Self-Realization Fellowship Church v. Ananda Church of Self-Realization

• Decision Date: 06 July 1995
• Docket Number: 93-16570,Nos. 93-16345,SELF-REALIZATION,s. 93-16345
• Citation: 59 F.3d 902
• Parties: , 95 Daily Journal D.A.R. 8929 FELLOWSHIP CHURCH, a California corporation, Plaintiff-Counter-Defendant-Appellant, v. ANANDA CHURCH OF, a California corporation, Defendant-Counter-Claimant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 902

59 F.3d 902

35 U.S.P.Q.2d 1342, 95 Daily Journal D.A.R. 8929

SELF-REALIZATION FELLOWSHIP CHURCH, a California corporation, Plaintiff-Counter-Defendant-Appellant, v. ANANDA CHURCH OF SELF-REALIZATION, a California corporation Defendant-Counter-Claimant-Appellee.

Nos. 93-16345, 93-16570.

United States Court of Appeals Ninth Circuit.

Argued and Submitted April 4, 1995.

Decided July 6, 1995.

James P. Clark and Howard A. Jacobson, Gibson, Dunn & Crutcher, Los Angeles, CA, for plaintiff-counter-defendant-appellant.

Jon R. Parsons, Palo Alto, CA, and Sheila Rush, Mountain View, CA, for defendant-counter-claimant-appellee.

Appeals from the United States District Court for the Eastern District of California.

Before: BRUNETTI, THOMPSON, and HAWKINS, Circuit Judges.

BRUNETTI, Circuit Judge:

The Self-Realization Fellowship Church (SRF) sued the Ananda Church of Self-Realization (CSR) for infringing its trademarks and trade names for terms like "Self-realization." The district court dissolved a preliminary injunction enjoining CSR from infringing on SRF's trade names and marks, and SRF appeals. We affirm the order dissolving the injunction with respect to some of the marks and reverse with respect to others.

I. FACTS AND PROCEEDINGS BELOW

"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.

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." In the 1920s, Yogananda established a school with headquarters in Los Angeles. His school, which started referring to itself as the "Self-Realization Fellowship" in the early 1930s, has expanded in membership to serve hundreds of thousands of members. It incorporated in 1935 as the "Self-Realization Fellowship Church."

SRF did not confine itself to traditional instructional methods like written and oral teaching. Instead, it expanded into product lines of spiritual aids like Self-realization audio and video tapes, a Self-Realization magazine, and Self-realization and Paramahansa Yogananda posters, photos, wall calendars, and datebooks. (Sales of these products currently net more than $1.4 million annually.) Later, to protect its diversified product lines, it sought to acquire intellectual property protection, by registering trademarks for the terms "Self-Realization Fellowship," "Self-Realization Fellowship Church," and "Paramahansa Yogananda."

CSR came into being after a member of SRF left the group. Donald Walters, known to CSR members as Swami Kriyananda, joined SRF in the 1940s, receiving instruction directly from Yogananda, became a vice president of the church, and thereupon joined SRF's Board of Directors. While the parties disagree about how and why Walters left SRF, they agree he left in 1962 and founded his own organization in the late 1960s, the "Yoga Fellowship."

Swami Kriyananda's fellowship expanded rapidly. In 1967, he made headquarters, called "Ananda Village," for his fellowship in Nevada City, California. By the 1980s, his fellowship included several congregations outside Ananda Village. In January 1990, Kriyananda's group, having changed its name once already, changed its name again to the "Church of Self-Realization" and began using this name in advertisements and promotional literature. CSR, like SRF, also identifies itself as spreading Paramahansa Yogananda's teachings.

"Church of Self-Realization" sounded too much like "Self-Realization Fellowship Church" for SRF to have peace of mind, especially since both groups represented themselves as Yogananda's disciples. In February 1990, SRF filed a series of applications to register the terms "Self-Realization Fellowship," "Self-Realization Fellowship Church," and "Paramahansa Yogananda" with the United States Patent and Trademark Office and the California Secretary of State. In July 1990, it filed a complaint in the United States District Court for the Eastern District of California, bringing claims for trademark infringement and other intellectual property claims not relevant to this appeal. SRF alleged infringements of its trademark for the term "Paramahansa Yogananda" and of its trade names and marks for the terms "Self-realization," "Self-Realization Fellowship," and "Self-Realization Fellowship Church." The district court issued a preliminary injunction enjoining CSR from using Paramahansa's name or "Self-realization," "Self-Realization Fellowship," and "Self-Realization Fellowship Church" in CSR's name or in any of its products or services.

CSR countered by moving for summary judgment on the infringement claims, alleging that each of SRF's marks were invalid. On April 24, 1992, the district court issued a bench ruling that "Self-realization," "Self-Realization Fellowship," and "Self-Realization Fellowship Church" were invalid trade names and marks as a matter of law. SRF moved for reconsideration of this ruling, but in the meantime CSR moved to lift the injunction because the trademarks underlying the injunction were invalid. On June 21, 1993, the district court issued a memorandum order that: 1) granted CSR summary judgment on SRF's infringement claim on the trademark for "Paramahansa Yogananda"; 2) granted reconsideration of the ruling regarding the "Self-realization" trade names and marks, affirmed its prior ruling for CSR as to the trade names, and granted CSR summary judgment on other grounds as to the trademarks; and 3) having granted CSR summary judgment that all of SRF's trade names and marks were invalid, dissolved the preliminary injunction. On July 8, 1993, the district court issued an order to the United States Patent and Trademark Office and the California Secretary of State, requiring that SRF's trademark registrations be cancelled. SRF timely appeals the June 21 and July 8 orders.

II. APPELLATE JURISDICTION

Because the district court still has jurisdiction to determine the alleged and pending claims and counterclaims other than SRF's trademark infringement claims, there is no final judgment in this case, appealable under 28 U.S.C. Sec. 1291. However, it is obvious that the portion of the June 21 order dissolving the preliminary injunction is an interlocutory order appealable under 28 U.S.C. Sec. 1292(a)(1). As the bases for our jurisdiction over the other orders on appeal are not so obvious, we explain here why we have jurisdiction over all of the orders SRF asks us to review.

A. Jurisdiction Over the Grants of Summary Judgment

SRF asks us to review the portion of the June 21 order granting CSR summary judgment on the validity of the "Paramahansa Yogananda" mark (the summary judgment order). SRF also asks us to review the portion of the June 21 order denying reconsideration of the April 24 order granting summary judgment on the "Self-Realization," "Self-Realization Fellowship," and "Self-Realization Fellowship Church" names and marks (the reconsideration order).

These orders are reviewable because their legality is inextricably bound up with the legality of the dissolution of the injunction. 28 U.S.C. Sec. 1292(a)(1) confers jurisdiction not only over orders concerning injunctions, but also over matters inextricably bound up with the injunctive order from which appeal is taken. TransWorld Airlines v. American Coupon Exch., 913 F.2d 676, 680 (9th Cir.1990). A summary judgment order that provides the legal authority to issue an injunction--that constitutes a "necessary predicate" to complete review of the injunction--is inextricably bound up with the injunction. See id.

The June 21 summary judgment and reconsideration orders removed any legal basis for the preliminary injunction enjoining CSR from using the terms at issue. The June 21 summary judgment order ruled that SRF's mark on the term "Paramahansa Yogananda" was invalid as a matter of law, and the reconsideration order ruled that SRF's trade names and marks on the terms "Self-realization," "Self-Realization Fellowship," and "Self-Realization Fellowship Church," were also invalid as a matter of law. Since these trade names and marks were ruled invalid, SRF had no legal right to be free from CSR's use of the terms, and as these orders were necessary predicates to lifting SRF's preliminary injunction on CSR, they are appealable as orders inextricably bound up with review of the dissolution order.

B. Jurisdiction Over the Cancellation Order

SRF also appeals from the district court's July 8 order that the registrations of its federal and state trademarks be cancelled (the cancellation order). To our knowledge, this appeal presents the first instance in this circuit in which a party has asked us to review a registration-cancellation order as an interlocutory order. We conclude that the cancellation order is appealable.

The district court's reasons for ordering the cancellation of SRF's registrations were identical to the reasons it dissolved the preliminary injunction with respect to the registered marks. The cancellation and dissolution orders both rested on the summary judgment rulings that the trademarks in question were invalid. Where the justification for an interlocutory order is "identical" to the justification for an interlocutory injunction, the former ruling is appealable as a merits order inextricably bound up with the injunctive ruling. Id. at 681.

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