• Must All Trademark Owners be Joined?

    by  • December 16, 2011 • trademark

    Yesterday’s post covered the relative ownership of the trademarks YOGI and YOGI TEA between cross-claimant Bibiji Inderjit Kaur Puri (“Bibiji”) and Golden Temple of Oregon (“GTO”), where an arbitration held that Bibiji was the owner of the trademarks. GTO therefore dropped its infringement claim against defendant Wai Lana Productions, but Bibiji’s claim against Wai Lana remained.  It turns out that there’s still a long way to go; Bibiji’s claim of sole ownership of the YOGI trademarks is also being challenged.

    It comes before the court on Wai Lana’s motion to dismiss for failure to join a party under Rule 19. It turns out that Bibiji owns only 50% of the trademarks outright; ownership of the remaining 50% is being disputed in New Mexico in two different actions, a probate action brought by the trustees of Yogi Bhajan’s trust and a state court action brought by Bibiji. The court doesn’t provide any details on the merits of the cases, but informs us that the possible owners of the other 50% are (1) Bibiji; (2) the trust; and (3) an entity the court calls “Staff Endowment LLC.”  (The arbitration mentions a “Staff Trust” that was set up for the benefit of women who helped Yogi Bhajan handle administrative tasks; perhaps Staff Endowment LLC is a successor to the trust.)

    On a Rule 19 motion, the moving party must first show that the missing party is necessary to the litigation. If the party is, but the joinder will destroy jurisdiction, then the court must decide whether the case can proceed without the absent party or if the party is indispensable. If the party is indispensable, then the case must be dismissed.

    The first question then is whether all trademark owners must be parties to an infringement claim. It’s not so clear, but the court ultimately concluded that

    when ownership of a trademark is the central issue in a case, the trademark owner is a necessary party. Parties do not cite, and I have yet to find, a case in which the trademark owner was not necessary in an action for infringement.

    Once the court reached that conclusion, the denial of the motion was clear.  Without knowing who the other half owner or owners might be, the court couldn’t decide whether they could feasibly be joined or were indispensable.  The motion to dismiss was denied.

    I wonder if they’ll ever get to the infringement part of the case?

    Golden Temple of Oregon, LLC v. Wai Lana Productions, LLC, No. 03:09-CV-902-HZ (D. Or. Dec. 5, 2011).

    Creative Commons License
    The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.