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Patronising tone

The patronising tone of this only served to inflame tempers yet further.

Verbal hostilities between PTFS and the Koha community have broken out again more recently with the news that the former's application for a trademark on Koha in New Zealand was close to acceptance. As a post on the Koha community site explained:

The situation we find ourselves in, is that after over a year of battling against it, PTFS/Liblime have managed to have their application for a Trademark on Koha in New Zealand accepted. We now have 3 months to object, but to do so involves lawyers and money. We are a small semi rural Library in New Zealand and have no cash spare in our operational budget to afford this, but we do feel it is something we must fight.

For the library that invented Koha to now have to have a legal battle to prevent a US company trademarking the word in NZ seems bizarre, but it is at this point that we find ourselves.

Adding fuel to the fire is the fact that the word "koha" is key and defining concept amongst the Māori, and the idea that something belonging to a people's cultural commons might be trademarked at all – let alone by a US company – has outraged many in New Zealand.

The original post from the Koha community explaining this situation was made last week, and events have moved fast since then. The call for help has been answered by donations from around the world to help prevent the award of a "Koha" trademark in New Zealand:

We have accumulated donations of about $12k, mostly through $20 and $50 donations from individuals around the globe (including many Americans) and the generosity of the legal profession offering free representation is amazing.

We have accepted the services of Sacha Judd, Andrew Matangi & John Glengarry from Buddle Findlay, assisted by Rochelle Furneaux, who have agreed to work pro-bono for us (bless them all I say). They have been guiding us for the last few days and are busy preparing a objection to the PTFS / Liblime application should one be necessary.

We believe we are well placed now to mount a strong legal challenge and we think we have enough in donations to cover filing fees, document costs and other disbursements.

However, that may not be necessary in the light of this press release by PTFS/LibLime:

When PTFS/LibLime purchased LibLime in March, 2010, one of the assets acquired was the trademark on the term Koha as it applies to ILS software in the United States. PTFS/LibLime has held that trademark in trust, purposefully choosing not to enforce it in order to insure that no individual, organization, or company would be prohibited from promoting their services around Koha in the United States.

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.

Here's what the Koha community has to say on that offer:

PTFS have issued a press release saying they are willing to hand the NZ Koha trademark over to a non-profit representing the Koha community. That organisation is the Horowhenua Library Trust, elected by the Koha global community, and we would be delighted to accept that offer and add the NZ Koha trademark to the store of other Koha community property we currently hold in trust ie domain names and trademarks.

Despite that apparent acceptance, it's not clear whether the Koha saga is really over yet, or whether there are more wrinkles – and surprises – to come. But separate from the details, there are number of broader issues that this story raises, and that other open source projects would do well to ponder.

The problems with the Koha project arose because the copyright to the original code was held by the company that wrote it under contract, Katipo Communications. That meant LibLime and then PTFS were able to acquire the copyrights and use them as the basis of their fork and trademark applications.

Lessons from the library

This shows that projects must never allow other entities to own such copyrights if they want to avoid these problems. Either the copyrights should remain with the individual contributors, or they should be assigned to an independent foundation. In the case of Koha, the natural candidate would be the Horowhenua Library Trust, and it's not clear why that wasn't done from the start.

The other issue that open source projects need to be aware of is trademarks. Although there is a natural reluctance to start lawyering-up in this way, it's something that projects would do well to consider as soon as their code starts to be widely used – especially if there are companies offering support: businesses have a tendency to secure any relevant trademarks that are not already taken. The Software Freedom Law Center has put together an excellent, though US-centric, guide to this whole area.

Finally, the Koha saga shows once again just how passionate people are about open source and its principles. Koha is not the first example of that, and certainly won't be the last.

Follow me @glynmoody on Twitter or identi.ca, and on Google+. For other feature articles by Glyn Moody, please see the archive.

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