[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.


At 11/06/2015 12:25 AM, Greg Shatan wrote:
>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://numbers.iana.org>numbers.iana.org and 
>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).
>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.
>At 10/06/2015 11:15 PM, Greg Shatan wrote:
>>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 <<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).
>>At 10/06/2015 08:21 PM, Milton L Mueller wrote:
>>>The simple rationale for the numbers proposal, 
>>>and the protocol community̢۪s 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 “ownedââ¢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 
>>>“owner’/controller of PTIof PTI) or any 
>>>subsequent IFO. It̢۪s that t simple.
>>><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 Seun̢۪s 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 >
>>><<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.
>>>On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan 
>>><<mailto:gregshatanipc at gmail.com>gregshatanipc at gmail.com > wrote:
>>>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.
>>>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.
>>>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 originÃn†of the goods and 
>>>services and fulfilling the “quality 
>>>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 “œnaked 
>>>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 
>>>licensor̢۪s 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 
>>>“legal entity.†  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 
>>>“The Trustees of the IETETF 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 iis attached!
>>><mailto:bmanning at karoshi.com>bmanning at karoshi.com
>>>PO Box 12317
>>>Marina del Rey, CA 90295
>>>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 PTI’s activities under the ICANN-PTIPTI Contract. “
>>> >
>>> > this moves the draft farther away from the 
>>> received comments, and would this make the 
>>> ICG̢۪s 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
>CWG-Stewardship mailing list
><mailto:CWG-Stewardship at icann.org>CWG-Stewardship at icann.org
>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 !
>CWG-Stewardship mailing list
><mailto:CWG-Stewardship at icann.org>CWG-Stewardship at icann.org
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