[IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Wed Aug 19 00:48:21 UTC 2015

Good question by Paul – seems this would require an amendment to the terms of the IETF Trust.  Also not sure this falls within their expertise.  If they hold the trademark, they have to license it and put the quality control provisions in the license, right?

[cid:image002.gif at 01D0D9DE.12B281C0]

Anne E. Aikman-Scalese, Of Counsel

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From: ipc-gnso-bounces at icann.org [mailto:ipc-gnso-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Tuesday, August 18, 2015 1:51 PM
To: McGrady, Paul D.
Cc: IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

ICANN has not proposed a particular third party.  The CRISP Team, representing the numbers community, has proposed the IETF Trust.  The IANAPLAN Team, representing the protocol parameters community (aka the IETF), was silent on the IANA trademarks; when asked by the ICG whether they objected to the CRISP plan, they indicated they did not object, and that they were willing to have the IETF Trust serve in that role.  It's not clear to me whether or to what extent either Team consulted trademark counsel or understood the ramifications of this proposal.

The CWG has not taken a position.  A rough consensus seems to be emerging that some third party (not necessarily the IETF Trust) would be acceptable, if appropriate accountability measures were put in place (i.e., that the third party would be accountable to the 3 operational communities).  This is still an active discussion in the CWG.  Many are pushing for it to be the IETF Trust.  I am trying to get people to focus on the substantive concerns, with quality control chief among them (and policing and enforcement, default and termination powers not far behind).

Greg

On Tue, Aug 18, 2015 at 4:14 PM, McGrady, Paul D. <PMcGrady at winston.com<mailto:PMcGrady at winston.com>> wrote:
Greg,

Which entity will be the assignee of the IANA trademark?  In order for that to work, the assignee will need to have quality control power.  Who is ICANN suggesting will retain quality control over the IANA mark?  That is a very powerful position, indeed.

Best,
Paul

Paul D. McGrady Jr.

Partner

Chair, Trademark, Domain Names and Brand Enforcement Practice

Winston & Strawn LLP
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[Winston & Strawn LLP]

From: ipc-gnso-bounces at icann.org<mailto:ipc-gnso-bounces at icann.org> [mailto:ipc-gnso-bounces at icann.org<mailto:ipc-gnso-bounces at icann.org>] On Behalf Of Greg Shatan
Sent: Tuesday, August 18, 2015 12:02 AM
To: IPC-GNSO
Subject: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Steve Crocker issued a statement on behalf of the ICANN Board regarding the IANA Trademarks and domain names.

Greg

---------- Forwarded message ----------
From: David Olive <david.olive at icann.org<mailto:david.olive at icann.org>>
Date: Sunday, August 16, 2015
Subject: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
To: "soac-infoalert at icann.org<mailto:soac-infoalert at icann.org>" <soac-infoalert at icann.org<mailto:soac-infoalert at icann.org>>

https://www.icann.org/news/announcement-2015-08-15-en

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