[CWG-Stewardship] FW: IPR follow up

Mon Jan 11 18:23:06 UTC 2016

Hi,

I think Jari actually answered some of these, but I'll make some
remarks below.

On Mon, Jan 11, 2016 at 11:01:33AM -0500, Greg Shatan wrote:

> Particularly, we need to determine whether an entity controlled by IETF's
> administrative group with the IETF as its sole beneficiary is an
> appropriate home for a resource shared among the three operating
> communities?  Should any entity holding the IPR ultimately be controlled by
> all 3 communities?  Would a shared, purpose-built trust be more appropriate
> in the long run for holding the IPR, rather than using an entity built for
> another purpose?

I really would like the CWG to come to a quick decision about that.
The IETF Trust has offered to do this really just because it seemed
easier than working out a new trust agreement and all the checks and
balances that Greg seems above to be suggesting are important.  If the
CWG thinks those are important, then the IETF Trust can stop doing any
preparation work around this.

> GSS: There are 3 trademarks, each separately registered with the US Patent
> & Trademark Office: "Internet Assigned Numbers Authority", "IANA" and the
> IANA logo (which, as registered, includes the phrase "Internet Assigned
> Numbers Authority").  There are also 3 domains -- iana.org, iana.net, and
> iana.com.  Presumably, all of these would be transferred away from ICANN to
> the trust.  Can you confirm that is the intention?

Yes, that's the idea.

> GSS: Are you sure that the IETF Trust is a "private trust" and not a
> "public trust"?  As I understand it, private trust is a trust created to
> benefit a particular named entity, person or set of persons.  In contrast,
> a public trust (also known as a charitable trust) is created for a
> charitable purpose.  This is significant in understanding the nature of the
> IETF Trust, as well as the relationship between the beneficiary and the
> trust's assets.

The words "a provate trust" came from the IETF Trust's lawyer.  So
yes, I'm pretty sure.

> GSS: I agree that an Assignment Agreement will be needed to transfer the
> IANA IPR to any future owner.  (Note that the USPTO disregards trusts as
> trademark owners, so the owners of record would be the trustees (and would
> need to be updated when these change -- I note that the IETF Trust has
> neglected to do this with its own marks).)

There seems to have been a paperwork snafu in this case, which came to
my attention last fall when we started talking about doing this.  I've
asked again why this isn't fixed yet.  I regard it as a high priority
item.  The IETF Trustees actually sign something explicitly taking
this duty on when we become Trustees, so I was both vexed and
surprised to discover the completion of that work was incomplete.

> > 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
> >
> 
> GSS: I am not familiar with this type of agreement.  Is this a novel
> agreement, invented for this purpose?  If not, it would be helpful to be
> pointed to information on this type of agreement.  If these are novel, they
> could include almost anything; as such, their terms would be absolutely
> critical to the success of any set-up.

It's just the name we came up with for the kind of agreement we'd
need.  Yes, the terms are the important thing.

> More broadly, this is only one of several ways in which the OC's could
> relate to and control the actions of the trust.  Although I appreciate
> this as one suggestion, it would be appropriate to consider the
> alternatives (especially since this alternative appears to be novel).

As I think I've said repeatedly, the "control the actions of the
trust" bit would require changes to the IETF Trust itself, and I don't
think that's a practical alternative.  So the CWG really needs to make
up its collective mind as to whether the IETF Trust with some sort of
agreement between it and the names community (ICANN, I guess?) will be
an acceptable solution.  If so, we can get to work on the terms of
that agreement (and this is just one suggestion, in the interests of
having something concrete to talk about).  IF not, then we have a
different problem, and it'll be important to know that pronto.

> Finally, the term "Assurance Agreement" is peculiar, and presumably
> intended to invoke a particular type of relationship.  I would be curious
> to know more about this "assurance" relationship.  I would probably call
> these "Community Control Agreements" -- but that would invoke a different
> type of relationship.  This is not a semantic issue -- it's critical to
> know how the parties view their relationship to each other.

It's hard for me to see how the communities can have "control", since
as you keep pointing out it is the trade mark holder (which would be
the Trust) that has the duty to make decisions about the trademark.
So, the Trust (whichever Trust we use) ends up having to assure the
community that it will act in accordance with community wishes.  Hence
the name.

> GSS: The Community Assurance Agreements (and/or any other arrangements put
> in place) need to do more than this -- they need to establish how the OC's
> control the actions of the trust and how they hold the trust accountable
> (up to and including removal of trustees and transferring the IANA
> trademarks and domain names away from the trust if it is not acting in
> accordance with its obligations).  As noted above, the IETF AOC also act
> as the Trustees of the IETF Trust.  This creates an imbalance that needs to
> be addressed if the IETF Trust is to be the future owner.

I don't understand the imbalance you see, but the IETF Trustees can be
removed according to the IETF recall procedures and otherwise can't
be.  It is a waste of time to explore changing those arrangements,
because it would involve a full IETF process discussion (which, I
assure you, you probably don't want to start) requiring opening a
fairly delicate set of issues.  If the CWG really thinks that it
cannot get the assurances it needs from the IETF Trust, then we should
simply say so and tell the other communities that we need to get a new
trust in place.

> > IETF Trust would maintain, license and monitor the use of the trademarks.

> GSS: This overlooks (probably inadvertently) the key obligation of a
> trademark licensor -- to monitor the quality of the goods and services
> offered by the licensee.  This is a different obligation than monitoring
> the use of the trademarks.

I think this is plainly a distinction that is important to you,
because you keep talking about it, but I think in that text you can
assume the distinction isn't being attended to.  We agree that any
trust would need to monitor that quality of goods and services.  The
way to do that, of course, is to ask the relevant community whether it
is satisfied.

> GSS: Does the IETF contemplate one or three of these agreements?

I don't think we care.  For the sake of simplicity it might be easier
to do three bilateral agreements.

> GSS: Initially, this license should be exclusive, until another entity
> takes on a role as an IFO for names, numbers or protocols, and thus needs a
> license as well).

That would appear to me to create yet another barrier to such an
alternative IFO, without any obvious benefit.  Why do it that way?

> GSS: This is unacceptable.  The trust cannot have a unilateral right to
> terminate the license, so long as one or more OC's wishes to have PTI
> continue as its IFO.  The trust should only be able to terminate the
> license upon express instruction from one or more OC's, and unless its from
> all 3 OC's, the termination would have to be partial (limited to the
> relevant function) while continuing for the remaining OC's.  I should also
> note that these are particularly "licensor-favorable" (as opposed to
> neutral) termination rights, based on my experience with trademark licenses.

I don't see how you can have it this way and still have the Trust own
the trademark. 

Best regards,

A

-- 
Andrew Sullivan
ajs at anvilwalrusden.com