The Exemplar Case For Why Joint Trademark Ownership is Bad
by Pamela Chestek • November 17, 2015 • trademark • 0 Comments
According to McCarthy, “[w]hen there is a dispute over who owns a trademark, the worst possible solution is to allow mark ownership to be shared among the warring parties.”
That is in the lastest opinion on the the YOGI marks, which I’ve written about many, many, many times before. The cases revolve around the rights to the name and likeness of the late Yogi Bhajan, spiritual and religious leader of the Sikh religion in the United States. His wife, Bibiji Inderjit Kaur Puri, called “Bibiji” throughout the various opinions, sued the Golden Temple of Oregon for infringement of the marks YOGI and YOGI TEA and they stopped paying royalties, and she sued the trustees of the Yogi Bhajan Administrative Trust (“YA Trust”) for breach of trust and related claims, for trademark infringement, and for a determination by the probate court on ownership of the marks.
The latest opinion is in the case Bibiji brought accusing the YA Trust of trademark infringement. Only a legal procedure buff could love this opinion; most of it is whether the theories of judicial estoppel and collateral estoppel prevent Bibiji from arguing anew before the Central District of California district court that she is the sole owner of the trademarks (they do).
Where it therefore stands is Bibji and the YB Trust are co-owners of the trademarks. Bibiji nevertheless tries to argue that the YA Trust is an infringer but that’s pretty simple, an owner of a mark, even if only a co-owner, can’t infringe (and also in this case, dilute) its own mark. The case cited by Bibiji, Durango Herald, Inc.v. Riddle, 719 F.Supp. 941 (D. Colo. 1988), says that one joint venturer cannot take an asset of the joint venture and exploit it to the detriment of the other joint venturer – but here we don’t have a single joint venture, instead there are two co-owners.
So where it ends up is that Golden Temple of Oregon, the original accused infringer, now has a license from the YB Trust. The YB Trust license was very clear that it does not abrogate any rights Bibiji may have in the trademarks and Golden Temple offered Bibiji the same terms it gave YB Trust, but she refused.
Although it is now clear Golden Temple doesn’t need a license from Bibiji, Golden Temple is worse off than your typical non-exclusive licensee because Bibiji can also go license the mark. But, unlike in the case of a non-exclusive license, here the two co-owners can enforce entirely different standards of quality, driving the marks down an almost certain path to genericism (“Honey, do you want the Golden Temple yogi tea or the Eternal Sunrise yogi tea?”). Indeed, the worst possible solution.
And I have never seen this before in an opinion: “Not intended for publication,” yes, but not this specific:
This Order is not intended for publication. Nor is it intended to be included in or submitted to any online service such as Westlaw or Lexis.
Even the court is sick of this one.
Puri v. Yogi Bhajan Administrative Trust, No. CV 11-9503 FMO (SHx) (C. D. Calif. Oct. 30, 2015)
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