[CCG]Re: IETF Trust Restructuring & Transfer of IANA Intellectual Property

[Greg Shatan <[e-mail]>]

Glenn and all,

Thanks for your emails.  Sorry not to get back to you sooner.  I have a few
questions and a few requests for documents, to help us understand better
exactly what is happening.  Sorry for the annoyingly detailed way in which
these requests have been set out -- I think it is less burdensome than it
appears to be (i.e., most questions should require only brief answers and
all of the documents should exist and be readily at hand).

   1. Can you please provide a copy of the assignment document(s) by which
   the IANA trademarks and other IP were assigned from the IETF Trust to
   the IETF Intellectual Property Management Corporation (IPMC)?
   2. How is the Community Agreement being assigned to and assumed by the
   IPMC from the IETF Trust?
      1. Please provide a copy of the assignment and assumption document(s)
      for the above assignment.
      2. Please confirm that you have requested and received prior written
      consents from ICANN, each of the RIRs, and the Internet Society (d/b/a as
      the IETF) for the above assignment.  Please provide copies of
the requests
      for consent and each of the written consents.
      3. Please confirm that the IPMC will continue to satisfy the
      obligations of the IETF Trust set forth in the Community Agreement.
   3. Please confirm that each of the three "Community License Agreements"
   are being assigned to and assumed by the IPMC from the IETF Trust.
      1. Please provide a copy of the assignment and assumption documents
      for the above assignments.
      2. Please confirm that you have requested and received prior written
      consent(s) for the above assignments from ICANN (in its role as
licensee in
      each of the three licenses).  Please provide copies of the request(s) for
      consent and the written consent(s).
      3. Please confirm that IPMC has consented to and/or agreed to
      continue licensor's consent to the sublicenses by ICANN to PTI
memorialized
      in Section 9.7 of each license agreement.
   4. Please clarify whether or not the Proposed Amendment to License
   Agreements 1 May 17 found at https://trustee.ietf.org/iana-ipr/
   (amending Exhibit E of each license agreement) has been put into effect?
      1. Please provide copies of signed dated documentation of each such
      amendment.
      2. If this has not been put into effect, are there any plans to do
      so?
   5. Have any actions been taken or contemplated to be taken regarding the
   2016 Assignment Agreement between ICANN and the IETF Trust (e.g., has it
   been assigned to the IPMC and, if so, has ICANN provided its prior written
   consent to such assignment)?
   1. Please provide copies of any consents and executed documentation
      related thereto.
      2. If it has not been assigned, how will ongoing rights and
      obligations (e.g., Section 7.10) be handled?
   6. How was the restructuring of the IETF Trust documented (in
   particular, what agreements were signed)?
      1. Please provide copies of any agreements or other documents that
      were used to document the restructuring.
      2. Please provide copies of any filings with Departments of State or
      other pertinent entities in Virginia and Delaware if not already
sent to us
      by link.
   7. Is the Virginia Trust being dissolved? If so, when? If not, will the
   Virginia Trust have any roles or responsibilities?
   8. Will the term "IETF Trust" still be used in any fashion, or is that
   being replaced by IETF Intellectual Property Management Corporation and/or
   IPMC in every instance?
   9. Will the documents referencing the IETF Trust be amended and restated
   in order to reference the IPMC, or will they be left as is? If the latter,
   how does the assignment to the IPMC (or other documentation) memorialize
   the fact that references to the IETF Trust must be read as references to
   the IPMC?
   10. Is there anything else we should know?

Please let me know if you would like to have a Zoom call before and/or
after providing the above information and documents.  Please let me know if
you have any questions.  Thank you so much!

Best regards,

Greg

On Mon, Aug 12, 2024 at 7:10 PM Glenn Deen <[e-mail]> wrote:

> Hi CCG Chairs,
>
> Any update on this request?  It's been almost 4 weeks, I know August is
> hard time to move things ahead but we really do want to finish this
> restructuring by YE2024.
>
> regards
> Glenn
>
> On Mon, Jul 15, 2024 at 11:30 AM Glenn Deen <[e-mail]> wrote:
>
>>
>> Resending to correct CC: address to [e-mail]
>>
>> On Mon, Jul 15, 2024 at 11:25 AM Glenn Deen <[e-mail]> wrote:
>>
>>>
>>> Hello CCG Chairs,
>>>
>>>
>>> As Chair of the IETF Trust I'm writing to you on behalf of the IETF
>>> Trust about the transfer of IANA Intellectual Property held and managed by
>>> the IETF Trust to the new not-for-profit Delaware based IETF Intellectual
>>> Property Management Corporation  (IPMC) that the current IETF Trust a
>>> Virginia based Common Trust entity is restructuring into.
>>>
>>>
>>> This IETF Trust restructuring has been underway for some time now and is
>>> nearing its end.  We are now undertaking the final steps, which largely
>>> involve the actual transfer of the Intellectual Property and IP rights held
>>> by the IETF Trust.
>>>
>>>
>>> For anyone not familiar with this restructuring work, the IETF Trust's
>>> role remains the same, as does the appointment processes for the 5 IETF
>>> Trustees (3 from IETF noncom, 1 from IETF IESG and 1 from ISOC Board of
>>> Trustees).  The IETF Trustees will now be Directors of the new
>>> corporation.
>>>
>>>
>>> What has changed is all legal under the covers, with the IETF Trust
>>> legally changing from a Virginia Common Trust to a Delaware not-for-profit
>>> corporation which like the Virginia entity has been recognized by the IRS
>>> as a not-profit 501c3.      If you're interested in the details , the new Legal
>>> Documents <https://trustee.ietf.org/documents/founding-documents/> [1]
>>> and the Community Consultation
>>> <https://trustee.ietf.org/about/community-consultation-on-restructuring-the-ietf-trust/>
>>> [2] are all available on the IETF Trust <https://trustee.ietf.org>
>>> website (https://trustee.ietf.org)
>>>
>>>
>>> The IETF Trust provides service beyond the IETF community by holding
>>> IANA related Intellectual Property assigned to it as part of the 2016 IANA
>>> restructuring.    See Exhibits A & B in the IANA Assignment Agreement
>>> <https://trustee.ietf.org/wp-content/uploads/Assignment-Agreement-2016-09-30-Executed.pdf> [3]
>>> for the full asset list of IANA IP  consisting of Trademarks and Domain
>>> Names.      Under the agreement, the IETF Trust holds the IANA TMs,
>>> maintaining registrations and taking appropriate actions as needed to
>>> protect the TMs.    The IETF Trustees also provide change approval for the
>>> transferred DNS Domains whereby approval by any 3 of the 5 Trustees is
>>> required for any technical changes to the domains.
>>>
>>>
>>> During a review of reassignment of agreements the IETF Trust with
>>> different parties, we recently came across a requirement in the 2016 IANA
>>> agreements [3][4] around the IANA Intellectual Property held by the IETF
>>> Trust that requires that we consult and get approval from the CCG for the
>>> Transfer of the IANA IP assets.
>>>
>>>
>>> BTW, Here is the requirement:   Section 4.2 of the Community Agreement
>>> <https://trustee.ietf.org/wp-content/uploads/Community-Agreement-2016-09-30-Executed.pdf>
>>>  [4]
>>>
>>>
>>>
>>> *4.2 Encumbrances and Transfer. Except as contemplated by this Agreement
>>> and the License Agreements, the IETF Trust shall not sell, lease (as
>>> lessor), transfer or otherwise dispose of, or mortgage or pledge, or impose
>>> or suffer to be imposed any Encumbrance on, in whole or in part, any of the
>>> IANA Intellectual Property without the prior written approval of the CCG,
>>> which shall not be unreasonably withheld.*
>>>
>>>
>>> While the transfer isn't to outside of the IETF Trust, we've tried to
>>> err on the side of compliance so we're writing to the CCG chairs.
>>>
>>>
>>> To be fully transparent, if you check in the US TM database, you'll see
>>> that the IANA TMs were transferred as part of a batch of transfers done for
>>> the IETF TMs held by the Trust.   Our sincere apologies for getting ahead
>>> of obtaining CCG approval, we had previously reviewed the IANA agreements
>>> related to re-assignment, but only on a recent re-review came across the
>>> specific need in Section 4.2 related to the CCG approval.     Now that we
>>> see the requirement, we are working to correct and comply.
>>>
>>>
>>> Current status of IANA IP: The IANA TMs transfers have been submitted to
>>> various TM regimes that they are registered in and some like the US have
>>> been processed.     The DNS Domains have not yet been transferred and the
>>> Trustees of the Virginia Trust are continuing their role as technical
>>> change approvers.
>>>
>>>
>>> To comply with our IANA agreement under section 4.2, the IETF Trust
>>> intends to send to the 3 CCG Chairs a formal transfer approval request for
>>> the IANA IP via Docusign.
>>>
>>>
>>> Since we've never done this sort of request with the CCG we don't have
>>> any past process for IETF Trust::CCG interaction to follow, hence this note.
>>>
>>>
>>> In terms of time, we'd like to resolve this as quickly as possible.
>>> We're very near the end of the restructuring and we'd like to complete our
>>> asset transfers.
>>>
>>>
>>> Are there any questions that you have, or should we go ahead and send
>>> the notice over for signatures?
>>>
>>>
>>> Referenced Links:
>>>
>>>
>>> [1] https://trustee.ietf.org/documents/founding-documents/
>>>
>>> [2]
>>> https://trustee.ietf.org/about/community-consultation-on-restructuring-the-ietf-trust/
>>>
>>> [3]
>>> https://trustee.ietf.org/wp-content/uploads/Assignment-Agreement-2016-09-30-Executed.pdf
>>>
>>> [4]
>>> https://trustee.ietf.org/wp-content/uploads/Community-Agreement-2016-09-30-Executed.pdf
>>>
>>>
>>>
>>>
>>> Regards
>>>
>>> Glenn Deen,
>>>
>>> IETF Trust Chair
>>>
>>>
>>> _______________________________________________
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