[CWG-Stewardship] drift in v5

[Greg Shatan]

Alan,

I was going to go into the technical issues regarding managing the domain
name issue, but I stopped myself, ssince as you say these issues will exist
regardless of who is the domain registrant.  Indeed, if the IETF Trust were
to start operating the iana.org website after the transition, those issues
would arise quickly.

Since you've opened the door to the subject, I'll walk in. (FWIW, I
probably spend far more time these days dealing with tech issues than pure
trademark issues....)

There are several alternatives.  First, the page at iana.org could be used
as a disambiguation page.  An example of this can be found at
www.scrabble.com.

[image: Inline image 1]

Indeed, the current iana.org home page is already very close to this, with
separate sections for domain names, number resources and protocol
assignments.  Clicking on these leads to third level pages under domains,
numbers and protocols.  These could easily be reworked into subdomains
domains.iana.org, numbers.iana.org and protocols.iana.org, which could then
be hosted on servers managed by the community that has separated from ICANN
as the IFO.  Alternatively, the link for domains, numbers or protocols
could go to an entirely different second level domain (e.g.,
iananumbers.web).

Another alternative is for the separating customer to stop using the
iana.org domain entirely, but the first two options are probably more
palatable and less disruptive.  If this is approach is taken, you would
probably want some form of notification (I would say a pop-up, but pop-up
blockers make that suboptimal) of the new domain name, at least for a
period of time.

This could be dealt with by contract now or at the time of the split (or
some combination of the two).

Greg

On Wed, Jun 10, 2015 at 11:29 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.
>
> Like Chuck, I may be naive (something I have rarely been accused of), but
> I cannot see the details of the implementation being of concern to the
> AC/SO (with the possible exception of the ASO and the IPC).
>
> Alan
>
>
> At 10/06/2015 08:21 PM, Milton L Mueller wrote:
>
>  Maarten,
> The simple rationale for the numbers proposal, and the protocol
> community’s acceptance of it, was that both of them insist on having the
> right to switch IANA functions operator at some time in the future. If the
> IANA trademarks and domains are “owned†by a single IFO we cannot have
> that separability. If we want the IFO to be able to change, then the
> trademarks and domains must not he owned by either ICANN (which is the
> “owner’/controller of PTI) or any subsequent IFO. It’s that simple.
>
> --MM
>
> From: cwg-stewardship-bounces at icann.org [
> mailto:cwg-stewardship-bounces at icann.org
> <cwg-stewardship-bounces at icann.org>] On Behalf Of Maarten Simon
> Sent: Wednesday, June 10, 2015 4:22 PM
> To: Seun Ojedeji; Greg Shatan
> Cc: cwg-stewardship at icann.org IANA
> Subject: Re: [CWG-Stewardship] drift in v5
>
> Next to Seun’s argument, I think the trademarks should remain with ICANN
> as it is ICANN that will grant PTI the right to operate the IANA functions
> through the contract. It seems logical to me that ICANN only provides a
> license to PTI to use the trademarks through the same contract and not
> transfer the trademarks themselves.
>
> The further question is if in the case of a separation the assets will go
> from PTI to the new entity (probably in practise: yes) but in a legal sense
> I would assume that PTI returns the assets to ICANN and that ICANN provide
> these to the new operator.
>
> From: Seun Ojedeji <seun.ojedeji at gmail.com >
> Date: Wednesday 10 June 2015 22:05
> To: Greg Shatan <gregshatanipc at gmail.com >
> Cc: SIDN SIDN <maarten.simon at sidn.nl>, " cwg-stewardship at icann.org" <
> cwg-stewardship at icann.org>
> Subject: Re: [CWG-Stewardship] drift in v5
>
> 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 > > > > _______________________________________________ >
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> --
>  ------------------------------------------------------------------------ Seun
> Ojedeji, Federal University Oye-Ekiti web:     http://www.fuoye.edu.ng Mobile:
> +2348035233535 alt email: seun.ojedeji at fuoye.edu.ng The key to
> understanding is humility - my view !
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