Monday, November 28, 2011

KOHA: All's well that ends well

The gift of rust
Last week we saw a breathless press release announcing that a "small New Zealand library is fighting to keep its trademark [sic] free software from the clutches of a United States corporation".  Joann Ransom of the Horowhenua Library Trust is "astounded an international company could trademark [sic] a Maori word".

Dannevirke librarian Michael Parry goes further, stating that the company "have also sort sought [sic] to claim ownership of the name Koha ... we have the ridiculous situation that they will deny the very people who originally developed Koha the right to use that name. What is even more stupid is that the Maori Advisory Board to the Trademarks [sic] people has approved this. Yep, they are happy to give a Te Reo term to a US company as a trademark [sic]".

The Horowhenua Library Trust

The Trust claims to be incorporated under the Charitable Trusts Act 1957, although there is no record of the Trust on the Charities Register maintained by the Charities Commission*.  It has a close relationship with the Horowhenua District Council.  According to the Trust's frequently asked questions, the Council funds 85% of the Trust's operation and appoints the Trustees.

On 17 April 2010 the Trust applied for New Zealand trade mark application 822685 KOHA for computer software.  Its attempt to secure trade mark protection was unsuccessful.  The application lapsed on 12 October 2011.

The Trust, and by extension the Council, is associated with a loosely defined group known as the "Koha community".  The Committee rules define Koha Community, Koha Software and Koha Project.  You can find out more on the site


According to its company profile, LibLime was founded in 2005.  In 2007 it acquired the KOHA division of Katipo Communications Limited.  Katipo, according to LibLime, originally created Koha for the Horowhenua Library Trust in New Zealand.  In 2008 LibLime closed its New Zealand office, providing support for its customers in that region through its US operations.  In March 2010 it was acquired by Progressive Technology Federal Systems (PTFS).  Check out for more details of LibLime.
On 15 February 2010 PTFS/LibLime filed New Zealand trade mark application 819644 KOHA for computer software.  The Intellectual Property Office of New Zealand (IPONZ) approved the trade mark for registration on 8 November 2011.  There is now a three month opposition period that started on 25 November 2011 during which interested parties can challenge registration.
On 23 November 2011 PTFS/LibLime issued a press release stating that:
"Another one of the assets acquired in the purchase of LibLime was an application for the trademark of the term Koha as it applies to ILS software in New Zealand. That application has now been accepted. PTFS/LibLime will hold that trademark in trust as well, and will not enforce it in order to insure that no individual, organization, or company will be prohibited from promoting their services around Koha in New Zealand.
PTFS/LibLime is prepared to transfer the trademark to a non-profit Koha Foundation with the provision that the Foundation hold the trademark in trust and not enforce it against any individual, organization, or company who chooses to promote services around Koha in New Zealand. PTFS/LibLime encourages a direct dialog with Koha stakeholders to determine an equitable solution for the disposition of the trademark that serves the best interests of the libraries who use Koha."
The next day a staff member from PTFS/LibLime confirmed that the company will "hand the NZ trademark off to a non-profit (including HLT) who agrees to continue our practice of protecting non-exclusive use of the name".

The response from the Koha Community

A posted comment from a "Dave" proudly announces he has been in contact with PTFS/LibLime.  He didn't like the reply he received so he sent another.  He encourages other members of the Koha Community to do the same. His reply:

On the News tonight in NZ.
You’re company really knows how to shaft the originator of the project.
You guys ever thought of becoming political lobbyist? from my knowledge of the American Lobbyiest community you’d fit in well, build a support base around an issue then claim it as you’re sole property.
great going.
Hope the NZ Govt gets hell over this (we’re leading up to an election in this coming Saturday Te he).
you’re application should never have been allowed. Do you even know what Koha means in Maori?
you’ll have all the Maori up in arms with the trademarking of a word that simply means in english “free” or “of no charge”.
No wonder America is so villified in parts of the world, you’re society has an arogance that defies belief and yet I aknowledge that as a society is very giving (YES I LIVE IN CHCH NZ) gone through all the earthquakes from Sept last year etc and appreciate the support of the Urban rescue group that came out here to help.
I hope that you’re company rethinks things and withdraws the trademarking of the word (unless you gift the trademarking in what ever markets you have obtained them to the originating Library which would give you kudos in the OSS arena and would avoid further bad press).
I can see this going on youtube and through the larger OSS community as well.
Another member of the Koha Community identies himself as "Rangi".  He says "what needs to be done is some research on Liblime’s client base, find out who the clients are and send them letters outlining what they have been up to. Target the big clients and work down. This would be cheaper than any legal action".

Are the responses from Dave and Rangi examples of behaviour we would expect to see endorsed by a "small New Zealand library" and its associated Howowhenua District Council?  Of course not.  It's not about them at all.  But it gives some good insights into the mentality of the Koha Community.

So what's all the fuss about?

As I mentioned above, Michael Parry claims that PTFS/LibLime "will deny the very people who originally developed Koha the right to use that name". This statement is hard to reconcile with PTFS/LibLime's pledge not to enforce the trade mark, and to transfer it to an appropriate entity.

The Horowhenua Library Trust is hardly in a position to object to commercial use of Maori words. It incorporates at least one such word in its name and branding. Furthermore, the Trust filed its own trade mark application for KOHA, so can't complain when others "trademark a Maori word".

The real dispute here is over who should own the KOHA trade mark in New Zealand. The participants are two competing factions within the open source community that have fallen out with each other.  So now it's simply a matter of sorting out who will own the mark and under what conditions.  All's well that ends well.

The image of the little Kiwi library fighting the big US corporate makes a better story but doesn't fit the facts.

* Update 29/11/11 - Thanks to Joann Ransom for pointing out that the Horowhenua Library Trust is the trading name of Te Horowhenua Trust.  The Charities Commission entry for Te Horowhenua Trust can be viewed here.  The Registration number is CC20328.

Photo courtesy of author Tom Beard under Creative Commons licence.


  1. I'm not sure you can say people who comment anonymously on the site are members of the community any more than I am now a patent lawyer because I have commented on yours.

  2. A few factual corrections: The link you pointed to was a news story, not a press release, and not something I authored. The software is called Koha. It is a Maori word not an acrononym so is not capitilized. Horowhenua Library Trust is the trading name for Te Horowhenua Trust. You will find it listed on the NZ Charities register, along with the Deed of Trust, annual reports etc.The Trust filed a rival application once we learnt that Liblime had filed.

  3. I've been following this story peripherally (as a library professional with no direct connection to anyone involved) and I think you perhaps have misunderstood the sequence of events that followed HLT's original post.

    For example, you ask "Are the responses from Dave and Rangi examples of [etc]". You imply Dave and Rangi are responding to the LibLime media release, but they posted their comments on the 23rd and 22nd, and the media release was published on the 24th (New Zealand time). You similarly criticise Michael Parry for comments that are hard to reconcile with LibLime's pledge, overlooking the fact that LibLime's pledge wasn't made until two days after Michael's comments.

    I think it's more accurate to characterise LibLime's media release as a way to make sure its poor relationship with the Koha developer community did not spread to its paying customer base (New Zealand librarians were starting to talk to their colleagues overseas, especially in the USA).

    Your image of the situation, if I may say so, makes a nice blog post but doesn't really fit the facts either ;-).

    The truth s no doubt someplace in the middle. This post is interesting, and though I can't vouch for its accuracy, it does show the issue hasn't sprung out of nowhere:


  4. Hi Joann. Thank for getting in touch.

    The article looked like a press release to me. There is no journalist listed. And the article doesn’t look very balanced. I’m not suggesting that you authored it. Just that it wasn’t a journalist.

    It’s good to hear you have secured a law firm to provide pro bono services. You may wish to get some advice from them about brand management. I tend to encourage people to use capitals for their brands.

    Thanks for clarifying the charitable status. I looked for Horowhenua Library on the Charities Register maintained by the Charities Commission. I see it now as Te Horowhenua Trust under number CC20328. I’ll update the blog post. You may wish to update your terms and conditions, especially as you are accepting donations from the public.

    I’m aware of the timing of the respective trade mark applications.

    Thanks for your comments.

  5. Gordon,

    I don’t mean to imply that Dave and Rangi are responding to the LibLime media release. In any case, I would never encourage anyone to send abusive xenophobic emails to a competitor. Likewise, I would never encourage anyone to target the customer base of a competitor and “send them letters outlining what they have been up to”. I don’t think this behaviour is appropriate.

    As for Michael Parry, I agree his sentiments are now out of date. I look forward to reading his revised more moderate views.

  6. Hi Matt:

    I don't think most of the people you're describing as "competitors" to LibLime are competitors in any traditional sense of the word. If it was just a commercial and/or open-source spat, it wouldn't be the story it is.

    You've highlighted a couple of angry posts, but there have been plenty of very measured public responses (for example, reposted on the NZ librarians mailing list) that make similar points in calmer language.

    And I don't see what's inherently wrong with stakeholders and customers (or even competitors) badmouthing a company to it's potential and existing customers. Isn't that just "word-of-mouth"?



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