[CWG-Stewardship] drift in v5
Alan Greenberg
alan.greenberg at mcgill.ca
Thu Jun 11 05:28:46 UTC 2015
Greg, there you go down the rabbit hole.
Yes, I said the problems COULD arise regardless
of the home of the server the IANA.ORG domain
points to. And yes, I have complete confidence
that there are technical solutions (even ones
that *I* could develop, and that is certainly not
my field of expertise). BUT developing them is
not within our mandate nor on our critical path.
THAT is why I suggested stopping at principles for the moment.
Alan
At 11/06/2015 12:25 AM, Greg Shatan wrote:
>Alan,
>
>I was going to go into the technical issues
>regarding managing the domain name issue, but I
>stopped myself, ssince as you say these issues
>will exist regardless of who is the domain
>registrant. Indeed, if the IETF Trust were to
>start operating the <http://iana.org>iana.org
>website after the transition, those issues would arise quickly.
>
>Since you've opened the door to the subject,
>I'll walk in. (FWIW, I probably spend far more
>time these days dealing with tech issues than pure trademark issues....)
>
>There are several alternatives. First, the page
>at <http://iana.org>iana.org could be used as a
>disambiguation page. An example of this can be
>found at <http://www.scrabble.com>www.scrabble.com.
>
>Inline image 1
>
>
>Indeed, the current <http://iana.org>iana.org
>home page is already very close to this, with
>separate sections for domain names, number
>resources and protocol assignments. Clicking on
>these leads to third level pages under domains,
>numbers and protocols. These could easily be
>reworked into subdomains
><http://domains.iana.org>domains.iana.org,
><http://numbers.iana.org>numbers.iana.org and
><http://protocols.iana.org>protocols.iana.org,
>which could then be hosted on servers managed by
>the community that has separated from ICANN as
>the IFO. Alternatively, the link for domains,
>numbers or protocols could go to an entirely
>different second level domain (e.g., iananumbers.web).
>
>Another alternative is for the separating
>customer to stop using the
><http://iana.org>iana.org domain entirely, but
>the first two options are probably more
>palatable and less disruptive. If this is
>approach is taken, you would probably want some
>form of notification (I would say a pop-up, but
>pop-up blockers make that suboptimal) of the new
>domain name, at least for a period of time.
>
>This could be dealt with by contract now or at
>the time of the split (or some combination of the two).
>
>Greg
>
>On Wed, Jun 10, 2015 at 11:29 PM, Alan Greenberg
><<mailto:alan.greenberg at mcgill.ca>alan.greenberg at mcgill.ca> wrote:
>Greg, not quite.
>
>You are thinking about this as a TM attorney.
>There are also technical issues. Currently
><http://iana.org>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 <http://iana.org>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 <http://iana.org>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 communityâs acceptance of
>>>it, was that both of them em insist on having
>>>the right to switch IANA functions operator at
>>>some time in the future. If the IANA
>>>trademarks and domains are âownedââ¢â¬ 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
>>>âownerâ/controller of PTIof PTI) or any
>>>subsequent IFO. Itâs that t 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 Seunâs argument, I think the
>>>trademdemarks 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.â ¢
>>>
>>>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 âsource or originÃnâ of the goods and
>>>services and fulfilling the âquality
>>>controlââ¢â¬ 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 âÅnaked
>>>license,â 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
>>>licensorâs discretion, andand 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
>>>ââ¬legal entity.â If this is correct,
>>>the Trustees (in their roole 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
>>>âThe Trustees of the IETETF Trustâ ) 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 iis 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>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 PTIâs activities under the ICANN-PTIPTI Contract. â
>>> >
>>> > this moves the draft farther away from the
>>> received comments, and would this make the
>>> ICGâs job of aligning the va 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
>>> >
>>> >
>>> >
>>> > _______________________________________________
>>> > CWG-Stewardship mailing list
>>> > <mailto:CWG-Stewardship at icann.org>CWG-Stewardship at icann.org
>>> > https://mm.icann.org/mailman/listinfo/cwg-stewardship
>>>_______________________________________________
>>>CWG-Stewardship mailing list
>>><mailto:CWG-Stewardship at icann.org>CWG-Stewardship at icann.org
>>>https://mm.icann.org/mailman/listinfo/cwg-stewardship
>
>
>
>
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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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