In People v. Jobe, 2008 NY Slip Op 51346 (Crim. Ct. Kings Cty 2008), the court examined a matter in which the defendant was charged with Trademark Counterfeiting in the Third Degree (PL § 165.71), a class A misdemeanor. The criminal complaint filed by the Kins County District Attorney's Office alleged that (as informed by Detective Andre Smith) a counterfeit Compact Disc was purchased from the defendant. The complaint further alleged that the Informant "recovered 33 music DVD's, 600 counterfeit CD's and 171 pirated CD's bearing various names such as G-Unit, 50 Cent, BMG and Def Jam from inside of the above mentioned location."
In relation the description of the items seized, the complaint stated that the Deponent was "informed by the supporting deposition of William Ortiz that the above mentioned DVD's and CD's were printed with blurry inserts, the CD's were recorded on CD-R recordable discs, displayed in improper CD jewel case and plastic wrap, had inferior insert paper quality and different legitmate [sic] graphics. " Furthermore the complaint alleged that as a result of the Ortiz deposition the "DVD's listed unfamaliar [sic] manufacturing names, did not disclose copyright information, had inferior quality print inserts and the DVD's were recorded on DVD-R discs."
In addition to the Complaint, the DA served and filed a corroborating affidavit signed by Detective Smith, and a number of supporting depositions signed by William S. Ortiz, who is listed on them as "Investigative Consultant" for the Recording Industry Association of America (RIAA). The court noted that these depositions state that "the DVDs and CDs seized are counterfeit based on the same reasons identified in the Complaint, such as the use of different jewel cases and blurriness of the paper labels or inserts."
In moving to dismiss the criminal complaint, defense counsel argued that the complaint did not recite all the necessary allegations because it failed "to establish either that the items seized contained marks substantially similar to genuine trademarks, or that these trademarks were registered and in use."
In examining cases such as this one, the first rule for a Judge is to look at the statute and see what the elements are that the DA must allege in order for the complaint to survive. In the instant matter the Judge did just that, stating:
A person is guilty of trademark counterfeiting under PL § 165.71, when "[w]ith intent to deceive or defraud some other person or with the intent to evade a lawful restriction on the sale, resale, offering for sale or distribution of goods, he or she manufactures, distributes, sells or offers for sale goods which bear a counterfeit trademark."
PL § 165.71, like the other statutes in this section, is governed by definitions based on Federal Trademark law, and which are set out in PL § 165.70. William C.Donnino, 1998 Practice Commentaries, McKinney's Cons.Laws of NY PL § 165.71. Under PL § 165.70, a trademark is defined as: (a) any word, name, symbol, or device, or any combination thereof adopted and used by a person to identify goods made by a person and which distinguish them from those manufactured or sold by others which is in use and which is registered, filed or recorded under the laws of this state or of any other state or is registered in the principal register of the United States patent and trademark office. [emphasis added]. The term "counterfeit trademark" is defined under PL § 165.71(2) as "a spurious trademark or an imitation of a trademark that is (a) used in connection with trafficking in goods; and (b) used in connection with the sale, offering for sale or distribution of goods that are identical with or substantially indistinguishable from a trademark as defined in subdivision one of this section."
In order to sustain a count of trademark counterfeiture under these statutes, a Complaint must therefore establish that the goods allegedly possessed for sale were substantially similar to a trademark that is both registered and in use. People v. Cheng, 4 Misc 3d at 379 ("a sufficient accusatory instrument charging Trademark Counterfeiting in the Third Degree must ... identify and distinguish the characteristics of the genuine and counterfeit trademarks ... [and] state that the trademark is registered and in use"); People v. Niang, 160 Misc 2d 500, 609 NYS2d 1017 (Crim. Ct. NY Co. 1994) ("trademark counterfeiting cannot be established in the absence of proof that the offending mark was ... substantially indistinguishable from a trademark which is in use and registered").
The Complaint therefore lacks several necessary elements of the crime. First, as Defendant correctly notes, although the Complaint several times concludes that the recordings were "pirated" and "counterfeit," it is devoid of allegations that either the original or the copies seized from Defendant even bore trademarks. Second, the Complaint necessarily fails to allege that any trademarks were both registered and in use. Finally, the Complaint does not allege that any trademarks on the pirated goods were substantially similar or indistinguishable from the registered marks. Without these necessary allegations, the Complaint merely establishes that low quality counterfeit recordings, some of which bear the names of well-known artists, were recovered. These allegations are insufficient to establish PL § 165.71.
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