Saturday, March 31, 2012

KOHA - Better late than never

Tug of War
It seems that another chapter closes on the KOHA trade mark saga.

New Zealand trade mark application 819644 KOHA is the subject of a kind of tug-of-war between two  competing factions within the open source community that have fallen out with each other.

One of the parties is the Te Horowhenua Trust trading as the Horowhenua Library Trust. The Trust 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 Trustees.

Another of the parties is Progressive Technology Federal Systems, Inc. The company trades as LibLime. PTFS/LibLime is the applicant for the KOHA trade mark application.

There seemed to be something of a media storm over this issue back in November. At that stage the Intellectual Property Office of New Zealand (IPONZ) had allowed PTFS/LibLime's trade mark application. There was a three month period during which parties could challenge registration of the trade mark.

The Trust is now getting legal advice on this issue. It is presumably getting assistance with media statements as we no longer seem to be seeing the same level of hostility in press releases. The issue is perhaps settling down into a regular legal dispute over ownership of a brand. Which is what it always was.

The request

Joann Ransom of the Te Horowhenua Trust (trading as Horowhenua Library Trust) mentions in a 2 February 2012 blog post that a letter has been sent to the applicant for the New Zealand KOHA trade mark.

The letter requested assignment of the New Zealand trade mark application to the Trust. The letter threatened a formal opposition to the trade mark application unless the Trust received a reply by noon 1 February 2012.

This is not the only threat LibLime has received from the worldwide online KOHA user community of course. I covered a few of the more angry ones in an earlier blog post. There's Dave for example who tells LibLime they will "have all the Maori up in arms with the trademarking of a word that simply means in english 'free' or 'of no charge'".

First barrel

Sure enough, an opposition was filed on 2 February, but not by the Trust. Catalyst IT Limited lodged a formal application to oppose registration.

Catalyst claims the KOHA trade mark is owned by the Horowhenua Library Trust. KOHA, says Catalyst, was used by the Trust since 1999 with the first computer software release made in January 2000. It's not clear to me whether KOHA has been used as the name of product, the open source project itself, or both.

The listed grounds of opposition include:
  • use of KOHA by LibLime is likely to deceive or cause confusion
  • use of KOHA by by Liblime would be contrary to law and disentitled to protection in a court of justice
  • LibLime is not the true owner of KOHA
  • the KOHA trade mark application was made in bad faith
  • LibLime's KOHA trade mark is identical to the Trust's well known mark

The response

JoAnn Ransom published a further blog post on 16 February 2012.

LibLime did in fact come back with a response. The response advised that LibLime is considering organisations as possible candidates to hold the New Zealand trade mark. The response invited the Trust to submit a proposal which would be required to address a number of criteria set by LibLime.

JoAnn's post also mentioned that the Trust has "spent a number of years negotiating with PTFS[/LibLime] and would prefer now to trust a transparent and defined process conducted through IPONZ as to the proper ownership of the mark in New Zealand."

Sounds like an opposition to me.

Second barrel

Sure enough, by the time JoAnn had published her latest blog post, the Trust had already filed its own opposition to the KOHA trade mark application on 13 February 2012.

The grounds are very similar to those listed in Catalyst's opposition.

An additional twist is that the Trust has filed its own trade mark application for KOHA, allocated number 953837. The application was filed on 13 February 2012, the same day as the Trust opposed LibLime's application.

We never saw Dave's prediction of having "have all the Maori up in arms" come to pass when LibLime filed the earlier KOHA trade mark application. I think we are unlikely to see a similar uprising following the Trust's application.

What now?

It is now up to LibLime to file a formal response to both oppositions. It's a case of wait and see.

There is general agreement among commentators that the Trust should have acted a lot sooner to secure intellectual property rights for its project. The position is best summed up in a post by Nathan Willis, who says that:
"... it seems that the project would have been better equipped to cope with LibLime’s withdrawal from the community had the domain name, trademarks, and perhaps even copyrights been held by a trusted entity such as HLT. Taking those legal steps is something few projects seem to consider when things are running smoothly. They are no doubt time-consuming and tedious, perhaps even expensive. But so is trying to do them in a hurry, ten years after the project launches, with hostile players going after your name."
It is good to see that the Trust is finally taking those steps. In my view it is a case of better late than never.

Photo courtesy of author TimmyGUNZ under Creative Commons licence.

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