UnIP (UnIntellectual Property): Copyright or Trademark in a Personal Name

An inmate in a California county prison filed a trademark infringement and copyright infringement lawsuit against county officials, attorneys, and police officers for use of his personal name in various documents. The United States District Court for the Northern District of California made quick work of the Complaint, ultimately dismissing it for failure to state a claim. Tellingly, the Court relied upon 28 U.S.C. § 1915A, which allows a court to dismiss any civil action in which a prisoner seeks redress from a governmental entity or officer or employee of a governmental entity. Interestingly, the Court did not find the Complaint to be frivolous or malicious (or at least the Court did not say so in its opinion). Instead, it relied upon well settled intellectual property law.

First, citing 37 C.F.R. § 202.1, the Court noted that there can be no copyright protection for a personal name. Next, the Court just as concisely confirmed that “a personal name is a descriptive term that cannot, absent acquisition of a secondary meaning, be trademarked.” It is safe to assume that the inmate had not offered goods or services in connection with his personal name, which might have enabled him to argue that his personal name had acquired distinctiveness and was therefore protectable as a trademark (assuming that the defendant’s use of his name would even qualify for the requisite use in commerce under the Lanham Act, which I highly doubt).

Ultimately, this case reinforces that personal names are not entitled to copyright protection but may be entitled to trademark protection. As an aside, I must say I enjoyed reading this opinion because it brought back memories of my days as a law clerk with the United States Department of Justice, where I regularly dealt with lawsuits filed by prisoners against government officials. Maybe an inmate or two will read this blog and plan an entrepreneurial endeavor upon release rather than waste government resources. Regardless, it looks like this prisoner fought the law and the law won (again)!

Turner v. Peterson, 2012 WL 2792416, No. C 12-0887 JSW PR (N.D. Cal, July 9, 2012).


One Response to No Copyright and No Trademark for Personal Name

  1. Roma says:

    I wonder what this guys goal was? Why did he even bother?

    Interesting/funny story. Thanks for sharing.

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