Briefing on ICANN’s
proposed gTDL Policy
and the Relationship
between Trademark Rights and Freedom of
Expression
June 25, 2007
Statement by Wolfgang
Sakulin
PhD Candidate
Institute for Information
Law (IViR), University of
Amsterdam, The Netherlands
In response to a
request of the
ICANN’s Non-Commercial Users Constituency (NCUC) and IP Justice, I
respectfully submit this legal assessment of ICANN’s Generic Names
Supporting
Organization’s (GNSO) proposed generic top-level domain (gTLD) policy
recommendations.
This briefing shall address the proposal for Recommendations 2, 3 and
6.
In addition to the
existing
generic top-level domains (gTLDs) (“.com” or “.net” etc.) and the
recently
introduced top level domains (“.biz” or “.prof” etc.), ICANN is will
introduce
new gTLDs. For the orderly distribution of new gTLDs it seems necessary
that
ICANN is seeking to establish a policy. Considering the fact that ICANN
is a
primarily technical organization, it is laudable that the proposed daft
policy
recommendations do make reference to the applicable international legal
framework. It is also understandable that ICANN takes into account past
experience with e.g. cyber-squatting. However, as NCUC’s Comments of 12
June
2007 importantly point out, the policy does not yet adequately reflect
all
applicable international law. In particular, norms relating to freedom
of
expression need to be reflected in a more balanced fashion in the draft
policy.
This briefing shall
elaborate on
this need form an International and European perspective. First, I will
raise
two important points relating to ICANN’s position as monopolist and to
ICANN’s
law-making powers. Second, I address the applicable international and
European
rules on trademark law and freedom of expression. Third, I will address
Recommendation 3 and the problem of protection trademark interests
within a TLD
policy. Fourth, I shall briefly address Recommendation 2 and the
question of
importing unfair competition standards into TLD policy. And fifth, I
shall
address Recommendation 6 and the political and legal implications of
introducing standards of morality and public order into ICANN’s TLD
policy.
1. ICANN &
Policy Making
ICANN
is a private non-governmental organization that is developing a policy
for the
orderly distribution of gTLDs. Of course, there is nothing
extraordinary in the
fact that a private organization draws up a policy for the distribution
of its
goods or services. However, for two reasons, the distribution of gTLDs
differs
significantly from the distribution of other goods. First, gTLDs are
part of
the addresses of an essential global communication facility, the
Internet. Each
gTLD is a unique resource and thus cannot be substituted like other
ordinary
goods. Second, there are no alternative entities from which an
applicant may
obtain a gTLD. ICANN will operate as a global monopolist in handing out
TLDs.
In addition, ICANN seems to position itself as the monopolist
adjudicator of
disputes over gTLDs. This means that ICANN’s position vis-à-vis its
clients is
not horizontal as is the case between ordinary contracting parties, but
it is
more vertical like that between a government entity that issues permits
and a
citizen. This special position of ICANN has the significant implication
that a
gTLD policy has the quality of a law rather than of a business policy.
Therefore, there is a strong need for the respect of basic rule of law
concepts. Notably, policy-making should be democratically legitimized
and the
fundamental rights of people that are touched upon must be respected.
However, ICANN is not
democratically empowered by the global Internet community to legislate,[1]
nor is ICANN bound formally by human rights standards. In fact, ICANN
as a
private organization is not formally bound by any international law in
its
policy making process. It is no party to the Paris Convention for the
Protection of Industrial Property, nor TRIPs, nor international human
rights
conventions such as the International Covenant on Civil and Political
Rights,
nor any other international legal instrument for that matter.
Fortunately,
ICANN’s own Articles of Incorporation bind ICANN “to carry out its
activities in conformity with the relevant principles of international
law and
applicable international conventions”.[2]
This does however not take away the problem surrounding the democratic
legitimization
of ICANN’s policies.
Consequently, on the
one hand
that, at the very minimum, decisions of ICANN must be subject to review
by
national courts at all times if a party so wishes. This is not the
least
mandated by the human right to have one’s case heard before a competent
tribunal.[3]
On the other hand, many parties, including NCUC have argued that ICANN
should
restrict itself to regulating only what is required form a technical
viewpoint
and to abstain from regulating content-related issues, i.e. to keep the
core
neutral.
Past experience shows
that ICANN
does not restrict itself to regulating technical matters. Domain name
policies
that have been developed under the auspices of ICANN are providing
significant
protection to trademark interests.[4]
This is understandable and necessary, but if ICANN engages in
non-technical
policy making than all applicable norms must be considered. This
includes norms
of international trademark law[5],
freedom of expression,[6]
norms protecting designations of geographical origin,[7]
and possibly norms protecting indigenous/minority cultural heritage or
language.[8]
None of these norms grant an exclusive, unchallengeable right in a
domain name
or a TLD. Instead, they need to be weighed carefully against each
other. Here
lies thus a significant challenge for ICANN as monopoly distributor and
monopoly arbiter on gTLDs to consider adequately all applicable norms
in a
balanced decision making process.
I shall restrict my
analysis to
the relationship between trademark law and freedom of expression in TLD
policy.
2.
Freedom of Expression, Trademark Law and Top-level Domains
Freedom
of expression is codified in international instruments that enjoy
almost global
recognition. Article 19 UDHR as international source of freedom of
expression. Without
a doubt, the UDHR is morally the most authoritative document on human
rights.
The legally binding counterpart of Article 19 UDHR is Article 19 of the
1966
International Convention on Civil and Political Rights (ICCPR).[9]
This convention is binding upon almost all countries around the world.[10]
Whereas the provisions of the ICCPR cannot be invoked by individuals in
all
countries,[11]
governments
in countries that have ratified the convention are bound by it at least
in
their law making processes. This includes the governments of countries
that
traditionally oppose freedom of expression, like China, Iran, or
Tunisia.
In
addition, several regional human rights conventions protect freedom of
expression. In Europe, the European Convention for the Protection of
Human
Rights and Fundamental Freedoms (ECHR) is adhered to by 46 states. The
ECHR
takes a rather special position amongst human rights conventions,
because its
rights can be invoked in a national procedure by any person within the
de-facto
power of a Member State.[12]
After exhaustion of domestic remedies, one may take one’s case to the
European
Court of Human Rights (ECtHR) in Strasbourg. Article 10 ECHR protects
freedom
of expression, and there is an abundance of national and ECtHR case law
on
Article 10 ECHR.[13]
Other
regional freedom of expression norms can be found in Article 9 of the
African
Charter on Human and People’s Rights[14]
and Article 13 of the American Convention on Human Rights.[15]
The most influential
national
provision protecting freedom of expression is without a doubt the
United States
Constitution’s First Amendment.
All these provisions differ slightly concerning their scope of
the subject
matter they cover and the range of persons that is entitled to claim
the right.
In
the following discussion, I will focus on Article
19 ICCPR and Article 10 ECHR.
Similarly
to freedom of expression trademark rights enjoy global recognition.
Both the
Paris Convention for the Protection of Industrial Property (Paris
Convention)[16]
and the Agreement on Trade Related Aspects of Intellectual Property
Rights
(TRIPs)[17]
are adhered to by most states worldwide. Within the European Union (27
Member
States) national trademark laws have been harmonized by the Trademark
Directive
of 1989 (EU-TMD).[18]
In addition, a system of trademarks that are valid all throughout EU
territory
has been established by the Trademark Regulation of 1994 (EU-TMR).[19]
3.
TLDs, Trademark Law and Freedom of Expression
|
GSNO Recommendation
3: 18 June 2007 |
Strings must not
infringe the existing legal rights of others that are recognized or
enforceable under generally accepted and internationally recognized
principles of law. Examples of these legal
rights that are internationally recognized include, but are not limited
to, rights defined in the Paris Convention for the Protection of
Industrial Property (in particular trademark rights), the Universal
Declaration of Human Rights and the International Covenant on Civil and
Political Rights (in particular freedom of speech rights). |
Discussion
Recommendation 3 seems
fairly
balanced. However, as experience with UDRP arbitrations and a range of
national
cases show, free expression rights are not always adequately respected
in
domain name disputes. On the contrary, trademark rights receive strong
protection. Therefore, I share NCUC’s concern that strengthening of
free
expression rights in gTLD policy is needed.
TLD Policy and Freedom
of Expression
The
majority of holders and
applicants for domain names and TLDs are protected by freedom of
expression.
This follows form the broad interpretation of the scope of Articles 19
ICCPR
and 10 ECHR. Article 19 ICCPR refers to the right to “receive
and impart information and ideas of all kinds”, Article 10 ECHR refers to the freedom
“to hold opinions and to receive and impart information and ideas”. The ECtHR ruled that Article 10 is not
restricted
to certain categories of information, ideas or forms of expression that
are of
a certain democratic value[20], but that e.g. economic reporting, radio
programs
with popular music, commercial information or advertisements are
equally
covered.[21] Similarly, the European Court of
Justice, the
Supreme Court in maters concerning EU law accepted the applicability of
Article
10 ECHR in cases concerning the application of EU law to media mergers
(antitrust law)[22] or advertising.[23]
In
Europe, the range of persons that can claim the
right is broad. Under the ECHR, freedom of expression can be claimed by
a
person, organization or group of persons who are victims of a violation. This
applies to
natural and legal persons.[24]
However, under Optional Protocol 1 to the ICCPR, only individuals may
address the Human Rights Committee with a complaint. Still under
national
provisions, like the United State’s First Amendment, entities and
companies may
claim freedom of expression.[25]
Of
course, none of the provisions that protect freedom of expression is
absolute.
Article 19.3 and Article 10.2 ECHR do allow for a range of restrictions. Amongst others these articles allow
restrictions in order to protect the rights of others or for reasons of
public
policy or morality. However, any restriction on freedom of expression
must not
reach further than necessary to achieve the aim. This requirement of
proportionality under Article 19 ICCPR has been confirmed in General
Comment 10
of the Human Rights Committee.[26]
Under Article 10 ECHR this requirement is stated in paragraph 10.2 “The exercise of these freedoms …
may be subject to such formalities,
conditions, restrictions or penalties as are prescribed by law
and are
necessary in a democratic
society”. This has
been confirmed and elaborated upon numerous times by the ECtHR.[27]
Accordingly,
norms protecting freedom of expression need to be respected in domain
name and
TLD policy, but trademark rights or prohibitions of cyber-squatting may
put
valid limitations upon the freedom.
TLD
Policy and Trademark Rights
The main concern of
trademark
right holders with regard to domain names is cyber-squatting. It is
understandable that ICANN responds to demand for protection by
trademark right
holders in the TLD policy. However, trademark rights provide only
protection in
part against cyber-squatting.
The
aim of trademark law is to stimulate competition and to ensure fairness
between
parties in trade. To achieve this aim trademark law protects the
function of
trademarks to identify the source of a product.[28]
This function produces two significant benefits. First, as indicators
trademarks enable consumers to recognize qualities of a product and
second as
communicators trademarks enable companies to inform consumers about
product
qualities. In order to protect this function, trademarks are protected
against
confusing uses by other parties in trade. In addition, Article 6bis
Paris
Convention mandates that well-known trademarks are protected against
dilution.
This means that their distinctiveness and possibly their reputation
must be
protected. Article 5.2 EU-TMD and Article 9.1.c EU-TMR prohibit damage
to the
repute and distinctiveness of well-known trademarks. In addition, they
prohibit
the taking unfair advantage of the repute or distinctiveness of
well-known
trademarks.
In
particular, the provisions relating to the protection of trademarks
against
dilution might be applicable to TLD registration processes. In certain
cases in
the Benelux countries (The Netherlands, Belgium and Luxembourg),
confusion
protection has been invoked in order to achieve protection against
cyber-squatting.[29]
But
applying confusion standards of e.g. Article 5.1.b. EU-TMD to TLDs will
not be
possible, because, equal as under U.S. law,[30]
they presuppose that the mark is used in a concrete case for particular
goods
or services. It is highly unlikely that TLDs will satisfy this
requirement.
In
general, I concur with the opinion expressed by Prof. Haight Farley and
Prof.
Lipton, that certain differences between trademarks and domain names
must be
considered, when granting trademark rights an influence on TLD policy.
I shall
briefly summarize them here.
-
First, the scope of trademark rights is limited to the behavior of
parties in
trade. [31]
Trademark
law is an offspring of the law sanctioning unfair competition. Parties
that do
not participate in trade remain outside the scope of trademark law. An
important exception to this rule is Article 5.5 EU-TMD. It allows for
the
optional enforcement of trademark rights outside the scope of trade.
This
provision has been implemented solely by Benelux countries where it has
received criticism.[32]
In
contrast, TLDs will be used for all kinds of commercial and
non-commercial
purposes.
- Second, trademark law
protects
only signs that are distinctive of a source. TLDs might fulfill this
function,
but they might also just describe or refer to content on the page.
- Third, generic terms
are not
protected by trademark law, since they are not distinctive of source
but
distinctive of a product quality. Allowing a company to register a
generic term
deprives other companies to refer to that product quality and thereby
hampers
competition. The European Court of Justice held in a case concerning
the use of
geographic indication as trademark, that such is not allowed if this
indication
were to be associated by consumers with a certain product quality.[33]
On the contrary, domain
names
often are linguistically generic, so might be gTLDs.
- Fourth, trademarks
differ from
TLDs because trademark rights are limited in scope. They are granted
for a
certain class of goods and they do apply with territorial limitations.
Only
well-known trademarks are protected in an overreaching manner and only
as far
as their fame reaches.
- And fifth, trademark
law knows
important exceptions that allow for referential or descriptive use.
Accordingly,
with the exception of the Benelux countries, European trademark law
applies to
TLDs only where they are used by a third party in trade. Ordinary
confusion
protection of trademarks will not extend to TLDs. Therefore, only
dilution
protection extends to TLDs.
Conflicts
between Freedom of Expression and Trademark Rights
Unlike United States
trademark
law, European Union trademark law does not provide for a fair use
defense. The
provisions that protect trademarks against dilution can only be
overcome, if a
defendant can demonstrate a ‘due cause’ for using the trademark.[34]
Due cause has often been interpreted restrictively. It was held to
apply only
if no alternative means of expression were available.[35]
The European Court of
Human Rights
has so far not ruled on the issue whether and when Article 10 ECHR can
set
aside dilution protection. In some cases it has ruled, that where an
individual
has access to a different terminology to express,[36]
or where a different location to hold protests was available,[37]
a prohibition to use a platform, to use a term, or to enter a shopping
center
was not violating Article 10 ECHR. This could mean that where
alternative ways
of expression are available, freedom of expression will not prevail
over
trademark rights. In Appleby, the ECtHR stated that “Article 10 ECHR
does
not grant a right to access to private property”.
In my opinion, applying
an
alternative means of expression test in a conflict between freedom of
expression and trademark rights is too restrictive. First, the cases
about real
property rights cannot be analogically applied to intellectual property
rights
cases. Real property rights grant wide exclusivity that is not bound by
any
aims. This includes the right to disallow access to protesters to a
shopping-mall (Appleby). Trademark rights only grant limited
exclusivity that
is restricted by statutory limitations and the aim of trademark law,
i.e. to
increase competition in the market place and to ensure fairness between
parties
in trade.
Second, even in purely
commercial
cases, European rules on comparative advertising set aside an
alternative means
of expression test, if harm or drawing benefits is limited.[38]
Third, applying such a
test
assumes that there are viable alternatives available to speakers. In
many
cases, there will be a no viable alternative to the use of a word-mark
in a
TLD. With regard to well-known trademarks it seems logical, that the
more the
trademark comes to represent an icon or a (social) phenomenon the
greater is
the need for protection of third parties’ free expression rights.[39]
This is in line with ECtHR jurisprudence that provides generally very
strong
protection to political expression and criticism, or parody.[40]
I also think that generic uses of words should remain possible.
Criticism
and Parody
In non-domain name
cases, the
right to criticize companies by the use and transformation of
trademarks has
been confirmed by various courts.[41]
The European Court of Human Rights states with regard to criticism:
“Freedom of
expression
constitutes one of the essential foundations of such a society, one of
the
basic conditions for its progress and for the development of every man.
Subject
to paragraph 2 of Article 10 (art. 10-2), it is applicable not only to
‘information’ or ‘ideas’ that are favourably received or regarded as
inoffensive
or as a matter of indifference, but also to those that offend, shock or
disturb
the State or any sector of the population. Such are the demands of that
pluralism, tolerance and broadmindedness without which there is no
‘democratic
society’.”[42]
Jurisprudence
with regard to domain name cases is divided on the issue of allowing
criticism.
In the light of the ECtHR’s clear interpretation of Article 10, this is
surprising, but it might be due to the fact that full recognition of
freedom of
expression by courts in this area of the law has yet to be achieved.
In France, the Supreme
Court ruled in the “www.jeboycottedanone.fr” case, that a criticism
site did
not infringe the trademark right in “Danone”.[43]
In Germany, the right of e.g. Greenpeace to operate a critical website
about
the oil company Total-Fina Elf (www.oil-of-efl.de)[44]
as well as a critical website about ESSO (www.stopesso.de) was upheld
in two
decisions.[45]
In the
latter case the German court held that “a company cannot use
trademark law
to prevent its name being used within the framework of a critical
consideration
of its activities”.[46]
Also, the Higher Regional Court of Hamburg confirmed the free
expression right
of ex-employees to operate a critical gripe website
(www.awd-aussteiger.de).[47] In a case surrounding the website
www.scheiss-t-online.de a German court,[48]
and in a case about the website www.injeholland.nl a Dutch court[49]
both found against the defendant’s free expression right.
Interestingly, in a
“trademark.tld” case, the defendant’s free expression right was held to
trump
applicant’s trademark rights. The case involved the critical website
www.castor.de that lobbied against the company’s involvement in atomic
waste
transportation. The court held that the name at stake had been come to
signify a
social problem rather than solely being a trademark.[50]
Also
under the Uniform Dispute Resolution Policy numerous decisions have
been taken
in cases where free expression and trademark rights were involved. In
particular, disputes involving critical “trademark.com” and
“trademarksucks.com” sites have been the subject of adjudication. The
UDRP
acknowledges that there has to be a balance between trademark rights
and
freedom of expression, but UDRP Panels seem split on the issue of
allowing such
sites. In some “trademark.tld” cases panels have found for the alleged
infringer on grounds that they were engaging in legitimate criticism.[51]
However, panelists also often find “trademarksucks.tld” sites confusing
and do
not easily recognize that “legitimate criticism” was at stake.[52]
With regard to a case
involving
commercial aims, the German Supreme Court recently confirmed that
freedom of
expression does provide a defense in trademark disputes. In a case
involving a
humorous post card, it clarified that, even where there are certain
commercial
aims involved, i.e. the sale of a postcard, a parody of a trademark can
be
justified by artistic freedom.[53]
This court made it quite clear that “if the postcard does not vilify
the
plaintiff’s trade mark and if it is not shown that the defendant was
solely
pursuing a commercial objective, the protection of artistic freedom
must
prevail…”[54]
Generic
Uses
Another
key problem with extending trademark protection to domain names or TLDs
is,
that ordinary language, i.e. generic, uses will be sanctioned. In a
Dutch case,
Kimberly Clark, holder of the trademark “page” for toilet paper
objected to the
use of the domain name “page.nl”.[55]
The company lost because the court recognized that page is an ordinary
English
and French word and that this provided a “due cause” to use the
trademark. This
seems to be in line with the above argument that generic terms should
remain
available to domain name or TLD applicants.
Conclusion
To conclude, the
relationship
between trademark law and freedom of expression is far from settled in
the
European context. However some conclusions might be drawn from the
preceding
paragraphs.
-
First, only trademarks
that receive anti-dilution
protection should be protected in TLD policy.
-
Second, where no
commercial aims are at stake,
anti-dilution protection of trademark law should not apply.
-
Third, in case of bad
faith, like clear cut
cyber-squatting (where a party has the intention to solely gain profit
from
registering a TLD without any expressive intention or effect what so
ever)
freedom of expression cannot set aside valid trademark rights.
-
Third, in cases that
are in between these extremes, a
delicate balance must be sought. The presence of a commercial aim of
the
speaker is not sufficient to conclude that freedom of expression does
not
apply.
-
Applying an
“alternative means of expression” test may
infringe free expression rights in particular with regard to well-known
trademarks and generic words.
-
According to the ECtHR
criticism must receive strong
protection.
4. Importing
Standards of
Unfair Competition and Trademark Law into TLD Policy
|
Recommendation 2: -
18
June 2007
|
Strings must not be
confusingly similar to an existing top-level domain. |
Because
of Prof. Haight Farley more elaborate answer on this point, I want to
keep this
discussion very short. This standard of confusion is simply too
restrictive.
With
this recommendation, ICANN is importing a standard from trademark law
into TLD
policy. However, ICANN needs to realize that these trademark standard
may be
misplaced in a TLD policy. As already elaborated in the preceding
paragraphs,
trademark law and domain names serve different functions. Notably,
trademark
law does not apply outside trade. In addition, trademark law knows
various
limitations and applies the confusion test only to concrete situations.[56]
If ICANN applies this standard to all expression it will subject
non-commercial
expression to unduly stringent criteria that might violate applicant’s
free
expression rights.
Accordingly,
while situations of running bad faith typo-squatting registries should
be
avoided,[57]
I must urge
ICANN to amend Recommendation 6 with a reference to respect of
applicant’s free
expression rights and to limit Recommendation 6 in line with trademark
law,
i.e. to apply it only to situations in trade and to make include
limitations
that allow referential use and free expression.
5. Freedom of
Expression,
Morality and Public Policy
|
Recommendation 6 18 June 2007 |
Strings must not be
contrary to generally accepted legal norms relating to morality and
public order that are enforceable under generally accepted and
internationally recognized principles of law. Examples of such
limitations that are internationally recognized include, but are not
limited to, restrictions defined in the Paris Convention for the
Protection of Industrial Property (in particular restrictions on the
use of some strings as trademarks), and the Universal Declaration of
Human Rights (in particular, limitations to freedom of speech rights). |
Discussion
In my opinion, this is
the most
problematic recommendation. It brings up two distinct problems. First,
on a
political level, it might be unwise for ICANN to adopt a provision on
morality
and public order. Second, on a judicial level, it seems that the GNSO
is also
here trying to apply restrictive unfair competition standards to all
parties. I
shall briefly elaborate on these two problems.
Opening
the Gate for Restrictive Local Standards
ICANN must understand
that it will
be engaging in censoring expression on the basis of political
preferences in an
area where uniform international rules on free expression do exist, but
where
political opinion greatly diverges. If Recommendation 6 is introduced,
states
with repressive attitude towards free expression might feel called upon
to
aggressively lobby for the respect of their restrictive local standards.[58]
Domain names are of
global reach
and domain name censorship does have global effects. Global minimum
standards
of freedom of expression, like Article 19 ICCPR, and not local
standards must
therefore apply to TLDs.[59]
Even countries like China, Iran and Tunisia are bound by the ICCPR.[60]
But if ICANN introduces Recommendation 6, it will open an easy
procedure for
governments to push forward restrictive policies.
The dilemma is that
ICANN will
likely be putting itself into a position, where it must defend free
expression
rights as granted by Article 19 ICCPR against the will of its
constituents. I
wonder whether ICANN will be able to provide the kind of judicial
impartiality
that is needed for this process. Experience with the “.xxx” domain
would lead
one to conclude the opposite.[61]
In light of this
experience and in
light of the democratic legitimacy problems raised under heading 1.
above, I
urge ICANN to reconsider adopting Recommendation 6.
Should ICANN choose to
regulate on
basis of recommendation 6, adjudicators at ICANN need to understand how
limits
on freedom of expression must be assessed.
Morality, Public
Order and
Freedom of Expression
The GSNO states that
Recommendation 6 is borrowed directly from trademark law. The GSNO also
makes
reference to Article 19.3 ICCPR and its provision on limitation of
freedom of
expression for reasons of morality. However morality in trademark law
and in
freedom of expression must be interpreted differently.
Article
10 ECHR protects opinions that “shock, awe or disturb”. This is
demanded by pluralism, tolerance, and broadmindedness “without which
there
is no ‘democratic society’.”[64] Article
10.2 allows certain restrictions due to morality and public order. For
instance,
hate-speech (e.g. racist propaganda) is not protected under Article 10
ECHR.
Hate-speech is considered to violate the values that underlie the ECHR
itself
(e.g. protection of the dignity of humans). Therefore, it is contrary
to
Article 17 that prohibits invoking the Convention for actions that are
aimed at
the destruction of rights under the same Convention. It is in this
context that
the ECtHR has tolerated criminal provisions that sanction holocaust
denial. [65]
Article 20 of the ICCPR is even clearer. It provides that “any
advocacy of
national, racial or religious hatred that constitutes incitement to
discrimination, hostility or violence shall be prohibited by law”.
The ECtHR does however
asses the
kind of expression at stake always on a case by case basis. This means
that it
considers not all the facts of a concrete case including the expression
itself,
but also the identity of the speaker and the recipients. Applying this
to TLDs
that would mean that granting the right to run a registry of white
supremacy
sites under the TLD “.endloesung” (final solution) will not be
protected by the
ECHR, because is racist. Granting the right to run a registry under the
TLD
“.holocaust” to a foundation that is devoted to the preservation of the
memory
of the holocaust may well be covered by freedom of expression.
Furthermore,
morality has been successfully invoked before the ECtHR several times
to
restrict free expression.[66]
It is worthwhile noting that the ECtHR leaves to states a “wide margin
of
appreciation” in cases concerning morality. This means that it conducts
only
limited review of national decisions because it realizes that standards
of
morality are not uniform around Europe. Still national courts must
consider
which restrictions on freedom of expression are strictly necessary in a
democratic society and they must allow opinions that shock awe and
disturb.
In
my opinion, the respect for diverse moral standards makes sense when
dealing
with cases coming from the 46 ECHR Member States. However, with respect
to TLDs
that have global reach, the argument of diverse moral standards is less
convincing.
Conclusion
- For political
reasons, ICANN
might want to reconsider adopting Recommendation 6.
- Standards of morality
and public
order similar of those are included in trademark law cannot be applied
to
non-commercial TLD applicants. In addition, in Europe, these trademark
standards seem to carry little force.
- Morality and public
order are
accepted as limitations upon freedom of expression in Europe. For
instance,
hate-speech is not protected under the ECHR. However, also in cases
involving
morality limitations must not go further than what is necessary in a
democratic
society. Opinions that shock, awe, and disturb must be allowed.
- The ECtHR respects
moral
diversity amongst ECHR Member States. However, with respect to TLDs
that have
global reach, the argument of diverse moral standards is less
convincing.
6. Summary of the
Arguments
ICANN’s Law-making
capacity:
-
ICANN’s legitimacy in
law-making may be disputed.
-
Therefore, at a
minimum, there must be a possibility
to appeal TLD decisions of ICANN.
-
In addition ICANN might
want to restrict its
regulations to what is strictly necessary from a technical viewpoint.
-
ICANN’s gTLD policy
should respect all relevant
international law. This is mandated by ICANN’s special position
vis-à-vis
applicant and by ICANN’s own Articles of Incorporation.
Recommendation 3:
-
Only trademarks that
receive anti-dilution protection
should be protected in TLD policy.
-
Where no commercial
aims are at stake, anti-dilution
protection of trademark law should not apply.
-
In case of bad faith,
like clear cut cyber-squatting
(where a party has the intention to solely gain profit from registering
a TLD
without any expressive intention or effect what so ever) freedom of
expression
cannot set aside valid trademark rights.
-
In cases that are in
between these extremes, a
delicate balance must be sought. The presence of a commercial aim of
the
speaker is not sufficient to conclude that freedom of expression does
not
apply.
-
Applying an
“alternative means of expression” test may
infringe free expression rights in particular with regard to well-known
trademarks and generic words.
-
According to the ECtHR
criticism must receive strong
protection.
Recommendation 2:
-
ICANN should amend
Recommendation 2 with a reference
to respect of applicant’s free expression rights and it should limit
Recommendation 2 in line with trademark law, i.e. to apply it only to
situations in trade and to make include limitations that allow
referential use
and free expression.
Recommendation 6:
-
For political reasons,
ICANN might want to reconsider
adopting Recommendation 6.
-
Standards of morality
and public order similar of
those are included in trademark law cannot be applied to non-commercial
TLD
applicants. In addition, in Europe, these trademark standards seem to
carry
little force.
-
Morality and public
order are accepted as limitations
upon freedom of expression in Europe. For instance, hate-speech is not
protected under the ECHR. However, also in cases involving morality
limitations
must not go further than what is necessary in a democratic society.
Opinions
that shock, awe, and disturb must be allowed.
-
The ECtHR respects
moral diversity amongst ECHR Member
States. However, with respect to TLDs that have global reach, the
argument of
diverse moral standards is less convincing.
Respectfully submitted,
Wolfgang Sakulin
PhD candidate,
Institute for
Information Law (IViR)
University of Amsterdam
Rokin 84, 1012 KX
Amsterdam
The Netherlands
Phone: +31 20 525 3324
Fax: +31 20 525 3033
e-mail: w.sakulin@uva.nl
www : www.ivir.nl
[1] Compare, Nunziato, D. C.,
'Freedom of Expression, Democratic Norms, and Internet Governance', Emory
Law Journal (52)
187-279.
[2] Articles of Incorporation of
Internet Corporation for Assigned Names and Numbers, 21 November 1998,
Article
4 “The Corporation shall operate for the benefit of the Internet
community as
a whole, carrying out its activities in conformity with relevant
principles of
international law and applicable international conventions and local
law and,
to the extent appropriate and consistent with these Articles and its
Bylaws…”
[3] In the international context
this right is codified in e.g. Article 8 UDHR; Article 14 ICCPR;
Article 6
ECHR.
[4] See e.g. Paragraph 4, Uniform
Domain-Name Dispute Resolution Policy. See also the WIPO paper on new
gTLDs
that advocates for the protection of trademark interests.
[5] Article 6 and 7 of the 1967
Paris Convention, Articles 15 to 21 of the 1996 TRIPs Agreement
[7] Article 10 Paris Convention;
Articles 22 and 23 of TRIPS; The Madrid Agreement for the Repression of
False
or Deceptive Indications of Source (1981).
[9]
Article 19 ICCPR states :
1.
Everyone shall have the right to hold opinions without interference.
2.
Everyone shall have the right to freedom of expression; this right
shall
include freedom to seek, receive and impart information and ideas of
all kinds,
regardless of frontiers, either orally, in writing or in print, in the
form of
art, or through any other media of his choice.
3.
The exercise of the rights provided for in paragraph 2 of this article
carries
with it special duties and responsibilities. It may therefore be
subject to
certain restrictions, but these shall only be such as are provided by
law and
are necessary:
(a)
For respect of the rights or reputations of others;
(b)
For the protection of national security or of public order (ordre
public), or
of public health or morals.
[10] See status of Ratification at
www.unhchr.ch.
[11] Additional Protocol 1 provides
individuals with a possibility to address claims to the Human Rights
Committee,
based in Geneva, Switzerland.
[12] Compare ECtHR, Banković and Others v. Belgium and 16
Other
Contracting States (dec) [GC] no. 52207/99, ECHR 2001-XII,
para. 80.
[13] Article 10 ECHR states:
Freedom
of expression
1
Everyone
has the right to freedom of expression. This right shall
include freedom to hold
opinions
and to receive and impart information and
ideas without interference by public authority and
regardless of frontiers. This
article shall not prevent States from requiring
the licensing of
broadcasting, television or cinema
enterprises. 2
2
The exercise of these freedoms, since it carries with it duties and
responsibilities,
may be subject to such formalities, conditions,
restrictions or penalties as are prescribed by
law and are necessary in a democratic
society, in the interests
of national security, territorial integrity or public safety, for
the prevention
of disorder or crime, for the protection
of health or morals,
for the protection of the reputation or
rights of others, for preventing the disclosure of
information received in confidence,
or for maintaining the
authority and impartiality of the
judiciary.
[15]
American Convention on Human Rights, 1144
U.N.T.S. 123, Article 13
states:
“Freedom of
Thought and Expression
1.Everyone has the right to
freedom of thought and expression. This right includes freedom to seek,
receive, and impart information and ideas of all kinds, regardless of
frontiers, either orally, in writing, in print, in the form of art, or
through
any other medium of one's choice.
2.The exercise of the right
provided for in the foregoing paragraph shall not be subject to prior
censorship but shall be subject to subsequent imposition of liability,
which
shall be expressly established by law to the extent necessary to
ensure:
1.respect for the rights or
reputations of others; or
2.the protection of
national security, public order, or public health or morals.
3.The right of expression
may not be restricted by indirect methods or means, such as the abuse
of
government or private controls over newsprint, radio broadcasting
frequencies,
or equipment used in the dissemination of information, or by any other
means
tending to impede the communication and circulation of ideas and
opinions.
4.Notwithstanding the
provisions of paragraph 2 above, public entertainments may be subject
by law to
prior censorship for the sole purpose of regulating access to them for
the
moral protection of childhood and adolescence.
5.Any propaganda for war
and any advocacy of national, racial, or religious hatred that
constitute
incitements to lawless violence or to any other similar action against
any
person or group of persons on any grounds including those of race,
color,
religion, language, or national origin shall be considered as offenses
punishable
by law.”
[16] Paris Convention for the
Protection of Industrial Property, last amended 28 September 1979, to
be found
on www.wipo.int.
[17] Agreement on Trade Related
Aspects of Intellectual Property Rights (TRIPs), 15 April 1994, to be
found on www.wto.org.
[18] Directive no. 104/89/EEC.
[19] Regulation no. 40/94/ EC.
[20] ECtHR 16 December 1992, Hadijanastassiou
v. Greece,
Series A-252, para 39.
[21] In Casado Coca v Spain, the ECtHR held that the
intention behind an expression does not have a bearing upon the
entitlement to
the right. “Article 10 guarantees freedom to ‘everyone’. No
distinction is
made in it according to whether the type of aim pursued is
profit-making or not.” (para.
35). However, the rationale
behind granting protection for
commercial expression differs form the rationale for protecting
political and
artistic expression. Whereas in the case of artistic expression the
self-development of the individual is protected (e.g. ECtHR 24 May
1988, Mueller
and others v. Switzerland, Series A-133) and in case of political
expression public debate and
truth are at stake, it are the rights of the recipients, i.e. the
consumers,
that are protected in case of commercial expression (ECtHR 17 Oktober
2002, Stambuck
v. Germany,
para.
39). This means that the scope of commercial expression is somewhat
more
limited than political expression. Information that serves to confuse
or
mislead will certainly not be covered.
[22] E.g. Case 352/85 Bond van
Adverteerders and others v. The Netherlands State [1988] ECR 2085; Case
C-260/89 Ellinki Radiophonia
Tiléorassi AE and Panellinia Omospondia Syllogon Prossopikou v.
Dimotiki
Etairia Pliroforissis and Sotirios Kouvelas and Nicolaos Avdellas and
others [1991] ECR I-2925; Case
C-288/89 Stichting Collectieve Antennevoorziening Gouda and others
v
Commissariaat voor de Media [1991]
ECR I-4007; Case T-266/97 Vlaamse Televisie Maatschapij NV v.
Commission of the European Communities [1999] ECR II-2329; Commission Decision
96/346/EC RTL/Veronica/Endemol [1996] OJ L 134/32.
[23] E.g. Case C-368/95 Vereinigte
Familiapress Zeitungsverlags- und vertriebs GmbH v Heinrich Bauer Verlag [1997] ECR I-3689; Case
C-71/02 Karner
[2004] ECR I-3025.
[24] See Casado Coca v. Spain, para. 35; ECtHR 13 February
2003, Cetin and others v. Turkey, para. 57.
[25] E.g. U.S. Supreme Court, 9
September 1977, First National Bank of Boston v. Belotti, 435 U.S. 765.
[26] Human Rights Committee, General
Comment No. 10: Freedom of expression, Article 19, 29 August 1983: . “Paragraph 3 expressly
stresses that the exercise of the right to freedom of expression
carries with
it special duties and responsibilities and for this reason certain
restrictions
on the right are permitted which may relate either to the interests of
other
persons or to those of the community as a whole. However, when a State
party
imposes certain restrictions on the exercise of freedom of expression,
these
may not put in jeopardy the right itself. Paragraph 3 lays down
conditions and
it is only subject to these conditions that restrictions may be
imposed: the
restrictions must be "provided by law"; they may only be imposed for
one of the purposes set out in subparagraphs (a) and (b) of paragraph
3; and
they must be justified as being "necessary" for that State party for
one of those purposes.”
[27] E.g. ECtHR, 12 June 2001,
Feldek v. Slovakia, where the
court held: “This freedom is subject to the exceptions set
out in Article 10 § 2, which must, however, be construed strictly.”
[28] See Directive no. 89/104/EEC (OJ
1989, L 40/01), Article
2.
[29] Alberdingk Thijm, C., Domeinnamen
vs. Merkenrecht,
in: Het Nieuwe Informatierecht. Nieuwe regels voor
het
internet, Academic Service: Den Haag 2004, p. 117.
[30] See the Statement of Prof.
Haight Farley of 6 June 2007.
[31] Article 5 of the European
Trademark Directive (ETMD); Article 9 of the European Trademark
Regulation
(ETMR).
[32] See e.g. Tsoutsanis, A.
"The Biggest Mistake of the European Trade Mark Directive and Why the
Benelux is Wrong Again: Between the European Constitution and European
Conscience." European Intellectual Property Law Review (2006), p. 74-82.
[33] Joined Cases C-108/97 and
C-109/97 Windsurfing Chiemsee [1999] ECR I-2779.
[34] Directive no. 104/89/EEC,
Article 5.2: “Any Member State may also provide
that the
proprietor shall be entitled to prevent all third parties not having
his
consent from using in the course of trade any sign which is identical
with, or
similar to, the trade mark in relation to goods or services which are
not
similar to those for which the trade mark is registered, where the
latter has a
reputation in the Member State and where use of that sign without due
cause
takes unfair advantage of, or is detrimental to, the distinctive
character or
the repute of the trade mark.”
[35]
Benelux Court of Justice, 1 March 1975, ‘Claerijn/Klarijn’,
NJ 1975, 472.
[36] ECtHR, 21 March 2000, Andreas
Wabl v. Austria.
[37] ECtHR, 6 May 2003, Appleby
and others v. The Untited Kingdom, 2003-VI.
[38] Directive 97/55/EC; Case
C-71/02 Karner [2004] ECR
I-3025.
[39] Compare e.g. the judgment in
www.castor.de (Regional High Court Hamm (Germany), 18 February 2003, 9U
136/02), where the court held that the name at stake had been come to
signify a
social problem rather than solely being a trademark.
[40] This protection not only accorded
to journalists, but also to pressure groups or individuals that operate
on the
Internet. ECtHR, 15 February 2005, Steel and Morris v. The United
Kingdom.
[41] See e.g. Paris Court of
Appeal, 16 November 2005 (Esso); Paris Court of Appeal, 17 November
2006
(Areva); German Supreme Court, 3 February 2005, BGH I ZR 159/02
(Milka).
[42] ECtHR, 7 December 1976, Handyside
v. The United Kingdom, Series
A Vol. 24.
[43] Paris Court of Appeal, 30
April 2003, Assoc. Le Réseau Voltaire pour la liberté d’expression
v. Sté Gervais
Danone, 2003
D. AJ 1760.
[44] Kammergericht Berlin, 23
October 2001, KG5 U 101/01.
[45] Hamburg District Court 10 June
2002, 2002 MD 9, at 947.
[46] Ibid.
[47] Regional High Court Hamburg,
18 December 2003, 3U 117/03.
[48] Regional Court Düsseldorf, 30
January 2002, 2a O 245/01. The worrying reasoning of this court was
that a
private person operating a complaint forum, is furthering the interests
of
competitors, and is therefore operating “in trade”.
[49] The Hague District Court, 21
June 2005, KG 05/447.
[51] See e.g. WIPO Arbitration and
Mediation Center, 22 April 2004, Case no. D2004-0014, “hjta.com”.
[52] See e.g. WIPO Arbitration and
Mediation Center, 12 November 2001, Case no.
D2001-1195,“philipssucks.com”; WIPO
Arbitration and Mediation Center, 20 July 2000, Case no. D2000-0477,
“walmartsucks.com”.
[53] German Supreme Court, 3
February 2005, BGH I ZR 159/02 (Milka).
[54] Ibid., translation taken from
Geiger, C., Trade Marks and Freedom of Expression, IIC Vol. 38 (2007), p. 322.
[55] Regional Court Amsterdam, 17
October 2002, Page.nl, Domjur.nl nr. 2003, p. 32.
[56] Comapre the Statement by Prof.
Haight Farley.
[57] A clever typo-squatter
recently revealed that he had almost achieved this by concluding a deal
with
Cameroonian officials, country code “.cm”, to register large number of
sites
with names identical to high traffic “.com” sites. People, who would
wrongly
enter “site.cm” in stead of “stie.com” in the address bar of their
browser,
would end up on his sites that showed no more than advertisements. www.cnnmoney.com,
22 May 2007.
[58] Compare the recent successful
attempt by China to lay its will upon the United Nations Human Rights
Council.
www.bbc.co.uk, 19 June 2007.
[59] There is of course a
difference with respect to national TLDs.
[60]
See www.unhchr.ch.
[62] Directive no. 104/89/EEC,
Article 3.1.f; Regulation no. 40/94/ EC, Article 7.1.f.
[63] There are various E.U.
trademark registration that feature sexually explicit terms or the
words “God”
or “Allah”. Compare also the U.S. Trademark Registration nr. 2806237
“Made in Allah’s Image” with the recent tensions arising form the
publication
of cartoon depicting Allah and the prophet Mohammed.
[64] ECtHR, 7 December 1976, Handyside
v. The United Kingdom, Series
A Vol. 24.
[65] CASE. Laws punishing holocaust
denial exist for instance in Austria, Belgium, the Czech Republic,
France,
Germany, Israel, Lithuania, Poland, Slovakia, and Switzerland (source
BBC).
[66] E.g. ECtHR, ,Otto Preminger
Institut v. Austria, Series A
295-A; ECtHR, 10 July 2003, Murphy v. Ireland, 2003-IX.