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

["Gomes, Chuck" <cgomes@verisign.com>]

I certainly emphathise with the sentiments of Ken and Vany, but before we
take to strong a position, it probably is wise to remember that we received
a lot of no-cost services from Elisabeth and AFNIC.  I think it would be
useful if we as a committee discussed the concerns we have with Elisabeth
with the goal of reaching a mutually acceptable solution.

Chuck

> -----Original Message-----
> From: Nilda Vany Martinez Grajales [mailto:vany@sdnp.org.pa]
> Sent: Sunday, October 28, 2001 2:38 PM
> To: Louis Touton
> Cc: nc-budget@dnso.org; Theresa Swinehart; Stuart Lynn
> Subject: Re: [nc-budget] Re: Intellectual-Property Arrangements
> Concerning AFNIC's Past Provision of Secretariat Services
> 
> 
> 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
>