On October 26, 2012, ICANN’s President, Fadi Chehadé, said that he has continued to negotiate the contracts with IBM and Deloitte, the companies responsible for the technical implementation of the Trademark Clearinghouse. Additional terms will be added to the contracts. One of them will specify that ICANN will retain “all intellectual property rights in the Trademark Clearinghouse data”.
This clause is interesting. In Europe, the producer of a database who is making a substantial investment has a sui generis right by law[1] conferring prerogative on the content of the database. Structural elements of the database are also protected by copyright.
This is not the case in the US, where the database protection is ensured by contract, even if copyright could be invoked if the database presents a creative input in its presentation or its arrangement. However, the US Courts are reluctant to apply copyright without proof of real originality.
Therefore, ICANN will protect itself against any extraction or reuse of the Trademark Clearinghouse data.
In this way, ICANN is improving the situation, as no entity will be able to acquire rights on the Trademark Clearinghouse data.
[1] This right is set up under the European Directive 96/9/CE of March 11, 1996 on the legal protection of databases, transposed into French law by the Law of January 1st, 1998, and integrated into the articles L341-1 to L344-4 of the French Intellectual Property Code.