Subject: where to send RFC 5378 license forms

From: "Randy Presuhn" <[email-masked]>
Date: Wed, 17 Dec 2008 19:32:36 -0800

Hi -

I've seen http://trustee.ietf.org/docs/Contributor_Non-Exclusive_License_RFC5378.pdf
Where are we supposed to have our WG members send the signed forms?  I'd like
to get our WG unstuck, since IETF action on fixing RFC 5378 seems unlikely.

Randy

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From: Martin Duerst <[email-masked]>
Date: Thu, 18 Dec 2008 12:46:43 +0900

I *assume* it's the same as for the TM Licence at
http://trustee.ietf.org/docs/IETF_General_TM_License.pdf,
which would be:

IETF Trust
1775 Wiehle Ave
Reston, VA 201905108
c/o IETF Administrative Director
Facsimile: 703.326.9881

However, it would REALLY be good if the Contributor licence
also contained the necessary details on how and where to
submit. I have already made that suggestion on the IETF list.

Regards,    Martin.

At 12:32 08/12/18, Randy Presuhn wrote:
>Hi -
>
>I've seen 
>http://trustee.ietf.org/docs/Contributor_Non-Exclusive_License_RFC5378.pdf

#-#-#  Martin J. Du"rst, Assoc. Professor, Aoyama Gakuin University
#-#-#  http://www.sw.it.aoyama.ac.jp       mailto:[email-masked]

---

From: "Randy Presuhn" <[email-masked]>
Date: Wed, 17 Dec 2008 20:07:23 -0800

Hi -

> From: "Martin Duerst" <[email-masked]>
> To: "Randy Presuhn" <[email-masked]>; "Working Group Chairs" <[email-masked]>
> Sent: Wednesday, December 17, 2008 7:46 PM
> Subject: Re: where to send RFC 5378 license forms
>
...

Thanks!

Randy

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From: Ray Pelletier <[email-masked]>
Date: Thu, 18 Dec 2008 07:13:24 -0500

> c/o IETF Administrative Director

This is correct.

Alternatively, one could pdf a signed copy and email to [email-masked].

I am investigating automating the process and will keep you apprised  
of the possibility and progress.

Ray
IAD

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From: Sam Hartman <[email-masked]>
Date: Thu, 18 Dec 2008 14:14:44 -0500

Why do we need to send these license forms in at all?

I thought the requirement was that the authors get the necessary
rights.  Are you just conveniently keeping track for us?

---

From: Andrew Sullivan <[email-masked]>
Date: Thu, 18 Dec 2008 14:21:39 -0500

> rights.  Are you just conveniently keeping track for us?

I think it will make it easier to get proof of the necessary rights
having been granted if there's a repository that makes available the
names of those who have granted the rights once and for all.

A

-- 
Andrew Sullivan
[email-masked]
Shinkuro, Inc.

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From: Ray Pelletier <[email-masked]>
Date: Thu, 18 Dec 2008 14:35:14 -0500

> names of those who have granted the rights once and for all.

Concur.  Names will be posted.

Ray

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From: Ray Pelletier <[email-masked]>
Date: Thu, 18 Dec 2008 15:26:33 -0500

> rights.  Are you just conveniently keeping track for us?

I would envision folks providing 5378 licenses to the Trust or their  
pre-5378 work. If licenses are submitted their names could be posted  
online for other Contributors to  ascertain whether a pre-existing  
work has been so licensed.

Ray

---

From: Ray Pelletier <[email-masked]>
Date: Thu, 18 Dec 2008 16:27:29 -0500

On Dec 18, 2008, at 4:12 PM, Simon Josefsson wrote:

> Ray Pelletier <[email-masked]> writes:
>
> How does this help contributors use the older material?  As far as I
> understood the rules, it is the author that needs to get the necessary
> rights from the original contributor before submitting it to the IETF.
> The form appears to give the necessary rights from the original
> contributor to the IETF Trust, not to the authors.

Good point.  Probably need to update Trust Policy - I'll check into it.

Ray

> /Simon

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From: Harald Tveit Alvestrand <[email-masked]>
Date: Fri, 19 Dec 2008 08:30:35 +0100

> contributor to the IETF Trust, not to the authors.
If the Trust has those rights, it's licensing them to all participants 
under the same terms as post-5378 works.

               Harald

---

From: Harald Alvestrand <[email-masked]>
Date: Fri, 19 Dec 2008 12:07:26 +0100

Simon Josefsson wrote:
> Harald Tveit Alvestrand <[email-masked]> writes:
>
>   
>> Simon Josefsson skrev:
>>     
> Not as far as I can see. 
You're right. I should have said "It should be licensing them", since 
the current text of the Trust's license says that it applies only to 
post-5378 works.
>  The Outgoing license from the Trust does not
> include many of the rights required from contributors in Incoming.
>   
That's by design. As John said so many times during the discussions: "we 
probably have to expand the rights granted to the Trust once, but we 
should make very, very sure that we don't have to do it again".
> For example, RFC 5378 section 5.3 d) says:
>
>    d. to reproduce any trademarks, service marks, or trade names which
>       are included in the Contribution solely in connection with the
>       reproduction, distribution, or publication of the Contribution and
>       derivative works thereof as permitted by this Section 5.3,
>       provided that when reproducing Contributions, trademark and
>       service mark identifiers used in the Contribution, including TM
>       and (R), will be preserved.
>
> The 'Legal Provisions' document does not mention trademarks.  Thus, by
> default, there is no grants of rights related to trademarks from the
> IETF Trust to IETF participants.
>
> If you are updating a pre-RFC 5378 document that contains trademarked
> words, it isn't sufficient for the old contributor to have signed the
> IETF Trust form if the document contains trademarks.  You need to
> contact him anyway, to get permission to reproduce the trademark.
I sure hope that's a bug (and one that, because of the separation of 
concerns, we can get fixed without spinning up a working group).

                    Harald (thankful to not be IPR chair any more, and 
being back to just having opinions)

---

From: Simon Josefsson <[email-masked]>
Date: Thu, 18 Dec 2008 22:12:42 +0100

/Simon

---

From: Simon Josefsson <[email-masked]>
Date: Fri, 19 Dec 2008 11:30:14 +0100

> under the same terms as post-5378 works.

Not as far as I can see.  The Outgoing license from the Trust does not
include many of the rights required from contributors in Incoming.

/Simon

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From: "Donald Eastlake" <[email-masked]>
Date: Fri, 19 Dec 2008 14:05:34 -0500

On Fri, Dec 19, 2008 at 5:30 AM, Simon Josefsson <[email-masked]> wrote:
...
> contact him anyway, to get permission to reproduce the trademark.

You should consult an attorney but, as far as I know, at least in the
US, there is no magic permission needed to "reproduce" a trademark.
Usually trademarks are to indicate the source of a product or service
and as long as you don't mislead people about that, you are fine.

Donald
=============================
 Donald E. Eastlake 3rd   +1-508-634-2066 (home)
 155 Beaver Street
 Milford, MA 01757 USA
 [email-masked]

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From: "Donald Eastlake" <[email-masked]>
Date: Mon, 29 Dec 2008 19:17:45 -0500

On Mon, Dec 29, 2008 at 11:19 AM, Simon Josefsson <[email-masked]>wrote:

> "Donald Eastlake" <[email-masked]> writes:
>
> Then what use does section 3.4 of RFC 5378 serve?

There is a reason I suggested you consult a real lawyer, but I suppose bars
the authors of an RFC from later making a claim that the RFC or derivative
works infringe on the trade mark, that is to say, leads to confusion as to
the source of some good of service.

3.4.  Rights to Use Trademarks
>
>   Contributors may wish to seek trademark or service mark protection on
>   any terms that are coined or used in their Contributions.  The IETF
>   makes no judgment about the validity of any such trademark rights.
>   However, the IETF requires each Contributor, under the licenses
>   described in Section 5.3 below, to grant the IETF Trust a perpetual
>   license to use any such trademarks or service marks solely in
>   exercising rights to reproduce, publish, discuss, and modify the IETF
>   Contribution.  This license does not authorize the IETF or others to
>   use any trademark or service mark in connection with any product or
>   service offering.
>
> It was co-authored by the IETF attorney, so I suspect it is intended to
> serve some purpose.

See my comment above.

If it serves a purpose, contributors needs to get the necessary right
> and be able to transfer it to the IETF Trust in order to submit a
> contribution.  As far as I understand, that would involve talking with
> the old contributor if trademarks are involved.

That does not follow. No license is needed for non-infringing use of a trade
mark but granting even an unnecessary license probably makes it harder to
get very far with a law suit against the IETF transferring some of a very
small risk from the IETF to the contributor. There is no way to be perfectly
safe in the current legal system but doing anything, including producing or
publishing any document, probably increases your risk.

Do you believe that Jon Postel or its current authors needed "to get the
necessary right" to publish each of the large number of trademarks in STD 1
(currently RFC 5000)?

/Simon

Thanks,Donald