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 http://koha-community.org/.
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 http://www.koha.org/ 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.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".
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 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:
"Congrats,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".
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.
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.
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.