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Commonwealth of Pennsylvania v. Omar: Back to Drawing Board for Pa. State Legislature in Protecting Trademark Holders

Commentary First Amendment Trademark

Commonwealth of Pennsylvania v. Omar, No. J-162A-B-2008 (Pa. Oct. 5, 2009)

Majority Opinion (Baer, J.)
Concurring Opinion (Castille, J.)
Dissenting Opinion (Eakin, J.)
Dissenting Opinion (Greenspan, J.)

On October 5, the Supreme Court of Pennsylvania affirmed two consolidated Centre County Court of Common Pleas decisions dismissing criminal trademark counterfeiting charges on the ground that Pennsylvania’s Trademark Counterfeiting Statute, 18 Pa. Cons. Stat. § 4119, is unconstitutionally vague and overbroad.  The court held that the statute is unconstitutional because it criminalizes a substantial amount of speech protected by the First Amendment of the United States Constitution.  Commonwealth v. Omar, No. J-162A-B-2008, slip op. at 10 (Pa. Oct. 5, 2009).

IP Spotlight provides an overview of the case. CNBC features an extended analysis of the decision.  The Madisonian declares the decision overly formalistic.

The Centre County Court of Common Pleas had previously held the statute unconstitutional in Commonwealth v. Garrity, No.1999-2264 (Pa. March 27, 2000), on the ground it punishes a substantial amount of constitutionally protected speech. The Trademark Counterfeiting Statute criminalizes conduct by a 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.”  The statute defines “counterfeit mark” broadly to include any “unauthorized reproduction or copy of intellectual property,” and defines “intellectual property” as “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.” 18 Pa. Cons. Stat. § 4119.

In both Commonwealth v. Omar and Commonwealth v. O’Connor, the trial court dismissed charges brought against the defendants under the Trademark Counterfeiting Statute for possession of counterfeit Nike sneakers and distribution of hats bearing the Penn State logo, respectively, based on the Garrity decision.  The Commonwealth appealed both dismissals, which were consolidated for decision by the Pennsylvania Supreme Court.

Justice Baer, writing for the Supreme Court, reasoned that a statute is unconstitutionally overbroad where it punishes a substantial amount of lawful, constitutionally protected activity as well as illegal activity. The court refused to narrow the statute, finding that its words are “clear and free from all ambiguity and thus “the letter of it is not to be disregarded under the pretext of pursuing its spirit.”  Taking particular issue with the prohibition of any “use” of such a mark, the court concluded that the statute unconstitutionally prohibits protected speech, such as the use of the words “Nike” or “Penn State” on a protest sign, or even their use in the court’s own opinion.

Justices Eakin and Greenspan wrote separate dissenting opinions. Justice Greenspan argued that the court “has an obligation to interpret a statute in a constitutional manner wherever possible.” Finding the statute to be ambiguous, the dissent urged that the court must consider not only the plain language of the statute, but also the legislative intent underlying it. The intent of the Statute is to “prevent individuals from deceptively utilizing a recognized mark in the context of a sale or distribution” and not to criminalize “the mere use of a recognized word or phrase.” Finally, Justice Greenspan noted that both Omar and O’Connor had illegally violated Nike and Penn State’s trademarks and to overturn their convictions based on the overbreadth of the Statute “has an aura of injustice.”

Chief Justice Castille concurred in the opinion, noting that the primary divide between the majority and dissenting opinions was that both Omar and O’Connor were engaged in the precise illegal activity that the Statute was designed to prohibit. The Chief Justice noted, however, that the United States Supreme Court has directed that, in the First Amendment arena, individuals may assert a facial attack against a statute without demonstrating that his or her own conduct was protected.