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

[Richard Clayton <[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.

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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