Thoughts on URL scheme registration and trademarks

In Memphis, we touched briefly on the subject of trademarks in URL
scheme names.  I've given this some thought, and the following is an
analysis of issues as I see them, combined with some suggestions.  There
is one thing I want to be very clear about before I begin: I am not an
attorney, and although the discussion involves issues of law, I am not
competent to provide a legal opinion.  (I suspect that those of us who
represent vendors in the IETF may eventually want to raise some of these
issues with our respective legal departments, however.)  Also, the usual
disclaimer: the below does not represent an official position or policy
of Microsoft -- I am raising issues and asking questions as an
individual member of IETF.  

The issue as originally raised was: what if an entity wants to register
a URL scheme name that is a trademarked name?  What if that entity does
not own the trademark?  As I consider this, there are two overall
issues: what liability does this possibly create for IANA (assuming, for
the sake of this discussion, that's who is registering URL schemes), and
what liability does this create for the registering entity?  The former
question is critical to the success of a registration scheme -- if we
develop a plan that may expose IANA to lawsuits (frivolous or
otherwise), the plan will probably be rejected by IESG and almost
certainly by IANA.  On the latter issue, there may be some things we can
do to make litigation less likely, but that's nowhere near as critical,
as long as any liability is borne by the proper parties (and NOT the
registry, e.g. IANA).  

There are several approaches, each with its drawbacks:

-- disallow any trademark as a URL scheme name.  The problem with this
is, it implies that IANA must do trademark searches before accepting a
registration.  
-- allow IANA to reject any registration if it *reasonably believes* it
infringes on a trademark.  A slightly lower bar than the former, but
still fraught with peril; IANA could be sued for 'wrongly' rejecting an
application, and it still leaves them hanging out for 'wrongly'
accepting one.  
-- require the registering entity to certify that it's not a trademark
or, if it is, that it's a trademark being used with approval (maybe the
entity owns it).  The problem here is that a good faith registering
entity (which may be an academic institution) now needs to do a
trademark search, which is not an easy (or cheap) enterprise.  Further,
it bogs down what we want to design as a simple process, to encourage
its use.  

After considering this quite a bit, I have some suggestions:

1.  Discourage the use of trademarks as URL scheme names.  In my
opinion, a vendor is probably opening itself up to all sorts of
headaches by using its trademark as part of a UNIVERSAL resource locator
name.  I think we should just say, "Don't do it" right out of the gate.
URL scheme names that are simple, descriptive words or acronyms are
likely to be things you can't copyright, in any event.  

2.  As part of the registration 'document' that is completed to register
a URL scheme name (especially a private one), a vendor may state, yes,
this is my trademark (for instance, the aol: scheme).  This serves as a
warning to others that the vendor may wish to defend certain rights
regarding that name.  (And the whole point of the registration is that
you then know who to contact.)  

3.  As part of the registration 'document', include language to the end
that the registering agency agrees to indemnify IANA and hold the agency
harmless if there is a dispute regarding the scheme name.  This one is a
bit sticky, as it involves creation of a legal responsibility on behalf
of the registering entity.  I suspect it would involve hiring legal
counsel for IETF/IESG to draft the language.  

4.  Do we want to supplement the above, by stating explicitly that IANA
can refuse or cancel a registration for good cause?  This would include
apparent or actual trademark violation, lack of sufficient progress on
implementation, poor taste, etc.  That still requires the
indemnification language, though, to keep IANA out of court if, for
instance, they make a 'good faith' call and are wrong.  

5.  Also, we may want to include language that the registering entity
agrees that, if it registers a scheme name and it's then discovered it's
a trademark, the registration is cancelled by IANA unless the entity
gets the approval of the trademark owner.  This is getting into muddy,
swampy area, too, but again it may allow people to settle any issues
amicably, and keep IANA out of the middle.  

6.  Finally, we need to make it clear in the registration document that
IANA is NOT doing any trademark review or analysis.  No one should
assume any such responsibility on IANA's part.  

I think somewhere in here, some blend of these may produce a useable
plan.  For instance, if IANA can reject/cancel a registration for good
cause, and the registering entity agrees to indemnify IANA if it makes a
mistake in 'good cause', we may have cut down the space of possible
issues/misunderstandings.  And, we'll never come up with something
that's completely lawsuit-proof -- that's just the nature of (at least
American) society today.    

Thoughts?  Flames?  Thanks.  
> --------------------------------
> A mind, once stretched by a new idea, never regains its original
> dimensions.
Ian King, QA Lead <iking <at> microsoft.com>
Microsoft Information Retrieval -- Internet Servers Business Unit