[CWG-Stewardship] drift in v5

Thu Jun 11 04:14:51 UTC 2015

Having read the thread, I fully support the approach that Jonathan suggests.

Best,

Lise

Fra: cwg-stewardship-bounces at icann.org
[mailto:cwg-stewardship-bounces at icann.org] På vegne af Jonathan Robinson
Sendt: 11. juni 2015 00:26
Til: 'Gomes, Chuck'; 'manning'; 'Greg Shatan'
Cc: cwg-stewardship at icann.org
Emne: Re: [CWG-Stewardship] drift in v5

We have an overarching objective to get the proposal to the SO & ACs in good
time ahead of the BA meeting. Let’s remain committed to that.

Like Chuck, I would like to think there is a resolution here through
collaborative work and that this should not stop us sending the proposal to
the Chartering Organisations, with acknowledgement that this is an issue to
resolve.

I haven't had the opportunity to discuss this with Lise, but personally, I
would be comfortable flagging this in a covering note as an issue requiring
further work to resolve, ideally before submission to the ICG.

This is, in essence, the 5th option suggested by Chuck, seconded by Greg and
further supported by Andrew.

It may be that, given due consideration, PTI is agreeable as an appropriate
legal entity to hold the mark and/or other relevant IP. At this stage, I
have neither a legally informed view nor a personal position.

However, a key point which we should all be cognisant of (and could
emphasise in a covering note), is that the language that has kicked this off
this thread is derived from the draft Term Sheet (page 128). 

This has not been fully worked through by the CWG and we have expressly left
it to implementation. In this context, please note that our preamble to the
Term Sheet states:

What follows below is an initial draft proposed term sheet that could be the
precursor to the ICANN-PTI contract. This is based on a legal memorandum
prepared by legal counsel to the CWG-Stewardship on May 18, 2015. 

To the extent this term sheet is inconsistent with the current proposal, the
current proposal governs. The term sheet would will be subject of
negotiation between PTI and ICANN (with PTI having independent legal
advice).

Jonathan

-----Original Message-----
From: Gomes, Chuck [mailto:cgomes at verisign.com] 
Sent: 10 June 2015 21:11
To: manning; Greg Shatan
Cc: cwg-stewardship at icann.org IANA
Subject: Re: [CWG-Stewardship] drift in v5

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.

Chuck

-----Original Message-----

From:  <mailto:cwg-stewardship-bounces at icann.org>
cwg-stewardship-bounces at icann.org [
<mailto: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:  <mailto:cwg-stewardship at icann.org> 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.

manning

 <mailto:bmanning at karoshi.com> bmanning at karoshi.com

PO Box 12317

Marina del Rey, CA 90295

310.322.8102

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

> 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.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

> >  <mailto:bmanning at karoshi.com> bmanning at karoshi.com

> > PO Box 12317

> > Marina del Rey, CA 90295

> > 310.322.8102

> >

> >

> >

> > _______________________________________________

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