[CWG-Stewardship] drift in v5

[Greg Shatan]

John,

Thanks -- that's very helpful and supports the position that the IETF is
not now and never has been IANA.  (Which in no way discounts the close
relationship that the IETF has with IANA, and the historical origins of
both.)

Interestingly, for what it's worth, the original applicant and registrant
of the IETF trademarks was the Corporation for National Research
Initiatives, which assigned the marks in 2006 to the IETF Trust.f

Greg

On Thu, Jun 11, 2015 at 12:17 AM, John Poole <jp1 at expri.com> wrote:

> CWG, Alan, Greg, Andrew, Milton:
>
> Reference to the historical record may also be helpful to resolve this
> issue (IANA marks):
>
> USC/ICANN TRANSITION AGREEMENT (USC is the University of  Southern
> California)—
> https://www.icann.org/resources/unthemed-pages/usc-icann-transition-2012-02-25-en
> which states in 2.1:
>
> 2. INTELLECTUAL PROPERTY.
>
> 2.1 Service Mark and Copyright Assignment. USC hereby assigns and
> transfers without warranty unto ICANN USC's entire right, title and
> interest in and to the following:
>
> (a) the "Internet Assigned Numbers Authority" service mark pending
> registration, the "Internet Assigned Numbers Authority" common law service
> mark, the "IANA" service mark pending registration, the "IANA" common law
> service mark, and the common law service mark in the IANA logo shown in
> Exhibit "A" attached hereto (collectively, the "Service Marks"), and the
> goodwill associated with the Service Marks; and
>
> (b) the copyright to, and all other exclusive rights to reproduce,
> distribute, prepare derivative works based on, display, and otherwise use,
> the IANA logo shown in Exhibit "A" attached hereto, pursuant to the terms
> and conditions of that certain Service Mark and Copyright Assignment
> attached hereto as Exhibit "B" (the "Service Mark and Copyright
> Assignment")."
>
> The University of Southern California – ICANN Transition Agreement is
> specifically referred to and approved by the United States Government in
> the original IANA Contract (February 9, 2000)
> http://www.ntia.doc.gov/files/ntia/publications/ianacontract.pdf
>
> Nowhere in the historical record do I find any other entity holding or
> claiming Common Law or Registration rights to the IANA marks prior to the
> University of Southern California (USC), although RFC 1174 says that
> "Throughout its entire history, the Internet system has employed a central
> Internet Assigned Numbers Authority (IANA)..."
>
> The first reference to the name "IANA" or “Internet Assigned Numbers
> Authority” in the RFC series is in RFC 1060:
>
> RFC 1060 --March 1990:
>
> “… current information can be obtained from the Internet Assigned Numbers
> Authority (IANA).  If you are developing a protocol or application that
> will require the use of a link, socket,  port, protocol, etc., please
> contact the IANA to receive a number assignment.
>
>    Joyce K. Reynolds
>    Internet Assigned Numbers Authority
>    USC - Information Sciences Institute
>    4676 Admiralty Way
>    Marina del Rey, California  90292-6695 …”
>
> US Trademark Registration for IANA shows an original “Filing Date of March
> 21, 1997” by “Owner (REGISTRANT) University of Southern California
> NON-PROFIT CORPORATION CALIFORNIA University Park, ADM 352 Los Angeles
> CALIFORNIA 900895013,”  subsequently assigned by USC (“entire interest”) to
> ICANN
> http://assignments.uspto.gov/assignments/q?db=tm&qt=sno&reel=&frame=&sno=75261386
>
> ICANN subsequently filed its own separate registrations of the IANA marks
> in 2001 and 2007.
>
> Domain name iana.org has a "created date" of 1995-06-05 according to the
> WHOIS, current registrant is ICANN.
>
> The historical record, in my view, supports the position that these
> property rights should remain with ICANN which can then license their use
> by its affiliate PTI, or any other third party.
>
> Best regards,
> John Poole
>
> On Wed, Jun 10, 2015 at 10:29 PM, Alan Greenberg <alan.greenberg at mcgill.ca
> > wrote:
>
>>  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 <
>> 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...
>>
>>
>
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