[CWG-Stewardship] FW: IPR follow up

[Seun Ojedeji]

Thanks for sharing this Jonathan, its a very welcome approach. Kindly a few
comments inline:

On 8 Jan 2016 6:57 PM, "Jonathan Robinson" <jrobinson at afilias.info> wrote:
>

>
> A. Background
>
> The ICG proposal indicates that the IANA trademark and iana.org domain
should be transferred to an entity independent of the IANA Numbering
Services Operator.
>
>
+1 on this simple and straight forward requirement.
>
>
>
> B. Framework
>
> These agreements include:
>  An Agreement between ICANN and the IETF Trust transferring the IANA IP
to the IETF Trust
>
SO: Isn't this going to include the domain iana.org? Aside from the normal
technical record transfer described further below(godaddy), it may be good
to capture the actual transfer of the domain on paper as well.

> 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
>
SO: Who is the names recipient/party in this segment? ICANN or PTI?

>
>
> 3.  Agreement(s) whereby the IETF Trust provides for the use of the
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.
>
SO: Am I right by assuming that PTI would sign for the 3 OCs as that would
become the IFO post transition? So there may be no need for plural
agreement in this segment.

>
>
> 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.
>
SO: This is fair enough but I hope this is not suggesting a new process to
selecting IANA service provider as I think the ICG proposal should be
enough source of information for the initial agreement. I see no reason why
anyone would change their mind before completion of current transition
process.

>
>
> 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.
>
SO: comment same as above.

>
>
> 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.
>
SO: Thanks

>
> C. Terms
>  .
>
> 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.
>
SO: May be good to know/understand if indeed there are any existing
liabilities and its implications once the transfer happen. Perhaps this
question could be sent to ICANN legal/staff incharge of these

> 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 (GoDaddy), and will pay all
fees associated with such filings.  With respect to iana.org and any other
domain names within the IANA IP, the IETF Trust will be designated as the
administrative contact with the registrar.
>
SO: If this includes subsequent fees, then it should be indicated.

> 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.
>
SO: makes sense.

> 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.
>
SO: Seem to be similar to section a above? My comment on that applies.

> 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”.
>
SO: It's not clear if the reps referred to would be from the community or
staff. I would suggest that it be from staff. Or better still 1 from both.

>
>
> 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.
>
SO: Most likely this answers my question on section B3

> 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.
>

SO: Fair enough, does this mean the service agreements will be renewed
periodically? I think it may be good to have something constant that only
changes once there is a breach or change in IANA service provider.

> 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 domain
to the IETF Trust.
>
SO: Does this envisage that PTI may actually be serving at least one of the
OCs and so may still require to have need to have access to the IPR. A
scenario where numbers for instance decide to pull out OR a scenario where
PTI's breach is only in connection with one of the OCs

Overall I am glad with the progress made on this and most importantly the
direction this is going. Thanks to the IETF for owning up on this. ;-)

Regards
>
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