[CWG-Stewardship] FW: IPR follow up

Tue Jan 12 08:27:17 UTC 2016

Greg,

Thanks for the quick response.  I confess my focus is almost entirely on the control of the domain names.  I know you place great weight on the control of the trademarks, but I truly believe that’s of only modest concern in this context.

I have asked a couple of the current IETF Trust trustees to recover the sequence related to the domain names.

Meanwhile, even with the record of the IANA trademarks being created at USC and transferred to ICANN, my sense is the creation of the IANA function in the first place and its mode of operation was by agreement with the IETF and its predecessors.  I understand this might not seem relevant to you if you’re researching only court and agency filings, but the connection between the IETF and the IANA function is at the absolute core of the de facto history.

Steve

On Jan 12, 2016, at 2:44 AM, Greg Shatan <gregshatanipc at gmail.com> wrote:

> Steve,
> 
> The history you are recounting seems to be primarily the story of the IETF trademarks, not the IANA trademarks.  This is based on my review of US Patent & Trademark Office records.
> 
> Specifically, it was the IETF trademarks that were originally applied for by CNRI. The IETF SECRETARIAT mark was applied for in 1999 by CNRI, and registered in 2000.  The IETF and IETF Logo trademarks were applied for by CNRI in November 2005.  On December 15, 2005, the IETF SECRETARIAT registration and the two IETF applications were assigned to the IETF Trust. (Assignment attached) The two applications subsequently registered in the name of the IETF Trust.
> 
> The history of the IANA trademarks is quite different:
> 
> USC applied to register two trademarks in 1997: IANA and INTERNET ASSIGNED NUMBERS AUTHORITY.  These both registered in the name of USC in 1999.  In 2000, USC and ICANN entered into a “USC/ICANN Transition Agreement” in which USC agreed to assign to ICANN the marks  INTERNET ASSIGNED NUMBERS AUTHORITY, IANA and IANA (Logo form). USC also signed an assignment document, transferring to ICANN USC’s "entire right, title and interest” in and to (i) Reg. No. 2,277,028 for IANA, (ii) Reg. No. 2,217978 for INTERNET ASSIGNED NUMBERS AUTHORITY, and (iii) the common law trademark rights to the IANA Logo. (Assignment attached)  ICANN filed its own applications for the IANA Logo (in 2001), INTERNET ASSIGNED NUMBERS AUTHORITY (in 2003) and IANA in 2007, all of which subsequently registered in the name of ICANN.  (These newer registrations improved upon and replaced the original USC registrations.)
> 
> I see no evidence that CNRI or IETF ever had any ownership interest or other interest in the IANA marks, or that either entity engaged in any transaction with ICANN regarding the IANA marks.  I find this very hard to reconcile with the claim that "The transfer of the IANA marks to ICANN was with the clear understanding these fundamentally belonged to the IETF."  Perhaps you were thinking of the IETF marks?
> 
> Any help in clearing all this up would be most appreciated.
> 
> Greg
> 
> On Tue, Jan 12, 2016 at 1:48 AM, Steve Crocker <steve.crocker at icann.org> wrote:
> Andrew,
> 
> You’ve spoken too mildly.  Setting up a lightweight trust that parallels the IETF Trust is indeed a small piece of work, but the direction of the proposal for a separate trust is implies a LOT of work, exploration of an unbounded and undefined set of issues, and an unclear but potentially substantial level of expenditure.  So, your suggestion that expedient and workable should be given high value is indeed a strong point.  But I will suggest the argument in favor of the IETF Trust is even stronger.
> 
> The marks and domain names were transferred from the IETF to ICANN as part of the creation of the IETF Administrative Support Activity (IASA), in 2005.  (I think I have the date correct.)  Prior to that, the marks were held by the Corporation for National Research Initiatives (CNRI), Bob Kahn’s non-profit operation.  There was a lengthy tussle between Bob Kahn and the IETF that lasted a few years.  Bob had been providing the support for the IETF and had been controlling its funds.  Eventually, Bob withdrew from providing these services and controlling the funds, and the IETF took control of its finances and its services. The transfer of the IANA marks to ICANN was with the clear understanding these fundamentally belonged to the IETF.  In my view, it is entirely natural and appropriate for these marks to be placed in the IETF Trust and that arrangements for their continued use by ICANN in order to provide the IANA service is all that’s necessary.
> 
> Steve
> 
> 
> 
> On Jan 12, 2016, at 1:31 AM, Andrew Sullivan <ajs at anvilwalrusden.com> wrote:
> 
> > Hi,
> >
> > On Mon, Jan 11, 2016 at 01:56:41PM -0500, Greg Shatan wrote:
> >
> >> But to my mind, it is expedient rather than preferable.
> >
> > I won't speak for the IETF Trust, but speaking as a Trustee I can say
> > that _I_ think it is expedient rather than preferable, too.  Given
> > that whatever we do has to be completely sewn up in time for a
> > transition in Q4 of 2016 (i.e. roughly 10 months from now), I think
> > that "expedient and workable" ought to be a high-value qualifying
> > criterion.
> >
> >> Actually, I think it would be quite helpful.  Furthermore, I don't think
> >> that there are significant economic or resource differences between working
> >> up an arrangement with the IETF and working up an arrangement for a new
> >> trust.
> >
> > You are suggesting is that hammering out a new trust agreement among
> > three operational communities that will specify a new governance
> > structure, and then hammering out all the other issues that one needs
> > in an agreement, will take no more time than just doing the second of
> > those things.  I would like to know why you think that.  It's
> > certainly true that setting up a new trust is the work of an afternoon
> > for a competent lawyer.  But I don't think that's the hard part here.
> > Given that we've had months to tackle this question and haven't yet
> > even agreed amongst ourselves what principles should apply, I cannot
> > say I'm optimistic that setting up a completely new legal entity in
> > collaboration with two other communities -- both of which have to go
> > through their own consensus processes in order to agree to do it --
> > will be the fast path.
> >
> > Best regards,
> >
> > A
> >
> > --
> > Andrew Sullivan
> > ajs at anvilwalrusden.com
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