By the way, here is the IETF's license to Association Management Services, a third party entity providing secretariat services to the IETF. I would be curious to know what people think of the quality control provisions (i.e., relating to the quality of goods and services, as distinguished from provisions relating to trademark usage), and of the license generally -- at least as a trademark license. Greg On Wed, Aug 19, 2015 at 3:13 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
See http://trustee.ietf.org/IETFtrustAgreement20051208.pdf Pages 11-13.
*Jeffrey J. Neuman*
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*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:04 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com> *Cc:* Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Jeff Neuman < jeff.neuman@valideus.com>; trachtenbergm@gtlaw.com; PMC Grady < pmcgrady@winston.com>
*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Goodwill always needs to be assigned with a trademark (at least under US law). That said, I can't see any reason to expect or even suspect that the IANA Trademarks will be transferred to a third party without the goodwill appurtenant to the marks.
Jeff -- if you recall, what was the "IP associated with the IETF Secretariat functions"? Was the IETF trademark (and/or the IETF SECRETARIAT trademark) part of that IP?
It should be noted that the IETF Trust only owns three trademark registrations, one for IETF, one for the IETF logo and one for IETF SECRETARIAT (which it has explicitly decided to abandon). There is only one licensee of the IETF trademarks -- to the IETF Secretariat. I'm not sure that indicates any specific expertise in trademark license (noting also that the IETF Trust does not appear to have any employees, and thus no employees who would embody that expertise).
Greg
On Wed, Aug 19, 2015 at 1:18 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:
Anne,
The IETF Trust was set up solely to manage the IP of the IETF. To make a very long story short, It was a quid pro quo during the negotiations between Bob Kahn’s who claimed to own the IP associated with the IETF Secretariat functions, the IETF and ISOC leadership and Neustar who offered to buy the Secretariat functions from Bob, but assign the IP rights to the IETF Trust. Bob Kahn, for his own reasons, did not trust the ISOC or IETF leadership to manage the IP at the time and wanted to ensure there was a neutral entity that was established to manage the IP in the public interest. Steve Crocker and I, on a flight back from an ICANN meeting in Argentina, created the idea of the IETF Trust (and the initial set up documents) to ease the concerns of Bob while at the same time ensuring that the IP could be licensed to the IETF.
All that aside, I still have the same questions (which Clarke also raised). And that is the so what. Let’s assume the worst and the IANA name is trashed for whatever reason. The IANA function is a unique function which does not rely on its name. You could rebrand the function ZZXYA, and that still would have little if any impact on the users of the service. Aside from getting a new domain name (and learning how to pronounce that new name J), it would have no effect on the users of the service. It’s not a consumer product or service. No one outside the industry knows the name anyway.
I understand in the normal corporate transaction assigning the goodwill associated with a transfer of the name is critical. I am just not sure of whether that applies here at all.
I am still waiting for a tangible example that someone has where it would cause a huge issue.
*Jeffrey J. Neuman*
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*From:* Aikman-Scalese, Anne [mailto:AAikman@lrrlaw.com] *Sent:* Wednesday, August 19, 2015 1:03 PM *To:* Jeff Neuman <jeff.neuman@valideus.com>; trachtenbergm@gtlaw.com; PMC Grady <pmcgrady@winston.com> *Cc:* gregshatanipc@gmail.com
*Subject:* RE: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Jeff, just a note that Paul’s observations about the QC issue are very important since a transfer of the marks without the good will renders the transfer void and any license without real QC is a “naked license” and likewise unenforceable. There is no reason IETF would know this. For some reason I thought that Trust was formed to develop technical protocol, not to manage IP, but you would know better than I.
Anne
*Anne E. Aikman-Scalese, Of Counsel*
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*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org <ipc-gnso-bounces@icann.org>] *On Behalf Of *Jeff Neuman *Sent:* Wednesday, August 19, 2015 8:41 AM *To:* trachtenbergm@gtlaw.com; PMcGrady@winston.com *Cc:* ipc-gnso@icann.org *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Quick Correction – I think the SLEs we have been working on may be for the CWG as opposed to the CCWG. It gets incredibly confusing. So all references in my emails below to CCWG should really be CWG.
Thanks.
*Jeffrey J. Neuman*
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*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org <ipc-gnso-bounces@icann.org>] *On Behalf Of *Jeff Neuman *Sent:* Wednesday, August 19, 2015 9:42 AM *To:* trachtenbergm@gtlaw.com; PMcGrady@winston.com *Cc:* ipc-gnso@icann.org *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Understood. That is more of a question for the CCWG, so I will throw this over to Greg now.
*Jeffrey J. Neuman*
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@Jintlaw
*From:* trachtenbergm@gtlaw.com [mailto:trachtenbergm@gtlaw.com <trachtenbergm@gtlaw.com>] *Sent:* Wednesday, August 19, 2015 9:20 AM *To:* PMcGrady@winston.com; jeff.neuman@valideus.com *Cc:* ipc-gnso@icann.org *Subject:* RE: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
And the plan should include what actions will be taken when 3rd parties use the mark without permission. Ultimately budget will also need to be set aside for such enforcement by whoever is doing it.
Best regards,
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*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org <ipc-gnso-bounces@icann.org>] *On Behalf Of *McGrady, Paul D. *Sent:* Wednesday, August 19, 2015 6:54 AM *To:* Jeff Neuman *Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Thanks Jeff. Yes, I think it would be good to see the report as soon as practical. Good to know that the community will be monitoring SLEs. However, that won’t absolve the trademark owner/licensor from doing so and the QC’s have to have teeth. Since we will be handing a set of teeth to someone, I think there needs to be some real thought put into it and a plan published for public comment before it happens.
*From:* Jeff Neuman [mailto:jeff.neuman@valideus.com] *Sent:* Wednesday, August 19, 2015 6:45 AM *To:* McGrady, Paul D. *Cc:* Aikman-Scalese, Anne; Greg Shatan; IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Paul,
Ok, if the concerns are around service levels, I totally get that. That has been separated from the monitoring of the trademarks. I have been working in a small group chartered by the CCWG and working with IANA/ICANN to come up with a framework for Service Levels that will be monitored by the community. The group consisted of three ccTLDs and three reps from the gTLDs and chaired by Paul Kane. Yesterday was hopefully our last call before we release the subgroup report to the CCWG, who in turn will put it out for public comment shortly. The mailing list of the group is public.
It is important to note that we developed a framework and in some cases the SLEs, but in other cases, since we have asked for things that have not been measured before, we are waiting for IANA to build the capability to measure these items before coming back and setting the actual SLEs based on past performance and industry norms.
It is also important to note that the subgroup was not chartered to develop the penalties associated with breaching the SLEs. That will be for the CCWG to determine at a later point. If anyone wants to see the current draft, I am happy to send around, but will ask for a couple of days while the draft is cleaned up to reflect the discussions yesterday.
I hope that helps.
Best regards,
Jeff
Sent from my iPad
On Aug 19, 2015, at 6:27 AM, McGrady, Paul D. <PMcGrady@winston.com> wrote:
Hi Jeff,
I don’t think it takes a lot of imagination to conjure up the mischief that can be caused by someone using IANA knockoff domain names, logos and copyrights. Who will police those? IANA or the Trust? If IANA, how will the Trust ensure that IANA’s efforts are sufficient.
With regard to quality control, what level of quality is associated now with the IANA trademark (e.g. customer service levels, consistent performance, etc.) and how will the Trust monitor IANA’s future performance to ensure that the levels now associated with it remain the same throughout the term of the license back arrangement? If IANA’s performance under an un-supervised ICANN, for example, IANA pulling a TLD out of the root under political pressure, falls below the quality associated with the mark now, what will the Trust do and will it have the requisite power in the license to do so?
The bottom line here is that, once again, ICANN has shown a fundamental ignorance of how trademarks work. You can’t separate the mark from the goodwill and you can’t license without quality control standards. Trademarks aren’t patents, no matter how many engineers sit on the ICANN Board.
So, who are these IETF Trust people and why would anyone hand them this kind of power without knowing who they are and who they would be accountable to?
Best,
Paul
*From:* Jeff Neuman [mailto:jeff.neuman@valideus.com <jeff.neuman@valideus.com>] *Sent:* Tuesday, August 18, 2015 8:33 PM *To:* Aikman-Scalese, Anne *Cc:* Greg Shatan; McGrady, Paul D.; IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
All,
The IETF Trust was specifically formed to manage and control the Intellectual Property of the IETF. I was involved in the creation of the Trust along with Steve Crocker, ISOC Leadership, Bob Kahn, as well as the then IETF Chair, and trademark counsel the IETF leadership and others. An amendment would need to be required in order for them to manage the IP Rights of the IANA organization, but that does not seem to be too complicated. The IETF's Trust's sole reason for existence was to manage IP so they should have the expertise. Granted I have not followed the evolution of the Trust over the past five years or so, but they should have the expertise.
But let me ask a fundamental question. What quality control are we really worried about here in terms of use of the trademark rights? I have been racking my brain trying to think of the possible parade of horribles that might occur if IANA is not able to control the use of the IANA trademark. can there really be infringement of the IANA mark which may not arguably be used in commerce? even if there is a use of the mark by others, Are we worried that others may believe that some other entity is the real IANA if the other entity uses the IANA name? I would think the accountability measures within the community are too strong for that (not to mention the sophistication of the IANA user base - the registries and the IETF itself.
I am only playing devil's advocate here, but what are practical concerns we are worried about?
Sent from my iPad
On Aug 18, 2015, at 8:52 PM, Aikman-Scalese, Anne <AAikman@lrrlaw.com> wrote:
Good question by Paul – seems this would require an amendment to the terms of the IETF Trust. Also not sure this falls within their expertise. If they hold the trademark, they have to license it and put the quality control provisions in the license, right?
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*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org <ipc-gnso-bounces@icann.org>] *On Behalf Of *Greg Shatan *Sent:* Tuesday, August 18, 2015 1:51 PM *To:* McGrady, Paul D. *Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
ICANN has not proposed a particular third party. The CRISP Team, representing the numbers community, has proposed the IETF Trust. The IANAPLAN Team, representing the protocol parameters community (aka the IETF), was silent on the IANA trademarks; when asked by the ICG whether they objected to the CRISP plan, they indicated they did not object, and that they were willing to have the IETF Trust serve in that role. It's not clear to me whether or to what extent either Team consulted trademark counsel or understood the ramifications of this proposal.
The CWG has not taken a position. A rough consensus seems to be emerging that some third party (not necessarily the IETF Trust) would be acceptable, if appropriate accountability measures were put in place (i.e., that the third party would be accountable to the 3 operational communities). This is still an active discussion in the CWG. Many are pushing for it to be the IETF Trust. I am trying to get people to focus on the substantive concerns, with quality control chief among them (and policing and enforcement, default and termination powers not far behind).
Greg
On Tue, Aug 18, 2015 at 4:14 PM, McGrady, Paul D. <PMcGrady@winston.com> wrote:
Greg,
Which entity will be the assignee of the IANA trademark? In order for that to work, the assignee will need to have quality control power. Who is ICANN suggesting will retain quality control over the IANA mark? That is a very powerful position, indeed.
Best,
Paul
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*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] *On Behalf Of *Greg Shatan *Sent:* Tuesday, August 18, 2015 12:02 AM *To:* IPC-GNSO *Subject:* [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN
Steve Crocker issued a statement on behalf of the ICANN Board regarding the IANA Trademarks and domain names.
Greg
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