[CWG-Stewardship] Update on IANA IPR

[Greg Shatan]

Milton,

My responses are below.

On Thu, Aug 13, 2015 at 7:00 PM, Mueller, Milton L <
milton.mueller at pubpolicy.gatech.edu> wrote:

>
>
>
>
> An entity external to ICANN, taking over the IANA brand and identity,
> leaving ICANN as a mere licensee, entering into a contract with ICANN where
> that external entity exercises oversight and control over IANA services
> (including the ability to find ICANN in default of that contract and
> ultimately the ability to enter into a contract with someone other than
> ICANN for those services).
>
> Greg:
>
> What a desperate rhetorical ploy.
>

​GS: Milton, you let your cynicism get the better of you. This is a
legitimate analysis and characterization of the situation.  I'm still
working out the nuances, but the similarities far outweigh the differences.
​I thought you would be happy that I'm coming to terms with the potential
viability of the CRISP/ICG proposal to sgtrip ICANN of the IANA brand
identity and allow a third party to assume that identity.



> IETF Trust does not select the IFO for names.
>
​
GS: I did not say they did​.  However, the IETF Trust controls the ability
of any IFO to operate under the IANA and INTERNET ASSIGNED NUMBERS
AUTHORITY names and marks.


> Only the IFR process has the ability to change the operator, which by
> default is PTI. IETF Trust has no control over the names community-based
> IFR.
>

​GS: Milton, you are partially right here.  IETF Trust cannot force the
names community to use a different IFO.  However, IETF Trust does not need
to control the IFR to control ICANN's ability to hold itself out as the
IANA or as the Internet Assigned Numbers Authority.  The IETF Trust
​controls that ability as an essential aspect of its role as the owner of
these brands. As Alan Greenberg just pointed out, the new IFO chosen by the
names community could not call itself IANA or claim to be providing IANA
brand services unless the IETF Trust granted the new operator a trademark
license. Conversely, IETF Trust could terminate its license to ICANN, at
which point ICANN would have to cease use of these brands and would
presumably be cut off from using the iana.org domain name as well (which at
that time would be owned by IETF Trust.

IETF Trust does not “exercise oversight and control over IANA services” it
> merely allows PTI to use the TM and domain as long as it is the IFO.
>

​GS:  Here is where you are dead wrong.  A trademark owner has an absolute
legal obligation to exercise oversight and control over the quality of
goods and services offered by licensees under the owner's trademark.  This
obligation is not waivable and must​

​be actively exercised. Typically, such exercise includes the creation of
quality control standards, approvals of new services or changes to the
method of creation or delivery of services, periodic inspections, etc.  The
performance of these obligations may be delegated but the ultimate
responsibility remains with the brand owner (and, if delegated, the delegee
must be appropriately supervised so that the quality control ultimately
tracks back to the brandowner.

There is no such thing in trademark law as "merely allowing" a third party
to hold themselves out as providing services under and/or bearing the
owner's trademark.  (A non-trademark use (such as a "nominative" use to
refer to the brandowner itself by using the trademark) is beyond the reach
of the trademark owner to allow or disallow.)  If PTI ​breaches its license
agreement from the IETF Trust and fails to cure, then IETF Trust can (and
must, if it is tied to the exercise of its quality control obligations)
terminate that license, which ends the right of PTI to use IANA or Internet
Assigned Numbers Authority as a trademark or trade name.  This can be
mitigated somewhat in the specific license, but a brandowner must
ultimately retain discretion to terminate licensees that fail to meet
satisfy the brandowner's quality controls.  If this right is completely
removed, the brandowner no longer has the ability to take all measures
necessary to control quality, which then leads to a potential finding of
abandonment and loss of trademark rights.


If you think we need to build on the proposal to ensure that limited role
> for IETF Trust then try to be constructive and make modifications or
> additions to what CRISP team proposed to ensure that outcome. Don’t invent
> scare stories. What is there to back up your assertion that IETF Trust
> would have the “ability to enter into a contract with someone other than
> ICANN for [names-related IANA] services.” Nothing.
>

​GS:  I have already provided a detailed email suggesting some of the
modifications to the IETF Trust that would make it an appropriate owner of
the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY.  I've also pointed out,
as have others, that the IETF Trust must be accountable to the names
community (and the numbers community) if it takes on this role.
Accountability is not just for dysfunctional entities.  The IETF Trust may
function superbly and without fear or favor, but it still needs a framework
of accountability, given the importance of its role if it were to assume
control of the IANA identity and all the obligations that come with being a
brandowner.  I'm not trying to engage in "scare stories."  I"m trying to
spot issues.  I'm not saying these issues are insurmountable, but they need
to be acknowledged and not ignored.  Only by acknowledging issues can we
resolve them.  Under the ICG plan, the IETF Trust's innate obligation as
the brandowner to control the quality of IANA's services, and its innate
right to terminate PTI's grant of rights to use the IANA brand as its name
and mark, and its innate right to grant third parties the right to use the
mark and to withhold such grants of rights are all issues we need to
confront and control, as best one can within the bounds of the law, in
order to make the ICG's proposal viable.  I'm happy to delve further into
what those solutions might be.  But not tonight.

 ​


>
>
>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150814/9c08849a/attachment-0001.html>