of 'prior restraint' on the owners of 'globally protected marks' meets this test. More specifically with regard to the latter issue, given the centrality and strength of the prohibition on 'prior restraints' in United States constitutional jurisprudence and that ICANN is inextricably linked and/or given authority by a federal agency of the United States government, it seems apparent that any opponent to the proposed scheme would have, at least at first blush, a credible argument to make before US courts, should they desire to prevent the implementation of the IP Clearing House recommendation into the new TLD space.
In closing, it is worth noting that nothing in this post should be construed as a disrespectful to the members of the IRT, all of whom have good intentions and who worked very hard on the Final Draft Report, or of the ability of its recommendation to prevent trademark infringement, clearly they would. Rather, it is my hope that this post will, at the least, spur debate about the importance of free speech as an equally important element in the discussion of the appropriate protections to be afforded to trademark holders in the context of new gTLDs.
By Graham Chynoweth, VP Busniess Operations & General Counsel, Dyn Inc.
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