The Ninth Circuit’s decision in Bikram’s Yoga College of India, L.P. v. Evolution Yoga, LLC, et al. is a stark reminder that ideas, processes and systems are not copyrightable, even if a book describing such is. This distinction is the idea/expression dichotomy. The idea/expression dichotomy is at the heart of any discussion of how to choose the correct intellectual property protection tool. Indeed, as the Ninth Circuit observed:
We are mindful of the ‘guiding consideration’ of the idea/expression dichotomy: ‘the preservation of the balance between competition and protection reflected in the patent and copyright laws.’
A copyright protects the author’s interest in his or her creative expression, but invites the reader to practice the method and ideas the author describes. Patent protection, to the contrary, protects the method or invention from being practiced by others without the inventor’s license to do so. It is critically important to appreciate the importance of the idea/expression dichotomy in choosing the best intellectual property protection scheme for the specific asset you seek to protect. Unfortunately for Bikram Choudhury, he chose unwisely.
Bikram Choudhury, the self-proclaimed Yogi to the stars, arrived in Beverly Hills, California in 1971. He soon became a central figure in yoga’s growing popularity in the United States. Choudhury developed a sequence of 26 yoga positions and two breathing exercises practiced in a specific order, which Choudhury called the “Sequence.” In 1979, Choudhury published the book Bikram’s Beginning Yoga Class that includes descriptions and photographs of Choudhury’s Sequence in practice. In 2002, Choudhury also registered a copyright on the “compilation of exercises” contained in his book.
In 1994, Choudhury introduced a teacher training course, which Mark Drost and Zefea Samson successfully completed. In 2009, they founded their own yoga studio, Evolution Yoga, LLC, offering “hot yoga” classes that included Choudhury’s Sequence. Choudhury sued for copyright infringement claiming that Drost and Samson infringed on his copyrighted works by offering yoga classes featuring his Sequence. The District Court granted summary judgement against Choudhury’s copyright claim finding that the Sequence is a collection of facts not entitled to copyright protection. Choudhury appealed to the Ninth Circuit.
The Ninth Circuit affirmed the District Court’s holding, finding that the Sequence falls squarely within the exclusion detailed in Section 102(b) of the Copyright Act that delineates copyrightable subject matter. Specifically, Section 102(b) expressly excludes from copyright protection “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embedded in such work.” As explained by the Ninth Circuit, Section 102(b) codifies the idea/expression dichotomy under which every idea, theory and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication.
As discussed by the Ninth Circuit, courts have routinely held that the copyright for a work describing how to perform a process does not extend to the process itself. Choudhury’s Sequence was a process for obtaining physical and emotional fitness and was, therefore, not copyrightable.
Choudhury also argued that although the individual elements of his Sequence may not be protectable, the Sequence as a whole could be protected as a creatively selected compilation. The Ninth Circuit rejected that argument:
By claiming copyright protection for the Sequence as a compilation, Choudhury misconstrues the scope of copyright protection for compilations…the Sequence is an idea, process or system; therefore it is not eligible for copyright protection…Choudhury cannot obtain copyright protection for the Sequence as a compilation by separately identifying the poses and breathing exercises it contains.
What should Choudhury have done to protect his Sequence? First and foremost, in the 1970s, when Choudhury first developed the Sequence, but less than one year before the Sequence was first described in a printed publication, in public use, sold; or otherwise made available to the public, Choudhury could have sought patent protection for his yoga process. Within the life of an issued patent, Choudhury could have pursued patent infringement actions against any unauthorized uses of his protected process. Moreover, he would still have been able to publish his book describing his then-patent protected process, but would have retained the right for the life of the patent to prevent the unauthorized uses of his Sequence.
Choudhury, however, also introduced a teacher training course with, apparently, no prohibitions on how students could use the skills and processes Choudhury’s course taught them. Indeed, both defendants were graduates of the course and used what they had learned to open their own yoga studio, which triggered Choudhury’s failed copyright claims. Choudhury possibly could have prevented this trouble if, rather than running a teacher training course, he had instead included the teaching of his business methods and Sequence only as part of a franchisor/franchisee relationship, or had placed other contractual limitations on how his “students” could use and disclose his teachings.
By relying solely on copyright protection, Choudhury simply picked the wrong intellectual property protection scheme for his yoga Sequence and business methods. A combination of intellectual property and contractual protection including patent, and, to a lesser extent, copyright law would have permitted Choudhury to protect far more of the true economic value of his Sequence.