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

Wed Aug 19 19:34:54 UTC 2015

Jeff,

Do you think there is a quality control provision in this license by which
IETF controls the quality of any goods and services of the licensee under
the mark?  Or is this a naked license?

Greg

On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman at comlaude.com>
wrote:

> Yes, this is very similar to the license that Neustar got when Neustar ran
> the Secretariat Services back in 2005 through 2008 ( I believe).  The
> reality is that provisions can always be written better and more air
> tight.  Every attorney has their own style and magic words they like to
> use.  At the end of the day, the question to ask as well is whether there
> have been any issues in the decade in which the Trust was created or are
> there any obvious holes in here that despite nothing happening to date,
> could be exploited.
>
>
>
>
>
>
>
> *Jeffrey J. Neuman*
>
> *Senior Vice President *|*Valideus USA* | *Com Laude USA*
>
> 1751 Pinnacle Drive, Suite 600
>
> Mclean, VA 22102, United States
>
> E: jeff.neuman at valideus.com or jeff.neuman at comlaude.com
>
> T: +1.703.635.7514
>
> M: +1.202.549.5079
>
> @Jintlaw
>
>
>
>
>
> *From:* Greg Shatan [mailto:gregshatanipc at gmail.com]
> *Sent:* Wednesday, August 19, 2015 3:24 PM
> *To:* Jeff Neuman <jeff.neuman at comlaude.com>; IPC-GNSO <ipc-gnso at icann.org
> >
>
> *Cc:* Aikman-Scalese, Anne <AAikman at lrrlaw.com>; Jeff Neuman <
> jeff.neuman at valideus.com>; trachtenbergm at gtlaw.com; PMC Grady <
> pmcgrady at winston.com>
> *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding
> IANA Intellectual Property Rights (IPR) - ICANN
>
>
>
> By the way, here is the IETF's license to Association Management Services,
> a third party entity providing secretariat services to the IETF.  I would
> be curious to know what people think of the quality control provisions
> (i.e., relating to the quality of goods and services, as distinguished from
> provisions relating to trademark usage), and of the license generally -- at
> least as a trademark license.
>
>
>
> Greg
>
>
>
> On Wed, Aug 19, 2015 at 3:13 PM, Jeff Neuman <jeff.neuman at comlaude.com>
> wrote:
>
> See http://trustee.ietf.org/IETFtrustAgreement20051208.pdf Pages 11-13.
>
>
>
> *Jeffrey J. Neuman*
>
> *Senior Vice President *|*Valideus USA* | *Com Laude USA*
>
> 1751 Pinnacle Drive, Suite 600
>
> Mclean, VA 22102, United States
>
> E: jeff.neuman at valideus.com or jeff.neuman at comlaude.com
>
> T: +1.703.635.7514
>
> M: +1.202.549.5079
>
> @Jintlaw
>
>
>
>
>
> *From:* Greg Shatan [mailto:gregshatanipc at gmail.com]
> *Sent:* Wednesday, August 19, 2015 3:04 PM
> *To:* Jeff Neuman <jeff.neuman at comlaude.com>
> *Cc:* Aikman-Scalese, Anne <AAikman at lrrlaw.com>; Jeff Neuman <
> jeff.neuman at valideus.com>; trachtenbergm at gtlaw.com; PMC Grady <
> pmcgrady at winston.com>
>
>
> *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding
> IANA Intellectual Property Rights (IPR) - ICANN
>
>
>
> Goodwill always needs to be assigned with a trademark (at least under US
> law).  That said, I can't see any reason to expect or even suspect that the
> IANA Trademarks will be transferred to a third party without the goodwill
> appurtenant to the marks.
>
>
>
> Jeff -- if you recall, what was the "IP associated with the IETF
> Secretariat functions"?  Was the IETF trademark (and/or the IETF
> SECRETARIAT trademark) part of that IP?
>
>
>
> It should be noted that the IETF Trust only owns three trademark
> registrations, one for IETF, one for the IETF logo and one for IETF
> SECRETARIAT (which it has explicitly decided to abandon).  There is only
> one licensee of the IETF trademarks -- to the IETF Secretariat. I'm not
> sure that indicates any specific expertise in trademark license (noting
> also that the IETF Trust does not appear to have any employees, and thus no
> employees who would embody that expertise).
>
>
>
> Greg
>
>
>
> On Wed, Aug 19, 2015 at 1:18 PM, Jeff Neuman <jeff.neuman at comlaude.com>
> wrote:
>
> Anne,
>
>
>
> The IETF Trust was set up solely to manage the IP of the IETF.  To make a
> very long story short, It was a quid pro quo during the negotiations
> between Bob Kahn’s who claimed to own the IP associated with the IETF
> Secretariat functions, the IETF and ISOC leadership and Neustar who offered
> to buy the Secretariat functions from Bob, but assign the IP rights to the
> IETF Trust.  Bob Kahn, for his own reasons, did not trust the ISOC or IETF
> leadership to manage the IP at the time and wanted to ensure there was a
> neutral entity that was established to manage the IP in the public
> interest.  Steve Crocker and I, on a flight back from an ICANN meeting in
> Argentina, created the idea of the IETF Trust (and the initial set up
> documents) to ease the concerns of Bob while at the same time ensuring that
> the IP could be licensed to the IETF.
>
>
>
> All that aside, I still have the same questions (which Clarke also
> raised).  And that is the so what.  Let’s assume the worst and the IANA
> name is trashed for whatever reason.  The IANA function is a unique
> function which does not rely on its name.  You could rebrand the function
> ZZXYA, and that still would have little if any impact on the users of the
> service.  Aside from getting a new domain name (and learning how to
> pronounce that new name J), it would have no effect on the users of the
> service.  It’s not a consumer product or service.  No one outside the
> industry knows the name anyway.
>
>
>
> I understand in the normal corporate transaction assigning the goodwill
> associated with a transfer of the name is critical.  I am just not sure of
> whether that applies here at all.
>
>
>
> I am still waiting for a tangible example that someone has where it would
> cause a huge issue.
>
>
>
> *Jeffrey J. Neuman*
>
> *Senior Vice President *|*Valideus USA* | *Com Laude USA*
>
> 1751 Pinnacle Drive, Suite 600
>
> Mclean, VA 22102, United States
>
> E: jeff.neuman at valideus.com or jeff.neuman at comlaude.com
>
> T: +1.703.635.7514
>
> M: +1.202.549.5079
>
> @Jintlaw
>
>
>
>
>
> *From:* Aikman-Scalese, Anne [mailto:AAikman at lrrlaw.com]
> *Sent:* Wednesday, August 19, 2015 1:03 PM
> *To:* Jeff Neuman <jeff.neuman at valideus.com>; trachtenbergm at gtlaw.com;
> PMC Grady <pmcgrady at winston.com>
> *Cc:* gregshatanipc at gmail.com
>
>
> *Subject:* RE: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding
> IANA Intellectual Property Rights (IPR) - ICANN
>
>
>
> Jeff, just a note that Paul’s observations about the QC issue are very
> important since a transfer of the marks without the good will renders the
> transfer void and any license without real QC is a “naked license” and
> likewise unenforceable.  There is no reason IETF would know this.  For some
> reason I thought that Trust was formed to develop technical protocol, not
> to manage IP, but you would know better than I.
>
> Anne
>
>
>
> *Anne E. Aikman-Scalese, Of Counsel*
>
> *Lewis Roca Rothgerber LLP | *
>
> *One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611*
>
> *(T) 520.629.4428 <520.629.4428> | (F) 520.879.4725 <520.879.4725>*
>
> *AAikman at LRRLaw.com <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
> <ipc-gnso-bounces at icann.org>] *On Behalf Of *Jeff Neuman
> *Sent:* Wednesday, August 19, 2015 8:41 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
>
>
>
> 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: jeff.neuman at valideus.com or 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
> <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: jeff.neuman at valideus.com or 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
> <trachtenbergm at gtlaw.com>]
> *Sent:* Wednesday, August 19, 2015 9:20 AM
> *To:* PMcGrady at winston.com; jeff.neuman at valideus.com
> *Cc:* 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
>
> trachtenbergm at gtlaw.com | www.gtlaw.com
>
>
>
> [image: Description: Greenberg Traurig]
>
>
>
>
>
> *From:* ipc-gnso-bounces at icann.org [mailto:ipc-gnso-bounces at icann.org
> <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]
> *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>
> 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
> <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>
> 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 <520.629.4428> | (F) 520.879.4725 <520.879.4725>*
>
> *AAikman at LRRLaw.com <AAikman at LRRLaw.com>** | www.LRRLaw.com
> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.lrrlaw.com_&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=kEWBpAq3qdxCNRUkWXqprchv3kGOkhuf17KWa3b6Gfs&e=>*
>
>
>
>
>
>
>
> *From:* ipc-gnso-bounces at icann.org [mailto:ipc-gnso-bounces at icann.org
> <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>
> 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
>
> F: +1 (312) 558-5700
>
> Bio
> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_en_who-2Dwe-2Dare_attorneys_mcgrady-2Dpaul-2Dd.html&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=_M5fyx52XV3gVVkig4tvg81ESTOZb4_3ZNxN5bCq2gQ&e=>
>  | VCard
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>
> <image003.jpg>
>
>
>
>
>
> *From:* 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>
> Date: Sunday, August 16, 2015
> Subject: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual
> Property Rights (IPR) - ICANN
> To: "soac-infoalert at icann.org" <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_announcement-2D2015-2D08-2D15-2Den&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=DW25W2bXFDi4OZhi8kvFBL5oHrKZQMveBptcsE-jstQ&e=>
>
>
>
> Sent from my iPhone
>
>
>
> David A. Olive
>
> Vice President, Policy Development Support
> General Manager, ICANN Regional Headquarters –Istanbul
>
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