[CWG-Stewardship] Legal cost reality

Greg Shatan gregshatanipc at gmail.com
Tue Jun 30 04:56:16 UTC 2015

My comments below.

On Sat, Jun 27, 2015 at 2:40 PM, Milton L Mueller <mueller at syr.edu> wrote:

>  *Thanks for this great message, Chuck. My responses in line below*
> I don’t disagree with anything Jonathan says but as we try to finish the
> work, including implementation, to effectively manage costs I believe the
> following would be helpful to keep in mind:
> ·        The ICANN General Counsel’s office and its primary outside
> Council firm Jones Day has demonstrated an extreme bias for protecting the
> corporation at all costs even when that may conflict with the public
> interest.  In my opinion, that is the primary source of the mistrust in the
> community and that is why independent legal advice was needed and I believe
> will be needed going forward.
> *MM: I reluctantly have to agree with Chuck. The reluctance comes from the
> fact that it would definitely be more economically efficient to rely on
> ICANN legal to draft the appropriate bylaw changes, and then have the CWG,
> advised by Sidley, review them. But we can’t do that, for the reasons Chuck
> enumerates.*
> *I would differ from Chuck a little in that I would not say the problem is
> “mistrust” per se. The real problem is a direct and obvious conflict of
> interest between ICANN, Inc. (for whom ICANN legal is the agent) and the
> interests of the community as reflected in the enhanced accountability
> process. I think ICANN legal and Jones Day are highly trustworthy agents
> for their corporate client; they have proven time and again that they will
> fight for its interests. The problem is that in this case, ICANN’s
> interests are not aligned with those of us demanding more accountability.
> In other words, you do not have to think ICANN legal, or Jones Day, are
> “untrustworthy” in some ethical sense to believe that they should not be
> holding the pen on the required bylaw changes.*
​GSS: It doesn't really matter too much who prepares the first actual draft
of the bylaws changes (although I would have a marginal preference for our
counsel doing so, it's not truly significant).  What's important is (a) the
CWG prepares the specifications or terms of reference from which the first
legal draft is prepared and (b) if ICANN's counsel prepares the first
draft, our counsel takes that draft and revises that draft as much as
needed to accomplish the objectives of the CWG.  I am confident that our
counsel are not "shrinking violets" and will "do the necessary" to prepare
a second legal draft consistent with our needs.  Hopefully, this process
can be accomplished without too many "rounds" of drafts going back and

>  ·        In cases where bias may not be as big a problem (e.g., the IANA
> trademark) we should compare what it costs to use expertise in the General
> Counsel’s office and ICANN’s existing outside Counsel relationships to what
> it would cost to use Sidley Austin.
> *MM: Actually, I think this is an area where bias could be a serious
> problem. Continued ICANN control of the trademarks could be used to
> constrain or even nullify the right of the community to fire ICANN’s
> affiliate as IANA functions operator and hire someone else. Furthermore,
> control of the trademark would give ICANN additional leverage over the
> numbers and protocol communities, and we already know that the numbers
> community strongly objects to this.*

​GSS:  First, I am not going to jump to any conclusions about the most
appropriate home for the IANA trademarks and domain names, and I suggest we
all hold back until the facts and legal analysis are done.  That said, I
think this concern is vastly overstated and possibly non-existent.  In any
event, it should be relatively easy to control for.  To the extent the
bylaws deal with IANA separation, the disposition of or access to the
trademarks (and other IANA-related assets, both IPR and non-IPR) by
non-ICANN parties (whether by assignment or by license)​

​can be set forth in the bylaw.  The various contracts between ICANN, on
the one hand and PTI and the other two operational communities, on the
other hand, are also appropriate places to deal with these issues in a
straightforward and binding manner.  Finally, and not to minimize the
importance of the trademark registrations, if by some stretch of the
imagination ICANN refuses to abide by binding agreements regarding the
disposition of the trademarks, the services can be referred to by another
name.  Alternately, the non-ICANN entities can use the name based on the
rights set forth in the agreements, knowing that if ICANN attempts to stop
them, the agreements would make it very highly likely ICANN would lose and
embarrass itself in the process.

> *In this case, however, I do not think we are dealing with a problem that
> requires a lot of legal work; the main thing we have to do is decide what
> entity that is not tied to a specific IFO can hold the trademark. Once that
> is decided, the process of transferring the TM to another owner (neither
> ICANN nor PTI) I’ll let the TM lawyers among us decide what is the best way
> to do it.*

​GSS;  We are talking about legal rights -- rights created and governed by
law -- so the idea that it doesn't require significant legal work is a
little peculiar.  It requires enough work to make sure we get this right as
a matter of law, not just as a matter of desire.  (In the grand scheme of
things, it won't be a massive quantity of legal work, so don't worry about
the bills.)  As noted above, I'm not jumping to conclusions about the most
appropriate home for the IANA trademarks.  Until we do the work, I see no
reason to believe that an entity "not tied to a specific IFO" is an
appropriate or desirable owner of the trademarks.  Also, I am far from sure
that the IETF Trust ​fits the description of an entity "not tied to a
specific IFO."  The IETF may, at least arguably, be a provider of IANA
services (if not, why would they need a license to the mark?), and the IETF
is the sole beneficiary of the IETF Trust.


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