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

["Peter de Blanc" <pdeblanc@usvi.net>]

Greetings, colleagues:

As I see it, AFNIC was not paid for software development. Let's face it,
I run a commercial shop and I pay US $ 75 to $ 150 per hour for software
development. If the software was developed by individuals, on their own
time, or if AFNIC paid for software development, I do not see how DNSO
gets to automatically own such software as may have been developed just
because AFNIC was paid for web and secretarial services. 

The concept of a non-exclusive license to use the software for $ 1.00
per year seems reasonable to me. Perhaps the license agreement could or
should be for 10 years, or 25 years.

Peter de Blanc

-----Original Message-----
From: owner-nc-budget@dnso.org [mailto:owner-nc-budget@dnso.org] On
Behalf Of Gomes, Chuck
Sent: Sunday, October 28, 2001 7:28 PM
To: 'vany@sdnp.org.pa'; 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


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
>