[nc-budget] Intellectual-Property Arrangements Concerning AFNIC's Past Provision of Secretariat Services

[Louis Touton <touton@icann.org>]

Dear Philip, and Names Council Budget Committee Members,

We wanted to provide you with an update on the status of the transfer of
AFNIC's claims to intellectual property used in DNSO operations.

At its meeting on 24 January 2001
<http://www.dnso.org/dnso/notes/20010124.NCtelecon-minutes.html>, the
Names Council voted (in Decision D5) as follows:

   "The Names Council Chair (Ph. Sheppard according to the results of
   the election at this meeting) will instruct ICANN to make a payment
   upon a receipt of two compliant reports and after the following
   conditions have been met:

   * Services provided at no cost during interim period,
   * A satisfactory report from AFNIC on the IP acquired by the DNSO,
   * Additional report on how AFNIC'S costs should be allocated within
     the DNSO."

We were asked to assist on item 2, namely that "a satisfactory report
from AFNIC on the IP acquired by the DNSO."

Six months after the Names Council vote, on 26 July 2001, we received a
"Confidential draft" document from Elisabeth Porteneuve, which she
explained had been prepared by Eric Barbry, AFNIC Legal Counsel,
entitled "Transfer Agreement for the IP Rights and Use of the Software."

We have reviewed the document and find it is unsatisfactory, for two
reasons:

   1.  The document provides a limited-term license to use software for
e-mail voting prepared by Ms. Porteneuve.  This agreement would be with
Ms. Porteneuve, not AFNIC.  The scope of the rights that are offered
appear
inadequate and the agreement seeks to impose conditions and obligations
that preclude ICANN from entering into the agreement.

In reviewing the document, we have considerable concerns that the
so-called "Transfer Agreement" (not a descriptive term, for reasons
explained below) does not encompass the intent of the Names Council
objectives as to the voting software.  The Names Council decision
contemplates paying for the development of this software.  One would
expect that in return the DNSO/ICANN would acquire either title to the
software, or at least the fully paid-up right to use the software
perpetually for its purposes and also to make improvements to the
software as the DNSO sees fit.  However, this is not at all what the
software's author has offered.  By way of example:

      a.  The Term of the proposed Transfer Agreement is "tacitly
renewable, each year, for a one (1) year period unless one of the
parties notifies the other party of its decision not to renew the
agreement, by certified letter with a return receipt, sent no later than
one (1) month prior to the expiration date." In other words, software's
author has the option to terminate DNSO/ICANN rights on any
anniversary date of the Transfer Agreement.  It is our understanding
that the NC intended the transfer to be for unlimited time, not subject
to annual renewal.

      b.  The proposed Transfer Agreement prohibits DNSO/ICANN from
"adapting, modifying, transforming, developing or arranging the software
in order to create derived or new functionality of an entirely new
software and/or derived software."  In other words, DNSO/ICANN would be
required to obtain the software's author's additional permission
(possibly
for a fee) in the event that it wishes to make any enhancements to the
voting software.

      c.  To a similar effect, the Transfer Agreement prohibits
DNSO/ICANN
from "describing directly or indirectly or translating the software in
any other language as well as modifying it even partially, even in part,
in order to use the software on any other hardware that the one
described in the special terms and conditions."  Thus, the software may
only be used on the hardware specifically authorized by software's
author.

      d.  Apparently dissatisfied with the level of control inherent in
the above restrictions, the agreement adds a general prohibition from
"using it for any processing unauthorized by Ms. Elzbieta Porteneuve"
and warns that "any use of the software non-expressly authorized by Ms.
Elzbieta Porteneuve is illegal in application of section 47 of the July
3rd 1985 Act of French Intellectual Property Code."

The above are examples only of the inadequate nature of the rights being
offered.

In addition, the proposed Transfer Agreement imposes requirements on
DNSO/ICANN that we believe are not contemplated by the Names Council
decision.  In particular, it imposes on DNSO/ICANN an affirmative
obligation
to register the software's source code with the Agence de
Protection des Programmes (APP), including complying with applicable
rules and paying costs related to that registrations.

   2.  The second reason that the proposed Transfer Agreement is
inadequate is that it applies only to the voting software.  In proposing
to pay AFNIC for the activities of the past, the Names Council can
reasonably expect to obtain, formally and unequivocally, all rights that
AFNIC and its consultants may have acquired in connection with the
material on the DNSO web site.  No such offer was made.  We alerted Ms.
Porteneuve to this inadequacy, and she indicated that AFNIC would likely
be willing to provide a transfer of any rights it may have in the DNSO
web site, without warranty as to AFNIC's having any such rights.  This
should be adequate, but would require preparation of an appropriate
agreement.

To proceed in this matter, it will be necessary to prepare a
counter-proposal to AFNIC's proposal that we believe would meet the
Names Council's objectives.  As I'm sure you can understand, we did not
anticipate needing to take on this level additional work as a result of
the changing of the DNSO secretariat, but will seek to complete a draft
transfer agreement as soon as possible.  If you believe, in view of the
substantial inadequacies of the AFNIC offer, that further work on our
part in preparing an agreement is not justified, please let me know.

Best regards,

Louis Touton