[CCWG-ACCT] [ccTLDcommunity] ICANN Statement Regarding IANA Intellectual Property Rights

[Greg Shatan]

Here are the facts, based on public records.  I believe that Sidley has
confirmed these with ICANN counsel as well.

ICANN currently owns three trademarks associated with IANA: IANA, INTERNET
ASSIGNED NUMBERS AUTHORITY and the IANA logo.  ICANN owns three United
States trademark registrations, one for each of these trademarks.  ICANN
was the original applicant for these three registrations.  These three
registrations are detailed in the attached document.

The University of Southern California assigned the three trademarks to
ICANN, along with earlier registrations for two of the three trademarks
(the logo was not covered by a registration or application at that time).
After ICANN procured new registrations for the two word marks, and a
registration for the logo, the two registrations acquired from USC were
allowed to lapse (likely because the new registrations are broader and more
protective than the original USC registrations).  This is also detailed in
the attached document.  The USC-ICANN assignment is also attached.

(Note that, under US trademark law, trademark rights arise from use rather
than registration.  A trademark registration confirms and strengthens the
owner's trademark rights, but does not create the trademark right.  That is
why I have referred to the "trademarks" and the "trademark registrations"
separately.)

ICANN also owns three domain names associated with IANA: iana.org, iana.com
and iana.net.  All three domain names seem to lead to the same content.

I hope this helps.

Greg Shatan

On Tue, Aug 18, 2015 at 12:41 PM, Dr Eberhard Lisse <el at lisse.na> wrote:

> Becky, Steve,
>
> thanks for the input.
>
> Unfortunately belief is not at issue here, neither are the
> trademarks.
>
> They are uncontroversial in our context, though it is important to
> know who the actual owner of the marks is, in order to be able to
> give them away :-)-O.
>
> It must be made quite clear exactly what items of Intellectual
> Property Rights we are talking about/will be transferred, so a
> numbered list will be helpful.
>
> el
>
>
>
> On 2015-08-18 17:24, Steve Crocker wrote:
> >
> > On Aug 18, 2015, at 12:22 PM, Burr, Becky <Becky.Burr at neustar.biz>
> wrote:
> >
> >> Ah. Presumably this was originally registered by Jon/ISI.
> >
> > Yes, I think so.
> >
> >
> >>
> >> J. Beckwith Burr
> [...]
> >> On 8/18/15, 9:20 AM, "Steve Crocker" <steve at shinkuro.com> wrote:
> >>
> >>> Becky,
> >>>
> >>> Not quite right.  I believe there are three trademarks, but far
> >>> more important than the trademarks is the control of the
> >>> iana.org domain name.  Despite the thousands of words of email
> >>> devoted to the trademarks, in the case of IANA they¹re of only
> >>> modest, at best, practical importance.  The domain name,
> >>> however, is a key piece of the operation.
> >>>
> >>> Steve
> >>>
> >>>
> >>>
> >>> On Aug 18, 2015, at 12:15 PM, Burr, Becky
> >>> <Becky.Burr at neustar.biz> wrote:
> >>>
> >>>> I think that the IP rights in question are limited to the IANA
> >>>> trademark, which the USG transferred to ICANN in 1999 or so.
> >>>>
> >>>> J. Beckwith Burr
> [...]
> --
> Dr. Eberhard W. Lisse  \        / Obstetrician & Gynaecologist (Saar)
> el at lisse.NA            / *     |   Telephone: +264 81 124 6733 (cell)
> PO Box 8421             \     /
> Bachbrecht, Namibia     ;____/
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>
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