Judiary Hearings on DNS/ICANN IP Issues - Scribe's Notes

The following notes were taken by Berkman staff at hearings of the House Judiary Committee's Subcommittee on Intellectual Property on the morning of July 28. They are unofficial in the sense that they represent solely the points thought to be salient by the particular staff attending. However, we believe that, along with the audio archive of the proceedings, these notes generally represent a reasonable archive of what was discussed.

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  1. Opening Statements of Representatives
    1. Coble: Last year, only NSI was registering names. Now that ICANN has introduced competition into registrations in .com, .org, and .net, trademark interests have legitimate concerns.
    2. Berman: Need to make sure WHOIS is freely available and has complete, accurate information. Also need a mechanism for resolving trademark disputes.
  2. Testimony and Q&A of Pincus, DoC
    1. Statement: Aware of importance of IP to economy. Intend to assure IP owners have the tools necessary to protect rights in cyberspace just as in the real world. White Paper (reflecting public comments) stipulates that key contact information for each domain be available to anyone with access to the Internet. Also that domain name speculation ("cybersquatting") should be discouraged by policies including prepayment of registration fees, efficient dispute resolution system. ICANN has already implemented many recommendations of White Paper through the Registrar Accreditation Agreement.
    2. Coble: Who owns the IP contained in WHOIS database?
      1. Difficult and complex question. Prefer to focus on #2 below.
    3. Coble: Could NSI unilaterally cut off public access to WHOIS, and if so how would DoC respond?
      1. Regardless of who has ownership, we’re confident that the WHOIS information can’t be cut off according to Cooperative Agreement.
    4. Coble: How to assure that ICANN (an inherently international body) will protect American IP interests?
      1. MoU between DoC and ICANN binds ICANN to protect IP.
    5. Coble: Why is NSI’s $9 fee for use of the registry OK while DoC asked ICANN to postpone its own $1 fee?
      1. Perhaps unwise for ICANN to adopt a controversial fee structure before at least some of its board members are elected.
    6. Berman: To what extent does DoC set ICANN’s policies?
      1. For now, in collaboration stage, it’s appropriate for DoC to give advice to ICANN. Ultimately, ICANN will be independent.
    7. Bernan: Would DoC slow down ICANN to assure that appropriate policies are in place?
      1. ICANN is trying to do two things at once: establish competition in registrations, and to create new policies like dispute resolution. Had not previously heard from IP interests that the process is going too fast.
    8. Goodlatte: Putting cart before the horse by allowing new registrants without unified dispute resolution process first?
      1. Many parts of the Internet community badly want competition in registrars. Few have said that IP issues are so severe that competing registrars should be shut down or put on hold until IP issues are resolved. ICANN is simultaneously criticized by some for moving too quickly and by others for moving too slowly.
    9. Goodlatte: Has Patent and Trademark Office been involved?
      1. Have been involved in relevant parts of the process.
    10. Lofgren: What was specified in the agreement between NSF and NSI re WHOIS?
      1. Says that at the end of the agreement, all data must be turned over to NSF/DoC in a way that allows someone else to replicate all that NSI did under the agreement.
    11. Pease: How are domain registration disputes currently resolved? State of the law is not in question?
      1. NSI has a policy, though it’s often criticized. Courts have also gotten involved and have generally resulted in the expected outcomes. But the current process is costly, while ADR will be more efficient. Don’t want an Internet-specific law because then other countries might do the same, making the situation more complicated and therefore worse.
    12. Delahunt: NSI has asserted ownership of the .com, .net, and .org data. On what basis?
      1. Based on some clauses of the cooperative agreement. Thinks of cooperative agreement as a boost to get a private company up and running, with no further government involvement once the agreement is done. We disagree.
    13. Delahunt: Congress is deliberating on a bill that would protect databases but specifically exclude Internet databases like what WHOIS shows. What do you think?
      1. If passed, that database would provide yet another reason why NSI’s position is incorrect.
    14. Rogan: If ownership came under question, would DoC assert its rights on behalf of the US?
      1. Definitely, feel very strongly about the issue because of the rights of the US and because of the competitive issues.
    15. Rogan: How was Initial Board selected? How will new board be selected?
      1. Application to be designated as Newco included an Initial Board. Long term, three board members from each of three SOs, other nine from an at-large membership, plus the CEO.
    16. Rogan: International body? Concern of ceding power to other countries?
      1. Yes, international, as specified in White Paper. Happy with an international organization with which US has an agreement.
    17. Cannon: What proportion of board is international?
      1. Five Americans, five from other countries.
    18. Cannon: Policy against registrants containing vulgarity? Has DoC made changes to agreement with NSI that prevent NSI from filtering words?
      1. Understand that NSI has now rescinded the policy. Have been careful, taking into account first amendment concerns, and have not taken any such action.
    19. Cannon: Y2K compliance?
      1. Don’t know the answer to that.
    20. Coble: Hypothetically, what happens if NSI refuses to recognize ICANN? Is there anything the Subcommittee can do to help?
      1. Preferred path is amicable resolution, but recompeting the agreement is ultimately a possible.
    21. Lofgren: How to enforce uniformity? Avoid registrar shopping?
      1. ICANN has the contractual authority to require accredited registrars to follow an ADR system once it’s in place. Problem is NSI (not accredited, i.e. not operating pursuant to an agreement with ICANN), hope that NSI will ultimately agree to operate by the same process as other registrars. If not, would have to recompete the cooperative agreement to assure a level playing field and to assure the necessary protections of IP.
    22. Rogan: How would uniform dispute resolution be organized? An international court?
      1. ADR system must be usable around the world, though the actual location may not be so important since online communications can be used.
    23. Rogan: Need to worry about future board members who might take excessive power.
      1. Were concerned about that too. Perhaps ICANN should include in its contracts a limitation on its own power.
    24. Delahunt: How is ICANN currently being funded?
      1. Donations from companies that want to keep the Internet working.
    25. Canon: Should authoritative root zone server remain in US? How to assure that it does?
      1. Yes. Think it’s clear that the USG (via DoC) has control over the authoritative root server.
  3. Panel
    1. Gury, WIPO
      1. WIPO Report followed extensive meetings and consultations with experts. Two key recommendations: Require availability & accessibility of accurate & reliable contact details, and cancel a domain name if contact details were unreliable or inadequate. Uniform Dispute Resolution Policy for bad-faith registrations in violation of trademark rights. Uniformity important since registrants will be around the world, so otherwise a possibility of "havens" for improper resolutions.
    2. Roberts, ICANN
      1. White Paper contemplated that WIPO would make recommendations to Newco. Received recommendations on April 30 and discussed them at Berlin meeting in May. Most of registration practices had already been adopted in Registrar Accreditation Agreement. Referred details of other WIPO recommendations to DNSO. To avoid unnecessary disputes during testbed process, Board asked testbed registrars to form a temporary dispute resolution system.
    3. Daniels, NSI
      1. Network Solutions adopted a dispute resolution policy in 1995 – a delicate balance, taking 20 full-time people to administer. NSI has been sued 50 times in the context of these disputes, while 3300 have been resolved through the dispute resolution policy.
      2. Trademark and IP interests will continue to have access to WHOIS data.
    4. Cohen, IP Constituency of DNSO
      1. WHOIS database must be maintained and must remain available.
      2. Need uniform, quick, online dispute resolution policy on all commercial gTLDs.
      3. ICANN is on track (RAA is good, IP Constituency has been recognized despite some concerns). Need an IP practitioner on the ICANN board. ICANN must be funded at this crucial stage in its development.
    5. Stubbs, CORE
      1. Cybersquatters and pirates have exploited NSI’s "pay later" policy. These abuses are significant in scope, with almost a third of domain names eventually being cancelled for nonpayment. NSI’s alleged correction to resolve this problem is ineffective.
      2. WHOIS system. NSI has redirected internic.net to its own proprietary site, confusing consumers and resulting in the availability of incomplete data.
      3. Registration data is a public resource, so competing registrants should be able to solicit existing customers for renewals.
    6. Carter, Copyright Coalition on Domain Names
      1. Need to prevent online piracy. Can use WHOIS to find out who is responsible for a domain with pirated material. Digital Millennium Copyright Act cannot function as planned if WHOIS data is no longer available. So free realtime access to WHOIS data must remain, and registrars must do more to improve quality of contact information.
    7. Kirk, American Intellectual Property Law Association
      1. Concerned that no one on ICANN board is experienced in IP. DNSO’s IP Constituency provides a potential meeans of representation, but DNSO represents other interests also, and DNSO may not send an IP representative to the board, or the chosen IP rep might not represent American IP interests.
      2. ICANN’s $1/domain fee seems reasonable, and IP interests are used to paying user fees. More important is to assure that fee doesn’t increase without bound.
      3. Need to prevent registrar shopping, so need a unified dispute resolution system.
    8. Chaser, International Trademark Association
      1. Brand awareness is what makes the Internet so valuable. But trademark has recently been relegated to the back burner.
      2. Cybersquatters hold marks in ransom for as much as several hundred thousand dollars.
  4. Panel Q&A
    1. Coble: How responsive has ICANN board been to IP concerns?
      1. Gury: Meetings have been formal. Report was submitted, worked with staff on recommendations re registration practices for RAA, presented report at Berlin meeting.
    2. Coble: Concern re lack of representation of IP interests on ICANN board. What is the attitude of ICANN board members towards IP concerns?
      1. Cohen: Can’t speak to particular board members. Members of other constituencies have doubted the value of trademark interests ("less than a receptive attitude").
    3. Coble: Are American IP rights being adequately protected in domain name system?
      1. Kirk: Not yet certain, for board’s final structure not yet in place. There is an emphasis on internationalizing the structure would tend to spread authority around the world.
    4. Coble: Concern re ICANN not yet having adopted certain WIPO recommendations.
      1. Roberts: RAA reflects WIPO recommendations. Also, ICANN’s By-laws require the board to respect the authority of its respective SOs and their subentities.
    5. Berman: Question of ownership of the WHOIS. Will NSI maintain WHOIS in a state available to the public in real-time with all data agreements required by the RAA? Will NSI verify contact details submitted to it?
      1. Daniels: Same questions were asked in hearings of Science committee in 1997. At the time, representatives of the NSF said that all the data is owned by NSI. Not aware of all details beyond that. Intend to maintain WHOIS available to the public on an interactive basis. NSI has never been obliged to verify every piece of data submitted to it. Not clear whether NSI will report all data fields required by ICANN.
    6. Goodlatte: Where does it say in the Cooperative Agreement that intellectual property goes to NSI?
      1. Daniels: Sources other than the Cooperative Agreement – letters from NSF, testimony of NSF staff.
    7. Goodlatte: What about the new .COM directory? Its creation suggests that there may not be long-term free access to WHOIS.
      1. Daniels: Will have competition among registrars, while the NSI registry will be thin. Customer data of a registrar will be proprietary – not shared. The DoC has no objection to the .COM directory according to a letter received on Friday.
      2. Stubbs: Our WHOIS site provides information about registrations from all domains, unlike NSI’s. But this service really belongs in the registry.
      3. Daniels: DoC agreed to the system where the NSI WHOIS system reports only NSI registrants, not registrants of other registrars. This is part of the registry-registrar split.
    8. Lofgren: What is NSI’s legal claim to own the registrant data?
      1. NSI Counsel: NSI is not asserting a copyright. The recipient of a cooperative agreement is an awardee who receives money from the USG. That’s all.
    9. Cannon: Is NSI registering obscene or hateful words?
      1. Daniels: NSI has had a policy since mid-1996 not to register those words. Discussed this matter with DoC which asserted that registrars can register whatever domains they want and that NSI cannot block particular words.
      2. Stubbs: Some CORE members have registered "dirty words."
    10. Delahunt: NSI’s claim of ownership of registration database is based on cooperative agreement and customer database, not based on copyright, right? What does DoC say?
      1. NSI Counsel: Correct. DoC disagrees.
    11. Coble: Worry of new registrars making ownership claims over their registrant databases?
      1. Carter: Others might better be able to discuss this issue. But it is potentially of concern.
    12. Coble: If it can’t reach an agreement with DoC, will NSI just "walk away" (and take its customers with it), as reported last week in MSNBC?
      1. Daniels: NSI is caught in the middle of these issues. Intends to stick with DoC and continue to negotiate until resolution.
    13. Berman: Will ICANN enforce the terms of the accreditation agreements? Will dispute resolution process be made incumbent on all registrars?
      1. Newly accredited registrars are contractually bound to comply with guidelines, and they risk their accreditation if they violate the RAA’s terms. If/when ICANN adopts a UDR process, it will be incumbent on all registars.
    14. Goodlatte: What recommendations did WIPO make re cybersquatting?
      1. Gury: Uniform dispute resolution policy for deliberate bad-faith abusive registrations.
    15. Goodlatte: Do you support the WIPO recommendations?
      1. Carter: Yes
      2. Chaser: Yes
    16. Cannon: What kind of oversight will Congress have over ICANN?
      1. ICANN has a two-year MoU with DoC. So oversight would be through DoC.
    17. Cannon: Don’t especially care one way or the other about NSI. But do care about the rule of law. Seems like it’s not good policy to make decisions based on press reports. Disappointed to see DoC so hesitant to accept responsibility for burst of profanity in domain names.
    18. Cannon: It seems that technical innovation is led by ICANN. Are we jeopardizing that by making ICANN so international?
      1. Daniels: I’m concerned about that too. Seems like ICANN slows processes down to much.
    19. Delahunt: