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

Wed Aug 19 15:41:09 UTC 2015

Quick Correction – I think the SLEs we have been working on may be for the
CWG as opposed to the CCWG.  It gets incredibly confusing.  So all
references in my emails below to CCWG should really be CWG.

Thanks.

Jeffrey J. Neuman

Senior Vice President |Valideus USA | Com Laude USA

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E:  <mailto:jeff.neuman at valideus.com> jeff.neuman at valideus.com or
<mailto:jeff.neuman at comlaude.com> jeff.neuman at comlaude.com 

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

From: ipc-gnso-bounces at icann.org [mailto:ipc-gnso-bounces at icann.org] On
Behalf Of Jeff Neuman
Sent: Wednesday, August 19, 2015 9:42 AM
To: trachtenbergm at gtlaw.com; PMcGrady at winston.com
Cc: ipc-gnso at icann.org
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA
Intellectual Property Rights (IPR) - ICANN

Understood.  That is more of a question for the CCWG, so I will throw this
over to Greg now.

Jeffrey J. Neuman

Senior Vice President |Valideus USA | Com Laude USA

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E:  <mailto:jeff.neuman at valideus.com> jeff.neuman at valideus.com or
<mailto:jeff.neuman at comlaude.com> jeff.neuman at comlaude.com 

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

From: trachtenbergm at gtlaw.com <mailto:trachtenbergm at gtlaw.com>
[mailto:trachtenbergm at gtlaw.com] 
Sent: Wednesday, August 19, 2015 9:20 AM
To: PMcGrady at winston.com <mailto:PMcGrady at winston.com> ;
jeff.neuman at valideus.com <mailto:jeff.neuman at valideus.com> 
Cc: ipc-gnso at icann.org <mailto:ipc-gnso at icann.org> 
Subject: RE: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA
Intellectual Property Rights (IPR) - ICANN

And the plan should include what actions will be taken when 3rd parties use
the mark without permission.  Ultimately budget will also need to be set
aside for such enforcement by whoever is doing it.  

Best regards,

Marc H. Trachtenberg
Shareholder 
Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL
60601
Tel 312.456.1020 

Mobile 773.677.3305

 <mailto:trachtenbergm at gtlaw.com> trachtenbergm at gtlaw.com |
<http://www.gtlaw.com/> www.gtlaw.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 McGrady, Paul D.
Sent: Wednesday, August 19, 2015 6:54 AM
To: Jeff Neuman
Cc: IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA
Intellectual Property Rights (IPR) - ICANN

Thanks Jeff.  Yes, I think it would be good to see the report as soon as
practical.  Good to know that the community will be monitoring SLEs.
However, that won’t absolve the trademark owner/licensor from doing so and
the QC’s have to have teeth.  Since we will be handing a set of teeth to
someone, I think there needs to be some real thought put into it and a plan
published for public comment before it happens.  

From: Jeff Neuman [mailto:jeff.neuman at valideus.com]
<mailto:[mailto:jeff.neuman at valideus.com]>  
Sent: Wednesday, August 19, 2015 6:45 AM
To: McGrady, Paul D.
Cc: Aikman-Scalese, Anne; Greg Shatan; IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA
Intellectual Property Rights (IPR) - ICANN

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
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.lrrlaw.com_&d=AwMFA
w&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=q
FXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=kEWBpAq3qdxCNRUkWXqprchv3kGOkhu
f17KWa3b6Gfs&e=> 

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> 

F: +1 (312) 558-5700 <tel:%2B1%20%28312%29%20558-5700> 

<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_en_who-
2Dwe-2Dare_attorneys_mcgrady-2Dpaul-2Dd.html&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXw
Xw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPV
J4obIEpcBqk5uUJMQc&s=_M5fyx52XV3gVVkig4tvg81ESTOZb4_3ZNxN5bCq2gQ&e=> Bio |
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_vcards_
996.vcf&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_O
LPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=oDmTE_UnG5aTcnWJ
tBU3gW4y4YdEbe30pwJ4_rWVyL0&e=> VCard |  <mailto:pmcgrady at winston.com> Email
|
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com&d=AwMFA
w&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=q
FXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=mZIMM1UxyrYszwOxQ206WCePpoJiLlC
XN6wOL82NN0I&e=> winston.com

<image003.jpg>

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
<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_ann
ouncement-2D2015-2D08-2D15-2Den&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOG
y17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5u
UJMQc&s=DW25W2bXFDi4OZhi8kvFBL5oHrKZQMveBptcsE-jstQ&e=> 

Sent from my iPhone 

David A. Olive

Vice President, Policy Development Support
General Manager, ICANN Regional Headquarters –Istanbul

Hakki Yeten Cad. Selenium Plaza No:10/C K:10 34349 <tel:10%2034349>  Fulya,
Besiktas, Istanbul

Internet Corporation for Assigned Names and Numbers (ICANN)

Direct Line: +90.212.999.6212 <tel:+90.212.999.6212>  

Mobile:       + 1. 202.341.3611 <tel:+%201.%20202.341.3611> 

Mobile:       +90.533.341.6550 <tel:+90.533.341.6550>  

Email:  david.olive at icann.org <mailto:david.olive at icann.org> 

www.icann.org
<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.icann.org_&d=AwMFAw
&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qF
XrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=CEYeLRWbDNCaiCz_3veYvZtNkhXNPfWG
ItlVGjZdM_w&e=> 

The contents of this message may be privileged and confidential. Therefore,
if this message has been received in error, please delete it without reading
it. Your receipt of this message is not intended to waive any applicable
privilege. Please do not disseminate this message without the permission of
the author.

  _____  

This message and any attachments are intended only for the use of the
individual or entity to which they are addressed. If the reader of this
message or an attachment is not the intended recipient or the employee or
agent responsible for delivering the message or attachment to the intended
recipient you are hereby notified that any dissemination, distribution or
copying of this message or any attachment is strictly prohibited. If you
have received this communication in error, please notify us immediately by
replying to the sender. The information transmitted in this message and any
attachments may be privileged, is intended only for the personal and
confidential use of the intended recipients, and is covered by the
Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. 

_______________________________________________
IPC-GNSO mailing list
IPC-GNSO at icann.org <mailto:IPC-GNSO at icann.org> 
https://mm.icann.org/mailman/listinfo/ipc-gnso
<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_l
istinfo_ipc-2Dgnso&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV
-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=_mhTD
ilOghYWUhy0qJsGLzUUB_BvEnZ455PhNxWrb_s&e=> 

The contents of this message may be privileged and confidential. Therefore,
if this message has been received in error, please delete it without reading
it. Your receipt of this message is not intended to waive any applicable
privilege. Please do not disseminate this message without the permission of
the author. 

  _____  

If you are not an intended recipient of confidential and privileged
information in this email, please delete it, notify us immediately at
postmaster at gtlaw.com <mailto:postmaster at gtlaw.com> , and do not use or
disseminate such information.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/ipc-gnso/attachments/20150819/c5315291/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 6399 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/ipc-gnso/attachments/20150819/c5315291/image001-0001.jpg>