[IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Aikman-Scalese, Anne
AAikman at lrrlaw.com
Thu Aug 20 18:21:14 UTC 2015
Thanks Greg – it certainly makes sense to me that no transfer occurs before implementation details are worked out. Same observation with respect to the contract between ICANN and the new IANA entity, but I have been a broken record on that since BA.
[cid:image001.gif at 01D0DB3A.5293ABE0]
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: Greg Shatan [mailto:gregshatanipc at gmail.com]
Sent: Thursday, August 20, 2015 10:52 AM
To: Aikman-Scalese, Anne
Cc: Rosette, Kristina; IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Anne,
It shouldn't happen that way, and I'm fairly confident it won't. The marks will not be transferred to a new entity until those issues are resolved. There will be an implementation planning phase before the actual implementation occurs. The need for time for that phase is a prime driver behind the extension of the NTIA Agreement to September 30, 2016. To be clear, this is only one small piece of the pre-implementation puzzle.
I expect the CWG to move fairly soon to discussing just these issues, as part of the larger discussion of who the entity might be, how it will be accountable to the operating communities, what agreements it will enter into, etc., followed by the need to actually set up those accountability mechanisms, draft those agreements, draft an assignment, create/adapt/approve an entity as the owner, and have them all entered into and ready to become effective as of the transition.
Greg
On Thu, Aug 20, 2015 at 1:10 PM, Aikman-Scalese, Anne <AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>> wrote:
Not dealing with this issue now seems to me to put the question of who has the responsibility to exercise quality control in relation to the marks in some kind of “limbo”. In other words, transition is approved and happens but then there is an interim implementation period where this responsibility is unclear?
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Anne E. Aikman-Scalese, Of Counsel
Lewis Roca Rothgerber LLP |
One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611
(T) 520.629.4428<tel:520.629.4428> | (F) 520.879.4725<tel: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<mailto:ipc-gnso-bounces at icann.org>] On Behalf Of Greg Shatan
Sent: Thursday, August 20, 2015 10:00 AM
To: Rosette, Kristina
Cc: IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Here's the latest status on this within the CWG, just prior to a call on which this is being discussed.
There appears to be a consensus forming that it is acceptable to have a third party own the marks and domain names instead of ICANN, so long as that third party is accountable to that community. What that accountability consists of has not in any way been defined.
Agreement by the CWG to this general concept has been defined as a "minimum requirement" by the ICG.
After much discussion over the last couple of months, I'm prepared to support that consensus. I would express the concern that the accountability and identity of the third party needs to reflect its role as a trademark owner, and the roles of the operational communities vis a vis IANA.
The numbers community has put forward IETF Trust as an "acceptable" owner of the marks/domains. Some people are pushing to make that appear to be a requirement and/or to have the CWG endorse the IETF Trust.
It has just been confirmed in the last few minutes that this is NOT a requirement of the ICG, and that the names community agrees with that. So hopefully the entity/IETF Trust issue can be dealt with in the implementation phase.
Greg
On Thu, Aug 20, 2015 at 12:40 PM, Rosette, Kristina <rosettek at amazon.com<mailto:rosettek at amazon.com>> wrote:
With apologies if I’m missing something, it strikes me that we’re making a mountain out of a molehill and are potentially ruffling some feathers that we shouldn’t be. Am I missing something?
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 McGrady, Paul D.
Sent: Wednesday, August 19, 2015 1:39 PM
To: Greg Shatan; Jeff Neuman
Cc: IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Thanks Jeff.
Thanks Greg. Sorry for racing to Jeff’s unneeded defense!
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: Wednesday, August 19, 2015 3:36 PM
To: Jeff Neuman
Cc: IPC-GNSO
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Jeff,
Thanks for pointing that page out for everyone. That's where I got the IETF secretariat license from.
There is a general form of trademark license on that page as well, which people might be interested in looking at.
Greg
On Wed, Aug 19, 2015 at 4:09 PM, Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>> wrote:
Last email…sorry.
The IETF also has this page set up: http://trustee.ietf.org/licenses.html which provides additional information on the licensing of IETF Trust IP.
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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
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@Jintlaw
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 Jeff Neuman
Sent: Wednesday, August 19, 2015 4:01 PM
To: 'Greg Shatan' <gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>>
Cc: 'IPC-GNSO' <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
Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name.
I hope that helps.
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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@Jintlaw
From: Greg Shatan [mailto:gregshatanipc at gmail.com]
Sent: Wednesday, August 19, 2015 3:54 PM
To: Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>>
Cc: McGrady, Paul D. <PMcGrady at winston.com<mailto:PMcGrady at winston.com>>; Jeff Neuman <jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>; IPC-GNSO <ipc-gnso at icann.org<mailto:ipc-gnso at icann.org>>; Aikman-Scalese, Anne <AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>>; Marc Trachtenberg <trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>>
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Jeff,
That's very helpful and useful. Thanks!
I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor.
I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific.
Greg
On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>> wrote:
For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement).
Here is a sample of that agreement: https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Public-Final.pdf (Note this may not be the latest).
So do not view the license in isolation.
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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@Jintlaw
From: Greg Shatan [mailto:gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>]
Sent: Wednesday, August 19, 2015 3:46 PM
To: McGrady, Paul D. <PMcGrady at winston.com<mailto:PMcGrady at winston.com>>
Cc: Jeff Neuman <jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>; IPC-GNSO <ipc-gnso at icann.org<mailto:ipc-gnso at icann.org>>; Aikman-Scalese, Anne <AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>>; Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
I don't think Jeff was involved in setting up this particular license.
I only asked because Jeff said "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."
I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled.
Greg
On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady at winston.com<mailto:PMcGrady at winston.com>> wrote:
Greg,
Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question.
Best,
Paul
From: Greg Shatan [mailto:gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>]
Sent: Wednesday, August 19, 2015 2:35 PM
To: Jeff Neuman
Cc: IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; McGrady, Paul D.
Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
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<mailto: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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@Jintlaw
From: Greg Shatan [mailto:gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>]
Sent: Wednesday, August 19, 2015 3:24 PM
To: Jeff Neuman <jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>; IPC-GNSO <ipc-gnso at icann.org<mailto:ipc-gnso at icann.org>>
Cc: Aikman-Scalese, Anne <AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>>; Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMC Grady <pmcgrady at winston.com<mailto: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<mailto: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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@Jintlaw
From: Greg Shatan [mailto:gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>]
Sent: Wednesday, August 19, 2015 3:04 PM
To: Jeff Neuman <jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>
Cc: Aikman-Scalese, Anne <AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>>; Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMC Grady <pmcgrady at winston.com<mailto: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<mailto: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 ☺), 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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@Jintlaw
From: Aikman-Scalese, Anne [mailto:AAikman at lrrlaw.com<mailto:AAikman at lrrlaw.com>]
Sent: Wednesday, August 19, 2015 1:03 PM
To: Jeff Neuman <jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>>; trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMC Grady <pmcgrady at winston.com<mailto:pmcgrady at winston.com>>
Cc: gregshatanipc at gmail.com<mailto: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
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Anne E. Aikman-Scalese, Of Counsel
Lewis Roca Rothgerber LLP |
One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611
(T) 520.629.4428<tel:520.629.4428> | (F) 520.879.4725<tel: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 Jeff Neuman
Sent: Wednesday, August 19, 2015 8:41 AM
To: trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com>; PMcGrady at winston.com<mailto:PMcGrady at winston.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
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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@Jintlaw
From: ipc-gnso-bounces at icann.org<mailto: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<mailto:trachtenbergm at gtlaw.com>; PMcGrady at winston.com<mailto:PMcGrady at winston.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
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<mailto:jeff.neuman at valideus.com> or jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>
T: +1.703.635.7514<tel:%2B1.703.635.7514>
M: +1.202.549.5079<tel:%2B1.202.549.5079>
@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<tel:312.456.1020>
Mobile 773.677.3305<tel:773.677.3305>
trachtenbergm at gtlaw.com<mailto:trachtenbergm at gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/>
[Description: Greenberg Traurig]
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.
...
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