If we assume for a moment that the IETF Trust were to own the IANA trademarks, significant issues arise.
In a 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. It would be inappropriate for the IETF Trust to have this power, without accountability to and oversight by the names and numbers communities. A mechanism would need to built for that.
Quality control presents another challenge. 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. .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, and since the IETF is not in a position to exercise quality control in the names and numbers
space. This may require amendment of the IETF Trust Agreement, as well as the drafting of a somewhat unusual trademark license.
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 any of these roles.
Also, 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.
Finally, the IETF Trust, as such, may not be capable of owning the IANA Trademark, since the IETF Trust does not appear to be a “legal entity.” If this is correct, the Trustees (in their role as Trustees) are the collective owners of 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”) in the USPTO database. (Oddly, 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, and which also lacks appropriate quality control provisions.)
Greg Shatan
Missed the attachment… which now is attached!
manning
bmanning@karoshi.com
PO Box 12317
Marina del Rey, CA 90295
310.322.8102
On 10June2015Wednesday, at 0:12, manning <bmanning@karoshi.com> wrote:
>
> On 19 May 2015, the number community provided specific feedback regarding the need for alignment on the IETF trademark and domain (see attached email from Izumi to the CWG call for comments).
>
> Did you notice that the most recent draft (v5) for discussion that came out yesterday morning specifically moves farther away from this direction, leaving these marks in ICANN rather than moving them to the IETF Trust?
>
> CWG email re new draft - -<http://mm.icann.org/pipermail/cwg-stewardship/2015-June/003650.html>
> Draft Document - <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscussion-0001.docx>
>
> Proposed text in most recent document -
>
>> " 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. “
>
> this moves the draft farther away from the received comments, and would this make the ICG’s job of aligning the various proposals from the affected parties into a cohesive plan even more difficult?
>
> It might be premature to go to BA with this as an accepted direction, without concurrence from the affected parties.
>
>
> manning
> bmanning@karoshi.com
> PO Box 12317
> Marina del Rey, CA 90295
> 310.322.8102
>
>
>
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