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

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

Hi Kent:

Ken Stubbs wrote:
> 
> FWIW...
> 
> i did not realize that there were "issues" here.. as far as i am concerned,
> this issue is not one which i would want to turn into some sort of "intense
> negotitaion"  .. for my part in this matter, i would not be interested in
> paying any sort of "royalty for this software and am quite certain that the
> council can find other "alternatives" for future votes if we need to.

I am totally agree with you.

> frankly, i am somewhat disappointed that there are any "issues" in the
> transition at all..

As some points of the Counter-proposal to AFNIC I suggest the following
points:

1.  All software and hardware gotten in behalf of ICANN's DNSO with any
funds products of donations, verbal and/or written cooperation
agreements, explictily or implicitly included in any document where it
is understood that such hardware was bought under based in DNSO Budget
for Secretariat purposes, that was done to AFNIC, the property of all of
these has to be transfered to ICANN since DNSO belongs to ICANN and we
are paying such items. It won't be fair that if AFNIC bought software
and hardware, has requested we pay for this, and still they claim to not
transfer this to ICANN's DNSO.  Please, read the following document for
reference http://www.dnso.org/clubpublic/nc-budget/Arc00/msg00199.html  

2.  All documentation in hard paper or digitalized making references to
DNSO that holds AFNIC, including any documents with third parties
that agreeded in any moment to cooperate with DNSO operations with funds
and/or equipment has to be disclosed and transfered to ICANN and also
disclosed to the Names Council members and its constituencies since DNSO
is part of ICANN.  

3. With the specific item of the content of the website and mailing
lists digest archives and archives containing the e-mail addresses of
the suscribers of all DNSO mailing lists, all of these belongs to DNSO,
and such should be transfered to ICANN, since DNSO is part of ICANN.  
Please, let me remind you that DNSO website is copyrighted to DNSO, so
maybe none futher agreement is needed since this is stated in the
website.  

4. Regarding the specific item of the votation software including its
source code, binaries, etc, it should be transfered to ICANN, since DNSO
is part of ICANN, as Louis Touton indicated: That ICANN should "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."
Also I want to remind that if the software was with GPL licences of part
of the software works with libraries of GPL licences, also the voting
software should be free of distribution, free for modifications, etc,
and also it should come with its source code.  I don't know at this
point if the software was made with GPL licences or uses GPL libraries,
etc... But I strongly suggest investigation on this issue.
Also please, I suggest you that you visit the following URL:  

http://www.dnso.org/secretariat/1999.Secretariatreport.html

In this report from AFNIC, it reports the following:

"With regard to specifications provided by the Names Council, the
Secretariat sets up and writes scripts for a voting
system allowing for anonymous votes by NC members, and disclosure of
full records once the results are known
and adopted. This system is used for the first time for the vote on the
WG-A report."

As you may realize no where the Secretariat, and I understand the
Secretariat as AFNIC and that Elisabeth Porteneuve is the deleguee of
AFNIC, since Secretariat services wasn't perfomed in Elisabeth own
behalf, 
never made any references or warning about costs regarding such voting
software, and clearly implies that the Secretariat is giving voluntarily
the software for the needs of the DNSO.  I don't know why now Mrs.
Porteneuve is claiming licences.  AFNIC wrote it, AFNIC 
voluntarily gave it to us, and now Mrs. Portneuve wants to charge for a
software voluntarily granted already with all sort of kind of limited
licences, etc, that looks like the dream license that Bill Gates would
wants for its software!.  This is totally unfair.


5. With regarding the change of DNSO Secretariat, let me remind you that
AFNIC wants a separate contract for provided all technical services
regarding Internet Services.  This means that contratation of AFNIC
either if it is only one contract or two contracts cannot take place
until all negociations regarding voting software, DNSO data, documents
etc, has being satisfactorily transfered to ICANN.

6.  Also I want to remind to this Committee that in view of this
situation that is happening right now, it is more than wise to include
provission in the future contract with AFNIC and Lodger INC (either will
be one or two contracts) provisions to avoid situations like this
happens in the future.   I suggested this provisions in the Search
Committee several months before, but I never had knows if they was
included in the list of points to cover sent to you by either Chuck
and/or Erica.

I hope this be resolved soon in the best interest of ICANN and DNSO.  We
must take care and protec ICANN's DNSO patrimony and stand against the
abuse.

Best Regards
Vany
 
> ken stubbs
> 
> ----- Original Message -----
> From: "Louis Touton" <touton@icann.org>
> To: <nc-budget@dnso.org>; "Philip Sheppard" <philip.sheppard@aim.be>
> Cc: "Glen De Saint Gery" <gcore@wanadoo.fr>; "Theresa Swinehart"
> <swinehart@icann.org>; "Stuart Lynn" <lynn@icann.org>
> Sent: Saturday, October 27, 2001 7:12 PM
> Subject: Intellectual-Property Arrangements Concerning AFNIC's Past
> Provision of Secretariat Services
> 
> > 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