Re: [nc-budget] Intellectual Property Agreement

[Louis Touton <touton@icann.org>]

Chuck,

The draft has not yet been sent to AFNIC because I was hoping that the
Budget Committee would coalesce on a view of what terms and conditions
are appropriately proposed to AFNIC.  In discussions within the past
week, budget committee members expressed the view that a
counter-proposal should be prepared and, if satisfactory to the budget
committee, submitted to AFNIC.  (See Roger's and Philip's notes.)

In considering this matter, I believe an appropriate starting point is
the Names Council's Decision D5 at its 24 January 2001 meeting:

   "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."

It seems natural that the Names Council, having decided conditionally to
pay AFNIC for the services it provided without any promise of payment,
would want the payment to result in the DNSO obtaining rights to the
materials generated in performing the secretariat function, including
any software necessary to continue those services.

Louis



"Gomes, Chuck" wrote:
> 
> I would suggest that this be given to AFNIC for their consideration if that
> has not already been done.
> 
> Chuck
> 
> > -----Original Message-----
> > From: Louis Touton [mailto:touton@icann.org]
> > Sent: Monday, November 05, 2001 6:33 PM
> > To: nc-budget@dnso.org; Philip Sheppard
> > Cc: Theresa Swinehart
> > Subject: [nc-budget] Intellectual Property Agreement
> >
> >
> > To the NC Budget Committee,
> >
> > Following up on the committee's discussion of the
> > intellectual property
> > rights that DNSO/ICANN should receive in the materials AFNIC has
> > generated in its performance of DNSO secretariat services, I have
> > prepared the attached Intellectual Property Agreement.  As you will
> > note, the agreement is simple, having a body that is only two pages
> > long.  Its principal features are:
> >
> >    1.  DNSO/ICANN would obtain a complete transfer of all of AFNIC's
> > rights in the materials on the DNSO web site.  (Exhibit A to the
> > agreement is a listing of all URLs on the web site, but has been
> > shortened in the attached document for your convenience in reviewing
> > it.)  With respect to materials prepared by AFNIC personnel and
> > consultants, AFNIC would warrant that title to the
> > intellectual property
> > is being conveyed to DNSO/ICANN.  With respect to other materials
> > (mainly public comments), AFNIC would simply transfer
> > whatever rights it
> > has without a warranty of title.  This transfer should permit
> > DNSO/ICANN
> > to continue to support its consensus-based policy-development
> > activities
> > in the domain-name area.
> >
> >    2.  DNSO/ICANN would obtain a perpetual, no-further-cost license to
> > all custom (i.e. not publicly available) software that AFNIC uses in
> > carrying out the DNSO secretariat functions.  This allows all future
> > secretariats the benefit of this software should they choose
> > to use it.
> >
> >    3.  DNSO/ICANN would enter the agreement only with AFNIC, not with
> > AFNIC's employees and consultants who have prepared the materials.  It
> > is AFNIC's responsibility to obtain the necessary rights from those
> > employees and consultants.
> >
> > I believe that the above, simple agreement is a reasonable
> > accommodation
> > of the various views of the committee, as well as being fair
> > to AFNIC.
> > It fittingly provides that AFNIC, upon being compensated for its
> > services, transfers to DNSO/ICANN the material that has been generated
> > during those services as well as the software to continue performing
> > those services.
> >
> > Best regards,
> >
> > Louis Touton
> >
> >