[CWG-Stewardship] [client com] IPR Memo

[Gomes, Chuck]

Good point Milton.  As we do our due diligence it would be good to know what processes and history ICANN has regarding policing and enforcing the IANA marks.

Chuck

From: cwg-stewardship-bounces at icann.org [mailto:cwg-stewardship-bounces at icann.org] On Behalf Of Mueller, Milton L
Sent: Wednesday, August 05, 2015 5:55 PM
To: Alan Greenberg; cwg-Stewardship at icann.org
Subject: Re: [CWG-Stewardship] [client com] IPR Memo

Alan
Can you, or anyone, provide me with any evidence that ICANN has the will, or has a record of doing anything to "police and enforce" the IANA trademarks?

From: Alan Greenberg [mailto:alan.greenberg at mcgill.ca]
Sent: Wednesday, August 5, 2015 5:06 PM
To: Mueller, Milton L; cwg-Stewardship at icann.org<mailto:cwg-Stewardship at icann.org>
Subject: Re: [CWG-Stewardship] [client com] IPR Memo

I have no particular stake on the outcome of all this.

However, I would find it useful to have a clear and unambiguous statement from the Trustees on behalf of the IETF Trust saying that the Trust has the will and resources to adequately police and enforce the IANA trademark.

The proposal was made in the CRISP proposal and accepted in the IANAPLAN proposal, Although a number of the Trustees participated in creating the latter document, we really do need a formal statement of the Trust that they are willing and able, if not eager, to take this on. There is no way that ICANN should enter into an agreement to give up the TM without such assurances.

Alan

At 05/08/2015 03:11 PM, Mueller, Milton L wrote:

This memo shows a lack of understanding of the policy issues involved in determining the status of the IANA trademarks. For example, under disadvantages of ICANN continuing to hold the trademark, it fails to note that ICANN is the owner of the PTI subsidiary and thus would be in a position to interfere with any attempt to transfer the IFO away from ICANN?s controlled subsidiary to another IFO.  The memo seems to be laboring under the risible assumption that ICANN is a neutral party with respect to administration of the IFO.

The memo also fails to note that the numbers community objects just as strongly to ICANN retaining the trademarks as to PTI retaining them.

The assessments of the alleged difficulties involved in IETF Trust holding the trademarks seem inflated to me. Basically the opinion erects a strawman (what if you have to create a new trust) and spends most of its time dealing with that rather than the actual proposal.

As I noted before this memo was commissioned, legal opinions can clarify what the options are, but they are not a substitute for real engagement with, debate on, and achievement of consensus around the merits of the different options.  We have yet to achieve consensus on the status of the IANA trademarks and frankly we will not achieve one based on this memo.

--MM

From: cwg-stewardship-bounces at icann.org<mailto:cwg-stewardship-bounces at icann.org> [ mailto:cwg-stewardship-bounces at icann.org] On Behalf Of Grace Abuhamad
Sent: Wednesday, August 5, 2015 11:37 AM
To: cwg-Stewardship at icann.org<mailto:cwg-Stewardship at icann.org>
Subject: [CWG-Stewardship] FW: [client com] IPR Memo

Dear all,
This legal input was sent to the Client Committee earlier today.
Best,
Grace

From: < cwg-client-bounces at icann.org<mailto:cwg-client-bounces at icann.org>> on behalf of Sharon Flanagan <sflanagan at sidley.com<mailto:sflanagan at sidley.com>>
Date: Wednesday, August 5, 2015 at 12:05 AM
To: Client Committee <cwg-client at icann.org<mailto:cwg-client at icann.org>>
Subject: [client com] IPR Memo

Dear All,

Attached is a memo on the IPR issue under the three ownership structures.  Please let us know if you have any questions or would like to discuss.

Best regards,

Holly, Josh and Sharon

SHARON FLANAGAN
Partner

Sidley Austin LLP
+1.415.772.1271
sflanagan at sidley.com<mailto:sflanagan at sidley.com>




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