o ~ . ':"':'1 Robert M. Gilchrest (SBN 134254) 2 rgilchrest@Silverfirm.com f"" SILVERMAN SCLAR SHIN & BYRNE LLP ) 4 I 6 ,'-' "'-' l 500 S. Grand Avenue, Suite 1900 Los Angeles, California 90071 Telephone: (213) 683-5350 Facsimile: (213) 627-7795 1 ::.; :-''' - - - -Attorneys for Plaintiffs 7 BIKRAM'S YOGA COLLEGE OF INDIA, L.P. Hand BIKRAM CHOUDHURY 9 10 ~ Co> c.u II UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA 12 I) 14 II 16 BIKRAM'S YOGA COLLEGE OF INDIA, L.P.; a California limited partnership; BIKRAM CHOUDHURY, an Individual, Plaintiffs, 17 18 19 v. YOGA TO THE PEOPLE, INC., a Washington corporation; GREGORY GUMUCIO, an Individual; and DOES 1 through 10, inclusive, Defendants. 20 21 22 23 1. COPYRIGHT INFRINGEMENT; 2. .TRADEMARK INFRINGEMENT; 3. FALSE DESIGNATION OF ORIGIN; 4. DILUTION; 5. UNFAIR COMPETITION; 6. UNFAIR BUSINESS PRACTICES; 7. BREACH OF CONTRACf; AND 8. INDUCING BREACH OF CONTRACT. (JURY TRIAL DEMANDED) 21 I~------------------------~ 26 27 28 Complaint? I Plaintiffs, Bikram ' s Yoga College of India, L.P. and Bikram Choudhury, 2 3 4 hereby aver as follows: JURISDICTION AND VENUE 1. This is an action for copyright infringement arising under the 5 6 7 Copyright Act of 1976, 17 U.S.C. ?? 101 e/ seq. , trademark infringement under 15 U.s.c. ? 1114, false designation of origin under the Lanham Act, IS U.S.C. ? 1125(a), and trademark dilution under 15 U.S.c. ? 1125(c). This Court has jurisdiction of this action under 28 U.S.c. ?? 1331,1337, 1338(a), 1338 (b) and IS U.s.c. ? I 121. This Court has supplemental jurisdiction over the state law claims in that those claims are so related to the federal claims that they form part of the same case or controversy. 2. This Court has personal jurisdiction over the Defendants in that g 9 10 11 12 13 Defendants have consented to personal jurisdiction in this District, have knowingly conspired with Defendants who have consented to personal jurisdiction in this District and/or have engaged in many of the acts of infringement, unfair competition and state law claims complained of herein in this District. 3. Venue is proper in this District under 28 U.S.c. ?? 1391 in that: (a) a 14 15 16 17 18 19 substantial part of the events or omissions giving rise to the claims herein occurred in this District; (b) Defendants have consented to venue in this District pursuant to an agreement entered into in this Judicial District; and/or conspired with Defendants who thereby have consented to venue in this District. 20 21 22 23 INTRODUCTION 4. This is an action for copyright and trademark infringement, false 24 designation of origin, dilution, unfair competition, unfair business practices, breach of contract and inducing breach of contract brought by Plaintiffs Bikram's Yoga College ofIndia, L.P . ("BYCr") and Bikram Choudhury ("Bikram"), a worldrenowned yoga guru who developed the unique brand of yoga known as "Bikram Yoga." Bikram founded BYC\. Since as early as 1971 , Bikram has conducted 25 26 27 28 business under the names "Bikram's Yoga" and "Bikram Yoga." And since as 2 early as 1978, Bikram has created and registered copyrighted works, trademarks, trade names and logos. 3 4 5. Bikram has licensed those copyrighted works, trademarks, trade S names and logos (sometimes referred to in this complaint as "Bikram's IP") to BYC!. And together, Bikram and BYCl have used Bikram's IP continuously and extensively in brochures, newsletters, bulletins and other publications. As a result, Bikram's fP has become well and favorably known in the United States (including California and this Judicial District) and abroad for its association with Bikram Yoga. Bikram's IP has become a valuable component of Bikram and Bikram Yoga's reputation and goodwill. The copyrighted works, trademarks, trade names and logos comprising Bikram's IP are known and recognized as such by the public. 6. Defendant Gregory Gumucio is a former certified Bikram Yoga 6 7 8 9 10 11 12 IJ 14 IS teacher. Before becoming a certified Bikram Yoga teacher, Gumucio entered into an agreement which restricts his use ofBikram's IP to, among other things, teaching Bikram Yoga classes in Bikram Yoga studios in compliance with the dialogue and posture sequence taught to him. In addition, the agreement and settled law prohibits Gumucio from: (a) publishing, displaying, advertising, broadcasting or using, in any manner whatsoever, any of Bikram' s trademarks, service marks, copyrights, logos, photographs or likeness; (b) publishing, exhibiting or demonstrating any Bikram method or posture by or through any medium or publication (electronic or otherwise), including books, magazines, film, photographs or electronic images; (c) producing, distributing and/or selling products that substantially and materially copy and/or are derived from Bikram's copyrighted works or trademarks; and/or (d) training or giving instruction to others in connection with or towards completion of a teacher training certificate permitting the holder to teach Bikram Yoga or any form of yoga derived from Bikram Yoga. 16 17 18 19 20 21 22 23 24 2S 26 27 28 Complaint? 3 7. 2 J 4 j Gumucio owns defendant Yoga to the People ("YTIP"). YTIP offer a number of yoga classes, including a class named "Traditional Hot Yoga." Gumucio named the class "Traditional Hot Yoga" in order to conceal the fact that the class incorporates and infringes upon, among other things, Bikram's copyrighted Asana Sequence and Dialogue. Moreover, the YTIP "Traditional Hot Yoga" class is taught in the same ambient environment as Bikram Yoga in order to give students the impression that the class offers the same experience and benefits a student would have at a Bikram Yoga studio. In addition, Gumucio has employed certified Bikram Yoga instructors and Bikram Yoga imposter instructors trained and purportedly certified by Gumucio to teach his deceptively named and infringing "Traditional Hot Yoga" class. 8. Recently, Gumucio has attempted to justify his and YTIP 's blatant 6 7 8 9 10 II 12 13 14 infringing conduct by, in essence, likening himself to the "Napster, lnc./Grokster, Ltd." of the hot yoga world. Thus, much like the business model of Napster and Grokster of yester-year who made available to the public the means by which to enjoy the copyrighted music owned and controlled exclusively by others at a discounted rate or for free, Gumucio offers Bikram Yoga under the deceptively named and infringing "Traditional Hot Yoga" moniker at $8 per class at YTIP because, in Gumucio's own words: "[i]n New York, you're paying $20 to $25 a class .... To me, that was just very cost prohibitive. Our commitment was to give the less financially able an opportunity to practice." 9. Gumucio and YTTP: (a) do not own Bikram's IP; (b) have no right, Ij 16 17 18 19 20 21 22 23 24 2j title or interest in or to the Bikram Yoga style and method, including the Marks, the Dialogue or other of Bikram 's Copyrighted Works; and (c) are not authorized to offer the deceptively named and infringing "Traditional Hot Yoga" class at YTIP at any price whatsoever. Moreover, the fact that Gumucio and YTIP publicly boast of their unlawful conduct even after being put on notice that the conduct is unlawful, unethical and immoral is proof positive that they show no 26 27 28 Complalnt.4 remorse or intent of ending their unlawful conduct. Defendants have acted 2 intentionally, willfully, maliciously, and with conscious indifference to the consequences, which actions and intentions constitute aggravating circumstances. Thus, in addition to compensatory damages and a permanent injunction against Defendants, their conduct warrants, among other things, the award of punitive damages, attorney's fees and costs of suit herein. This action is brought to require defendants to answer for their despicable conduct and to pay the consequences of the same. 3 4 l 6 7 8 9 10 THE PARTIES 10. Plaintiff Bikram's Yoga College of India, L.P. ("BYCl"), is, and at all II times relevant hereto was, a California limited partnership. BYC! exists under the laws of the State of California and its principal place of business is located in Los Angeles, California. II. Plaintiff Bikram Choudhury ("Bikram") is, and at all times relevant 12 13 14 Il hereto was, a citizen of the United States of America, and a resident of Los Angeles, California. Bikram and his wife, Rajashree Choudhury, are the partners ofBYCr. 12. Defendant Yoga To The People ("YTIP") is, and at all times relevant hereto was, a corporation existing and operating under the laws of the State of Washington. YTIP has yoga studios in San Francisco, CA, Berkeley, CA, New York, NY, and Seattle, WA. YTIP does business in California. In addition, YTTP has conspired with others (including defendant Gregory Gumucio) who have consented to venue in this Judicial District and, thereby, has consented to venue in this Judicial District. 13. Defendant Gregory Gumucio is, and at all times relevant hereto was, a 16 17 18 19 20 21 22 23 24 2l 26 27 citizen of the United States of America and resides in or around New York, New York. Gumucio founded and owns YTIP. Gumucio has conspired with 28 Complaint - l individuals who have consented to venue in this Judicial District and, thereby, has 2 3 consented to venue in this Judicial District. 14. The true names and capacities of defendants Does I through 10, 4 5 inclusive, are unknown to Plaintiffs, who therefore sue said defendants by such fictitious names. In performing the acts or omissions described in this Complaint, defendants YTTP and Gumucio, and Does I through 10 (collectively, "Defendants") were each acting as the representative, agent, employee or alter ego of each other. All acts or omissions described in this Complaint were performed in the course and scope of this agency with the knowledge or consent of each of the Defendants and contributed to the harm to Plaintiffs alleged herein. As soon as the true names of Does 1 through 10 have been ascertained, Plaintiffs will amend this complaint accordingly. 6 7 8 9 10 11 12 13 14 FACTUAL SUMMARY Bikram's Yoga 15 15. Bikram is recognized as one of the preeminent Hatha Yoga Masters 16 17 and Gurus living today. After years of research, Bikram discovered and developed his unique brand of yoga known as "Bikram Yoga" (also known as "Bikram's Basic Yoga System," "Bikram's Beginning Yoga Class" or nBikram's Yoga n). 16. Bikram Yoga is a proprietary and discrete series of twenty-six (26) 18 19 20 yoga positions and two (2) breathing exercises, which are always performed in precisely the same sequence, in a room heated to at least 105? Fahrenheit. The postures and exercises are accompanied by a rigidly prescribed series of oral instructions and commands. Bikram Yoga is performed for precisely ninety (90) minutes. The very essence ofBikram Yoga is that its postures are performed in exactly the same sequence, with exactly the same instructions and commands, in a room heated to 105? Fahrenheit, in every class. The intended benefits from Bikram Yoga can only be derived i[the yoga class is performed precisely as Bikram developed it. 21 22 23 24 25 26 27 28 Complaint. 6 17. 2 In about 1971, Bikram began offering Bikram Yoga classes through his facilities at Bikram's Yoga College of India, in Los Angeles, California. 18. 3 Bikram Yoga soon became extremely popular. Public demand for 4 5 6 Bikram Yoga classes grew steadily once Bikram Yoga participants realized that Bikram 's unique yoga style and method offered them tremendous physical, mental and other benefits. Bikram Yoga has become recognized throughout the world not only for its exceptional benefits, but for its distinctive method, style, instructions, and commands. Over 500 facilities worldwide are now authorized to offer Bikram Yoga. 19. As the demand for Bikram Yoga increased, Bikram saw the need for a 7 8 9 10 II 12 regimented, quality-controlled program designed to train others in the art of teaching the Bikram Yoga method and style. Consequently, in or about 1994, Bikram inaugurated a Bikram Yoga Teacher Training Course. 20. Before beginning the Bikram Yoga Teacher Training Course, each 13 14 15 16 17 teacher trainee is required to sign a teacher training contract (the "Teacher Training Agreement") and is provided with a signed copy of the Agreement. In addition, each teacher trainee is aware that fellow teacher trainees are required to sign the Agreement. Under the Bikram Yoga Teacher Training Course, individuals who desire to lead and instruct classes in Bikram Yoga pay $10,000 for tuition, materials and room and board to attend a nine-week residential teacher training program, and in return receive instruction and training in the Bikram Yoga method and style. Those who successfully satisfy the high standards set by Bikram and master the academic and physical requirements earn their certification as teachers of"Bikran1 's Basic Yoga System." Only Bikram himself may grant certification as a Bikram Basic Yoga System teacher. And only certified Bikram Yoga instructors can teach at Bikram Yoga studios. To date, Bikram has trained and certified over six thousand three hundred Bikram Basic Yoga System teachers in his unique style and method. 18 19 20 21 22 23 24 25 26 27 28 Compla lnt.7 21. 2 3 4 Certified teachers receive a limited license to teach Bikram's Basic Yoga System and to use Bikram's trademarks and copyrighted works in connectio therewith, provided that they agree to teach Bikram's Basic Yoga System precisely as it was taught to them and to abide by strict guidelines set by Bikram with regard to their status as certified Bikram's Basic Yoga System teachers. In part to ensure the unifonn interpretation and enforcement of the Teacher Training Agreement an the preservation and protection of B ikram's IP, the Agreement is governed by the laws of the State of California and requires that any action filed to enforce the Agreement and any matters related to Bikram Yoga be brought in either the state or federal courts located in Los Angeles County, California. Bikram's IP 5 6 7 8 9 10 II 12 13 14 15 22. Bikram Yoga incorporates several protectable elements, each developed and owned exclusively by Bikram. 23. Bikram's twenty-six (26) yoga postures together with two (2) breathing exercises, all of which are always perfonned in exactly the same strictly prescribed sequence, in a room heated to at least 105? Fahrenheit, differentiate Bikram Yoga from all other forms of yoga and other types of exercise. The style, method, design, and structure ofBikram Yoga are unique and distinctive. The Bikram Yoga method consists of several distinct and highly recognizable features. These twenty-six (26) distinctive postures and two (2) breathing exercises have become so distinctive in the marketplace of yoga classes that they have acquired fame and secondary meaning and therefore serve as a designation of the source and sponsorship of this type of yoga. Indeed, Bikram Yoga is so distinctive in overall appearance, structure, format, and choreography that it is recognizable in marketplaces throughout the world. 24. The Bikram Yoga method, including but not limited to the unique 16 17 18 19 20 21 22 23 24 25 26 27 28 selection, sequence, and number of yoga postures and breathing exercises, together with the element of a room heated to at least 105? Fahrenheit, combine to convey a Complaint - 8 unique and distinctive overall image and impression constituting a federally2 3 4 protected service mark owned exclusively by Bikram (the "Bikram Asana Sequence" or "Asana Sequence"). Bikram's Copyrighted Works 5 25 . As part of his development of the Bikram Yoga style and method, 6 7 Bikram created an original work of authorship consisting of a series of instructions and commands that accompany, and correspond to, each posture ofBikram Yoga (the "Dialogue"). This original work is recited in a precise manner, in the fonn of a spoken dialogue, by a certified Bikram's Basic Yoga System teacher during each Bikram Yoga session. 26. The purposes for the strict requirement that the Dialogue is to be 8 9 10 II 12 13 recited in a precise manner are: (a) to maintain quality control over Bikram's Basic Yoga System, since the benefits of the System will not be derived if the yoga is done incorrectly; (b) to ensure uniformity from teacher to teacher and school to school in the teaching of the postures; and (c) to allow students to focus on improving their practice of the Yoga since the Dialogue becomes ingrained and eventually acts almost like a "mantra." 27. 28. Bikram fixed the Dialogue in a tangible medium of expression. Bikram is the owner of the copyrightable work of authorship in the 14 15 16 17 18 19 20 Dialogue and the U.S. copyright registration in the Dialogue, and duly possesses all rights, title, and interests therein. Bikram has complied with all of the laws pertinent to the Dialogue as a copyrighted work. 29. Bikram is the sole author of a book entitled "Bikram's Beginning 21 22 23 24 25 26 Yoga Class" (the "Book") written in 1978 and fust published in 1979. The Book contains, among other things, a description of the Bikram Asana Sequence. The United States Copyright Office issued Copyright Registration Certificate No. TX 170-160 to Bikram for the Book. In 2000, Bikram published a revised version of 27 28 Complaint 9 4 the Book, and the Copyright Office issued Copyright Registration Certificate No. 2 3 4 5 TX 5-259-325 to Bikram for this edition. 30. The Copyright Office also issued to Bikram Copyright Registration Certificate No. TX 5-624-003 for the Bikram Asana Sequence. Because the Bikram Asana Sequence was first published in the Book, the Copyright Office directed Bikram to register the Bikram Asana Sequence as "selection of arrangement of exercise" or "compilation of exercises" by submitting a supplemental application to Registration No. TX 170-160 for the Book. 3 I. The Copyright Office has issued to B ikram several additional 6 7 8 9 10 II Copyright Registrations: (a) Certificate No. TX 1-022-657 for the work entitled "Bikram's Yoga College Of India Beginning Yoga Dialogue"; (b) Certificate No. TX 6-555-860 for the "Bikram's Beginning Yoga Class" audiotape (the "AudioTape"); (c) Certificate No. TXu 934-417 for the work entitled "Bikram's Yoga College of India Teacher Training Course-Curriculum Outline"; (d) Certificate No. TXu 1-323-218 for Bikram's Advance Yoga Class Asana Sequence; and (e) Certificate No. PA 1-053-335 for a videocassette entitled "Rajashree's Pregnancy Yoga," which is co-registered with Rajashree Choudhury. 32. Bikram is the owner of the copyrighted works set forth in the foregoing paragraphs and the U.S. copyright registrations issued by the Copyright Office. Therefore, Bikram duly possesses all rights, title, and interest therein. Bikram has complied with all of the laws pertinent to the works set forth in the preceding paragraphs as copyrighted works. 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Bikram's Trademarks, Service Marks, Trade Names And Logos 33. Bikram owns several trademarks, service marks, trade names and logos (collectively, "the Marks") used in connection with this business and Bikram Yoga, including, among others: (a) "BTKRAM YOGA", registered August 5, 2003, Registration Number 2,746,346; 26 27 28 Complamt - 10 (b)"BIKRAM'S YOGA COLLEGE OF INDIA", registered May 2 27,2003 , Registration Number 2,718,899; (c) "BlKRAM'S BEGINNING YOGA CLASS", registered April 6, 2004, Registration Number 2,829,135; (d) A design mark ofBikram in the spine twisting pose, registered October 21 , 2003, Registration Number 2,775,407; (e) BIKRAM'S BASIC YOGA SYSTEM; and (f) BIKRAM'S ASANA SEQUENCE OF 26 YOGA POSTURES. 34. Therefore, Bikram duly possesses all rights, title, and interests in and 3 4 5 6 7 s 9 10 11 12 13 to the Marks. And Bikram has complied with all of the laws pertinent to Marks set forth in the proceeding paragraph. 35. Bikram and BYCI have spent significant time and money creating, developing, maintaining and controlling Bikram ' s IP and have used the same to advertise, promote and market Bikram Yoga classes. Bikram and BYCI have used Bikram's IP for more educational services, namely, conducting classes, seminars, conferences, and teacher training in Bikram Yoga and yoga philosophy. Gumucio Becomes A Certified Bikram Instr uctor And Agrees To A Limited Right To Use Bikram's IP 36. In or about Spring of 1996, defendant Gumucio enrolled in Bikram's 14 15 16 17 18 19 20 21 Yoga College ofindia Teacher Training Course in Los Angeles. Gumucio successfully completed the course, and thus became authorized under a limited license agreement, described below, to teach Bikram' s Basic Yoga System. 37. Before starting the course, Gumucio agreed to certain limited license 22 23 24 rights (the "License") related to use Bikram's unique yoga style and method. The terms of the License included the following rights and licenses: (a) to teach Bikram ' s Basic Yoga System classes in strict compliance with guidelines established by Bikram; 25 26 27 28 Complalllt o I I (b) to publicly recite the Dialogue and demonstrate the Asana 2 Sequence during the course of teaching the Bikram's Basic Yoga System classes in strict conformity with the methods taught during the Teacher Training Course; (c) to use the Marks for purposes of identifying classes taught in 3 4 6 7 strict conformity with the methods taught during the Teacher Training Course. 38. Gumucio also agreed to refrain from doing the following: (a) to publish, display, advertise, broadcast, or use, in any manner whatsoever, any of Bikram 's trademarks, service marks, copyrights, logos, photograph or likeness; (b)to publish, exhibit or demonstrate any Bikram method or posture by or through any medium or publication (electronic or otherwise), including books, magazines, film, photographs or electronic images; (c) to produce, distribute and sell products that substantially and materially copy andlor are derived from Bikram's copyrighted works or trademarks; (d)to train or give instruction to others in connection with or towards completion of a teacher training certificate permitting the holder to teach Bikram Yoga or any form of yoga derived from B ikram Yoga; (e) to use Bikram's copyrighted works and trademarks in connection with any variations of Bikram's Basic Yoga System; or 8 9 10 II 12 13 14 IS 16 17 18 19 20 21 22 23 24 2S 26 27 (f) to alter the Dialogue or Asana Sequence in any way. 39. Gumucio was advised and understood that failure to strictly conform to the terms of the License would result in termination of the License and preclude 28 Complaint - 12 him from using any Bikram Copyrights or Marks, or holding himself out as a 2 3 certified Bikram Yoga teacher. Gumucio Helps Run Bikram Yoga Teacher Training Sessions, During Which Gumucio Repeatedly Acknowledges And Reaffirms His Limited Rights To the Use Of Bikram's IP and Instructs Teacher Trainees Of Their Limited Rights To Use Bikraro's IP 4 ~ 6 7 40. Bikram Teacher Training is run by Bikram, senior Bikram Yoga 8 9 instructors ofBikram Yoga, staff instructors and visiting instructors. Those who request and are in vited to be staff or visiting instructors at Bikram Yoga Teacher Training acknowledge and reaffirm their commitment to abide by the limited rights and prohibitions to which they previously agreed. 41. 10 II 12 13 14 Gumucio lived in Seattle, Washington immediately after becoming a certified Bikram Yoga instructor. Gumucio admits that, while living in Seattle, he commuted to Los Angeles to help run Bikram Teacher Training Sessions. 42. During the time Gumucio helped run Bikram Yoga training sessions, I~ 16 17 Gumucio acknowledged and reaffirmed his agreement to the limited use of Bikram's IP by, among other things, instructing the teacher trainees of the rights se forth in paragraph 37 above as well as the prohibitions set forth in paragraph 38 above. 43 . Gumucio acknowledged and reaffirmed his agreement to the limited 18 19 20 21 22 23 use of Bikram's IP by causing the teacher trainees to sign teacher training agreements that, among other things, evidenced each teacher trainee's knowledge and agreement to the limited rights set forth in paragraph 37 above as well as the prohibitions set forth in paragraph 38 above. 24 25 26 27 28 Complaint - 13 Reminiscent Of Napster And Grokster Of Yester-Year, Gumucio 2 Recently Admits Publicly That He And "Yoga To The People" Studios Infringe On Bikram's IP To Make Bikram Yoga Available At A Cheaper Rate 44. Gumucio now lives in New York City. In recent months, Gamucio 3 4 5 6 7 has admitted publicly that his "Yoga to the People" offers a hot yoga class that "consists of2 breathing exercises and a series of26 poses incorporating balance, strength and flexibility" and is "done in a heated room of 105-108 degrees." 45. Gumucio also has admitted that "[t]he idea of Yoga for the People 8 9 1 0 II came to [him] bccause ofBikram." He has openly boasted that: (a) "[w]e do offer the same kind of yoga at a much cheaper rate and we're obviously doing a really good job"; and (b) "[i]n New York, you're paying $20 to $25 a c\ass ... .To me, that was just very cost prohibitive. Our commitment was to give the less financially able an oppOitunity to practice." 46. Following Gumucio's public boasting, Bikram learned that "Yoga to 12 13 14 IS 16 17 18 the People" ("YITP") offers several different yoga classes, including one deceptively named "Traditional Hot Yoga." Bikram has confirmed that the YITP "Traditional Hot Yoga" class incorporates and infringes upon, among other things, Bikram's copyrighted Asana Sequence and Dialogue. Bikram also confirmed that the YITP "Traditional Hot Yoga" class is taught in the same ambient environment as Bikram Yoga in order to give students the impression that the class offers the same experience and benefits a student would have at a Bikram Yoga studio. 47. In addition, Bikram has learned that Gumucio and YITP have 19 20 21 22 23 24 employed certified Bikram Yoga instructors to teach the deceptively named and infringing "Traditional Hot Yoga" at VITP. Gumucio and YITP have also traine imposter instructors to teach the deceptively named and infringing "Traditional Hot Yoga" at YITP. 25 26 27 28 Compl aint ? J4 48. 2 3 4 By offering the deceptively named and infringing "Traditional Hot Yoga" at YTTP at a cheaper price per class, Gumucio and YTTP fancy themselves as the hot yoga equivalent of Napster or Grokster. However, like was the case in the old Napster and Grokster clisputes, Gumucio and YTTP: (a) do not own Bikram's IP; (b) have no right, title or interest in or to the Bikram Yoga style and method, including the Marks, the Dialogue or other of Bikram's Copyrighted Works; and (c) are not authorized to offer the deceptively named and infringing "Traditional Hot Yoga" class at YTTP at a cheaper price or for free. Nevertheless, Gumucio and YTTP continue to use the Bikram Yoga Style and method, and constituent components thereof, without the pelmission ofBikram by: (a) offering yoga classes employing the elements of Bikram Yoga, including the twenty-six (26) postures and two (2) breathing exercises specifically prescribed in Bikram Yoga in the same Asana Sequence, but altering the number of sets of each posture done during a class; (b) offering yoga classes employing the elements of Bikram Yoga, including the twenty-six (26) postures and two (2) breathing exercises specifically prescribed in Bikram Yoga in the same Asana Sequence, but altering the Dialogue with the addition, or substitution, of phrases and commands; (c) offering yoga classes employing the elements of Bikram Yoga, including the twenty-six (26) postures and two (2) breathing exercises specifically prescribed in Bikram Yoga in the same Asana Sequence, but failing to super-heat the room in which such classes are offered to 105? Fahrenheit, if at all; (d) offering yoga classes employing the elements of Bikram Yoga, including the twenty-six (26) postures and two (2) breathing exercises specifically prescribed in Bikram Yoga in the same 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Complainl - 15 Asana Sequence, but with the inclusion of additional postures 2 3 4 andlor words not authorized or endorsed by Bikram; and (e) employing instructors to teach deceptively named and infringing yoga classes who are themselves engaged in infringing conduct and/or are the by-products of an 6 7 8 unsanctioned (and, indeed, invalid andlor counterfeit) Bikram Yoga teacher certification programs and counterfeit certificates. 49. As a result of Defendants' unauthorized uses of the Bikram Yoga 9 10 II style and method and the corresponding use or modification of the elements of the Dialogue and other ofBikram's Copyrighted Works and the Marks, consumers are misled into believing that YTTP is authorized to offer "Traditional Hot Yoga" and are not informed that, by offering the "Traditional Hot Yoga" class, Gumucio and YTTP are engaging in unlawful conduct. 50. Defendants' unlawful and infringing conduct has been willful and 12 13 14 15 deliberate, designed specifically to trade upon the goodwill associated with the Bikram's IP rights. 16 17 18 CLAIMS FOR RELIEF FIRST CLAIM FOR RELIEF (Copyright Infringement Against All Defendants) 19 51. 20 21 Plaintiffs hereby repeat and reallege the allegations set forth in paragraphs 1 through 50, above, as though fully set forth herein. 52. 22 23 24 Defendants' willful and continued unauthorized use in interstate commerce of the Bikram's Copyrighted Works is likely to deprive Bikram and BYCI of their exclusive rights, to continue to cause confusion and mistake, and to deceive the public in that it has and will continue to lead the public erroneously to associate the yoga and services offered by BYCI and Bikram with those offered by Defendants in violation of 17 U.S.C. ?? 101 et seq. 27 25 26 28 Co mpla im - 16 53. 2 J Defendants have infringed and continue to infringe the copyrights in the Bikram's Copyrighted Works through substantial use ofBikram's Copyrighted Works in and as part of, among other things, Defendants'; (a) offering of deceptively named and infringing yoga classes; and (b) training and purported certification of teachers to teach Bikram Yoga or other fonns of yoga derived from Bikram Yoga. 54. BYCI and Bikram are entitled to penn anent injunctive relief restraining Defendants, and their officers, agents, and employees, and all persons acting in concert with them, from engaging in any further such acts in violation of the Copyright Laws of the United States. 55. BYCI and Bikram are further entitled to recover damages, including attorneys' fees, they have sustained and will sustain, and any gains, profits, and advantages obtained by Defendants as a result of their acts of infringement alleged above, in an amount greater than $1,000,000, according to proof to be determined at time of trial. SECOND CLAIM FOR RELIEF (Trademark Infringement Against All Defendants) 4 5 6 7 8 9 10 II 12 13 14 IS 16 17 18 19 56. 57. Plaintiffs hereby repeat and reallege the allegations set forth in Defendants' willful and continued unauthorized use in interstate paragraphs 1 through 50, above, as though fully set forth herein. commerce of the Bwam's Marks is likely to deprive Bikram and BYCI of their exclusive rights, to continue to cause confusion and mistake, and to deceive the public in that it has and will continue to lead the public erroneously to associate the yoga and services offered by BYCI and Bikram with those offered by Defendants in violation of ? 43(a) of the Lanham Act, 15 U.S.c. ? I 125(a). 58. Defendants have infringed and continue to infringe the B.ikram's 20 21 22 23 24 25 26 27 Marks through substantial used ofBikram's Marks in and as part of Defendants'; (a) offering of deceptively named and infringing yoga classes; and (b) training and 28 Complaint 17 p pwported certification of teachers to teach Bikram Yoga or other forms of yoga 2 3 4 5 6 derived from Bikram Yoga. 59. BYCI and Bikram are entitled to permanent injunctive relief restraining Defendants, and their officers, agents, and employees, and all persons acting in concert wi th them, from engaging in any further such acts in violation of the Trademark Laws of the United States. 60. BYCI and Bikram are further entitled to recover damages, including 7 8 9 10 attorneys' fees, they have sustained and will sustain, and any gains, profits, and advantages obtained by Defendants as a result of their acts of infringement alleged above, in an amount greater than $1,000,000, according to proofto be determined at time of trial. II 12 13 14 15 THIRD CLAIM FOR RELIEF (False Designation Against All Defendants) 61. Plaintiffs hereby repeat and reallege the allegations set forth in paragraphs 1 through 50, above, as though fully set forth herein. 62. Defendants' willful and continued unauthorized use in interstate deceive the 16 17 commerce of the Bikram's IP is likely to deprive Bikram and BYCI of their exclusive rights, to continue to cause confusion and mistake, and to 18 19 public in that it has and will continue to lead the public erroneously to believe that Defendants' yoga and services are sponsored, approved and/or certified by BYCI and Bikrarn and are being marketed with the consent ofBYCl and Bikram. 63. If Defendants' acts are not enjoined by this Court, they will cause 20 21 22 23 irreparable and substantial damage to Bikram, BYCI and its affiliates, for which there is no adequate remedy at law, and otherwise will result in Defendants being unjustly enriched by their unlawful acts. 64. BYCI and Bikram are entitled to permanent injunctive relief 24 25 26 27 restraining Defendants, and their officers, agents, and employees, and all persons 28 Complain! . 18 acting in concert with them, from engaging in any further such acts in violation of 2 the Trademark and Copyright Laws of the United States. 3 4 l 65 . BYCI and Bikram are further entitled to recover damages, including attorneys' fees, they have sustained and will sustain, and any gains, profits, and advantages obtained by Defendants as a result of their acts of infTingement alleged above, in an amount greater than $1,000,000, according to proof to be determined at time of trial. FOURTH CLAIM FOR RELIEF (Dilution Against All Defendants) 6 7 8 9 10 66. Plainti ffs hereby repeat and reallege the allegations set forth in II paragraphs I through 50, above, as though fully set forth herein. 12 I) 67. Defendants' willful and continued unauthorized use in interstate commerce of the Bikram's IP has injured and threatens to further injure the business reputations ofBYCI and Bikram and to dilute the distinctive quality of Bikram's IP. Pursuant to California Business and Professions Code Section 14330, BYC! and Bikram are therefore entitled to permanent injunctive relief restraining Defendants, and their officers, agents, and employees, and all persons acting in concert with them , from engaging in any further such acts in violation of the Trademark and Copyright Laws of the United States. 68. BYC! and Bikram are further entitled to recover damages, including 14 Il 16 17 18 19 20 21 attorneys' fees, they have sustained and will sustain, and any gains, profits, and advantages obtained by Defendants as a result of their acts of infringement alleged above, in an amount greater than $1,000,000, according to proof to be determined at time of trial. FIFTH CLAIM FOR RELIEF (Unfair Competition Against All Defendants) 69. Plaintiffs hereby repeat and reallege the allegations set forth in paragraphs I through 50, above, as though fully set forth herein. 22 23 24 2l 26 27 28 Complaint - 19 70. 2 3 Defendants' willful and continued unauthorized use in interstate commerce of the Bikram's IP constitute an unfair business practice and a form of unfair competition, entitling BYCI and Bikram to permanent injunctive relief restraining Defendants, and their officers, agents, and employees, and all persons acting in concert with them, from engaging in any further such acts in violation of the Trademark and Copyright Laws of the United States pursuant to California Business and Professions Code ?? 17200 and 17203. 4 5 6 7 8 9 SIXTH CLAIM FOR RELIEF (Unfair Business Practices Against All Defendants) 71. 10 II 12 IJ Plaintiffs hereby repeat and reallege the allegations set forth in paragraphs I through SO, above, as though fully set forth herein. 72. Defendants' willful and continued unauthorized lise in interstate commerce of the Bikram's IP has injured and threatens to further injure the business reputations ofBYCr and Bikram and to dilute the distinctive quality of Bikram's IP. Pursuant to California Business and Professions Code Section 14330, BYCI and Bikram are therefore entitled to permanent injunctive relief restraining Defendants, and their officers, agents, and employees, and all persons acting in concen with them, from engaging in any further such acts in violation of me 14 15 16 17 18 19 Trademark and Copyright Laws of the United States. 73. BYC! and Bikram are further entitled to recover damages, including 20 21 22 attorneys' fees, they have sustained and will sustain, and any gains, profits, and advantages obtained by Defendants as a result of their acts of infringement alleged above, in an amount greater than $1,000,000, according to proof to be determined at time of trial. 23 24 25 SEVENTH CLAIM FOR RELIEF (Breach of Contract Against Gumucio and Does 1 through 10) 74. BYC! hereby repeats and rea lieges the allegations set forth in paragraphs 1 through S0, above, as though fully set forth herein. 26 27 28 Complaint. 20 75. 2 Gumucio entered into an oral and implied in fact agreement at the time he entered Bikram Yoga Teacher Training. 76. Except where otherwise excused due to the conduct of Defendants, 3 4 5 ByeI has performed consistent with the terms of the agreement. 77. Gamucio breached the agreement by, among other things, engaging in 6 7 the conduct detailed more fully above. 78. As a result of the breach, Byer and Bikram have been damaged in an 8 9 10 II amount that is currently uncertain but is alleged to exceed $250,000. EIGHTH CLAIM FOR RELIEF (Inducing Breach of Contract Against Yoga To The People, Gumucio And Does 1 through 10) 79. Byer hereby repeats and realleges the allegations set forth in 12 paragraphs 1 through 50, above, as though fully set forth herein. 80. Since the commencement of the conduct more fully described above, 13 14 15 YITP and Gumucio have been aware that all certified Bikram Yoga instructors were required to sign the Teacher Training Agreement before they commenced the course of training that led to their becoming certified Bikram Yoga instructors. 81. 16 17 Defendants have solicited and induced certified Bikram Yoga 18 19 instructors to teach Bikram Yoga, "Traditional Hot Yoga" and/or any form of yoga derived from Bikram Yoga at YTTP while their Teacher Training Agreements were effective. By so doing, Defendants have induced those certified Bikram Yoga instructors to breach the terms of the Teacher Training Agreement. 82. As a result of the breach, Byer and Bikram have been damaged in an 20 21 22 23 amount that is currently uncertain but is alleged to exceed $250,000. Byel and Bikram are also entitled to permanent injunctive relief restraining Defendants from inducing the breach of the Teacher Training Agreements in a manner which infringes on Bi.kram's JP. 24 25 26 27 28 Complainl - 21 PRA YER FOR RELIEF 2 WHEREFORE, Plaintiffs pray for judgment against Defendants as follows: FOR THE FIRST CLAIM FOR RELIEF 1. For damages in an amount to be proven at trial, but which is believed J 4 5 to exceed $1,000,000. 6 7 2. 3. For punitive damages in an amount to be proven at trial. For a preliminalY and permanent injunction barring subsequent 8 9 10 11 12 infringement of Plaintiffs' Copyrighted Works. 4. For an order permitting the seizure and destruction of unlawful and counterfeit reproductions ofBikram's IP. 5. At Plaintiffs' election, for statutory damages for willful infringement 13 pursuant to 17 U.S.c. Section 504(c). 14 15 16 17 FOR THE SECOND CLAIM FOR RELIEF 6. For damages in an amount to be proven at trial, but which is believed to exceed $1,000,000. 7. 8. For punitive damages in an amount to be proven at trial. For a preliminary and permanent injunction barring subsequent 18 19 20 infringement of Plaintiffs' Marks. 21 22 9. For an order permitting the seizure and destruction of unlawful and 23 24 25 counterfeit reproductions ofBikram's IP. 10. At Plaintiffs' election, for statutory damages for willful infringement pursuant to 15 U.S.C. Section 1117(c). 26 27 28 Complaint - 22 FOR THE THIRD CLAIM FOR RELIEF 2 3 II. For damages in an amount to be proven at trial , but which is believed to exceed $1,000,000. 12. For a preliminary and permanent injunction barring subsequent 4 5 infringement of Plaintiffs' !P. 6 7 FOR THE FOURTH CLAIM FOR RELIEF 13. For damages in an amount to be proven at trial, but which is believed 8 9 10 11 to exceed $1,000,000. 14. For a preliminary and permanent injunction barring subsequent infringement of Plaintiffs' !P. 12 FOR THE FIFTH CLAIM FOR RELIEF 13 14 15 16 15. For a preliminary and permanent injunction barring subsequent infringement of Plaintiffs' IP. FOR THE SIXTH CLAIM FOR RELIEF 16. For a preliminary and permanent injunction barring subsequent 17 18 19 infringement of Plaintiffs' IP. FOR THE SEVENTH CLAIM FOR RELIEF 20 21 22 23 17. For damages in an amount to be proven at trial, but which is believed to exceed $250,000. FOR THE EIGHTH CLAIM FOR RELIEF 18. For danlages in an amount to be proven at trial, but which is believed 24 25 to exceed $250,000. 19. For a preliminary and permanent injunction barring the inducement of 26 27 28 breach of contract in a manner in which infringes on Plaintiffs' IP. Complaint - 23 FOR ALL CAUSES OF ACTION 2 3 4 20. For costs of suit incurred herein, including attorney's fees as permitted by statute; and 21. F or such other relief as the court deems just and proper. Respectfully submitted, SIL VE"",Vl.t1.N SCLAR SHIN & BYRNE LLP By: 5 6 7 September ~ 20 II 8 9 10 II ---r~~~~---------- R bert M. Gilchrest For Plaintiffs BIKRAM'S YOGA COLLEGE OF INDIA, L.P. and BIKRAM CHOUDHURY 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Comp lainL - 24 DEMAND FOR JURY TRIAL 2 Plaintiffs demand a trial by jury in this action with respect to those matters triable to a jury . 3 4 5 Seplember 21.. , 2011 6 7 Respectfully submitted, SIL VET AN SCLAR SHIN & BYRNE LLP ,-By: \.......-- 8 G ,.,-- 9 10 11 12 R bert M. Gilchrest For Plaintiffs BIKRAM'S YOGA COLLEGE OF INDIA, L.P. and BIKRAM CHOUDHURY 13 14 15 1 6 17 18 19 20 21 22 23 24 25 26 27 28 Complaj nt - 25