Attendees: 

Sub-Group Members:   Andrew Sullivan, Greg Shatan, Jonathan Robinson, Milton Mueller, Nicholas Barbantonis, Suzanne Woolf

Apologies:  Konstantinis Komaitis

Staff:  Alain Durand, Marika Konings, Trang Nguyen

Please let Brenda know if your name has been left off the list (attendees or apologies).**

Transcript

Recording

Notes

•  See document circulated by Greg prior to this meeting (see also https://docs.google.com/document/d/1iUREZlPBiU-oSYxQXiahEbTcH4P3Ov_EReWzmXNHiwo/edit?usp=sharing)

•  Remit is to come up with requirements and principles that CWG-Stewardship would use to determine what would be an appropriate owner of the IANA trademarks and domain names

•  Use those requirements and principles to evaluate potential owner. Only proposed candidate at this point in time is the IETF Trust.

•  Question 1: What should be the requirements of the Trust to ensure continued operations, stability and security of the IANA functions in the event of separation? Owner will not be operator so there needs to be a license, but also consider minimum requirements linked to an owner. Question 1, bullet #3 is key, but directions should also be followed prior to any possible separation. User of trademark is only one single user at this moment. IANA operator will be exclusively licensee following transition, but owner of trademark (trust) would also have certain obligations per trademark law. There is a need to not impede the continued operations (additional requirement).

•  Question 5: What does the DT propose to be the defining qualities of a neutral/independent trust that will serve in this role? Review of responses provided during last meeting which is a working draft which is open for refinement. Key requirement is #3 (responsive and responsible to three communities). Also considers cost issue (needs to have necessary funding to carry out these responsibilities & needs access to employee with experience (license manager) and outside trademark counsel).

•  What does 'neutral' mean: a) not captured by or under the sole control of the IANA Function Operator, b) towards the views of the three communities, c) should not be an IFO (what is believed to be the intent of the other operational communities), d) not dominated by any of the operational communities - needs equilibrium (could be established contractually). Broader definition of neutrality is already captured as part of other requirements (e.g. follow instructions of relevant communities), consider sticking to narrow definition here (not IFO).

•  Quality control has to meet the requirements / needs of all three communities. If any has any concern about how IANA is performing in relation to trademark, a mechanism needs to be in place to address such concerns. Could quality control also be outsourced? Certain amount of operational control could be sub-contracted for example to operational communities, but ultimate control/responsibility is with the trademark owner. Brand owner is required to exercise active quality control to meet minimum requirements.

•  IETF Trust will not change its governance structure - is not a practical option and not an expected outcome. If requirements cannot be met by IETF Trust it may be more efficient and effective to create a new trust or consider whether there are contractual arrangements that could be put in place to meet the requirements without changing the governance structure. If you would start from scratch you might actually have come up with a joint trust - but not feasible within current timeframe.

•  Under which circumstances, if any, would the trademark be taken away from the new owner (the trust)? Separate question to be considered at some point.

•  Consider eventually moving from this document to clearer principles and requirements.

•  Need to determine what quality control needs to be exercised to meet minimum obligations.

•  Next CWG-Stewardship meeting is scheduled for Thursday. Greg will review and update document to make it more user-friendly to look at principles and requirements to faciliate further input on the list.

•  Next DT-IPR call scheduled for next week, Tuesday 24 November at 21.00 UTC.

Action item: ask ICANN for information on current practice and management of the IP to date (note, ICANN has not had to excercise external quality control to date as there is no licensee but only internal quality control)

Action Items

  • Action item: ask ICANN for information on current practice and management of the IP to date (note, ICANN has not had to excercise external quality control to date as there is no licensee but only internal quality control)

Documents

Chat

Brenda Brewer: (11/16/2015 09:21) Welcome to DT-IPR Meeting #2 on 16 November @ 16:00 UTC

  Brenda Brewer: (09:25) Goodgle doc link:  https://docs.google.com/document/d/1iUREZlPBiU-oSYxQXiahEbTcH4P3Ov_EReWzmXNHiwo/edit?usp=sharing

  Jonathan Robinson: (09:59) Let's hope so. I joined in order to listen and make sure I am current!

  Greg Shatan: (10:00) Hello, all.

  Milton: (10:02) Hello

  Suzanne Woolf: (10:04) Hi, will be on audio in a moment

  Jonathan Robinson: (10:07) Greg, is the term "owner" or "holder" and are they inter-changeable?

  Jonathan Robinson: (10:08) Thanks

  Milton: (10:10) I dont think those criteria are correct in all aspects

  Milton: (10:10) The key one is #3

  Andrew Sullivan: (10:12) I'm getting drops -- is it just me or are others hearing it?  (This'll tell me whether the problem is at my end)

  Nicholas Barbantonis: (10:12) I am too

  Greg Shatan: (10:12) I'm getting drops too.

  Milton: (10:13) "drops"?

  Milton: (10:14) as in, raindrops?

  Greg Shatan: (10:15) audio drop outs.

  Jonathan Robinson: (10:15) I will come in on another line

  Marika Konings: (10:15) Let me know if you would like us to set up a dial-out.

  Suzanne Woolf: (10:15) Drop-outs o nthe audio here too

  Milton: (10:23) agree Jonathan

  Milton: (10:23) originally, it sounded like we were considering the Trust an operator

  Jonathan Robinson: (10:28) My understanding of the process is consistent with Greg's. The question is how to make it efficient

  Jonathan Robinson: (10:28) the process that is

  Jonathan Robinson: (10:29) Has the subject of money come up? Will ICANN endow the IETF Trust or an alterantive with appropriate resources?

  Jonathan Robinson: (10:30) Thanks. Perhaps best to go through systematically then

  Milton: (10:32) it also means that IETF Trust should not be an IFO

  Milton: (10:34) the former.

  Milton: (10:34) agree with andrew

  Milton: (10:38) i think he meant "license" by dispose of

  Andrew Sullivan: (10:40) I think then that "neutral" means (1) may not be an IFR and (2) must be (legally) obligated to follow directions of relevant community for OC needs.

  Andrew Sullivan: (10:40) That sounds like what I'm hearing everyone say

  Milton: (10:42) accountable to the names community insofar as they could be sued or 'brought to account' for not following instructions, yes

  Suzanne Woolf: (10:44) Seems it also might want to be "nondiscriminatory" (apologies if this isn't the right legal term) -- not asking for more money or imposing different conditions on different OCs

  Milton: (10:44) yes, Jonathan that is what we are talking about

  Milton: (10:47) 'disposal' does not mean 'give away'

  Jonathan Robinson: (10:47) OK. As in "at your disposal"

  Milton: (10:48) right

  Milton: (10:49) has any quality control over the IANA mark ever been exercised by ICANN?

  Jonathan Robinson: (10:52) @Andrew. That sounds logical and consistent with my reading of the Sidley memo

  Jonathan Robinson: (10:53) @Milton. Good question. Be good to ask it of ICANN.

  Greg Shatan: (10:53) Quality control only arises as an issue if there is a license. I don't know that there are any licensees.

  Milton: (10:53) but ICANN is currently the owner

  Suzanne Woolf: (11:02) I'm a little confused as to what day-to-day oversight is needed, besides stepping in if someone besides ICANN or another IFO designated by the OCs  tries to use the trademarks.

  Andrew Sullivan: (11:03) I agree that we're trying to get the principle right.  I'm asking whether this is a principle to which we agree: that this can all be done by contract

  Andrew Sullivan: (11:03) "can" == "inprinciple could be, we'd be ok with that"

  Jonathan Robinson: (11:04) @Suzanne. My understadning is that it's at least twofold (a) ensuring mark is being used as intended i.e. according to licence or other relevant documents and (b) that the IP is maintained through payment of fees etc.

  Suzanne Woolf: (11:05) @Jonathan-- sounds about right, but nothing I haven't seen covered by contract before. It does seem increasingly important to get information from ICANN about how much work there actually is to do here.

  Jonathan Robinson: (11:11) @Suzanne. Agreed. Can we make that an action i.e. to ask ICANN for information on current practice and maanagement of the IP to date

  Suzanne Woolf: (11:11) It should not be a lot of work. "IANA" is not a name known in this context outside of aa very specific set of users. ICANN's own names are more prominent, etc.

  Suzanne Woolf: (11:12) @Jonathan I thought this had already been asked, happy to help try to expedite if needed

  Milton: (11:14) right, I can see IETF Trust doing what Greg is desribing now, but "quality control" exercised against IFOs is another matter

  Milton: (11:15) ok, so policing and enforcement --> IETF Trust has no problem

  Milton: (11:15) quality control --> IETF Trust role is delegated to the OCs

  Nicholas Barbantonis: (11:18) Adnrew, I think to contractually require the trust to police the marks should be enough

  Andrew Sullivan: (11:21) I agree that whatever the owner is, it needs in fact to behave in a certain way.  It seems that to make this work, though, you have two choices: (1) believe that the ownner will do the job or (2) somehow have control over the body that's the owner

  Andrew Sullivan: (11:21) which is why I'm asking whether (1) will work

  Andrew Sullivan: (11:22) I agree with what Greg just said -- that's what the community would be doing

  Suzanne Woolf: (11:24) Greg, seems to me it's important to also know whether ICANN has put any effort into having to ask unauthorized users not to claim to be IANA.

  Suzanne Woolf: (11:25) Since that seems to me to be the most likely misuse of the trademarks.

  Jonathan Robinson: (11:28) One suggestion I heard a while back was to have a "neutral" trust with trustees derived equally from each of the three OCs?

  Jonathan Robinson: (11:30) IF that route was taken, or the IETF route, it does seem that the management / enforcement task could be outsourced. Providing ... the resources existed to do so.

  Andrew Sullivan: (11:32) The IETF actually does this for its existing marks

  Milton: (11:34) I think Jonathan is incorrect - the creation of a new "neutral" trust doesn't avoid the same problem

  Jonathan Robinson: (11:35) @Milton. I didn't suggest it would. The "problem" may indeed be the same in both cases. Just recalling that as an alternative.

  Milton: (11:35) ok, sorry

  Andrew Sullivan: (11:35) I note that we only have these problems becuase there's a trademark.  Maybe what we should recommend is that the trademark is a millstone and we should find a way to put the mark in the public domain and rely on the reputation stuff that Milton was talking about earlier

  Andrew Sullivan: (11:36) the real problem comes from the domain name

  Milton: (11:37) well it's like the GNU PL, they copyright it in order to ensure that it cannot be copyrighted and made exclusive

  Milton: (11:37) Andrew: for the domain name alone, you don't need quality control

  Andrew Sullivan: (11:37) right, that was my point.  I'm not going to talk about it though because we're over time.  I'll take it to the list

  Milton: (11:37) ok

  Milton: (11:38) down with trademarks!

  Milton: (11:38) :-)

  Milton: (11:40) just for the record, I am all in favor of appropriately scoped trademark protection

  Brenda Brewer: (11:40) DT-IPR Meeting – Tuesday, 24 November 2015 from 21:00 – 22:30 UTC 

  Milton: (11:41) some of my best friends are trademarks

  Konstantinos Komaitis: (11:41) thanks Greg -- all...bye

  Nicholas Barbantonis: (11:41) Bye

  Greg Shatan: (11:42) Thanks, Milton.

  Greg Shatan: (11:42) Thank you all!

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