[CWG-Stewardship] drift in v5

Alan Greenberg alan.greenberg at mcgill.ca
Thu Jun 11 03:03:01 UTC 2015

I refrained from weighing in when this was first 
discussed and in this iteration. But I will now. 
I think that whatever the solution, there must be some principle adhered to:

1. The TM must be owned by an entity that is 
prepared to defend it if necessary.

2. Whoever owns it must enter into an agreement 
with all three users of it (or the other two if 
the owner is one of the users) so that if that 
user chooses to move withdraw from the IFO used 
by the others, the TM owner will grant it all 
necessary rights and privileges to continue using 
the TM with no user disruption.

In my opinion, it makes sense for the owner to be 
ICANN for the immediate future, because it will, 
either directly or through PTI, have agreements 
with the RIRs and the IETF and those agreements 
are reasonable places in which to embody 
principle 2. And ICANN has the funding and legal 
resources to defend the TM if necessary.

But there are certainly other solutions that 
could also satisfy both principles.

Like Chuck, I may be naive (something I have 
rarely been accused of), but I cannot see the 
details of the implementation being of concern to 
the AC/SO (with the possible exception of the ASO and the IPC).


At 10/06/2015 08:21 PM, Milton L Mueller wrote:

>The simple rationale for the numbers proposal, 
>and the protocol community’s acceptance of it, 
>was that both of them insist on having the right 
>to switch IANA functions operator at some time 
>in the future. If the IANA trademarks and 
>domains are “owned” by a single IFO we cannot 
>have that separability. If we want the IFO to be 
>able to change, then the trademarks and domains 
>must not he owned by either ICANN (which is the 
>“owner’/controller of PTI) or any subsequent IFO. It’s that simple.
>From: cwg-stewardship-bounces at icann.org 
>[mailto:cwg-stewardship-bounces at icann.org] On Behalf Of Maarten Simon
>Sent: Wednesday, June 10, 2015 4:22 PM
>To: Seun Ojedeji; Greg Shatan
>Cc: cwg-stewardship at icann.org IANA
>Subject: Re: [CWG-Stewardship] drift in v5
>Next to Seun’s argument, I think the trademarks 
>should remain with ICANN as it is ICANN that 
>will grant PTI the right to operate the IANA 
>functions through the contract. It seems logical 
>to me that ICANN only provides a license to PTI 
>to use the trademarks through the same contract 
>and not transfer the trademarks themselves.
>The further question is if in the case of a 
>separation the assets will go from PTI to the 
>new entity (probably in practise: yes) but in a 
>legal sense I would assume that PTI returns the 
>assets to ICANN and that ICANN provide these to the new operator.
>From: Seun Ojedeji <<mailto:seun.ojedeji at gmail.com>seun.ojedeji at gmail.com>
>Date: Wednesday 10 June 2015 22:05
>To: Greg Shatan <<mailto:gregshatanipc at gmail.com>gregshatanipc at gmail.com>
><<mailto:maarten.simon at sidn.nl>maarten.simon at sidn.nl>, 
>"<mailto:cwg-stewardship at icann.org>cwg-stewardship at icann.org" 
><<mailto:cwg-stewardship at icann.org>cwg-stewardship at icann.org>
>Subject: Re: [CWG-Stewardship] drift in v5
>Hi Greg,
>Perhaps its worth noting that the other 2 
>operational communities are still considering 
>whether to contract directly with PTI as their 
>proposals currently indicates contracting with 
>ICANN. So if for instance there is a need for 
>numbers community to move its functions, it 
>would be appropriate that the entity its 
>contracting with provides access to the IANA trademarks accordingly.
>As far as PTI is concerned at the moment, its 
>separation mechanisms as proposed by CWG is 
>largely based on the names community (with the 
>other 2 communities having optional liaison 
>roles). Based on that, i don't see the other 2 
>communities agreeing to transfer the IANA 
>transdemarks (which is for all 3 operational 
>communities) to PTI whose accountability mechanism is largely names based.
>On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan 
><<mailto:gregshatanipc at gmail.com>gregshatanipc at gmail.com> wrote:
>That is not my understanding of separation.  If 
>ICANN selects a new provider, that provider 
>would take all of the assets of PTI (including 
>the trademarks, under this scenario), so it 
>could provide the IANA services.  PTI would then 
>be wound down and ultimately dissolved by 
>ICANN.  Recall that PTI is a controlled entity 
>of ICANN and would remain so throughout.  In 
>this case, the IANA operations are separated from PTI.
>If PTI is actually separated (spun out) from 
>ICANN so that it is no longer under ICANN 
>control, it would be done to further separate 
>the IANA Functions from ICANN and IANA would 
>continue as a going concern (active business).
>Under no circumstances does PTI become separated 
>from ICANN without continuing to serve as the 
>IANA operator, yet continue to hold IANA-related assets.
>On Wed, Jun 10, 2015 at 3:44 PM, Maarten Simon 
><<mailto:maarten.simon at sidn.nl>maarten.simon at sidn.nl> wrote:
>Hi Greg,
>I would like to respond to your suggestion:
>'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 PTI is separated, ICANN will select a new 
>IANA provider. Am I correct that if the IANA 
>trademarks rest with PTI, we will than have to 
>rename the services after the separation and 
>they will not any longer be named the IANA services ?
>If that is correct, I rather keep the rights in ICANN.
>From: Greg Shatan <<mailto:gregshatanipc at gmail.com>gregshatanipc at gmail.com>
>Date: Wednesday 10 June 2015 21:06
>To: manning <<mailto:bmanning at karoshi.com>bmanning at karoshi.com>
>"<mailto:cwg-stewardship at icann.org>cwg-stewardship at icann.org" 
><<mailto:cwg-stewardship at icann.org>cwg-stewardship at icann.org>
>Subject: Re: [CWG-Stewardship] drift in v5
>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 
><<mailto:bmanning at karoshi.com>bmanning at karoshi.com> wrote:
>Missed the attachment
   which now is attached!
><mailto:bmanning at karoshi.com>bmanning at karoshi.com
>PO Box 12317
>Marina del Rey, CA 90295
>On 10June2015Wednesday, at 0:12, manning 
><<mailto:bmanning at karoshi.com>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.html>http://mm.icann.org/pipermail/cwg-stewardship/2015-June/003650.html>
> > Draft Document - 
> <<http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscussion-0001.docx>http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscussion-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
> > <mailto:bmanning at karoshi.com>bmanning at karoshi.com
> > PO Box 12317
> > Marina del Rey, CA 90295
> > <tel:310.322.8102>310.322.8102
> >
> >
> >
> > _______________________________________________
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>Seun Ojedeji,
>Federal University Oye-Ekiti
>web:     <http://www.fuoye.edu.ng>http://www.fuoye.edu.ng
>Mobile: +2348035233535
>alt email:<mailto:seun.ojedeji at fuoye.edu.ng>seun.ojedeji at fuoye.edu.ng
>The key to understanding is humility - my view !
>CWG-Stewardship mailing list
>CWG-Stewardship at icann.org
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