[CRISP-TEAM] Comments on CWG Proposal compared to CRISP Proposal - Intellectual Property Rights and domain transfer to IETF Trust

[Michael Abejuela]

CRISP Team,

In reviewing the treatment of Intellectual Property Rights (IPR) by both the Names community proposal and the Numbers community proposal, there are a few observations  I wanted to share particularly with a comparison of the two proposals for both similarities and inconsistencies.  I am also copying the NRO EC on this e-mail as hopefully this aids in their review and discussions of the proposals as well.

The CRISP proposal addresses intellectual property rights in four ways:

(1)  IANA Number Registries are in the public domain;
(2)  Non-public information related to the IANA number resource registries and corresponding services, including the provision of reverse DNS delegation in IN-ADDR.ARPA and IP6.ARPA, is managed by the IANA operator and will be transferred to its successor(s);
(3)  All rights on non-public information related to the IANA number resource registries and corresponding services must be transferred to the RIRs;
(4)  The IANA trademark and the IANA.ORG domain name – expectation of the Number Community that these are associated with the IANA Numbering Services and not with a particular operator.  It is the preference of the Internet Number Community that these 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.  The IETF Trust has been identified as an acceptable candidate for this role.

Further, the draft SLA contemplated between the IANA Numbering Services Operator (ICANN) and the RIRs collectively seeks to implement the actions above in Section 12.  In the draft SLA, any IPR and any rights over data held by the Operator related to the performance of its obligations under the SLA are assigned to the RIRs, their successors, assigns and designees.  Further, any IPR and any rights over data created by the Operator in performance of the SLA are deemed to be on behalf of the RIRs, are works made for hire for the RIRs or are assigned and transferred to the RIRs, their successors, assigns and designees.  The SLA also provides for a license of IPR and rights over data to the Operator for use in performance of its obligations pursuant to the SLA.

The CWG proposal addresses intellectual property rights as follows:

It states that “Intellectual property rights related to the IANA website and published documents will need to be assigned or licensed to the successor operator.” (page 96 of the CWG proposal)

It also states “Data held by IANA Functions Operator will also need to transition, and some of that data will affect other communities; details of the data that is being transitioned will be determined when the full transition plan is produced. (page 96 of the CWG proposal)

The CWG proposal provides a "Proposed Term Sheet” that contains an intellectual property section with the following text.

Trademarks -
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.  ICANN shall prosecute all such applications and maintain all such registrations at its sole cost and expense for the duration of the ICANN-PTI Contract, including all renewal terms and extensions.

Patents, Inventions, Copyrights, Copyrightable Works and Trade Secrets
ICANN shall own all intellectual property conceived, reduced to practice, created or otherwise developed by PTI under the Contract.
PTI shall assign, and shall cause any employees or contractors to assign, all rights in any patentable subject matter, patent applications, copyrights, trade secrets and all other intellectual property created by the PTI during the course of PTI’s duties under the ICANN-PTI Contract to ICANN.
With respect to copyright, the ICANN-PTI Contract is a “work for hire” agreement and ICANN shall be deemed the author and shall own all copyrightable works created by PTI hereunder, and all copyright rights thereto.  In the event this is not deemed a work for hire agreement, PTI shall assign ownership of the copyrightable works and copyrights to ICANN.
ICANN shall license back any patents, patent applications, copyrights and trade secrets to PTI for the duration of the ICANN-PTI Contract solely to the extent necessary for PTI to perform its obligations under the ICANN-PTI Contract.  This license shall be non-exclusive and royalty-free.
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 [KP1]<applewebdata://C82434C4-EAC1-4058-AC41-6F8C420FE8CA#_msoanchor_1>Note to CWG: IP ownership to be discussed.  Consider what kind of IP will be developed and which entity is in the best position to be owner.

Observations - Similarities

In both proposals, there is the concept of licensing IPR to a particular operator, and in the Numbers proposal, there is also reference to licensing of rights over data to a particular operator.

Both proposals share the concept of an operator assigning intellectual property created by the operator in the performance of its obligations under contract to the other party to the contract (RIRs or their designee in the Numbers community proposal and ICANN in the CWG proposal).

Both proposals contemplate that the operator will not hold IPR – however the proposals differ in the identity of the assumed operator (ICANN as the initial operator in the Numbers Community proposal contracting with the RIRs collectively; and PTI as the initial operator in the CWG proposal contracting with ICANN)

Observations – Inconsistencies

The Numbers proposal calls for an entity independent of the operator to hold IPR and rights to data; however, there is conflict between the proposals since PTI would be a sole member (ICANN as its only member) affiliate of ICANN and therefore the two would be related entities.

A very notable difference is the presumption in the Names community proposal that ICANN shall continue as the owner of any IPR including as assignee of any IPR created by PTI and its employees and/or contractors in the course of performing the ICANN-PTI contract.

The CWG proposal states that IPR related to the IANA website and published documents will need to be assigned or licensed to the successor operator; however while a license would be consistent with the Numbers community proposal, any assignment to a successor operator would be inconsistent with the Numbers community proposal calling for the holder of any such rights to be an entity independent of the operator.

With the Numbers proposal stating the expectation that the IANA trademark and the IANA.ORG domain name are associated with the services rather than an operator; and contemplating ICANN as the initial IANA Numbering Services Operator, there is the expectation (embodied in the draft SLA’s section 12) that any IPR and rights over data currently held by ICANN would be transferred to the RIRs or their successors, assigns or designees (i.e. the IETF Trust).

As it stands, there appears to be no legally feasible way that the two proposals with regard to the identified holder of IPR can coexist.  The CWG proposal specifically calls for ICANN to remain the holder of any such rights and the Numbers community proposal specifically calls for ICANN (as the operator) to not be the holder of any such rights.

Potential Solution Regarding Inconsistency

It is clear that both proposals  feel that an operator should not hold any IPR other than licensed rights and that rather the more appropriate holder(s) of such rights should be the entity(ies) with whom an operator is contracting, or in the Numbers proposal alternatively those entities' successors, assigns or designees.  Due to the inherent discrepancy in the two proposals regarding the identity of the respective parties contracting with an operator, and additionally the fact that in the CWG proposal, ICANN and PTI are related entities, the proposal that the IETF Trust hold any such IPR and any rights over data appears to be a reasonable solution.  The IETF Trust has been identified by the Numbers community proposal as an acceptable candidate to hold any such rights, the IETF Trust has expressed a willingness to serve in this role, and this identification would require a minor change to the CWG proposal if the CWG were to conclude that the IETF Trust was an acceptable holder of these rights.

Note that while the IETF Trust has been identified in the Numbers community proposal as an acceptable candidate to hold such rights, if the CWG were willing to have an entity independent of the operator other than the IETF Trust hold such rights, that alternative solution may be consistent with the Numbers community proposal.

One other possible resolution is for the Numbers community to agree to the proposal by the CWG on the holder of the IPR; however, that would be a significant and material departure from what is currently contained in the Numbers community proposal which has already been submitted to the ICG while the CWG’s proposal still remains in draft status and has not been finalized.

I hope the observations above help with the group’s discussion of this issue.  If you have any questions, please let me know.

Thanks,
-Michael

--
Michael R. Abejuela
Associate General Counsel
ARIN
3635 Concorde Parkway
Suite 200
Chantilly, VA 20151
(703) 227-9875 (p)
(703) 263-0111 (f)
mabejuela at arin.net<mailto:mabejuela at arin.net>

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