[CWG-Stewardship] drift in v5

Greg Shatan gregshatanipc at gmail.com
Thu Jun 11 22:13:41 UTC 2015


Perhaps you missed a few emails while you were asleep (which I begrudge no
one in this process), but I do believe that the discussion that Alan and I
had last evening and night addressed the separability issue.  So there's
certainly been no "concession."  As for the supposed contradiction you
cite, first, I think this is letting separability be the tail that wags the
dog.  I generally support separability, but it doesn't trump looking at an
issue in its own context.  (As previously noted, having PTI own the mark
might make separability slightly easier, since it would be with other
assets that the next IFO would need to receive in a scenario where PTI was
relieved of its duties in favor of a third party.)

John Poole has replied separately, so I won't pile on.  I will just say
that the assignment from USC to ICANN (as the home of IANA) made sense then
and it makes sense now.  The assignment wasn't executed until 18 months
after Jon Postel died, so this was well after any assumption that ICANN was
going to have Jon Postel involved.  The fact that ICANN has evolved so that
policy has become predominant (at least in terms of overall resources,
perhaps not necessarily in actual importance), does not make ICANN's
relationship to IANA any different than it was in 2000.

I'm not suggesting that we can avoid the issue of harmonizing our views (on
this and other things) with the other operational communities.  What I was
suggesting is that our view in this proposal should be what we think makes
the most sense.  It's perfectly appropriate for the three operational
communities to start a discussion about this with their separate views --
indeed, we did not ask the other communities to change the views in their
proposals to align with ours.  We will achieve alignment, but not because
we try to fit in, like the new kid in town; rather it will be because of
larger common goals, goodwill and dialogue between the communities.  We
shouldn't start that dialogue negotiating against ourselves.

Finally, the only thing that is driving me are the merits, and consistency
with the general principles we agreed to -- one of which was to keep things
as they are unless there were significant reasons for change.


On Thu, Jun 11, 2015 at 12:53 PM, Milton L Mueller <mueller at syr.edu> wrote:

>  I see that neither Alan nor Greg has addressed the separability issue. I
> will take that as a concession that it cannot be answered. There is, as I
> pointed out twice, a contradiction between ICANN owning the marks and the
> ability to move the IFO. That is true whether or not ICANN offers a
> royalty-free license – that still puts ICANN in control of its use rather
> than the technical community and ICANN/PTI is an IFO. And that is central
> to the controversy.  Both the IETF and the CRISP team wanted the marks
> separate from ICANN because ICANN is an IFO and they did not want a
> specific IFO to own those marks.
> With respect to that point, John Poole, I am afraid your review of the
> trademark record is not relevant to this controversy. Just to fill in your
> historical record a bit more, USC Information Sciences Institute was the
> institutional home of Jon Postel, who was working on behalf of the IETF and
> was one of the developers of both the IP protocol and the numbers and names
> registry. So if you want to make that history relevant, you would have to
> note that his position was far closer to that of the current IETF than to
> ICANN. Indeed, the All the trademark records reveals is something that we
> already know and which has no bearing on what we are doing now: which is,
> that when ICANN was created, it was assumed that Postel would move to
> become part of it, and that ICANN would “be” the IANA. But as I have
> explained elsewhere, that did not happen; ICANN became the DNS policy
> making entity and the IANA was a small appendage to it. We are in a very
> different situation now and the TM arrangements need to adjust.
> I am amused by the fact that Greg says we can avoid this issue because our
> remit does not extend to the other operational communities – but then
> insists on doing something that directly contradicts the proposals of the
> other operational communities.
> I am wondering what really is driving this concept because it is certainly
> not consensus within this CWG, it is not the merits of the arguments, it is
> not consistency with the general principles we agreed on.
> *From:* john at expri.com [mailto:john at expri.com] *On Behalf Of *John Poole
> *Sent:* Thursday, June 11, 2015 12:17 AM
> *To:* cwg-stewardship at icann.org
> *Cc:* Alan Greenberg; Greg Shatan; Andrew Sullivan; Milton L Mueller
> *Subject:* Re: [CWG-Stewardship] drift in v5
> 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:
> 2.1 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
> CALIFORNIA 900895013,”  subsequently assigned by USC (“entire interest”) to
> 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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