A Happy Ending to the First Appeal — July 1995

Luck had little to do with the progress we were finally making on the appeal. On April 4, 1995, the three appellate judges assigned to our case heard our oral argu­ments in the towering Federal Building in San Francisco. Appeals are decided by a three-judge panel, randomly assigned, who together review, discuss, and decide the matter. We had drawn three judges and were happy with them: Melvin Brunetti, David Thompson, and Michael Hawkins. Sheila and I had earlier divided up the issues for argument: she would explain how “Self-Realization” was generic, while I handled Yogananda’s supposed service mark and why Garcia was right to dissolve the injunction. The appellate judges listened attentively, but asked few questions of either side. It was a good thing the legal team was there taking notes, for oral argu­ment passed in a blur of fleeting impressions. We met afterwards and talked about the tea leaves, but there was nothing to do now but wait.

Three months later the written decision arrived. It was a published opinion, included in the official compendium of appellate cases known as the Federal Report­er, and the decision would thereafter be cited as Self-Realization Fellowship Church v. Ananda Church of Self-Realization (9th Cir. 1995) 59 F.3d 902—in the 59th volume of the 3rd series of the Federal Reporter, beginning at page 902. It was now usable as precedent in other cases, and became a little piece in the ever-growing mosaic of cases making up our “common law.” The opinion itself was written by Judge Bru­netti, and the other two concurred with what he wrote.

Brunetti began by defining “Self-realization” and introducing Yogananda:

“Self-realization” is the ultimate goal of Hindu-Yoga teaching. The Hindu-Yoga spiritual tradition teaches that there exists an “Ulti­mate Reality.” The Ultimate Reality is infinite, but it exists at the core of every person’s being as the “Self.” According to Yoga, the goal of life is to transcend one’s finite limitations, like body, ego, and personality, to dissolve the barriers between the personal self and the infinite Self, to “realize” a union with the “Self.” One prominent guru in this reli­gious tradition was Paramahansa Yogananda, known to many Ameri­cans as the author of Autobiography of a Yogi.”

In a not-so-subtle dig, he noted that “Modern-day disciples of this guru, this advocate of rising above worldly and ego-bound concerns, have founded two rival schools that are now engaged in a dispute about the intellectual property rights to such terms as Yogananda’s name and ‘Self-realization.’” Later in the opinion he wryly observed that “‘Church of Self-Realization’ sounded too much like ‘Self-Realization Fellowship Church’ for SRF to have peace of mind . . .” Was he sug­gesting that a little more peace of mind on the plaintiff’s part might have avoided the problem?

As a matter of housekeeping, Brunetti first explained that they would accept SRF’s invitation to review the related issues of the “Self-Realization” trade name and trademarks and the “Paramahansa Yogananda” service marks. The decision would decide more than whether the injunction was properly dissolved, it would reach back to Garcia’s underlying decisions on the key issues leading up to the dissolution. The decision would either validate or undo all of Garcia’s key rulings to date.

The Judges could have dodged these related issues, but decided that “their legality is inextricably bound up with the legality of the dissolution of the in­junction.” They would not review Garcia’s April 1992 order finding that “Self-Realization” was generic, but included for review his later, June 1993, order reconsidering his earlier order, and affirming it as modified. It was a significant distinction, because this later order had expanded the basis for his service mark rulings. In addition, Brunetti indicated the Judges would also consider “the dis­trict court’s July 8 order that the registrations of [SRF’s] federal and state trade­marks be cancelled.” It was the first time the Ninth Circuit had ever been asked to review an order cancelling registration in the middle of a pending case. This case had apparently piqued the Judges’ attention, and they were willing to use the op­portunity to make some new law.

Their opinion upheld all of Garcia’s rulings that mattered to us, including that: (1) the “Paramahansa Yogananda” federal mark is invalid; (2) the “Self-realization” component of SRF’s trade name is generic and invalid; and (3) the “Self-realization” component of SRF’s service mark was “descriptive and without secondary meaning” and thus invalid. The opinion further upheld the dissolution of the preliminary injunction concerning Ananda’s use of “Self-Realization” and “Paramhansa Yoga­nanda,” and it confirmed Garcia’s order cancelling the “Paramahansa Yogananda” federal service mark. By upholding Garcia’s finding that SRF had not shown “sec­ondary meaning,” the appellate judges officially confirmed that SRF was not as fa­mous as it fancied itself. This decision also upheld Ananda’s long-fought right to use “Self-realization” in its name, and to use Yogananda’s name to identify its teach­ings. Having convinced the judges to decide these additional issues, SRF was now bound by their decision.

SRF received a consolation prize for its effort. The opinion reversed Garcia’s determination that the “composite mark” of “Self-Realization Fellowship” was also unprotected. Ananda never asked Garcia to invalidate any of SRF’s rights in its full name and had only requested rulings concerning the use of “Self-re­alization.” Garcia had ruled on his own that “Self-Realization Fellowship” was also merely descriptive without secondary meaning. The appellate court’s opin­ion found that in deciding the legality of the larger composite mark, Garcia had exceeded his purview, and they reversed his July 1993 order canceling the federal registrations of the “Self-Realization Fellowship” and “Self-Realization Fellow­ship Church” composite marks. The “composite marks” issue never resurfaced in the case. Thus, the good news for SRF was that it could still use its own name.The decision also called SRF to task on its “Warning” against false teachers. For years SRF ran a conspicuous “Warning” in its newsletters, magazines, and other publications, alerting its readers that some people claiming to teach Yogananda’s word were not using the “true” teachings. This notice irritated many at Anan­da because it so clearly targeted Kriyananda. The appellate opinion turned this Warning against SRF, pointing out that the oft-published statement refuted SRF’s position in the lawsuit:

Most important, SRF labels many of its products with a warning that many other groups promote material with Yogananda’s name on it. According to the label, these groups do not promote Yogananda’s “true” teachings, and the only way to guarantee access to Yogananda’s true teachings is to buy material with the Self-Realization Fellowship Church sign on it. In other words, SRF represents (in the warning) that “Self-Realization Fellowship Church” distinctively identifies its products and creates a direct association between it and its products, and a buyer who buys a product merely associating itself with “Para­mahansa Yogananda” could lead the buyer to buy a product that is neither authentic nor made by SRF.

SRF’s proclamations of purity had backfired, and ended up showing only that SRF did not use Yogananda’s name as a trademark. SRF should never have said it did.

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