[CWG-Stewardship] drift in v5

Wed Jun 10 19:06:29 UTC 2015

ICANN is an appropriate owner of the IANA trademarks.  PTI is also an
appropriate owner of the IANA trademarks.  The IETF Trust does not appear
to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin.  The owner of a trademark
should be the ultimate source of the goods and services offered under that
trademark.  In the most straightforward case, the trademark owner offers
those goods and services themselves or through a subsidiary.  The trademark
owner can license the mark to third parties to offer goods and services
under the mark; but, consistent with their status as the ultimate source,
the trademark owner is required by law to exercise continuing quality
controls over the goods and services offered by the licensee *and* the use
of the trademark by the licensee.  A trademark owner cannot merely "hold
the asset" as CRISP proposed.  Ownership of a trademark fundamentally
involves being the “source or origin” of the goods and services and
fulfilling the “quality control” oversight role, among other things.

Quality control generally involves approvals by the licensor of any
potential new products or services, and approvals of any changes in
products or services (what they are, how they are offered, methods and
processes, etc.), as well as ongoing monitoring of quality.  The benchmark
typically is that licensee's level of quality should be at least as high as
the goods and services offered by the licensor (i.e., the owner of the mark
and the ultimate source/origin of the goods/services).  This is all set
forth in a trademark license between the licensee ans licensor. If a
trademark license has no quality control provisions, or the quality control
provisions are not adequate or not adequately exercised, the license may be
deemed a “naked license,” exposing the trademark to the risk of abandonment
(loss of validity as a trademark, and loss of the right to claim ownership
and usage rights of the mark).  When a licensee uses a trademark, all
goodwill (brand reputation) goes to the owner, not the licensee.  The owner
is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA
Trademarks.  The IETF Trust is not and does not intend to be the ultimate
source and origin of IANA services.  Unlike copyrights and patents,
trademarks can't be owned by administrators; they need to be owned by the
source of the services.  Further, the IETF Trust is clearly not granting
ICANN the right to provide the IANA Services, so it is even more
inappropriate for the IETF Trust to be the owner of the mark associated
with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the
IANA trademarks.  This is actually a simpler solution and is consistent
with trademark law and practice.  This also contributes to separability,
since all of the IFO-related assets would be in a single entity.

If we assume for a moment that the IETF Trust were to own the IANA
trademarks, significant issues arise.

In a trademark license, the IETF Trust, as licensor, would have the power
to terminate the license according to its terms (e.g., for material breach
of the agreement, misuse of the trademark, etc.) or to decide not to renew
the license, in which case ICANN would no longer have the right to use the
IANA trademark in the provision of services.  It would be inappropriate for
the IETF Trust to have this power, without accountability to and oversight
by the names and numbers communities.  A mechanism would need to built for
that.

Quality control presents another challenge.  In virtually all
circumstances, a licensor exercises these quality control obligations
through an employee or employees knowledgeable and capable of exercising
quality control over the licensee and its services.  .It may also be
appropriate for the operational communities to be involved in quality
control and other aspects of the license as well, especially since quality
control and trademark usage guidelines can be changed from time to time,
typically at the licensor’s discretion, and since the IETF is not in a
position to exercise quality control in the names and numbers space.  This
may require amendment of the IETF Trust Agreement, as well as the drafting
of a somewhat unusual trademark license.

Furthermore, the IETF Trust would also be responsible for policing and
enforcement of the trademark against third parties and for maintenance of
trademark registrations.

It is not clear how the IETF Trust intends to carry out any of these roles.

Also, for the IETF Trust to become the owner of the IANA trademark, ICANN
would need to assign all of its right, title and interest in and to the
IANA trademark to the IETF Trust, along with all goodwill relating to the
mark (typically, in exchange for good and valuable consideration).  This
may require a valuation of the IANA trademark and its associated goodwill,
which in turn may have tax or other financial consequences for one or both
parties.

Finally, the IETF Trust, as such, may not  be capable of owning the IANA
Trademark, since the IETF Trust does not appear to be a “legal entity.”  If
this is correct, the Trustees (in their role as Trustees) are the
collective owners of the IANA Trademark (in trust for the IETF, as
Beneficiaries of the IETF Trust), and would need to enter into the
trademark license (again, in their role as Trustees of the Trust).  This
appears to be consistent with Section 9.5 of the Amended and Restated Trust
Agreement and the ownership of the IETF trademarks (which are owned by “The
Trustees of the IETF Trust”) in the USPTO database.  (Oddly, this is
inconsistent with the IETF General Trademark License (on the IETF Trust
website) which states that the IETF Trust is the licensor of the IETF
marks, and which also lacks appropriate quality control provisions.)

Greg Shatan

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning at karoshi.com> wrote:

> Missed the attachment…   which now is attached!
>
>
> manning
> bmanning at karoshi.com
> PO Box 12317
> Marina del Rey, CA 90295
> 310.322.8102
>
>
>
> On 10June2015Wednesday, at 0:12, manning <bmanning at karoshi.com> wrote:
>
> >
> > On 19 May 2015, the number community provided specific feedback
> regarding the need for alignment on the IETF trademark and domain (see
> attached email from Izumi to the CWG call for comments).
> >
> > Did you notice that the most recent draft (v5) for discussion that came
> out yesterday morning specifically moves farther away from this direction,
> leaving these marks in ICANN rather than moving them to the IETF Trust?
> >
> > CWG email re new draft - -<
> http://mm.icann.org/pipermail/cwg-stewardship/2015-June/003650.html>
> > Draft Document - <
> http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscussion-0001.docx
> >
> >
> > Proposed text in most recent document -
> >
> >> " ICANN grants to PTI an exclusive, royalty-free, fully-paid, worldwide
> license to use the IANA trademark and all related trademarks, and all
> applications and registrations therefor, for use in connection with PTI’s
> activities under the ICANN-PTI Contract. “
> >
> > this moves the draft farther away from the received comments, and would
> this make the ICG’s job of aligning the various proposals from the affected
> parties into a cohesive plan even more difficult?
> >
> > It might be premature to go to BA with this as an accepted direction,
> without concurrence from the affected parties.
> >
> >
> > manning
> > bmanning at karoshi.com
> > PO Box 12317
> > Marina del Rey, CA 90295
> > 310.322.8102
> >
> >
> >
> > _______________________________________________
> > CWG-Stewardship mailing list
> > CWG-Stewardship at icann.org
> > https://mm.icann.org/mailman/listinfo/cwg-stewardship
>
> _______________________________________________
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>
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