[CWG-Stewardship] drift in v5

Gomes, Chuck cgomes at verisign.com
Wed Jun 10 20:10:35 UTC 2015

I may be naïve and sometimes am but I would like to think that this could be resolved in collaboration with one another before a proposal is submitted to the ICG.  Also, I really don't think that the fact that this issue is not resolved should not be a showstopper for SO/AC approval.


-----Original Message-----
From: cwg-stewardship-bounces at icann.org [mailto:cwg-stewardship-bounces at icann.org] On Behalf Of manning
Sent: Wednesday, June 10, 2015 3:51 PM
To: Greg Shatan
Cc: cwg-stewardship at icann.org IANA
Subject: Re: [CWG-Stewardship] drift in v5

I am not going to weigh in on the merits of either point of view.  I simply suggest that the text in v5 is directly contrary to a published position by the CRISP team (the numbers community).
Such a conflict may be resolved either before or after the CWG final submission.   I would posit that the longer it remains unresolved, the longer it will take to execute a transition.

bmanning at karoshi.com
PO Box 12317
Marina del Rey, CA 90295

On 10June2015Wednesday, at 12:06, Greg Shatan <gregshatanipc at gmail.com> wrote:

> ICANN is an appropriate owner of the IANA trademarks.  PTI is also an appropriate owner of the IANA trademarks.  The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.
> A trademark is an indicator of source or origin.  The owner of a trademark should be the ultimate source of the goods and services offered under that trademark.  In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary.  The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee.  A trademark owner cannot merely "hold the asset" as CRISP proposed.  Ownership of a trademark fundamentally involves being the "source or origin" of the goods and services and fulfilling the "quality control" oversight role, among other things.  
> Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality.  The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services).  This is all set forth in a trademark license between the licensee ans licensor. If a trademark license has no quality control provisions, or the quality control provisions are not adequate or not adequately exercised, the license may be deemed a "naked license," exposing the trademark to the risk of abandonment (loss of validity as a trademark, and loss of the right to claim ownership and usage rights of the mark).  When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee.  The owner is the holder of that goodwill.
> I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks.  The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services.  Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services.  Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.
> An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks.  This is actually a simpler solution and is consistent with trademark law and practice.  This also contributes to separability, since all of the IFO-related assets would be in a single entity.
> If we assume for a moment that the IETF Trust were to own the IANA trademarks, significant issues arise.
> In a trademark license, the IETF Trust, as licensor, would have the power to terminate the license according to its terms (e.g., for material breach of the agreement, misuse of the trademark, etc.) or to decide not to renew the license, in which case ICANN would no longer have the right to use the IANA trademark in the provision of services.  It would be inappropriate for the IETF Trust to have this power, without accountability to and oversight by the names and numbers communities.  A mechanism would need to built for that.  
> Quality control presents another challenge.  In virtually all circumstances, a licensor exercises these quality control obligations through an employee or employees knowledgeable and capable of exercising quality control over the licensee and its services.  .It may also be appropriate for the operational communities to be involved in quality control and other aspects of the license as well, especially since quality control and trademark usage guidelines can be changed from time to time, typically at the licensor's discretion, and since the IETF is not in a position to exercise quality control in the names and numbers space.  This may require amendment of the IETF Trust Agreement, as well as the drafting of a somewhat unusual trademark license.
> Furthermore, the IETF Trust would also be responsible for policing and enforcement of the trademark against third parties and for maintenance of trademark registrations.  
> It is not clear how the IETF Trust intends to carry out any of these roles.
> Also, for the IETF Trust to become the owner of the IANA trademark, ICANN would need to assign all of its right, title and interest in and to the IANA trademark to the IETF Trust, along with all goodwill relating to the mark (typically, in exchange for good and valuable consideration).  This may require a valuation of the IANA trademark and its associated goodwill, which in turn may have tax or other financial consequences for one or both parties. 
> Finally, the IETF Trust, as such, may not  be capable of owning the 
> IANA Trademark, since the IETF Trust does not appear to be a "legal 
> entity."  If this is correct, the Trustees (in their role as Trustees) 
> are the collective owners of the IANA Trademark (in trust for the 
> IETF, as Beneficiaries of the IETF Trust), and would need to enter 
> into the trademark license (again, in their role as Trustees of the 
> Trust).  This appears to be consistent with Section 9.5 of the Amended 
> and Restated Trust Agreement and the ownership of the IETF trademarks 
> (which are owned by "The Trustees of the IETF Trust") in the USPTO 
> database.  (Oddly, this is inconsistent with the IETF General 
> Trademark License (on the IETF Trust website) which states that the 
> IETF Trust is the licensor of the IETF marks, and which also lacks 
> appropriate quality control provisions.)
> Greg Shatan
> On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning at karoshi.com> wrote:
> Missed the attachment.   which now is attached!
> manning
> bmanning at karoshi.com
> PO Box 12317
> Marina del Rey, CA 90295
> 310.322.8102
> On 10June2015Wednesday, at 0:12, manning <bmanning at karoshi.com> wrote:
> >
> > On 19 May 2015, the number community provided specific feedback regarding the need for alignment on the IETF trademark and domain (see attached email from Izumi to the CWG call for comments).
> >
> > Did you notice that the most recent draft (v5) for discussion that came out yesterday morning specifically moves farther away from this direction, leaving these marks in ICANN rather than moving them to the IETF Trust?
> >
> > CWG email re new draft - 
> > -<http://mm.icann.org/pipermail/cwg-stewardship/2015-June/003650.htm
> > l> Draft Document - 
> > <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/
> > aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscu
> > ssion-0001.docx>
> >
> > Proposed text in most recent document -
> >
> >> " ICANN grants to PTI an exclusive, royalty-free, fully-paid, 
> >> worldwide license to use the IANA trademark and all related 
> >> trademarks, and all applications and registrations therefor, for 
> >> use in connection with PTI's activities under the ICANN-PTI 
> >> Contract. "
> >
> > this moves the draft farther away from the received comments, and would this make the ICG's job of aligning the various proposals from the affected parties into a cohesive plan even more difficult?
> >
> > It might be premature to go to BA with this as an accepted direction, without concurrence from the affected parties.
> >
> >
> > manning
> > bmanning at karoshi.com
> > PO Box 12317
> > Marina del Rey, CA 90295
> > 310.322.8102
> >
> >
> >
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