Re: [nc-budget] Intellectual Property Agreement

[Elisabeth Porteneuve <Elisabeth.Porteneuve@cetp.ipsl.fr>]

Good evening,


> 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."

Agreed. 
It is the starting point, and worded exactly as it is: 
"A satisfactory report from AFNIC on the IP acquired by the DNSO".

Actually the above sentence recapitulates the longer one written 
in the Budget Committee report at:
http://www.dnso.org/clubpublic/nc-budget/Arc00/msg00243.html

  (1) AFNIC provides the Committee with a clear statement that describes the
  intellectual property rights that the DNSO has acquired by virtues of the
  services provided by AFNIC to the DNSO during 2000;
  



> 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.


This is totally inaccurate. I committed over public ICANN meeting
in Berlin, 25 May 1999, to provide 6 months of voluntary work as 
the DNSO Secretariat, helping to set up the newborn DNSO. 
I was perfectly clear, and well understood by the initial Names Council,
that the voluntary work is for half a year, and the DNSO needs to 
selforganize itself and provide financial resources starting in 2000 
- a permanent topic in almost all Names Council minutes posterior 
to September 1999. 
Actually the voluntary services did cover the year 1999 until 
its end - 7 months instead of 6.
Subsequently I was asked several times if myself and AFNIC may continue 
the Secretariat services until such time as the financial resources are 
collected. 
To some extend, since January 2000 AFNIC has been providing the loan to the
DNSO (ICANN).




A clarification - there is no, and never was, an agreement of software
development by myself or AFNIC for the DNSO. 

Furthermore, I want to point out that the voting software is my 
own creation, anterior to ICANN (created Nov 1998) and AFNIC itself. 
In August-September 1999 the Names Council, with Andrew McLaughlin 
help, spent several weeks on looking for voting scheme, under pressure 
to have ICANN Board directors election happen prior to Los Angeles 
November 1999 meeting. After determining the election procedures, 
the Names Council and the Secretariat had either a choice to buy 
services on the market (the market cost experienced by CENTR election
was circa $1,500 per ballot for 50 voters, we needed 13 ballots 
to elect the initial 3 directors), or to find other solution. 
I happen to have my own product which could be adapted, and actually 
was adapted by myself to the DNSO particular needs: convention 
style vote, secret and public during election, and providing for 
comprehensive full record on who voted for whom at the end.
I am willing to grant rights to the DNSO to use the software, 
but not to give it away.




To my knowledge, AFNIC has fulfilled its obligations.  
Yet, it remains unpaid for its services. Having fulfilled its 
obligation, AFNIC is now out $90,000. It seems the reason the $90,000 
remains unpaid is because of the software license. This is incredible 
because this was just one small point regarding the DNSO and not 
even part of the original deal. It is especially problematic to keep 
this amount of fees from a non-commercial organization. 
How such situation would be delt between two commercial companies ?




With regards to the proposal Intellectual Property Agreement (in PDF file,
attached to another message) - it is what ICANN wants and goes far 
beyond what Budget Committee and NC stated. It has many inaccurate 
statements in Recitals, including inaccurate quotation in (c).

I am submitting this text for consideration by my lawyers. The term 
"ICANN's own purposes" used in item (3) is not clear to anybody here.
Would you mind, please, draft Exhibit C enumerating all possible
ICANN purposes ?


Finally, let's talk informally in Los Angeles.
I am looking forward to the Budget Committee meeting
as scheduled on the week after Marina del Rey.

Elisabeth Porteneuve




-----Original Message-----
From owner-nc-budget@dnso.org Tue Nov  6 03:44 MET 2001
Message-ID: <3BE74F37.3746CEE4@icann.org>
Date: Mon, 05 Nov 2001 18:47:19 -0800
From: Louis Touton <touton@icann.org>
To: nc-budget@dnso.org
CC: Philip Sheppard <philip.sheppard@aim.be>,
        Theresa Swinehart <swinehart@icann.org>
Subject: Re: [nc-budget] Intellectual Property Agreement

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
> >
> >