Com. v. Omar

• Decision Date: 05 October 2009
• Docket Number: No. No. 20 MAP 2008.,No. 116 MAP 2007.,116 MAP 2007.,No. 20 MAP 2008.
• Citation: 981 A.2d 179
• Parties: COMMONWEALTH of Pennsylvania, Appellant v. Omar A. OMAR, Appellee Commonwealth of Pennsylvania, Appellant v. Daniel J. O'Connor, Appellee.
• Court: Pennsylvania Supreme Court

981 A.2d 179

COMMONWEALTH of Pennsylvania, Appellant v. Omar A. OMAR, Appellee Commonwealth of Pennsylvania, Appellant v. Daniel J. O'Connor, Appellee.

No. 116 MAP 2007.

No. No. 20 MAP 2008.

Supreme Court of Pennsylvania.

Submitted and Argued December 2, 2008.

Decided October 5, 2009.

Michael T. Madeira, Esq., Karen Elizabeth Kuebler, Esq., Stephen P. Sloan, Esq., Bellefonte, for the Com. of PA., appellant.

Karen Gwyn Muir, Esq., State College, for Omar A. Omar, appellee.

Sean Patrick McGraw, Esq., David R. Crowley, Esq., Bellefonte, for Daniel J. O'Connor, appellee.

BEFORE: CASTILLE, C.J., SAYLOR, EAKIN, BAER, TODD, McCAFFERY and GREENSPAN, JJ.

OPINION

Justice BAER.

In these consolidated cases, the Centre County Court of Common Pleas dismissed charges filed by the Commonwealth for violations of the Trademark Counterfeiting Statute, 18 Pa.C.S. § 4119, based on the trial court's prior decision striking the statute as unconstitutionally vague and overbroad. Accordingly, the Commonwealth has filed direct appeals to this Court, which has exclusive jurisdiction over appeals from final orders of the court of common pleas declaring laws of the Commonwealth unconstitutional. 42 Pa. C.S. § 722(7). We conclude that because the statute criminalizes speech protected by the First Amendment to the United States Constitution, it is unconstitutionally overbroad. Accordingly, we affirm the decisions of the Court of Common Pleas of Centre County.

We cannot consider the cases currently under review without first addressing the prior decisions of the Centre County Court of Common Pleas, striking the Trademark Counterfeiting Statute as unconstitutional. In Commonwealth v. Garrity, Centre County Crim. No. 1999-2264 (March 27, 2000), the Pennsylvania State University Police arrested James P. Garrity, Jr., for selling t-shirts with the words "Ninety-Eight Degrees" and "Penn State University" on the Penn State Campus during a concert by the band "Ninety-Eight Degrees." The district attorney charged Garrity with violating the Trademark Counterfeiting Statute because "Penn State" was a registered federal trademark. Garrity challenged the constitutionality of the statute claiming it was unconstitutionally vague and overbroad.

After observing that statutes are presumed to be constitutional, the trial court noted that a statute is potentially unconstitutionally overbroad if it punishes constitutionally protected speech. See DePaul v. Commonwealth, 600 Pa. 573, 969 A.2d 536, 553 (Pa.2009) ("[T]he U.S. Supreme Court and this Court have recognized that the overbreadth doctrine permits the facial invalidation of laws that inhibit the exercise of First Amendment rights if the impermissible applications of the law are substantial when judged in relation to the statute's plainly legitimate sweep.")(internal quotation marks omitted). The trial court stated that the Trademark Counterfeiting Statute defines the crime as "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." 18 Pa.C.S. § 4119(a).¹ A counterfeit mark is defined by the statute as either "(1) [a]ny unauthorized reproduction or copy of intellectual property" or "(2) [i]ntellectual 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." 18 Pa.C.S. § 4119(i). Combining subsections (a) and (i)(1), the court noted, "this statute makes it unlawful to reproduce any trademark for any use, without the express permission of the owner of the intellectual property." Garrity Slip Op. at 5 (emphasis in original). 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, such as, `Penn State students for the Constitution.'"² Id. The court therefore held that the Trademark Counterfeiting Statute is unconstitutionally overbroad and dismissed the charge filed against Garrity for violating the then-unconstitutional statute. Although the Commonwealth initially appealed the March 2000 decision in Garrity, it abandoned the appeal, leaving Garrity as controlling law in Centre County.

Similarly, in Commonwealth v. Price, Centre County No. CP-14-CR-2211-2006 (November 15, 2007), the trial court, with the same trial judge presiding, dismissed charges filed against a defendant under the Trademark Counterfeiting Statute. The court rejected the Commonwealth's argument that other states have upheld similar counterfeit trademark statutes, observing that those statutes did not criminalize the "use" of the trademark.

Currently before this Court is the case of Omar A. Omar. On May 16, 2007, a police officer stopped Appellee Omar for exceeding the speed limit on Route 80 in Centre County. Upon seeing a number of boxes of what appeared to be counterfeit Nike sneakers, the officer arrested Appellee Omar for violation of the Trademark Counterfeiting Statute. Although Appellee 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, followed in Price, 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." Tr. Ct. Slip Op. at 2, quoting Glen-Gery Corp. v. Zoning Hearing Bd. of Dover Tp., 589 Pa. 135, 907 A.2d 1033, 1043 (Pa.2006). Accordingly, finding a defect on the face of the criminal information that prevented prosecution, the court quashed the information and dismissed the charges against Appellee Omar.

In the other case consolidated for appeal before this Court, Appellee Daniel J. O'Connor was arrested for selling hats bearing the Penn State logo outside Beaver Stadium on the Penn State campus. Appellee O'Connor was charged with violating the Trademark Counterfeiting Statute because he did not have the appropriate approval to use the Penn State name and logo on the hats. Appellant O'Connor filed a motion to quash the information based upon the trial court's prior determination that the statute was unconstitutional As in Appellee Omar's case, the trial court dismissed the charges.

The Commonwealth now appeals the decisions dismissing the charges based upon the trial court's conclusion that the statute is unconstitutionally vague and overbroad.³ Given the trial court's holding of unconstitutionality, this Court noted probable jurisdiction and consolidated the Commonwealth's appeals relating to Appellees Omar and O'Connor.

The Commonwealth asserts that the trial court erred when it concluded that the Trademark Counterfeiting Statute was unconstitutional. The Commonwealth observes that courts must presume that statutes are constitutional, and strike them as unconstitutional only if the statute clearly, palpably, and plainly violates the Constitution. See Commonwealth v. Davidson, 595 Pa. 1, 938 A.2d 198, 207 (Pa.2007). Accordingly, the Commonwealth emphasizes the heavy burden of proof placed upon those challenging the constitutionality of a statute. The Commonwealth correctly notes that a statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech. See DePaul, 969 A.2d at 553.

The Commonwealth asserts that the Trademark Counterfeiting Statute is not unconstitutionally overbroad, claiming that it is limited to those persons with the intent to sell or distribute items with counterfeit trademarks, and thus that the statute does not reach a substantial amount of constitutionally protected speech. The Commonwealth observes that the trial court's analysis of unconstitutionality centered on the inclusion of the word "use" in the definition of the offense of trademark counterfeiting. The Commonwealth, however, asserts that the statute only applies when the counterfeit trademark is used "with intent to sell or distribute." Implicitly, the Commonwealth is contending that the phrase "with intent to sell or distribute" applies not only to the word "possess," which immediately proceeds the phrase in subsection (a), but also to the entire list of verbs in subsection (a), including "use." To support its argument that the breadth of the statute is limited by intent, the Commonwealth relies upon the Superior Court's decision in Commonwealth v. George, 878 A.2d 881, 886 (Pa.Super.2005), in which the court emphasized the defendant's intent to sell.⁴ In George, the court rejected the defendant's sufficiency of the evidence argument where the defendant claimed that the statute required possession of twenty-five counterfeit items with the intent to sell. Instead, the court observed that the statute merely provided that the intent to sell could be presumed from the possession of twenty-five items.⁵

Moving beyond the words of the currently enacted statute, the Commonwealth relies on a proposed amendment to the statute, statutes from our sister states, and additional provisions in the Crimes Code. The proposed amendment overtly incorporates the concept of intent to deceive into the definition of a counterfeit mark.⁶ As detailed below, the Commonwealth directs our attention to cases in other states applying similar trademark counterfeiting statutes. Additionally, the Commonwealth relies upon the default mens rea provided in the Crimes Code, 18 Pa.C.S. § 302(c), which provides, "When the culpability sufficient to establish a material element of an offense is not prescribed by law, such element is established if a person acts intentionally, knowingly or recklessly with respect thereto." It therefore contends that the statute only applies to...