[CWG-Stewardship] drift in v5

Wed Jun 10 20:05:26 UTC 2015

Hi Greg,

Perhaps its worth noting that the other 2 operational communities are still
considering whether to contract directly with PTI as their proposals
currently indicates contracting with ICANN. So if for instance there is a
need for numbers community to move its functions, it would be appropriate
that the entity its contracting with provides access to the IANA trademarks
accordingly.

As far as PTI is concerned at the moment, its separation mechanisms as
proposed by CWG is largely based on the names community (with the other 2
communities having optional liaison roles). Based on that, i don't see the
other 2 communities agreeing to transfer the IANA transdemarks (which is
for all 3 operational communities) to PTI whose accountability mechanism is
largely names based.

Regards

On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan <gregshatanipc at gmail.com>
wrote:

> Maarten,
>
> That is not my understanding of separation.  If ICANN selects a new
> provider, that provider would take all of the assets of PTI (including the
> trademarks, under this scenario), so it could provide the IANA services.
> PTI would then be wound down and ultimately dissolved by ICANN.  Recall
> that PTI is a controlled entity of ICANN and would remain so throughout.
> In this case, the IANA operations are separated from PTI.
>
> If PTI is actually separated (spun out) from ICANN so that it is no longer
> under ICANN control, it would be done to further separate the IANA
> Functions from ICANN and IANA would continue as a going concern (active
> business).
>
> Under no circumstances does PTI become separated from ICANN without
> continuing to serve as the IANA operator, yet continue to hold IANA-related
> assets.
>
> Greg
>
> On Wed, Jun 10, 2015 at 3:44 PM, Maarten Simon <maarten.simon at sidn.nl>
> wrote:
>
>>  Hi Greg,
>>
>>  I would like to respond to your suggestion:
>>
>>  '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 PTI is separated, ICANN will select a new IANA provider. Am I
>> correct that if the IANA trademarks rest with PTI, we will than have to
>> rename the services after the separation and they will not any longer be
>> named the IANA services ?
>>
>>  If that is correct, I rather keep the rights in ICANN.
>>
>>  Best,
>>
>>  Maarten
>>
>>   From: Greg Shatan <gregshatanipc at gmail.com>
>> Date: Wednesday 10 June 2015 21:06
>> To: manning <bmanning at karoshi.com>
>> Cc: "cwg-stewardship at icann.org" <cwg-stewardship at icann.org>
>> Subject: Re: [CWG-Stewardship] drift in v5
>>
>>   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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>>> CWG-Stewardship at icann.org
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>>>
>>>
>>
>
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