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

Wed Aug 19 11:44:50 UTC 2015

Paul,

Ok, if the concerns are around service levels, I totally get that.  That has been separated from the monitoring of the trademarks. I have been working in a small group chartered by the CCWG and working with IANA/ICANN to come up with a framework for Service Levels that will be monitored by the community.  The group consisted of three ccTLDs and three reps from the gTLDs and chaired by Paul Kane.  Yesterday was hopefully our last call before we release the subgroup report to the CCWG, who in turn will put it out for public comment shortly.  The mailing list of the group is public.

It is important to note that we developed a framework and in some cases the SLEs, but in other cases, since we have asked for things that have not been measured before, we are waiting for IANA to build the capability to measure these items before coming back and setting the actual SLEs based on past performance and industry norms.

It is also important to note that the subgroup was not chartered to develop the penalties associated with breaching the SLEs. That will be for the CCWG to determine at a later point. If anyone wants to see the current draft, I am happy to send around, but will ask for a couple of days while the draft is cleaned up to reflect the discussions yesterday.

I hope that helps.

Best regards,

Jeff

Sent from my iPad

On Aug 19, 2015, at 6:27 AM, McGrady, Paul D. <PMcGrady at winston.com<mailto:PMcGrady at winston.com>> wrote:

Hi Jeff,

I don’t think it takes a lot of imagination to conjure up the mischief that can be caused by someone using IANA knockoff domain names, logos and copyrights.  Who will police those?  IANA or the Trust?  If IANA, how will the Trust ensure that IANA’s efforts are sufficient.

With regard to quality control, what level of quality is associated now with the IANA trademark (e.g. customer service levels, consistent performance, etc.) and how will the Trust monitor IANA’s future performance to ensure that the levels now associated with it remain the same throughout the term of the license back arrangement?  If IANA’s performance under an un-supervised ICANN, for example, IANA pulling a TLD out of the root under political pressure, falls below the quality associated with the mark now, what will the Trust do and will it have the requisite power in the license to do so?

The bottom line here is that, once again, ICANN has shown a fundamental ignorance of how trademarks work.  You can’t separate the mark from the goodwill and you can’t license without quality control standards.  Trademarks aren’t patents, no matter how many engineers sit on the ICANN Board.

So, who are these IETF Trust people and why would anyone hand them this kind of power without knowing who they are and who they would be accountable to?

Best,
Paul

From: Jeff Neuman [mailto:jeff.neuman at valideus.com]
Sent: Tuesday, August 18, 2015 8:33 PM
To: Aikman-Scalese, Anne
Cc: Greg Shatan; McGrady, Paul D.; IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

All,

The IETF Trust was specifically formed to manage and control the Intellectual Property of the IETF.   I was involved in the creation of the Trust along with Steve Crocker, ISOC Leadership, Bob Kahn, as well as the then IETF Chair, and trademark counsel the IETF leadership and others. An amendment would need to be required in order for them to manage the IP Rights of the IANA organization, but that does not seem to be too complicated.  The IETF's Trust's sole reason for existence was to manage IP so they should have the expertise.  Granted I have not followed the evolution of the Trust over the past five years or so, but they should have the expertise.

But let me ask a fundamental question.  What quality control are we really worried about here in terms of use of the trademark rights?  I have been racking my brain trying to think of the possible parade of horribles that might occur if IANA is not able to control the use of the IANA trademark.  can there really be infringement of the IANA mark which may not arguably be used in commerce?  even if there is a use of the mark by others, Are we worried that others may believe that some other entity is the real IANA if the other entity uses the IANA name?  I would think the accountability measures within the community are too strong for that (not to mention the sophistication of the IANA user base - the registries and the IETF itself.

I am only playing devil's advocate here, but what are practical concerns we are worried about?

Sent from my iPad

On Aug 18, 2015, at 8:52 PM, Aikman-Scalese, Anne <AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>> wrote:
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?

<image002.gif>

Anne E. Aikman-Scalese, Of Counsel

Lewis Roca Rothgerber LLP |

One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611

(T) 520.629.4428 | (F) 520.879.4725

AAikman at LRRLaw.com<mailto:AAikman at LRRLaw.com> | www.LRRLaw.com<http://www.lrrlaw.com/>

From: 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 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
35 W. Wacker Drive
Chicago, IL 60601-9703

D: +1 (312) 558-5963<tel:%2B1%20%28312%29%20558-5963>

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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

Sent from my iPhone

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