U.S.A v. Kevin Xu, 09-20074.

• Citation: 599 F.3d 452
• Decision Date: 04 March 2010
• Docket Number: No. 09-20074.,09-20074.
• Parties: UNITED STATES of America, Plaintiff-Appellee, v. Kevin XU, Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (5th Circuit)

599 F.3d 452

UNITED STATES of America, Plaintiff-Appellee, v. Kevin XU, Defendant-Appellant.

No. 09-20074.

United States Court of Appeals

Fifth Circuit.

Decided: March 4, 2010.

Carmen Castillo Mitchell, James Lee Turner, Asst. U.S. Attys., Houston, TX, for U.S.

Jerome Godinich, Jr. (Court-Appointed) Law Office of Jerome Godinich, Jr., Houston. TX, for Xu.

Appeal from the United States District Court for the Southern District of Texas.

Before SMITH, GARZA and CLEMENT, Circuit Judges.

EMILIO M. GARZA, Circuit Judge:

Appellant Kevin Xu was convicted by a jury of conspiring to traffic in counterfeit pharmaceutical drugs, in violation of 18 U.S.C. § 371 (Count 1), introducing into interstate commerce misbranded drugs with the intent to defraud and mislead, in violation of 21 U.S.C. §§ 331(a) and 333(a)(2) (Counts 2-4), and trafficking in counterfeit goods, in violation of 18 U.S.C § 2320(a) (Counts 5-9). Xu filed a postverdict motion for judgment of acquittal pursuant to Federal Rule of Criminal Procedure 29(c) as to Counts 5-9 for trafficking in counterfeit Zyprexa, Tamiflu, Plavix Casodex, and Aricept, respectively. The district court granted his motion, except as to Count 5, for trafficking in counterfeit Zyprexa. Xu appeals his conviction on that count, arguing that the evidence was insufficient to establish that the Zyprexa trademark was: (1) registered on the principal register in the United States Patent and Trademark Office, and (2) "in use" at the time of the offense.

We review de novo the denial of a Rule 29 motion for a judgment of acquittal. United States v. Volle, 538 F.3d 341 344 (5th Cir.2008). In determining if there was sufficient evidence to support a conviction, the "relevant question is whether after viewing the evidence in the light most favorable to the prosecution, any rational trier of fact could have found the essential elements of the crime beyond a reasonable doubt." Id. (quoting Jackson v. Virginia, 443 U.S. 307, 319, 99 S.Ct. 2781, 61 L.Ed.2d 560 (1979)) (internal quotation marks omitted).

Section 2320 punishes "[w]hoever[ ] intentionally traffics or attempts to traffic in goods or services and knowingly uses a counterfeit mark on or in connection with such goods or services." 18 U.S.C. § 2320(a)(1). To establish a violation, the Government must prove that: "(1) the defendant trafficked or attempted to traffic in goods or services; (2) such trafficking, or the attempt to traffic, was intentional; (3) the defendant used a counterfeit mark on or in connection with such goods or services; and (4) the defendant knew that the mark so used was counterfeit." United States v. Hanafy, 302 F.3d 485, 487 (5th Cir.2002). Xu challenges only the third element—proof that he used a "counterfeit mark." Under the statute, a "counterfeit mark" must be "identical with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office ['USPTO'] and in use." 18 U.S.C. § 2320(e)(l)(A)(ii). Thus, a rational juror must be able to conclude beyond a reasonable doubt that the mark at issue was "registered on the principal register" and "in use."

We have found no case in this circuit addressing the quantum of proof sufficient to show the third element of a violation of § 2320(a)(1). It is unsurprising that we have not previously considered this issue because proving trademark registration is usually a simple pro forma matter of offering a certified copy of the certificate of registration. Indeed, the Department of Justice's manual on prosecuting intellectual property crimes explains that this is the preferred procedure for proving registration. United States Department of Justice, Prosecuting Intellectual Property Crimes 101 (3d ed. 2006), available at http: //www.justice.gov/ criminal/cybercrime/ipmanual/ipma2006. pdf. Although offering certificates of registration may be the most straightforward method of proof, at least two courts have found other types of evidence sufficient. See United States v. Park, 164 Fed.Appx. 584, 585-86 (9th Cir.2006) (unpublished); United States v. DeFreitas, 92 F.Supp.2d 272, 278 (S.D.N.Y.2000).

In Park, the Ninth Circuit held that "registration and use at the time of conspiracy can be indirectly established... [by] evidence that trademarks... were registered and used prior to and after the conspiracy was formed 164 Fed.Appx. at 585. The court found that a contemporaneously filed civil complaint, alleging that the trademark holders registered and used trademarks for items similar to those found in the defendant's possession, and testimony from a law enforcement agent that the items seized from the defendant's business were identical to items registered as trademarks with the USPTO, was sufficient to prove that the trademarks were registered and in use. Id. Similarly, in DeFreitas, the court found that actual samples of both the genuine and counterfeit products, with tags affixed showing various trademarks registered by the trademark hold er, coupled with testimony from the company's CEO and an expert, were sufficient proof that the marks at issue were registered and in use. 92 F.Supp.2d at 278.

Here, the Government did not introduce a certificate of registration for Zyprexa. Xu contends that the Government was therefore, required to produce evidence from which a jury could reasonably conclude that Zyprexa was a trademark registered on the principal register, but that it failed to do so. The Government...