Jeff, Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license? Greg On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:

Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:24 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org

...

*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

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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

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E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

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M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*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*

*Lewis Roca Rothgerber LLP | *

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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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

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E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

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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,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020

Mobile 773.677.3305

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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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*Anne E. Aikman-Scalese, Of Counsel*

*Lewis Roca Rothgerber LLP | *

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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

*Paul D. McGrady Jr.*

*Partner *

*Chair, Trademark, Domain Names and Brand Enforcement Practice *

Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703

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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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I don't think Jeff was involved in setting up this particular license. I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use." I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled. Greg On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com> wrote:

Greg,

Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question.

Best,

Paul

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 2:35 PM *To:* Jeff Neuman *Cc:* IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com; McGrady, Paul D.

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license?

Greg

On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:

Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:24 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org

...

*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

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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

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E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

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M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*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*

*Lewis Roca Rothgerber LLP | *

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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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*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,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020

Mobile 773.677.3305

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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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*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 *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

*Paul D. McGrady Jr.*

*Partner *

*Chair, Trademark, Domain Names and Brand Enforcement Practice *

Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703

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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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Jeff, That's very helpful and useful. Thanks! I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor. I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific. Greg On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement).

Here is a sample of that agreement: https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ... (Note this may not be the latest).

So do not view the license in isolation.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:46 PM *To:* McGrady, Paul D. <PMcGrady@winston.com> *Cc:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Jeff Neuman < jeff.neuman@valideus.com>; trachtenbergm@gtlaw.com

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

I don't think Jeff was involved in setting up this particular license.

I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use."

I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled.

Greg

On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com> wrote:

Greg,

Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question.

Best,

Paul

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 2:35 PM *To:* Jeff Neuman *Cc:* IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com; McGrady, Paul D.

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license?

Greg

On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:

Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

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@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:24 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org

...

*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

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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@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*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*

*Lewis Roca Rothgerber LLP | *

*One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611*

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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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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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,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020

Mobile 773.677.3305

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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?

*<image002.gif>*

*Anne E. Aikman-Scalese, Of Counsel*

*Lewis Roca Rothgerber LLP | *

*One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611*

*(T) 520.629.4428 <520.629.4428> | (F) 520.879.4725 <520.879.4725>*

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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

*Paul D. McGrady Jr.*

*Partner *

*Chair, Trademark, Domain Names and Brand Enforcement Practice *

Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703

D: +1 (312) 558-5963

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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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Last email…sorry. The IETF also has this page set up: <http://trustee.ietf.org/licenses.html> http://trustee.ietf.org/licenses.html which provides additional information on the licensing of IETF Trust IP. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw From: ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 4:01 PM To: 'Greg Shatan' <gregshatanipc@gmail.com> Cc: 'IPC-GNSO' <ipc-gnso@icann.org> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name. I hope that helps. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Wednesday, August 19, 2015 3:54 PM To: Jeff Neuman <jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> > Cc: McGrady, Paul D. <PMcGrady@winston.com <mailto:PMcGrady@winston.com> >; Jeff Neuman <jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> >; IPC-GNSO <ipc-gnso@icann.org <mailto:ipc-gnso@icann.org> >; Aikman-Scalese, Anne <AAikman@lrrlaw.com <mailto:AAikman@lrrlaw.com> >; Marc Trachtenberg <trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> > Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, That's very helpful and useful. Thanks! I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor. I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific. Greg On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> > wrote: For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement). Here is a sample of that agreement: <https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ...> https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ... (Note this may not be the latest). So do not view the license in isolation. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 <tel:%2B1.703.635.7514> M: +1.202.549.5079 <tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> ] Sent: Wednesday, August 19, 2015 3:46 PM To: McGrady, Paul D. <PMcGrady@winston.com <mailto:PMcGrady@winston.com> > Cc: Jeff Neuman <jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> >; IPC-GNSO <ipc-gnso@icann.org <mailto:ipc-gnso@icann.org> >; Aikman-Scalese, Anne <AAikman@lrrlaw.com <mailto:AAikman@lrrlaw.com> >; Jeff Neuman <jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> >; trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN I don't think Jeff was involved in setting up this particular license. I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use." I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled. Greg On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com <mailto:PMcGrady@winston.com> > wrote: Greg, Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question. Best, Paul From: Greg Shatan [mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> ] Sent: Wednesday, August 19, 2015 2:35 PM To: Jeff Neuman Cc: IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> ; McGrady, Paul D. Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license? Greg On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> > wrote: Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 <tel:%2B1.703.635.7514> M: +1.202.549.5079 <tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> ] Sent: Wednesday, August 19, 2015 3:24 PM To: Jeff Neuman <jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> >; IPC-GNSO <ipc-gnso@icann.org <mailto:ipc-gnso@icann.org> > Cc: Aikman-Scalese, Anne <AAikman@lrrlaw.com <mailto:AAikman@lrrlaw.com> >; Jeff Neuman <jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> >; trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> ; PMC Grady <pmcgrady@winston.com <mailto:pmcgrady@winston.com> > Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN 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 <mailto:jeff.neuman@comlaude.com> > wrote: See <http://trustee.ietf.org/IETFtrustAgreement20051208.pdf> http://trustee.ietf.org/IETFtrustAgreement20051208.pdf Pages 11-13. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 <tel:%2B1.703.635.7514> M: +1.202.549.5079 <tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com <mailto:gregshatanipc@gmail.com> ] Sent: Wednesday, August 19, 2015 3:04 PM To: Jeff Neuman <jeff.neuman@comlaude.com <mailto:jeff.neuman@comlaude.com> > Cc: Aikman-Scalese, Anne <AAikman@lrrlaw.com <mailto:AAikman@lrrlaw.com> >; Jeff Neuman <jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> >; trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> ; PMC Grady <pmcgrady@winston.com <mailto: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 <mailto: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 :)), 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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 <tel:%2B1.703.635.7514> M: +1.202.549.5079 <tel:%2B1.202.549.5079> @Jintlaw From: Aikman-Scalese, Anne [mailto:AAikman@lrrlaw.com <mailto:AAikman@lrrlaw.com> ] Sent: Wednesday, August 19, 2015 1:03 PM To: Jeff Neuman <jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> >; trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> ; PMC Grady <pmcgrady@winston.com <mailto:pmcgrady@winston.com> > Cc: gregshatanipc@gmail.com <mailto: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 Lewis Roca Rothgerber LLP | One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611 (T) 520.629.4428 <tel:520.629.4428> | (F) 520.879.4725 <tel:520.879.4725> AAikman@LRRLaw.com <mailto:AAikman@LRRLaw.com> | www.LRRLaw.com <http://www.lrrlaw.com/> From: ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 8:41 AM To: trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> ; PMcGrady@winston.com <mailto:PMcGrady@winston.com> Cc: ipc-gnso@icann.org <mailto: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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 <tel:%2B1.703.635.7514> M: +1.202.549.5079 <tel:%2B1.202.549.5079> @Jintlaw From: ipc-gnso-bounces@icann.org <mailto:ipc-gnso-bounces@icann.org> [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 9:42 AM To: trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> ; PMcGrady@winston.com <mailto:PMcGrady@winston.com> Cc: ipc-gnso@icann.org <mailto: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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: <mailto:jeff.neuman@valideus.com> jeff.neuman@valideus.com or <mailto:jeff.neuman@comlaude.com> jeff.neuman@comlaude.com T: +1.703.635.7514 <tel:%2B1.703.635.7514> M: +1.202.549.5079 <tel:%2B1.202.549.5079> @Jintlaw From: trachtenbergm@gtlaw.com <mailto:trachtenbergm@gtlaw.com> [mailto:trachtenbergm@gtlaw.com] Sent: Wednesday, August 19, 2015 9:20 AM To: PMcGrady@winston.com <mailto:PMcGrady@winston.com> ; jeff.neuman@valideus.com <mailto:jeff.neuman@valideus.com> Cc: ipc-gnso@icann.org <mailto: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, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 <tel:312.456.1020> Mobile 773.677.3305 <tel:773.677.3305> <mailto:trachtenbergm@gtlaw.com> trachtenbergm@gtlaw.com | <http://www.gtlaw.com/> www.gtlaw.com From: ipc-gnso-bounces@icann.org <mailto:ipc-gnso-bounces@icann.org> [mailto: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] <mailto:[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 <mailto: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] 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 <mailto: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? <image002.gif> Anne E. Aikman-Scalese, Of Counsel Lewis Roca Rothgerber LLP | One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611 (T) 520.629.4428 <tel:520.629.4428> | (F) 520.879.4725 <tel:520.879.4725> AAikman@LRRLaw.com <mailto:AAikman@LRRLaw.com> | www.LRRLaw.com <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.lrrlaw.com_&d=AwMFAw...> From: ipc-gnso-bounces@icann.org <mailto:ipc-gnso-bounces@icann.org> [mailto: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 <mailto: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 Paul D. McGrady Jr. Partner Chair, Trademark, Domain Names and Brand Enforcement Practice Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703 D: +1 (312) 558-5963 <tel:%2B1%20%28312%29%20558-5963> F: +1 (312) 558-5700 <tel:%2B1%20%28312%29%20558-5700> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_en_who-2...> Bio | <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_vcards_9...> VCard | <mailto:pmcgrady@winston.com> Email | <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com&d=AwMFAw...> winston.com <image003.jpg> From: ipc-gnso-bounces@icann.org <mailto:ipc-gnso-bounces@icann.org> [mailto: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 ---------- Forwarded message ---------- From: David Olive <david.olive@icann.org <mailto:david.olive@icann.org> > Date: Sunday, August 16, 2015 Subject: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN To: "soac-infoalert@icann.org <mailto:soac-infoalert@icann.org> " <soac-infoalert@icann.org <mailto:soac-infoalert@icann.org> > https://www.icann.org/news/announcement-2015-08-15-en <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_anno...> Sent from my iPhone David A. Olive Vice President, Policy Development Support General Manager, ICANN Regional Headquarters –Istanbul Hakki Yeten Cad. 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Thanks Jeff. Thanks Greg. Sorry for racing to Jeff’s unneeded defense! From: ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Greg Shatan Sent: Wednesday, August 19, 2015 3:36 PM To: Jeff Neuman Cc: IPC-GNSO Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, Thanks for pointing that page out for everyone. That's where I got the IETF secretariat license from. There is a general form of trademark license on that page as well, which people might be interested in looking at. Greg On Wed, Aug 19, 2015 at 4:09 PM, Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>> wrote: Last email…sorry. The IETF also has this page set up: http://trustee.ietf.org/licenses.html which provides additional information on the licensing of IETF Trust IP. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto:ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org>] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 4:01 PM To: 'Greg Shatan' <gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>> Cc: 'IPC-GNSO' <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name. I hope that helps. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Wednesday, August 19, 2015 3:54 PM To: Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>> Cc: McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>>; Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; IPC-GNSO <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>>; Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Marc Trachtenberg <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, That's very helpful and useful. Thanks! I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor. I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific. Greg On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>> wrote: For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement). Here is a sample of that agreement: https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ... (Note this may not be the latest). So do not view the license in isolation. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 3:46 PM To: McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>> Cc: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; IPC-GNSO <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>>; Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN I don't think Jeff was involved in setting up this particular license. I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use." I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled. Greg On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>> wrote: Greg, Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question. Best, Paul From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 2:35 PM To: Jeff Neuman Cc: IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license? Greg On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>> wrote: Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 3:24 PM To: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; IPC-GNSO <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>> Cc: Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMC Grady <pmcgrady@winston.com<mailto:pmcgrady@winston.com>> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN 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<mailto:jeff.neuman@comlaude.com>> wrote: See http://trustee.ietf.org/IETFtrustAgreement20051208.pdf Pages 11-13. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 3:04 PM To: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMC Grady <pmcgrady@winston.com<mailto: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<mailto: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 ☺), 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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Aikman-Scalese, Anne [mailto:AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>] Sent: Wednesday, August 19, 2015 1:03 PM To: Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMC Grady <pmcgrady@winston.com<mailto:pmcgrady@winston.com>> Cc: gregshatanipc@gmail.com<mailto: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 [cid:image001.gif@01D0DA95.116A5D30] Anne E. Aikman-Scalese, Of Counsel Lewis Roca Rothgerber LLP | One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611 (T) 520.629.4428<tel:520.629.4428> | (F) 520.879.4725<tel:520.879.4725> AAikman@LRRLaw.com<mailto:AAikman@LRRLaw.com> | www.LRRLaw.com<http://www.lrrlaw.com/> From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 8:41 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@winston.com<mailto:PMcGrady@winston.com> Cc: ipc-gnso@icann.org<mailto: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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 9:42 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@winston.com<mailto:PMcGrady@winston.com> Cc: ipc-gnso@icann.org<mailto: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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> [mailto:trachtenbergm@gtlaw.com] Sent: Wednesday, August 19, 2015 9:20 AM To: PMcGrady@winston.com<mailto:PMcGrady@winston.com>; jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> Cc: ipc-gnso@icann.org<mailto: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, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020<tel:312.456.1020> Mobile 773.677.3305<tel:773.677.3305> trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Description: Greenberg Traurig] From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto: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]<mailto:[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<mailto: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] 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<mailto: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? <image002.gif> Anne E. Aikman-Scalese, Of Counsel Lewis Roca Rothgerber LLP | One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611 (T) 520.629.4428<tel:520.629.4428> | (F) 520.879.4725<tel:520.879.4725> AAikman@LRRLaw.com<mailto:AAikman@LRRLaw.com> | www.LRRLaw.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.lrrlaw.com_&d=AwMFAw...> From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto: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<mailto: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 Paul D. McGrady Jr. Partner Chair, Trademark, Domain Names and Brand Enforcement Practice Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703 D: +1 (312) 558-5963<tel:%2B1%20%28312%29%20558-5963> F: +1 (312) 558-5700<tel:%2B1%20%28312%29%20558-5700> Bio<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_en_who-2...> | VCard<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_vcards_9...> | Email<mailto:pmcgrady@winston.com> | winston.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com&d=AwMFAw...> <image003.jpg> From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto: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 ---------- Forwarded message ---------- From: David Olive <david.olive@icann.org<mailto:david.olive@icann.org>> Date: Sunday, August 16, 2015 Subject: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN To: "soac-infoalert@icann.org<mailto:soac-infoalert@icann.org>" <soac-infoalert@icann.org<mailto:soac-infoalert@icann.org>> https://www.icann.org/news/announcement-2015-08-15-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_announcement-2D2015-2D08-2D15-2Den&d=AwMFAw&c=HZc2iMNQt2jZf4ve7hXwXw&r=g-Ut6JOGy17wbmnsYgYhV-DKaEptxc_OLPHqqkf5y_g&m=qFXrnhUOADtruORSmpAEPeLPVJ4obIEpcBqk5uUJMQc&s=DW25W2bXFDi4OZhi8kvFBL5oHrKZQMveBptcsE-jstQ&e=> Sent from my iPhone David A. Olive Vice President, Policy Development Support General Manager, ICANN Regional Headquarters –Istanbul Hakki Yeten Cad. 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Here's the latest status on this within the CWG, just prior to a call on which this is being discussed. There appears to be a consensus forming that it is acceptable to have a third party own the marks and domain names instead of ICANN, so long as that third party is accountable to that community. What that accountability consists of has not in any way been defined. Agreement by the CWG to this general concept has been defined as a "minimum requirement" by the ICG. After much discussion over the last couple of months, I'm prepared to support that consensus. I would express the concern that the accountability and identity of the third party needs to reflect its role as a trademark owner, and the roles of the operational communities vis a vis IANA. The numbers community has put forward IETF Trust as an "acceptable" owner of the marks/domains. Some people are pushing to make that appear to be a requirement and/or to have the CWG endorse the IETF Trust. It has just been confirmed in the last few minutes that this is NOT a requirement of the ICG, and that the names community agrees with that. So hopefully the entity/IETF Trust issue can be dealt with in the implementation phase. Greg On Thu, Aug 20, 2015 at 12:40 PM, Rosette, Kristina <rosettek@amazon.com> wrote:

With apologies if I’m missing something, it strikes me that we’re making a mountain out of a molehill and are potentially ruffling some feathers that we shouldn’t be. Am I missing something?

*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] *On Behalf Of *McGrady, Paul D. *Sent:* Wednesday, August 19, 2015 1:39 PM *To:* Greg Shatan; Jeff Neuman *Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Thanks Jeff.

Thanks Greg. Sorry for racing to Jeff’s unneeded defense!

*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org <ipc-gnso-bounces@icann.org>] *On Behalf Of *Greg Shatan *Sent:* Wednesday, August 19, 2015 3:36 PM *To:* Jeff Neuman *Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Thanks for pointing that page out for everyone. That's where I got the IETF secretariat license from.

There is a general form of trademark license on that page as well, which people might be interested in looking at.

Greg

On Wed, Aug 19, 2015 at 4:09 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

Last email…sorry.

The IETF also has this page set up: http://trustee.ietf.org/licenses.html which provides additional information on the licensing of IETF Trust IP.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] *On Behalf Of *Jeff Neuman *Sent:* Wednesday, August 19, 2015 4:01 PM *To:* 'Greg Shatan' <gregshatanipc@gmail.com> *Cc:* 'IPC-GNSO' <ipc-gnso@icann.org> *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name.

I hope that helps.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

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@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com <gregshatanipc@gmail.com>] *Sent:* Wednesday, August 19, 2015 3:54 PM *To:* Jeff Neuman <jeff.neuman@valideus.com> *Cc:* McGrady, Paul D. <PMcGrady@winston.com>; Jeff Neuman < jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Marc Trachtenberg <trachtenbergm@gtlaw.com> *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

That's very helpful and useful. Thanks!

I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor.

I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific.

Greg

On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement).

Here is a sample of that agreement: https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ... (Note this may not be the latest).

So do not view the license in isolation.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:46 PM *To:* McGrady, Paul D. <PMcGrady@winston.com> *Cc:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Jeff Neuman < jeff.neuman@valideus.com>; trachtenbergm@gtlaw.com

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

I don't think Jeff was involved in setting up this particular license.

I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use."

I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled.

Greg

On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com> wrote:

Greg,

Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question.

Best,

Paul

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 2:35 PM *To:* Jeff Neuman *Cc:* IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com; McGrady, Paul D.

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license?

Greg

On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:

Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:24 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org

...

*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

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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Lewis Roca Rothgerber LLP | *

*One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611*

*(T) 520.629.4428 <520.629.4428> | (F) 520.879.4725 <520.879.4725>*

*AAikman@LRRLaw.com <AAikman@LRRLaw.com>** | www.LRRLaw.com <http://www.lrrlaw.com/>*

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@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,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020

Mobile 773.677.3305

trachtenbergm@gtlaw.com | www.gtlaw.com

[image: Description: Greenberg Traurig]

*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

*Paul D. McGrady Jr.*

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*Chair, Trademark, Domain Names and Brand Enforcement Practice *

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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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Anne, It shouldn't happen that way, and I'm fairly confident it won't. The marks will not be transferred to a new entity until those issues are resolved. There will be an implementation planning phase before the actual implementation occurs. The need for time for that phase is a prime driver behind the extension of the NTIA Agreement to September 30, 2016. To be clear, this is only one small piece of the pre-implementation puzzle. I expect the CWG to move fairly soon to discussing just these issues, as part of the larger discussion of who the entity might be, how it will be accountable to the operating communities, what agreements it will enter into, etc., followed by the need to actually set up those accountability mechanisms, draft those agreements, draft an assignment, create/adapt/approve an entity as the owner, and have them all entered into and ready to become effective as of the transition. Greg On Thu, Aug 20, 2015 at 1:10 PM, Aikman-Scalese, Anne <AAikman@lrrlaw.com> wrote:

Not dealing with this issue now seems to me to put the question of who has the responsibility to exercise quality control in relation to the marks in some kind of “limbo”. In other words, transition is approved and happens but then there is an interim implementation period where this responsibility is unclear?

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*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] *On Behalf Of *Greg Shatan *Sent:* Thursday, August 20, 2015 10:00 AM *To:* Rosette, Kristina

*Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Here's the latest status on this within the CWG, just prior to a call on which this is being discussed.

There appears to be a consensus forming that it is acceptable to have a third party own the marks and domain names instead of ICANN, so long as that third party is accountable to that community. What that accountability consists of has not in any way been defined.

Agreement by the CWG to this general concept has been defined as a "minimum requirement" by the ICG.

After much discussion over the last couple of months, I'm prepared to support that consensus. I would express the concern that the accountability and identity of the third party needs to reflect its role as a trademark owner, and the roles of the operational communities vis a vis IANA.

The numbers community has put forward IETF Trust as an "acceptable" owner of the marks/domains. Some people are pushing to make that appear to be a requirement and/or to have the CWG endorse the IETF Trust.

It has just been confirmed in the last few minutes that this is NOT a requirement of the ICG, and that the names community agrees with that. So hopefully the entity/IETF Trust issue can be dealt with in the implementation phase.

Greg

On Thu, Aug 20, 2015 at 12:40 PM, Rosette, Kristina <rosettek@amazon.com> wrote:

With apologies if I’m missing something, it strikes me that we’re making a mountain out of a molehill and are potentially ruffling some feathers that we shouldn’t be. Am I missing something?

*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] *On Behalf Of *McGrady, Paul D. *Sent:* Wednesday, August 19, 2015 1:39 PM *To:* Greg Shatan; Jeff Neuman *Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Thanks Jeff.

Thanks Greg. Sorry for racing to Jeff’s unneeded defense!

*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org <ipc-gnso-bounces@icann.org>] *On Behalf Of *Greg Shatan *Sent:* Wednesday, August 19, 2015 3:36 PM *To:* Jeff Neuman *Cc:* IPC-GNSO *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Thanks for pointing that page out for everyone. That's where I got the IETF secretariat license from.

There is a general form of trademark license on that page as well, which people might be interested in looking at.

Greg

On Wed, Aug 19, 2015 at 4:09 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

Last email…sorry.

The IETF also has this page set up: http://trustee.ietf.org/licenses.html which provides additional information on the licensing of IETF Trust IP.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

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@Jintlaw

*From:* ipc-gnso-bounces@icann.org [mailto:ipc-gnso-bounces@icann.org] *On Behalf Of *Jeff Neuman *Sent:* Wednesday, August 19, 2015 4:01 PM *To:* 'Greg Shatan' <gregshatanipc@gmail.com> *Cc:* 'IPC-GNSO' <ipc-gnso@icann.org> *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name.

I hope that helps.

*Jeffrey J. Neuman*

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*From:* Greg Shatan [mailto:gregshatanipc@gmail.com <gregshatanipc@gmail.com>] *Sent:* Wednesday, August 19, 2015 3:54 PM *To:* Jeff Neuman <jeff.neuman@valideus.com> *Cc:* McGrady, Paul D. <PMcGrady@winston.com>; Jeff Neuman < jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Marc Trachtenberg <trachtenbergm@gtlaw.com> *Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

That's very helpful and useful. Thanks!

I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor.

I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific.

Greg

On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement).

Here is a sample of that agreement: https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ... (Note this may not be the latest).

So do not view the license in isolation.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

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@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:46 PM *To:* McGrady, Paul D. <PMcGrady@winston.com> *Cc:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Jeff Neuman < jeff.neuman@valideus.com>; trachtenbergm@gtlaw.com

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

I don't think Jeff was involved in setting up this particular license.

I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use."

I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled.

Greg

On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com> wrote:

Greg,

Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question.

Best,

Paul

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 2:35 PM *To:* Jeff Neuman *Cc:* IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com; McGrady, Paul D.

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license?

Greg

On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:

Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:24 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org

...

*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

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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Lewis Roca Rothgerber LLP | *

*One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611*

*(T) 520.629.4428 <520.629.4428> | (F) 520.879.4725 <520.879.4725>*

*AAikman@LRRLaw.com <AAikman@LRRLaw.com>** | www.LRRLaw.com <http://www.lrrlaw.com/>*

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@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,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020

Mobile 773.677.3305

trachtenbergm@gtlaw.com | www.gtlaw.com

[image: Description: Greenberg Traurig]

*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.

...

[Message clipped]

Jeff, Thanks again; that's also very helpful Greg P.S. I can understand the attention to cookies. At my prior firm, one of the selling points to prospective laterals was the quality of our house-baked cookies. On Wed, Aug 19, 2015 at 4:00 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name.

I hope that helps.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:54 PM *To:* Jeff Neuman <jeff.neuman@valideus.com> *Cc:* McGrady, Paul D. <PMcGrady@winston.com>; Jeff Neuman < jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Marc Trachtenberg <trachtenbergm@gtlaw.com>

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

That's very helpful and useful. Thanks!

I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor.

I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific.

Greg

On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com> wrote:

For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement).

Here is a sample of that agreement: https://iaoc.ietf.org/documents/AMS-Secretariat-Services-Agreement-2008-Publ... (Note this may not be the latest).

So do not view the license in isolation.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:46 PM *To:* McGrady, Paul D. <PMcGrady@winston.com> *Cc:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org>; Aikman-Scalese, Anne <AAikman@lrrlaw.com>; Jeff Neuman < jeff.neuman@valideus.com>; trachtenbergm@gtlaw.com

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

I don't think Jeff was involved in setting up this particular license.

I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use."

I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled.

Greg

On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com> wrote:

Greg,

Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question.

Best,

Paul

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 2:35 PM *To:* Jeff Neuman *Cc:* IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com; McGrady, Paul D.

*Subject:* Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN

Jeff,

Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license?

Greg

On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com> wrote:

Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited.

*Jeffrey J. Neuman*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*From:* Greg Shatan [mailto:gregshatanipc@gmail.com] *Sent:* Wednesday, August 19, 2015 3:24 PM *To:* Jeff Neuman <jeff.neuman@comlaude.com>; IPC-GNSO <ipc-gnso@icann.org

...

*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

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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Lewis Roca Rothgerber LLP | *

*One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611*

*(T) 520.629.4428 <520.629.4428> | (F) 520.879.4725 <520.879.4725>*

*AAikman@LRRLaw.com <AAikman@LRRLaw.com>** | www.LRRLaw.com <http://www.lrrlaw.com/>*

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@Jintlaw

*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*

*Senior Vice President *|*Valideus USA* | *Com Laude USA*

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E: jeff.neuman@valideus.com or jeff.neuman@comlaude.com

T: +1.703.635.7514

M: +1.202.549.5079

@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,

*Marc H. Trachtenberg* Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020

Mobile 773.677.3305

trachtenbergm@gtlaw.com | www.gtlaw.com

[image: Description: Greenberg Traurig]

*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?

*<image002.gif>*

*Anne E. Aikman-Scalese, Of Counsel*

*Lewis Roca Rothgerber LLP | *

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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

*Paul D. McGrady Jr.*

*Partner *

*Chair, Trademark, Domain Names and Brand Enforcement Practice *

Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703

D: +1 (312) 558-5963

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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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I also wonder if there has been any policing or enforcement of these trademark rights. A very quick search shows that the following IETF domain names have been registered: ietf.com ietf.net ietf.org ietf.biz ietf.club ietf.science ietf.xyz ietf.aero ietf.cn ietf.com.cn ietf.org.cn ietf.ir ietf.kr ietf.or.kr ietf.ru ietf.ag ietf.lc ietf.eu iietf.com iiietf.com IETF appears to own only IETF.org and IETF.xyz (wtf?) Neustar owns IETF.biz, but it appears as if the others are owned by unaffiliated third parties, at least some of which appear to be owned by squatters. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Jeff Neuman [mailto:jeff.neuman@valideus.com] Sent: Wednesday, August 19, 2015 3:01 PM To: 'Greg Shatan' Cc: 'McGrady, Paul D.'; 'Jeff Neuman'; 'IPC-GNSO'; 'Aikman-Scalese, Anne'; Trachtenberg, Marc H. (Shld-Chi-IP-Tech) Subject: RE: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Good Question, and this was 10 years ago, but to the best of my recollection, the IETF Secretariat was not only responsible for maintaining the RFC Editor (the database of all IETF RFCs and drafts), but it was also the entity that was charged with running all of the IETF meetings, negotiating sponsorships with hosts, promoting the meetings within the host cities, procuring the contracts for hotels space, food, conference rooms, cookies (don’t ask – IETFers are extremely serious about their cookies – and that is not a joke), etc. They were also the ones who collected the conference fees (yes, people who go to IETF meetings pay a fee – or at least they used to). So, they had to conduct a number of activities in the name of the IETF as the IETF Secretariat. In order for the third party (Now AMS, then Neustar) to do those activities in the name of the IETF, they needed a license to use the name. I hope that helps. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514 M: +1.202.549.5079 @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Wednesday, August 19, 2015 3:54 PM To: Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>> Cc: McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>>; Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; IPC-GNSO <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>>; Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Marc Trachtenberg <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, That's very helpful and useful. Thanks! I suppose it is also the case that the only real recipient of services was the IETF itself, so the quality of services would have been readily apparent to the IETF. This a somewhat unusual scenario as well, in contrast to the usual trademark license where the licensee is providing its services to the consuming public and not to the licensor. I have another question -- not intended to be a "gotcha" question. What were the uses of IETF and of IETF SECRETARIAT that were thought to require a trademark license? The license makes reference to certain "promotional activities" but nothing more specific. Greg On Wed, Aug 19, 2015 at 3:47 PM, Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>> wrote: For the record, Neustar was on the receiving end of this from the trust. I will also note for the record that there was yet another agreement between ISOC and Neustar (now with AMS) that governed the provision of services which included services levels, customer support requirements, escalation paths, and everything else you could imagine about the provision of services. So, this license agreement needs to also be viewed in the context in which it exists (namely, one of a number of agreements with respect for the services). Thus, ISOC (on behalf of the IETF – an unincorporated entity that cannot enter into contracts) did have a number of quality control provisions directly in the services agreement itself (which are not represented in the license agreement). Here is a sample of that agreement: https://urldefense.proofpoint.com/v2/url?u=https-3A__iaoc.ietf.org_documents... <https://urldefense.proofpoint.com/v2/url?u=https-3A__iaoc.ietf.org_documents...> (Note this may not be the latest). So do not view the license in isolation. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 3:46 PM To: McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>> Cc: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; IPC-GNSO <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>>; Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN I don't think Jeff was involved in setting up this particular license. I only asked because Jeff said "The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use." I was wondering which provision he was referring to in this agreement, in connection with the discussion of quality control provisions. If that was a generic statement (and one which I agree with), and was not referring to any particular part of the agreement, that's fine. (I'd be surprised if Jeff read the agreement in 6 minutes, anyway.) But if that was referring to a particular provision of the agreement, I wanted to know which one. I'm just trying to improve my own understanding of the IETF trust and its trademark licensing approaches, since this is part of a very hot topic on the CWG mailing list at the moment, and one in which I am embroiled. Greg On Wed, Aug 19, 2015 at 3:37 PM, McGrady, Paul D. <PMcGrady@winston.com<mailto:PMcGrady@winston.com>> wrote: Greg, Respectfully, I’m not sure that it is fair to ask Jeff to opine on that since he was involved in setting up that trust. Most everyone on this list is qualified to read the license and reach their own opinion on that question. Best, Paul From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 2:35 PM To: Jeff Neuman Cc: IPC-GNSO; Aikman-Scalese, Anne; Jeff Neuman; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; McGrady, Paul D. Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN Jeff, Do you think there is a quality control provision in this license by which IETF controls the quality of any goods and services of the licensee under the mark? Or is this a naked license? Greg On Wed, Aug 19, 2015 at 3:30 PM, Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>> wrote: Yes, this is very similar to the license that Neustar got when Neustar ran the Secretariat Services back in 2005 through 2008 ( I believe). The reality is that provisions can always be written better and more air tight. Every attorney has their own style and magic words they like to use. At the end of the day, the question to ask as well is whether there have been any issues in the decade in which the Trust was created or are there any obvious holes in here that despite nothing happening to date, could be exploited. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 3:24 PM To: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>>; IPC-GNSO <ipc-gnso@icann.org<mailto:ipc-gnso@icann.org>> Cc: Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMC Grady <pmcgrady@winston.com<mailto:pmcgrady@winston.com>> Subject: Re: [IPC-GNSO] Fwd: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN 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<mailto:jeff.neuman@comlaude.com>> wrote: See https://urldefense.proofpoint.com/v2/url?u=http-3A__trustee.ietf.org_IETFtru... <https://urldefense.proofpoint.com/v2/url?u=http-3A__trustee.ietf.org_IETFtru...> Pages 11-13. Jeffrey J. Neuman Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Greg Shatan [mailto:gregshatanipc@gmail.com<mailto:gregshatanipc@gmail.com>] Sent: Wednesday, August 19, 2015 3:04 PM To: Jeff Neuman <jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>>; Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMC Grady <pmcgrady@winston.com<mailto: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<mailto: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 ☺), 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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: Aikman-Scalese, Anne [mailto:AAikman@lrrlaw.com<mailto:AAikman@lrrlaw.com>] Sent: Wednesday, August 19, 2015 1:03 PM To: Jeff Neuman <jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com>>; trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMC Grady <pmcgrady@winston.com<mailto:pmcgrady@winston.com>> Cc: gregshatanipc@gmail.com<mailto: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 [cid:image003.gif@01D0DA91.727EA580] Anne E. Aikman-Scalese, Of Counsel Lewis Roca Rothgerber LLP | One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611 (T) 520.629.4428<tel:520.629.4428> | (F) 520.879.4725<tel:520.879.4725> AAikman@LRRLaw.com<mailto:AAikman@LRRLaw.com> | www.LRRLaw.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.lrrlaw.com_&d=AwMFaQ...> From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 8:41 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@winston.com<mailto:PMcGrady@winston.com> Cc: ipc-gnso@icann.org<mailto: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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto:ipc-gnso-bounces@icann.org] On Behalf Of Jeff Neuman Sent: Wednesday, August 19, 2015 9:42 AM To: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>; PMcGrady@winston.com<mailto:PMcGrady@winston.com> Cc: ipc-gnso@icann.org<mailto: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 Senior Vice President |Valideus USA | Com Laude USA 1751 Pinnacle Drive, Suite 600 Mclean, VA 22102, United States E: jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> or jeff.neuman@comlaude.com<mailto:jeff.neuman@comlaude.com> T: +1.703.635.7514<tel:%2B1.703.635.7514> M: +1.202.549.5079<tel:%2B1.202.549.5079> @Jintlaw From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> [mailto:trachtenbergm@gtlaw.com] Sent: Wednesday, August 19, 2015 9:20 AM To: PMcGrady@winston.com<mailto:PMcGrady@winston.com>; jeff.neuman@valideus.com<mailto:jeff.neuman@valideus.com> Cc: ipc-gnso@icann.org<mailto: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, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020<tel:312.456.1020> Mobile 773.677.3305<tel:773.677.3305> trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Description: Greenberg Traurig] From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto: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]<mailto:[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<mailto: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] 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<mailto: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? <image002.gif> Anne E. Aikman-Scalese, Of Counsel Lewis Roca Rothgerber LLP | One South Church Avenue Suite 700 | Tucson, Arizona 85701-1611 (T) 520.629.4428<tel:520.629.4428> | (F) 520.879.4725<tel:520.879.4725> AAikman@LRRLaw.com<mailto:AAikman@LRRLaw.com> | www.LRRLaw.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.lrrlaw.com_&d=AwMFAw...> From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto: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<mailto: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 Paul D. McGrady Jr. Partner Chair, Trademark, Domain Names and Brand Enforcement Practice Winston & Strawn LLP 35 W. Wacker Drive Chicago, IL 60601-9703 D: +1 (312) 558-5963<tel:%2B1%20%28312%29%20558-5963> F: +1 (312) 558-5700<tel:%2B1%20%28312%29%20558-5700> Bio<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_en_who-2...> | VCard<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com_vcards_9...> | Email<mailto:pmcgrady@winston.com> | winston.com<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.winston.com&d=AwMFAw...> <image003.jpg> From: ipc-gnso-bounces@icann.org<mailto:ipc-gnso-bounces@icann.org> [mailto: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 ---------- Forwarded message ---------- From: David Olive <david.olive@icann.org<mailto:david.olive@icann.org>> Date: Sunday, August 16, 2015 Subject: [Soac-infoalert] ICANN Statement Regarding IANA Intellectual Property Rights (IPR) - ICANN To: "soac-infoalert@icann.org<mailto:soac-infoalert@icann.org>" <soac-infoalert@icann.org<mailto:soac-infoalert@icann.org>> https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_anno... <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_news_anno...> Sent from my iPhone David A. Olive Vice President, Policy Development Support General Manager, ICANN Regional Headquarters –Istanbul Hakki Yeten Cad. 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