[CRISP-TEAM] Fwd: Fw: [CWG-Stewardship] Fwd: [Internal-cg] Numbers community response to question from the ICG

Sat Feb 28 01:40:52 CET 2015

CRISP Team,

This feedback from a CWG name community member has been shared with me -
what are your thoughts?

BTW, on the CWG discussions I shared the other day(good feeback Nurani
Andrei Bill and sorry haven't gotten round to reply), I talked to Adam
Peake from ICANN and he suggsted that we contact Avri and clarify her
intention and details. I thought this makes sense - what do you think?

Izumi

-------- Forwarded Message --------
Subject: Fw: [CWG-Stewardship] Fwd: [Internal-cg] Numbers community
response to question from the ICG
Date: Wed, 25 Feb 2015 10:11:07 +0100
From: WUKnoben <wolf-ulrich.knoben at t-online.de>
Reply-To: WUKnoben <wolf-ulrich.knoben at t-online.de>
To: izumi at nic.ad.jp

Hi Izumi,

please see attached a note from Greg Shatan re the IANA trademark
discussion between the numbers and protocols community. This note hasn’t
been taken into consideration during the ICG call earlier today. It may
be of interest to your CRISP internal debate.

Best regards

Wolf-Ulrich

From: Greg Shatan
Sent: Wednesday, February 25, 2015 3:54 AM
To: Alissa Cooper
Cc: WUK1950 ; Lise Fuhr ; Jonathan Robinson
Subject: Re: [CWG-Stewardship] Fwd: [Internal-cg] Numbers community
response to question from the ICG

Alissa ,

Thank you for providing this information to the CWG.  Although I am a
member of the CWG and an intellectual property lawyer in private
practice (as well as President of the Intellectual Property Constituency
of the GNSO), I am writing solely in my individual capacity, and do not
speak for any of the aforementioned entities or my employer.

The proposal submitted by CRISP on behalf of the Numbers Community
contains the following paragraph:

With regards to the IANA trademark and the IANA.ORG domain, it is the
expectation of the Internet Number Community that both are associated
with the IANA Numbering Services and not with a particular IANA
Numbering Services Operator. Identifying an organization that is not the
IANA Numbering Services Operator and which will permanently hold these
assets will facilitate a smooth transition should another operator (or
operators) be selected in the future. It is the preference of the
Internet Number Community that the IANA trademark and the IANA.ORG
domain name be transferred to an entity independent of the IANA
Numbering Services Operator, in order to ensure that these assets are
used in a non-discriminatory manner for the benefit of the entire
community. From the Internet Number Community’s perspective, the IETF
Trust would be an acceptable candidate for this role.

I understand that representatives of the Protocol Parameters community
have stated that the above paragraph does not conflict with their
proposal, and that the IETF Trust has stated that it is willing to take
on the role suggested for it above.

I write only with regard to the trademark law ramifications of this
proposal, which I am concerned may not have been fully taken into
consideration in the proposal’s development and review.  If that is
indeed the case, I thought it would be helpful to provide some
background information, especially since this proposal is under current
consideration by the ICG (with apologies for writing so close to the
call, but this took some time to prepare).

A trademark signifies the source or origin of the goods and services
offered under that mark.  In other words, the owner of a trademark is
the source or origin of the goods and services offered under that mark.
 A trademark owner cannot merely “hold the asset.”  The trademark owner
has a continuing responsibility for the quality of the goods and
services offered under the mark, including goods and service offered by
licensees.  As such, ownership of a trademark fundamentally involves
being the “source or origin” of the goods and services and fulfilling a
legally mandated “quality control” oversight role, among other things.

The “expectation of the Internet Number Community that both are
associated with the IANA Numbering Services and not with a particular
IANA Numbering Services Operator” is not really consistent with
trademark law.  ICANN is the “source or origin” of the services provided
under the IANA mark, and ICANN is responsible for the quality of the
services it provides under the ICANN mark.  Therefore, the mark is
associated with ICANN to the same extent as the IANA Services are, at
least so long as it is the IANA Services Operator.  (Of course, if ICANN
were operating the IANA Function under license, then it would be
appropriate for that licensor to also be the owner and licensor of the
trademark.)

That does not rule out transfer of the trademark to the IETF Trust,
separate from a transfer of the IANA function itself (although it would
be somewhat unusual).  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.  The IETF Trust
would then need to enter into a trademark license with ICANN, granting
ICANN the right to use the trademark, subject to the terms and
conditions of the license.

A required element of any U.S. trademark license is quality control by
the brand owner.  Therefore, the trademark license must set forth
quality control standards.  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).

As such, the IETF Trust would be required to exercise quality control
over ICANN’s performance of all of the IANA services and its uses of the
IANA trademark.  For example, the IETF Trust would likely be obligated
to review and approve any new services or material changes in services
offered under the IANA mark; conduct reviews and inspections to
determine whether ICANN is meeting the quality of performance; and
review and approve ICANN’s uses of the IANA trademark. ICANN would
likely be obligated to provide various periodic reports to the IETF
Trust in connection with this quality control function.

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.  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 these roles.  (Indeed, it is not clear if the
IETF Trust fully appreciates the fact that it (and not ICANN) would be
the ultimate “source or origin” of the IANA services, if it took on
ownership of the mark, and that all future goodwill arising from ICANN’s
use of the IANA mark would be owned by the IETF Trust as well.)

In a typical 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.
Clearly, any trademark license would need to involve the operational
communities so that this could not occur without the agreement of all
communities.  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.  This may require amendment of the IETF Trust Agreement, as
well as the drafting of a somewhat unusual trademark license.

Finally, it appears to me that the IETF Trust, as such, is not capable
of owning the IANA Trademark or licensing the mark to ICANN, since the
IETF Trust does not appear to be a “legal entity.”  If this is correct,
the Trustees (in their role as Trustees) would need to collectively own
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”).  However, 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, so some uncertainty remains.
Also, it is not clear to me that all of the operational communities
would be comfortable with the IANA Trademark being held in trust for the
IETF.  At the very least, this will need to be fully considered.

As you can see, there are a number of complexities involved, as well as
various decisions, documents and actions that would need to be
considered in order to implement this proposal.  While by no means
insurmountable, they should also not be minimized, whether at the
conceptual level or the implementation level.

I hope that this is helpful and is taken in the spirit of improving all
of the IANA transition proposals.  Please feel free to pass this on to
the rest of the ICG and please do not hesitate to contact me if I may be
of further assistance.

Best regards,

Greg Shatan

Gregory S. Shatan ï Abelman Frayne & Schwab

Partner | IP | Technology | Media | Internet

666 Third Avenue | New York, NY 10017-5621

Direct  212-885-9253 | Main 212-949-9022

Fax  212-949-9190 | Cell 917-816-6428

gsshatan at lawabel.com

ICANN-related: gregshatanipc at gmail.com

www.lawabel.com

On Mon, Feb 23, 2015 at 11:32 AM, Alissa Cooper <alissa at cooperw.in> wrote:

  FYI

  Begin forwarded message:

    From: Alan Barrett <apb at cequrux.com>

    Subject: [Internal-cg] Numbers community response to question from
the ICG

    Date: February 20, 2015 at 3:40:03 PM PST

    To: ICG <internal-cg at icann.org>

    Cc: Izumi Okutani <izumi at nic.ad.jp>

    The numbers community has made the following response to the
    question asked by the ICG:

    ----- Forwarded message from Izumi Okutani <izumi at nic.ad.jp> -----

    Date: Sat, 21 Feb 2015 08:33:57 +0900
    From: Izumi Okutani <izumi at nic.ad.jp>
    To: ianaxfer at nro.net
    Subject: Re: [NRO-IANAXFER] Question from the ICG

    Dear Alissa and the ICG,

    We refer to the question that the ICG asked the numbers community
    on 9 Feb 2015
    <https://www.nro.net/pipermail/ianaxfer/2015-February/000397.html>:

      The numbers proposal sees these changes as a requirement of the
      transition and the protocols parameters proposal does not. If these
      aspects of the proposals are perceived as incompatible would the
numbers
      and protocol parameters communities be willing to modify their
proposals
      to reconcile them?>

    We do not observe incompatibilities between the proposals from the
    numbers and protocol parameters communities, for reasons given below.

    * It is expectations of the numbers community that the IANA
    trademark and IANA.ORG domain are available for the use
    of IANA Numbering Services in the future, even if the IANA
    Numbering Services Operator is changed from ICANN to some other
    operator, or if different communities choose different IANA
    operators in the future.

    * In order to meet that expectation, it is the preference of
    the Internet Number Community that the mark and the name be
    transferred to an entity independent of the IANA Numbering
    Services Operator.

    * The numbers community considers the IETF Trust as an acceptable
    option, provided this is supported by the IETF community, and
    the IETF Trust is willing to accept it. This is not the only
    option, and the numbers community is open to consider other
    solutions which work for other affected parties.

    This reflects the discussions in the number resources community on this
    <ianaxfer at nro.net> mailing list archived at:

    Question from the ICG
    https://www.nro.net/pipermail/ianaxfer/2015-February/subject.html

    To summarize: The numbers proposal does not set a "MUST" condition to
    transfer the mark and domain to the IETF Trust or to any other specific
    entity, and the IETF proposal does not say it will oppose transfer of
    the mark and domain to the IETF Trust, so we do not observe any
    incompatibilities.  From discussions on the IETF ianaplan group, we
    observe subsequent decisions by the IETF ianaplan group and the IETF
    further support the position that there is no conflict.

    Best Regards,
    Izumi Okutani on behalf of the CRISP Team

    _______________________________________________
    ianaxfer mailing list
    ianaxfer at nro.net
    https://www.nro.net/mailman/listinfo/ianaxfer

    ----- End forwarded message -----
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-- 

Gregory S. Shatan ï Abelman Frayne & Schwab

Partner | IP | Technology | Media | Internet

666 Third Avenue | New York, NY 10017-5621

Direct  212-885-9253 | Main 212-949-9022

Fax  212-949-9190 | Cell 917-816-6428

gsshatan at lawabel.com

ICANN-related: gregshatanipc at gmail.com

www.lawabel.com