KOHA trade mark application - ways to help

[Tim McNamara]

I'm not affiliated with the Horowhenua Library Trust or the current
trade mark application by LibLime. Still, I have a little bit of
knowledge about the TM opposition process and would like to help.

For anyone unaware, LibLime (Progressive Technology Federal Systems,
Inc) is attempting to register the trade mark KOHA, which would
effectively mean it would be illegal for the original developers to
use the term KOHA in relation to the Koha library software.

Ways to help

The trust is asking for money, please donate:
http://koha-community.org/plea-horowhenua-library-trust/

If you have no money to give, however, there's something that's
probably just as valuable: find evidence of use from before the
priority date (13 Feb 2010). Do you know anyone in the GLAM sector who
knew about Koha before then? Did they print off any web pages? The
Trust will try to provide evidence that they used the term KOHA before
that date.

One of the most expensive parts of the opposition process is gathering
evidence. It often requires time to seek affidavits from experts,
track down materials, etc. By doing lots of this grunt work, you can
reduce the trust's legal fees.

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Nick Rout]

On Wed, Nov 23, 2011 at 8:40 AM, Tim McNamara

Post by Tim McNamara
I'm not affiliated with the Horowhenua Library Trust or the current
trade mark application by LibLime. Still, I have a little bit of
knowledge about the TM opposition process and would like to help.
For anyone unaware, LibLime (Progressive Technology Federal Systems,
Inc) is attempting to register the trade mark KOHA, which would
effectively mean it would be illegal for the original developers to
use the term KOHA in relation to the Koha library software.
Ways to help
http://koha-community.org/plea-horowhenua-library-trust/
If you have no money to give, however, there's something that's
probably just as valuable: find evidence of use from before the
priority date (13 Feb 2010). Do you know anyone in the GLAM sector who
knew about Koha before then? Did they print off any web pages? The
Trust will try to provide evidence that they used the term KOHA before
that date.
One of the most expensive parts of the opposition process is gathering
evidence. It often requires time to seek affidavits from experts,
track down materials, etc. By doing lots of this grunt work, you can
reduce the trust's legal fees.

There was an article in Linux Journal years ago, 2003:

http://www.linuxjournal.com/article/6350

I might have the original paper copy, if not there are archives in pdf
on the LJ website.

There will be a discussion on this topic on Radio NZ "Nine to Noon"
today. I won't be able to listen, but they have a podcast.

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Envy0pla]

Great! Thanks for linking ways we can help.

There is lots of information pre 2010 in the NZ library journal archives,
where to you want information sent?

Thanks,

Pikiora.

Post by Nick Rout
On Wed, Nov 23, 2011 at 8:40 AM, Tim McNamara

Post by Tim McNamara
I'm not affiliated with the Horowhenua Library Trust or the current
trade mark application by LibLime. Still, I have a little bit of
knowledge about the TM opposition process and would like to help.
For anyone unaware, LibLime (Progressive Technology Federal Systems,
Inc) is attempting to register the trade mark KOHA, which would
effectively mean it would be illegal for the original developers to
use the term KOHA in relation to the Koha library software.
Ways to help
http://koha-community.org/plea-horowhenua-library-trust/
If you have no money to give, however, there's something that's
probably just as valuable: find evidence of use from before the
priority date (13 Feb 2010). Do you know anyone in the GLAM sector who
knew about Koha before then? Did they print off any web pages? The
Trust will try to provide evidence that they used the term KOHA before
that date.
One of the most expensive parts of the opposition process is gathering
evidence. It often requires time to seek affidavits from experts,
track down materials, etc. By doing lots of this grunt work, you can
reduce the trust's legal fees.

http://www.linuxjournal.com/article/6350
I might have the original paper copy, if not there are archives in pdf
on the LJ website.
There will be a discussion on this topic on Radio NZ "Nine to Noon"
today. I won't be able to listen, but they have a podcast.
_______________________________________________
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Nick Rout]

Post by Envy0pla
Great! Thanks for linking ways we can help.
There is lots of information pre 2010 in the NZ library journal archives,
where to you want information sent?
Thanks,
Pikiora.

I see thet the Horowhenua Library Trust abandoned it's trademark claim
prior to registration. Shame they didn't follow through and left it
open to someone else to register.

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Tim McNamara]

[sorry if this is OT]

This misunderstands the nature of prosecuting a trade mark.

There are two types of trade marks, registered and unregistered. IPONZ
only deals with registered marks. That's why the trust's application
would have been rejected. It filed for registration after LibLime. As
far as the office is concerned, LibLime was first to file. Therefore,
LibLime has priority.

However, that does not mean that LibLime's application will be
registered. That's the point of the opposition process. It allows for
parties with unregistered marks to argue that the application doesn't
stick. The fight is much harder for the opponent though. The owner of
an unregistered mark needs to demonstrate a reputation in the market
place. That's why evidence is so important.

[sidenote]

I just remembered that the Act allows for honest concurrent use.
Therefore, if the application does go through to registration, there
is legal insulation from liability for the trust & other users of Koha
for trade mark infringement.

Post by Nick Rout

Post by Envy0pla
Great! Thanks for linking ways we can help.
There is lots of information pre 2010 in the NZ library journal archives,
where to you want information sent?
Thanks,
Pikiora.

I see thet the Horowhenua Library Trust abandoned it's trademark claim
prior to registration. Shame they didn't follow through and left it
open to someone else to register.
_______________________________________________
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Reed Wade]

Tim (or anyone), I'm curious if you have any insight into whether the
fact PTFS has never done business in NZ would weaken their claim in a
useful way.

thanks,
-reed

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Tim McNamara]

IIRC - no. You don't need to trade in a mark to seek registration for
it. However, if you don't use it within a 3 year (?) period, the
registration can be challenged by others and struck off the register.

Post by Reed Wade
Tim (or anyone), I'm curious if you have any insight into whether the
fact PTFS has never done business in NZ would weaken their claim in a
useful way.
thanks,
-reed
_______________________________________________
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Vik Olliver]

Post by Envy0pla
There is lots of information pre 2010 in the NZ library journal archives,
where to you want information sent?

Groklaw? :)

Vik :v)

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Jaco]

Post by Tim McNamara
If you have no money to give, however, there's something that's

probably just as valuable: find evidence of use from before the priority
date (13 Feb 2010). Do you know anyone in the GLAM sector who knew about
Koha before then? Did they print off any web pages? The Trust will try
to provide evidence that they used the term KOHA before that date.

What about the Internet Archive/WayBack Machine?
http://www.archive.org/

I think it gets used in some forensic cases, and has some legal credibility.

The earliest mention there I see dates back to 2000-08-17:
http://wayback.archive.org/web/20001001000000*/http://koha.org

- J

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Olwen Williams]

I don't know what sort of proof is needed about the use of Koha, but
the developers are all still around. Chris Cormack and I wrote the
first code late in 1999. Rachel Hamilkton-Williams and Simon Blake
from Katipo were involved with HLT, the key personnel there being
Rosalie Blake and Joanne Ransom. It was called Koha before it went
very early in 2000 (it was a Y2K project).

On Wed, Nov 23, 2011 at 8:40 AM, Tim McNamara

Post by Tim McNamara
If you have no money to give, however, there's something that's
probably just as valuable: find evidence of use from before the
priority date (13 Feb 2010). Do you know anyone in the GLAM sector who
knew about Koha before then? Did they print off any web pages? The
Trust will try to provide evidence that they used the term KOHA before
that date.
One of the most expensive parts of the opposition process is gathering
evidence. It often requires time to seek affidavits from experts,
track down materials, etc. By doing lots of this grunt work, you can
reduce the trust's legal fees.

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Olwen Williams]

The WIkipedia listing for Koha indicates that is was the 2000 winner
of the Not for Profit section of the 2000 Interactive New Zealand
Awards, and won the e LIANZA / 3M Award for Innovation in Libraries in
the same year.

On Wed, Nov 23, 2011 at 9:21 PM, Olwen Williams

Post by Olwen Williams
I don't know what sort of proof is needed about the use of Koha, but
the developers are all still around.  Chris Cormack and I wrote the
first code late in 1999.  Rachel Hamilkton-Williams and Simon Blake
from Katipo were involved with HLT, the key personnel there being
Rosalie Blake and Joanne Ransom.  It was called Koha before it went
very early in 2000 (it was a Y2K project).

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Martin D Kealey]

It seems all the noise here has prompted PTFS/LibLime to make a statement;
seems they intended all along to allow unfettered use of the trademark both
here and in the US, and they're willing to transfer both trademarks to a
"Koha Foundation" on the condition that they themselves are not restricted
from using the trademark as a result.

http://www.liblime.com/ptfsliblime-granted-provisional-use-of-koha-trademark-in-new-zealand

The only question now remaining is "why doesn't PTFS/LibLime already equate
'Horowhenua Library Trust' with their putative 'Koha Foundation', when it
already has the non-profit legal structure they're asking for?"

(Devil's advocate: Perhaps it's a matter of needing to add something to
their Articles Of Incorporation, rather than just make a public promise?)

-Martin

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Bruce Clement]

On Fri, Nov 25, 2011 at 12:07 PM, Martin D Kealey

Post by Martin D Kealey
The only question now remaining is "why doesn't PTFS/LibLime already equate
'Horowhenua Library Trust' with their putative 'Koha Foundation', when it
already has the non-profit legal structure they're asking for?"

Possibly just the language barrier.

In NZ law ", Inc" indicates a non-profit organisation
In US usage, ", Inc" indicates a for-profit organization (sic)

"The Americans are identical to the British in all respects except, of
course, language." Oscar Wilde
--
Bruce Clement

Home: http://www.clement.co.nz/
Twitter: http://twitter.com/Bruce_Clement
Directory: http://www.searchme.co.nz/

"Before attempting to create something new, it is vital to have a good
appreciation of everything that already exists in this field." Mikhail
Kalashnikov
_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Robin Sheat]

Post by Martin D Kealey
The only question now remaining is "why doesn't PTFS/LibLime already equate
'Horowhenua Library Trust' with their putative 'Koha Foundation', when it
already has the non-profit legal structure they're asking for?"

They don't like HLT. They have tried the foundation thing before, and
they've attempted to have meetings with HLT people before. The former
was refused when they wanted to have a controlling or nearly controlling
interest. The latter when they wanted HLT to keep the meeting private.

It's past the point (and has been for a year or so) where it's not
actually possible to take anything they say at face value.

Robin.

[Tim McNamara]

This is worth a read: http://koha-community.org/update-2/

I should have made it clearer earlier that I'm involved with the
opposition. Getting all of those references are really important
though. I'm sure they'll be worthwhile.

Post by Robin Sheat

Post by Martin D Kealey
The only question now remaining is "why doesn't PTFS/LibLime already equate
'Horowhenua Library Trust' with their putative 'Koha Foundation', when it
already has the non-profit legal structure they're asking for?"

They don't like HLT. They have tried the foundation thing before, and
they've attempted to have meetings with HLT people before. The former
was refused when they wanted to have a controlling or nearly controlling
interest. The latter when they wanted HLT to keep the meeting private.
It's past the point (and has been for a year or so) where it's not
actually possible to take anything they say at face value.
Robin.
_______________________________________________
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Michael Field]

A Christmas tale...

(caring mother) Here, have this hand crafted tapestry, I hope you find it useful, however you use it
(teenage son) Great, it's just what I needed!
(caring mother) [slightly surprised] Glad you like it!

A short while later...

(caring mother) Did you find a good place for that tapestry?
(teenage son) Sure did, it was very helpful!
(caring mother) Helpful?
(teenage son) Sure, I cut it into rags for checking the oil in the car.
(caring mother) You did what!?!

I have sympathy for the HTL but when you give things away it doesn’t always work out as you expect. :-(

It's also way I now never put anything on Trademe with a $1 reserve - sadly it's easier to put it in the bin once you no longer need it.

Mike

[Olwen Williams]

I've read and re-read this analogy and it doesn't seem applicable at all to me.

There is an interviews with Chris Cormack here.

http://www.itwire.com/business-it-news/open-source/51365-koha-dev-sad-angry-at-american-trademark-grab

On Fri, Nov 25, 2011 at 4:20 PM, Michael Field

Post by Michael Field
A Christmas tale...
(caring mother) Here, have this hand crafted tapestry, I hope you find it useful, however you use it
(teenage son) Great, it's just what I needed!
(caring mother) [slightly surprised] Glad you like it!
A short while later...
(caring mother) Did you find a good place for that tapestry?
(teenage son) Sure did, it was very helpful!
(caring mother) Helpful?
(teenage son) Sure, I cut it into rags for checking the oil in the car.
(caring mother) You did what!?!
I have sympathy for the HTL but when you give things away it doesn’t always work out as you expect. :-(
It's also way I now never put anything on Trademe with a $1 reserve - sadly it's easier to put it in the bin once you no longer need it.
Mike

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[cr]

I echo that - I couldn't see the relevance of it either.

Besides, the whole of Linux operates on the 'free' principle.

cr

Post by Olwen Williams
I've read and re-read this analogy and it doesn't seem applicable at all to me.
There is an interviews with Chris Cormack here.
http://www.itwire.com/business-it-news/open-source/51365-koha-dev-sad-angry
-at-american-trademark-grab
On Fri, Nov 25, 2011 at 4:20 PM, Michael Field

Post by Michael Field
A Christmas tale...
(caring mother) Here, have this hand crafted tapestry, I hope you find it
useful, however you use it (teenage son) Great, it's just what I needed!
(caring mother) [slightly surprised] Glad you like it!
A short while later...
(caring mother) Did you find a good place for that tapestry?
(teenage son) Sure did, it was very helpful!
(caring mother) Helpful?
(teenage son) Sure, I cut it into rags for checking the oil in the car.
(caring mother) You did what!?!
I have sympathy for the HTL but when you give things away it doesn’t
always work out as you expect. :-(
It's also way I now never put anything on Trademe with a $1 reserve -
sadly it's easier to put it in the bin once you no longer need it.
Mike

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

[Peter Harrison]

The analogy here is that if you give something away you can't control what
people will do with it. However, with the GPL there is a explicit contract.
The contract exists because we don't want individuals or companies
restricting and removing the freedoms we explicitly wish to give all
downstream recipients.

In the case of Koha a company has tried to obtain exclusive control over
the name of the software; a right to which it has in no uncertain terms not
been given by the Koha Community.

So to correct the analogy it is as if he took the hand crafted tapestry
from the wall of his mothers house and cut it into rags without permission.

Of course, when we talk about trademarks and other intellectual property
rights it is all far more complex and abstract.

Post by Michael Field
A Christmas tale...
(caring mother) Here, have this hand crafted tapestry, I hope you find it
useful, however you use it
(teenage son) Great, it's just what I needed!
(caring mother) [slightly surprised] Glad you like it!
A short while later...
(caring mother) Did you find a good place for that tapestry?
(teenage son) Sure did, it was very helpful!
(caring mother) Helpful?
(teenage son) Sure, I cut it into rags for checking the oil in the car.
(caring mother) You did what!?!
I have sympathy for the HTL but when you give things away it doesn’t
always work out as you expect. :-(
It's also way I now never put anything on Trademe with a $1 reserve -
sadly it's easier to put it in the bin once you no longer need it.
Mike
_______________________________________________
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug

_______________________________________________
NZLUG mailing list ***@linux.net.nz
http://www.linux.net.nz/cgi-bin/mailman/listinfo/nzlug