Chuck, Can you provide me with any evidence of ICANN's process and history of exercising oversight and quality control for the IANA IPR? Betcha can't. --MM -----Original Message----- From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of Gomes, Chuck Sent: Wednesday, August 5, 2015 5:43 PM To: Andrew Sullivan; cwg-stewardship@icann.org Subject: Re: [CWG-Stewardship] [client com] IPR Memo Thanks Andrew. This is helpful. None of the slides talk about the IETF's process and history of exercising oversight and quality control for IPR. Is information available in that regard? Chuck -----Original Message----- From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of Andrew Sullivan Sent: Wednesday, August 05, 2015 5:15 PM To: cwg-stewardship@icann.org Subject: Re: [CWG-Stewardship] [client com] IPR Memo On Wed, Aug 05, 2015 at 05:06:05PM -0400, Alan Greenberg wrote:

However, I would find it useful to have a clear and unambiguous statement from the Trustees on behalf of the IETF Trust saying that the Trust has the will and resources to adequately police and enforce the IANA trademark.

Hi, Does https://www.ietf.org/proceedings/93/slides/slides-93-iesg-opsplenary-2.pdf (see slide 8) address your concern? This was presented at the administrative plenary session in Prague recently, and is duly recorded in the minutes posted at http://trustee.ietf.org/documents/Trust-Minutes-2015-06-25-01.pdf. Note that, while I'm one of the trustees (by virtue of being IAB chair), I'm speaking only for myself here. A -- Andrew Sullivan ajs@anvilwalrusden.com _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

On Wed, Aug 05, 2015 at 09:42:46PM +0000, Gomes, Chuck wrote:

Thanks Andrew. This is helpful.

None of the slides talk about the IETF's process and history of exercising oversight and quality control for IPR. Is information available in that regard?

Yes. There's a FAQ about this: http://trustee.ietf.org/ietf-logo-acronym.html There are usage guidelines for licensees at http://trustee.ietf.org/trademark-usage-guidelines.html The Trust has in fact had to act to defend the IETF's trademark. There was a user group called IUCG and chaired by the inimitable J.F.C. Morfin. They made a derivative logo and it had to be taken down. This is reflected in the report from the Trust chair to the IETF at IETF 78 (see https://www.ietf.org/proceedings/78/slides/plenaryw-4/plenaryw-4.htm, slide 4. Dig that crazy old-school interface, too). There was further discussion at IETF 79 (see https://www.ietf.org/proceedings/79/slides/plenaryw-9/plenaryw-9.htm, slide 3). Mostly, things just tick along, although the Trust certainly acts to enforce any misuse of the marks. The marks are quite important to the IETF, for the obvious reason that we don't want people misrepresenting the IETF. Best regards, A -- Andrew Sullivan ajs@anvilwalrusden.com

Thanks. I had not seen that. If I were ICANN and about to hand over the TM, I would want to see something stronger than just "hold", but perhaps to lawyers that is sufficient to imply will police and defend. But I am not speaking on behalf of ICANN. Alan At 05/08/2015 05:15 PM, Andrew Sullivan wrote:

On Wed, Aug 05, 2015 at 05:06:05PM -0400, Alan Greenberg wrote:

...

However, I would find it useful to have a clear and unambiguous statement from the Trustees on behalf of the IETF Trust saying that the Trust has the will and resources to adequately police and enforce the IANA trademark.

Hi,

Does https://www.ietf.org/proceedings/93/slides/slides-93-iesg-opsplenary-2.pdf (see slide 8) address your concern? This was presented at the administrative plenary session in Prague recently, and is duly recorded in the minutes posted at http://trustee.ietf.org/documents/Trust-Minutes-2015-06-25-01.pdf.

Note that, while I'm one of the trustees (by virtue of being IAB chair), I'm speaking only for myself here.

A

-- Andrew Sullivan ajs@anvilwalrusden.com _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

Milton,

But I have not seen an argument from you, or from anyone on this list, as to why ICANN is a more appropriate steward compared to the IETF, which invented the term and the functions of IANA and has referred to it thousands of times in its RFCs going back decades.

ICANN is the IANA Functions Operator and provides IANA-related services to all three operational communities, not just the IETF.

I don't think there is any evidence that the integrity of the IANA trademarks are important to ICANN or essential to its core mission of policy development for names.

According to ICANN's bylaws, ICANN's mission is: "Section 1. MISSION The mission of The Internet Corporation for Assigned Names and Numbers ("ICANN") is to coordinate, at the overall level, the global Internet's systems of unique identifiers, and in particular to ensure the stable and secure operation of the Internet's unique identifier systems. In particular, ICANN: 1. Coordinates the allocation and assignment of the three sets of unique identifiers for the Internet, which are a. Domain names (forming a system referred to as "DNS"); b. Internet protocol ("IP") addresses and autonomous system ("AS") numbers; and c. Protocol port and parameter numbers. 2. Coordinates the operation and evolution of the DNS root name server system. 3. Coordinates policy development reasonably and appropriately related to these technical functions." The IANA Functions are the means by which #1 is done. In as much as the integrity of the IANA trademarks are necessary to ensure the IANA functions are able to be performed, it would be essential that the IANA Functions Operator is able to use the trademarks.

I think there is a very obvious argument as to why the concept and identity of IANA are essential to the mission and activities of the IETF.

Quoting from the IANAPLAN proposal from the IETF: "Over the course of the development of the document, several suggestions were raised that did not enjoy sufficient support to be included. Two general areas of suggestion that generated much discussion were o A suggestion for a stronger statement over what terms the IAOC should negotiate. o A suggestion that "iana.org" and other associated marks be transferred to the IETF trust. At the end of the working group process, although there was not unanimous support for the results, the working group chairs concluded that rough consensus existed in the working group." I'm yet again confused. If the IETF itself decided there was not sufficient support for the transfer of the IPR to the IETF trust, why do you believe it appropriate to argue this within the CWG? Regards, -drc (ICANN CTO, but speaking only for myself)

I don’t understand this reasoning, we are happy with ICANN being the steward of the IANA functions, and retaining the ability to contract with different IFO’s if needed due to the failure of the IFO, but we are not happy with them being the steward of the IANA trademarks? Under the CWG proposal the PTI will be the IFO and ICANN will be the IANA steward. -James On 6 Aug 2015, at 15:35, Mueller, Milton L <milton.mueller@PUBPOLICY.GATECH.EDU<mailto:milton.mueller@PUBPOLICY.GATECH.EDU>> wrote: ICANN was the IANA Functions Operator by virtue of a contract with the NTIA. A key aspect of the transition is that the community wanted to retain the ability to change IFOs. (I hope you are not, as an ICANN exec, trying to deny or reverse this basic principle of separability which has been accepted by all 3 communities.) As a logical consequence of separability, ICANN's status as IFO is contingent upon acceptable performance. Thus, it cannot own the IANA-related IPR; it must receive them and use them only as long as it it the designated IFO.

I don’t understand this reasoning, we are happy with ICANN being the steward of the IANA functions Under the CWG proposal the PTI will be the IFO and ICANN will be the IANA steward. MM: No. You have confused the names community with the entire IANA functions issue. ICANN (as a community, not as a corporation), is considered the steward of the NAMES-related IANA functions. Which means only that we use ICANN-based representative organs and processes to determine who operates names IANA. But the IETF is the “steward” that determines who provides the protocols-related IANA functions and the RIRs are the steward of the numbers-related functions. It follows from this that the trademark and domain for IANA apply to ALL these functions, and as I have said repeatedly if ICANN’s status as IFO for ANY of these communities is contingent upon decisions of those communities, you cannot give it ownership of the trademarks and domain. You let it USE the domains and marks. Ownership must reside elsewhere. -James On 6 Aug 2015, at 15:35, Mueller, Milton L <milton.mueller@PUBPOLICY.GATECH.EDU<mailto:milton.mueller@PUBPOLICY.GATECH.EDU>> wrote: ICANN was the IANA Functions Operator by virtue of a contract with the NTIA. A key aspect of the transition is that the community wanted to retain the ability to change IFOs. (I hope you are not, as an ICANN exec, trying to deny or reverse this basic principle of separability which has been accepted by all 3 communities.) As a logical consequence of separability, ICANN's status as IFO is contingent upon acceptable performance. Thus, it cannot own the IANA-related IPR; it must receive them and use them only as long as it it the designated IFO.

​There are some important distinctions that are being blurred here. First, in trademark licensing, there is a distinct difference​ between (a) control of a licensee's trademark usage and (b) control of the quality of the licensee's goods and services bearing the trademark. These are both important aspects of a trademark license, but they are not the same thing. "Trademark Usage" refers to the display of the trademark itself (size, colors, placement, accurate reproduction, etc.) "Quality Control" refers to the quality of the goods and services themselves. Control of Trademark Usage is typically achieved by establishing "Trademark Usage Guidelines" which are distributed to licensees and may be periodically updated. Licensees are typically contractually obligated to follow such Guidelines and to seek prior approval for any substantial deviations from those Guidelines. Some licensors may obligate licensees to seek approvals for all new uses of the trademarks, to confirm that the usage meets the guidelines, but this is not legally required. Quality Control of the licensee's goods and services is far more important. Quality Control is typically achieved by setting out written standards that the goods and services must meet (which may vary from fairly high-level statements to very detailed quality control levels, specifying the way in which the licensee must provide the service and benchmarks that need to be met by licensee), coupled with some sort of active quality control exercised by the licensor on a regular basis (e.g., prior approvals by licensor of any new goods/services proposed to be offered by licensee, inspections of samples, factory/site visits). Active and ongoing quality control is critical; merely setting up quality control standards is insufficient. A licensor's failure to exercise adequate quality control can result in a finding of abandonment of the mark and loss of trademark rights; a failure to monitor trademark usage does not have these consequences. [One could imagine an "edge case" where the trademark use by licensees had so run amok that it no longer appeared to be a common enterprise and lost all "trademark value", but I'm not aware of any case where that became a serious issue.] Second, these are obligations specific to the licensor/licensee relationship -- these do not translate to legal obligations by a trademark owner with regard to their own provision of goods and services under the mark. They may be best practices and good business, but they are not legal obligations. A trademark owner is assumed to exercise quality control over its own goods and services as part of its internal business methods and processes; there is no requirement these be documented. Furthermore, a trademark owner can turn out shoddy and inconsistent goods and services under their own mark without any risk of losing the trademark. In contrast, if they allow a licensee to do so, they do bear that risk (and the licensee bears a risk of being terminated). A trademark owner can use the trademark in inconsistent ways, with no consequences. If a licensee does so, they may get terminated (but again there are no significant legal consequences to the licensor. This is by way of background to the following points (in no particular order): 1. ICANN has no specific trademark legal requirements for how they exercise quality control over the IANA team and the services they provide. From the trademark perspective, however they do it is fine. Indeed, ICANN is not required as a trademark owner to specifically exercise quality control over its own operations; if ICANN let the IANA team go rogue, that would not raise any trademark legal issues. (This could violate ICANN's bylaws and articles of incorporation, and call into question their future as an appropriate IANA operator, but that's a different set of issues.) 2. ICANN faces no specific trademark legal requirements for how they ensure use by ICANN of the IANA trademarks. (Of course, there could be issues raised by how ICANN deals with unauthorized third parties using the marks to indicate that they are offering "IANA-brand" goods or services (i.e., "policing and enforcement"); but that's a separate point that should not be blurred with this one.) 3. The IETF Trust "Trademark Usage Guidelines" supplied by Andrew Sullivan and found at http://trustee.ietf.org/trademark-usage-guidelines.html are just that -- Trademark Usage Guidelines. They do not provide for any quality control by IETF Trust of the goods and services offered by their licensees. There is a statement that the trademarks can only be used to "identify products or services that implement or are compatible with IETF standards or specifications," but there is no indication of any minimum quality standards for these products or services or any indication that quality control will be actively exercised (e.g., approvals, samples, site inspections). The license referenced in these guidelines asks for samples of use of the marks, but does not ask for samples of the goods and services, or indicate any way that would be accomplished. That does not mean that IETF Trust could not develop quality control standards and a quality control program, either for their current marks or for marks assigned to them; it just means they don't seem to have it now, and we haven't seen anything to indicate otherwise. Greg On Wed, Aug 5, 2015 at 6:41 PM, Andrew Sullivan <ajs@anvilwalrusden.com> wrote:

On Wed, Aug 05, 2015 at 05:44:57PM -0400, Alan Greenberg wrote:

...

If I were ICANN and about to hand over the TM, I would want to see something stronger than just "hold", but perhaps to lawyers that is sufficient to imply will police and defend.

I think in fact any real language is being worked on by the Trust's lawyer and others. I know we have put the client committee and Sidley in touch with Jorge Contreras, the IETF's counsel. The Trust's resolution is just a good-faith statement on the part of the trustees that they're prepared to do this, not an agreement.

Obviously, if something happens, actual legal agreements need to be drafted. This is at least as important to the IETF as to anyone else, given that the Trust is possibly involved, so it will certainly be undertaken carefully.

Best regards,

A (for myself and nobody else)

-- Andrew Sullivan ajs@anvilwalrusden.com _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

Andrew, I didn't think you were _trying_ to blur anything. It happens. When the question was asked "> None of the slides talk about the IETF's process and history of exercising oversight and quality control for IPR. Is information available in that regard?" you responded with the Trademark Usage Guidelines. My intent was only to point out that these Guidelines do provide guidance for use of the IETF trademark, but don't deal with the issue of quality control. Your answer may continue the blurring, albeit inadvertently, in talking about the "uses" that the trustees see. It appears that you are referring to uses of the mark, when the things that I was not seeing (and should be seeing) relate to quality control of the services being provided under the license, which has nothing to do with how the mark is being used. I appreciate the reference to AMS. I took a look at the IETF license, and it also seems to have the same problem of blurring the distinction between controlling uses of the mark and controlling quality of services provided by the ilcensee. (So, perhaps you've inherited this blurring problem from the way it is being handled in the IETF Trust.) The "quality control" provision of this license reads: Licensee recognizes the importance of Licensor’s exercise of control over the quality of use of the Marks. Accordingly, Licensee agrees that all uses of the Marks shall be in accordance with the quality standards determined by Licensor from time to time which have been provided to Licensee in advance of the implementation of such standards, and Licensor shall have the right to suspend or terminate the licenses granted hereunder with respect to the Marks at any time that Licensee fails to comply with such quality standards; provided that Licensee has failed to cure such breach within thirty (30) days following Licensor’s notification thereof. Licensor shall notify Licensee of any such deficiency and describe any requested quality improvements While this purports to be a "quality control" provision, it is in fact a trademark use provision. There is no other quality control provision in the agreement. While it is permissible to rely on "seeing the uses" rather than contractual documentation when it comes to trademark use control, it unfortunately is not permissible to do so when it comes to quality control; this results in something called a "naked license," which sounds like it might be a Good Thing, but is in fact a Very Bad Thing. I agree that these are questions for the Trust or its counsel. However, I think this list is the right place to develop these questions before they are asked of the Trust or its counsel, since this list (along with calls, meetings and documents) is where the CWG does its work. I think this also points out another issue, if in fact the IETF Trust (or any other trust) becomes the owner of the marks and the domain names: we (the Names Community) have no oversight or control of the IETF Trust and there is no accountability by the IETF Trust to the names community. The Trust is really a creation of the IETF, which creates "fitness for purpose" issues. Perhaps some of these issues could be resolved in part through adding Trustees from the names community and amending the Trust document in various ways. Greg On Wed, Aug 5, 2015 at 9:09 PM, Andrew Sullivan <ajs@anvilwalrusden.com> wrote:

Hi,

On Wed, Aug 05, 2015 at 08:31:03PM -0400, Greg Shatan wrote:

...

​There are some important distinctions that are being blurred here.

Well, I'm certainly not trying to blur anything, but lest anyone mistake me for a trademark lawyer, let me be clear that I'm not. The IETF Trust has a lawyer, and when acting as a trustt I do what he tells me to because as far as I can tell he's an expert in his field. But …

...

3. The IETF Trust "Trademark Usage Guidelines" supplied by Andrew Sullivan and found at http://trustee.ietf.org/trademark-usage-guidelines.html are just that -- Trademark Usage Guidelines.

Yes. I thought that was clear.

...

or specifications," but there is no indication of any minimum quality standards for these products or services or any indication that quality control will be actively exercised (e.g., approvals, samples, site inspections). The license referenced in these guidelines asks for samples of use of the marks, but does not ask for samples of the goods and services, or indicate any way that would be accomplished.

My understanding -- but it would probably be better to ask the Trust directly, since I'm just reflecting my own understanding -- is that you don't see that because the only people who are licensees at the moment work so closely with us that in fact we see all the uses. That is, the only actual licensee at the moment is AMS (as you can see on http://trustee.ietf.org/licenses.html). AMS handles the IETF secretariat functions and therefore every trustee sees all these uses all the time.

It is nevertheless true that there's no formal quality control program in place.

In any case, as I've tried to suggest, most of this is better asked of the IETF counsel or directed at the trust, instead of it being discussed on this list. It's not hard to contact the trust. You can send mail to trustees@ietf.org, just like it says on the website (http://trustee.ietf.org/index.html).

Best regards,

A

-- Andrew Sullivan ajs@anvilwalrusden.com _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship