[client com] Request for a quote on two tasks

Tue Jul 28 08:58:43 UTC 2015

Josh,

Thanks for these questions and I recognise that Greg has provided some answers by now.

However, it is my view that these questions are all best directed to ICANN. 

Please note also that I anticipate the other two communities (Numbers & Protocols) will be very willing to provide information as needed.

Jonathan

From: Hofheimer, Joshua T. [mailto:jhofheimer at sidley.com] 
Sent: 27 July 2015 21:29
To: Greg Shatan <gregshatanipc at gmail.com>; Flanagan, Sharon <sflanagan at sidley.com>
Cc: cwg-client at icann.org
Subject: Re: [client com] Request for a quote on two tasks

Greg,

Thanks this is very helpful.  A couple follow-up questions as well:

1.      Are there trademarks, tradenames and logos that have been registered in countries outside the United States?  

2.      If so, are they all registered by ICANN, or in some jurisdictions are they owned by a local affiliate/subsidiary.  

3.      Would it be possible to get a schedule of all registered marks, names and logos, showing the mark, the registration date, number and registered owner?  Ultimately, we are going to need this regardless, and hopefully ICANN staff have maintained it on a regular basis.

4.      We also would like a schedule of all the domain names, including the identified Registrant and Registrar.  The Administrative Contact would be useful too.

Finally, in a prior email you forwarded with some background materials you expressed the concern that the IETF Trust might not be a legal person.  Can you give us some further insight into the circumstances that give rise to this concern for you, or were your questions addressed by the IETF?  

Cheers,

Josh

JOSHUA HOFHEIMER

Sidley Austin LLP
+1.213.896.6061 (LA direct)
+1.650.565.7561 (PA direct)
+1.323.708.2405 (cell)
jhofheimer at sidley.com <mailto:jhofheimer at sidley.com> 
www.sidley.com <http://www.sidley.com/> 

 <http://www.sidley.com/>  SIDLEY AUSTIN LLP

From: cwg-client-bounces at icann.org <mailto:cwg-client-bounces at icann.org>  [mailto:cwg-client-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Wednesday, July 22, 2015 5:45 AM
To: Flanagan, Sharon
Cc: cwg-client at icann.org <mailto:cwg-client at icann.org> 
Subject: Re: [client com] Request for a quote on two tasks

Sharon,

I started to put together some background information on the IANA trademarks that might be helpful to you and your colleagues, once you get the green light to proceed.  It's based on information publicly available through the US Patent & Trademark Office website and the ICANN website, so there's nothing unique here, but it might save a little time and effort.

Greg

On Sat, Jul 18, 2015 at 9:33 AM, Flanagan, Sharon <sflanagan at sidley.com <mailto:sflanagan at sidley.com> > wrote:

Dear All,

With respect to Item #1 below, we would expect the stress test and assessment of the IPR issue under the three scenarios below would require approximately $35,000-40,000 of legal work.  This would be for our analysis and review and would not include time spent on follow up calls or iterations of the document.

Please let us know if you have any questions.

Best regards,

Sharon

SHARON FLANAGAN
Partner

Sidley Austin LLP
+1.415.772.1271 <tel:%2B1.415.772.1271> 
sflanagan at sidley.com <mailto:sflanagan at sidley.com> 

From: Lise Fuhr [mailto:lise.fuhr at difo.dk <mailto:lise.fuhr at difo.dk> ] 
Sent: Tuesday, July 14, 2015 6:58 AM
To: Flanagan, Sharon
Cc: Jonathan Robinson; Grace Abuhamad; Marika Konings; cwg-client at icann.org <mailto:cwg-client at icann.org> 
Subject: Request for a quote on two tasks

Dear Sharon,

As we talked about during the Client Committee call last Thursday, we have discussed with the CWG Sidley's eventual advice regarding two issues – IPR and a matrix of the bylaws. The CWG agreed to request Sidley to give an estimate of the hours needed in order to perform the two tasks:

1.       IPR - To conduct a stress-test approach regarding the IANA IPR issue. This includes four aspects:

a.  Sidley should consult with ICANN Legal in order to obtain further insight and background to the IPR issue. This can be done with the involvement of other members of the CWG – like the Client Committee. Furthermore CWG is considering involving other communities in this fact-gathering exercise.

b. There appear to be three possible scenarios. IANA’s IPR either:
(i) stays with ICANN; (ii) goes to PTI; or (iii) goes into trust (IETF, mutual trust). 

c. What risks exist with each approach from a CWG-Stewardship perspective. These need to be evaluated in view of ICANN's position and the proposal from the other communities to determine what is optimal and/or acceptable. 

d. There are 3 trademarks involved: (i) "Internet Assigned Numbers Authority," (ii) "IANA", and (iii) the IANA Logo, which consists of IANA in stylized letters plus Internet Assigned Numbers Authority.

2.       Matrix of the ICANN bylaws:

Create a matrix to help determine where the bylaws that are needed in relation to the CWG proposal belong.  Identify which bylaws Sidley would suggest that the CWG should draft (be in charge of having drafted), and which bylaws drafted by the CCWG need to be signed off by the CWG. There will be a part of the bylaws that are being prepared by the CCWG that have no direct relationship to the CWG's work and these constitute a third category. 

After receiving the quote, the Client Committee will evaluate the estimates of the two tasks and get back to you.

If you have any questions, please do not hesitate to get back to me.

Best regards,

Lise

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