ICA Concerns Heard — Copyright UDRP on Indefinite Hold

Executive Summary:

  • The Copyright UDRP proposal unveiled two weeks ago in the Domain Name Association’s Healthy Domains Initiative has been placed on indefinite hold and is unlikely to be revived as a DNA initiative. Public Interest Registry announced on February 23rd that it was pausing its development of the plan and will not revive it absent further notice. One day later DNA stated that it was withdrawing the copyright portion of HDI and would only revisit it after any ICANN contracted party chose to develop and implement a similar plan on its own.
  • ICA played a central role in achieving this implementation moratorium. First, ICA issued two public statements immediately after the DNA’s announcement alerting the Internet community to our strong concerns about the substance and process of a judicial process alternative developed outside of ICANN’s multistakeholder process, especially given its free speech implications and proposed domain transfer remedy. ICA Counsel Philip Corwin then worked with like-minded members of ICANN’s Non-Contracted Party House, as well as with Internet Society members around the globe, to develop a letter to PIR requesting that it halt implementation and engage in dialogue with the broad Internet community before making any final decision on whether and in what form to implement the proposed DRP. That letter is now also on hold given the PIR and DNA announcements.
  • ICA believes that the proper forum for vetting any proposed DRP for copyright infringement is ICANN’s transparent and inclusive multistakeholder policy development process, and that the threshold question to be addressed must be why existing contracted party enforcement of relevant terms of service, combined with use of national copyright laws, is inadequate to address domains used for pervasive copyright infringement. If ICANN undertakes such an inquiry ICA will participate in good faith and with the objective of ensuring the health of the domain name system and the domain name industry through balanced, community-based policies that preserve registrants’ due process rights.

A detailed report on these developments follows.

 

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Two weeks ago the Domain Name Association (DNA) announced the details of its Healthy Domains Initiative (HDI) that included “the creation of a voluntary third party mechanism, similar to the Uniform Dispute Resolution Policy, for handling trademark violations, which would address illegal infringement of copyrighted material through the use of domain names”. An HDI background paper referred to this component as the “PIR proposal”, denoting its origin at the Public Interest Registry and PIR’s intent to be the first registry to implement this new DRP at .Org and the other gTLDs for which it is registry operator.

Both PIR and DNA have now put the Copyright UDRP on indefinite hold. As outlined below, ICA played a leading role in securing that result.

On February 23rd PIR posted the following notice on its website:

Over the past year, Public Interest Registry has been developing a highly focused policy that addresses systemic, large scale copyright infringement – the “Systemic Copyright Infringement Alternative Dispute Resolution Policy” or SCDRP.

Given certain concerns that have been recently raised in the public domain, Public Interest Registry is pausing its SCDRP development process to reflect on those concerns and consider forward steps. We will hold any further development of the SCDRP until further notice. (Emphasis added)

On February 24th the other shoe dropped with a DNA announcement that included the following:

On February 8, the DNA publicly announced the first output of its Healthy Domains Initiative: A set of 37 total “healthy practices” recommendations in four key areas… While each set of recommendations is important, a great deal of attention was focused on the copyright alternative dispute resolution (ADR) proposal—some have characterized it as a needless concession to ill-intentioned corporate interests, represents “shadow regulation” or is a slippery slope toward greater third party control of content on the Internet.

While the ADR of course is none of these, the DNA’s concern is that worries over these seven recommendations have overshadowed the value of the remaining 30. While addressing this and other illegalities is a priority for HDI, we heard and listened to various feedback, and have elected to take additional time to consider the details of the ADR recommendations… the DNA will take keen interest in any registrar’s or registry’s design and implementation of a copyright ADR, and will monitor its implementation and efficacy before refining its recommendations further. (Emphasis added)

While the PRI and DNA statements both leave open the possibility that they might revive development of the Copyright UDRP at some future time, our understanding is that there are no plans to do so. Further, notwithstanding the last sentence of the DNA’s statement, we believe that it is highly unlikely that any individual registrar or registry would advance such a DRP on its own without the protective endorsement of an umbrella trade association, or a multistakeholder organization like ICANN. Ever since the U.S. Congress abandoned the Stop Online Privacy Act (SOPA) in January 2012 after millions of protesting calls and emails flooded Capitol Hill, it has been clear that copyright enforcement is the third rail of Internet policy.

ICA played a leading role in voicing concern and raising questions about the Copyright UDRP.

The day after it was first announced, we blogged the following:

It’s that last proposal that is of greatest concern to ICA and its members, since it would establish proprietary dispute resolution mechanisms that could result in domain extinguishment or transfer. Further, it could set a precedent which trademark owners might cite in seeking privatized “best practices” trademark dispute resolution policies that go beyond whatever community-based consensus policies emerge from ICANN’s ongoing working group reviewing all rights protections mechanisms (RPMs) at all gTLDs. Therefore, ICA plans to take a leading role in analyzing and monitoring the details and implementation of the new “Copyright UDRP” and in exploring means to assure that ICANN-mandated RPMs for trademark owners do not simply become a floor from which they can seek to pressure registries to adopt far more onerous and unbalanced private RPMs… While it’s true that registries have always been able to adopt protective measures that go beyond ICANN requirements – witness the protected marks blocking lists being offered by some new gTLD portfolio owners to TM rights holders as an alternative to sunrise registrations – we believe it is now time to examine and limit that ability in regard to DRPs that can result in the transfer of valuable domains. ICA intends to raise that matter within the ICANN community and to seek allies for the proposition that all parties benefit from the adoption of uniform, consensus-based RPM policies as opposed to a disjointed system of varying RPMs designed to benefit just one side of the debate.

The following day we further explained our concerns:

This proposal would establish a new unregulated private legal dispute system for domain names involving claims of copyright infringement outside of any ICANN-mandated legal rights protection mechanisms (RPMs)… the .Org registry operator, Public Interest Registry (PIR), has already announced its intent to soon launch its own such “Copyright ADRP” that would award domain names to prevailing copyright claimants.

This is a deeply troubling development as ICANN has up to now been the sole source of all domain name related RPMs that can result in domain transfer or suspension at gTLDs.  The ICA is concerned that such a development outside of the ICANN multi-stakeholder, community-based consensus model, without public consultation, effectively circumvents ICANN’s established role and obligations, and may lead to private companies electing to force their own private legal regimes on Internet users and domain name registrants.

ICA Counsel Philip Corwin continued our organization’s involvement in the evolving and heated debate through participation in the Internet Policy email list maintained by PIR’s parent organization, the Internet Society (ISOC).

On February 17th he posted the following to that list:

This past week I have been attending the Intersessional meeting of ICANN’s Non-Contracted Party House (NCPH) in Reykjavik, Iceland in my capacity as one of the GNSO Councilors representing the Business Constituency (BC – and noting that the BC has not taken any position on any component of HDI and that this communication is being undertaken in my ICA role and not on behalf of the BC). During the meeting I engaged in conversations with many other members of the NCPH who share substantial concerns regarding the Copyright ADRP and its imminent implementation by PIR.

Those concerned NCPH delegates have asked me to draft a letter that can be signed by individuals and organizations requesting that PIR and ISOC undertake an open and transparent dialogue with the broad Internet community before making any final decision on whether and in what form to implement the Copyright ADRP. We share the common belief that PIR, as the registry operator affiliated with ISOC, has a particular responsibility to engage in such a dialogue before granting ISOC’s implicit blessing to an unprecedented dispute resolution procedure concerning copyright disputes. That is particularly true given that the DNA developed the HDI components without undertaking the broad outreach and discussion beyond its membership that it had initially indicated would be forthcoming.

On February 23rd, just after the PIR notice of intent to halt implementation was posted to the ISOC email list by Sally Wentworth, ISOC’s Vice President for Global Policy Development, Corwin posted this response:

Thank you for alerting us to the posting of this important statement by PIR. I welcome the announcement that PIR “is pausing its SCDRP development process to reflect on those concerns [raised in the public domain]” and “will hold any further development of the SCDRP until further notice”.

Last Friday I posted an email to this list stating in part that “concerned NCPH [ICANN Non-Contracted Party House] delegates have asked me to draft a letter that can be signed by individuals and organizations requesting that PIR and ISOC undertake an open and transparent dialogue with the broad Internet community before making any final decision on whether and in what form to implement the Copyright ADRP”. The threshold purpose of this letter was to convince PIR to halt any rush toward SCDRP implementation and to use that time out to consider the many concerns that have already been raised, as well as engage in a more expansive dialogue that included detailed discussion of the substance of the underlying and so far unrevealed draft policy and rules for the SCDRP.

Now that PIR has voluntarily declared a pause to any further development of the SCDRP I no longer see any immediate need to send a letter requesting such action. I do hope that PIR’s “forward steps” will include a broader engagement and dialogue with concerned parties. I thank all those parties who privately noticed me of their interest in signing such a letter, and I look forward to working with them and all other concerned parties as the situation develops.

While the draft letter was just about to be circulated for review at the time of the PIR announcement, expressions of interest in signing it had been received from multiple members of the NCPH as well as from individual and organizations (including national ISOC chapters) around the globe.

The Copyright UDRP initiative clearly elicited deep concern from multiple parties with varied Internet policy interests, and ICA commends PIR and DNA for recognizing the validity of those concerns and halting implementation and further development of the proposal.

As noted in ICA’s initial statements on the copyright UDRP, we believe that ICANN’s transparent and inclusive multistakeholder policy development process (PDP) is the most appropriate venue for consideration of any “private legal dispute system for domain names involving claims of copyright infringement”. The opening step to initiating such a PDP would be a request for ICANN staff to develop an Issues Paper outlining the scope of the underlying problem and the available mechanisms for ICANN’s contracted parties to address domains implicated in pervasive copyright infringement, as well as the legal and operational issues that would arise in the development of a new copyright DRP. It would be particularly important for such a document to examine whether existing means, such as registry/registrar enforcement of standard Terms of Service (TOS) that prohibit the use of domains for such unlawful purposes as IP infringement, as well as use of national notice-and-takedown laws such as the U.S. Digital Millennium Copyright Act (DMCA), are insufficient to address the problem – which should be a threshold determination before any further development of a Copyright UDRP is undertaken.

If ICANN undertakes such an inquiry ICA will participate in good faith and with the objective of ensuring the health of the domain name system (DNS) and the domain name industry through balanced and community-based policies that effectively address IP infringement while maintaining procedural and substantive due process for domain registrants.          

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