PA Supremes Strike Down State TM Statute

The First Amendment has a friend in Pennsylvania.  Earlier this week, a divided Pennsylvania Supreme Court struck down the state’s Trademark Counterfeiting Statute on federal free speech grounds.

The statute reads, in relevant part:

“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).

A counterfeit mark is defined by the statute as either “(1) [a]ny unauthorized reproduction or copy of intel-lectual 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). “Intellectual property” is defined as “Any trademark, service mark, trade name, label, term, device, design or word adopted or used by a person to identify that person’s goods or services.” 18 Pa.C.S. § 4119.

In Commonwealth v. Omar (consolidated with Commonwealth v. O’Connor), — A.2d —-, 2009 WL 3165443 (October 5, 2009), one defendant was arrested and charged with possession of counterfeit Nike sneakers; the other defendant was charged with selling unauthorized Penn State ball caps. The majority of the court affirmed trial court decisions dismissing the charges and agreed with those decisions that the statute is unconstitutionally vague and overbroad.

The majority’s argument seems to rest largely on an omitted comma. In the statute as written, the phrase “with intent to sell or distribute” appears to modify only the verb “possesses,” rather than the entire list of verbs that includes “possesses.” Therefore, it appears to constitute a crime to “use” an unauthorized reproduction of a trademark, whether or not the unauthorized “use” is made “with intent to sell or distribute” the counterfeit items. The court majority agreed that the plain language of the statute did not correspond to the legislature’s likely intent. However, the court decided that it needed to apply the “last antecedent” rule of grammar. As I would put it, though the court did not, add a comma after “possesses” and the meaning of the statute changes considerably — and likely renders the statute constitutional.

As a Pennsylvania resident but only intermittent student of state law and state judicial practice, I note that this is not the first time that recent decisions of our Supreme Court have indulged a highly formalistic, facially-oriented, “plain meaning” approach to statutory (and contractual) interpretation. The fix to statutory language here seems relatively straightforward. I wonder whether the value of these particular prosecutions was so great that it was important for the legislature to wait until the cases played out before implementing a solution.

In other words, I think that the constitutional point here is well-taken in the abstract, but no one should sound the alarm that trademark law is under assault. Meanwhile, I wonder what the gang at Language Log might say about all of this.