USA v. Giles

• Decision Date: 19 May 2000
• Docket Number: No. 99-6036,99-6036
• Citation: 213 F.3d 1247
• Parties: (10th Cir. 2000) UNITED STATES OF AMERICA, Plaintiff-Appellee, v. DONALD RALPH GILES, also known as Sonny Giles, Defendant-Appellant,
• Court: U.S. Court of Appeals — Tenth Circuit

Page 1247

213 F.3d 1247 (10th Cir. 2000)

UNITED STATES OF AMERICA, Plaintiff-Appellee, v. DONALD RALPH GILES, also known as Sonny Giles, Defendant-Appellant,

No. 99-6036

UNITED STATES COURT OF APPEALS, TENTH CIRCUIT

May 19, 2000

As Revised June 26, 2000

Appeal from the United States District Court for the WesternDistrict of Oklahoma (D.C. No. 98-CR-82-C) Victoria D. Little, Decatur, Georgia, appearing for the Defendant-Appellant.

Susan Dickerson Cox, Assistant United States Attorney (Patrick M. Ryan, United States Attorney, with her on the brief), Oklahoma City, Oklahoma, appearing for Plaintiff-Appellee.

Before SEYMOUR, Chief Judge, BALDOCK and BRORBY, Circuit Judges.

SEYMOUR, Chief Judge.

In a case of first impression in this circuit, we are asked to determine whether an individual who traffics in trademarks which are not attached to any goods or services violates the federal criminal trademark infringement statute, 18 U.S.C. ' 2320. We conclude that he does not. Consequently we reverse Donald Ralph Giles' conviction for trafficking in counterfeit goods in an alleged violation of section 2320.

I

Mr. Giles owns a business in Atlanta, Georgia, called "Fabulous Fakes," which specializes in the sale of "designer look-alikes" such as handbags, belts, watches, and accessories in designer styles. Mr. Giles also occasionally sells certain items in bulk on the wholesale market. The items at issue in this case are wholesale "patch sets" bearing the logo of Dooney & Bourke, makers of high quality handbags, luggage, and accessories. A "patch set" consists of a leather patch and a gold medallion, which both bear the Dooney & Bourke logo, and a leather strap which is used to attach the medallion to a purse or piece of luggage. The leather patch can either be sewn or glued on. Once the patch set is applied to a generic purse or piece of luggage, the bag will appear to have been made by Dooney & Bourke.

In June 1994, the FBI set up a "sting" operation with the help of confidential informant Michael Davenport, a major distributor of counterfeit merchandise in Oklahoma. FBI officials offered Mr. Davenport leniency in an upcoming prosecution if he would assist them in an investigation of other dealers in counterfeit merchandise. Under FBI surveillance, Mr. Davenport contacted various suppliers and customers in an attempt to set up a deal. One supplier gave him Mr. Giles= name and phone number. Mr. Davenport then called Fabulous Fakes and spoke to a store employee, Delores Notaro, about purchasing 1,000 Dooney & Bourke patch sets.

Mr. Davenport spoke with Ms. Notaro again in July about the price and shipment of the patch sets. The patch sets were then shipped to Oklahoma where they were seized by the FBI. Mr. Giles was subsequently indicted on one count of trafficking in counterfeit goods in violation of 18 U.S.C. ' 2320. Mr. Giles made timely motions to dismiss the indictment and to acquit, which were denied by the district court. He was convicted by a jury and sentenced to sixteen months in prison, a $3,000 fine, and two years of supervised release. He appeals the district court's denial of his motions.

II

Generally, we review the grant or denial of a motion to dismiss an indictment for an abuse of discretion. See United States v. Wood, 6 F.3d 692, 694 (10th Cir. 1993). However, when the dismissal involves issues of statutory interpretation, or when the sufficiency of a charge is challenged, we review the district court's decision de novo. See id.; United States v. Wood, 958 F.2d 963, 974 (10th Cir. 1992).

Mr. Giles contends that the indictment was defective because it failed to allege the elements of a section 2320 offense, and that the government's evidence was insufficient as a matter of law to convict him.¹ His argument is a simple one: he cannot be found guilty of violating section 2320 because the language of the statute requires that a defendant both traffic in goods and knowingly use a counterfeit mark on or in connection with the goods. An individual who merely traffics in a mark which is unattached to any goods, Mr. Giles contends, does not fall within the ambit of section 2320.

To convict Mr. Giles under section 2320, the government must prove that he: (1) trafficked or attempted to traffic in goods or services; (2) did so intentionally; (3) used a counterfeit mark on or in connection with such goods and services; and (4) knew the mark was counterfeit. See United States v. Sultan, 115 F.3d 321, 325 (5th Cir. 1997). In order to determine whether the government has succeeded, we must answer a series of questions addressing the relationship between Mr. Giles' activities and the statute at hand. In so doing, we keep in mind that when the wording of a statute is ambiguous and its legislative history fails to clarify which interpretation is correct, a court should apply a policy of lenity and construe the statute in favor of the criminal defendant. See Ladner v. United States, 358 U.S. 169, 177 (1958); United States v. Wilson, 10 F.3d 734, 736 (10th Cir. 1993).

[W]hen choice has to be made between two readings of what conduct Congress has made a crime, it is appropriate, before we choose the harsher alternative, to require that Congress should have spoken in language that is clear and definite. We should not derive criminal outlawry from some ambiguous implication.

United States v. Universal C.I.T. Credit Corp., 344 U.S. 218, 221-22 (1952).

A. Are the Patch Sets "Goods"?

The statute on its face refers to trafficking in "goods," and using the counterfeit mark "on or in connection with such goods."² Thus, whether Mr. Giles can be found guilty of violating section 2320 depends in part on how we define the term "goods." The government would have us adopt the following syllogism: because the patch sets were sold for a price, they are merchandise; merchandise by definition is goods; therefore, the patch sets qualify as goods under section 2320, and Mr. Giles can be held criminally liable for trafficking in them. The district court agreed. See App. at 21 ("[T]he Court finds the logos in this case constitute "goods."). While this logic has some appeal, we are not convinced the inquiry is so simple.

Neither section 2320 nor the Lanham Act, 15 U.S.C. 1051 et. seq. (the section's civil counterpart), defines the term "goods." An examination of other definitions contained within the two statutes, however, indicates that "goods" were intended to be viewed as separate and distinct from the marks they carry. Section 2320 defines "counterfeit mark" as "a spurious mark that is used in connection with goods." 18 U.S.C. 2320(e)(1) (emphasis added). The Lanham Act defines "trademark" as "any word, name, symbol, or device, or any combination thereof used . . . to identify and distinguish . . . goods." 15 U.S.C. 1127.

The issue is made complex because a trademark is easily conceived of as an abstract symbol or design which is carried by the tangible goods at issue. In reality, this mark itself often consists of a tangible item such as a label, a patch, or a medallion (collectively referred to in the remainder of this opinion as "labels").³ The question comes down to whether this label can be considered a good if it is disconnected from its host good and sold for a profit.

This question was the subject of the court's opinion in Boston Prof'l Hockey Ass'n v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975). There, the National Hockey League and several of its member teams brought a trademark infringement action against a company that made and sold embroidered cloth patches of the teams' registered trademarks. Retail customers could then buy the patches and sew them on to jackets or caps. The plaintiffs sued the defendants for violating provisions of the Lanham Act. The Fifth Circuit recognized that "[t]he difficulty with this case stems from the fact that a reproduction of the trademark itself is being sold, unattached to any other goods or services. The statutory and case law of trademarks is oriented toward the use of such marks to sell something other than the mark itself." Id. at 1010. The Fifth Circuit concluded that, in that case, the goods and the trademark were coextensive; the patch was the actual "good" and the trademark was the thread design embroidered upon it. Trafficking in the emblems thus constituted a trademark violation:

The[] emblems are the products, or goods, which defendant sells. When defendant causes plaintiffs' marks to be embroidered upon emblems which it later markets, defendant uses those marks in connection with the sale of goods as surely as if defendant had embroidered the marks upon knit caps. The fact that the symbol covers the entire face of defendant's product does not alter the fact that the trademark symbol is used in connection with the sale of the product.

Id. at 1011- 12 (emphasis added) (citation omitted).

While the court below relied heavily on Boston Professional, we believe that case to be of limited value for several reasons. First, it dealt with civil liability, while Mr. Giles was convicted of violating the criminal version of the statute, which we must construe narrowly, see supra. Moreover, the Fifth Circuit specifically confined its opinion to the product at hand:

We need not deal here with the concept of whether every artistic reproduction of the symbol would infringe upon plaintiffs' rights. We restrict ourselves to the emblems sold principally through sporting goods stores for informal use by the public in connection with sports activities and to show public allegiance to or identification with the teams themselves.

Boston Professional, 510 F.2d at 1011.

Finally, the court relied upon a novel and overly broad conception of the rights that a trademark entails. In deciding that the emblems should be protected goods despite the fact that the plaintiffs had not registered their marks for use on patches, the court essentially gave the plaintiffs a...