INTRODUCTION
I am not just a librarian by training and trade. I am a librarian as a vocation, and I am using vocation in the spiritual sense. I believe in free open access to information right along with free public education in order to support a more informed public to support the collaborative decision making processes of our nation (and the world). So when the University of Michigan, where I work, went and put their necks out in support of Fair Use and open access, I was quite happy about it. The general shift here on campus toward using more open source software and resources is part of that whole movement, as is the open educational resources community on campus. Open Michigan is not just a website, but a mission, an institutional mission. That is just the background to show that I am both personally and professionally supportive of the open source movement.
This morning I had planned a completely different blogpost when someone from the UK sent me a tweet to alert me to a legal issue in New Zealand that relates to open source software used to support libraries and their activities. Two of my favorite topics — open source and libraries! It turns out that the problem appears to be being initiated by a company here in the United States, land of the free and home of the brave. (Happy Thanksgiving, everyone.)
On the one hand, you have a small library community that created some open source software to solve needs faced by many libraries for which, at that time, there were mostly rather expensive commercial solutions, or awkward homegrown solutions that didn’t quite address the whole picture. The software takes off, builds a strong community. Everyone is happy. ❤ small libraries! ❤ open source!
On the other hand you have a company that has built itself around supporting exactly the same open source software package. They mostly help out public libraries with small budgets and not a lot of technology staff figure out the tricky parts of making open source software work for them. They make it easier for the small guys to take advantage of the whole idea of open source. ❤ small libraries! ❤ open source!
You would think these two hands would be a match made in heaven, dovetailing together and helping each other out, like in the photo above where the hands meet and form a heart. A marvelous opportunity for "You scratch my back, I'll scratch yours." But that isn't what happens. Instead, the company supporting the open source software tries to take it over, trademarking the name of the software and its community.
This situation is alarming to me. Since I am not a lawyer or legal expert it is entirely possible that I am misunderstanding something here, however it looks pretty simple and straightforward, at least on the surface. Here is a small set of building blocks to spell out what seem to be the main pieces of the puzzle. See what you think.
ABOUT OPEN SOURCE
Open Source Initiative: Definition: http://www.opensource.org/docs/osd
“Open source doesn’t just mean access to the source code. The distribution terms of open-source software must comply with the following criteria:
1. Free Redistribution
2. Source Code
3. Derived Works
4. Integrity of The Author’s Source Code
5. No Discrimination Against Persons or Groups
6. No Discrimination Against Fields of Endeavor
7. Distribution of License
8. License Must Not Be Specific to a Product
9. License Must Not Restrict Other Software
10. License Must Be Technology-Neutral”
Of this list, in my non-legal perspective, the most important parts seem to be:
“1. Free Redistribution
The license shall not restrict any party from selling or giving away the software as a component of an aggregate software distribution containing programs from several different sources. The license shall not require a royalty or other fee for such sale.”
and
“3. Derived Works
The license must allow modifications and derived works, and must allow them to be distributed under the same terms as the license of the original software.”
(My italics.)
ABOUT KOHA
“Koha is the first free and open source software library automation package (ILS). Development is sponsored by libraries of varying types and sizes, volunteers, and support companies from around the world.”
“The koha-community.org domain is held by the Horowhenua Library Trust, the progenitors of Koha.”
Koha Library Software Community: http://koha-community.org/
ABOUT LIBLIME
“Today, LibLime is the global leader in Koha support. LibLime facilitates Koha open source solutions by providing consulting, development, implementation, and support/ hosting for libraries of all types & sizes. Koha provides libraries with a cost effective alternative to the traditional commercial model of software license costs and expensive annual maintenance.”
Liblime: http://www.liblime.com/
ABOUT “VERSUS”
“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.”
ABOUT TRADEMARK
“A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.
See 15 U.S.C. § 1127.
See also service mark, collective mark, certification mark, trade name.”
Cornell University Law School: Legal Information Institute: Trademark: http://www.law.cornell.edu/wex/Trademark
MY TWO CENTS
Briefly, it seems to me that the core idea of Open Source is “Thou shalt not require money or otherwise restrict the use of the product in any form” while the core idea of Trademark is “Thou shalt not use this product in any form without getting my permission (usually by paying me money)”. These two concepts seem to be diametrically opposed. This isn’t a case of another company using the same name to mean something entirely different. This is a company that specializes in supporting open source software trying to trademark the name of the software that they support. They work in this field! LIBLIME SHOULD KNOW BETTER!!!
That’s my two cents. Does this make sense, at all, to anyone out there? If so, please explain it to me. I cannot see any way in which this is right, or even reasonable or logical.
Hat tip to Maria Wolters
Emerging Technologies Librarian 
“Liblime should know better.” At one time they did. In fact that’s how they ended up with a trademark in the United States on the name “Koha.” At the time they were good players in the project, and seemed to be a sympathetic entity to hold the TM. As their business grew they increasingly became hostile to the Koha project and to the concept of Open Source. Now they release the code for their “Liblime Koha” product infrequently. They have never released the source code for their other fork of Koha, “Liblime Academic Koha,” formerly “Liblime Enterprise Koha.”
Thus saying “This is a company that specializes in supporting open source software” was true at one time, but no longer.
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This is very helpful information, Owen. Thank you for contributing to the dialog. I have since discovered people using the hashtag #kohails to collect information on this, with one collection at Delicious: http://delicious.com/tag/kohails There is also a Zotero group where people are collecting a bibliography of information and articles about this: http://www.zotero.org/groups/koha
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mmm… would be better for ggl rank to have links to koha-community.org rather than to ll.com …
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Well, to be fair, you really have to link to both sides of the controversy. Sigh.
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oups… i apologize: I missed the koha-community.org link. I don’t know how I did, because it appears clearly… sorry for annoyance
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Ah, that makes more sense! No problem, and thank you for visiting and commenting. If you have any other thoughts or insights into this issue, they’d be much appreciated. It sounds pretty messy. I’m confused what’s going on now that Liblime says they’ll transfer the TM to the Koha organization. So what have they been disagreeing about for the past year? Utterly puzzled.
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Maybe this will switch on some light: http://lists.katipo.co.nz/pipermail/koha/2011-February/027657.html
PS: if you read mailing lists history, you’ll see there is a clear misunderstanding between each of us: they speak with business terms, where we speak with OpenSource terms (i’m founder & owner of BibLibre, a company that is successfull in France, but I present myself as geek first. And businessman by mistake. PTFS/LL is businessman, geek by mistake)
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That does explain some of the differences. However … I’m still stuck with the idea that according to the definition of open source, one does NOT make commercial products from open source and then lock them down and charge money for them. I don’t work directly with ILS so haven’t worked with either of them on the products. It sounds from your comments in the link as if Liblime is indeed not just selling their support and services by also have switched the code from open source to proprietary. I have trouble with that idea.
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There’s a hole in GPL v2, that is almost 20 years old. It says “if you distribute the software, you must distribute the source code”. But fully hosted softwares like Koha can be, as it’s a web application, can be SaaS and not distributed.
Thus, it’s legal (but not fair, we agree) not to release the source code. That’s why GPL v3 has been made for, but Koha is GPL v2. We were thinking of releasing new code under v3, but there’s another problem: any user (ie: any patron using the library) could say “i’m a user of your OPAC -online public access catalogue-, Koha is v3, I want the source code. That would be a mess for libraries that have made some local tuning/modification: they should have to release the code, and that’s some work”
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Ahhhhhhh. Oh. OK, so they follow the letter of the law, but not the spirit. I really appreciate your taking the time to explain all of this to me. Really. Merci bien.
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They follow the letter of the law with regards to their “Liblime Koha” project, inasmuch as a fairly recent version of the code has been released (not up-to-the-minute, as Koha proper does). On the other hand, “Liblime Academic Koha” is completely closed-source. No public release at all.
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I have a problem with this part: ““Liblime Academic Koha” is completely closed-source. No public release at all.” I know. Legally it’s ok. I just have a problem with it.
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The development of our academic branch of Koha is planned and paid for by a single customer who intends to freely release the source on their own terms when the project completes their first tier of goals. The HLT community thinks they ought to have a say in when to release it, but the fact is it’s not even a LibLime decision.
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Oh, my, this is so complicated. You folks are in a pretty awkward situation right now, between a rock and a hard place, with the whole open source question. The branding issue just complicates matter. Liblime did a nice job with this statement:
“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.”
http://www.liblime.com/ptfsliblime-granted-provisional-use-of-koha-trademark-in-new-zealand?a=1&c=1254
Unfortunately, people seem to still have a lot of questions about that. It seems like perhaps the real question is not about the specifics as it is a sense of trust that Liblime will really do what they say. As an outside observer, it seems that Liblime was at one time a trusted member of the Koha community, and that the loss of trust is related to the academic project you mentioned. It is too bad that the academic customer/partner is refusing to allow Liblime to make gestures that would repair the loss of trust. Or am I still misunderstanding the situation?
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Our customer isn’t “refusing to allow” anything. They’re not ready. There’s nothing in the least bit wrong with waiting to release a project until it hits a milestone.
I don’t think any of us at PTFS/LibLime are nursing any illusions that transfer of this trademark will commend the HLT community to even mild feelings of trust or good will toward us. We don’t agree with the way they run their project and have the audacity to do it on our own instead, and we kept the name that we also have rights to. Those things aren’t going to change, and that’s an unforgivable sin to the HLT folks. We accept that.
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> Our customer isn’t “refusing to allow” anything. They’re not ready.
> There’s nothing in the least bit wrong with waiting to release a project
> until it hits a milestone.
Well, two points that seems important to me. There’s a big misundestanding about what is OpenSource:
* it’s perfectly fine not to release something you don’t distribute. It means that if a library want LL to develop something and not release it, it’s possible. The GPL just says “if you distribute the software, you must distribute the code and permission to modify&re-distribute it”. None of our libraries ever asked that, and if one wanted, we would explain what’s the problems THEY will have by not submitting/publishing their code.
* if the customer want it to be published, then it’s your responsability to explain them that OpenSource relies on “Publish soon, publish often”. All what we do is available at http://git.biblibre.com. Even at early stage. Maybe a developer local repo is a few days ahead from git.biblibre.com, but it’s a matter of a few days, no more.
“Not releasing something until it hits a milestone” is a big mistake/misunderstanding !
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Those are perfectly valid opinions, but to state it’s a “misunderstanding” is incorrect. We and our customer understand the tradeoffs involved, and it’s completely within the realm of responsible OSS stewardship to choose a different process. Part of the HLT community’s problem is their dogmatic, “this is the only way to do open source” insistence on their particular process methodology, as if it’s some absolute rule. OSS is not as monolithic as they would like to believe.
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I know you like to try and pretend that all your problems are just with a small library in NZ Clay. But you know that the Koha community consists of hundreds of people.
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Reviewing my comments here, I note that each time I mention HLT I say “HLT community.” It’s almost as if I’m paying attention to emphasize the fact that it’s not a single library but rather a large network of coordinated support. The fact is it’s HLT that’s attempting to give the impression that PTFS/LibLime is picking on (or “bullying” as the popular parlance would have it) on a single, tiny rural library. The narrative that seems so prevalent is that they’re the underdog, no doubt because of HLT’s framing of the issue.
It serves us not in the least to buy into and promote this false notion. This rather obvious dynamic makes your comment—as has been the case with all your comments elsewhere—spectacularly uninsightful.
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More information about the trademark suit, and why it was granted (you have to listen to the end).
http://www.radionz.co.nz/national/programmes/morningreport/audio/2503323/small-library-gets-global-backers-in-trademark-battle
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Of course, it should be stated that Koha is the Māori(NZ Native people) word for gift…
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That is the strangest part of this for me. How can they trademark a common WORD? This is especially true for languages that have such a strong identity associated with them. It is very appropriate to use that word for this product, but to trademark would seem to be another matter. Puzzling.
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At least in France (Europe ?), it’s legal to trademark a common term, but you must register it for something specific where your trademark isn’t related to this word.
Let me take an example:
* trademarking “Orange” as the name of a company businessing in “telephone” is OK. Trademarking it in the scope of “fruits” or “paintings” would probably not be.
* trademarking “Total” as the name of a company working in the petrol petrol area is possible. Trademarking is in the scope of “mathematics” would probably not be.
i’ve read that it’s impossible in NZ (but IMNAL, and IMNAkiwi -i’m not a kiwi-)
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There’s actually half a dozen or so other existing NZ registrations of the word “Koha” in various industry/market areas ranging from dry cleaning to automobiles. That suggests it’s not unusual to trademark a common Maori word. As Paul points out, the trademark has to be tied to a specific business sector and probably distinct from its common usage.
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