Koha trademark grab: Trust hopes commonsense prevails

By: Sam Varghese
Source: www.itwire.com

The Horowhenua Library Trust, birthplace of the Koha integrated library system, says it will hope for the best but prepare for the worst as it continues to try and regain the rights to its own trademark in New Zealand.

Trust spokesperson Joann Ransom told iTWire today that it would prepare its objection to the granting of the Koha trademark to the American defence contractor, Progressive Technology Federal Systems/Liblime, hoping that, in the meantime, PTFS would do the right thing and transfer its application to the Trust.

As reported in iTWire, the trademark grab came to media attention a few days back when the Trust appealed for donations to object to the granting of the trademark. The original developer of Koha, Chris Cormack, has expressed anger and sadness at the US firm's actions.

Yesterday, the Trust said that PTFS had expressed its willingness to hand over the trademark to a non-profit which represented the Koha community. There is only one such organisation, and it is the Trust.

Koha is free software distributed under the terms of the GNU General Public Licence and is widely used around the world. The trademark grab will not affect the code but, if it is finalised, it would mean that the software would have to be distributed under another name. Koha is a Maori word that means reciprocity in giving gifts.

"The Koha global community have been in this position before of waiting for PTFS to do something it said it would do i.e. handing of the koha.org domain back into community hands," Ms Ransom said. "They never did it but gained many precious months to redesign the website while the community waited. The URL now clearly relates to Liblime Koha (which is a fork from the main branch) and is a totally different product from Koha."

She said lawyers who had offered to help the Trust on a pro bono basis would prepare the objection, hoping that PTFS would do the right thing and transfer its application to the Trust. The Trust has three months to file its objections.

"The community really do want to resolve this issue quickly and with the right outcome," Ms Ransom said. "I do not know if PTFS are getting grief in the US from the public but I do know that here in NZ it is a very big deal from a number of different angles. It won't just go away. In summary, we are hoping for the best but planning for the worst."

Asked what she thought about the government official who had made the decision to award the trademark to PTFS, Ms Ransom said she was not impressed.

"If it a box checking exercise, and I fear it might be, then they probably did it by the books. However, surely common sense and informed judgement should come into this process," she said.

"I sent background paperwork to IPONZ (the Intellectual Property Office of New Zealand) very early on and had numerous conversations with staff at IPONZ about the merits of our counter-application. Sadly, the information we had been given by IPONZ turned out to be wrong and the PTFS application was approved at the the 11th hour."

Asked for his input, well-known free software activist and GPL expert Bradley Kuhn said the GPL was a copyright licence, and was basically silent on trademarks.

"Only if a trademark licence in some way directly restricted the permission granted by GPL would the trademark licence somehow even have a chance to cause a GPL violation," he told iTWire.

"Indeed, it seems to me that a trademark lawyer, a copyright lawyer, and a GPL expert would probably have to sit down and have a rather long discussion to decipher this situation to come to a final conclusion about whether a GPL violation has occurred merely because of the trademark shenanigans."

Kuhn said he had no specific advice for the Koha community at this time.

"What I *do* have advice for is projects who *aren't* currently facing such problems: I recommend that such projects work with someone to get their trademark registered and publish a trademark policy for their project. This is an important issue that projects should address early in their life, before they face problems."

He said the Software Freedom Conservancy, for which he currently works as executive director, offered help to its member projects with both trademark registration and policies.

PTFS was contacted on Thursday for comment. The company is yet to respond.

It is not uncommon for US firms to attempt to gain a commercial advantage in smaller countries. In 2003, for example, the US company DE Technologies sent letters to a dozen New Zealand firms alleging they were infringing its patents and demanding annual licence fees.

Source: http://www.itwire.com/business-it-news/open-source/51377-koha-trademark-grab-trust-hopes-commonsense-prevails?start=1