[CWG-Stewardship] FW: IPR follow up

Fri Jan 8 17:56:28 UTC 2016

Please see below for draft principal terms as provided by Jari Arkko.

Note that this draft was provided as an example that "could apply to other
parties as well as the IETF Trust, are in no way set in stone, but hopefully
they give some indication of the kind of arrangements that could be done."

--

Example Principal Terms of Intellectual Property Agreements

This draft relates to a possible use of IETF Trust as an independent entity
to hold IANA-related IPR. The IETF Trust is one of the discussed alternative
holders of IPR.

This non-binding draft has been prepared in order to assist in discussion
only.  No offer to enter into a binding agreement is expressed or implied
herein. The IETF Trust has provided this draft as a hopefully helpful
initial contribution, but clearly discussion in the various communities and
further work is needed. Comments are appreciated.

A. Background

The ICG proposal indicates that the IANA trademark and iana.org
<http://iana.org>  domain should be transferred to an entity independent of
the IANA Numbering Services Operator.

The IETF Trust would be a potentially acceptable candidate for this role,
and the Trust has discussed the implications of assuming this
responsibility. The following is some background of the Trust's position and
an overview of how the role and responsibilities may be fulfilled.

While this fulfillment is a part of implementation rather than the ICG
proposal, the IETF Trust wants to ensure progress on determining those
implementation steps. The Trust is of course only one of the possible ways
to satisfy the requirements from the ICG proposal. Nevertheless, the Trust
wanted to start by suggesting an overall framework for one way of satisfying
the requirements. 

The IETF Trust is a Virginia USA private trust, the trustees of which are
the members of the IETF Administrative Oversight Committee (IAOC), and the
beneficiary of which is the IETF community.  The purpose of the IETF Trust
includes acquiring, holding, maintaining and licensing certain existing and
future intellectual property and other property used in connection with the
Internet standards process and its administration, for the advancement of
the science and technology associated with the Internet and related
technology.

B. Framework

The Trust believes it would need to enter into three different types of
agreements to effect the transfer of the IANA intellectual property (IP) and
to enter into licensing arrangements with the IANA service provider(s).

These agreements include:

1.  An Agreement between ICANN and the IETF Trust transferring the IANA IP
to the IETF Trust

2.  Community Assurance Agreements between the IETF Trust and each of the
names, numbers, and protocol communities (the IANA communities) regarding
the Trust's commitments to each as further described below, and

3.  Agreement(s) whereby the IETF Trust provides for the use of the iana.org
<http://iana.org>  domain, or a subdomain, and licenses the use of the IANA
trademarks to the IANA service provider(s) selected by the IANA communities.

The Trust understands that each community would need to follow its own
internal processes before entering into any agreements, or selecting an IANA
service provider. The same is true of the Trust itself.

The Community Assurance Agreements with the IANA communities would establish
and recognize the responsibilities for each community to identify and enter
into agreement with their selected service provider, and for the IETF Trust
to provide, update, and revoke licenses as needed to support these
selections.

In order to preserve the value and integrity of the IANA trademarks, the
IETF Trust would maintain, license and monitor the use of the trademarks.
Trust actions would include enforcement against unauthorized users and
monitoring the quality and uses by the licensed user(s). The Trust would
work with the relevant IANA communities to address issues involving a
licensee before taking action to maintain the quality of the trademarks.

C. Terms

The following contains examples of the principal terms that may need to be
included in such agreements should the community desire for the IETF Trust
to take on the role of the Independent Entity. This non-binding draft has
been prepared in order to assist in discussion only.  No offer to enter into
a binding agreement is expressed or implied herein. 

C.1.  IP Transfer Agreement (between ICANN and IETF Trust)

a.  When requested by the IETF Trust, ICANN will transfer and assign all of
its rights in and to the IANA IP, including all goodwill therein, to the
IETF Trust (the "Transfer").  The IETF Trust will not assume any obligations
or liabilities of ICANN that arose prior to the Transfer.

b.  ICANN will file all necessary assignment documentation with all local,
national and regional offices in which the IANA IP is registered including,
without limitation, the U.S. Patent and Trademark Office and the registrar
for iana.org <http://iana.org>  (GoDaddy), and will pay all fees associated
with such filings.  With respect to iana.org <http://iana.org>  and any
other domain names within the IANA IP, the IETF Trust will be designated as
the administrative contact with the registrar.

c.  ICANN will make customary representations and warranties to the IETF
Trust regarding title to the IANA IP, absence of actual or threatened
litigation, the existence of any licenses or other encumbrances on the IANA
IP, and non-infringement of third party rights, all qualified by the
knowledge of ICANN's in-house legal department.

d.  ICANN will indemnify the IETF Trust, PTI and any future licensee of the
IANA IP against any liability associated with use of the IANA IP prior to
the Transfer Date.  The IETF Trust will indemnify ICANN and any prior
licensee of the IANA IP against any liability associated with use of the
IANA IP after the Transfer Date to the extent that IETF Trust receives a
comparable indemnity from PTI or its successor entity.

C.2.  Community Assurance Agreement (between IETF Trust, IETF, RIRs, and the
names community)

a.  This Agreement will ensure that the IETF Trust holds and licenses the
IANA IP in a manner that is agreed with the IETF, RIRs and the names
community. 

b.  For purposes of this Agreement, the RIRs, the IETF and the names
community will each select a single Representative to be the point of
contact with the IETF Trust on matters pertaining to the IANA IP,
collectively the "IANA IP Reps".  

c.  The IETF Trust will hold, maintain and renew the IANA IP in accordance
with good IP management practices and shall seek new territorial
registrations based on the IANA IP as instructed by the IANA IP Reps.

d.  The IETF Trust will license the IANA IP to PTI and any successor
provider(s) of the IANA functions identified by the IANA IP Reps. Such
license shall include the provisions described in Part III below.  The IETF
Trust will terminate the license to PTI or any successor upon the
instructions of the IANA IP Reps.

C.3.  IANA IP License Agreement (between IETF Trust and PTI)

a.  The IETF Trust will grant PTI a non-exclusive, worldwide, royalty-free
license, without the right to sublicense, to display and reproduce the IANA
marks in connection with its provision and marketing of the IANA functions.

b.  All use of the IANA marks shall be in accordance with mutually-agreed
quality requirements, as well as size, color, placement and similar
guidelines to be agreed.

c.  The IETF Trust will authorize PTI to operate via the iana.org
<http://iana.org>  domain and any number of sub-domains.  IETF Trust shall
appoint PTI as the technical contact for the iana.org <http://iana.org>
domain during the term of the agreement.  PTI shall use iana.org
<http://iana.org>  and all associated subdomains exclusively for purposes of
offering the IANA functions.

d.  All goodwill arising from use of the IANA IP will inure to the benefit
of the IETF Trust, and PTI will not register or reserve any mark that
contains, is identical or confusingly similar to any IANA mark in any
jurisdiction, whether as a trademark, service mark, trade name or domain
name.

e.  The IETF Trust will have the sole right to enforce the IANA marks
against infringers, at its expense.  PTI will use reasonable efforts to
notify IETF Trust of any such infringement that comes to its attention.
IETF Trust will be entitled to retain all damages received as a result of
its enforcement of the IANA marks.

f.  The IETF Trust will be entitled to terminate the agreement, without
penalty, following a material breach by PTI which is not cured within 30
days following notice thereof, an insolvency or bankruptcy event by PTI, the
involvement of PTI or any of its officers or directors in any criminal,
civil or regulatory proceeding or investigation that is likely, in IETF
Trust's opinion, to tarnish the IANA marks or the reputation of IETF, the
termination, expiration or non-renewal of the PTI Service Agreement(s), or
upon the express instruction of the IANA IP Reps.

g.  Upon termination of the agreement, PTI will immediately cease all use of
the IANA IP and shall transfer technical control of the iana.org
<http://iana.org>  domain to the IETF Trust.

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