[CWG-Stewardship] [client com] IPR Memo

[Greg Shatan]

​There are some important distinctions that are being blurred here.

First, in trademark licensing, there is a distinct difference​ between (a)
control of a licensee's trademark usage and (b) control of the quality of
the licensee's goods and services bearing the trademark.  These are both
important aspects of a trademark license, but they are not the same thing.
 "Trademark Usage" refers to the display of the trademark itself (size,
colors, placement, accurate reproduction, etc.)  "Quality Control" refers
to the quality of the goods and services themselves.

Control of Trademark Usage is typically achieved by establishing "Trademark
Usage Guidelines" which are distributed to licensees and may be
periodically updated.  Licensees are typically contractually obligated to
follow such Guidelines and to seek prior approval for any substantial
deviations from those Guidelines.  Some licensors may obligate licensees to
seek approvals for all new uses of the trademarks, to confirm that the
usage meets the guidelines, but this is not legally required.

Quality Control of the licensee's goods and services is far more
important.  Quality Control is typically achieved by setting out written
standards that the goods and services must meet (which may vary from fairly
high-level statements to very detailed quality control levels, specifying
the way in which the licensee must provide the service and benchmarks that
need to be met by licensee), coupled with some sort of active quality
control exercised by the licensor on a regular basis (e.g., prior approvals
by licensor of any new goods/services proposed to be offered by licensee,
inspections of samples, factory/site visits).  Active and ongoing quality
control is critical; merely setting up quality control standards is
insufficient.

A licensor's failure to exercise adequate quality control can result in a
finding of abandonment of the mark and loss of trademark rights; a failure
to monitor trademark usage does not have these consequences.  [One could
imagine an "edge case" where the trademark use by licensees had so run amok
that it no longer appeared to be a common enterprise and lost all
"trademark value", but I'm not aware of any case where that became a
serious issue.]

Second, these are obligations specific to the licensor/licensee
relationship -- these do not translate to legal obligations by a trademark
owner with regard to their own provision of goods and services under the
mark. They may be best practices and good business, but they are not legal
obligations. A trademark owner is assumed to exercise quality control over
its own goods and services as part of its internal business methods and
processes; there is no requirement these be documented.  Furthermore, a
trademark owner can turn out shoddy and inconsistent goods and services
under their own mark without any risk of losing the trademark.  In
contrast, if they allow a licensee to do so, they do bear that risk (and
the licensee bears a risk of being terminated).  A trademark owner can use
the trademark in inconsistent ways, with no consequences.  If a licensee
does so, they may get terminated (but again there are no significant legal
consequences to the licensor.

This is by way of background to the following points (in no particular
order):

1. ICANN has no specific trademark legal requirements for how they exercise
quality control over the IANA team and the services they provide.  From the
trademark perspective, however they do it is fine.   Indeed, ICANN is not
required as a trademark owner to specifically exercise quality control over
its own operations; if ICANN let the IANA team go rogue, that would not
raise any trademark legal issues.  (This could violate ICANN's bylaws and
articles of incorporation, and call into question their future as an
appropriate IANA operator, but that's a different set of issues.)

2. ICANN faces no specific trademark legal requirements for how they ensure
use by ICANN of the IANA trademarks.  (Of course, there could be issues
raised by how ICANN deals with unauthorized third parties using the marks
to indicate that they are offering "IANA-brand" goods or services (i.e.,
"policing and enforcement"); but that's a separate point that should not be
blurred with this one.)

3. The IETF Trust "Trademark Usage Guidelines" supplied by Andrew Sullivan
and found at http://trustee.ietf.org/trademark-usage-guidelines.html are
just that -- Trademark Usage Guidelines.  They do not provide for any
quality control by IETF Trust of the goods and services offered by their
licensees.  There is a statement that the trademarks can only be used
to "identify
products or services that implement or are compatible with IETF standards
or specifications," but there is no indication of any minimum quality
standards for these products or services or any indication that quality
control will be actively exercised (e.g., approvals, samples, site
inspections).  The license referenced in these guidelines asks for samples
of use of the marks, but does not ask for samples of the goods and
services, or indicate any way that would be accomplished.  That does not
mean that IETF Trust could not develop quality control standards and a
quality control program, either for their current marks or for marks
assigned to them; it just means they don't seem to have it now, and we
haven't seen anything to indicate otherwise.

Greg

On Wed, Aug 5, 2015 at 6:41 PM, Andrew Sullivan <ajs at anvilwalrusden.com>
wrote:

> On Wed, Aug 05, 2015 at 05:44:57PM -0400, Alan Greenberg wrote:
> > If I were ICANN and about to hand over the TM, I would want to see
> something
> > stronger than just "hold", but perhaps to lawyers that is sufficient to
> > imply will police and defend.
>
> I think in fact any real language is being worked on by the Trust's
> lawyer and others.  I know we have put the client committee and Sidley
> in touch with Jorge Contreras, the IETF's counsel.  The Trust's
> resolution is just a good-faith statement on the part of the trustees
> that they're prepared to do this, not an agreement.
>
> Obviously, if something happens, actual legal agreements need to be
> drafted.  This is at least as important to the IETF as to anyone else,
> given that the Trust is possibly involved, so it will certainly be
> undertaken carefully.
>
> Best regards,
>
> A (for myself and nobody else)
>
> --
> Andrew Sullivan
> ajs at anvilwalrusden.com
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> CWG-Stewardship at icann.org
> https://mm.icann.org/mailman/listinfo/cwg-stewardship
>
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