Hi Greg, If you consider IETF as the actual source of names and numbers as defined by the RFCs you will understand why it may make sense. That said, i don't think its necessary to do the transfer in the first place as proposed by the numbers community (and i raised that view within that community as well). Just to clarify, the IETF did not specifically indicate in her proposal that the trademark be transferred to its trust, they however responded to ICG that they can accommodate that sequel to the numbers community proposal. Regards On Wed, Jun 10, 2015 at 8:06 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee *and* the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote:

...

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/...

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

_______________________________________________ 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

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

-- ------------------------------------------------------------------------ *Seun Ojedeji,Federal University Oye-Ekitiweb: http://www.fuoye.edu.ng <http://www.fuoye.edu.ng> Mobile: +2348035233535**alt email: <http://goog_1872880453>seun.ojedeji@fuoye.edu.ng <seun.ojedeji@fuoye.edu.ng>* The key to understanding is humility - my view !

Hi Greg, I am not a fan of transferring IANA trademark to IETF trust(neither am i a fan of moving it to PTI as well, infact i will be in violent disagreement with that) but if such move has to be done, i consider the IETF trust to be the most appropriate (and neutral) entity to house such trademark among the 3 operational communities. As to whether the names community has been asked, well we (the CWG) are yet to submit our proposal to ICG and i expect we will get such clarification request from ICG once we submit our proposal. That said, quite a number of this working group members (including myself) flagged this as something requiring the CWG attention early enough but we did not attend to it unfortunately. It may be good to conclude on it so we save the ICG need for a round trip of communication. Regards On Wed, Jun 10, 2015 at 8:37 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:

Seun,

IETF is not the source of the IANA service, and has never provided the IANA service. ICANN was set up to provide the service, among other things. Operationally, our proposal is that PTI provide that service, under rights granted to it by ICANN, with assets transferred to it by ICANN. Logically, the trademark can be one of those rights, or one of those assets. If the former, it would remain with ICANN. If the latter, it would be transferred to PTI.

As for your "if," that's a very big if. The RFCs define rules and parameters; I don't consider them (or the IETF) to be the actual source of either names or numbers.

I appreciate your clarification. You are correct. The proposal to move the trademarks to the IETF came from the numbers community. The protocol parameters community was asked if they had an objection and if the IETF trust could accommodate this proposal, and they responded that there was no objection. To my recollection (to the extent I can have a recollection out of 8000+ emails), nobody asked the names community.

Greg

On Wed, Jun 10, 2015 at 3:25 PM, Seun Ojedeji <seun.ojedeji@gmail.com> wrote:

...

Hi Greg,

If you consider IETF as the actual source of names and numbers as defined by the RFCs you will understand why it may make sense. That said, i don't think its necessary to do the transfer in the first place as proposed by the numbers community (and i raised that view within that community as well).

Just to clarify, the IETF did not specifically indicate in her proposal that the trademark be transferred to its trust, they however responded to ICG that they can accommodate that sequel to the numbers community proposal.

Regards

On Wed, Jun 10, 2015 at 8:06 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:

...

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee *and* the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote:

...

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/...

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

_______________________________________________ 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

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

-- ------------------------------------------------------------------------

*Seun Ojedeji,Federal University Oye-Ekitiweb: http://www.fuoye.edu.ng <http://www.fuoye.edu.ng> Mobile: +2348035233535**alt email: <http://goog_1872880453>seun.ojedeji@fuoye.edu.ng <seun.ojedeji@fuoye.edu.ng>*

The key to understanding is humility - my view !

-- ------------------------------------------------------------------------ *Seun Ojedeji,Federal University Oye-Ekitiweb: http://www.fuoye.edu.ng <http://www.fuoye.edu.ng> Mobile: +2348035233535**alt email: <http://goog_1872880453>seun.ojedeji@fuoye.edu.ng <seun.ojedeji@fuoye.edu.ng>* The key to understanding is humility - my view !

Seun, I am personally not committed to any one option but I am curious why you are violently against the mark going to PTI. Chuck From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of Seun Ojedeji Sent: Wednesday, June 10, 2015 3:52 PM To: Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5 Hi Greg, I am not a fan of transferring IANA trademark to IETF trust(neither am i a fan of moving it to PTI as well, infact i will be in violent disagreement with that) but if such move has to be done, i consider the IETF trust to be the most appropriate (and neutral) entity to house such trademark among the 3 operational communities. As to whether the names community has been asked, well we (the CWG) are yet to submit our proposal to ICG and i expect we will get such clarification request from ICG once we submit our proposal. That said, quite a number of this working group members (including myself) flagged this as something requiring the CWG attention early enough but we did not attend to it unfortunately. It may be good to conclude on it so we save the ICG need for a round trip of communication. Regards On Wed, Jun 10, 2015 at 8:37 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: Seun, IETF is not the source of the IANA service, and has never provided the IANA service. ICANN was set up to provide the service, among other things. Operationally, our proposal is that PTI provide that service, under rights granted to it by ICANN, with assets transferred to it by ICANN. Logically, the trademark can be one of those rights, or one of those assets. If the former, it would remain with ICANN. If the latter, it would be transferred to PTI. As for your "if," that's a very big if. The RFCs define rules and parameters; I don't consider them (or the IETF) to be the actual source of either names or numbers. I appreciate your clarification. You are correct. The proposal to move the trademarks to the IETF came from the numbers community. The protocol parameters community was asked if they had an objection and if the IETF trust could accommodate this proposal, and they responded that there was no objection. To my recollection (to the extent I can have a recollection out of 8000+ emails), nobody asked the names community. Greg On Wed, Jun 10, 2015 at 3:25 PM, Seun Ojedeji <seun.ojedeji@gmail.com<mailto:seun.ojedeji@gmail.com>> wrote: Hi Greg, If you consider IETF as the actual source of names and numbers as defined by the RFCs you will understand why it may make sense. That said, i don't think its necessary to do the transfer in the first place as proposed by the numbers community (and i raised that view within that community as well). Just to clarify, the IETF did not specifically indicate in her proposal that the trademark be transferred to its trust, they however responded to ICG that they can accommodate that sequel to the numbers community proposal. Regards On Wed, Jun 10, 2015 at 8:06 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks. A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things. Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill. I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services. An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity. 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 On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com<mailto:bmanning@karoshi.com>> wrote: Missed the attachment… which now is attached! manning bmanning@karoshi.com<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102> On 10June2015Wednesday, at 0:12, manning <bmanning@karoshi.com<mailto: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/...>

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<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102>

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship -- ------------------------------------------------------------------------ Seun Ojedeji, Federal University Oye-Ekiti web: http://www.fuoye.edu.ng Mobile: +2348035233535 alt email: <http://goog_1872880453> seun.ojedeji@fuoye.edu.ng<mailto:seun.ojedeji@fuoye.edu.ng> The key to understanding is humility - my view ! -- ------------------------------------------------------------------------ Seun Ojedeji, Federal University Oye-Ekiti web: http://www.fuoye.edu.ng Mobile: +2348035233535 alt email: <http://goog_1872880453> seun.ojedeji@fuoye.edu.ng<mailto:seun.ojedeji@fuoye.edu.ng> The key to understanding is humility - my view !

Hi Greg, I would like to respond to your suggestion: 'An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.’ If PTI is separated, ICANN will select a new IANA provider. Am I correct that if the IANA trademarks rest with PTI, we will than have to rename the services after the separation and they will not any longer be named the IANA services ? If that is correct, I rather keep the rights in ICANN. Best, Maarten From: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Wednesday 10 June 2015 21:06 To: manning <bmanning@karoshi.com<mailto:bmanning@karoshi.com>> Cc: "cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org>" <cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org>> Subject: Re: [CWG-Stewardship] drift in v5 ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks. A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things. Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill. I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services. An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity. 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 On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com<mailto:bmanning@karoshi.com>> wrote: Missed the attachment… which now is attached! manning bmanning@karoshi.com<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102> On 10June2015Wednesday, at 0:12, manning <bmanning@karoshi.com<mailto: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/...>

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<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102>

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Hi Greg, Perhaps its worth noting that the other 2 operational communities are still considering whether to contract directly with PTI as their proposals currently indicates contracting with ICANN. So if for instance there is a need for numbers community to move its functions, it would be appropriate that the entity its contracting with provides access to the IANA trademarks accordingly. As far as PTI is concerned at the moment, its separation mechanisms as proposed by CWG is largely based on the names community (with the other 2 communities having optional liaison roles). Based on that, i don't see the other 2 communities agreeing to transfer the IANA transdemarks (which is for all 3 operational communities) to PTI whose accountability mechanism is largely names based. Regards On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan <gregshatanipc@gmail.com> wrote:

Maarten,

That is not my understanding of separation. If ICANN selects a new provider, that provider would take all of the assets of PTI (including the trademarks, under this scenario), so it could provide the IANA services. PTI would then be wound down and ultimately dissolved by ICANN. Recall that PTI is a controlled entity of ICANN and would remain so throughout. In this case, the IANA operations are separated from PTI.

If PTI is actually separated (spun out) from ICANN so that it is no longer under ICANN control, it would be done to further separate the IANA Functions from ICANN and IANA would continue as a going concern (active business).

Under no circumstances does PTI become separated from ICANN without continuing to serve as the IANA operator, yet continue to hold IANA-related assets.

Greg

On Wed, Jun 10, 2015 at 3:44 PM, Maarten Simon <maarten.simon@sidn.nl> wrote:

...

Hi Greg,

I would like to respond to your suggestion:

'An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.’

If PTI is separated, ICANN will select a new IANA provider. Am I correct that if the IANA trademarks rest with PTI, we will than have to rename the services after the separation and they will not any longer be named the IANA services ?

If that is correct, I rather keep the rights in ICANN.

Best,

Maarten

From: Greg Shatan <gregshatanipc@gmail.com> Date: Wednesday 10 June 2015 21:06 To: manning <bmanning@karoshi.com> Cc: "cwg-stewardship@icann.org" <cwg-stewardship@icann.org> Subject: Re: [CWG-Stewardship] drift in v5

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee *and* the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote:

...

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/...

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

_______________________________________________ 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

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

-- ------------------------------------------------------------------------ *Seun Ojedeji,Federal University Oye-Ekitiweb: http://www.fuoye.edu.ng <http://www.fuoye.edu.ng> Mobile: +2348035233535**alt email: <http://goog_1872880453>seun.ojedeji@fuoye.edu.ng <seun.ojedeji@fuoye.edu.ng>* The key to understanding is humility - my view !

Maarten, The simple rationale for the numbers proposal, and the protocol community's acceptance of it, was that both of them insist on having the right to switch IANA functions operator at some time in the future. If the IANA trademarks and domains are "owned" by a single IFO we cannot have that separability. If we want the IFO to be able to change, then the trademarks and domains must not he owned by either ICANN (which is the "owner'/controller of PTI) or any subsequent IFO. It's that simple. --MM From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of Maarten Simon Sent: Wednesday, June 10, 2015 4:22 PM To: Seun Ojedeji; Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5 Next to Seun's argument, I think the trademarks should remain with ICANN as it is ICANN that will grant PTI the right to operate the IANA functions through the contract. It seems logical to me that ICANN only provides a license to PTI to use the trademarks through the same contract and not transfer the trademarks themselves. The further question is if in the case of a separation the assets will go from PTI to the new entity (probably in practise: yes) but in a legal sense I would assume that PTI returns the assets to ICANN and that ICANN provide these to the new operator. From: Seun Ojedeji <seun.ojedeji@gmail.com<mailto:seun.ojedeji@gmail.com>> Date: Wednesday 10 June 2015 22:05 To: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: SIDN SIDN <maarten.simon@sidn.nl<mailto:maarten.simon@sidn.nl>>, "cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org>" <cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org>> Subject: Re: [CWG-Stewardship] drift in v5 Hi Greg, Perhaps its worth noting that the other 2 operational communities are still considering whether to contract directly with PTI as their proposals currently indicates contracting with ICANN. So if for instance there is a need for numbers community to move its functions, it would be appropriate that the entity its contracting with provides access to the IANA trademarks accordingly. As far as PTI is concerned at the moment, its separation mechanisms as proposed by CWG is largely based on the names community (with the other 2 communities having optional liaison roles). Based on that, i don't see the other 2 communities agreeing to transfer the IANA transdemarks (which is for all 3 operational communities) to PTI whose accountability mechanism is largely names based. Regards On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> wrote: Maarten, That is not my understanding of separation. If ICANN selects a new provider, that provider would take all of the assets of PTI (including the trademarks, under this scenario), so it could provide the IANA services. PTI would then be wound down and ultimately dissolved by ICANN. Recall that PTI is a controlled entity of ICANN and would remain so throughout. In this case, the IANA operations are separated from PTI. If PTI is actually separated (spun out) from ICANN so that it is no longer under ICANN control, it would be done to further separate the IANA Functions from ICANN and IANA would continue as a going concern (active business). Under no circumstances does PTI become separated from ICANN without continuing to serve as the IANA operator, yet continue to hold IANA-related assets. Greg On Wed, Jun 10, 2015 at 3:44 PM, Maarten Simon <maarten.simon@sidn.nl<mailto:maarten.simon@sidn.nl>> wrote: Hi Greg, I would like to respond to your suggestion: 'An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.' If PTI is separated, ICANN will select a new IANA provider. Am I correct that if the IANA trademarks rest with PTI, we will than have to rename the services after the separation and they will not any longer be named the IANA services ? If that is correct, I rather keep the rights in ICANN. Best, Maarten From: Greg Shatan <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Date: Wednesday 10 June 2015 21:06 To: manning <bmanning@karoshi.com<mailto:bmanning@karoshi.com>> Cc: "cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org>" <cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org>> Subject: Re: [CWG-Stewardship] drift in v5 ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks. A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the "source or origin" of the goods and services and fulfilling the "quality control" oversight role, among other things. Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill. I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services. An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity. 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 On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com<mailto:bmanning@karoshi.com>> wrote: Missed the attachment... which now is attached! manning bmanning@karoshi.com<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102> On 10June2015Wednesday, at 0:12, manning <bmanning@karoshi.com<mailto: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/...>

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<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102>

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship -- ------------------------------------------------------------------------ Seun Ojedeji, Federal University Oye-Ekiti web: http://www.fuoye.edu.ng Mobile: +2348035233535 alt email:seun.ojedeji@fuoye.edu.ng<mailto:seun.ojedeji@fuoye.edu.ng> The key to understanding is humility - my view !

Alan, You took the words out of my mouth. A clause in the agreements between ICANN and the other two communities should require ICANN to grant a worldwide royalty-free license to use the trademarks. This is a simple fix. If we want to get fancy, there can be a contingent license that automatically springs into place when the customer separates. I also agree with your point on defense/enforcement. Greg On Wed, Jun 10, 2015 at 11:03 PM, Alan Greenberg <alan.greenberg@mcgill.ca> wrote:

I refrained from weighing in when this was first discussed and in this iteration. But I will now. I think that whatever the solution, there must be some principle adhered to:

1. The TM must be owned by an entity that is prepared to defend it if necessary.

2. Whoever owns it must enter into an agreement with all three users of it (or the other two if the owner is one of the users) so that if that user chooses to move withdraw from the IFO used by the others, the TM owner will grant it all necessary rights and privileges to continue using the TM with no user disruption.

In my opinion, it makes sense for the owner to be ICANN for the immediate future, because it will, either directly or through PTI, have agreements with the RIRs and the IETF and those agreements are reasonable places in which to embody principle 2. And ICANN has the funding and legal resources to defend the TM if necessary.

But there are certainly other solutions that could also satisfy both principles.

Like Chuck, I may be naive (something I have rarely been accused of), but I cannot see the details of the implementation being of concern to the AC/SO (with the possible exception of the ASO and the IPC).

Alan

At 10/06/2015 08:21 PM, Milton L Mueller wrote:

Maarten, The simple rationale for the numbers proposal, and the protocol community’s acceptance of it, was that both of them insist on having the right to switch IANA functions operator at some time in the future. If the IANA trademarks and domains are “owned” by a single IFO we cannot have that separability. If we want the IFO to be able to change, then the trademarks and domains must not he owned by either ICANN (which is the “owner’/controller of PTI) or any subsequent IFO. It’s that simple.

--MM

*From:* cwg-stewardship-bounces@icann.org [ mailto:cwg-stewardship-bounces@icann.org <cwg-stewardship-bounces@icann.org>] *On Behalf Of *Maarten Simon *Sent:* Wednesday, June 10, 2015 4:22 PM *To:* Seun Ojedeji; Greg Shatan *Cc:* cwg-stewardship@icann.org IANA *Subject:* Re: [CWG-Stewardship] drift in v5

Next to Seun’s argument, I think the trademarks should remain with ICANN as it is ICANN that will grant PTI the right to operate the IANA functions through the contract. It seems logical to me that ICANN only provides a license to PTI to use the trademarks through the same contract and not transfer the trademarks themselves.

The further question is if in the case of a separation the assets will go from PTI to the new entity (probably in practise: yes) but in a legal sense I would assume that PTI returns the assets to ICANN and that ICANN provide these to the new operator.

*From: *Seun Ojedeji <seun.ojedeji@gmail.com > *Date: *Wednesday 10 June 2015 22:05 *To: *Greg Shatan <gregshatanipc@gmail.com > *Cc: *SIDN SIDN <maarten.simon@sidn.nl>, " cwg-stewardship@icann.org" < cwg-stewardship@icann.org> *Subject: *Re: [CWG-Stewardship] drift in v5

Hi Greg, Perhaps its worth noting that the other 2 operational communities are still considering whether to contract directly with PTI as their proposals currently indicates contracting with ICANN. So if for instance there is a need for numbers community to move its functions, it would be appropriate that the entity its contracting with provides access to the IANA trademarks accordingly. As far as PTI is concerned at the moment, its separation mechanisms as proposed by CWG is largely based on the names community (with the other 2 communities having optional liaison roles). Based on that, i don't see the other 2 communities agreeing to transfer the IANA transdemarks (which is for all 3 operational communities) to PTI whose accountability mechanism is largely names based. Regards

On Wed, Jun 10, 2015 at 8:52 PM, Greg Shatan <gregshatanipc@gmail.com > wrote: Maarten,

That is not my understanding of separation. If ICANN selects a new provider, that provider would take all of the assets of PTI (including the trademarks, under this scenario), so it could provide the IANA services. PTI would then be wound down and ultimately dissolved by ICANN. Recall that PTI is a controlled entity of ICANN and would remain so throughout. In this case, the IANA operations are separated from PTI.

If PTI is actually separated (spun out) from ICANN so that it is no longer under ICANN control, it would be done to further separate the IANA Functions from ICANN and IANA would continue as a going concern (active business).

Under no circumstances does PTI become separated from ICANN without continuing to serve as the IANA operator, yet continue to hold IANA-related assets.

Greg

On Wed, Jun 10, 2015 at 3:44 PM, Maarten Simon <maarten.simon@sidn.nl> wrote: Hi Greg,

I would like to respond to your suggestion:

'An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.’

If PTI is separated, ICANN will select a new IANA provider. Am I correct that if the IANA trademarks rest with PTI, we will than have to rename the services after the separation and they will not any longer be named the IANA services ?

If that is correct, I rather keep the rights in ICANN.

Best,

Maarten

From: Greg Shatan <gregshatanipc@gmail.com > Date: Wednesday 10 June 2015 21:06 To: manning <bmanning@karoshi.com> Cc: " cwg-stewardship@icann.org" < cwg-stewardship@icann.org> Subject: Re: [CWG-Stewardship] drift in v5

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote: 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/...

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

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

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-- ------------------------------------------------------------------------ Seun Ojedeji, Federal University Oye-Ekiti web: http://www.fuoye.edu.ng Mobile: +2348035233535 alt email: seun.ojedeji@fuoye.edu.ng The key to understanding is humility - my view !

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I may be naïve and sometimes am but I would like to think that this could be resolved in collaboration with one another before a proposal is submitted to the ICG. Also, I really don't think that the fact that this issue is not resolved should not be a showstopper for SO/AC approval. Chuck -----Original Message----- From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of manning Sent: Wednesday, June 10, 2015 3:51 PM To: Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5 I am not going to weigh in on the merits of either point of view. I simply suggest that the text in v5 is directly contrary to a published position by the CRISP team (the numbers community). Such a conflict may be resolved either before or after the CWG final submission. I would posit that the longer it remains unresolved, the longer it will take to execute a transition. manning bmanning@karoshi.com PO Box 12317 Marina del Rey, CA 90295 310.322.8102 On 10June2015Wednesday, at 12:06, Greg Shatan <gregshatanipc@gmail.com> wrote:

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the "source or origin" of the goods and services and fulfilling the "quality control" oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote: 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.htm l> Draft Document - <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/ aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscu ssion-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

_______________________________________________ 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

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

This is an excellent point, and it's exactly this sort of surprise problem that made us want to put the significant disclaimer on top. Thanks for pointing it out! -- Andrew Sullivan Please excuse my clumbsy thums.

On Jun 10, 2015, at 18:26, Jonathan Robinson <jrobinson@afilias.info> wrote:

We have an overarching objective to get the proposal to the SO & ACs in good time ahead of the BA meeting. Let’s remain committed to that.

Like Chuck, I would like to think there is a resolution here through collaborative work and that this should not stop us sending the proposal to the Chartering Organisations, with acknowledgement that this is an issue to resolve. I haven't had the opportunity to discuss this with Lise, but personally, I would be comfortable flagging this in a covering note as an issue requiring further work to resolve, ideally before submission to the ICG.

This is, in essence, the 5th option suggested by Chuck, seconded by Greg and further supported by Andrew.

It may be that, given due consideration, PTI is agreeable as an appropriate legal entity to hold the mark and/or other relevant IP. At this stage, I have neither a legally informed view nor a personal position.

However, a key point which we should all be cognisant of (and could emphasise in a covering note), is that the language that has kicked this off this thread is derived from the draft Term Sheet (page 128). This has not been fully worked through by the CWG and we have expressly left it to implementation. In this context, please note that our preamble to the Term Sheet states:

What follows below is an initial draft proposed term sheet that could be the precursor to the ICANN-PTI contract. This is based on a legal memorandum prepared by legal counsel to the CWG-Stewardship on May 18, 2015. To the extent this term sheet is inconsistent with the current proposal, the current proposal governs. The term sheet would will be subject of negotiation between PTI and ICANN (with PTI having independent legal advice).

Jonathan

-----Original Message----- From: Gomes, Chuck [mailto:cgomes@verisign.com] Sent: 10 June 2015 21:11 To: manning; Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5

I may be naïve and sometimes am but I would like to think that this could be resolved in collaboration with one another before a proposal is submitted to the ICG. Also, I really don't think that the fact that this issue is not resolved should not be a showstopper for SO/AC approval.

Chuck

-----Original Message----- From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of manning Sent: Wednesday, June 10, 2015 3:51 PM To: Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5

I am not going to weigh in on the merits of either point of view. I simply suggest that the text in v5 is directly contrary to a published position by the CRISP team (the numbers community). Such a conflict may be resolved either before or after the CWG final submission. I would posit that the longer it remains unresolved, the longer it will take to execute a transition.

manning bmanning@karoshi.com PO Box 12317 Marina del Rey, CA 90295 310.322.8102

On 10June2015Wednesday, at 12:06, Greg Shatan <gregshatanipc@gmail.com> wrote:

...

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the "source or origin" of the goods and services and fulfilling the "quality control" oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote: 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.htm l> Draft Document - <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/ aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscu ssion-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

_______________________________________________ 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

_______________________________________________ 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 _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org https://mm.icann.org/mailman/listinfo/cwg-stewardship

Bill, I would love to have that dialogue. However, we've committed to sending out the final on June 11 (already delayed from June 8), and we can't taken any further time away from the review period, which is short already. There is a lot to digest here, and this is but one point. So, I think the dialogue should take place, and very soon, but it will need to be while the proposal is out. Greg On Wed, Jun 10, 2015 at 7:33 PM, manning <bmanning@karoshi.com> wrote:

*** Perhaps you, Chuck, Greg and Andrew might want to actually talk to the CRISP folks about ways forward? I’m sure they have opinions, desires, and a willingness to engage in dialog to ensure this nit might be addressed prior to sending out a “final’ to the SOs & ACs.

manning bmanning@karoshi.com PO Box 12317 Marina del Rey, CA 90295 310.322.8102

On 10June2015Wednesday, at 15:26, Jonathan Robinson < jrobinson@afilias.info> wrote:

...

We have an overarching objective to get the proposal to the SO & ACs in good time ahead of the BA meeting. Let’s remain committed to that.

Like Chuck, I would like to think there is a resolution here through collaborative work and that this should not stop us sending the proposal to the Chartering Organisations, with acknowledgement that this is an issue to resolve. I haven't had the opportunity to discuss this with Lise, but personally, I would be comfortable flagging this in a covering note as an issue requiring further work to resolve, ideally before submission to the ICG.

This is, in essence, the 5th option suggested by Chuck, seconded by Greg and further supported by Andrew. […] ***

...

-----Original Message----- From: Gomes, Chuck [mailto:cgomes@verisign.com] Sent: 10 June 2015 21:11 To: manning; Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5

I may be naïve and sometimes am but I would like to think that this could be resolved in collaboration with one another before a proposal is submitted to the ICG. Also, I really don't think that the fact that this issue is not resolved should not be a showstopper for SO/AC approval.

Chuck

-----Original Message----- From: cwg-stewardship-bounces@icann.org [mailto: cwg-stewardship-bounces@icann.org] On Behalf Of manning Sent: Wednesday, June 10, 2015 3:51 PM To: Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5

I am not going to weigh in on the merits of either point of view. I simply suggest that the text in v5 is directly contrary to a published position by the CRISP team (the numbers community). Such a conflict may be resolved either before or after the CWG final submission. I would posit that the longer it remains unresolved, the longer it will take to execute a transition.

manning bmanning@karoshi.com PO Box 12317 Marina del Rey, CA 90295 310.322.8102

On 10June2015Wednesday, at 12:06, Greg Shatan <gregshatanipc@gmail.com> wrote:

...

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the "source or origin" of the goods and services and fulfilling the "quality control" oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote: 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.htm l> Draft Document - <http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/ aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscu ssion-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

_______________________________________________ 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

_______________________________________________ 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

Having read the thread, I fully support the approach that Jonathan suggests. Best, Lise Fra: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] På vegne af Jonathan Robinson Sendt: 11. juni 2015 00:26 Til: 'Gomes, Chuck'; 'manning'; 'Greg Shatan' Cc: cwg-stewardship@icann.org Emne: Re: [CWG-Stewardship] drift in v5 We have an overarching objective to get the proposal to the SO & ACs in good time ahead of the BA meeting. Let’s remain committed to that. Like Chuck, I would like to think there is a resolution here through collaborative work and that this should not stop us sending the proposal to the Chartering Organisations, with acknowledgement that this is an issue to resolve. I haven't had the opportunity to discuss this with Lise, but personally, I would be comfortable flagging this in a covering note as an issue requiring further work to resolve, ideally before submission to the ICG. This is, in essence, the 5th option suggested by Chuck, seconded by Greg and further supported by Andrew. It may be that, given due consideration, PTI is agreeable as an appropriate legal entity to hold the mark and/or other relevant IP. At this stage, I have neither a legally informed view nor a personal position. However, a key point which we should all be cognisant of (and could emphasise in a covering note), is that the language that has kicked this off this thread is derived from the draft Term Sheet (page 128). This has not been fully worked through by the CWG and we have expressly left it to implementation. In this context, please note that our preamble to the Term Sheet states: What follows below is an initial draft proposed term sheet that could be the precursor to the ICANN-PTI contract. This is based on a legal memorandum prepared by legal counsel to the CWG-Stewardship on May 18, 2015. To the extent this term sheet is inconsistent with the current proposal, the current proposal governs. The term sheet would will be subject of negotiation between PTI and ICANN (with PTI having independent legal advice). Jonathan -----Original Message----- From: Gomes, Chuck [mailto:cgomes@verisign.com] Sent: 10 June 2015 21:11 To: manning; Greg Shatan Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5 I may be naïve and sometimes am but I would like to think that this could be resolved in collaboration with one another before a proposal is submitted to the ICG. Also, I really don't think that the fact that this issue is not resolved should not be a showstopper for SO/AC approval. Chuck -----Original Message----- From: <mailto:cwg-stewardship-bounces@icann.org> cwg-stewardship-bounces@icann.org [ <mailto:cwg-stewardship-bounces@icann.org> mailto:cwg-stewardship-bounces@icann.org] On Behalf Of manning Sent: Wednesday, June 10, 2015 3:51 PM To: Greg Shatan Cc: <mailto:cwg-stewardship@icann.org> cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5 I am not going to weigh in on the merits of either point of view. I simply suggest that the text in v5 is directly contrary to a published position by the CRISP team (the numbers community). Such a conflict may be resolved either before or after the CWG final submission. I would posit that the longer it remains unresolved, the longer it will take to execute a transition. manning <mailto:bmanning@karoshi.com> bmanning@karoshi.com PO Box 12317 Marina del Rey, CA 90295 310.322.8102 On 10June2015Wednesday, at 12:06, Greg Shatan < <mailto:gregshatanipc@gmail.com> gregshatanipc@gmail.com> wrote:

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee and the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the "source or origin" of the goods and services and fulfilling the "quality control" oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning < <mailto:bmanning@karoshi.com> bmanning@karoshi.com> wrote:

Missed the attachment. which now is attached!

manning

<mailto:bmanning@karoshi.com> bmanning@karoshi.com

PO Box 12317

Marina del Rey, CA 90295

310.322.8102

On 10June2015Wednesday, at 0:12, manning < <mailto:bmanning@karoshi.com> 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.htm

...

l> Draft Document -

...

<http://mm.icann.org/pipermail/cwg-stewardship/attachments/20150609/

...

aea1179e/FinalTransitionProposal_v5-Redline-commentsandeditsfordiscu

...

ssion-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

...

<mailto:bmanning@karoshi.com> bmanning@karoshi.com

...

PO Box 12317

...

Marina del Rey, CA 90295

...

310.322.8102

...

...

...

...

_______________________________________________

...

CWG-Stewardship mailing list

...

<mailto:CWG-Stewardship@icann.org> CWG-Stewardship@icann.org

...

<https://mm.icann.org/mailman/listinfo/cwg-stewardship> https://mm.icann.org/mailman/listinfo/cwg-stewardship

_______________________________________________

CWG-Stewardship mailing list

<mailto:CWG-Stewardship@icann.org> CWG-Stewardship@icann.org

<https://mm.icann.org/mailman/listinfo/cwg-stewardship> https://mm.icann.org/mailman/listinfo/cwg-stewardship

_______________________________________________ CWG-Stewardship mailing list <mailto:CWG-Stewardship@icann.org> CWG-Stewardship@icann.org <https://mm.icann.org/mailman/listinfo/cwg-stewardship> https://mm.icann.org/mailman/listinfo/cwg-stewardship _______________________________________________ CWG-Stewardship mailing list <mailto:CWG-Stewardship@icann.org> CWG-Stewardship@icann.org <https://mm.icann.org/mailman/listinfo/cwg-stewardship> https://mm.icann.org/mailman/listinfo/cwg-stewardship

I wanted to clarify some apparent misunderstandings from the discussion. For clarification, the IETF has, upon request from ICG, determined that it would be willing - if asked - to hold the trademarks and domains. We are awaiting ICG and other coordination to complete on this matter. An agreement to put the trademarks and domains into the IETF Trust has not been written, so it is premature to speculate on what possible additional constraints such a move would bring to the parties. However, the only possible purpose of the move could only be to guarantee that the three communities in question would always have the ability to employ them at their discretion. The IETF trust is a legal entity, unlike claimed in recent e-mail. FWIW, a few personal opinions follow. I agree with Alissa that the CWG should try work this issue out if you can before it reaches the ICG. Also, the text in the new version is a surprise to me. The way that I read it, it would make it impossible for the numbers and protocols folk to continue to use the trademarks. Which we have been doing for a long time. I think some coordination and correction may be needed. Jari Arkko, IETF Chair

Milton, I disagree. You are asking the wrong question, so you are ending up with the wrong answer. The question is "where does the IANA work get done and is any other entity responsible for the quality of this work?" not "where do the technical parameters IANA uses come from?" The work is clearly coming out of the IANA team at ICANN, and ICANN is clearly responsible (accountable) for the quality of that work. As a customer, the IETF has oversight over certain IANA activities, but this is as a customer not as an overlord. I realize the words "source" and "origin" have different meanings, but the one that matters is not the historical source, or the source of information; it's the source of the work itself and the responsibility for that work. With all due respect, whether this has been endorsed by the CRISP team or the protocols community is beside the point at this point. (Ultimately, that's critical, but not now.) That will get worked out in due course. The fact that the expressed a position first does not make it correct. In any case, it's been made clear to us that we can't and shouldn't come up with a plan for all the communities -- our remit is limited. As to the position of the CWG, I see significant support for this approach, and in any event the Term Sheet is clearly marked as a work in progress. In addition, this issue will be flagged as an issue needing further work (along with the SLEs). I'm comfortable with where the language in the Term Sheet is now. It's a sensible approach and consistent with the status quo and 15 years of ownership (following the assignment from USC). Greg On Wed, Jun 10, 2015 at 8:07 PM, Milton L Mueller <mueller@syr.edu> wrote:

Greg

You are just wrong here. The IETF is the source or origin of the root registries for names, numbers and protocols by virtue of its protocol design/ standards development work. Neither ICANN, nor PTI nor any future IFO is the source or origin of the IANA functions. They are but operators or implementors of those functions.

Anyway it is not your call; no one in the CWG, no one in the CRISP team, and no one in the protocols community have advocated or accepted your approach. As far as I can tell you made this change unilaterally. Please change it.

*From:* cwg-stewardship-bounces@icann.org [mailto: cwg-stewardship-bounces@icann.org] *On Behalf Of *Greg Shatan *Sent:* Wednesday, June 10, 2015 3:06 PM *To:* manning *Cc:* cwg-stewardship@icann.org IANA *Subject:* Re: [CWG-Stewardship] drift in v5

ICANN is an appropriate owner of the IANA trademarks. PTI is also an appropriate owner of the IANA trademarks. The IETF Trust does not appear to be an appropriate owner of the IANA trademarks.

A trademark is an indicator of source or origin. The owner of a trademark should be the ultimate source of the goods and services offered under that trademark. In the most straightforward case, the trademark owner offers those goods and services themselves or through a subsidiary. The trademark owner can license the mark to third parties to offer goods and services under the mark; but, consistent with their status as the ultimate source, the trademark owner is required by law to exercise continuing quality controls over the goods and services offered by the licensee *and* the use of the trademark by the licensee. A trademark owner cannot merely "hold the asset" as CRISP proposed. Ownership of a trademark fundamentally involves being the “source or origin” of the goods and services and fulfilling the “quality control” oversight role, among other things.

Quality control generally involves approvals by the licensor of any potential new products or services, and approvals of any changes in products or services (what they are, how they are offered, methods and processes, etc.), as well as ongoing monitoring of quality. The benchmark typically is that licensee's level of quality should be at least as high as the goods and services offered by the licensor (i.e., the owner of the mark and the ultimate source/origin of the goods/services). This is all set forth in a trademark license between the licensee ans licensor. 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, and loss of the right to claim ownership and usage rights of the mark). When a licensee uses a trademark, all goodwill (brand reputation) goes to the owner, not the licensee. The owner is the holder of that goodwill.

I don't see how the IETF Trust makes legal sense as the owner of the IANA Trademarks. The IETF Trust is not and does not intend to be the ultimate source and origin of IANA services. Unlike copyrights and patents, trademarks can't be owned by administrators; they need to be owned by the source of the services. Further, the IETF Trust is clearly not granting ICANN the right to provide the IANA Services, so it is even more inappropriate for the IETF Trust to be the owner of the mark associated with those services.

An acceptable alternative may be to have PTI, rather than ICANN, own the IANA trademarks. This is actually a simpler solution and is consistent with trademark law and practice. This also contributes to separability, since all of the IFO-related assets would be in a single entity.

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

On Wed, Jun 10, 2015 at 3:18 AM, manning <bmanning@karoshi.com> wrote:

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/...

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

_______________________________________________ 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

In my opinion it would be preferable to get this fixed before the proposal goes out to the SOs and ACs for approval rather than waiting for the ICG to triage it, if possible. Alissa On Jun 10, 2015, at 10:23 AM, Milton L Mueller <mueller@syr.edu> wrote:

If what Bill says is true about the marks staying with ICANN, the CWG should change its draft to make the IETF trust the holder of the IANA trademarks and domains rather than PTI. This not only makes it compatible with the numbers proposal, but contributes to the principle of separability. One particular IFO should not "own" trademarks and domains for IANA; instead they should be held in trust by a neutral entity. If a specific IFO holds those marks for IANA it constitutes a serious switching cost and could cause confusion.

The CWG draft that "drifts" away from the protocols and numbers proposals seems to be inadvertent rather than deliberate, or at least I hope so. At any rate if we don't fix it here the ICG will have to deal with it during their process of reviewing incompatibilities between the three operational communities' proposals.

--MM

...

-----Original Message----- From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship- bounces@icann.org] On Behalf Of manning Sent: Wednesday, June 10, 2015 3:12 AM To: cwg-stewardship@icann.org IANA Subject: [CWG-Stewardship] drift in v5

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

_______________________________________________ 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

How about a 5th option that is similar to what we are doing for DT-A, i.e., leave an action item to resolve in collaboration with the other two communities prior to sending to the ICG is that is possible. Chuck From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of Greg Shatan Sent: Wednesday, June 10, 2015 3:47 PM To: Alissa Cooper Cc: cwg-stewardship@icann.org IANA Subject: Re: [CWG-Stewardship] drift in v5 ​This is going to the SOs and ACs tomorrow. I'm not sure what "fixing" this means, since I don't consider the current position (ICANN retains the trademarks) "broken." Rather, I think the proposal to move the trademarks to the IETF Trust to be "broken." And we can't fix that. That said, I see the following options available: 1. Leave the proposal as it is, with ICANN retaining the marks. 2. Remove the language referring to the trademarks, so it is ambiguous (but implicit that the relevant assets moving to PTI would most likelyinclude the trademarks). 3. Amend the language so it is explicit that the marks are being transferred to PTI. 4. Conform the language so that the marks are transferred to the IETF Trust. I would support either option 1 or option 3. I could live with option 2, since it takes us back to prior versions, and leaves room for clarification down the road. I would object only to option 4, for the reasons previously stated. Greg ​ On Wed, Jun 10, 2015 at 3:04 PM, Alissa Cooper <alissa@cooperw.in<mailto:alissa@cooperw.in>> wrote: In my opinion it would be preferable to get this fixed before the proposal goes out to the SOs and ACs for approval rather than waiting for the ICG to triage it, if possible. Alissa On Jun 10, 2015, at 10:23 AM, Milton L Mueller <mueller@syr.edu<mailto:mueller@syr.edu>> wrote:

If what Bill says is true about the marks staying with ICANN, the CWG should change its draft to make the IETF trust the holder of the IANA trademarks and domains rather than PTI. This not only makes it compatible with the numbers proposal, but contributes to the principle of separability. One particular IFO should not "own" trademarks and domains for IANA; instead they should be held in trust by a neutral entity. If a specific IFO holds those marks for IANA it constitutes a serious switching cost and could cause confusion.

The CWG draft that "drifts" away from the protocols and numbers proposals seems to be inadvertent rather than deliberate, or at least I hope so. At any rate if we don't fix it here the ICG will have to deal with it during their process of reviewing incompatibilities between the three operational communities' proposals.

--MM

...

-----Original Message----- From: cwg-stewardship-bounces@icann.org<mailto:cwg-stewardship-bounces@icann.org> [mailto:cwg-stewardship-<mailto:cwg-stewardship-> bounces@icann.org<mailto:bounces@icann.org>] On Behalf Of manning Sent: Wednesday, June 10, 2015 3:12 AM To: cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org> IANA Subject: [CWG-Stewardship] drift in v5

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<mailto:bmanning@karoshi.com> PO Box 12317 Marina del Rey, CA 90295 310.322.8102<tel:310.322.8102>

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship

---

CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship

_______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship

On Wed, Jun 10, 2015 at 07:54:27PM +0000, Gomes, Chuck wrote:

How about a 5th option that is similar to what we are doing for DT-A, i.e., leave an action item to resolve in collaboration with the other two communities prior to sending to the ICG is that is possible.

That's nice in that it leaves it possible to make the deadline and yet acknowledges the potential conflict. A -- Andrew Sullivan ajs@anvilwalrusden.com