[CWG-Stewardship] drift in v5

[Alan Greenberg]

Greg, not quite.

You are thinking about this as a TM attorney. 
There are also technical issues. Currently 
iana.org has uses within all three communities 
and it is simple to do since it ia all run out of 
the current IANA. If there were to be a split at 
some point, it is not just a matter of granting 
the right to use the TM, but creating the 
mechanics to allow the domain name to be 
transparently used by all three entities. And if 
one of the groups has left because they no longer 
have faith in the ability of the then-current 
IANA to do things correctly, that could be problematic.

But the problems will be there regardless of 
where the iana.org name resolves to if there is a 
split. The best we can do is try to cover it with contractual assurances.

And as was pointed out ion the IETF list when 
this was first discussed. Although no one wants 
to stop using iana.org, and it would probably 
more disruptive for the IETF than others (my 
recollection is that the name is built into code), we would survive.

Alan



At 10/06/2015 11:15 PM, Greg Shatan wrote:
>Alan,
>
>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.
>
>Greg
>
>On Wed, Jun 10, 2015 at 11:03 PM, Alan Greenberg 
><<mailto:alan.greenberg at mcgill.ca>alan.greenberg at mcgill.ca> wrote:
>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: 
>><mailto:cwg-stewardship-bounces at icann.org>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: <mailto:cwg-stewardship at icann.org>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 >
>>Cc: SIDN SIDN 
>><<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.
>>Regards
>>
>>On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan 
>><<mailto:gregshatanipc at gmail.com>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 
>><<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.
>>
>>Best,
>>
>>Maarten
>>
>>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>
>>Cc: "<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!
>>
>>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
>>
>>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 >
>> > 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
>> > <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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>> > https://mm.icann.org/mailman/listinfo/cwg-stewardship
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>>
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>>
>>
>>--
>>------------------------------------------------------------------------
>>Seun Ojedeji,
>>Federal University Oye-Ekiti
>>web:     <http://www.fuoye.edu.ng>http://www.fuoye.edu.ng
>>Mobile: <tel:%2B2348035233535>+2348035233535
>>alt email:<mailto:seun.ojedeji at fuoye.edu.ng> seun.ojedeji at fuoye.edu.ng
>>The key to understanding is humility - my view !
>>
>>
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