Reply inline: On Fri, May 22, 2009 9:44 pm, MJ Ray wrote:

paul POULAIN <paul.poulain@biblibre.com> wrote:

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BWS Johnson a écrit :

[...] 1. SHARED SUPERVISION OF TRADEMARK LICENSING.

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(While I know it is the intent for the marks to switch hands when there are users' groups functioning, is this intent in writing?)

Yes, I think eventually that was put into writing by everyone and I've got it saved somewhere.

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What would the conditions be for use of the mark by a non holder?

Ultimately, we don't know yet. I suggested something like everyone public-licensing with the OpenJDK terms, but the one-sided terms offered late by BibLibre would have more than halved software.coop's Koha business by cutting our geographic range, our domains and our packaging ability. I told Nicolas at BibLibre that on 14 April and we've not had another offer yet.

Until there would be an agreed Koha foundation, the holders of Koha trademarks for individual jurisdictions should share the supervision of trademark uses for communitarian purposes with at least the current members of the ad hoc Koha governance group. Shared supervision could be accomplished by assignment of rights over the trademarks limited to shared supervision of community uses under a contract. Such a contract should require all parties to surrender their rights to supervise community uses and for the trademark holders to transfer the trademarks to an agreed future Koha foundation. 2. PUBLIC TRADEMARK LICENSING. Some form of public licensing for community uses of the Koha trademarks should be created. Benjamin Mako Hill has an unfinished draft of a free trademark license for the Debian project. I do not know of any other models for public trademark licensing but the incompleteness of Mako's draft makes it little difficult to understand how it would work. Additional language would be needed for the license to grant clear permissions for community purposes without specific approval where those purposes were not directed by the community as already covered in Mako's draft. In the absence of any complete working model to adopt, developing a public trademark license would require careful consideration and expert legal advise. There may be people available to help with such an effort but it should not be undertaken without being prepared for the time and expense involved. 3. JAVA EXAMPLE. I do not know of any specific OpenJDK trademark licensing terms. OpenJDK is available under GPL 2 with the classpath exception which functions like the LGPL. However, the software license has little effect on trademark use other than to prevent the trademark holder from using the trademark to restrict the software itself and also distribute under the GPL. Sun does have somewhat liberal guidelines for using its Java trademarks. Those guidelines apply to uses of Java trademarks with OpenJDK. See the OpenJDK FAQ for the relation between OpenJDK and Sun trademarks, http://www.sun.com/software/opensource/java/faq.jsp . "The requirements for the use of the "Java" trademark and name have not changed with the open sourcing of the JDK and Java ME source code. The GPL v2 does not include a trademark license - no OSI-approved open-source licenses do. Sun does not currently have a licensing program that permits the use of the "Java" mark in your product or company name, and as owner of the trademark, Sun reserves the right to use the mark "Java" for its own products. You can use a truthful "tagline" however associating your product or company with Java technology, according to Sun's standard terms for use for trademarks. Please see http://www.sun.com/policies/trademarks/ for more details." There are some specific requirements for using the Java Logo, http://java.com/en/about/brand/ , along with guidelines for applying it, http://java.com/en/about/brand/downloads/java_guidelines_06.01.05_f.pdf . Sun wants Java to be publicised everywhere. This interest in publicising Java has lead to an effective practise of not trying to closely monitor and tightly control the trademark in some trade name uses. Ensuring that others are not overly cautious about using the Java name has helped the spread of Java to become such a large community that they cannot effectively monitor all uses of the trademark. This practise has been very successful for Sun. Sun have the advertising advantage always being recognised for Java first despite any peripheral name use violations. The Koha community would not have an advertising advantage over peripheral name use violations and cannot afford to be so generous. There is a need to reserve the use of Koha in a trade name for community use and apply the policy equally to everyone. However, the Koha community could learn from the Java example of encouraging the name to be widely publicised for community benefit. Trade name uses which serve a communitarian purpose but not an essentially private business purpose should be allowed as I believe they generally have been in the Koha community. 4. IMPORTANT FUNCTIONS NEEDED. The new Koha website ought to be enabling the development of localised content for particular linguistic, geographic, or other communities. However, in the current impasse over the new Koha website, development of the website is blocked. There is a need now as there always has been for people to set up websites with localised content serving particular linguistic, geographic, or other communities. Perhaps some have an interest in setting up localised content for a Spanish Koha community similar to the French localised content at koha-fr.org. Perhaps others have an interest in setting up German localised content. What licenses are available from the current Koha trademark holders for interested parties to set up such community websites using Koha as part of the name for strictly communitarian purposes? 5. TRIGGERING INFRINGEMENT.

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The idea behind the TM is that anyone would be able to TM Koha here, and could then threaten us. Of course we would have proof of previous use blabla, but we couldn't afford the process. oth, we could afford the EUR700 that a EU trademark required.

That's fine for BibLibre. It's much harder for anyone to use the mark against it now. Sadly, commercial trademark infringement doesn't need the holder to act for it to cause problems any more,

How are problems caused for commercial trademark infringement currently without action by the trademark holder?

so BibLibre have tried to put all other European Koha-distributing companies into the position it's avoided, by spending EUR700. Not very nice.

My view: firstly, my co-op has rights due to our efforts to promote the name years before any of the registrants were even incorporated;

6. GENERIC USE OF TRADEMARKS.

secondly, isn't Koha treated as a generic term for a family of free software perl LMSes for a while now?

I expect that generic use of Koha for free software LMS is rather limited. I assume that extant generic use of Koha for a free LMS does not approach the point of trademarks which have lost their trademark status to any degree. Hoover had lost some trademark status in the UK because 'hoover' became the popular term in generic use instead of 'vacuum cleaner'.

After all, it's a regular word in a few languages and it's not like the registrants try to defend against even blatent abuse.

I assume that as a word in a natural language effective trademark protection is limited to use as the name of a library system. I presume that uses such as the current redirection of http://www.koha.fr to a website for television marketing, http://www.prtv.fr.net-european.fr does not infringe the trademark as irksome as it may be. I had long ago suggested adding a modifier after Koha to associate the name more clearly with the trademark, such as Koha Library System. Trademarks are stronger when the usage of the trademark is adjectival. However, the name Koha functions much better in a world of many languages without some English words appended to the name. [...] Thomas Dukleth Agogme 109 E 9th Street, 3D New York, NY 10003 USA http://www.agogme.com 212-674-3783

MJ Ray wrote:

Thanks to international treaties (damn you WTO!), trademark and copyright law has slowly moved from the civil law into criminal law.

Well put, MJ. If copyright was solely a tort, jobsworths would be out of business. But it is easy for corps to lobby and have copyrights moved into the into realm of criminal law, thereby externalising the expense of taking legal action to the taxpayer. Corporate welfare. Enuf said. I could rant on about this for days ... but OT for this list.

Civil law usually requires action by the trademark holder, whereas criminal law only needs some jobsworth in the state to act.

I was curious about "jobsworth". <http://www.google.com.au/search?q=define%3Ajobsworth> digs these up: "A jobsworth is a person who uses his or her job description in a deliberately un-cooperative way, or who seemingly delights in acting in an obstructive or unhelpful manner." Sounds like a job description for opposition politicians ;) "Jobsworth is slang for a person who is very pedantic at work." Yes, I've worked with these types. My response: Get a Life. A Koha Life! cheers rickw -- _________________________________ Rick Welykochy || Praxis Services English doesn't borrow from other languages, it follows them down dark alleys, knocks them over and goes through their pockets for loose grammar. -- James D. Nicoll