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Fight as ICANN “backtracks” on piracy policing

Kevin Murphy, July 1, 2016, 08:49:32 (UTC), Domain Policy

ICANN has clarified that it will not terminate new gTLD registries that have piracy web sites in their zones, potentially inflaming an ongoing fight between domain companies and intellectual property interests.
This week’s ICANN 56 policy meeting in Helsinki saw registries and the Intellectual Property Constituency clash over whether an ICANN rule means that registries breach their contract if they don’t suspend piracy domains.
Both sides have different interpretation of the rule, found in the so-called “Public Interest Commitments” or PICs that can be found in Specification 11 of every new gTLD Registry Agreement.
But ICANN chair Steve Crocker, in a letter to the IPC last night, seemed to side strongly with the registries’ interpretation.
Spec 11 states, among other things, that:

Registry Operator will include a provision in its Registry-Registrar Agreement that requires Registrars to include in their Registration Agreements a provision prohibiting Registered Name Holders from distributing malware, abusively operating botnets, phishing, piracy, trademark or copyright infringement, fraudulent or deceptive practices, counterfeiting or otherwise engaging in activity contrary to applicable law, and providing (consistent with applicable law and any related procedures) consequences for such activities including suspension of the domain name.

A literal reading of this, and the reading favored by registries, is that all registries have to do to be in compliance is to include the piracy prohibitions in their Registry-Registrar Agreement, essentially passing off responsibility for piracy to registrars (which in turn pass of responsibility to registrants).
Registries believe that the phrase “consistent with applicable law and related procedures” means they only have to suspend a domain name when they receive a court order.
Members of the IPC, on the other hand, say this reading is ridiculous.
“We don’t know what this clause means,” Marc Trachtenberg of the IPC said during a session in Helsinki on Tuesday. “It’s got to mean something. It can’t just mean you have to put a provision into a contract, that’s pointless.”
“To put a provision into a contract that you’re not going to enforce, has no meaning,” he added. “And to have a clause that a registry operator or registrar has to comply with a court order, that’s meaningless also. Clearly a registry operator has to comply with a court order.”
Some IPC members think ICANN has “backtracked” by introducing the PICs concept then failing to enforce it.
IPC members in general believe that registries are supposed to not only require their registrars to ban piracy sites, but also to suspend piracy domains when they’re told about them.
Registries including Donuts have started doing this recently on a voluntary basis with partners such as the Motion Picture Association of America, but believe that ICANN should not be in the business of content policing.
“[Spec 11] doesn’t say what some members of the IPC think it says,” Donuts VP Jon Nevett said during the Helsinki session. “To say we’re in blatant violation of that PIC and that ICANN is not enforcing that PIC is problematic.”
The fight kicked off face-to-face in Helsinki, but it has been happening behind the scenes for several months.
The IPC got mad back in February when Crocker, responding to Governmental Advisory Committee concerns about intellectual property abuse, said the issue “appears to be outside of our mandate” (pdf).
That’s a reference to ICANN’s strengthening resolve that it is not and should not be the internet’s “content police”.
In April (pdf) and June (pdf) letters, IPC president Greg Shatan and the Coalition for Online Accountability’s Steve Metalitz called on Crocker to clarify this statement.
Last night, he did, and the clarification is unlikely to make the IPC happy.
Crocker wrote (pdf):

ICANN will bring enforcement actions against Registries that fail to include the required prohibitions and reservations in its end-user agreements and against Registrars that fail to main the required abuse point of contact…
This does not mean, however, that ICANN is required or qualified to make factual and legal determinations as to whether a Registered Name Holder or website operator is violating applicable laws and governmental regulations, and to assess what would constitute an appropriate remedy in any particular situation.

This seems pretty clear — new gTLD registries are not going to be held accountable for domains used for content piracy.
The debate may not be over however.
During Helsinki there was a smaller, semi-private (recorded but not webcast live) meeting of the some registries, IPC and GAC members, hosted by ICANN board member Bruce Tonkin, which evidently concluded that more discussion is needed to reach a common understanding of just what the hell these PICs mean.

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Comments (11)

  1. Eric Lyon says:
    July 1, 2016 at 4:23 pm

    Interesting! Though, it appears there is still going to be more discussion, so this isn’t a final ruling per-say. It’s sad to think that content piracy won’t be enforced, as it leaves the doors open to even more content theft. In my opinion, Copyright protected content should have royalty payments just like movies, music, and images.

    Reply
    • John Berryhill says:
      July 1, 2016 at 5:50 pm

      Have you ever seen the stream of ridiculous demands that are made to registrars and registries by overheated lawyers every single day?
      Lawyers lie. Lawyers abuse processes.
      The hypocrisy here is hard to miss. Mr. Trachtenberg’s firm has been found to have engaged in abuse of the UDRP:
      http://www.adrforum.com/domaindecisions/1383534.htm
      “The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the domain name and that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that that reverse domain name hijacking has occurred.”
      That is the problem here. Having been told they were abusing the existing process, which involves actual adjudication of claims, Mr. Trachtenberg’s firm would prefer a process where, as noted above, registrars and registries are simply required to do what they are told by reverse domain hi-jackers like the Greenberg Traurig firm.
      Same thing with Mr. Shatan. Years ago, after being told his client’s claim was no good, he fired back a thunderous letter to me saying “your client’s behavior is precisely why the UDRP was created”. He then proceeded to file, and lose, a UDRP against my client. Apparently, one of us had no idea what he was talking about, and was unable to prove the things he was threatening.
      That’s what bothers these guys. They can’t get what they want through existing legal processes, because they bring stupid claims in abuse of process, or claims that cannot be proven when judged in the light of due process.
      Mr. Trachtenberg is currently defending a party that has been sued and won, UDRP’d and won, and now is being sued again. Each step of the way, the nutty lawyer on the other side has fired off all manner of threats and demands to registrars.
      Seriously, Marc, you think your client’s domain name should be subject to being shut off simply because some jackass lawyer sends a demand?
      And if not, what sorts of legal judgments are you asking registrars and registries to make?
      I see outstandingly sloppy, deceptive and outright criminal behavior by intellectual property lawyers every god-damned day. Folks like Procter and Gamble’s esteemed attorneys think they can get away by outright lying (swash.com UDRP), and the esteemed firm of Adams & Adams has done the same dang thing (greentrust.com UDRP) in a case where it was a UDRP panelist who was acting for the complainant, and ending up being admonished for abusing the policy.
      You guys abuse the tools you already have. You managed to get figurative marks into the TMCH, which is now chock full of generic words, also thanks to BS like the “imprinted pen website plus Benelux registration” game, and you aren’t about to fix that.
      You and your colleagues have demonstrated an enduring appetite for making frivolous claims, which is why 2015 set a new record for reverse domain hi-jacking UDRP decisions. Who do you think files these things? Mysterious aliens from space? No, they are filed by your firm, your colleagues, and the members of a profession which provides me the endless displeasure of sharing with greedy hamfisted baldface liars on a regular basis. Intellectual property attorneys CANNOT be trusted or taken on faith, merely because they send someone a letter.
      And if you’d like further and specific examples, I will be happy to supply them.

      Reply
  2. Marc Trachtenberg says:
    July 1, 2016 at 9:50 pm

    John,
    I do not believe that a domain name should be shut down or transferred as the result of any cease and desist letter nor do I believe that there should be a universal DMCA for all registries and registrars. I have consistently said this and you know that. I represent registries and registrars and not only am sympathetic to their plight and the fact that they are for-profit businesses but also am rational and understand the law and it’s limitations.
    I do believe however, what I said in the session, which is to simply have an obligation to require another party to put a requirement in their agreement with a third party and not have any obligation to enforce this at any level makes no sense. It is the result of ICANN’S unclear contract provisions which can be interpreted favorably by both sides so ICANN does not have to make the hard decisions.
    I do not know what the provision means which I also said in the session and unfortunately reasonable arguments can be made in support of both interpretations. I do believe that legal solutions to disputes usually have the worst outcomes for both parties and that business solutions are better and that it would be better for everyone and more efficient to stop fighting over what the provision means and come to some sort of agreement that neither side loves but can live with, before someone else makes an interpretation that no one likes.
    And as far as your comments about my firm, I think that is low and unprofessional of you. Assuming your criticisms of my firm even have any validity, which I don’t think they do, there are over 2,000 lawyers in the firm and I have only been there 2 years. Holding the firm responsible for what one person may have done in one UDRP out of the hundreds or thousands the firm has probably filed is ridiculous and you know it.
    And finally, that case you refer to with the crazy lawyer on the other side – you referred it to me!

    Reply
    • John Berryhill says:
      July 1, 2016 at 11:03 pm

      “Holding the firm responsible for what one person may have done…”
      You are missing the point, Marc. Lawyers abuse processes, and these are not some imaginary goblins lurking in a fictional world. They are people you know, I know, and just like venereal diseases, you find them in the finest of families where you least expect them.
      I’m sure you’ve seen the “trademark complaint disguised as DMCA complaint” gambit, along with a raft of everyday stupidity that lawyers churn out every day in bulk.
      Your camp needs to stop approaching this subject on the implicit assumption that these mechanisms will not be abused. If they can be abused, they will be. And, “Oh, let’s have someone sign an oath” doesn’t cut it.
      You dodged the key question and the main point:
      “Seriously, Marc, you think your client’s domain name should be subject to being shut off simply because some jackass lawyer sends a demand?
      And if not, what sorts of legal judgments are you asking registrars and registries to make?”
      You know full well these things don’t arrive on anyone’s desk in clear stacks of black and white.
      Stop with the wounded pride. You are a partner in a 2000 lawyer firm with a long history of “exceptions” like Jack Abramoff. I am sure you will sleep more comfortably tonight than he did for six years in jail for being the “exception” among the fine folk of GT. Maybe that’s what happens when you hire from Preston, Gates and Ellis. Live and learn.
      And yes, I did refer that case to you because I knew you’d do a good job with it, which should further clue you in to the fact that there is a larger point to be had here. I think it is low and unprofessional for representatives of the legal profession to allow the considerable self-esteem and self regard rampant in their ranks to blind them to the fact that lawyers are often as corruptible and contemptible as anyone else. Any process that comes down to “because some lawyer said so” is not going to work, even if they sign a silly oath that has no consequences whatsoever.
      If actual legal process is not working, then it is the legal process that needs to be fixed. There’s a whole Congress sitting there with nothing to do than argue over bathroom permission slips, which was democratically elected and capable of passing laws. But if the IP camp couldn’t get PIPA through a democratically elected Congress, then they resort to what they do best:
      Bullying and threatening:
      “…before someone else makes an interpretation that no one likes.”
      There’s always that boogeyman in the closet… “Do what I say, or else. After all, I’m a lawyer.” The IP camp can threaten, bully and push around a bunch of presumed nerds at ICANN with these kinds of voodoo threats, but just who is this “someone else”? Do you mean a judge? A democratically elected representative? You know, those mechanisms which we are sworn to uphold?
      You have to design the process with the certainty that if it can be abused, then it will be abused. You have to stop acting as if it is “low and unprofessional” to support an argument with specific examples of how even “good” lawyers so casually and frequently play outside the lines.
      There are bad actors in our profession. Pretending there aren’t with faux outrage does not change that fact. Any process that boils down to “because a lawyer says so” is not going to work, and any process that appoints registries and registrars as amateur judges is also not going to work.
      If the policy said, “all of these claims shall be evaluated by Marc Trachtenberg” I’d think it was a fine policy. I think that would work. I’d donate to ICANN lobbyists to get that done.
      But these are not going to be evaluated by Marc Trachtenberg. They are going to be written by guys more like Charlie Manson and judged by guys like Jack The Ripper.
      It’s one thing the nerds understand about writing code that lawyers never seem to catch onto. Do not assume valid user inputs.

      Reply
      • Marc Trachtenberg says:
        July 2, 2016 at 3:53 pm

        John,
        Far be it for me to interrupt your rant and point out the logical fallacies in it. Your point about processes is ridiculous. EVERY process gets abused by some bad actors. In fact it’s almost impossible to design one that cannot be abused by bad actors with the intent to do so. And lawyers aren’t thei only ones who abuse processes- so do some registries, registrars, registrants, regulators, politicians, etc. But unlike you I don’t tar all of them because of the transgressions of the few. While there are some lawyers who may abuse the process or might just be ignorant of what the process, they are in the minority of all lawyers and even all trademark lawyers. They just happen to be the ones that you are exposed to.
        I also agree that the legal process needs to be fixed – what rational person that lives in the U.S. Doesn’t think that? But it will not be fixed here. And I’m not using some phantom bogeyman – it is possible that ICANN could do something (although that seemed unlikely for now) or that it could be through other mechanisms like law or government (or GAC). If there is one lesson from the new gTLD program it’s that anything is possible and can hah happen. I’m simply pointing that out as a possible motivation for seeking alternate solutions, which could include or consist of industry best practices or voluntary programs like the ones Donuts has.
        Finally, thank you for your endorsement for the new Marc Trachtenberg IP claims evaluation system – I accept! I assume uniregistry will be the first registry to sign up for this program. Can I evaluate the IP claims from the Caymans?

        Reply
        • John Berryhill says:
          July 6, 2016 at 4:58 pm

          Marc,
          It’s not a matter of a few bad apples or “some” ignorant lawyers. That’s why it is necessary to trot out specific examples.
          Last year was a record at WIPO for RDNH determinations in UDRP’s. There were 26. This year, there have been at least 20 so far this year and it is only July.
          And, yes, a lot of people misbehave. Attorney misbehavior is of more importance to me – and should be to you – because the profession is supposed to be self regulating. We don’t excuse, for example, misbehavior by police by saying, “But, look at the criminals!” WE are supposed to be the good guys, but far too many reputable attorneys and firms have dispensed with any pretense of being a gatekeeper against frivolous claims. Yes, bad actors are going to do bad things. But it is a lot more troubling when the presumed “good guys” do bad things. Given the tools and opportunity, they will.
          Take Bureau Gevers. Haven’t we all been “exposed to” that highly-regarded firm? Are they some sort of unusual ignorant backwater?
          But, just this morning from WIPO, comes what may be number 22 for the year, in a proceeding where Gevers represented the complainant:
          “The Panel also notes that the Complainant was advised by experienced counsel in these proceedings and therefore should have been aware of the prospective outcome if a decision was issued but still chose to file the Complaint. This has wasted the Respondent’s time and resources unnecessarily and the Panel has no hesitation in finding that this Complaint amounts to a case of reverse domain name hijacking.”
          Okay, so Bureau Gevers – a leading European firm – is a bunch of incompetent hacks who don’t know their ass from a hole in the ground. Is that what you mean by “some lawyers who may abuse the process or might just be ignorant of the process”? And, again, counsel in the greentrust.com RDNH case was a UDRP panelist. How many UDRP panelists do you suppose are “ignorant of the process”? Does that strike you as a problem?
          “But unlike you I don’t tar all of them because of the transgressions of the few.”
          The point is not about tarring anyone. It is about process design assumptions. You don’t build a system around the assumption that lawyers are some “trusted class” and assume them to behave responsibly. Lawyers do not and will not behave responsibly just because we wish them to.

          Reply
    • John Berryhill says:
      July 1, 2016 at 11:04 pm

      “I do believe that legal solutions to disputes usually have the worst outcomes for both parties…”
      Now, Marc, there is no reason to disparage our profession like that.

      Reply
      • Marc Trachtenberg says:
        July 2, 2016 at 3:55 pm

        John,
        Once again you are twisting my words. I am not disparaging our profession. I am merely pointing out that “legal” solutions are often the most expensive ones and not the most efficient ones.

        Reply
  3. Rubens Kuhl says:
    July 2, 2016 at 1:03 pm

    Even if some enforcement is to happen, the enforcement from registries would be limited to verifying that registrar indeed put those clauses in the registrant agreement, not that they are actually enforcing them with registrants.
    Registrants are the ones making both good and bad things, and registries don’t have contracts with them.

    Reply
  4. Graham Schreiber says:
    July 3, 2016 at 9:02 pm

    Hi John:
    Thanks for confirming: “Lawyers lie. Lawyers abuse processes.”
    Credit to Marc Trachtenberg: Who having returned my telephone call, about two or three weeks ago, confirmed:
    All .COM Domain Name Registrants are Subject to United States Law, including CentralNic’s SCAM cc.COMs.

    Reply
  5. Graham Schreiber says:
    July 4, 2016 at 5:02 pm

    Funny, ICANN’s bespoke IPC member, Paul McGrady, told he was Reverse Domain Name Hijacking, by the ADR Forum.
    I hope Paul didn’t opt to go globetrotting on .COM Registrants ICANN Fee’s, to ICANN56, along with others on the RPM Group!
    As for the ADR Forum, they WILL BE sued in Canada, as accessories to CentralNic’s racketeering, if the feckless United States Justice Department doesn’t defend it’s own ACPA Protected, Intellectual Property & Domain Names.
    FYI John: Greenberg Traurig’s David Barger has equally suspect integrity, having “knowingly” opted to have ENOM “JOIN” ICANN’s former IPC globetrotter Brian Winterfeldt; and LIE to VaED’s Judge, Gerald Bruce Lee, saying that CentralNic’s uk.COM Domain Name is > extraterritorial to the Lanham Act’s ACPA.
    Marc, you made very wise move in the interest of Self Preservation! As You’ve been an IPC Funded Globetrotter, you WILL BE obliged to testify in Canadian Court, if / when it comes to that, to confirm what you stated in our telephone conversation, which was ~ everybody knows .COM Domain Names are subject to US Law, including CentralNic’s ~.

    Reply

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