People v R.S.

[*1] People v R.S. 2006 NY Slip Op 51803(U) [13 Misc 3d 1213(A)] Decided on April 4, 2006 Criminal Court Of The City Of New York, New York County Gesmer, 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 This opinion is uncorrected and will not be published in the printed Official Reports.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 4, 2006
Criminal Court of the City of New York, New York County

The People of the State of New York

against

R.S., Defendant.



2005NY084749



Robert M. Morgenthau, District Attorney, New York County (Steven Cohn of counsel), for the People.

Steven Banks, The Legal Aid Society, New York (Roma S. Kessaram of counsel), for defendant.

Ellen Gesmer, J.

Defendant is charged with one count of trademark counterfeiting in the third degree (PL §165.71). He moves for an order dismissing the information for facial insufficiency and for various other relief. In response, the People maintain that the information is sufficient on its face. For the reasons set forth more fully below, defendant's motion is granted and the information is dismissed.

Facial sufficiency is a non-waivable, jurisdictional prerequisite to a misdemeanor prosecution. (People v Alejandro, 70 NY2d 133, 139 [1987]; People v Hall, 48 NY2d 927 [1979]; People v Case, 42 NY2d 98 [1977]). A misdemeanor information is sufficient on its face only if it contains non-hearsay factual allegations which, if true, establish every element of the offense and provide reasonable cause to believe the defendant committed the offense charged (Criminal Procedure Law §§100.15[3]; 100.40[1][b], [c]; People v Casey, 95 NY2d 354, 360 [2000]; People v Dumas, 68 NY2d 729, 731 [1986]).

Defendant is charged with one count of trademark counterfeiting in the third degree."A person is guilty of trademark counterfeiting in the third degree when, with the intent to deceive, or defraud some other person or with the intent to evade a lawful restriction on the sale, resale, offering for sale, or distribution of goods, he or she manufactures, distributes, sells or offers for sale goods which bear a counterfeit trademark, or possesses a trademark knowing it to be counterfeit for the purpose of affixing it to any goods" (PL § 165.71).

A 'trademark' is "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, filed or recorded under the laws of this state or any other state or is registered in the principal register of the United States patent and trademark office" (PL § 165.70[1][a]; see also People v Ensley, 183 Misc 2d [*2]141, 142 [Crim Ct, NY County 1999]; People v Niang, 160 Misc 2d 500 [Crim Ct, NY County 1994]).

A 'counterfeit trademark' is 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" (PL § 165.70[2]). A sufficient accusatory instrument charging Trademark Counterfeiting in the Third Degree (PL § 165.71) must (1) allege that, at a specified time and location, the defendant displayed and offered for sale a counterfeit item; (2) identify and distinguish the characteristics of the genuine and counterfeit trademarks; and (3) state that the trademark is registered and in use (People v Guan, 2003 NY Slip Op 50878U [App Term, 1st Dept 2003]).

In this case, Officer John Fitzsimmons swore in his supporting deposition that on December 17, 2005 at about 1:15 pm, at West 29th Street and Broadway, he "observed the defendant display and offer for sale fifty-four (54) Lacoste shirts." Officer Fitzsimmons added, "I have examined the above-named merchandise and based on my training and experience it bears a counterfeit Lacoste trademark. The counterfeit trademark appears the same as the genuine trademark except the item bearing the counterfeit trademark is different from items that the owner of the trademark produces. The item bearing a counterfeit trademark has items [sic] are inferior quality, material and workmanship, improper packaging + markings and items bearing a genuine trademark have ferior (sic) quality, proper packaging + markings are being sold by authorized dealers." An attached affidavit from Mildred Lewis, an authorized representative of Lacoste, states that the Lacoste trademark is registered and currently in use.

I find that the People have failed to identify either the genuine trademark or the alleged imitation trademark (Guan, 2003 NY Slip Op 50878U).[FN1] The complaint details the inferior quality of the workmanship on the items allegedly being sold by defendant, but fails to describe the "word, name, symbol, or device, or combination thereof" that constitutes the actual trademark. However, the defective quality of the merchandise is not the critical issue because, as Judge Cooper explained in People v Rosenthal, (6 Misc 3d 1004(A) [Crim Ct, NY County 2003]), "while it is perfectly legal to sell merchandise that copies the design and style of a product- often referred to as a "knock-off,' it is against the law to sell goods that bear the counterfeit trademark." He went on to dismiss the complaints in the cases before him because they failed to describe the "specific trademark which is allegedly carried by the counterfeit goods."

Similarly, in this case, no reading of the complaint and the supporting depositions [*3]provides facts of an evidentiary nature to establish, even circumstantially, how the "word, name, symbol, or device" on an authentic Lacoste shirt is identical or substantially identical to that on the allegedly imitation Lacoste shirts in defendant's possession (CPL § 100.15); Dumas, 68 NY2d 729). The failure to establish this essential element is fatal (Alejandro, 70 NY2d at 139; see also Rosenthal, 6 Misc 3d at 1004(A); People v Wu Cheng, 4 Misc 3d 377, 378 [Crim Ct, NY County 2004]; Ensley, 183 Misc 2d at 141; People v Cisse, 171 Misc 2d 185 [Crim Ct, NY County 1996]); People v Niang, 160 Misc 2d 500, 609 [Crim Ct, NY County 1994]).

Based on the foregoing, defendant's motion to dismiss the information charging him with one count of trademark counterfeiting in the third degree charge is granted.

In light of the dismissal, the Court need not address the remaining branches of defendant's motion.

This constitutes the Decision and Order of the Court.

Dated: April 4, 2006__________________________

Ellen Gesmer Footnotes

Footnote 1: Contrary to the People's contention, Guan and People v Thiam, (NYLJ, December 13, 2001 at 17) are factually distinguishable from the instant case since each court determined, after reviewing the accusatory instruments, that the instruments identified and distinguished the characteristics of the genuine and counterfeit trademarks. In fact, the People's reliance on these cases only serve to point out the deficiencies in the information filed against defendant in this case.