[CWG-Stewardship] drift in v5

Jonathan Robinson jrobinson at afilias.info
Thu Jun 11 06:41:11 UTC 2015 

Bill,

Two key points from my perspective:

1. There is urgency to send the proposal out to the chartering organisations
but that does not in any way imply a lack of recognition to deal with this
trademarks issue.
2. Lise and I have previously had meetings with the CRISP chairs. We have
also had meetings with the ICG chairs group. The purpose of the meetings was
primarily to ensure continuous updates on progress and current issues.
We touched on the trademarks issue in a meeting with the ICG chairs
yesterday. Clearly, there is now some more work to be done.

Jonathan

-----Original Message-----
From: manning [mailto:bmanning at karoshi.com] 
Sent: 11 June 2015 00:33
To: jrobinson at afilias.info
Cc: Gomes, Chuck; Greg Shatan; cwg-stewardship at icann.org
Subject: Re: [CWG-Stewardship] drift in v5

***  Perhaps you, Chuck, Greg and Andrew might want to actually talk to the
CRISP folks about ways forward?   I’m sure they have opinions, desires, and
a willingness to engage in
dialog to ensure this nit might be addressed prior to sending out a “final’
to the SOs & ACs.   

manning
bmanning at karoshi.com
PO Box 12317
Marina del Rey, CA 90295
310.322.8102



On 10June2015Wednesday, at 15:26, Jonathan Robinson <jrobinson at afilias.info>
wrote:

> 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.
[
]  ***

> -----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: 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: 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
> bmanning at karoshi.com
> PO Box 12317
> Marina del Rey, CA 90295
> 310.322.8102
>  
>  
>  
> On 10June2015Wednesday, at 12:06, Greg Shatan <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 <bmanning at karoshi.com> wrote:
> > Missed the attachment.   which now is 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.h
> > > tm
> > > l> Draft Document -
> > > <http://mm.icann.org/pipermail/cwg-stewardship/attachments/2015060
> > > 9/ 
> > > aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordis
> > > cu
> > > 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
> > > bmanning at karoshi.com
> > > PO Box 12317
> > > Marina del Rey, CA 90295
> > > 310.322.8102
> > >
> > >
> > >
> > > _______________________________________________
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> >
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