[CWG-Stewardship] drift in v5

Greg Shatan gregshatanipc at gmail.com
Thu Jun 11 03:15:14 UTC 2015


You took the words out of my mouth.  A clause in the agreements between
ICANN and the other two communities should require ICANN to grant a
worldwide royalty-free license to use the trademarks. This is a simple fix.
If we want to get fancy, there can be a contingent license that
automatically springs into place when the customer separates.

I also agree with your point on defense/enforcement.


On Wed, Jun 10, 2015 at 11:03 PM, Alan Greenberg <alan.greenberg at mcgill.ca>

>  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).
> Alan
> At 10/06/2015 08:21 PM, Milton L Mueller wrote:
> Maarten,
> 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.
> --MM
> *From:* cwg-stewardship-bounces at icann.org [
> mailto:cwg-stewardship-bounces at icann.org
> <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 <seun.ojedeji at gmail.com >
> *Date: *Wednesday 10 June 2015 22:05
> *To: *Greg Shatan <gregshatanipc at gmail.com >
> *Cc: *SIDN SIDN <maarten.simon at sidn.nl>, " 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.
> Regards
> On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan <gregshatanipc at gmail.com >
> wrote:
>  Maarten,
> 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.
> Greg
> On Wed, Jun 10, 2015 at 3:44 PM, Maarten Simon <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.
> Best,
> Maarten
> From: Greg Shatan <gregshatanipc at gmail.com >
> Date: Wednesday 10 June 2015 21:06
> To: manning <bmanning at karoshi.com>
> Cc: " 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 <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.html >
> > Draft Document - <
> 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
> > bmanning at karoshi.com
> > PO Box 12317
> > Marina del Rey, CA 90295
> > 310.322.8102
> >
> >
> >
> > _______________________________________________
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> --
> ------------------------------------------------------------------------
>  Seun Ojedeji,
> Federal University Oye-Ekiti
> web:     http://www.fuoye.edu.ng
> Mobile: +2348035233535
> alt email: seun.ojedeji at fuoye.edu.ng
>  The key to understanding is humility - my view !
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