Trade mark Counterfeiting Law Overturned in Pennsylvania

In a 4-3 decision, the majority on the court concluded the law was unconstitutionally broad and that it violated the U.S. Constitution’s guarantee of free speech. Through Commonwealth v. Omar and Commonwealth v. O’Connor, the court decided that, under the Pennsylvania Trademark Counterfeiting Statute, the use of any items bearing an unauthorized reproduction of words used by a person to identify that person’s goods or services was criminalized. Moreover, any limiting language applied in the statute did not apply to all of the verbs in the definition-only to one verb-rendering the statute overbroad and creating a “chilling” effect on speech, bringing with it a fear of prosecution.

The Court focused its attention on the definition of “intellectual property” in the statute and concluded that the definition criminalizes the use of a trade mark, but also criminalizes the use of those same trade marked words without any accompanying logo or stylization.

The cases on appeal began in Centre County, where two men were arrested under separate circumstances for violating the trade mark counterfeiting statute. One was charged with possession of what appeared to be boxes of counterfeit Nike sneakers in his car during a traffic stop and the other was arrested for selling hats bearing the Penn State logo outside Beaver Stadium on the Penn State campus. The Centre County Court of Common Pleas dismissed the charges against both men and found the Pennsylvania Trademark Counterfeiting Statute to be vague and overbroad.

This decision open channels for the Pennsylvania legislature to revise Pennsylvania’s Trademark Counterfeiting Statute.

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