This is an excerpt from Chapter 7 of a new book, A Fight for Religious Freedom: A Lawyer’s Personal Account of Copyrights, Karma and Dharmic Litigation, by attorney Jon Parsons. (Order the book.)
In 1990, Self-Realization Fellowship (SRF) filed a massive lawsuit against Ananda, in which it attempted to establish itself as the sole “owner” of Yogananda’s “name, image, and likeness.” The lawsuit was intended, as the federal judge in the case remarked, to “put them [Ananda] out of business.” SRF failed. Twelve years later, Ananda had won at least 95% of the rulings in the case.
The struggle was long and labyrinthine. In the early days, Ananda seemed destined to fail, as important rulings fell in SRF’s favor. But as the true issues emerged, the tide began to turn, as this excerpt explains.
Readers from the legal and spiritual communities are fortunate to have Jon Parsons, an exceptionally clear-minded and often humorous chronicler. The SRF lawsuit established important legal precedents in the area of basic First Amendment freedoms. The outcome was, in its deepest essence, an American victory, as it re-affirmed this country’s noble tradition of freedom of worship.
Jon Parsons presents the history of the case in a clear and transparently honest and engaging manner that will spare future interested parties the need to look up the original documents to piece together what happened.
Although Jon’s book is an important contribution to legal history, it records many relevant stories and anecdotes from the life of Paramhansa Yogananda. These passages shed light on his beliefs regarding the right of individuals to worship as God and their own conscience guide them.
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.
