[CWG-Stewardship] [client com] IPR Memo

[Greg Shatan]

Andrew,

I didn't think you were _trying_ to blur anything. It happens.  When the
question was asked "> None of the slides talk about the IETF's process and
history of exercising oversight and quality control for IPR.  Is
information available in that regard?" you responded with the Trademark
Usage Guidelines.  My intent was only to point out that these Guidelines do
provide guidance for use of the IETF trademark, but don't deal with the
issue of quality control.

Your answer may continue the blurring, albeit inadvertently, in talking
about the "uses" that the trustees see.  It appears that you are referring
to uses of the mark, when the things that I was not seeing (and should be
seeing) relate to quality control of the services being provided under the
license, which has nothing to do with how the mark is being used.

I appreciate the reference to AMS.  I took a look at the IETF license, and
it also seems to have the same problem of blurring the distinction between
controlling uses of the mark and controlling quality of services provided
by the ilcensee.  (So, perhaps you've inherited this blurring problem from
the way it is being handled in the IETF Trust.)  The "quality control"
provision of this license reads:

Licensee recognizes the importance of Licensor’s exercise of control over
the quality of use of the Marks. Accordingly, Licensee agrees that all uses
of the Marks shall be in accordance with the quality standards determined
by Licensor from time to time which have been provided to Licensee in
advance of the implementation of such standards, and Licensor shall have
the right to suspend or terminate the licenses granted hereunder with
respect to the Marks at any time that Licensee fails to comply with such
quality standards; provided that Licensee has failed to cure such breach
within thirty (30) days following Licensor’s notification thereof. Licensor
shall notify Licensee of any such deficiency and describe any requested
quality improvements

While this purports to be a "quality control" provision, it is in fact a
trademark use provision.  There is no other quality control provision in
the agreement.  While it is permissible to rely on "seeing the uses" rather
than contractual documentation when it comes to trademark use control, it
unfortunately is not permissible to do so when it comes to quality control;
this results in something called a "naked license," which sounds like it
might be a Good Thing, but is in fact a Very Bad Thing.

I agree that these are questions for the Trust or its counsel.  However, I
think this list is the right place to develop these questions before they
are asked of the Trust or its counsel, since this list (along with calls,
meetings and documents) is where the CWG does its work.

I think this also points out another issue, if in fact the IETF Trust (or
any other trust) becomes the owner of the marks and the domain names:  we
(the Names Community) have no oversight or control of the IETF Trust and
there is no accountability by the IETF Trust to the names community.  The
Trust is really a creation of the IETF, which creates "fitness for purpose"
issues.  Perhaps some of these issues could be resolved in part through
adding Trustees from the names community and amending the Trust document in
various ways.

Greg


On Wed, Aug 5, 2015 at 9:09 PM, Andrew Sullivan <ajs at anvilwalrusden.com>
wrote:

> Hi,
>
> On Wed, Aug 05, 2015 at 08:31:03PM -0400, Greg Shatan wrote:
> > ​There are some important distinctions that are being blurred here.
>
> Well, I'm certainly not trying to blur anything, but lest anyone
> mistake me for a trademark lawyer, let me be clear that I'm not.  The
> IETF Trust has a lawyer, and when acting as a trustt I do what he
> tells me to because as far as I can tell he's an expert in his field.
> But …
>
> > 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.
>
> Yes.  I thought that was clear.
>
> > 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.
>
> My understanding -- but it would probably be better to ask the Trust
> directly, since I'm just reflecting my own understanding -- is that
> you don't see that because the only people who are licensees at the
> moment work so closely with us that in fact we see all the uses.  That
> is, the only actual licensee at the moment is AMS (as you can see on
> http://trustee.ietf.org/licenses.html).  AMS handles the IETF
> secretariat functions and therefore every trustee sees all these uses
> all the time.
>
> It is nevertheless true that there's no formal quality control program
> in place.
>
> In any case, as I've tried to suggest, most of this is better asked of
> the IETF counsel or directed at the trust, instead of it being
> discussed on this list.  It's not hard to contact the trust.  You can
> send mail to trustees at ietf.org, just like it says on the website
> (http://trustee.ietf.org/index.html).
>
> Best regards,
>
> A
>
> --
> Andrew Sullivan
> ajs at anvilwalrusden.com
> _______________________________________________
> CWG-Stewardship mailing list
> CWG-Stewardship at icann.org
> https://mm.icann.org/mailman/listinfo/cwg-stewardship
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150806/e0c1157f/attachment.html>