[Cite as Osborne v. Ohio Dept. of Rehab. & Corr., 2009-Ohio-1575.]
Court of Claims of Ohio
The Ohio Judicial Center
65 South Front Street, Third Floor
Columbus, OH 43215
614.387.9800 or 1.800.824.8263
www.cco.state.oh.us
DOUGLAS CLAY OSBORNE
Plaintiff
v.
OHIO DEPARTMENT OF REHABILITATION AND CORRECTION
Defendant
Case No. 2007-07388
Judge Joseph T. Clark
Magistrate Steven A. Larson
DECISION
{¶ 1} On November 17, 2008, defendant filed a motion for summary judgment
pursuant to Civ.R. 56(B). The motion is now before the court on a non-oral hearing
pursuant to L.C.C.R. 4(D).
{¶ 2} Civ.R. 56(C) states, in part, as follows:
{¶ 3} “Summary judgment shall be rendered forthwith if the pleadings,
depositions, answers to interrogatories, written admissions, affidavits, transcripts of
evidence, and written stipulations of fact, if any, timely filed in the action, show that
there is no genuine issue as to any material fact and that the moving party is entitled to
judgment as a matter of law. No evidence or stipulation may be considered except as
stated in this rule. A summary judgment shall not be rendered unless it appears from
the evidence or stipulation, and only from the evidence or stipulation, that reasonable
minds can come to but one conclusion and that conclusion is adverse to the party
against whom the motion for summary judgment is made, that party being entitled to
have the evidence or stipulation construed most strongly in the party’s favor.” See also
Gilbert v. Summit County, 104 Ohio St.3d 660, 2004-Ohio-7108, citing Temple v. Wean
United, Inc. (1977), 50 Ohio St.2d 317.
{¶ 4} At all times relevant to this action, plaintiff was an inmate in the custody
and control of defendant at the Mansfield Correctional Institution pursuant to R.C.
5120.16. Plaintiff alleges that defendant has both infringed upon and contributed to the
infringement of a copyright interest and trademark or trade name interest that he
possesses in his name written with all capital letters; to wit, DOUGLAS CLAY
OSBORNE.
Defendant argues that no such copyright or trademark/trade name
interests exist.
{¶ 5} With respect to plaintiff’s copyright claims, 17 U.S.C. 301(a) provides:
{¶ 6} “On and after January 1, 1978, all legal or equitable rights that are
equivalent to any of the exclusive rights within the general scope of copyright as
specified by section 106 in works of authorship that are fixed in a tangible medium of
expression and come within the subject matter of copyright as specified by sections 102
and 103, whether created before or after that date and whether published or
unpublished, are governed exclusively by this title. Thereafter, no person is entitled to
any such right or equivalent right in any such work under the common law or statutes of
any State.” (Emphasis added.)
{¶ 7} Furthermore, 28 U.S.C. 1338(a) provides:
{¶ 8} “The district courts shall have original jurisdiction of any civil action arising
under any Act of Congress relating to patents, plant variety protection, copyrights and
trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent,
plant variety protection and copyright cases.” (Emphasis added.)
{¶ 9} Civ.R. 12(H)(3) provides that “[w]henever it appears by suggestion of the
parties or otherwise that the court lacks jurisdiction of the subject matter, the court shall
dismiss the action.”
{¶ 10} Based upon the foregoing, the court finds that this court lacks subject
matter jurisdiction to adjudicate any of plaintiff’s claims based upon his alleged copyright
interest in DOUGLAS CLAY OSBORNE. Accordingly, plaintiff’s copyright infringement
and contributory infringement claims are DISMISSED pursuant to Civ.R. 12(H)(3).
{¶ 11} In support of its motion for summary judgment, defendant filed a transcript
of plaintiff’s deposition testimony. Plaintiff testified that defendant withdrew money from
his institutional account for child support pursuant to an order from the Crawford County
Court of Common Pleas.
Plaintiff claims that in doing so, defendant violated the
trademark/trade name DOUGLAS CLAY OSBORNE.
Plaintiff alleges that he has
registered DOUGLAS CLAY OSBORNE as a trademark/trade name only in the state of
Indiana. (Plaintiff’s Deposition, Page 10, Lines 3-8.)
{¶ 12} Trademarks and trade names are governed by R.C. Section 1329.
{¶ 13} R.C. 1329.01 provides, in relevant part:
{¶ 14} “(A) As used in sections 1329.01 to 1329.10 of the Revised Code:
{¶ 15} “(1) ‘Trade name’ means a name used in business or trade to designate
the business of the user and to which the user asserts a right to exclusive use.
{¶ 16} “(2) ‘Fictitious name’ means a name used in business or trade that is
fictitious and that the user has not registered or is not entitled to register as a trade
name. * * *
{¶ 17} “(B) Subject to sections 1329.01 to 1329.10 of the Revised Code, any
person may register with the secretary of state, on a form prescribed by the secretary of
state, any trade name under which the person is operating * * *.”
{¶ 18} R.C. 1329.54(A) provides:
{¶ 19} “‘Trademark’ means any word, name, symbol, device, or combination of
any word, name, symbol, or device, that is adopted and used by a person to identify and
distinguish the goods of that person, including a unique product, from the goods of other
persons, and to indicate the source of the goods, even if that source is unknown.”
{¶ 20} Plaintiff does not allege that he uses the name DOUGLAS CLAY
OSBORNE to designate any business; rather, he uses it to designate himself. Plaintiff
also does not allege that he uses DOUGLAS CLAY OSBORNE to “identify and
distinguish” any goods. However, even if plaintiff could arguably claim a valid trade
name or trademark in the name DOUGLAS CLAY OSBORNE, the statutory schemes
require that such a trade name or trademark be registered with the Ohio Secretary of
State before commencing any civil action with regard to the same.
{¶ 21} R.C. 1329.10(B) provides that:
{¶ 22} “No person doing business under a trade name or fictitious name shall
commence or maintain an action in the trade name or fictitious name in any court in this
state or on account of any contracts made or transactions had in the trade name or
fictitious name until it has first complied with section 1329.01 of the Revised Code * * *.”
{¶ 23} Likewise, with respect to a trademark, R.C. 1329.66. provides, in part:
{¶ 24} “Any owner of a trademark or service mark registered under the sections
1329.54 to 1329.67 of the Revised Code, may proceed by suit to enjoin the
manufacture, use, display, or sale of any counterfeits or imitations of the mark, and any
court of competent jurisdiction may grant injunctions to restrain such manufacture, use,
display, or sale as may be by the court considered just and reasonable, and may
require the defendants to pay to the owner all profits derived from and all damages
suffered by reason of the wrongful manufacture, use, display, or sale; the court may
also order that any such counterfeits or imitations in the possession or under the control
of any defendant in such case, to be delivered to an officer of the court, or to the
complainant, to be destroyed.” (Emphasis added.)
{¶ 25} Based upon the foregoing and plaintiff’s admission that he has not
registered his trademark or trade name with the Ohio Secretary of State, the court finds
that plaintiff has not met the statutory requirements for bringing an action based upon
alleged violations of his trade name and trademark. Therefore, the court finds that
defendant is entitled to judgment as a matter of law with regard to those claims and
defendant’s motion for summary judgment shall be granted.
Court of Claims of Ohio
The Ohio Judicial Center
65 South Front Street, Third Floor
Columbus, OH 43215
614.387.9800 or 1.800.824.8263
www.cco.state.oh.us
DOUGLAS CLAY OSBORNE
Plaintiff
v.
OHIO DEPARTMENT OF REHABILITATION AND CORRECTION
Defendant
Case No. 2007-07388
Judge Joseph T. Clark
Magistrate Steven A. Larson
JUDGMENT ENTRY
A non-oral hearing was conducted in this case upon defendant’s motion for
summary judgment.
For the reasons set forth in the decision filed concurrently
herewith, plaintiff’s copyright and contributory infringement claims are DISMISSED
pursuant to Civ.R. 12(H)(3). Furthermore, defendant’s motion for summary judgment is
GRANTED and judgment is rendered in favor of defendant. Court costs are assessed
against plaintiff. The clerk shall serve upon all parties notice of this judgment and its
date of entry upon the journal.
_____________________________________
JOSEPH T. CLARK
Judge
cc:
Christopher P. Conomy
Assistant Attorney General
150 East Gay Street, 18th Floor
Columbus, Ohio 43215-3130
MR/cmd
Filed March 24, 2009
To S.C. reporter March 31, 2009
Douglas Clay Osborne, #470-525
P.O. Box 8107
Mansfield, Ohio 44901
