Pennsylvania's Trademark Counterfeiting Statute held to be unconstitutional

United States of America
In Commonwealth of Pennsylvania v Omar (Case J-162A-B-2008, October 5 2009), a case which highlighted statutory construction and the impact of the First Amendment of the US Constitution, the Supreme Court of Pennsylvania has affirmed the trial court’s holding that the Trademark Counterfeiting Statute (18 Pa CS § 4119) violated the First Amendment and was thus unconstitutional. 
The statute was originally challenged as unconstitutionally vague and overbroad by James Garrity, who was convicted of violating the statute for selling t-shirts bearing the words 'Penn State University' (a federally registered trademark for clothing) on the Penn State campus.

In relevant part, the statute provides as follows:
"(a) Offence defined. Any person who knowingly manufactures, uses, displays, advertises, distributes, offers for sale, sells or possesses with intent to sell or distribute any items or services bearing or identified by a counterfeit mark shall be guilty of the crime of trademark counterfeiting.
(i) Definitions. As used in this section, the following words and phrases shall have the meanings given to them in this subsection:

'Counterfeit mark'. Any of the following:
(1) Any unauthorized reproduction or copy of intellectual property.
(2) Intellectual property affixed to any item knowingly sold, offered for sale, manufactured or distributed or identifying services offered or rendered, without the authority of the owner of the intellectual property.
'Intellectual property'. Any trademark, service mark, trade name, label, term, device, design or word adopted or used by a person to identify that person's goods or services."
In Garrity, combining Subsections (a) and (i)(1), the trial court in Centre County, Pennsylvania, noted that “this statute makes it unlawful to reproduce any trademark for any use, without the express permission of the owner of the intellectual property”. The court observed that this prohibition would apply to constitutionally protected activity such as “[w]rit[ing] the words "Penn State’ on a political placard or sign". Although the Commonwealth initially appealed the March 2000 decision, it abandoned the appeal, leaving Garrity as controlling law in Centre County.
The trial court next heard the case of Omar A Omar, who had been convicted of trademark counterfeiting under the statute. This case began in May 2007 when a police officer stopped Omar for speeding. Upon seeing a number of boxes of what appeared to be counterfeit Nike sports shoes, the officer arrested Omar for violation of the statute. Although Omar challenged the legality of the search and seizure in a motion to suppress, the trial court determined that consideration of the legality of the search was unnecessary given its decision in Garrity that the statute was unconstitutional. The court observed that “an unconstitutional statute is ineffective for any purpose; it is as if it were never enacted”. Accordingly, finding a defect on the face of the criminal information that prevented prosecution, the trial court quashed the decision and dismissed the charges against Omar. The Commonwealth appealed.
The Commonwealth correctly noted on appeal that a statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech. It claimed that the statute was limited to those persons with the “intent to sell or distribute” items bearing counterfeit trademarks. Therefore, the statute did not reach a substantial amount of constitutionally protected speech.
Omar countered by successfully arguing that:
" [b]y criminalizing the mere 'use, display... [or] distribute[ion]' of items bearing a counterfeit mark, and defining ‘counterfeit mark’ broadly to include 'any term or word', the statute is easily applied to a broad array of constitutionally protected activity."

Omar argued that the use of the word 'Nike' on a sign at a protest rally (eg, 'Nike uses sweatshop labour') would fall within the reach of the statute because the activity would involve the unauthorized use of a word or term used by another to identify goods or services. 
The Pennsylvania Supreme Court stated that an 'overbreadth challenge' to a statute is generally limited to issues falling under the First Amendment. A statute is unconstitutionally overbroad only if it punishes lawful constitutionally protected activity, as well as illegal activity. Thus, in determining whether a statute is unconstitutional due to overbreadth, a court's first task is to determine whether the enactment reaches a substantial amount of constitutionally protected conduct. The overbreadth of a statute must not only be real but also substantial, judged in relation to the statute's plainly legitimate sweep. Consequently, if a statute's overbreadth is substantial, it may not be enforced until it is narrowed to reach only unprotected activity.
The Supreme Court concluded that when the relevant definitions are inserted into the definition of the offence, the statute criminalized the use of any items bearing an unauthorized reproduction of terms or words used by a person to identify that person’s goods or services. The Supreme Court concluded as follows:

"The statute, therefore, unconstitutionally prohibits protected speech, including the use of words on a sign praising or protesting against any entity with a trademarked name, including Penn State. Taken to the extreme, even our use of the words 'Nike' and 'Penn State' in this opinion without the permission of the company or the university would fall under the current definition of a 'counterfeit mark'. Clearly, the statute prohibits a substantial amount of protected speech and is unconstitutional."
Accordingly, the Supreme Court affirmed the decision of the lower court.

Brian E Banner, Rothwell Figg Ernst & Manbeck PC, Washington DC

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