Seun, Thanks . As per below, the informal group nominally comprises CWG co-chairs, Chair & Vice chair of CRISP, Chairs of the IANAPLAN (http://datatracker.ietf.org/wg/ianaplan/charter/) and Chair + Vice Chairs of the ICG. Jonathan From: Seun Ojedeji [mailto:seun.ojedeji@gmail.com] Sent: 13 August 2015 21:26 To: Jonathan Robinson <jrobinson@afilias.info> Cc: cwg-stewardship@icann.org Subject: Re: [CWG-Stewardship] Update on IANA IPR Dear Jonathan, Thanks for the update, i agree on the suggested way forward as it seem reasonable enough. Hopefully some progress will be made by next week. Just for my clarification, may i ask that you indicate the individuals that constitute the group you refer? Regards On Thu, Aug 13, 2015 at 8:52 PM, Jonathan Robinson <jrobinson@afilias.info <mailto:jrobinson@afilias.info> > wrote: All, Following the last CWG meeting, your co-chairs reached out to the chairs of the CRISP & IANAPLAN teams as well as the ICG chairs in order to discuss the overarching management of the IANA IPR issue. The purpose of the discussion was to focus, not on the substance of the issue, but rather to best understand the different backgrounds, the current status and the prospective routes forward, given where we are today.

From the perspective of the co-chairs of the CWG, a number of key points emerge as follows:

1. There seemed to be an overarching sensitivity to where we ALL are in the process and the requirement to not let this IANA IPR issue derail us from a “programme management” perspective. 2. A second overarching point, directly related to 1 above, is the desire (and effectively a requirement) not to do anything which will necessitate change any of the three RFP responses such that this change would require one or more of the three RFP respondents (names, numbers, protocols) to have to go back through their respective community processes with the associated risk of delaying the transition. 3. Through the current public comment period on the ICG proposal, there is the opportunity (for the CWG) to comment on the ICG proposal, but subject to 1 & 2 above. We also sought to better understand the various tracks of work (including that of the CWG) which have seen us arrive at this point and some of the detail in that work. Key points from that include: A. That there is a form of “backstop position” in the CRISP proposal that the IPR must not reside within the IFR in future. This underlying motivation derives from two points: a. In order to facilitate a smooth potential future transition of the IANA function b. To ensure that the IPR will be used in a non-discriminatory manner. B. An underlying motivation was that the IPR should be held somehow “in trust” for future use by the relevant users of that IPR C. That there seemed to be a strongly held view that the Sidley interpretation whereby ICANN could retain the IPR AND that this would be consistent with the CRISP proposal was not accurate. The argument presented being that ICANN is in fact the IANA Functions Operator, at least in in the case of numbers. D. The IETF is willing to be the holder of the IPR in the IETF trust which is for the public benefit and the global internet society. Therefore no conflict is envisaged by having the IPR held within the IETF Trust. Finally, we considered some next steps / actions as follows: - That the same group agree to talk again in approximately one week - CRISP is likely to prepare and share some responses to the Sidley memo on IPR - We can expect to see some further detail / information on the IETF Trust - ICG & CRISP offers any knowledge, information and assistance that they can reasonably provide - A request for any guidance on timelines from the CWG In summary, it seems that we (the CWG) need to separate our prospective contribution to implementation from any comment we may wish to make now – effectively to the ICG proposal. For now, we need to focus our attention on the ICG document and the urgent requirement is to consider whether or not the ICG proposal is consistent with the responses received and, if not, what comment we wish to submit. Moreover, to be mindful that any such comment must not require any of the three RFP responses to be referred back to the relevant responding community if we are to retain the current overarching timetable. Put simply, what can usefully be done now and what can usefully be done later during the implementation phase. For your reference, we have included some relevant extracts from the CRISP response, the ICG proposal and the Sidley memo which we have used in thinking about this issue. Thank-you Jonathan & Lise _______________________________________________ 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 !

On Thu, Aug 13, 2015 at 7:11 PM, Mueller, Milton L < milton.mueller@pubpolicy.gatech.edu> wrote:

The Purpose of the Trust is "the advancement of education and public interest by acquiring, maintaining and licensing certain existing and future intellectual property and other property used in connection with the Internet standards process and its administration, for the advancement of the science and technology associated with the Internet and related technology." Although this goes beyond benefiting the IETF, this does not support the statement in D either.

MM: So your initial claim that the only beneficiary of IETF Trust is the IETF was an exaggeration. Why then did you make it?

​ GS: Milton, you are incorrect. My statement that the sole beneficiary of the IETF Trust is the IETF is absolutely accurate; just read the Trust Agreement. The Purpose of a trust is a separate concept from the Beneficiary of a trust.​ The Beneficiary is the entity ultimately entitled to receive the assets or profits of the trust; in essence, the Beneficiary is owner of the trust's assets, the trust is just holding those assets "in trust" for that Beneficiary. The purpose of a trust indicates how the trust assets may be put to use on an ongoing basis while such assets are held by the trust, those that "benefit" from the exercise of these purposes are not in any way Beneficiaries of the trust -- that is a very specific role. It's probably clearer not to use any variation of the word "benefit" when referring to those who are touched by the exercise of the trust's purpose; that would avoid the confusion inherent in your statement above.

It should also be noted that all the Trustees of the IETF Trust are members of the IETF Admin Committee. As such, it's clear that this is an IETF-centric trust, which is not consistent with owning an asset that is used in connection with the needs of all three communities.

MM: All three communities are based on registries grounded in IETF standards. There is no more appropriate place for the 3 communities’ IANA requirements to converge than at IETF.

​GS: The fact that IETF sets standards that are then used by two operational communities does not in any way qualify the IETF or its Trust as a sole owner of an asset used to refer to services provided to all three communities by the provider of those services.​

if the IETF Trust takes over the INTERNET ASSIGNED NUMBERS AUTHORITY and IANA trademark d the trademarks transferred to the IETF Trust, *the IETF Trust becomes the INTERNET ASSIGNED NUMBERS AUTHORITY*. The

MM: So since you want ICANN to hold the mark this means that you want ICANN to “become the INTERNET ASSIGNED NUMBERS AUTHORITY? Permanently…? No separability, no accountability.

​GS: That completely mischaracterizes my position, or is at least way out of date. Just because you remain a committed advocate for the CRISP solution does not mean that I am your antithesis. My position since Buenos Aires (if not slightly before) is that I have an open mind, but that we need to conduct our own analysis of the potential outcomes​. If ICANN retains ownership of the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY trademark, thee is no reason that it would be permanent, nor have I ever said so at any time. If all 3 communities chose a new IFO, putting ICANN out of the "IANA business," it would be entirely appropriate for the new IFO, as the new IANA, to be assigned the trademarks as well. This could all be taken care of in contracts and in the ICANN Bylaws, to assure that it would in fact take place. Concerns about separability of the IANA trademarks and domain names is highly exaggerated by those with permanent distrust of ICANN. And, as has been pointed out, the IFO operations could still be separated from ICANN even in the highly unlikely scenario where ICANN refused to yield the IANA trademarks and domain names in spite of clear obligations to do so. As for "accountability," there's no reason why ICANN owning the IANA brand while it operates as the IANA would have any impact on accountability (unless you are comparing that scenario to the oversight and control that the IETF Trust must exercise if it were the brandowner).

IETF Trust is ultimately responsible for monitoring and assuring the quality of the work product and services of any licensee using the brand (currently ICANN). ICANN is then a mere licensee, providing services by permission of the IETF Trust under the IANA brand, which is an IETF Trust brand (just like Vaseline is a Unilever brand). By no means is ICANN the Internet Assigned Numbers Authority anymore.

MM: ICANN’s PTI is _*supposed*_ to be a “mere” contractor, providing services by permission of… the names community - NOT the IETF Trust. Your continued distortion of this issue is not helpful. You can’t explain how to reconcile ICANN ownership of the marks with separability of IFOs, and you can’t explain why a names-dominated entity should hold the marks for all three communities. Please engage with the real issues.

​GS: There's no distortion here. The services may be provided by PTI by permission of the names ​community, but PTI's ability to use IANA and INTERNET ASSIGNED NUMBERS AUTHORITY as its trademarks and trade names comes by permission (or more accurately, license) from the IETF Trust, if the IETF Trust becomes the brandowner. This license, like any trademark license, must contain quality control provisions which put the IETF Trust in an oversight and control position over PTI. And the IETF Trust, like any brandowner, becomes the entity from which those services are deemed to come from, even if the licensee and not the licensor is the one physically providing the services. Pretending that this is not the way that trademarks and trademark licenses work distorts the issues and is not helpful. As noted previously, in order to resolve issues, one must first acknowledge issues. Finally, the separability of IFOs is quite easy to reconcile with ICANN's continued ownership of the marks. It's been stated above, but again: ICANN must be obligated, both by contract and by its bylaws, to grant a license to any new IFO chosen by a single community, and to transfer the marks and domains to any new IFO chosen by all of the communities. If ICANN breached its contracts and flouted its bylaws, the CCWG has provided a whole panoply of powers to hold ICANN to account and to force ICANN to comply (even if it means spilling the Board to do so). Terming ICANN a "names-dominated entity" merely prejudices the entire analysis -- ICANN was created to serve as the IANA Operator for all 3 communities and this is a core function of ICANN. The role of the ASO and ICANN's role in numbers should not be denigrated either. The fact that the names crowd and its issues are noisy and numerous does not per se make ICANN a "names-dominated entity". In a perfect world, we might have a names community entity that was completely separate from ICANN-as-the-IANA; we don't have that, but we do have functional (and will have structural) separation, and that should be more than sufficient. It's also a mischaracterization to say that ICANN (or the IETF Trust, for that matter) "holds the marks for all three communities." Marks don't get "held." Marks are identifiers. (Patents and copyrights may be held in the passive or neutral sense, but that is because patents and copyrights serve different functions.) In this case, the marks identify the entity that provides the IANA services to the three communities. If ICANN owns the marks, that identifies ICANN as the provider of "IANA-brand" services. If the IETF Trust owns the marks, that identifies the IETF Trust as the provider of "IANA-brand" services. The communities themselves do not "use" the marks, nor are the communities identified as the providers of "IANA-brand" services. As far as trademarks are concerned, these are the real issues. Greg

My replies are inline below. On Fri, Aug 14, 2015 at 1:04 PM, Mueller, Milton L < milton.mueller@pubpolicy.gatech.edu> wrote:

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com]

MM: All three communities are based on registries grounded in IETF standards. There is no more appropriate place for the 3 communities’ IANA requirements to converge than at IETF.

​GS: The fact that IETF sets standards that are then used by two operational communities does not in any way qualify the IETF or its Trust as a sole owner of an asset used to refer to services provided to all three communities by the provider of those services.​

MM: Incorrect. The identity of the IANA, as you have been informed several times now, resides in IETF RFCs. The “three communities” to which you refer are organized around registries that implement IETF standards. The “services” to which you refer are merely outsourced secretarial functions which keep those registries consistent. While each community gets to pick its clerical provider of those functions, the source and origin of the IANA is still the IETF.

​GS: This analysis is incorrect, as explained in more detail in my reply to Andrew Sullivan a little while ago. Many good and important things may reside in IETF RFCs, but the "identity of the IANA" is not one of them. That is not consistent with what trademarks stand for, or what trademark "source" means. A brand identity is associated with the entity that is responsible for carrying out a service, whether directly or because they exercise quality control and are seen as the provider of the service being received. While ICANN, in its IANA role, may implement IETF standards, that does not mean that ICANN is offering IETF-supervised or controlled services. Trying to cast the IANA functions as mere "secretarial" or "clerical" services is a nice rhetorical flourish​, but it doesn't hold water or change the analysis. In any event if the IETF has been the rightful owner and operator of the IANA brand and mark, they've done a terrible job of it from a trademark point of view -- they haven't registered it, they haven't entered into licenses, they did not challenge ICANN or its predecessor's claim to be the rightful owners of the mark when they registered the marks, they did not seek to cancel the trademark registrations or have them assigned to the IETF. However, I don't think this is because the did a terrible job at all. It's because this was never the IETF's job, because they never were the owner and operator of "IANA brand" services. ​ That doesn't mean they can't be, in the future. It does mean that the idea of predestination is false.​

MM: So since you want ICANN to hold the mark this means that you want ICANN to “become the INTERNET ASSIGNED NUMBERS AUTHORITY? Permanently…? No separability, no accountability.

​GS: That completely mischaracterizes my position, or is at least ​way out of date. Just because you remain a committed advocate for the CRISP solution does not mean that I am your antithesis. My position since Buenos Aires (if not slightly before) is that I have an open mind

MM: I see no evidence of this. I see a very firm commitment to ICANN retaining the IPR. See below.

​GS: I've stated my position before and that is not my position. I have absolutely no commitment to ICANN retaining the IANA trademarks and domain names. While there are challenges and pros and cons to any of the potential scenarios for ownership of the IANA trademarks, none of these challenges are insurmountable. There is no "very firm commitment to ICANN retaining the IPR" to be seen.​

but that we need to conduct our own analysis of the potential outcomes​. If ICANN retains ownership of the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY trademark, thee is no reason that it would be permanent, nor have I ever said so at any time. If all 3 communities chose a new IFO, putting ICANN out of the "IANA business," it would be entirely appropriate for the new IFO, as the new IANA, to be assigned the trademarks as well.

This could all be taken care of in contracts and in the ICANN Bylaws, to assure that it would in fact take place.

MM: I have a bit of experience, 30 years to be exact, in telecommunications regulation and have observed efforts to use regulations, contracts, etc. to make an incumbent monopoly treat competitors in a nondiscriminatory fashion and allow customers to switch to new providers without throwing up obstacles. The method you describe never works. Never. The incumbent has so much discretion, so much inertia on its side, and so much advance knowledge of the process. The only thing that has ever really worked cleanly is structural separation. This isn’t about “permanent mistrust of ICANN” per se, it’s about knowing something about economics, regulation, switching costs, and basic economic incentives.

And you still have never explained why you are so mistrustful of an IETF Trust when it has zero incentives and zero benefits to be gained by messing with the trademarks. A person with an open mind wouldn’t use such a double standard.

​GS: I also have a bit of experience (only 29 years) dealing with contracts of various types and litigation over contracts, and about 15 years of experience in antitrust law (much of that in merger antitrust analysis, with ample experience in dealing with barriers to entry, sunk costs, potential monopolistic behavior, etc.​) in both regulated and unregulated industries. So I can't claim to be an economist (that would be silly), but I can claim to know something about the elements you mentioned, and I've had to give them significant thought in numerous practical situations with a lot on the line. A few lines up, you were describing this as a secretarial, clerical function, entirely governed by the IETF. ​ Now, ICANN is a monopolist with discretion, inertia, special knowledge​, etc. The two views don't line up. I think the above statement overstates the case for ICANN as uncontrollable monopolistic bully. As for the IETF Trust, I am in no way mistrustful of it, nor am I applying a double standard. As I've said before (and so have others), accountability is not only for dysfunctional entities. Indeed, it's the very basis of our entire exercise in both the CWG and CCWG. We've all put a lot of work into methods for holding ICANN accountable (and I hope your pessimism about their monopolistic tendencies doesn't cause you to believe we've wasted our time). Even if the IETF Trust might not trigger accountability mechanisms as often as one might think ICANN will, that doesn't exempt it from a robust accountability framework with regard to all the communities. It's clearly already highly accountable to the IETF (and essentially, only to the IETF).

​GS: There's no distortion here. The services may be provided by PTI by permission of the names ​community, but PTI's ability to use IANA and INTERNET ASSIGNED NUMBERS AUTHORITY as its trademarks and trade names comes by permission (or more accurately, license) from the IETF Trust, if the IETF Trust becomes the brandowner. This license, like any trademark license, must contain quality control provisions which put the IETF Trust in an oversight and control position over PTI.

MM: I think you are distorting this, partly based on your understanding of how commercially motivated firms administer trademarks, partly because you really are committed to ICANN retaining the marks. The IETF Trust would administer the marks not to impose its service standards on PTI but only to ensure that the marks are separate from the IFO and licensed to any IFO duly designated by each operational community. You can’t tell me that good TM lawyers can’t figure out a way to confine IETF Trust to that role.

​GS: First, let me again dismiss the base canard that I am in any way committed to ICANN retaining the marks. Canards may be good for confit, but they don't do much for rational discussion. There's a certain straightforward logic in have the current trademark owner, and the only entity using the trademarks in a trademark sense, retain the trademarks. On the other hand, there is also a logic, as we shift oversight and accountability of the IANA functions to the global multistakeholder community, to shifting ownership of the marks to the global multistakeholder community as well. Again, there's no distortion here. I have worked with a number of non-profits and charitable organizations on trademark matters, as well as with "commercially motivated" firms.​ There are certain baseline legal obligations that a trademark owner has, regardless of its "commercial motivations." This is an area where trademarks are different from copyrights and patents, both in the essential nature of the asset and in the obligations that a trademark owner has. A copyright owner or patent owner has no legal obligation to oversee or maintain quality in its licensee's activities or outputs. For a copyright owner, it would make good commercial sense, since a bad cover version or movie would have a negative effect on value, but there's no legal requirement. For a patent owner, there's no overriding reason to do so. In contrast, quality control is the bedrock of trademark licensing. Without adequate quality control (and policing and enforcement) in contract and in fact, the trademark asset itself will become diluted and ultimately abandoned. So, any trademark owner, including the IETF Trust, must impose quality control standards over its licensees. It cannot be a passive licensee. Even "passive quality control" is the kiss of death. Furthermore the trademark owner must have an active role and at least some discretion in choosing who to license to and who not to license to. That said, there are plenty of ways to be creative in implementing a trademark license and in designating (or creating or modifying) an appropriate trademark licensing entity. And that includes ways to modify the IETF Trust so it would be an appropriate entity for the communities to choose as the owner of the IANA trademarks and domain names, and ways to fashion a trademark license between the IETF Trust and ICANN to both minimize the quality control aspects of the relationship and to give the operation communities a great deal of control over the IETF Trust's latitude in that regard. It's actually quite an interesting project, and I will put a separate email together on this matter; maybe even tonight but more likely tomorrow. I have already sent an email with some thoughts on how the IETF Trust would need to be modified if it were to hold the marks (which would also apply to a new entity if that route were taken). The short answer is that the IETF Trust (or any other trademark owner) cannot be "confined" to the role you imagine, but it can be "domesticated."

And if you can’t, you will have a very hard time convincing people of your second point, which is that ICANN’s bylaws and contracts can be magically written to erase its conflict of interest in transferring the marks to a new operator.

​GS: I don't believe there's any magic needed, were ICANN to continue as the owner of the marks. I'm more optimistic about the work we've done in this group and the CCWG Accountability, and maybe even more optimistic about ICANN's incentives not to act like a monopolistic pig. I think all of the options are viable from both a legal and practical standpoint. However, given the ICANN board's recent announcement​ ​, this is probably moot.​ ​

You have consistently failed to escape this basic contradiction in your position. If you can make ICANN a nondiscriminatory holder of the marks who willingly licenses them to its competitors, or whoever the communities designate as their IFO, why can’t you do the same for IETF Trust? And doesn’t it make more sense for IETF, which has no conflict of interest, to be in that role than ICANN? And isn’t that why CRISP team proposed it to begin with?

​GS: I never, ever said that what could be done for ICANN couldn't be done for the IETF Trust. You have misunderstood my analysis of the possibility of ICANN as a continued holder of the mark to state a position favoring that outcome. As I've said before, in and since Buenos Aires, I have an open mind, and all of the options are viable. ( I would not characterize the potential licensing to replacement IANA operators as licenses to ICANN's competitors, except in the broadest possible sense, but that's a minor point.) The position I _do_ have is that the CWG and the names community should have been able to freely analyze the options on an equal footing with the other two communities. For reasons I don't fully understand and that are not worth re-hashing or analyzing, we no longer have that latitude. Given the ICANN Board's recent announcement, there's really no reason to continue discussing ICANN retaining the marks (although I happen to think that the Board's announcement usurped the names community's right to make that decision, but that right had already been pretty much eliminated anyway). However, I would not be so quick to say that the IETF Trust "has no conflict of interest." It's a completely different kind of conflict of interest from that of ICANN-the-corporation, which relates to remaining as the incumbent IFO. It's more analogous to the conflict of interest that would exist if there was a freestanding "names organization" nominated to hold the IANA trademarks on behalf of all three communities. This does not come from any inherent mistrust of the IETF Trust. Rather it follows from the logic stated at the very beginning -- that a trademark owner accountable to and representative of the multistakeholder community should be what we seek in this scenario, and from the belief that we cannot magically stop talking about accountability when we start talking about the IETF Trust. What makes sense at this point is to discuss what would need to be done to the IETF Trust to make it an appropriate owner of the marks, whether the IETF, CRISP and CWG can come to an understanding on those modifications, and what a license to ICANN would need to look like to deal with both operational and separational phases to meet the needs of all 3 communities, the trademark owner and ICANN. Greg

Milton, On the quality control point, it's not possible to limit (or essentially, eliminate) quality control to the extent you state, but it is possible to constrain it significantly. In this case I would suggest we explore a combination of (a) minimizing the quality control obligations as much as legally possible, (b) involving the OCs in quality control (e.g., by delegating certain quality control responsibilities to the OCs), and (c) constraining the licensor's ability to call a default and seek to terminate the license. The quality control "issue" would have been an issue with ICANN licensing the mark to third parties post-separation, as well. It may also be an issue now (albeit to a lesser extent) in the proposed license between ICANN and PTI. On your last point, after further thought, I tend to agree. "Doing something to" the IETF Trust is probably an overly aggressive way to phrase things. I've been thinking of a range of options, some of which would involve little or no change to the IETF Trust itself (and some of which do, or don't involve the IETF Trust at all). But I think it makes sense to understand the range of options and then we can make decisions about these options. More to follow. Greg On Tue, Aug 18, 2015 at 12:44 PM, Mueller, Milton L < milton.mueller@pubpolicy.gatech.edu> wrote:

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com]

Andrew Sullivan a little while ago. Many good and important things may reside in IETF RFCs, but the "identity of the IANA" is not one of them. That is not consistent with what trademarks stand for, or what trademark "source" means. A brand identity is associated with the entity that is responsible for carrying out a service

MM: This is where you go off the track, in my opinion. “The IANA” as the IETF defines it is not a “service.” It is an authoritative role regarding protocol compatibility that is defined in the RFC I and others referenced. To quote:

To insure that such quantities have consistent values and interpretations in different implementations, their assignment must be administered by a central authority. For IETF protocols, that role is provided by the Internet Assigned Numbers Authority (IANA) (RFC 2434)

The IETF is the source of that role and of the protocols that require registries. The IANA Functions operator (IFO) is a service. It is semantically easy to confuse “The IANA’ with “The IANA Functions Provider” and people have often unwittingly used them interchangeably, but they are distinct and the distinction is pretty important in the current context.

For a copyright owner, it would make good commercial sense, since a bad cover version or movie would have a negative effect on value, but there's no legal requirement. For a patent owner, there's no overriding reason to do so. In contrast, quality control is the bedrock of trademark licensing. Without adequate quality control (and policing and enforcement) in contract and in fact, the trademark asset itself will become diluted and ultimately abandoned. So, any trademark owner, including the IETF Trust, must impose quality control standards over its licensees. It cannot be a passive

licensee.

MM: I look forward to the email you propose to write below. The key question is: is it possible, or is it not, for the sum and substance of the IETF Trust’s “quality control” to be *we will license the TM to whoever each operational community designates to be their IFO*? If it is not possible for IETF Trust to do this, how is it possible for ICANN (the incumbent IFO) to do it? And if it is possible, why not let’s figure out the best way to do it.

By the way that constraint on “quality control” – and only that – is what I mean by “making the IETF Trust accountable.” Accountability does not mean complex new structures that allow anyone in the world claiming to be an internet user to select IETF officers, or to review and approve IETF standards, nor does it mean new corporatist representational structures arbitrarily apportioning slots among different regions, operational communities, etc. etc.

Given the ICANN Board's recent announcement, there's really no reason to continue discussing ICANN retaining the marks

MM: Agreed. So, let’s not.

What makes sense at this point is to discuss what would need to be done to the IETF Trust

MM: I really don’t like that phrasing. ;-0 I don’t think we need to “do something to” the IETF Trust per se; we need to condition the transfer of the marks to it in a way that ensures that it respects the choices of the OCs as to who they want their IFO to be.

Do the IPR experts in the numbering community as well as other IPR experts agree with Greg’s assessment? If so, Is the following what is needed: “overhauling the IETF Trust so it is an appropriate brand owner for this brand in which we have distinct interests”? Chuck From: cwg-stewardship-bounces@icann.org [mailto:cwg-stewardship-bounces@icann.org] On Behalf Of Jonathan Robinson Sent: Friday, August 14, 2015 3:13 AM To: 'Greg Shatan' Cc: cwg-stewardship@icann.org Subject: Re: [CWG-Stewardship] Update on IANA IPR Greg, Thanks. I have to attribute the addition of D to Lise ☺ Apologies, I didn’t fact check it o thank you for spotting it. However, I did write bullet C and your point in each case is well made. Please note that the note below is intended to convey the sense of what was discussed and to that extent is accurate. That said, hard facts such as you provide are useful to make sure we stay pn track and accurate in what we say witth any of this work. That was one reason I attached the notes Lise and I worked from. To make sure we had a common reference point on some of the facts. I think you also highlight the value in having someone with the relevant expertise comment on the discussion and, ideally be involved in any discussion to point out some of the key IP issues and facts. Jonathan From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: 13 August 2015 23:00 To: Jonathan Robinson <jrobinson@afilias.info<mailto:jrobinson@afilias.info>> Cc: cwg-stewardship@icann.org<mailto:cwg-stewardship@icann.org> Subject: Re: [CWG-Stewardship] Update on IANA IPR I wanted to note some statements which appear to be factually inaccurate. In "D," you state that the IETF Trust "is for the public benefit and the global internet society." I do not see that in the trust document. The sole Beneficiary of the IETF Trust is the IETF (see Article IV of the Trust Agreement). in other words, the Trust is for the benefit of the IETF. This cannot be ignored. The Purpose of the Trust is "the advancement of education and public interest by acquiring, maintaining and licensing certain existing and future intellectual property and other property used in connection with the Internet standards process and its administration, for the advancement of the science and technology associated with the Internet and related technology." Although this goes beyond benefiting the IETF, this does not support the statement in D either. It should also be noted that all the Trustees of the IETF Trust are members of the IETF Admin Committee. As such, it's clear that this is an IETF-centric trust, which is not consistent with owning an asset that is used in connection with the needs of all three communities. In "C," you state that "an underlying motivation was that the IPR should be held somehow “in trust” for future use by the relevant users of that IPR." This ignores the essential nature of what trademarks are. A trademark cannot be held in a a neutral manner "in trust" (although it can be owned by a Trust). A trademark is an identity, which must be actively assumed. A brand owner is the proprietor of the trademark and the businesses identified by the trademark, and needs to assume the obligations that come with donning that identity. For example, if you buy the Ralph Lauren trademark, then (for business purposes), you become Ralph Lauren. (He may be able sell clothes, etc. under the name Ralph Lipschitz, but not Ralph Lauren.) Here, if the IETF Trust takes over the INTERNET ASSIGNED NUMBERS AUTHORITY and IANA trademark d the trademarks transferred to the IETF Trust, the IETF Trust becomes the INTERNET ASSIGNED NUMBERS AUTHORITY. The IETF Trust is ultimately responsible for monitoring and assuring the quality of the work product and services of any licensee using the brand (currently ICANN). ICANN is then a mere licensee, providing services by permission of the IETF Trust under the IANA brand, which is an IETF Trust brand (just like Vaseline is a Unilever brand). By no means is ICANN the Internet Assigned Numbers Authority anymore. Second, you do not state who the "relevant users" of the IPR are. Currently, the only entity using the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY trademarks as a trademark is ICANN. (Referring to IANA in an RFC is using it as a name ("nominative use") not using as a trademark to brand their work product.) I suppose the "future users" would be any replacements for ICANN -- but then it is not really being held "in trust" by the IETF Trust; the IETF Trust would continue to be the IANA brand owner and the "future users" would continue to be mere licensees, operating under the oversight and control of the IETF Trust, which in turn is accountable only to the IETF. Perhaps it's entirely acceptable to the CWG that the Internet Assigned Numbers Authority identity shift from ICANN to the IETF Trust, and that the IETF Trust becomes responsible for brand protection and quality control of all INTERNET ASSIGNED NUMBERS AUTHORITY and IANA brand services. Perhaps we have no choice but to find it acceptable, or to try to find ways to make it acceptable during the implementation phase (e.g., by overhauling the IETF Trust so it is an appropriate brand owner for this brand in which we have distinct interests) It certainly seems acceptable to the numbers and names community. But we should at least be accurate about what is happening. Greg On Thu, Aug 13, 2015 at 3:52 PM, Jonathan Robinson <jrobinson@afilias.info<mailto:jrobinson@afilias.info>> wrote: All, Following the last CWG meeting, your co-chairs reached out to the chairs of the CRISP & IANAPLAN teams as well as the ICG chairs in order to discuss the overarching management of the IANA IPR issue. The purpose of the discussion was to focus, not on the substance of the issue, but rather to best understand the different backgrounds, the current status and the prospective routes forward, given where we are today. From the perspective of the co-chairs of the CWG, a number of key points emerge as follows: 1. There seemed to be an overarching sensitivity to where we ALL are in the process and the requirement to not let this IANA IPR issue derail us from a “programme management” perspective. 2. A second overarching point, directly related to 1 above, is the desire (and effectively a requirement) not to do anything which will necessitate change any of the three RFP responses such that this change would require one or more of the three RFP respondents (names, numbers, protocols) to have to go back through their respective community processes with the associated risk of delaying the transition. 3. Through the current public comment period on the ICG proposal, there is the opportunity (for the CWG) to comment on the ICG proposal, but subject to 1 & 2 above. We also sought to better understand the various tracks of work (including that of the CWG) which have seen us arrive at this point and some of the detail in that work. Key points from that include: A. That there is a form of “backstop position” in the CRISP proposal that the IPR must not reside within the IFR in future. This underlying motivation derives from two points: a. In order to facilitate a smooth potential future transition of the IANA function b. To ensure that the IPR will be used in a non-discriminatory manner. B. An underlying motivation was that the IPR should be held somehow “in trust” for future use by the relevant users of that IPR C. That there seemed to be a strongly held view that the Sidley interpretation whereby ICANN could retain the IPR AND that this would be consistent with the CRISP proposal was not accurate. The argument presented being that ICANN is in fact the IANA Functions Operator, at least in in the case of numbers. D. The IETF is willing to be the holder of the IPR in the IETF trust which is for the public benefit and the global internet society. Therefore no conflict is envisaged by having the IPR held within the IETF Trust. Finally, we considered some next steps / actions as follows: - That the same group agree to talk again in approximately one week - CRISP is likely to prepare and share some responses to the Sidley memo on IPR - We can expect to see some further detail / information on the IETF Trust - ICG & CRISP offers any knowledge, information and assistance that they can reasonably provide - A request for any guidance on timelines from the CWG In summary, it seems that we (the CWG) need to separate our prospective contribution to implementation from any comment we may wish to make now – effectively to the ICG proposal. For now, we need to focus our attention on the ICG document and the urgent requirement is to consider whether or not the ICG proposal is consistent with the responses received and, if not, what comment we wish to submit. Moreover, to be mindful that any such comment must not require any of the three RFP responses to be referred back to the relevant responding community if we are to retain the current overarching timetable. Put simply, what can usefully be done now and what can usefully be done later during the implementation phase. For your reference, we have included some relevant extracts from the CRISP response, the ICG proposal and the Sidley memo which we have used in thinking about this issue. Thank-you Jonathan & Lise _______________________________________________ CWG-Stewardship mailing list CWG-Stewardship@icann.org<mailto:CWG-Stewardship@icann.org> https://mm.icann.org/mailman/listinfo/cwg-stewardship

Thanks Alan, On 1. Yes, IFO not IFR. Apologies. On2. Noted. Jonathan -----Original Message----- From: Alan Greenberg [mailto:alan.greenberg@mcgill.ca] Sent: 13 August 2015 23:08 To: jrobinson@afilias.info; cwg-stewardship@icann.org Subject: Re: [CWG-Stewardship] Update on IANA IPR Jonathan, two things. 1. I presume in point A you meant IFO not IFR. 2. On point C, Sharon understood that they were wrong on this when I pointed out that from the numbers community point of view, they would be contracting with ICANN and regardless of who ICANN sub-contracted to, ICANN was THEIR IFO. It is unfortunate that the memo was not altered to reflect that. Alan At 13/08/2015 03:52 PM, Jonathan Robinson wrote:

All,

Following the last CWG meeting, your co-chairs reached out to the chairs of the CRISP & IANAPLAN teams as well as the ICG chairs in order to discuss the overarching management of the IANA IPR issue. The purpose of the discussion was to focus, not on the substance of the issue, but rather to best understand the different backgrounds, the current status and the prospective routes forward, given where we are today.

From the perspective of the co-chairs of the CWG, a number of key points emerge as follows:

1. There seemed to be an overarching sensitivity to where we ALL are in the process and the requirement to not let this IANA IPR issue derail us from a "programme management" perspective. 2. A second overarching point, directly related to 1 above, is the desire (and effectively a requirement) not to do anything which will necessitate change any of the three RFP responses such that this change would require one or more of the three RFP respondents (names, numbers, protocols) to have to go back through their respective community processes with the associated risk of delaying the transition. 3. Through the current public comment period on the ICG proposal, there is the opportunity (for the CWG) to comment on the ICG proposal, but subject to 1 & 2 above.

We also sought to better understand the various tracks of work (including that of the CWG) which have seen us arrive at this point and some of the detail in that work. Key points from that include:

A. That there is a form of "backstop position" in the CRISP proposal that the IPR must not reside within the IFR in future. This underlying motivation derives from two points: a. In order to facilitate a smooth potential future transition of the IANA function b. To ensure that the IPR will be used in a non-discriminatory manner. B. An underlying motivation was that the IPR should be held somehow "in trust" for future use by the relevant users of that IPR C. That there seemed to be a strongly held view that the Sidley interpretation whereby ICANN could retain the IPR AND that this would be consistent with the CRISP proposal was not accurate. The argument presented being that ICANN is in fact the IANA Functions Operator, at least in in the case of numbers. D. The IETF is willing to be the holder of the IPR in the IETF trust which is for the public benefit and the global internet society. Therefore no conflict is envisaged by having the IPR held within the IETF Trust.

Finally, we considered some next steps / actions as follows:

- That the same group agree to talk again in approximately one week - CRISP is likely to prepare and share some responses to the Sidley memo on IPR - We can expect to see some further detail / information on the IETF Trust - ICG & CRISP offers any knowledge, information and assistance that they can reasonably provide - A request for any guidance on timelines from the CWG

In summary, it seems that we (the CWG) need to separate our prospective contribution to implementation from any comment we may wish to make now - effectively to the ICG proposal. For now, we need to focus our attention on the ICG document and the urgent requirement is to consider whether or not the ICG proposal is consistent with the responses received and, if not, what comment we wish to submit. Moreover, to be mindful that any such comment must not require any of the three RFP responses to be referred back to the relevant responding community if we are to retain the current overarching timetable. Put simply, what can usefully be done now and what can usefully be done later during the implementation phase.

For your reference, we have included some relevant extracts from the CRISP response, the ICG proposal and the Sidley memo which we have used in thinking about this issue.

Thank-you

Jonathan & Lise

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

I just had a stunning sense of *déjà vu*. Leading to a sense of clarity. An entity external to ICANN, taking over the IANA brand and identity, leaving ICANN as a mere licensee, entering into a contract with ICANN where that external entity exercises oversight and control over IANA services (including the ability to find ICANN in default of that contract and ultimately the ability to enter into a contract with someone other than ICANN for those services). We had a name for that entity in our first draft proposal. Contract Co. So, it appears that we have found our Contract Co. and its name is the IETF Trust. I guess we were right the first time, and we were ahead of our time (even though it appeared the CWG was lagging behind). I suppose that this is actually a reasonable outcome (after all, it seemed reasonable to me 6 months ago). We just need to make sure that we resolve the concerns we had about Contract Co. the first time around (as well as the concerns we have specifically identified this time around with regard to the IETF Trust specifically). Congratulations to the supporters of Contract Co. Our time has come again! I will toast this with some Fresh Direct spring water. I'm sure they don't actually bottle it. But it's got their brand on it, so as far as I'm concerned it's from Fresh Direct and I trust their quality. So, bottom's up! Cheers, Greg On Thu, Aug 13, 2015 at 6:21 PM, Mueller, Milton L < milton.mueller@pubpolicy.gatech.edu> wrote:

Jonathan

I think this is an appropriate and reasonable approach to the situation right now. In particular I am very happy that the co-chairs recognize points #2 (don’t send an OC into another process), A (CRISP proposal as backstop), and C (Sidley interpretation about compatibility of CRISP and ICANN holding the IPR is incorrect).

As an ICG member I look forward to receiving CWG comments subject to the constraints you specify. I do believe ICG got it right when it said that we have a compatible situation as long as CWG does not arrive at a consensus position against what was proposed by CRISP. It would probably be most constructive for CWG to propose specific additions or details to the proposal of IETF Trust as home for the IPR that would address the problems that some of our CWG members have raised, rather than trying to push us all back to the drawing board.

From the perspective of the co-chairs of the CWG, a number of key points emerge as follows:

1. There seemed to be an overarching sensitivity to where we ALL are in the process and the requirement to not let this IANA IPR issue derail us from a “programme management” perspective.

2. A second overarching point, directly related to 1 above, is the desire (and effectively a requirement) not to do anything which will necessitate change any of the three RFP responses such that this change would require one or more of the three RFP respondents (names, numbers, protocols) to have to go back through their respective community processes with the associated risk of delaying the transition.

3. Through the current public comment period on the ICG proposal, there is the opportunity (for the CWG) to comment on the ICG proposal, but subject to 1 & 2 above.

We also sought to better understand the various tracks of work (including that of the CWG) which have seen us arrive at this point and some of the detail in that work. Key points from that include:

A. That there is a form of “backstop position” in the CRISP proposal that the IPR must not reside within the IFR in future. This underlying motivation derives from two points:

a. In order to facilitate a smooth potential future transition of the IANA function

b. To ensure that the IPR will be used in a non-discriminatory manner.

B. An underlying motivation was that the IPR should be held somehow “in trust” for future use by the relevant users of that IPR

C. That there seemed to be a strongly held view that the Sidley interpretation whereby ICANN could retain the IPR AND that this would be consistent with the CRISP proposal was not accurate. The argument presented being that ICANN is in fact the IANA Functions Operator, at least in in the case of numbers.

D. The IETF is willing to be the holder of the IPR in the IETF trust which is for the public benefit and the global internet society. Therefore no conflict is envisaged by having the IPR held within the IETF Trust.

Finally, we considered some next steps / actions as follows:

- That the same group agree to talk again in approximately one week

- CRISP is likely to prepare and share some responses to the Sidley memo on IPR

- We can expect to see some further detail / information on the IETF Trust

- ICG & CRISP offers any knowledge, information and assistance that they can reasonably provide

- A request for any guidance on timelines from the CWG

In summary, it seems that we (the CWG) need to separate our prospective contribution to implementation from any comment we may wish to make now – effectively to the ICG proposal. For now, we need to focus our attention on the ICG document and the urgent requirement is to consider whether or not the ICG proposal is consistent with the responses received and, if not, what comment we wish to submit. Moreover, to be mindful that any such comment must not require any of the three RFP responses to be referred back to the relevant responding community if we are to retain the current overarching timetable. Put simply, what can usefully be done now and what can usefully be done later during the implementation phase.

For your reference, we have included some relevant extracts from the CRISP response, the ICG proposal and the Sidley memo which we have used in thinking about this issue.

Thank-you

Jonathan & Lise

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

Milton, My responses are below. On Thu, Aug 13, 2015 at 7:00 PM, Mueller, Milton L < milton.mueller@pubpolicy.gatech.edu> wrote:

An entity external to ICANN, taking over the IANA brand and identity, leaving ICANN as a mere licensee, entering into a contract with ICANN where that external entity exercises oversight and control over IANA services (including the ability to find ICANN in default of that contract and ultimately the ability to enter into a contract with someone other than ICANN for those services).

Greg:

What a desperate rhetorical ploy.

​GS: Milton, you let your cynicism get the better of you. This is a legitimate analysis and characterization of the situation. I'm still working out the nuances, but the similarities far outweigh the differences. ​I thought you would be happy that I'm coming to terms with the potential viability of the CRISP/ICG proposal to sgtrip ICANN of the IANA brand identity and allow a third party to assume that identity.

IETF Trust does not select the IFO for names.

​ GS: I did not say they did​. However, the IETF Trust controls the ability of any IFO to operate under the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY names and marks.

Only the IFR process has the ability to change the operator, which by default is PTI. IETF Trust has no control over the names community-based IFR.

​GS: Milton, you are partially right here. IETF Trust cannot force the names community to use a different IFO. However, IETF Trust does not need to control the IFR to control ICANN's ability to hold itself out as the IANA or as the Internet Assigned Numbers Authority. The IETF Trust ​controls that ability as an essential aspect of its role as the owner of these brands. As Alan Greenberg just pointed out, the new IFO chosen by the names community could not call itself IANA or claim to be providing IANA brand services unless the IETF Trust granted the new operator a trademark license. Conversely, IETF Trust could terminate its license to ICANN, at which point ICANN would have to cease use of these brands and would presumably be cut off from using the iana.org domain name as well (which at that time would be owned by IETF Trust. IETF Trust does not “exercise oversight and control over IANA services” it

merely allows PTI to use the TM and domain as long as it is the IFO.

​GS: Here is where you are dead wrong. A trademark owner has an absolute legal obligation to exercise oversight and control over the quality of goods and services offered by licensees under the owner's trademark. This obligation is not waivable and must​ ​be actively exercised. Typically, such exercise includes the creation of quality control standards, approvals of new services or changes to the method of creation or delivery of services, periodic inspections, etc. The performance of these obligations may be delegated but the ultimate responsibility remains with the brand owner (and, if delegated, the delegee must be appropriately supervised so that the quality control ultimately tracks back to the brandowner. There is no such thing in trademark law as "merely allowing" a third party to hold themselves out as providing services under and/or bearing the owner's trademark. (A non-trademark use (such as a "nominative" use to refer to the brandowner itself by using the trademark) is beyond the reach of the trademark owner to allow or disallow.) If PTI ​breaches its license agreement from the IETF Trust and fails to cure, then IETF Trust can (and must, if it is tied to the exercise of its quality control obligations) terminate that license, which ends the right of PTI to use IANA or Internet Assigned Numbers Authority as a trademark or trade name. This can be mitigated somewhat in the specific license, but a brandowner must ultimately retain discretion to terminate licensees that fail to meet satisfy the brandowner's quality controls. If this right is completely removed, the brandowner no longer has the ability to take all measures necessary to control quality, which then leads to a potential finding of abandonment and loss of trademark rights. If you think we need to build on the proposal to ensure that limited role

for IETF Trust then try to be constructive and make modifications or additions to what CRISP team proposed to ensure that outcome. Don’t invent scare stories. What is there to back up your assertion that IETF Trust would have the “ability to enter into a contract with someone other than ICANN for [names-related IANA] services.” Nothing.

​GS: I have already provided a detailed email suggesting some of the modifications to the IETF Trust that would make it an appropriate owner of the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY. I've also pointed out, as have others, that the IETF Trust must be accountable to the names community (and the numbers community) if it takes on this role. Accountability is not just for dysfunctional entities. The IETF Trust may function superbly and without fear or favor, but it still needs a framework of accountability, given the importance of its role if it were to assume control of the IANA identity and all the obligations that come with being a brandowner. I'm not trying to engage in "scare stories." I"m trying to spot issues. I'm not saying these issues are insurmountable, but they need to be acknowledged and not ignored. Only by acknowledging issues can we resolve them. Under the ICG plan, the IETF Trust's innate obligation as the brandowner to control the quality of IANA's services, and its innate right to terminate PTI's grant of rights to use the IANA brand as its name and mark, and its innate right to grant third parties the right to use the mark and to withhold such grants of rights are all issues we need to confront and control, as best one can within the bounds of the law, in order to make the ICG's proposal viable. I'm happy to delve further into what those solutions might be. But not tonight. ​

Andrew, I would have agreed with your statement 3 days ago when you made it -- but I was offline most of the weekend (due to a funeral and shiva for a good friend's mother). Given the CRISP Team's statement today, I'm far from certain that agreeing to "an entity that is not the IFO" is enough to satiate CRISP. While you and I (and the ICANN Board) seem to believe that the identity and contours of such entity can be an implementation matter, the CRISP Team's latest pronouncement seems to leave less latitude. That probably makes your last point -- that the implementation does require some mechanism of accountability to each community about its use of the relevant IPR that probably needs to be hammered out in at least its broad outlines fairly quickly ​ -- all the more important​. If the IETF Trust can be altered to fit those mechanisms (whatever they may be), it's important to know that. If it can't, that's even more important to know. We shall see.... Greg On Fri, Aug 14, 2015 at 8:27 PM, Andrew Sullivan <ajs@anvilwalrusden.com> wrote:

Hi,

I'm using Greg's message becuase it's handy and highlights an important fact, but this is really to everyone.

On Fri, Aug 14, 2015 at 12:59:56AM -0400, Greg Shatan wrote:

...

the IANA and INTERNET ASSIGNED NUMBERS AUTHORITY. I've also pointed out, as have others, that the IETF Trust must be accountable to the names community (and the numbers community) if it takes on this role.

On re-reading this thread just now, I thinK I detect some emerging agreement. If I'm understanding things correctly, it looks to me like people are agreeing that something consistent with the existing ICG proposal (an entity that is not the IFO) is possible in some cases, that the CWG can handle that as a matter of implementation and therefore maybe doesn't need to say anything to the ICG, and that the implementation does require some mechanism of accountability to each community about its use of the relevant IPR that probably needs to be hammered out in at least its broad outlines fairly quickly. Does that seem fair?

Best regards,

A

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

Hi, On 14-Aug-15 01:00, Mueller, Milton L wrote:

. IETF Trust does not “exercise oversight and control over IANA services” it merely allows PTI to use the TM and domain as long as it is the IFO.

I believe that it has to be something stronger than merely 'allows.' There needs to be contractual arrangements that mandate that they do so. Without that, I do not think there is a solution yet. avri --- This email has been checked for viruses by Avast antivirus software. https://www.avast.com/antivirus

​The issues I've raised are​ neither exaggerations nor scare tactics. They are legitimate concerns to be worked through and resolved. As I've indicated before, none of them are insurmountable. Whoever owns the IANA trademarks and domain names needs to be accountable to all three communities. Greg On Fri, Aug 14, 2015 at 12:39 PM, Mueller, Milton L < milton.mueller@pubpolicy.gatech.edu> wrote:

...

-----Original Message----- I believe that it has to be something stronger than merely 'allows.' There needs to be contractual arrangements that mandate that they do so. Without that, I do not think there is a solution yet.

I think that's fine, and doubt if many others involved would disagree. If people propose these kinds of specifics rather than indulging Greg's exaggerations and scare tactics we might make some progress.

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