Pittsburgh IP Law Blog

On October 5, 2009, in a 4-3 decision, the Pennsylvania Supreme Court held that the Trademark Counterfeiting Statute,18 Pa.C.S. § 4119, is unconstitutionally overbroad.

The Trademark Counterfeiting Statute provides:

(a) Offense 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.

18 Pa.C.S. § 4119.

A statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech.

The Commonwealth argued that the Trademark Counterfeiting Statute is not unconstitutionally overbroad because it is limited to persons with the intent to sell or distribute items with counterfeit trademarks and thus does not reach a substantial amount of constitutionally protected speech. The Commonwealth also relied on a proposed amendment to the statute, statutes from sister states, and the mens rea in the Crimes Code.

The Supreme Court held that under the definition of “intellectual property” any use of a “term” or “word” that is “engaged by another person to identify that person’s goods or services is a ‘counterfeit mark’” which is unconstitutionally overbroad.

- Katie Cooper