[Iana-ipr] IANA IPR follow-up call | 20:00 UTC | Wednesday, 3 August 2016 | Meeting Notes

Nathalie Vergnolle nathalie.vergnolle at icann.org
Thu Aug 4 01:12:16 CEST 2016

Dear all,

Please see below the meeting notes and chat history from today's IANA IPR follow-up call. The presentation materials, audio and AC room recordings are now posted at https://www.icann.org/stewardship-implementation under "Meetings & Work Sessions" section.

*** Meeting Notes ***
IANA IPR Follow-up Call
03 August 16 @ 20:00 UTC

List of participants
  Alan Barrett
  Alissa Cooper
  Andrew Sullivan
  Athina Fragkouli
  Brenda Brewer
  Craig Ng (APNIC)
  Eduardo Jimenez (LACNIC´s Counsel)
  Greg Shatan
  Jari Arkko
  Jonathan Robinson
  Jorge Contreras
  Josh Hofheimer (Sidley)
  Lise Fuhr
  Michael Abejuela (ARIN)
  Nathalie Vergnolle
  Ray Pelletier
  Russ Housley
  Samantha Eisner
  Scott Bradner
  Ted Hardie
  Trang Nguyen

1. Proposed resolution of selected legal issues (ref [1])
2. Other items arising from OC reviews of community agreement and license agreement (ref [2], [3], ongoing discussions)
3. ICANN proposed edits to license agreement and assignment agreement (ref Aug 2 email from Samantha Eisner)
4. Next steps and future call scheduling

[1] https://www.nro.net/pipermail/iana-ipr/2016-August/000257.html
[2] https://www.nro.net/pipermail/iana-ipr/2016-July/000241.html
[3] https://www.nro.net/pipermail/iana-ipr/2016-August/000252.html


1.  Resolution of legal issues
*       ACTION: Consensus for counsel to draft the damage award allocation as suggested by counsel, for inclusion in the next draft for review
*       RIRs are comfortable with the points presented.
*       Trust and the OC's are comfortable with what was presented here.
*       ACTION: Counsel to look at 5 - Consultation with the CCG. In case the trust doesn't follow the CCG advice, the counsel will look into how to include informal conversations.

2. Other items arising from OC reviews of community agreement and license agreement

3. ICANN proposed edits to license agreement and assignment agreement

4. Next steps and future call scheduling
*       The 6 points will be shared with the CWG.
*       IEFT Trust and Sidley to work together to come up with a revised draft for the community agreement by Monday
*       IETF Trust and ICANN Legal to work together to come up with a revised draft of the license agreement
*       Send out doodle poll for Friday, Monday and Wednesday, and schedule three calls (one each day).

  Nathalie Vergnolle:  Hi everyone
  Andrew Sullivan:  hi there
  Ray Pelletier:  hello
  Alan Barrett:  Hi
  Josh Hofheimer (Sidley):  Good afternoon
  Jari Arkko:  hello again
  Jonathan Robinson:  Hello All
  Athina Fragkouli:  hello all
  Greg Shatan:  Hello all!
  Eduardo Jimenez (LACNIC´s Counsel):  good afterrnoon
  Lise Fuhr:  Hi All
  Athina Fragkouli:  we can hear you
  Lise Fuhr:  I need to leave at 21:  00 UTC
  Josh Hofheimer (Sidley):  Happy for Jorge to leqad
  Josh Hofheimer (Sidley):  lead
  Andrew Sullivan:  I'm not wedded to resistance.  I'm just concerned about the license discussion being an opportunity for subtle incompatibilities.  We saw that in some other agreements already that had to be assembled under this compressed time
  Alissa Cooper:  FWIW, having raised a concern on the list about the burden of policing on the Trust, I think with the approach to maintenance outlined in #3 my concerns about the combined effect of that with policing would be mitigated.
  Josh Hofheimer (Sidley):  How about if we write up a proposal that has the damage award split between licensee and licensor, after expenses, regardless of who controls the enforcement action?
  Greg Shatan:  I think that under US law, an exclusive trademark licensee has much less ability to sue on its own, as compared to an exclusive patent licensee.  It's really quite rare.  Not sure about other jurisdictions.
  Josh Hofheimer (Sidley):  Just throwing this out as a straw man
  Jari Arkko:  FWIW, I think the cleanest design would be to put all costs and possible damage awards in one place, i.e., the IETF Trust. The only exception to this would be the possibility that we'd ask for cost coverage if (too many) additional registrations were requested.
  Alan Barrett:  Sharing the proceeds seems OK to me, but I don't have a strong opinion on this.
  Jari Arkko:  and i'm not opposed to sharing either, just suggesting what might be a simple way. i don't expect any damage awards btw :  -)
  Andrew Sullivan:  yeah, the mental effort of coming up with something perfect is a waste
  Greg Shatan:  It may be the simplest way, but it may not be the fairest way.  Agree that this is highly unlikely to occur.
  Andrew Sullivan:  since the chances are so tiny
  Jari Arkko:  i'm fine with alissa's suggestion of you guys coming up with a proposal. i'm very likely to be happy with anything that you might suggest on this front
  Andrew Sullivan:  me too
  Josh Hofheimer (Sidley):  Alissa, perhaps as chair, you could see if there is a consensus for counsel to draft the damage award allocation as suggested by counsel, for inclusion in the next draft for review?
  Alissa Cooper:  @Josh yes, at the conclusion here let's discuss the process for generating the next draft(s), including the damage award bit
  Lise Fuhr:  In case of not following advice - try mediation first?
  Lise Fuhr:  Can't mediation be informal in US?
  Greg Shatan:  All mediation to take place at a resort to be chosen by the lawyers?
  Jorge Contreras:  @Greg - offfer accepted - let's sign!
  Greg Shatan:  :-)
  Ray Pelletier:  great job Jorge and Josh
  Jonathan Robinson:  Happy to go on record and acknowledge that this moved us a long way forward on key issues within the constraints we have. Thank-you.
  Lise Fuhr:  @Alissa can we capture in the notes that we need to look at 5 - informal conversations in case of not following the advice?
  Alissa Cooper:  yes, that should be in the notes. note-takers, could we get that added?
  Athina Fragkouli:  as Jorge just mentioned, we submitted some clarifications to the list before this call
  Andrew Sullivan:  linking to the SLAs seems like a good idea
  Greg Shatan:  I think the RIRs suggestion is consistent with the overall concept I've discussed.
  Jari Arkko:  +1 to what alissa is saying
  Greg Shatan:  This is why the Trust's QC role needs to be delegated to the communities.
  Ray Pelletier:  The QC role is in the OCs responsibility
  Ray Pelletier:  The OCs establish the SLAs
  Ray Pelletier:  the OCs evaluate that performance
  Russ Housley:  @Ray:   +1
  Ray Pelletier:  and it is assumed the OC will make the decision to keep the license there or request it be removed
  Ray Pelletier:  So, what happens if the OC abnadons its tole to oversee the performance of the Provider and the provider perfomance stinks, but the OC does notthing to fix it.
  Athina Fragkouli:  thank you Jorge for this explanation
  Ray Pelletier:  and it wouldnt take action without an independent finding that the provider was in violation of the service obligation
  Ray Pelletier:  thats among the 6 items a,ready discussed
  Ray Pelletier:  shall monitor
  Russ Housley:  I really like to separation that Alissa is offering
  Ray Pelletier:  Yes, it sounds good, but there is a tipping pojnt where ppor performance imacts the Mark; then into Trust area.  This is co vered by the OCs decising where the mark goes and at the oint where the Trust may blieve the mark is being impacted but needs an independent finidng before acting - this would only happen if the OC abandoned its responsibility
  Lise Fuhr:  I need to leave now - thank you all.
  Greg Shatan:  Apologies for opening this rabbit hole....
  Russ Housley:  I think that the separation is really desirable, and the failure of on OC to do their qruality control of an IANA Service to the point that it is harming the mark means that the other OCs need to bring that issue forward
  Andrew Sullivan:  It would be very helpful when we're done this to talk briefly about the assignment
  Andrew Sullivan:  to try to understand why ICANN gets a right to approve future assignment.  I found that surprising.
  Andrew Sullivan:  I have an answer to this, which is why my hand is up
  Russ Housley:  The most straightforward way to handle this is to create a subdomain for each of the OCs.
  Russ Housley:  If you look at http://www.iana.org today, there are essentially three links to go to the pages for each OC
  Ted Hardie:  So, I think my answer is slightly differnt
  Andrew Sullivan:  the links today are to different subdirectories, however
  Andrew Sullivan:  You could maybe work out some way to do that with redirects, but the registration is a problem
  Andrew Sullivan:  and the Trust was indeed to be the Admin contact
  Andrew Sullivan:  and ICANN or maybe PTI the tech contact
  Russ Housley:  For example, http://www.iana.org/domains would become a redirect to http://domains.iana.org/ in the future
  Greg Shatan:  The home page probably wouldn't change at all if there were 3 operators.
  Alissa Cooper:  ... and the ietf SLA, at least, already has the cooperation provision in it, I think
  Greg Shatan:  Agree that changing subdirectories to subdomains makes sense.  Might make sense to do that in some future upgrade of the site.
  Russ Housley:  @Greg:   Correct, and it is so simple and stable that any need for update can be handled with a very straightforward process
  Greg Shatan:  FWIW, the IANA marks predate ICANN.
  Russ Housley:  @Greg:   Yes, they were transfered to ICANN by CNRI
  Ted Hardie:  Can you go back to the mediation required section?
  Josh Hofheimer (Sidley):  Could ICANN staff enable independent scrolling by the participants, and zoom, on our own screens?
  Nathalie Vergnolle:  You now have scrolling rights
  Josh Hofheimer (Sidley):  thx
  Josh Hofheimer (Sidley):  @Ted, I think the comments proposed by Sam apply only to an allegation of breach.  For consultations in the ordinary course between the IETF and the OCs, it did not seem like anyone was opposing a more informal process for review and consultation.  That I believe Jorge is going to draft in the next turn.
  Andrew Sullivan:  rather, necessarily not ICANN, I believe
  Andrew Sullivan:  given the ICG requirement
  Andrew Sullivan:  (That's what my hand was up for.)
  Jari Arkko:  Absolutely agree with what Andrew and Jorge are saying. The basis of the transition is not holding the IPRs at ICANN.
  Andrew Sullivan:  Not to put too fine a point on it, the ICG plan has been out for a long time
  Russ Housley:  Hardwiring the transfer back to ICANN is counter to the proposal that was delivered to NTIA.  I would strongly object if this were to go to public comment.
  Jari Arkko:  ICANN should not be driving the community discussion. To a large extent that discusson has happened, and is part of the ICG proposal. Lets stick to that, please.
  Alan Barrett:  Automatic transfer of IPR to ICANN if something goes wrong would be problematic for me, and probably in conflict with the ICG propoosl
  Athina Fragkouli:  agree with Andrew, Jari and Alan's points
  Russ Housley:  @Alan:   We had the same thought at the same time
  Alissa Cooper:  agree with above commenters
  Ted Hardie:  We lost the ability to scroll
  Nathalie Vergnolle:  You now have scrolling rights again
  Ted Hardie:  Thanks
  Jonathan Robinson:  @All. In case we get short of time. I need to note that my personal view of the proposed resolution of the legal issues is positive in line with others. However, please do reccall and note that this does need to be presented back to the CWG at our forthcoming meeting tomorrow. I am hopeful that we will get agreement and support for the key points but cannot, of course, guarantee it.
  Greg Shatan:  I think that is what in fact we are contemplating -- that all 3 agreements will be executed and be effective simultaneously (or as close to simultaneous as logic allows).
  Russ Housley:  @Ted:   +1
  Andrew Sullivan:  I am fine with presenting the "6 points" thing to the CWG.  Anyone object to that?
  Jari Arkko:  +1 Greg -- that's right
  Alan Barrett:  presenting those 6 points to the CWG is fine
  Jonathan Robinson:  @Andrew. That seems to be the way to go. It is transparent to anyone sufficiently interested in any event.
  Athina Fragkouli:  I concur with Andrew. once the IPR is transferred, ICANN should not have any control over it
  Jari Arkko:  Agree that 7.7 is not consistent with the ICG proposal.
  Russ Housley:  @Jonathan:   Please share it.
  Alan Barrett:  3.1 also seems problematic.  it says that the assignment can be revoked
  Russ Housley:  The OCs should be the ones to decide that, not ICANN
  Alissa Cooper:  agree with russ
  Ray Pelletier:  This section of the 6 points covers this:    Termination of License.*  The Trust will not terminate a License without (a) the support of the applicable Operational Communities/CCG, or (b) an independent finding of fact (e.g. Arbitration) that a material breach has occurred and has not been cured.
  Jorge Contreras:  a restriction on transfer of IP absolutely does not belong in one of the 3 license agreements
  Greg Shatan:  Agree with Russ as well.
  Ray Pelletier:  +1 Andrew
  Ted Hardie:  I may have to move
  Jari Arkko:  In the interest of time, I'll say me piece here:   The ICG proposal specifies what the roles of various parties have. ICANN has an important role, but the OC are really in charge. That's a feature, and fundamental to the ICG proposal.
 Russ Housley:  I will need to drop off the call in a few minutes
  Greg Shatan:  A feature, not a bug, Jari?
  Ray Pelletier:  ET
  Alan Barrett:  it would probably be reasonable to commit to provide a license in the other direction concurrent with the assignment
  Ray Pelletier:  The Trust is 11 years old and isnt going anywhere
  Michael Abejuela (ARIN):  we must remain faithful to the proposal, plain and simple. Proposed deviation is not appropriate particularly at the 11th hour
  Greg Shatan:  A condition of assignment should be that the license(s) go along with it.
  Greg Shatan:  That is typical of IPR assignments.  Encumbrances travel with the asset.
  Josh Hofheimer (Sidley):  @Greg, agreed, and that would happen as a matter of law regardless.
  Greg Shatan:  Might also want a commitment that a new owner is commiteed to the SSR of the Internet.
  Josh Hofheimer (Sidley):  If acceptable to Jonathan and Greg, then I am ok with that too.
  Jonathan Robinson:  Acceptable to me. Thanks Josh.
  Jonathan Robinson:  Very early next week may make more sense. Friday night not great here in any case
  Andrew Sullivan:  Monday means that we have only 3 days to sort everything out
  Andrew Sullivan:  I'd suggest we schedule anyway.  Worst case, we find we haven't anything and we have to cancel
  Jari Arkko:  Lets have enough meetings. Fri or Mon may not have quite everything done yet, but will have something.
  Ray Pelletier:  Friday for IPR Assignment and license with ICANN, Mnday for CA & License with OCs
  Greg Shatan:  We can use a call  on Friday to see if the drafters have identified issues that can be worked through by this group.  The draft will be better for it..
  Andrew Sullivan:  +1 to Athina's request
  Greg Shatan:  Mute please.
  Greg Shatan:  Not you Alissa!
  Brenda Brewer:  We will make sure Athina is added
  Ray Pelletier:  Then Wed to wrap!
  Jonathan Robinson:  Thank-you Alissa. Thank-you All.
  Athina Fragkouli:  @ Brenda my request is for the dial in info to be sent to the whole list
  Nathalie Vergnolle:  Thank you.
  Andrew Sullivan:  thanks all
  Josh Hofheimer (Sidley):  thanks all
  Athina Fragkouli:  thank you all
  Jari Arkko:  thanks alissa, thanks all
  Greg Shatan:  Thanks all and Bye!
  Michael Abejuela (ARIN):  thanks everyone

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