[CWG-Stewardship] Update on IANA IPR

[Greg Shatan]

My replies are inline below.

On Fri, Aug 14, 2015 at 1:04 PM, Mueller, Milton L <
milton.mueller at pubpolicy.gatech.edu> wrote:

>
>
>
>
> *From:* Greg Shatan [mailto:gregshatanipc at gmail.com]
>
> MM: All three communities are based on registries grounded in IETF
> standards. There is no more appropriate place for the 3 communities’ IANA
> requirements to converge than at IETF.
>
> ​GS:  The fact that IETF sets standards that are then used by two
> operational communities does not in any way qualify the IETF or its Trust
> as a sole owner of an asset used to refer to services provided to all three
> communities by the provider of those services.​
>
>
>
> MM: Incorrect. The identity of the IANA, as you have been informed several
> times now, resides in IETF RFCs. The “three communities” to which you refer
> are organized around registries that implement IETF standards. The
> “services” to which you refer are merely outsourced secretarial functions
> which keep those registries consistent. While each community gets to pick
> its clerical provider of those functions, the source and origin of the IANA
> is still the IETF.
>

​GS:  This analysis is incorrect, as explained in more detail in my reply
to Andrew Sullivan a little while ago.  Many good and important things may
reside in IETF RFCs, but the "identity of the IANA" is not one of them.
That is not consistent with what trademarks stand for, or what trademark
"source" means.  A brand identity is associated with the entity that is
responsible for carrying out a service, whether directly or because they
exercise quality control and are seen as the provider of the service being
received.  While ICANN, in its IANA role, may implement IETF standards,
that does not mean that ICANN is offering IETF-supervised or controlled
services.  Trying to cast the IANA functions as mere "secretarial" or
"clerical" services is a nice rhetorical flourish​, but it doesn't hold
water or change the analysis. In any event if the IETF has been the
rightful owner and operator of the IANA brand and mark, they've done a
terrible job of it from a trademark point of view -- they haven't
registered it, they haven't entered into licenses, they did not challenge
ICANN or its predecessor's claim to be the rightful owners of the mark when
they registered the marks, they did not seek to cancel the trademark
registrations or have them assigned to the IETF.  However, I don't think
this is because the did a terrible job at all.  It's because this was never
the IETF's job, because they never were the owner and operator of "IANA
brand" services.

​ That doesn't mean they can't be, in the future.  It does mean that the
idea of predestination is false.​

>
>
> MM: So since you want ICANN to hold the mark this means that you want
> ICANN to “become the INTERNET ASSIGNED NUMBERS AUTHORITY? Permanently…? No
> separability, no accountability.
>
> ​GS:  That completely mischaracterizes my position, or is at least
> ​way out of
>  date. Just because you remain a committed advocate for the CRISP solution
> does not mean that I am your antithesis.  My position since Buenos Aires
> (if not slightly before) is that I have an open mind
>
>
>
> MM: I see no evidence of this. I see a very firm commitment to ICANN
> retaining the IPR. See below.
>

​GS:  I've stated my position before and that is not my position.  I have
absolutely no commitment to ICANN retaining the IANA trademarks and domain
names.  While there are challenges and pros and cons to any of the
potential scenarios for ownership of the IANA trademarks, none of these
challenges are insurmountable.  There is no "very firm commitment to ICANN
retaining the IPR" to be seen.​


>
>
> but that we need to conduct our own analysis of the potential outcomes​.
> If ICANN retains ownership of the IANA and INTERNET ASSIGNED NUMBERS
> AUTHORITY trademark, thee is no reason that it would be permanent, nor have
> I ever said so at any time.  If all 3 communities chose a new IFO, putting
> ICANN out of the "IANA business," it would be entirely appropriate for the
> new IFO, as the new IANA, to be assigned the trademarks as well.
>
>
>
> This could all be taken care of in contracts and in the ICANN Bylaws, to
> assure that it would in fact take place.
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>
>
> MM: I have a bit of experience, 30 years to be exact, in
> telecommunications regulation and have observed efforts to use regulations,
> contracts, etc. to make an incumbent monopoly treat competitors in a
> nondiscriminatory fashion and allow customers to switch to new providers
> without throwing up obstacles. The method you describe never works. Never.
> The incumbent has so much discretion, so much inertia on its side, and so
> much advance knowledge of the process. The only thing that has ever really
> worked cleanly is structural separation.  This isn’t about “permanent
> mistrust of ICANN” per se, it’s about knowing something about economics,
> regulation, switching costs, and basic economic incentives.
>
>
>
> And you still have never explained why you are so mistrustful of an IETF
> Trust when it has zero incentives and zero benefits to be gained by messing
> with the trademarks. A person with an open mind wouldn’t use such a double
> standard.
>

​GS:  I also have a bit of experience (only 29 years) dealing with
contracts of various types and litigation over contracts, and about 15
years of experience in antitrust law (much of that in merger antitrust
analysis, with ample experience in dealing with barriers to entry, sunk
costs, potential monopolistic behavior, etc.​) in both regulated and
unregulated industries.  So I can't claim to be an economist (that would be
silly), but I can claim to know something about the elements you mentioned,
and I've had to give them significant thought in numerous practical
situations with a lot on the line.  A few lines up, you were describing
this as a secretarial, clerical function, entirely governed by the IETF.

​ Now, ICANN is a monopolist with discretion, inertia, special knowledge​,
etc.  The two views don't line up.  I think the above statement overstates
the case for ICANN as uncontrollable monopolistic bully.

As for the IETF Trust, I am in no way mistrustful of it, nor am I applying
a double standard.  As I've said before (and so have others),
accountability is not only for dysfunctional entities.  Indeed, it's the
very basis of our entire exercise in both the CWG and CCWG.  We've all put
a lot of work into methods for holding ICANN accountable (and I hope your
pessimism about their monopolistic tendencies doesn't cause you to believe
we've wasted our time).  Even if the IETF Trust might not trigger
accountability mechanisms as often as one might think ICANN will, that
doesn't exempt it from a robust accountability framework with regard to all
the communities.  It's clearly already highly accountable to the IETF (and
essentially, only to the IETF).

>
>
> ​GS:  There's no distortion here. The services may be provided by PTI by
> permission of the names ​community, but PTI's ability to use IANA and
> INTERNET ASSIGNED NUMBERS AUTHORITY as its trademarks and trade names comes
> by permission (or more accurately, license) from the IETF Trust, if the
> IETF Trust becomes the brandowner.  This license, like any trademark
> license, must contain quality control provisions which put the IETF Trust
> in an oversight and control position over PTI.
>
>
>
> MM: I think you are distorting this, partly based on your understanding of
> how commercially motivated firms administer trademarks, partly because you
> really are committed to ICANN retaining the marks. The IETF Trust would
> administer the marks not to impose its service standards on PTI but only to
> ensure that the marks are separate from the IFO and licensed to any IFO
> duly designated by each operational community. You can’t tell me that good
> TM lawyers can’t figure out a way to confine IETF Trust to that role.
>

​GS:  First, let me again dismiss the base canard that I am in any way
committed to ICANN retaining the marks.  Canards may be good for confit,
but they don't do much for rational discussion.  There's a certain
straightforward logic in have the current trademark owner, and the only
entity using the trademarks in a trademark sense, retain the trademarks.
On the other hand, there is also a logic, as we shift oversight and
accountability of the IANA functions to the global multistakeholder
community, to shifting ownership of the marks to the global
multistakeholder community as well.

Again, there's no distortion here.  I have worked with a number of
non-profits and charitable organizations on trademark matters, as well as
with "commercially motivated" firms.​  There are certain baseline legal
obligations that a trademark owner has, regardless of its "commercial
motivations."  This is an area where trademarks are different from
copyrights and patents, both in the essential nature of the asset and in
the obligations that a trademark owner has.  A copyright owner or patent
owner has no legal obligation to oversee or maintain quality in its
licensee's activities or outputs.

For a copyright owner, it would make good commercial sense, since a bad
cover version or movie would have a negative effect on value, but there's
no legal requirement.  For a patent owner, there's no overriding reason to
do so.  In contrast, quality control is the bedrock of trademark
licensing.  Without adequate quality control (and policing and enforcement)
in contract and in fact, the trademark asset itself will become diluted and
ultimately abandoned.  So, any trademark owner, including the IETF Trust,
must impose quality control standards over its licensees.  It cannot be a
passive licensee.  Even "passive quality control" is the kiss of death.
Furthermore the trademark owner must have an active role and at least some
discretion in choosing who to license to and who not to license to.

That said, there are plenty of ways to be creative in implementing a
trademark license and in designating (or creating or modifying) an
appropriate trademark licensing entity.  And that includes ways to modify
the IETF Trust so it would be an appropriate entity for the communities to
choose as the owner of the IANA trademarks and domain names, and ways to
fashion a trademark license between the IETF Trust and ICANN to both
minimize the quality control aspects of the relationship and to give the
operation communities a great deal of control over the IETF Trust's
latitude in that regard.  It's actually quite an interesting project, and I
will put a separate email together on this matter; maybe even tonight but
more likely tomorrow.  I have already sent an email with some thoughts on
how the IETF Trust would need to be modified if it were to hold the marks
(which would also apply to a new entity if that route were taken).

The short answer is that the IETF Trust (or any other trademark owner)
cannot be "confined" to the role you imagine, but it can be "domesticated."

>
>
> And if you can’t, you will have a very hard time convincing people of your
> second point, which is that ICANN’s bylaws and contracts can be magically
> written to erase its conflict of interest in transferring the marks to a
> new operator.
>

​GS: I don't believe there's any magic needed, were ICANN to continue as
the owner of the marks.  I'm more optimistic about the work we've done in
this group and the CCWG Accountability, and maybe even more optimistic
about ICANN's incentives not to act like a monopolistic pig.  I think all
of the options are viable from both a legal and practical standpoint.
However, given the ICANN board's recent announcement​
​, this is probably moot.​
​

>
>
> You have consistently failed to escape this basic contradiction in your
> position. If you can make ICANN a nondiscriminatory holder of the marks who
> willingly licenses them to its competitors, or whoever the communities
> designate as their IFO, why can’t you do the same for IETF Trust? And
> doesn’t it make more sense for IETF, which has no conflict of interest, to
> be in that role than ICANN? And isn’t that why CRISP team proposed it to
> begin with?
>
>
>
​GS:  I never, ever said that what could be done for ICANN couldn't be done
for the IETF Trust.  You have misunderstood my analysis of the possibility
of ICANN as a continued holder of the mark to state a position favoring
that outcome.  As I've said before, in and since Buenos Aires, I have an
open mind, and all of the options are viable.  (
I would not characterize the potential licensing to replacement IANA
operators as licenses to ICANN's competitors, except in the broadest
possible sense, but that's a minor point.)

The position I _do_ have is that the CWG and the names community should
have been able to freely analyze the options on an equal footing with the
other two communities.  For reasons I don't fully understand and that are
not worth re-hashing or analyzing, we no longer have that latitude.  Given
the ICANN Board's recent announcement, there's really no reason to continue
discussing ICANN retaining the marks (although I happen to think that the
Board's announcement usurped the names community's right to make that
decision, but that right had already been pretty much eliminated anyway).

However, I would not be so quick to say that the IETF Trust "has no
conflict of interest."  It's a completely different kind of conflict of
interest from that of ICANN-the-corporation, which relates to remaining as
the incumbent IFO.  It's more analogous to the conflict of interest that
would exist if there was a freestanding "names organization" nominated to
hold the IANA trademarks on behalf of all three communities.  This does not
come from any inherent mistrust of the IETF Trust.  Rather it follows from
the logic stated at the very beginning -- that a trademark owner
accountable to and representative of the multistakeholder community should
be what we seek in this scenario, and from the belief that we cannot
magically stop talking about accountability when we start talking about the
IETF Trust.

What makes sense at this point is to discuss what would need to be done to
the IETF Trust to make it an appropriate owner of the marks, whether the
IETF, CRISP and CWG can come to an understanding on those modifications,
and what a license to ICANN would need to look like to deal with both
operational and separational phases to meet the needs of all 3 communities,
the trademark owner and ICANN.

Greg
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