Re: [Ianaplan] update on trademarks and domains & IETF trust

["Leslie Daigle" <[e-mail]>]

[Jari wrote:]
> My plan is that the coordination group needs to come up with mutually 
> acceptable principal terms. Once we have those, we can take the matter 
> further. In the IETF system the IETF Trust and the IAOC is the one 
> responsible for final approval of the agreements. But we will keep the 
> community updated as well. If anyone has feedback on the early draft 
> terms, the trustees and the small coordination group would certainly 
> appreciate feedback.

My understanding is that this is moving forward on a pretty aggressive 
timeline (needed for the overall IANA transition timeline) — so, if 
you have comments to share with trustees and the small coordination 
group, sooner is definitely best.

Leslie.

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Leslie Daigle
Principal, ThinkingCat Enterprises
[e-mail]
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On 20 Jan 2016, at 18:33, Jari Arkko wrote:

> Folks,
>
> For information, I wanted to provide a small update on the question of 
> trademarks and domains related to the IANA arrangements. As you may 
> recall, the IETF proposal chose to not make any particular 
> requirements related to moving to handling them in any particular way. 
> But the RIR community proposal and later the full ICG proposal wanted 
> to move them to a location independent of the IANA operator, possibly 
> the IETF Trust: 
> http://www.ianacg.org/icg-files/documents/IANA-transition-proposal-v9.pdf
>
> At the time we had said that it would be in principle OK, subject to 
> details to be determined and agreed upon. The ICANN board also noted 
> that they would be OK with moves, if agreed by the operational 
> communities: https://www.icann.org/news/announcement-2015-08-15-en
>
> Later we had circulated a framework that explained what types of 
> agreements would be necessary to move the trademarks and domains to 
> the IETF Trust: 
> https://mailarchive.ietf.org/arch/msg/ianaplan/gbPZgVdXAKIQKJRM1po6Nbod-6w
>
> And now to 2016. Earlier this month the names community CWG has made a 
> tentative decision that they would in principle be OK with this 
> arrangement: 
> http://mm.icann.org/pipermail/cwg-stewardship/2016-January/004603.html
>
> As a result, the three communities are now coordinating to see if we 
> can set this arrangement up. From the IETF Andrew and me are part of a 
> small coordination group. A mailing list is being set up with public 
> archives for the coordination group, and I will share the link as soon 
> as I have it. As a part of these discussions, I have shared an early 
> draft for principal terms associated with the relevant agreements (a 
> copy at the end of this email). This is being discussed and probably 
> significantly revised, but it is a start. The most important thing is 
> to ensure that the agreement between the OCs and the IETF Trust have 
> the sufficient and proper rights for the parties. For instance, that 
> the OCs have the rights they need to control and use the IANA 
> trademarks and domains for their purposes. And yet, the usual 
> IETF-only operation of the IETF Trust should not be affected.
>
> My plan is that the coordination group needs to come up with mutually 
> acceptable principal terms. Once we have those, we can take the matter 
> further. In the IETF system the IETF Trust and the IAOC is the one 
> responsible for final approval of the agreements. But we will keep the 
> community updated as well. If anyone has feedback on the early draft 
> terms, the trustees and the small coordination group would certainly 
> appreciate feedback.
>
> Jari
>
> ——
>
> Example Principal Terms of Intellectual Property Agreements
>
> This draft relates to a possible use of IETF Trust as an independent 
> entity to hold IANA-related IPR. The IETF Trust is one of the 
> discussed alternative holders of IPR.
>
> This non-binding draft has been prepared in order to assist in 
> discussion only.  No offer to enter into a binding agreement is 
> expressed or implied herein. The IETF Trust has provided this draft as 
> a hopefully helpful initial contribution, but clearly discussion in 
> the various communities and further work is needed. Comments are 
> appreciated.
>
> A. Background
>
> The ICG proposal indicates that the IANA trademark and iana.org domain 
> should be transferred to an entity independent of the IANA Numbering 
> Services Operator.
>
> The IETF Trust would be a potentially acceptable candidate for this 
> role, and the Trust has discussed the implications of assuming this 
> responsibility. The following is some background of the Trust’s 
> position and an overview of how the role and responsibilities may be 
> fulfilled.
>
> While this fulfillment is a part of implementation rather than the ICG 
> proposal, the IETF Trust wants to ensure progress on determining those 
> implementation steps. The Trust is of course only one of the possible 
> ways to satisfy the requirements from the ICG proposal. Nevertheless, 
> the Trust wanted to start by suggesting an overall framework for one 
> way of satisfying the requirements.
>
> The IETF Trust is a Virginia USA private trust, the trustees of which 
> are the members of the IETF Administrative Oversight Committee (IAOC), 
> and the beneficiary of which is the IETF community.  The purpose of 
> the IETF Trust includes acquiring, holding, maintaining and licensing 
> certain existing and future intellectual property and other property 
> used in connection with the Internet standards process and its 
> administration, for the advancement of the science and technology 
> associated with the Internet and related technology.
>
> B. Framework
>
> The Trust believes it would need to enter into three different types 
> of agreements to effect the transfer of the IANA intellectual property 
> (IP) and to enter into licensing arrangements with the IANA service 
> provider(s).
>
> These agreements include:
>
> 1.  An Agreement between ICANN and the IETF Trust transferring the 
> IANA IP to the IETF Trust
>
> 2.  Community Assurance Agreements between the IETF Trust and each of 
> the names, numbers, and protocol communities (the IANA communities) 
> regarding the Trust’s commitments to each as further described 
> below, and
>
> 3.  Agreement(s) whereby the IETF Trust provides for the use of the 
> iana.org domain, or a subdomain, and licenses the use of the IANA 
> trademarks to the IANA service provider(s) selected by the IANA 
> communities.
>
> The Trust understands that each community would need to follow its own 
> internal processes before entering into any agreements, or selecting 
> an IANA service provider. The same is true of the Trust itself.
>
> The Community Assurance Agreements with the IANA communities would 
> establish and recognize the responsibilities for each community to 
> identify and enter into agreement with their selected service 
> provider, and for the IETF Trust to provide, update, and revoke 
> licenses as needed to support these selections.
>
> In order to preserve the value and integrity of the IANA trademarks, 
> the IETF Trust would maintain, license and monitor the use of the 
> trademarks.  Trust actions would include enforcement against 
> unauthorized users and monitoring the quality and uses by the licensed 
> user(s). The Trust would work with the relevant IANA communities to 
> address issues involving a licensee before taking action to maintain 
> the quality of the trademarks.
>
> C. Terms
>
> The following contains examples of the principal terms that may need 
> to be included in such agreements should the community desire for the 
> IETF Trust to take on the role of the Independent Entity. This 
> non-binding draft has been prepared in order to assist in discussion 
> only.  No offer to enter into a binding agreement is expressed or 
> implied herein.
>
> C.1.  IP Transfer Agreement (between ICANN and IETF Trust)
>
> a.  When requested by the IETF Trust, ICANN will transfer and assign 
> all of its rights in and to the IANA IP, including all goodwill 
> therein, to the IETF Trust (the “Transfer”).  The IETF Trust will 
> not assume any obligations or liabilities of ICANN that arose prior to 
> the Transfer.
>
> b.  ICANN will file all necessary assignment documentation with all 
> local, national and regional offices in which the IANA IP is 
> registered including, without limitation, the U.S. Patent and 
> Trademark Office and the registrar for iana.org (GoDaddy), and will 
> pay all fees associated with such filings.  With respect to iana.org 
> and any other domain names within the IANA IP, the IETF Trust will be 
> designated as the administrative contact with the registrar.
>
> c.  ICANN will make customary representations and warranties to the 
> IETF Trust regarding title to the IANA IP, absence of actual or 
> threatened litigation, the existence of any licenses or other 
> encumbrances on the IANA IP, and non-infringement of third party 
> rights, all qualified by the knowledge of ICANN’s in-house legal 
> department.
>
> d.  ICANN will indemnify the IETF Trust, PTI and any future licensee 
> of the IANA IP against any liability associated with use of the IANA 
> IP prior to the Transfer Date.  The IETF Trust will indemnify ICANN 
> and any prior licensee of the IANA IP against any liability associated 
> with use of the IANA IP after the Transfer Date to the extent that 
> IETF Trust receives a comparable indemnity from PTI or its successor 
> entity.
>
> C.2.  Community Assurance Agreement (between IETF Trust, IETF, RIRs, 
> and the names community)
>
> a.  This Agreement will ensure that the IETF Trust holds and licenses 
> the IANA IP in a manner that is agreed with the IETF, RIRs and the 
> names community.
>
> b.  For purposes of this Agreement, the RIRs, the IETF and the names 
> community will each select a single Representative to be the point of 
> contact with the IETF Trust on matters pertaining to the IANA IP, 
> collectively the “IANA IP Reps”.
>
> c.  The IETF Trust will hold, maintain and renew the IANA IP in 
> accordance with good IP management practices and shall seek new 
> territorial registrations based on the IANA IP as instructed by the 
> IANA IP Reps.
>
> d.  The IETF Trust will license the IANA IP to PTI and any successor 
> provider(s) of the IANA functions identified by the IANA IP Reps. Such 
> license shall include the provisions described in Part III below.  The 
> IETF Trust will terminate the license to PTI or any successor upon the 
> instructions of the IANA IP Reps.
>
> C.3.  IANA IP License Agreement (between IETF Trust and PTI)
>
> a.  The IETF Trust will grant PTI a non-exclusive, worldwide, 
> royalty-free license, without the right to sublicense, to display and 
> reproduce the IANA marks in connection with its provision and 
> marketing of the IANA functions.
>
> b.  All use of the IANA marks shall be in accordance with 
> mutually-agreed quality requirements, as well as size, color, 
> placement and similar guidelines to be agreed.
>
> c.  The IETF Trust will authorize PTI to operate via the iana.org 
> domain and any number of sub-domains.  IETF Trust shall appoint PTI as 
> the technical contact for the iana.org domain during the term of the 
> agreement.  PTI shall use iana.org and all associated subdomains 
> exclusively for purposes of offering the IANA functions.
>
> d.  All goodwill arising from use of the IANA IP will inure to the 
> benefit of the IETF Trust, and PTI will not register or reserve any 
> mark that contains, is identical or confusingly similar to any IANA 
> mark in any jurisdiction, whether as a trademark, service mark, trade 
> name or domain name.
>
> e.  The IETF Trust will have the sole right to enforce the IANA marks 
> against infringers, at its expense.  PTI will use reasonable efforts 
> to notify IETF Trust of any such infringement that comes to its 
> attention.  IETF Trust will be entitled to retain all damages received 
> as a result of its enforcement of the IANA marks.
>
> f.  The IETF Trust will be entitled to terminate the agreement, 
> without penalty, following a material breach by PTI which is not cured 
> within 30 days following notice thereof, an insolvency or bankruptcy 
> event by PTI, the involvement of PTI or any of its officers or 
> directors in any criminal, civil or regulatory proceeding or 
> investigation that is likely, in IETF Trust’s opinion, to tarnish 
> the IANA marks or the reputation of IETF, the termination, expiration 
> or non-renewal of the PTI Service Agreement(s), or upon the express 
> instruction of the IANA IP Reps.
>
> g.  Upon termination of the agreement, PTI will immediately cease all 
> use of the IANA IP and shall transfer technical control of the 
> iana.org domain to the IETF Trust.
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