[CWG-Stewardship] drift in v5

[Greg Shatan]

I'm fine with stopping at principles.  Indeed, I thought I had.  I just
took exception to the idea I was unaware of or unable to conceptualize the
technical issues (or domain name issues) alongside the trademark issues I
was referring to in my prior email.  Thus my attention to those issues.

I've worked on quite a number of corporate transactions in which issues
like this have arisen, so I have ended up with a fair amount of experience
that is applicable to the current situation.  Whether that rises to the
level of "expertise," I don't know....

Greg

On Thu, Jun 11, 2015 at 1:28 AM, Alan Greenberg <alan.greenberg at mcgill.ca>
wrote:

>  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 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 iana.org could be
> used as a disambiguation page.  An example of this can be found at
> www.scrabble.com.
>
> [image: Inline image 1]
>
> Indeed, the current 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
> domains.iana.org, numbers.iana.org and 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
> 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 <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.
> 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
> 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. It’s
> that t simple.   --MM   From: cwg-stewardship-bounces at icann.org [
> mailto:cwg-stewardship-bounces at icann.org
> <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:
> 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 <seun.ojedeji at gmail.com > Date: Wednesday
> 10 June 2015 22:05 To: Greg Shatan <gregshatanipc at gmail.com > Cc: SIDN
> SIDN <maarten.simon at sidn.nl>, " 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 <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 <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 <gregshatanipc at gmail.com > Date: Wednesday
> 10 June 2015 21:06 To: manning <bmanning at karoshi.com> Cc: "
> 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 <bmanning at karoshi.com> wrote: Missed the attachment…   which now
> iis attached!
> manning bmanning at karoshi.com PO Box 12317 Marina del Rey, CA 90295
> 310.322.8102
> On 10June2015Wednesday, at 0:12, manning <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 PTI̢۪s 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 >
> bmanning at karoshi.com > PO Box 12317 > Marina del Rey, CA 90295 >
> 310.322.8102 > > > > _______________________________________________ >
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> --
>  ------------------------------------------------------------------------ Seun
> Ojedeji, Federal University Oye-Ekiti web:     http://www.fuoye.edu.ng Mobile:
> +2348035233535 alt email: seun.ojedeji at fuoye.edu.ng The key to
> understanding is humility - my view !
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