A German court has reached the rather startling conclusion that a domain registrar can be held responsible for alleged copyright infringement at a website even though its only contact with it was to perform the original domain registration. As reported by PC Advisor on February 7th, “A domain name registrar can be held liable for the copyright infringements of a website it registered if it is obvious the domain is used for infringements and the registrar does nothing to prevent it, the Regional Court of Saarbrücken in Germany has ruled.” (http://www.pcadvisor.co.uk/news/tech-industry/3501030/german-court-finds-domain-registrar-liable-for-torrent-sites-copyright-infringement/)
The dispute involved Universal Music, which is rather notorious for its litigiousness, and the website h33t.com, a torrent tracker site that allegedly contained a link allowing downloads of Robin Thicke’s “Blurred Lines” CD (we’d provide a link to the #1 hit song’s rather salacious lyrics, but if we that did Universal might come after us).
Key-Systems, which registered the domain but was not hosting it, argued that it was not responsible for the copyright infringement, but the court ruled that it had a duty to investigate and to take corrective action if the copyright infringement was “obvious”. According to Key’s General Counsel, Volker Greimann, “The courts’ definition of what is obviously violating is however extremely broad and the duty to act is expanded to deactivation of the entire domain even if only one file or link is infringing.” We know Volker well from interactions at ICANN meetings, and in an e-mail exchange he explained that Key directed Universal to the webhosting company and the registrant, but that Universal continued its litigation against them instead – we can speculate that their aim may have been less to shut down the offending link than to set a broad new legal precedent.
Key is currently considering whether to appeal, with Volker observing, “If left unchallenged, this decision would constitute an undue expansion of the legal obligations of each registrar based in Germany, endangering the entire business model of registering domain names or performing DNS addressing for third parties.” If the ruling stands Key-Systems faces a potential fine of 250,000 Euro ($339,000).
For now, the disturbing decision is simply one of a single German court and only has ramifications for registrars subject to German jurisdiction. In the United States, Section 512 of the Digital Millennium Copyright Act (DMCA) provides a safe harbor for online service providers (OSPs) that provide notice-and-takedown capability for the expeditious removal of infringing material and the removal of repeat infringers; OSPs include Internet service providers and certain other online intermediaries (for more background see http://en.wikipedia.org/wiki/Online_Copyright_Infringement_Liability_Limitation_Act and http://en.wikipedia.org/wiki/Online_service_provider). U.S. registrars regularly receive notice-and-takedown requests from copyright owners when they are hosting a particular website alleged to be infringing.
We wish Key-Systems well if they decide to appeal this disturbing decision. The registrar marketplace is highly competitive, and the German decision heaps a huge amount of responsibility on a company that only collected a few Deutschemark for facilitating a domain registration and had no further business relationship with the domain registrant or the website.
As Mr. Thicke sang in his summer of 2013 hit song:
Talk about getting blasted
I hate these blurred lines
So do we.
While it took three months, ICANN recently responded to the Business Constituency’s fall 2013 letter raising questions about the UDRP Status Report issued the day after the conclusion of the July 2013 Durban ICANN meeting. In a key clarification, ICANN’s response concedes that the Report does not predetermine the outcome of UDRP reform efforts slated to begin in spring 2015 — stating, “As with all PDP recommendations, ICANN would follow the Bylaws in how those recommendations are considered and implemented…the Status Report was not intended to cause any confusion or supplant any future community discussion on the issue of ICANN’s relationships with UDRP providers.”
The Internet Commerce Association and the Domain Name Association will be represented together at a Breakout Panel Session during the NamesCon domain industry conference slated to take place next week in Las Vegas. ICA Counsel Philip Corwin and DNA Executive Director Kurt Pritz will be the two speakers at “Your Voice in the New Marketplace: TheDNA.org and ICA — Promoting the adoption of domain names and being heard in Domain Name rules, policy, standards and governance” taking place at 11:05 – 11:50 am on Wednesday, January 15th in Room C at the Tropicana Hotel. We congratulate the NamesCon organizers for hosting a sold-out event that has reached full capacity of 450 attendees. And, after seven years as the sole trade association dedicated to DNS issues, we welcome the DNA to the fray – while we expect some overlap in membership, the two organizations are more complimentary than competitive although there may well be issues on which we can work cooperatively.
Details are starting to emerge about the Brazilian meeting on Internet Governance scheduled to take place in Sao Paulo this coming April, and they make it clear that the Brazilian host is in firm control and that governments and UN-affiliated International Governmental organizations will make up half the participants – with all the other business, technical, academic and civil society stakeholders sharing the other half. That seems pretty unbalanced for a meeting that has been characterized by some as focused on reinforcing support for the multistakeholder model (MSM) in general and ICANN in particular.
Yesterday ICA filed a letter that generally supported the GNSO Council’s recent and unanimously adopted Resolution on Protections for International Governmental and Non-Governmental Organizations (IGOs & INGOs). In particular, while supporting strong protections for exact matches of their full names at the top and second level of the DNS, we were pleased that the Resolution did not grant undue protections to acronyms of their names, and did not put existing acronyms at incumbent gTLDs at unreasonable risk.
But it turns out that ICA was the only organization to file a supportive comment in the initial comment round (the reply period is now open until January 8th) – and that the UN has coordinated a flood of letters (found at http://forum.icann.org/lists/comments-igo-ingo-recommendations-27nov13/), all protesting that the Resolution does not go far enough to protect those acronyms. Besides the UN, such organizations as NATO, WIPO (which is a UN agency), and Interpol say it doesn’t do enough to prevent potential misuse of those acronyms, especially at new gTLDs.
Deloitte, the ICANN-appointed operator of the Trademark Clearinghouse (TMCH), has unilaterally decided that the complainant services side of the Trademark Claims Service will operate for an indefinite period, rather than the required 90-day period set by the consensus agreement of ICANN stakeholders regarding the implementation of new gTLD rights protection measures (RPMs).
This decision is strikingly wrong and extremely worrisome for multiple reasons:
It was made without community consultation or ICANN public approval and announced in a completely non-transparent manner (in fact, it wasn’t really announced at all, but leaked to a few domain industry publications).
It effectively encourages rights holders to file UDRP or URS actions against innocent and uninformed registrants who received no warning that their new gTLD domain name matched an entry in the TMCH database.
It sets a precedent that the CEO of the TMCH says may be the basis for offering a similar and possibly expanded service covering domain registrations at .Com and other incumbent gTLDs – possibly as early as Spring 2014!
On December 4th the Ninth Circuit Court of Appeals issued a decision that will reverberate for years to come in cybersquatting cases brought under the Anticybersquatting Consumer Protection Act (ACPA). While the Court’s declaration that “the ACPA does not provide a cause of action for contributory cybersquatting” is important in itself, its dicta regarding the history of the ACPA – finding that “Congress did not incorporate the common law of trademark, including contributory infringement, into the ACPA” – will likely have broad future repercussions.
The Brazilian Internet Steering Committee (CGI.br) has issued an Announcement (http://www.nic.br/imprensa/releases/2013/rl-2013-62.htm) about planning for the Global Multistakeholder Meeting on Internet Governance that will take place in Sao Paulo on April 23-24, 2014. Extended discussion of the background developments leading up to the request made by ICANN CEO Fadi Chehade to Brazilian President Dilma Roussseff that Brazil host a meeting on Internet Governance, as well as the potential merits and risks of the meeting and the means by which various stakeholders could impact its planning, was a central aspect of last week’s ICANN meeting in Buenos Aires.
The following remarks were delivered to ICANN’s Board and senior staff by ICA Counsel Philip Corwin during the Public Forum (http://buenosaires48.icann.org/en/schedule/thu-public-forum) held on the afternoon of Thursday, November 21st at the 48th ICANN meeting in Buenos Aires, Argentina:
Good afternoon. Philip Corwin, speaking on behalf of the Internet Commerce Association, which I am proud to represent on the Business Constituency [BC].
As the new gTLD program launches there will be a focus on the operation of the new rights protection mechanisms – the RPMs.
We know that trademark owners will be watching. But so will registrants. And their perception of whether domains at new gTLDs have secure legal status, whether they are protected from abusive hijacking and can provide a sound foundation for business and speech, will impact the long-term success of the program.
ICA remains concerned that the Trademark Claims Notice is still flawed. We filed comments on this but no changes were made.
We will be watching to see how receipt of that flawed Claims Notice bears on the question of whether a domain registration was made in bad faith, which will arise in both URS and UDRP actions filed against domains at new gTLDs. That will be up to the arbitration providers, who may well reach different conclusions. This again points out the need for a better agreement between ICANN and URS providers than the current two-page MOU.
There also should be a standard enforceable agreement between ICANN and UDRP providers, a position endorsed by the BC. In September the BC sent a letter to ICANN that raised questions about the UDRP Status Report issued the day after the Durban meeting ended. Two months later the BC is still waiting for a response.
So, absolutely, trademark rights must be protected. But registrant rights must be protected as well, through fair, consistent, and balanced application of the new RPMs and the UDRP.
[Note: As the official transcript of the Public Forum is not yet available, this statement has been transcribed from the speaker’s outline for his remarks.]
ICANN CEO Fadi Chehade told members of its GNSO Council in Buenos Aires this morning that his recent initiatives resulting in the recent Montevideo Statement on Internet governance and the spring 2014 meeting on this subject to be held in Brazil were sanctioned by a September 15th ICANN Board resolution that has been withheld from the public, but will published shortly.
Declaring, “I’m tired of being defensive.” Chehade also stated that Brazil will announce tomorrow that “the first global multi-stakeholder meeting on the future of Internet governance” will be held in Sao Paulo on April 23-24, 2014. Chehade described the Board’s directive to him as one to “energize” the debate on Internet governance – and then, after saying “I’m done. I have de-calcified and energized the process and will no longer be in the center”, he called on the ICANN community to “mobilize” and weigh in on the Brazil agenda and format.
Council members – already feeling that recent moves under Chehade constituted top-down decision-making that were marginalizing the Council’s role, and concerned that the Brazil meeting would distract ICANN management from critical responsibilities including the ongoing rollout of new gTLDs — raised a variety of questions about the meeting, including whether Brazil understood the multistakeholder model in the same way as ICANN participants and what was meant by the call of the Brazilian Internet Steering Committee (CGI – http://www.cgi.br/english/) for equitable redistribution of Internet resources? They also asked what would happen to the meeting’s aims when other governments, many of which support a multilateral, government-centric approach, weighed in?
Chehade also revealed that the meeting was being planned by Brazil in conjunction with 1Net (http://www.1net.org/content/en), a coalition of the technical “I organizations” that signed the Montevideo Statement calling for the globalization of ICANN and IANA, a phrase interpreted as meaning the cessation of all residual US control. [Note: More information about 1Net can be found in this Internet Society posting http://www.internetsociety.org/blog/2013/11/internet-governance-update and this Centr.org briefing paper https://exchange.sierracorporation.com/owa/redir.aspx?C=nv8b4cfef0SaBSqmAn_nySP7GXJnt9AI31EzsaA5qNaPZ2080UjYmJdA0bJhBzsKEupdHrbUbGY.&URL=http%3a%2f%2fcentr.org%2fsystem%2ffiles%2fagenda%2fattachment%2fcentr-ig_update-20131107.pdf.]
Chehade stressed in his remarks that the Brazil meeting was meant to supplement the Internet Governance Forum but would not produce decisions and would eschew “topics” (including, emphatically, surveillance issues raised by the Snowden NSA revelations), and be limited to discussing “frameworks and principles”. This seems somewhat at odds with the fact that any meeting likely to attract more than a thousand attendees will surely have a detailed agenda and may be called upon by them to produce at least some final declarations – as well as Chehade’s noting in a recent blog post (http://blog.icann.org/2013/11/internet-governance-update/) that a major shortcoming of the IGF was that “it is not a decision making forum”. This raises the question of what added value is the Brazil meeting if it has the same limitation?
The dialogue continued at an afternoon session between the Council and the ICANN Board. Chairman Steve Crocker stated that the Board was convinced of the need to create a broad-based community beyond ICANN and the “I organizations” to support the multi-stakeholder model, but had withheld disclosure of their directive to Chehade to downplay ICANN’s role as he conducted outreach. Board member Olga Madruga-Forti told Council members that the Board decision should be seen as one that maintained confidentiality, and not being secretive or conspiratorial. Council members did not question this explanation but did ask, now that the Brazil meeting was on the 2014 schedule, what ICANN was doing to ensure that it was successful?
The general response was that it was now up to the community to mobilize and engage via 1Net. Yet our discussions with many Buenos Aires attendees indicate a great deal of concern about negative results coming out of the Brazil meeting, and some considerable unhappiness that the community was being asked to mobilize for a meeting it had neither requested or been consulted about.
The stakes are high for domain investors and all business users of the Internet, and ICA will continue to monitor developments closely. Clearly, multiple questions persist about the process so far and where this is heading.