Re: [Bimi] Laches (was: Today's BoF)

[Wei Chuang <[e-mail]>]

*From: *Richard Clayton <[e-mail]>
*Date: *Tue, Apr 2, 2019 at 9:04 AM
*To: * <[e-mail]>

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> In message <[e-mail]>, Dave
> Crocker <[e-mail]> writes
>
> >So forgive me, but I believe that "the existing registered trademark
> >system" does not handle the kind of problem created by Bimi.  Not even
> >close.  To the extent that you believe it will -- and will do it at
> >scale -- there needs to be very careful documentation of how that will
> >work at a systems level.
> >
> >More broadly, and while it's a non-trivial amount of work, I'm finding
> >myself forced to suggest that Bimi advocates produce a life-cycle
> >scenario document, that shows all aspects of administration and use of
> >Bimi, including problem handling, from first actions to last.
>
> I am very interested to learn what legal guarantees a "BIMI certificate"
> might come with and hence what "comfort" it might provide to someone
> whose email app was making use of BIMI to determine what marks should be
> displayed within their app.
>

(IANAL) To be sure this topic is complex.  We have ideas to your point
above but that's still in progress, and we hope to have more to share
soon.  Your framing this around "laches" is new to us, and helpful feedback.

-Wei


>
> In the UK (your jurisdiction will vary, but not so much) inappropriate
> display of trademarks is a civil infringement called "passing off".
>
> There is extra protection for some special marks such as the Red Cross
> emblems (fines up to 5K GBP in the UK, up to 6 months jail in the US)
> and for marks associated with the Olympics (fine up to the UK statutory
> maximum in this case).
>
> So if someone sends an email with a subject header field indicating it
> is about "X" to someone in country Y and the sender's trademark
> (perfectly good in their home country Z for a particular category of
> goods) is displayed but it happens that the text of "X" would suggest
> that it is marketing material relevant to goods that a trademark holder
> in country Y has registered a trademark for -- then there seems to be
> excellent grounds for an action in "passing off"....
>
> .... to what extent will the existence of a BIMI certificate enable the
> author of the email software to claim that they were only "following
> orders" and that they should not be held liable in any way ? Will there
> be an insurance policy in place at the certificate issuer ?
>
> Also (remember those fines and possible jail time) will BIMI be dealing
> specially with Red Cross and Olympic marks (and probably all sorts of
> other marks which have special legal protection in some jurisdictions?)
>
> Also, what expectation do the authors of the BIMI specification have
> that email software writers will not be in regular receipt of
> injunctions preventing the display of particular marks in particular
> countries in relation to particular products ...
>
> .... lest people think that this is foolishness and hyperbolic
> speculation, it is absolutely key to realise that trademarks differ from
> other types of intellectual property in that if you fail to diligently
> protect your trademark then the protection it provides can disappear.
>
> Use your favourite search engine to look up "laches" to find out more
> than would ever wish to know about this active protection issue.
>
> Bottom line is that trademarks are associated with a small class of
> goods in a small number of countries and an attempt to link these
> symbols with emails sent by all of the owners of these trademarks to
> people in completely different countries is going to end in tears.  The
> doctrine of "laches" means that this is pretty much bound to happen
> sooner rather than later.
>
> IANAL, but I read a lot :-)
> - --
> richard                                                   Richard Clayton
>
> Those who would give up essential Liberty, to purchase a little temporary
> Safety, deserve neither Liberty nor Safety. Benjamin Franklin 11 Nov 1755
>
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