We decided to first file three motions, one after another, and see how Judge Garcia responded. Depending on his response, we could then fine-tune our presentation or even abandon some possible approaches. The first motion would challenge SRF’s exclusive right to use “Self-realization” and question SRF’s ownership of several specific writings. The second motion would attack SRF’s state service mark in Yogananda’s name, and the third its federal registration of the Yogananda service mark. These last two would be ready for filing as soon as we had a response to the first. This three-step opening should permit us to strike at SRF’s legal and moral claim to exclusive rights in the names “Self-Realization” and “Yogananda,” and challenge its copyrights in several key works. If we won these first motions we would be in position to ask Garcia to dissolve the preliminary injunction. Our legal arguments were fairly straightforward. The evidence, on the other hand, was detailed and extensive. We wanted Garcia to begin to see the religious dimensions of the case, and Ananda’s position within the Hindu-Yoga tradition. The first motion for summary adjudication on “Self-Realization” and copyright issues got Garcia’s attention.
“Self-Realization” Is Generic | November 1991
On November 7, 1991 Ananda filed its first motion summary adjudication motion asserting, in part, that Ananda was entitled to use “Self-Realization” in its name because that term was “generic” when used this way. It is often hard to decide whether a given mark is or is not generic, but as a general rule a generic term is a colloquial description of, or an accepted name for, some general class of product or service. A name that merely refers to the product’s characteristics is not a protectable trademark, because it does not direct the viewer’s attention to the company that is the source of that product. If a mark does not function to identity the supplier of the good or service, then it does not function as a trademark and cannot be registered. If SRF’s “Self-realization” mark was generic, then Ananda could use it for any purpose related to its generic meaning.
You usually must give your judge a lot of information before he can determine that a word or phrase is “generic” in a given context, which in our case meant that “Self-realization” expressed a fundamental idea in religious practice related to the goods and services. For example, a fruit stand along the road selling apples and calling itself “The Apple Store” is using a generic name. The Apple Store is simply an apple-selling store, and you cannot stop a competitor from using that name to identify its apple-selling store. An “Apple Store” selling consumer electronics, however, would be using “apple” in a non-generic context, and therefore might be entitled to trademark protection for use with those goods. A church teaching Christian theology should never be able to obtain the exclusive right to use words like “Salvation” or “Born Again” in its name. These words state the ultimate goal of its religious practice, such that all churches within that religious tradition may use those words to name themselves and signal their participation in that tradition. We thought “Self-realization” was similarly generic when used as a name by a church that taught Self-realization as the path to union with God. Now we only had to convince Garcia.
To obtain the evidence to support this motion, the team obtained statements from spiritual leaders around the world. Uses of the phrase were culled from ancient religious works, modern lectures, respected treatises, and most importantly, from Yogananda’s and SRF’s own writings. It was a tremendous undertaking that required reading hundreds of articles, books, and internet materials for appropriate quotes. Each work was then copied in pertinent part, highlighted, digested, and included in the growing compendium.
It’s hard to know ahead of time just when you have assembled enough evidence to prove that a term like “self-realization” is generic. So we put together 2,445 pages of exhibits and sixteen declarations from leaders of many schools and religious organizations from around the world, all of whom sought or taught “self-realization.” The paperwork became so voluminous that we obtained permission to file the documents in three-ring binders instead of the usual horizontal file jackets. We ended up submitting twelve three-inch binders stuffed with exhibits.
SRF’s Phantom Copyrights | November 1991
This first motion did double duty. In addition to the trademark argument, it asserted that SRF lacked any valid copyright in certain Yogananda works for which it was claiming trademark infringement damages. I loved the idea that we were “carrying the war into Africa,” like old-time tacticians. We would defend by attacking. At first it had been difficult coming to grips with SRF’s hydra-headed copyright claims. Everything Ananda published involved some Yogananda quote, photo, or vignette from his life. The infringements supposedly included books, talks, and articles in the magazines, as well as unpublished manuscripts. Each type of use was governed by its own set of federal or state laws. Some works were first published before Yogananda’s passing, some afterwards, and some not at all. Each group presented its own set of issues.
The 1909 Copyright Act gave us the handle we needed. The Act divided copyright protection into two separate back-to-back periods called the “initial term” and the “renewal term.” The initial term of copyright was for twenty-eight years from first publication. The copyright would then expire, unless it was properly continued for a “renewal term” of another twenty-eight years. Under the Act, the author of a writing was assumed to hold the copyright. If he died during the initial twenty-eight-year term, only a small and clearly defined group of people could renew the copyright for the second term. If there was no next of kin and no executor, then only the following people could renew: (1) the employer of a “work for hire”; (2) the assignee of a “posthumous work”; (3) the “proprietor” of a “periodical, encyclopedic, and composite” work; and (4) the “corporate body” that copyrighted the work “other than as an assignee or licensee” of the author. Unless one of these people filed a timely renewal, the copyright would lapse into the public domain. It presented a fistful of thorny terms, many whose meanings were far from clear.
Sheila and I decided to start with a manageable set of works—books that had been copyrighted by Yogananda himself, and then renewed by SRF after his passing. At the time of his mahasamadhi in March 1952, some of Yogananda’s copyrights were still in their initial term. When those initial terms were about to expire SRF renewed the copyrights by claiming it was one of the persons permitted by the Act to do so. The stated reason would change—sometimes SRF claimed it was Yogananda’s employer that had obtained the copyright as a “work for hire.” Other times SRF claimed the work had actually been written by SRF itself as a “corporate body.” Turns out no one at the Copyright Office ever looked into these varying claims, or asked for any proof. So for decades after 1952, SRF renewed Yogananda’s copyrights in its own name, claiming it owned the underlying copyright for whatever reason sounded good at the time. The heirs never complained and no one called SRF’s bluff. Until now. Until Ananda forced SRF to show its hand. And if SRF was bluffing Ananda could possibly win everything, be awarded its fees, and free up a body of Yogananda’s writings for the world.
We had asked for documents on these ownership issues in discovery, but assumed that SRF was holding back on us. What we had from discovery and our own digging showed that SRF lacked copyrights in at least this first narrowly defined group of books. SRF had shown nothing to indicate it was one of the people authorized by the 1909 Act to renew copyrights first taken in Yogananda’s name. We could not tell, however, whether SRF was hiding the ball or really empty-handed.
We used a special form of motion called “summary adjudication” to reach these issues. When the important facts are not in dispute, and the legal consequences of those facts are clear, a judge can summarily adjudicate claims without the need for a trial. We thought this procedure might incidentally provide a form of “clean up” discovery. Federal law on summary adjudication provided for a shifting burden of proof as part of the motion process. Once our opening papers showed that SRF appeared to lack evidence to prove a claim, SRF had to come forward with sufficient evidence to show that it might be able to win that claim at trial. The legal team figured that a serious motion for summary adjudication would scare SRF into disclosing all it had, or risk losing the claim through ignoble inaction. There were risks. We never knew what evidence SRF might be withholding, and we would need to disclose our best arguments, only to lose if SRF produced new evidence. But even if we lost the motion we could renew our arguments at trial, and we would see SRF’s best evidence before that showdown.
The legal team often discussed how whatever Ananda placed in the public domain would benefit the world. At the time Ananda was the only group sufficiently strong and organized to challenge SRF’s claimed monopoly on the teachings. People at Ananda began to refer to our efforts in terms of “Master for the World.” Yet the direct conflict with SRF left many in the community uncomfortable and confused about how to respond. It was one thing to read about some mythic battle like that recounted in the Bhagavad Gita, and something else to live the struggle at home. Some found comfort and direction by focusing on making the works available as Yogananda wrote them. Some threw themselves into the effort itself. I found comfort in the past.
Yogananda acquired Mt. Washington in October 1925, but not without controversy. Arriving in town on January 2, Yogananda soon found the ideal spot to base his work. The old hotel near the top of Mt. Washington was available, though run-down and filled with vagrants. The tram that took movie stars up to the hotel during its brief heyday would never work again, but private automobiles were becoming the rage. Yogananda put together a team to handle what he called “the detailed legal end of acquiring the property” that included prominent attorney and former Representative James McLachlan, as well as local bigwigs W.C. Branham and P. Rogers.
Their connections soon had the ball rolling, and Yogananda was so eager that he conducted an Easter Service on the property before the papers were even finalized. The team incorporated a new holding company, arranged financing, and through a series of sometimes-secret sales, acquired several parcels around the hotel. Repairs were commenced and the premises readied for a gala dedication to be conducted Sunday, October 25, 1925. Announcements touted the many politicians and socialites of Roaring Twenties Los Angeles who were expected to attend.
Two weeks before the dedication, one of the sellers sued. Emma Mitchell filed suit in the Los Angeles Superior Court on October 13, 1925, accusing Swami Giri Yogananda of fraud in the acquisition of her parcel. She alleged that certain statements had been made that induced her to sell, that those statements turned out to be false, and that she was now entitled to damages and the return of her property. This could become a serious problem if other sellers starting crying foul. Title to some parcels had been taken in the name of straw men, including family members of the team, and it could prove embarrassing.
Others closer to home were also complaining. The Thursday before Sunday’s dedication Capt. M. Rashid, Yogananda’s road manager for his talks and classes, filed suit alleging that he was entitled to twenty-five percent of the “net proceeds of all lectures, fees, contributions or other monies received” by Yogananda. If there was money to buy a hotel, Rashid figured there was money to pay him. The news grew worse Friday, when Rashid obtained a writ of attachment and levied on two of Yogananda’s bank accounts. On the eve of the opening Yogananda’s funds were frozen.
The dedication went off Sunday, October 25, without a hitch. The next day Yogananda came to an understanding with Rashid, who dismissed his lawsuit. The Mitchell case dragged on for three months as the parties wrangled, but it too settled. On January 22, 1926, Mitchell dismissed her case without public explanation. Even masters on the path have to deal with conflict and uncertainty.
Ananda Wins a Big One | April 1992
On the morning of April 24, 1992, we stood again before Garcia. He had developed a standard practice for our hearings, which began by asking counsel if there was anything they wanted to add to their already voluminous papers. The paperwork was usually so thorough that it was hard to imagine that anything could have been overlooked or now needed to be added. But SRF’s lead counsel at the time, James Clark out of Gibson Dunn’s Century City office, would sometimes hold up a copy of an appellate decision “newly issued” or “just discovered” that he was sure would persuade Garcia that Ananda must lose that day’s motion. Garcia patiently listened to whatever we said, thanked us for being as brief as we could, and then read his decision from the detailed longhand notes he had already written. The man thought his positions through, with clearly stated reasons, and was not likely to be dissuaded by some last minute observation. The typical motion thus proceeded with the lawyers “submitting” the matter on the papers, and then trying to follow Garcia’s long detailed analysis, taking notes for any needed comments. Garcia would sometimes quiz us at the end, if he wanted to be sure we understood him. Garcia always gave us an opportunity to argue after receiving his wisdom, and sometimes we couldn’t stop ourselves from talking, but I never recall him ever changing a ruling on the fly.
In this way we heard the good news that reversed the case’s direction. Garcia began his ruling by agreeing with Ananda that the way both parties used the term “Self-realization” was generic. Yes! Exactly what we had hoped for. Now where would he go with this? How many dominoes would fall? He then abruptly “continued” the rest of the hearing to a later date, including the motion on the service mark and our request to dissolve the preliminary injunction. He told us he hadn’t decided these issues yet because the paperwork was overwhelmingly voluminous, and we would have to wait for him to read it all. It took two more months, but it was worth the wait.
Reciprocating Motions | May 1992
SRF never gave up. A month after Garcia’s oral ruling, and a month before we got his final order, SRF filed a motion asking Garcia to “reconsider” whether Self-realization was a generic term, at least to the extent that SRF used the term as a mark to sell its goods and services. That same day, Ananda reciprocated by filing its second summary adjudication motion, the one challenging the alleged “Paramahansa Yogananda” service mark under California law. In addition, encouraged by Garcia’s first ruling, we began preparing the motion to dissolve the preliminary injunction. Rather than waiting upon our hoped-for decisions, we filed it as soon as we could, and asked Garcia to dissolve the injunction at the same time he invalidated the state and federal service marks.
SRF asked Garcia to take another look at his “Self-realization” ruling, claiming that even if the term was generic in SRF’s name, SRF also used the term as a mark to sell its goods and services. When used in connection with those goods and services, SRF argued, the term “Self-realization” was “descriptive” rather than “generic.” In other words, when used to advertise classes, retreats, and books, “Self-realization” described the subject matter of those goods and services, rather than indicating an ultimate religious objective. Subtle, but significant. If the mark was merely descriptive, then a different test would apply, and SRF could keep its ownership by showing that the mark had achieved something called “secondary meaning.”
Secondary meaning is a term of art referring to the way the public gradually comes to associate a common descriptive word with a specific supplier. The mark “Windows,” for example, describes the Microsoft computer program that operates by means of a series of sizable windows that the user can enlarge, minimize, and move around. For years the Trademark Office rejected Microsoft’s efforts to register the Windows mark because the mark was merely descriptive, and Microsoft had not yet shown the required secondary meaning. After billions in advertising and sales, the company could finally produce surveys from the public and opinions from the experts, that when potential purchasers saw the word “Windows” on a software application they thought of Microsoft. That showing of secondary meaning—the public’s mental connection between a descriptive mark and a specific supplier—permitted Microsoft to register the Windows mark. SRF’s new motion did not challenge our victory concerning the church’s name, but it raised troubling questions about goods and services that threatened to overshadow what we had won.
We could be in trouble if Garcia decided that “Self-Realization” was descriptive when used to sell goods. Indeed, it seemed we would then lose our motion unless Garcia decided we had also shown the mark lacked secondary meaning. The problem was our factual presentation and argument never focused on negating secondary meaning. We had not ignored the subject, but gave it only passing attention as a secondary issue, and now our hopes might rest upon that desultory discussion. Unless our evidence proved more than we had meant it to, we would lose. We might still win at trial, but would lose the motion now.
Yogananda Is No Service Mark | May–September 1992
We filed our motion challenging the California registration of “Paramahansa Yogananda” on May 29, 1992, and four months later followed up with the companion motion attacking the federal service mark registration. SRF claimed that “Paramahansa Yogananda” was both a state and a federal service mark. A service mark is a word or image that consumers use to identify the provider of some desired service, like “Midas” for mufflers or “H&R Block” for taxes. A protectable mark must be used in a trademark manner—to identify the supplier. SRF used Yogananda’s name, however, only to refer to that person who was Yogananda, what he did, said, or thought. SRF’s own writings often used the phrase “Paramahansa Yogananda, Founder” indicating they were talking about the person who founded SRF. SRF never used its guru’s name to identify itself as the purveyor of any “Paramahansa Yogananda”-branded services. We also pointed out that SRF actually used other marks to identify itself, namely the three letters “SRF” and its full “Self-Realization Fellowship” name. It seemed so clear to us, but it was Garcia’s opinion that mattered.
Along the way we noted (or rubbed in) how the spelling “Paramahansa” was actually a corruption of the title that Yogananda himself used. It was another example of SRF playing around with the past and reconfiguring Yogananda to meet its needs. In the summer of 1958, after Sister Daya’s trip to India, SRF suddenly changed the spelling of Yogananda’s title from “Paramhansa” to “Paramahansa.” Without announcement or explanation, an extraneous “a” mysteriously appeared in Yogananda’s title beginning with the July-August 1958 issue of Self-Realization. I have a copy of the 1958 seventh edition of Whispers From Eternity where the book cover is still printed “Paramhansa” but the title page and dust jacket have the “new and improved” spelling.
The change was unnecessary and raised uncomfortable questions. If Yogananda could not get his own name right, how could he be trusted on less verifiable matters such as achieving union with God? If it was a minor thing, why bother at all? What had moved the mind that made that change? Maybe SRF figured Yogananda did not “sweat the small stuff” and it was their job to clean up after him.
Yogananda had a distinctive flowing signature that was often displayed below his photo. This signature, of course, failed to include the new supernumerary “a.” The preservation of Yogananda’s legacy thus required SRF to change his signature as well as his name. SRF now had to correct its guru’s misnomer the old-fashioned way, using scissors and paste. If you look closely at the “Paramahansa” used by SRF since 1958, you can see how someone carefully cut out the first “a” from Yogananda, and inserted it after the letters “Param.” Goodness. Why would something as insignificant as the spelling of an honorific title trigger such subterfuge? SRF’s revision has appeared so widely now that most people mistake it for the real thing. Kriyananda, however, remembered how Yogananda did things.
Garcia took nine long months to rule on these motions, while we waited and waited. Finally, on June 21, 1993, Garcia gave us the good news. He not only affirmed, but expanded on, his ruling that Ananda could use the phrase “Self-Realization.” Then he dissolved the preliminary injunction. By handing us this victory, he validated our approach to the case and effectively urged us on to greater effort.
Garcia Dissolves the Injunction | June 1993
Garcia started off the June 21st hearing by announcing that he would indeed, as requested by SRF, reconsider his written decision on “Self-realization.” When I heard that he was granting SRF’s request for reconsideration I doubted my ears. Looking over at Sheila’s face confirmed my fears. We both started breathing again a few moments later when Garcia reconsidered, but then affirmed, his ruling in Ananda’s favor—with a twist. He confirmed everything in his prior ruling except the part about SRF’s use of “Self-Realization” to sell its goods and services. Garcia agreed with SRF’s argument that the term “Self-Realization” was not generic when used to sell goods or services, and was instead “merely descriptive,” informing the prospective buyer of the subject matter of those goods and the nature of those services.
Garcia rolled right on, however, to announce that SRF failed to show that “Self-realization” had acquired any secondary meaning. Ananda had shown that when people heard “Self-realization” they thought of union with God, not SRF as a source of “Self-realization” brand goods or services. SRF now had to come forward with something showing that the public actually identified “Self-realization” with SRF. This was what SRF had been claiming all along, and here was its opportunity to show that the public looked to it—not Ananda—as the place to purchase Self-realization-related goods and services.
But SRF’s evidence showed no such thing. Garcia observed how its evidence only showed that SRF’s members and suppliers thought of SRF when they heard the term “Self-Realization.” It was neither surprising nor significant that SRF’s members and suppliers thought about the organization when they heard part of its name. And SRF had no evidence that the general public connected “Self-realization” with SRF when looking to buy Self-realization-related goods and services. There was no evidence the public knew who SRF was at all. The mark was indeed descriptive, but without secondary meaning.
Help sometimes comes neither looked for nor welcomed. We groused about SRF’s reconsideration motion when we received it, but later found reason to be thankful. By granting SRF’s request for reconsideration, acknowledging the “descriptive” nature of the mark, and then finding no secondary meaning, Garcia had insulated his decision against appeal. The appeals court judges would later agree with his approach and conclusion, and uphold both of his “Self-Realization” rulings as modified.
In more good news, Garcia granted Ananda’s two service mark motions, agreeing that SRF did not use the name “Paramahansa Yogananda” like a service mark would be used. Because SRF used Yogananda’s name only to describe its founder and guru, Ananda could use the name as well. And because SRF lacked legal protection for its uses of “Self-realization” and “Paramahansa Yogananda,” no preliminary injunction was needed. Indeed, it no longer appeared likely that SRF would win the lawsuit, and Garcia seemed doubtful whether SRF really had the facts to support its many claims. Mellifluous news flowed down from Garcia’s bench so fast it was hard to drink it all in. His Honor finished up by ordering Ananda to submit a proposed order canceling SRF’s federal and state marks. Yes, sir.
The legal team walked out of the courthouse under clear blue skies. It was a bright June day, still early and cool, as we sauntered down the boulevard to celebrate at the Il Fornaio Restaurant with food and bubbling conversation. We were now in charge of a different case. Two years earlier the cause was almost lost, and now we seemed on track to victory. And as we pushed, we learned. Ananda had not been the first organization inspired by Yogananda that changed its name.
In late 1920 Yogananda set up his first U.S. organization, called “Sat-Sanga,” in an office in Boston. With the move to Los Angeles in 1925, Yogananda changed its name to “Sat-Sanga and Yogoda,” reflecting an increased emphasis on his “Yogoda” system of practical metaphysics. By 1928 the name had morphed into the more familiar “Yogoda and Sat-Sanga Society.” The following year Yogananda formed a new National Yogoda Society, based in Marion Station, Pennsylvania, and changed the Los Angeles organization’s name to “Yogoda and Sat-Sanga Society of America,” distinguishing it from the similarly named Indian organization. During the dark days of 1930 the name blossomed into the affirmation-laden “Yogoda Sat-Sanga Art of Super-Living Society of America.”
In 1933 Yogananda decided it was time for a change to something less exotic and more informative—something more suitable to the changing times. References to “Self-realization” began appearing in Yogananda’s talks, letters, and articles in the early 1930s. The January 1933 East-West Magazine, although still published by the Yogoda Sat-Sanga Society, was described as the “official organ of the Self-Realization Fellowship of America.” By the next spring the magazine was being published by the “Self-Realization Fellowship (Yogoda Sat-Sanga Society).” The Self-Realization Fellowship Church, Inc. incorporated the following year, and began using its now official name. After Yogananda’s return from India in 1936, SRF dropped all references to Yogoda Sat-Sanga in the U.S., although the Indian organization continues to use the YSS name to this day. The mission mattered, not the name.
Ananda once told Garcia that if he lifted the injunction, it would change its legal name to Ananda Church of Self-Realization, with “Ananda” formally part of the name. When Garcia dissolved the injunction he placed no limits on what name Ananda could use. Ananda was now free to change back to “Church of Self-Realization,” the name that triggered the lawsuit. Nonetheless, Ananda followed through on its word. The confusion that SRF feared never happened. The world still turns.