[CWG-Stewardship] FW: IPR follow up

[Greg Shatan]

Andrew,

Thanks for your comments.  My responses are below yours.

Greg

On Mon, Jan 11, 2016 at 1:23 PM, Andrew Sullivan <ajs at anvilwalrusden.com>
wrote:

> 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.
>

​If this is a private trust, set up for the benefit of the IETF, and not a
public (i.e., charitable) trust, set up for a public benefit, that raises
significant concerns about its fitness for purpose here.  Can you double
check this with counsel, and forward him my comment above?​  By the way,
who is the lawyer in this instance?

>
> > ​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.
>

​I too hope that we can get to the nub of the issues here.  It's
unfortunate that the IETF is not more flexible about remaking the trust
into a form more appropriate for a shared asset, but perhaps that's helpful
in that it gives us fewer and clearer alternatives (i.e., take the IEFT
Trust as is or don't take it at all).  "Some sort of agreement" is
unfortunately rather vague.  What's critical at this point is the "balance
of power" between the OCs (on the one hand) and the IETF Trust (on the
other hand).  I should think that the CWG, having wrested control of the
IANA marks and domain names from ICANN, would not just hand that IPR over
to an entity over which it has even less control, and which is controlled
by and governed for the benefit of another OC (i.e., IETF).​


>
> > 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.
>

​This is exactly why having the OCs structurally part of the governance of
the trademark owner would be preferable -- in that set-up the issue of
control is dealt with quite naturally (just as control of the IETF Trust by
the IETF is dealt with quite naturally now).  Failing that, we will need to
gain as much control as possible, by use of agreements, advisory boards and
the like.  I strongly disagree that "assurance" is the only approach to
that relationship.

>
> > ​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.
>

​Fair enough.  The imbalance is simple -- the IETF Trust is controlled by
the IETF and set up for the benefit of the IETF, and the Trustees owe a
fiduciary duty to the IETF (and nobody else) to manage the Trust and its
assets for the benefit of the IETF (and nobody else).  [This is consistent
with the IETF Trust being a "private trust," by the way; hence the
relevance of that question.]​


>
> > > 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.
>

​It's a distinction that's important (really, critical) under trademark
law.  A license without control over quality of goods/services is a form of
trademark suicide.  I appreciate the clarification that in fact the IETF
Trust understands it needs to maintain quality control over goods/services.
and I agree that a strong and possibly even leading role should be played
by the OCs (who through MoUs or the CSC will already being doing just
that).​


>
> > ​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?
>

The "benefit" is getting it right.  ​A non-exclusive license is one that
allows the licensor to continue to use the marks even for the identical
goods/services that the licensee is using the marks for.  That is clearly
not the intent here, so a non-exclusive license is not appropriate.  An
exclusive license is absolutely not a barrier to a single replacement IFO;
the license to the current IFO would be terminated and a new license
entered into with the new IFO (alternatively, the license could simply be
assigned by the current IFO to the new IFO).  If multiple IFOs end up as
the way things will work, the license can be assigned in part (or
terminated in part) with regard to each OCs new IFO-of-choice.  This just
needs to be anticipated in the drafting of the license.  Since this is
clearly an obvious feature of "separability," I'm sure it will be well
taken care of.

>
> > ​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.
>

​I don't understand why you say that.  The IETF Trust (or any new owner)
cannot have the unilateral right to terminate an IFO over the objections of
the community that wants to use that IFO.  This could point to another
serious concern with using the IETF Trust as a holder of the IPR, so it's
critically important to clarify this issue.

Greg​


>
> Best regards,
>
> A
>
>
> --
> Andrew Sullivan
> ajs at anvilwalrusden.com
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