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The Bikram lawsuits and why it matters to you

By Anandashankar Mazumdar April 18, 2013

Several recent lawsuits initiated by Bikram Choudhury and his organization have sought legalrecourse against studios and teachers over claims of intellectual property infringement. While thesecases may not immediately appear to be relevant to those outside of the Bikram community, therehave been several rulings that have implications for the broader yoga community, and how one runs ayoga business.

The primary takeaways from those rulings are as follows:

You cannot claim copyright interest in a sequence of yoga asanas , according to one districtcourt.A sequence of yoga asanas or any sequence of exercises is not the equivalent to apantomime or a choreographic work , according to a statement of policy issued by theCopyright Office.

You can claim copyright interest in the expressive portions of a book that teaches yoga .However, the issue in the courts is whether any poses included in that book would be covered bythe copyrights covered in the book. According to one district court opinion and the statement of policy referenced above, those poses would not be covered by that copyright.It is questionable whether the term Bikram Yoga will continue to be a protectabletrademark belonging to Choudhury or whether it is has or will become a generic term describing a type of hatha yoga. As a relevant example, the termPilates was originally a trademark of Joseph Pilates, but was subsequently found to be generic.

Continue reading to learn more about intellectual property law in general and the details of these recent rulings related to yoga.

Introduction to intellectual property lawIntellectual property law was once considered an esoteric branch of the law, mostly affecting particular industries, such as music, movies, and manufacturers of cutting-edge technology machines. A small business, in particular, might not have expected to have to be very knowledgeable about IP law unless it found itself

unfortunate enough to be drawn into a dispute over the right to use a particular name.

However, a few worldwide trends over the last few decades have made IP law more relevant to small businesses. On top of that, certain commercial and legaltrends have also brought IP law into the purview of those involved in the business of yoga training and education as well.

The most obvious trend is the rise of the internet and digital communication. Those seeking to find customers for their services, as well as those seeking toeducate themselves have at their fingertips a powerful tool, giving them an unprecedented reach and potential.

At the same time, the internet also breaks down traditional barriers of geography and distance. So those communicating over the internet must be careful thatwhat they say doesnt violate other peoples rights, the kinds of rights that would have been near impossible to trample on if one was unable to communicateinstantaneously all over the world.

Another one of those trends is globalization. Globalization has not only aided in the spread of culture and knowledgea factor directly implicated in increasingknowledge of yoga outside of its traditional homelandbut it has also extended the reach of those wishing to protect their creations.

Types of intellectual property lawIntellectual property is a collection of different concepts. So, before going into the specifics of how recent events in IP law bear directly on the yoga industry, itmight be beneficial to briefly review each of the major types of intellectual property.

PatentsPatent law protects inventors of useful ideas. Specifically, under U.S. law, in order to be eligible for a patent, an idea must (1) have utility , that is, be useful, (2)must be non-obvious , and (3) must be novel . Traditionally, patent law was seen to be the realm of the inventors of machines or tools or chemical processes --physical things. However, throughout the 20th century, the reach of patent law has grown to include things that are much less physical. To the extent that

processes might be useful, novel, and non-obvious, they might be eligible for protection under patent law.

What a patent gives an inventor is the exclusive right to practice the invention embodied in that patent for 20 years. In exchange for this exclusive right, thepatent holder must disclose to the public the nature of the invention. And after the patent expires, anyone is free to start practicing the invention in that patent.

In the United States, patent l aw is purely federal. States do not have the power to govern the awarding or enforcing of patents. Furthermore, a patent right is onethat must be applied for and granted by the federal government, specifically, the U.S. Patent and Trademark Office (PTO), an arm of the U.S. Department of Commerce.

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In U.S. patent law there is also something called a design patent, which applies to the ornamental design of a useful item. Contrary to the usual kinds of patentsutility patentsin order to get a design patent, you have to show that your design is non-functional , that is, the design is not part of what makes theobject useful.

Like utility patents, however, to get a design patent, you have to show that the design is non-obvious and novelthat it has never been done before. A designpatent lasts only 14 years.

Design patents are kind of a strange feature of U.S. intellectual property law. Most things that would be covered by design patents may be better protectedunder trademark law (which can last forever) or copyright law (which can last many decades longer than patents).

TrademarksTrademark law has its origins in the protection of consumers against those wishing to mislead them into purchasing goods or services by falsely branding themwith names or symbols of producers with good reputations.

But the enforcement of trademark law is in the hands of the providers of goods and services. In order to earn trademark rights, a producer of goods or servicesmust use in commerce a mark of some kinda word, a phrase, an image, or sometimes even a color or a soundas the indicator of the origin of those goodsor services. The rights arising through such use for an unregistered trademark are called "common law" rights. If a federal registration has been obtained for atrademark, then that is referred to as a "registered trademark" and there are additional rights that flow from the registration.

While patent rights are automatically enforceable nationwide against all those who might want to practice that patent, trademark rights are more bounded. Atrademark holder only has rights that derive from the specific place, time, and manner that the trademark is being used in commerce. This region is called thezone of use. The zone of use is typically defined as the zone to which your advertising reaches and from which your customers are drawn. In contrast, theowner of a federal registration has trademark rights over the entire nation, although these rights are still bound by the time and manner of use, as with commonlaw trademarks.

For example, the owner of a yoga outlet might develop trademark rights in a particular name, say, Whole Health Yoga Studio, only in those specific areaswhere services are being provided, such as a particular town or county or state. Also, trademark rights are bounded by the specific types of goods and servicesbeing offered. So, Whole Health Yoga Studio might not have rights against Whole Health Organic Foods.

Unlike patent rights, trademark rights are not the exclusive realm of the federal government. Trademark rights can also be developed under state law. So,depending on the reach and ambition of a businessand the reach of i ts competitorsa business owner has a choice of what levels to pursue protection.

Furthermore, as stated previously, trademark rights are not granted by the government, like patent rights are. Trademark rights are developed through use incommerce .

When two users of a trademark clash, there has to be a determination of who has senior rights, and this is based on which party has been using a mark longer in a particular field and/or geographic area. The only exception is for a trademark that has acquired significant national fame, in which case these limitations onfield of use and geographic area do not apply. This mark would also be protected against dilution, regardless of the field of use or zone of use. Dilution providesthe owner of the famous trademark the ability to forbid others from using the famous mark in any way that might dilute its uniqueness. The most commondilution situation involves someone using a famous mark without authorization on products that are not competing with, and often have little connection with,those of the trademark owner.

Both state and federal governments allow trademark holders to register their trademarks, but it is important to understand that registration is not the source of trademark rights. Registration gives a trademark certain advantages when it comes to a legal dispute, but simply filing an application for a registration is not thesame as acquiring trademark rights in your brand or symbol. Trademark rights arise from use in commerce , which is required for both common law trademarksand federally registered trademarks. Even when one applies to register a trademark, rights cannot be obtained simply by filing an application. In fact, in order to

better understand IP law, IP protections, and IP enforcement, it might be well advised to not speak of "trademarking" something like a brand name or a logo. So,avoid using or thinking of the word "trademark" as a verb. A business doesn't "trademark" its name; rather it may "own" or "have rights" in its mark and it "uses"its mark and perhaps "register" it.

CopyrightsThe same might be said of the word copyright. It is common to hear people talking about copyrighting something. But this term used as a verb doesnt helpone understand how copyright law really works.

Just as patent rights are granted when the government issues a patent, and as trademark rights are earned through use in commerce, copyrights have their ownway of coming into existencefixation. Copyright protections come into existence when an author or creator fixes in a tangible medium an original work of expression.

When an author fixes an original workfor example, by writing it down, or recording it, or filming itthen the exclusive rights granted by copyright lawautomatically come into existence. Like patent law, copyright law is the exclusive domain of the federal government (except for certain, very limited nicheexceptions).

There is also registration in copyright law, like there is with trademark law. But, as with trademark law, registration is not the source of rights. There are certainadvantages to registration, and in order to bring a claim in federal court to enforce your copyrights, you must have registered, but your rights come into

existence as soon as the work is fixed in a tangible medium.

Trade SecretsTrade secret law is not part of federal law. It is the exclusive arena of state law in the United States. And almost all the states have passed some version of theUniform Trade Secrets Act.

In order to have trade secret rights, an enterprise must have a secret some kind of advantage that is not generally known to competitors. This advantage mustbe confidential and material to their business. And the enterprise must take steps to protect that secret, such as ensuring that employees understand that theyare not to reveal proprietary information to competitors.

One of the most common forms of trade secrets is a customer list and cl ient files. And one of the most common ways of misappropriation is for an employee totake such information and to start his or her own business by trying to poach customers from the list, using information like their purchase histories.

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Court decisions and administrative rulings relevant to yogaGiven that basic overview of the principal forms of IP rights, there are several specific events that are of interest to those in the yoga community. These rulingsand policy statements offer important insights into how operators of yoga businesses might be affected by IP law.

Choudhury files for rights to a sequence of asanasChoudhury wrote a book called Bikrams Beginning Yoga Class . He registered his copyright interest in this work with the Copyright Office, and then, in 2002 hefiled what is known as a supplemental registration, which is essentially a correction, when the original registration is incorrect or incomplete.

According to the supplemental registration, Choudhury was not only claiming rights in the book itselfwhich is usually a relatively uncontroversial matterbuthe was also claiming rights on the sequence of 26 asanas taught in the book.

An organization called Open Source Yoga Unitywhich, according to its website, is a non-profit collective to ensure the continued natural unfettereddevelopment of Yoga for all to enjoychallenged this supplemental registration and asked the U.S. District Court for the Northern District of California to issuea declaratory judgment saying that Choudhury could not have exclusive rights over the sequence of 26 asanas.

Court states it is not impossible in theory for a sequence of yoga asanas to be protectedIn 2005, the court rejected Open Source Yoga Unitys argument that this supplemental registration was invalid as a matter of law. According to the court, thesequence might be protectable as a compilation . The Copyright Act protects not only individual works, but also compilations of materials, although only to theextent that there is some originality in the creation of the compilation itself.

Now, the court did not rule that Choudhurys sequence of 26 asanas was protectable as a compilation. What it said was that it was not impossible in theory for asequence of yoga asanas to constitute a protected compilation:

The court, while recognizing, and even agreeing that application of the law of compilations to yoga asanas appears to violate the spirit of yoga, has beenunable to locate any authority that precludes such application. Therefore, if the trier of fact determines that a sufficient number of the individual yogaasanas are arranged in a sufficiently creative manner, copyright protection in the yoga sequence would be available.

The court was not issuing a final ruling on Choudhurys claim. Rather, it was a ruling on a motion for summary judgment, or a judgment on the pleadings. Inother words, Open Source Yoga Unity was arguing that the court should not let the matter go to trial, because the claim that Choudhury was makingthat heheld copyright interest in the sequencewas impossible under the law. The court said that it was conceivable that if the issue went to trial, Choudhury could intheory come up with evidence that his sequence was sufficiently creative and original to constitute a protected work by itself. Therefore, the courts were leavingthis decision up to a jury to determine if the sequence was protectable. Since this particular case settled, a decision was never reached.

Copyright Office writes Policy Statement that a sequence of movements cannot be protectedHowever, someone put this question to the Copyright Office for i ts opinion on the matter, and, in June 2012, the agency issued its Policy Statement, whichconcluded that sequences of yoga asanasor any sequence of exercises or movements, excluding choreographycould not be protected as compilations,because these were not compilations of literary works, musical works, or any of the other kinds of works protected by copyright law.

This Policy Statement comes in the context of asking the question of what kinds of creations are protected by the Copyright Act of 1976, the federal law coveringcopyrights in the United States.Under the Copyright Act of 1976, the following kinds of works are eligible for protection:

(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes andchoreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8)architectural works.

The Copyright Office concluded that it had been an error on its part to allow Choudhury to file his supplemental registration, and that the agency would no longer allow registrations of this type. It is important to note that this is simply a statement of policy, and is not law. A policy statement put out by a relevant government

agency, such as the Copyright Office, may be given weight in court and used to determine a court decision, but it is up to a court to determine how to weigh thegovernment agencys statement.

Court agrees with Policy Statement that Choudhurys sequence cannot be protectedWithin six months, the Policy Statement formed the basis of another courts decision. In December 2012, the U.S. District Court for the Central District of California was faced with another dispute over Bikram Yoga.

This dispute started when two yoga instructors in Buffalo, N.Y., completed Choudhurys certification course and were authorized by the Bikram Yogaorganization to teach the Bikrams Basic Yoga System. They formed their own educational enterpriseEvolation Yoga L.L.C.and opened a series of yogaschools.

There was a falling out between Evolation and Bikram Yoga, and Bikrams Yoga College of India L.P. sued Evolation, alleging copyright infringement. This time,the court granted summary judgment for Evolation, stating that as a matter of law a sequence of yoga asanas cannot be copyrighted. The court noted theCopyright Offices Policy Statement and agreed with it. However, it is important to note that this was only one ruling by a lower court and the decision may still beappealed.

The court also rejected Choudhurys argument that the sequence could be protected as a pantomime or choreographic work, because pantomimes or choreographic works were something significantly more than a series of poses. Also, unlike yoga, pantomimes and choreography are created to be performedfor an audience.

Pilates is a generic termGoing back to the 2005 ruling in the Northern District of California, however, there is another interesting issue. Choudhury and his organization claimedtrademark rights in the term Bikram Yoga. Open Source Yoga Unity argued that Bikram Yoga was a generic term describing a type or style of yoga.

If a term is generic, then no single provider of goods or services can claim exclusive rights in the term. So, if its the case that Bikram Yoga is a generic name for a style of yoga, then all enterprises offering instruction in that style of yoga should be able to advertise their services using that term. The court left that questionundecided, however, so this issue is still alive.

A similar question came up some time ago with respect to the term pilates, and the ruling in that case might be useful to those in the yoga field. Joseph Pilatesbegan teaching his system of exercise after immigrating to the United States from Germany in the 1920s. He operated a studio in New York until his death in thelate 1960s, after which it was taken over by his widow and then one of their students.

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In 1984, the Pilates studio was taken over by a corporate entity that registered the term Pilates as a trademark. The studio and the trademark changed handsa few more times until they came under the control of an entity called Pilates Inc.

In the 1970s, a furniture designerCurrent Concepts Inc.started making furniture specifically to be used for Pilates-style exercises, and it wanted to be able toadvertise its furniture using that term as a descriptor. Having become aware that Pilates Inc. had claimed trademark rights in Pilates, Current Concepts broughta claim asking the U.S. District Court for the Southern District of New York to issue a declaratory judgment stating that the term Pilates was generic and thatPilates Inc. could not claim exclusive rights.

In 2000, the court agreed with Current Concepts, and ruled that the term Pilates was generic both for services teaching the exercise style and also for equipment to be used in conjunction with it.

Efforts in India to protect yoga from patentsThe government of India has taken steps to try to prevent individuals or organizations from claiming exclusive rights in traditional knowledge, such as yoga.

As early as August 2006, a group of experts in Indian traditional knowledge opened a dialogue at a conference presented by the Indian Institute of Technologyaimed at preventing traditional knowledge from being subject to patents.

According to speakers at the conference, there had been an epidemic of corporate interests going around the world and claiming to have invented things thathave been known in traditional settings but not necessarily widely known around the world.

In November 2009, the Indian government gave the U.S. PTO access to the Traditional Knowledge Digital Library, a database of traditional Indian knowledge,including yoga. The library was put together starting in 2006 by Indias Council of Scientific and Industrial Research and the Department of Ayurveda, Yoga andNaturopathy, Unani, Siddha, and Homeopathy. Such a database could be used to prove that certain alleged inventions were not novel or non-obvious, and thatthey had been anticipated by knowledge already in existence.

Anandashankar Mazumdar Anandashankar Mazumdar is a writer and editor based in Northern Virginia. He has been in the news profession for two decades and has specialized in legalreporting since 2000 and in i ntellectual property law since 2003. He has a bachelor's degree in mass communication from Wright State University, Dayton, Ohio,and a law degree from Georgetown University, Washington, D.C. He frequently reports on matters before the U.S. Supreme Court and the U.S. Congress andhis reporting has been cited in law journals, in congressional testimony, and in reports by the Congressional Research Service. He is the host of the "Do YouCopy?" Podcast and a contributor to the Bloomberg BNA Intellectual Property Blog .

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