[CWG-Stewardship] drift in v5

[John Poole]

CWG, Alan, Greg, Andrew, Milton:

Reference to the historical record may also be helpful to resolve this
issue (IANA marks):

USC/ICANN TRANSITION AGREEMENT (USC is the University of  Southern
California)—
https://www.icann.org/resources/unthemed-pages/usc-icann-transition-2012-02-25-en
which states in 2.1:

2. INTELLECTUAL PROPERTY.

2.1 Service Mark and Copyright Assignment. USC hereby assigns and transfers
without warranty unto ICANN USC's entire right, title and interest in and
to the following:

(a) the "Internet Assigned Numbers Authority" service mark pending
registration, the "Internet Assigned Numbers Authority" common law service
mark, the "IANA" service mark pending registration, the "IANA" common law
service mark, and the common law service mark in the IANA logo shown in
Exhibit "A" attached hereto (collectively, the "Service Marks"), and the
goodwill associated with the Service Marks; and

(b) the copyright to, and all other exclusive rights to reproduce,
distribute, prepare derivative works based on, display, and otherwise use,
the IANA logo shown in Exhibit "A" attached hereto, pursuant to the terms
and conditions of that certain Service Mark and Copyright Assignment
attached hereto as Exhibit "B" (the "Service Mark and Copyright
Assignment")."

The University of Southern California – ICANN Transition Agreement is
specifically referred to and approved by the United States Government in
the original IANA Contract (February 9, 2000)
http://www.ntia.doc.gov/files/ntia/publications/ianacontract.pdf

Nowhere in the historical record do I find any other entity holding or
claiming Common Law or Registration rights to the IANA marks prior to the
University of Southern California (USC), although RFC 1174 says that
"Throughout its entire history, the Internet system has employed a central
Internet Assigned Numbers Authority (IANA)..."

The first reference to the name "IANA" or “Internet Assigned Numbers
Authority” in the RFC series is in RFC 1060:

RFC 1060 --March 1990:

“… current information can be obtained from the Internet Assigned Numbers
Authority (IANA).  If you are developing a protocol or application that
will require the use of a link, socket,  port, protocol, etc., please
contact the IANA to receive a number assignment.

   Joyce K. Reynolds
   Internet Assigned Numbers Authority
   USC - Information Sciences Institute
   4676 Admiralty Way
   Marina del Rey, California  90292-6695 …”

US Trademark Registration for IANA shows an original “Filing Date of March
21, 1997” by “Owner (REGISTRANT) University of Southern California
NON-PROFIT CORPORATION CALIFORNIA University Park, ADM 352 Los Angeles
CALIFORNIA 900895013,”  subsequently assigned by USC (“entire interest”) to
ICANN
http://assignments.uspto.gov/assignments/q?db=tm&qt=sno&reel=&frame=&sno=75261386

ICANN subsequently filed its own separate registrations of the IANA marks
in 2001 and 2007.

Domain name iana.org has a "created date" of 1995-06-05 according to the
WHOIS, current registrant is ICANN.

The historical record, in my view, supports the position that these
property rights should remain with ICANN which can then license their use
by its affiliate PTI, or any other third party.

Best regards,
John Poole

On Wed, Jun 10, 2015 at 10:29 PM, Alan Greenberg <alan.greenberg at mcgill.ca>
wrote:

>  Greg, not quite.
>
> You are thinking about this as a TM attorney. There are also technical
> issues. Currently iana.org has uses within all three communities and it
> is simple to do since it ia all run out of the current IANA. If there were
> to be a split at some point, it is not just a matter of granting the right
> to use the TM, but creating the mechanics to allow the domain name to be
> transparently used by all three entities. And if one of the groups has left
> because they no longer have faith in the ability of the then-current IANA
> to do things correctly, that could be problematic.
>
> But the problems will be there regardless of where the iana.org name
> resolves to if there is a split. The best we can do is try to cover it with
> contractual assurances.
>
> And as was pointed out ion the IETF list when this was first discussed.
> Although no one wants to stop using iana.org, and it would probably more
> disruptive for the IETF than others (my recollection is that the name is
> built into code), we would survive.
>
> Alan
>
>
>
> At 10/06/2015 11:15 PM, Greg Shatan wrote:
>
> Alan,
>
> You took the words out of my mouth.  A clause in the agreements between
> ICANN and the other two communities should require ICANN to grant a
> worldwide royalty-free license to use the trademarks. This is a simple fix.
> If we want to get fancy, there can be a contingent license that
> automatically springs into place when the customer separates.
>
> I also agree with your point on defense/enforcement.
>
> Greg
>
> On Wed, Jun 10, 2015 at 11:03 PM, Alan Greenberg <alan.greenberg at mcgill.ca
> > wrote:
>  I refrained from weighing in when this was first discussed and in this
> iteration. But I will now. I think that whatever the solution, there must
> be some principle adhered to:
>
> 1. The TM must be owned by an entity that is prepared to defend it if
> necessary.
>
> 2. Whoever owns it must enter into an agreement with all three users of it
> (or the other two if the owner is one of the users) so that if that user
> chooses to move withdraw from the IFO used by the others, the TM owner will
> grant it all necessary rights and privileges to continue using the TM with
> no user disruption.
>
> In my opinion, it makes sense for the owner to be ICANN for the immediate
> future, because it will, either directly or through PTI, have agreements
> with the RIRs and the IETF and those agreements are reasonable places in
> which to embody principle 2. And ICANN has the funding and legal resources
> to defend the TM if necessary.
>
> But there are certainly other solutions that could also satisfy both
> principles...
>
>
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