April 18, 2013
Several recent lawsuits initiated by Bikram Choudhury and his organization have sought legal recourse against studios and teachers over claims of intellectual property infringement. While these cases may not immediately appear to be relevant to those outside of the Bikram community, there have been several rulings that have implications for the broader yoga community, and how one runs a yoga business.
The primary takeaways from those rulings are as follows:
- You cannot claim copyright interest in a sequence of yoga asanas, according to one district court.
- A sequence of yoga asanas or any sequence of exercises is not the equivalent to a pantomime or a choreographic work, according to a statement of policy issued by the Copyright 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 by the 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 protectable trademark 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 term “Pilates” 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 Law
Intellectual 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 legal trends 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 to educate 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 that what they say doesn’t violate other people’s rights, the kinds of rights that would have been near impossible to trample on if one was unable to communicate instantaneously all over the world.
Another one of those trends is globalization. Globalization has not only aided in the spread of culture and knowledge—a factor directly implicated in increasing knowledge of yoga outside of its traditional homeland—but it has also extended the reach of those wishing to protect their creations.
Types of intellectual property law
Intellectual 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, it might be beneficial to briefly review each of the major types of intellectual property.
Patent 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, the patent 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 law is purely federal. States do not have the power to govern the awarding or enforcing of patents. Furthermore, a patent right is one that 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.
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 patents—utility patents—in 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 the object useful.
Like utility patents, however, to get a design patent, you have to show that the design is non-obvious and novel—that it has never been done before. A design patent 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 protected under trademark law (which can last forever) or copyright law (which can last many decades longer than patents).
Trademark law has its origins in the protection of consumers against those wishing to mislead them into purchasing goods or services by falsely branding them with 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 services must use in commerce a mark of some kind—a word, a phrase, an image, or sometimes even a color or a sound—as the indicator of the origin of those goods or services. The rights arising through such use for an unregistered trademark are called "common law" rights. If a federal registration has been obtained for a trademark, 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. A trademark 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 the “zone 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, the owner 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 common law 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 areas where 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 services being 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 business—and the reach of its competitors—a 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 in commerce.
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 on field 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 provides the 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 common dilution 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 the same as acquiring trademark rights in your brand or symbol. Trademark rights arise from use in commerce, which is required for both common law trademarks and 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.
The 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 doesn’t help one 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 own way of coming into existence—fixation. 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 work—for example, by writing it down, or recording it, or filming it—then the exclusive rights granted by copyright law automatically come into existence. Like patent law, copyright law is the exclusive domain of the federal government (except for certain, very limited niche exceptions).
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 certain advantages 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 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 the Uniform 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 must be confidential and material to their business. And the enterprise must take steps to protect that secret, such as ensuring that employees understand that they are not to reveal proprietary information to competitors.
One of the most common forms of trade secrets is a customer list and client files. And one of the most common ways of misappropriation is for an employee to take such information and to start his or her own business by trying to poach customers from the list, using information like their purchase histories.
Court decisions and administrative rulings relevant to yoga
Given 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 rulings and 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 asanas
Choudhury wrote a book called Bikram’s Beginning Yoga Class. He registered his copyright interest in this work with the Copyright Office, and then, in 2002 he filed 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 itself—which is usually a relatively uncontroversial matter—but he was also claiming rights on the sequence of 26 asanas taught in the book.
An organization called Open Source Yoga Unity—which, according to its website, is a “non-profit collective to ensure the continued natural unfettered development of Yoga for all to enjoy”—challenged this supplemental registration and asked the U.S. District Court for the Northern District of California to issue a 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 protected
In 2005, the court rejected Open Source Yoga Unity’s argument that this supplemental registration was invalid as a matter of law. According to the court, the sequence might be protectable as a compilation. The Copyright Act protects not only individual works, but also compilations of materials, although only to the extent that there is some originality in the creation of the compilation itself.
Now, the court did not rule that Choudhury’s sequence of 26 asanas was protectable as a compilation. What it said was that it was not impossible in theory for a sequence 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 been unable to locate any authority that precludes such application. Therefore, if the trier of fact determines that a sufficient number of the individual yoga asanas 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 Choudhury’s claim. Rather, it was a ruling on a motion for summary judgment, or a judgment on the pleadings. In other words, Open Source Yoga Unity was arguing that the court should not let the matter go to trial, because the claim that Choudhury was making—that he held copyright interest in the sequence—was impossible under the law. The court said that it was conceivable that if the issue went to trial, Choudhury could in theory come up with evidence that his sequence was sufficiently creative and original to constitute a protected work by itself. Therefore, the courts were leaving this 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 protected
However, someone put this question to the Copyright Office for its opinion on the matter, and, in June 2012, the agency issued its Policy Statement, which concluded that sequences of yoga asanas—or any sequence of exercises or movements, excluding choreography—could 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 covering copyrights 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 and choreographic 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 the government agency’s statement.
Court agrees with Policy Statement that Choudhury’s sequence cannot be protected
Within six months, the Policy Statement formed the basis of another court’s 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 Choudhury’s certification course and were authorized by the Bikram Yoga organization to teach the Bikram’s Basic Yoga System. They formed their own educational enterprise—Evolation Yoga, LLC—and opened a series of yoga schools.
There was a falling out between Evolation and Bikram Yoga, and Bikram’s 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 the Copyright Office’s 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 be appealed.
The court also rejected Choudhury’s 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 performed for an audience.
“Pilates” is a generic term
Going back to the 2005 ruling in the Northern District of California, however, there is another interesting issue. Choudhury and his organization claimed trademark 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 it’s 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 question undecided, 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 Pilates began 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 the late 1960s, after which it was taken over by his widow and then one of their students.
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 hands a few more times until they came under the control of an entity called Pilates Inc.
In the 1970s, a furniture designer—Current Concepts Inc.—started making furniture specifically to be used for Pilates-style exercises, and it wanted to be able to advertise its furniture using that term as a descriptor. Having become aware that Pilates Inc. had claimed trademark rights in “Pilates,” Current Concepts brought a 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 that Pilates 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 patents
The 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 Technology aimed 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 that have 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 India’s Council of Scientific and Industrial Research and the Department of Ayurveda, Yoga and Naturopathy, Unani, Siddha, and Homeopathy. Such a database could be used to prove that certain alleged “inventions” were not novel or non-obvious, and that they had been anticipated by knowledge already in existence.
About the author
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 legal reporting since 2000 and in intellectual 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 and his 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 You Copy?" Podcast and a contributor to the Bloomberg BNA Intellectual Property Blog.