People v Yue Lin

[*1] People v Yue Lin 2006 NY Slip Op 50821(U) [11 Misc 3d 1091(A)] Decided on April 27, 2006 Criminal Court, New York County Gibbons, J. Published by New York State Law Reporting Bureau pursuant to Judiciary Law § 431. This opinion is uncorrected and will not be published in the printed Official Reports.

Decided on April 27, 2006
Criminal Court, New York County

The People of the State of New York, Plaintiff,

against

Yue Lin, Defendant.



2005NY081413



Robert M. Morgenthau, DA

A.D.A. Ayn Ducao

New York County District Attorney's Office

One Hogan Place

New York, NY 10013, for plaintiff.

Abraham Strassfeld, Esq.

1293 Ocean Parkway

Brooklyn, NY 11230, for defendant.

James D. Gibbons, J.

By an information filed December 3, 2005, Yue Lin is charged in the above-captioned case with trademark counterfeiting in the third degree in violation of Penal Law  165.71. In his pretrial omnibus papers, he moves pursuant to CPL 170.30(1)(a) to dismiss the information on the ground that it is not sufficient on its face under CPL 100.40, and therefore "defective" within the meaning of CPL170.35(1)(a) (Bella Dec. 30, 2005 Aff. (hereinafter "Bella Aff.") at 1-12). But his principal argument, concerning the sufficiency of the allegations that he used a "counterfeit trademark", has already been presented to, and necessarily rejected by, the Appellate Term in People v. Reyes, 2005 NY Slip Op. 51699[U] (App Term 1st Dep't). Defendant's secondary argument, which concerns the adequacy of the allegations that he offered the merchandise for sale, has likewise been rejected by the Appellate Term. Accordingly, I deny dismissal.

I first review the background principles governing defendant's motion:

To be sufficient on its face, an information must substantially conform to the formal requirements of CPL 100.15, and must allege facts which create reasonable cause to believe the crime alleged was violated, and which, if true, would establish the defendant's commission of it. CPL 100.40(1). So long as the factual averments permit the preparation of a defense, and would allow a defendant to plead double jeopardy if later prosecuted based on the same events, they "should be given a fair and not overly restrictive or technical reading". People v. Casey, 95 NY2d 354, 360 (2000); see also People v. Konieczny, 2 NY3d 569, 575 (2004).

The trademark counterfeiting charge, under the theory pleaded here, requires proof that defendant, with the intent to evade a lawful restriction on the sale and distribution of goods, sold or offered to sell goods bearing a counterfeit trademark. Penal Law  165.71. The term "counterfeit trademark" is defined as

a spurious trademark or an imitation of a trademark that is:

a) used in connection with trafficking in goods; and

b) used in connection with the sale, offering for sale or distribution of goods that are identical with or substantially indistinguishable from a trademark as defined in subdivision one of this section. [*2]

Penal Law  165.70(2). A "trademark", in turn, is defined in pertinent part as

any word, name, symbol, or device, or any combination thereof adopted and used by a person to identify goods made by a person and which distinguish them from those manufactured or sold by others which is in use and which . . . is registered in the principal register of the United States patent and trademark office.



Penal Law  165.70(1).

As is immediately apparent, the statutory definition of "counterfeit trademark" does not make literal sense, since it requires that the "goods" in connection with which the counterfeit mark is used be "identical with or substantially indistinguishable from a trademark". Since "goods" are never "identical with or substantially indistinguishable from" trademarks, the trademark counterfeiting statutes proscribe nothing if this definition is read literally. Lower courts generally have resolved the conundrum by inferring that it is the "spurious trademark or imitation of a trademark" which must be "identical with or substantially indistinguishable from" the actual trademark. See, e.g., People v. Thiam, 189 Misc 2d 810, 813 (Crim. Ct. NY County 2001); People v. Ensley, 183 Misc 2d 141, 144 (Crim. Ct. NY County 1999); People v. Niang, 160 Misc 2d 500, 504-05 (Crim. Ct. NY County 1994). This interpretation at least has the virtue of making the "identical or substantially indistinguishable" concept serve the same role it does in the federal trademark counterfeiting statute, 18 U.S.C.  2320(a), (e)(1)(A), from which the state statute borrows in other ways, see Donnino, Practice Commentaries, McKinney's Cons. Laws of NY, Book 39, Penal Law  165.70, at 494 (1999). While other constructions of the statutory text are possible,[FN1] defendant adopts this one here (Bella Aff.  11-13), the People do not dispute it, and I will assume that it is correct.

Here, the police officer who signed the deposition alleges, in pertinent part, that she saw defendant "display and offer for sale 10 counterfeit Coach handbags". The officer further asserts that he has examined that merchandise, "and based on my training and experience it bears a counterfeit Coach trademark". She avers that "[t]he counterfeit trademark appears the same as the genuine trademark". However, he states that she has determined that the merchandise bearing the counterfeit mark was not manufactured by Coach because the goods in question had "poor stitching, loose hanging threads", while actual Coach products have "quality stitching, never loose hanging threads".

Defendant's principal claim of facial insufficiency focuses on the adequacy of these allegations to satisfy the "identical with or substantially indistinguishable from" element of Penal Law  165.70(2). In a nutshell, he asserts that the allegations that the counterfeit "Coach" trademark "appear[ed] the same" as "the genuine trademark" cannot satisfy that element absent a further "description" of the genuine mark (Bella Aff.  11, 19, 20, 22). I find this questionable as matter of simple logic. It is not immediately apparent why one who is familiar with something may not competently assert that another thing is identical to it even without describing the particular features the two have in common. Defendant's argument might better be framed as [*3]one to the effect that the description offered does not adequately show that the putatively-counterfeit trademark replicated an actual "trademark" within the meaning of Penal Law  165.70(1). In any case, arguments tracking defendant's have been found persuasive by a number of judges of this court, see, e.g., People v. Wu Cheng, 4 Misc 3d 377 (Crim. Ct. NY County 2004), and defendant assiduously collects these decisions (Bella Aff.  11-12).

But Reyes marks a turning point. In Reyes, as a review of the appellate briefs makes clear, the information's factual allegations concerning the counterfeit trademark were at least as cursory as those here. The deponent officer in Reyes asserted that he had seen the defendant "display and offer for sale more than 10 scarfs". He then asserted that he had

examined the above named merchandise and based on his training and experience, the merchandise bears a counterfeit burberry Ltd trademark. It is substantially the same as the genuine trademark except that the counterfeit has: interior stitching & fabric 2 only sold in high end dept. stores, not on street 3 no packaging, and the genuine trademark has: high quality stitching & fabric 2 sold in high end dept. stores only.

Brief for Defendant-Appellant at 3, Reyes, 2005 NY Slip Op. 51699[U] (No. 570227/03). On appeal, in an argument tracking defendant's and supported by many of the same authorities, Reyes contended that the information was jurisdictionally defective for lack of an adequate description of the actual trademark supposedly counterfeited, and of how the counterfeit was distinguished from it. Id. at 15-17 (citing Wu Cheng, 4 Misc 3d at 379-82; People v. Rosenthal, 2003 NY Slip Op. 51783[U] (Crim. Ct. NY County); Niang, 160 Misc 2d at 504). But the Appellate Term gave this argument short shrift, concluding in its brief memorandum that the instrument's allegations adequately "identifie[d] and distinguishe[d] the characteristics of the genuine and counterfeit trademarks" and that the instrument was sufficient "for pleading purposes to establish reasonable cause to believe and a prima facie case that defendant committed the offense of third-degree trademark counterfeiting". 2005 NY Slip Op. 51699[U].[FN2] Reyes is therefore controlling, and condemns defendant's principal argument.

Finally, defendant advances a secondary argument that the instrument's allegation that the deponent saw him "display and offer for sale" the handbags is too conclusory to support the statutory "offers for sale" element of trademark counterfeiting (Bella Aff.  24-28). But an identical argument, attacking identical language, was made in Reyes, see Brief for Defendant Appellant at 7-14, Reyes, 2005 NY Slip Op. 51699[U] (No. 570227/03), and rejected there by the Appellate Term. The same argument was likewise made and rejected in People v. Lynch, 2005 NY Slip Op. 50894[U] (App. Term 1st Dep't). It must therefore be rejected here.

The motion to dismiss is denied.

The foregoing constitutes the decision and order of the court.

[Decision edited for publication.]

New York, NY__________________________ [*4]

April 27, 2006James D. Gibbons

Judge of the Criminal Court

APPEARANCES OF COUNSEL Footnotes

Footnote 1:It might be argued as an alternative that it is the "goods" in a trademark counterfeiting prosecution which must be shown to be "identical with or substantially indistinguishable from" those identified by "a trademark as defined in subdivision one". On this reading, the "identical . . . or substantially indistinguishable" element would play a role akin to that of the likelihood-of-confusion component of the federal counterfeit mark definition, 18 U.S.C.  2320(e)(1)(A)(iv). I do not suggest that this construction jibes with the statute's literal text, but, again, no sensible construction does so.

Footnote 2:The Appellate Term had prior to Reyes rejected challenges to trademark-counterfeiting informations employing similar allegations regarding the counterfeit trademarks. See People v. Jian Guan, 2003 NY Slip Op. 50878[U]; People v. Lynch, 2005 NY Slip Op. 50894[U]. However, the appellate briefs show that the defendants there did not press before the Appellate Term the argument made by Reyes and by defendant here.