Te Horowhenua Trust has won a David and Goliath battle over the trademarking of the Maori word koha. Koha – the Maori word for donation or gift – is the name of the open sourced library management system developed by the Horowhenua Library Trust and Katipo Communications in 1999. The library trust and Catalyst IT challenged a ruling in New Zealand by the Ministry of Economic Development in 2011 that American company Liblime PTFS which had acquired the Koha division of Katipo website and was also a contributor to the software, could trademark Koha.
In a 24-page judgment assistant commissioner of Trade Marks Jennie Walden found that Liblime’s product and the trust’s software were largely the same, except that the trust’s was free. It was also well-known in the market and considered it likely that a “substantial number” of people would be confused or deceived if Liblime used the Koha trademark. Ms Walden also awarded of $3820 to the Trust and $3550 to Catalyst IT.
Trust chief executive Joann Ransom was relieved and satisfied with the judgment. “We are very proud of Koha,” she said. “It was developed for the Horowhenua Library Trust and it was their decision to make it free and open sourced to all libraries. “To think a big American company could take over the name and shut us out was offensive. “We are just so thrilled the assistant commissioner found in our favour.”
Ms Ransom said she was grateful for the considerable support from libraries in New Zealand and overseas, as well as individuals from the Koha community all around the world.
Koha’s original developer Chris Cormack, now senior software developer at Catalyst IT, also said it was a great relief to have the case settled.
“While it hasn’t slowed down the progress of Koha, it has been a dark shadow hanging over us for nearly four years,” he said. “I would like to thank everyone involved in helping us, the many people who donated money, Buddle Findlay for representing the trust, my employer Catalyst, and AJ Pietras and Co who provided legal support, as well as the many thousands of people who sent well wishes.”
The free software library automation package was a world-first, and has been shared around the world. It has won a number of awards, including the 3M Innovation in New Zealand Libraries Award from the Library and Information Association of New Zealand in 2000, Les Trophees Du Libre in 2003, Computer World Excellence Award in 2004 and Telecommunications Users Association of New Zealand Award in 2000.