In Hong Kong, there is a steady growth in the popularity of yoga and professional trainers are establishing their own yoga brands and boutiques. Most of the yoga boutiques claim that they have developed their own tailored exercise and issues relating to intellectual property may arise. In the United States, the issue whether a sequence of yoga poses is copyrightable was examined by the United States Court of Appeals for the Ninth Circuit (“Court”)in the case of Bikram’s Yoga College of India, L.P. v Evolation Yoga, LLC (No. 13-55763) (“Bikram’s case”). This article will discuss the reasoning of Bikram’s case and consider the issue in the Hong Kong copyright law context.
Judgment of Bikram’s case
Background of Bikram’s case
The action was brought by yoga guru, Bikram Choudhury (“Bikram”). Bikram developed a sequence of twenty-six yoga poses and two breathing exercises, arranged in a particular order (“Sequence”) to be performed in a room heated to approximately 105 degrees Fahrenheit, which was recorded in his book published in 1979. In 1994, he opened his own studio, Bikram’s Yoga College of India, L.P. (together with Bikram referred to as “Appellants”), and began offering his own yoga classes by which he popularised the Sequence. In 2009, Mark Drost and Zefea Samson, who completed the classes taught by Bikram, founded Evolation Yoga, LLC (collectively “Appellees”) and began offering yoga classes one of which was similar to the Sequence and also carried out in a heated room.
In 2011, the Appellants brought a legal action against the Appellees and, among other things, alleged that the Appellees infringed their copyright in the Sequence. The U.S. District Court ruled in favour of the Appellees that the Sequence is a collection of facts and ideas that is not entitled to copyright protection under the United States copyright law. The Appellants appealed to the Court.
The Court’s decision
In essence, the Court held that the Sequence was not a proper subject of copyright protection under the Copyright Law of the United States (Title 17 of the United States Codes) because it was an idea, process, or system designed to improve health, rather than an expression of an idea.
In reaching the decision that the Sequence is an unprotectable idea, the Court firstly considered the distinction between idea and expression. The distinction has been codified in section 102 of U.S. Copyright Act of 1976 (“
”), which provides 8 categories of protectable subjects fixed in any tangible medium of expression, and expressly excludes protection for “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work”. The Court had regard to some cases and concluded that it is a well-established legal principle that the copyright for a work describing how to perform a process does not extend to the process itself. The Court applied the aforesaid principle to Bikram’s case and held that the Sequence was an essential element of a system designed to yield physical benefits and a sense of well-being and this system fell within the scope of “idea, system, or process”. The Court elaborated with an example that “the copyright for a book describing how to perform a complicated surgery does not give the holder [of the copyright] the exclusive right to perform the surgery”. Therefore, the Sequence is not eligible for protection by copyright under the Copyright Law of the United States (Title 17 of the United States Codes). The Court considered that the protection of the Sequence may be more properly sought through the patent process, though the Court did not express any view on the patentability of the Sequence.
Bikram further argued that the Sequence should be copyrightable on the grounds that it was a “compilation” or, alternatively, a copyrightable “choreographic work”. “Choreographic work” is within the aforesaid 8 categories of protectable subjects provided by section 102(a) of the Copyright Act and it is not defined therein. On the other hand, “compilation” is copyrightable as provided by section 103 of the Copyright Act and it is defined as “a work formed by the collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constituting an original work of authorship… includes collective works” therein. However, the Court is of the view that all categories of works eligible for copyright protection, including “compilation” or “choreographic work”, are subject to the critical requirements and limitations of section 102 of the Copyright Act, i.e. copyright protection does not extend to idea, process or system.
Position in Hong Kong
Although the protectable subjects under the Copyright Ordinance (Chapter 528 of the Laws of Hong Kong) are different from those in the United States, the copyright law in Hong Kong is also grounded on the principle that copyright does not protect ideas but expressions of thought (Lam Tai-hing v Linda Chih-ling Koo and another  1 HKLR 329). As analysed by Lord Hoffmann in the case of Designers Guild Ltd v Russell Williams (Textiles) Ltd  FSR 113, “… a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work… a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such”.
It is unlikely that the Sequence will be regarded as “dramatic works”, which is defined as “a work of dance or mime” under section 4 of the Copyright Ordinance. While an original publication that records pictures of a sequence of yoga poses with instructions on how to do it may be protected as a literary work, the Hong Kong copyright law may not be stretched to protect the Sequence itself.
Professional trainers and operators of boutiques should be reminded to protect their intellectual properties by all possible means, including contract, copyright, trade mark, registered design and patent. When there is any doubt, they should seek competent legal advice as soon as possible.
 The 8 categories include: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.  The protectable subjects under section 2 of the Copyright Ordinance include: (1) original literary, dramatic, musical or artistic works; (2) sound recordings, films, broadcasts or cable programmes; and (3) the typographical arrangement of published editions.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2016