[CRISP-TEAM] Fwd: Fw: [CWG-Stewardship] Fwd: [Internal-cg] Numbers community response to question from the ICG
Bill Woodcock
woody at pch.net
Sat Feb 28 05:03:39 CET 2015
Seems like maybe we need instead to do what the U.S. national Parks Service does with the trademarks of concessions within the parks, which is basically to have a contractual requirement that the old contractor pass the trademark to the new contractor at a fixed price.
-Bill
> On Feb 27, 2015, at 19:41, Izumi Okutani <izumi at nic.ad.jp> wrote:
>
> 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
>
>
> _______________________________________________
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> 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
>
>
>
>
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