[CRISP-TEAM] Fwd: Fw: [CWG-Stewardship] Fwd: [Internal-cg] Numbers community response to question from the ICG
Izumi Okutani
izumi at nic.ad.jp
Mon Mar 2 02:01:26 CET 2015
Thanks for your comments Bill and Mwendwa.
We have a number of topics for discussion on the table including Avri's
idea questions from the ICG so may I suggest to have a teleconerence
sometime next week to discuss.
I would also like to udpate you on the IANA session at APNIC39 and confirm
with RIR staff on how things would be moving forward.
German,
Would you mind to set up a doodle poll for a meeting next week?
I suggest the same time as usual, UTC13:00.
Thanks,
Izumi
On 2015/03/02 4:28, Mwendwa Kivuva wrote:
> That is a good articulated piece by Gregory S. Shatan. Such perspectives by
> IP lawyers will help us navigate this stage. Can we task RIR lawyers to
> give us an interpretation of the consequences of transferring the IPs to
> IETF trust, and what will be the process followed and the responsibilities
> of each party?
>
> Bill, who will foot the payments if IETF is to be transferred ownership?
> On Feb 28, 2015 7:03 AM, "Bill Woodcock" <woody at pch.net> wrote:
>
>> 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 � 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 -----
>>> _______________________________________________
>>> Internal-cg mailing list
>>> Internal-cg at icann.org
>>> https://mm.icann.org/mailman/listinfo/internal-cg
>>>
>>>
>>>
>>> _______________________________________________
>>> CWG-Stewardship mailing list
>>> CWG-Stewardship at icann.org
>>> https://mm.icann.org/mailman/listinfo/cwg-stewardship
>>>
>>>
>>>
>>>
>>>
>>>
>>> --
>>>
>>> Gregory S. Shatan � 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
>>>
>>>
>>>
>>>
>>> _______________________________________________
>>> CRISP mailing list
>>> CRISP at nro.net
>>> https://www.nro.net/mailman/listinfo/crisp
>> _______________________________________________
>> CRISP mailing list
>> CRISP at nro.net
>> https://www.nro.net/mailman/listinfo/crisp
>>
>
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