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

[Nilda Vany Martinez Grajales <vany@sdnp.org.pa>]

Dear Louis:

Please be so kind to read the message I sent to the Names Council Budget
Commitee on July 2, 2001 in this issue.  You will find many common
points and concerns with the assesment you just gave to us.

http://www.dnso.org/clubpublic/nc-budget/Arc00/msg00442.html

Best Regards
Vany

Louis Touton wrote:
> 
> 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

-- 
Nilda Vany Martinez Grajales
Information Technology Specialist
Sustainable Development Networking Programme/Panama
Tel: (507) 317-0169
http://www.sdnp.org.pa
e-mail:  vany@sdnp.org.pa