*1 981A.2d 179 Pеnnsylvania, Appellant COMMONWEALTH OMAR, Appellee Omar A. Pennsylvania, Appellant v. O’Connor, Appellee.
Daniel J. Supreme Pennsylvania. Court of Argued Dec. Submitted 2008.
Decided Oct. *3 Madeira, T. Michael Kuebler, Karen Esq., Elizabeth Esq., Sloan, Stephen Bellefonte, P. Esq., for the PA., Com. of appellant. Omar, Muir, for Omar A. Gwyn Esq., College,
Karen State appellee. McGraw, Crowley, Belle- Esq., Patrick David R. Esq.,
Sean O’Connor, fonte, appellee. for Daniel J. BAER, CASTILLE, C.J., SAYLOR, EAKIN,
BEFORE: GREENSPAN, TODD, McCAFFERY and JJ.
OPINION BAER. Justice cases, the County
In these consolidated Centre filed the Commonwealth charges Common Pleas dismissed Statute, Counterfeiting for violations of the Trademark on trial court’s decision strik- prior based Pa.C.S. unconstitutionally and overbroad. vague the statute as ing has appeals filed direct Accordingly, the Commonwealth Court, jurisdiction which has over from appeals exclusive declaring pleas final orders of the court common laws 722(7). We Commonwealth unconstitutional. Pa.C.S. speech protect- conclude that criminalizes because Constitution, ed the First Amendment to United States unconstitutionally Accordingly, it we affirm overbroad. County. decisions the Court Common Pleas Centre under with- currently cannot consider cases review We prior County first the Centre addressing out decisions of Pleas, striking Court of Common Trademark Counterfeit- Garrity, In ing Statute unconstitutional. *4 (March 27, 2000), Centre No. 1999-2264 County Crim. Police arrested P. Garri- Pennsylvania University State James Jr., ty, “Ninety-Eight for t-shirts with the words selling on the Penn University” and “Penn State State Degrees” De- by “Ninety-Eight a concert the band Campus during grees.” attorney charged Garrity violating The district with Counterfeiting the Trademark Statute because “Penn State” Garrity challenged federal trademark. registered was constitutionality claiming of it was unconstitution- statute and overbroad. ally vague presumed
After that statutes are constitu- observing be tional, the trial court noted that a uncon- potentially if it stitutionally punishes constitutionally overbroad protected Commonwealth, speech. See DePaul 600 Pa. (“[T]he (Pa.2009) U.S. this Court Supreme and recognized
have doctrine permits overbreadth facial invalidation of laws that inhibit the exercise First if the Amendment rights impermissible applications of law judged substantial when relation to the plainly statute’s omitted). legitimate sweep.”)(internal quotation marks court that the trial stated Trademark Statute Counterfeiting who “Any person defines crime manufac- knowingly tures, uses, advertises, distributes, sale, displays, for offers sells or intent or possesses with to sell distribute itеms or any bearing services or identified counterfeit shall by a mark guilty crime trademark counterfeiting.” 18 Pa.C.S. 4119(a).1 § A counterfeit mark is defined statute as “(1) [a]ny either reproduction unauthorized or intellec- copy of “(2) tual property” or property any [intellectual affixed sold, sale, knowingly item offered for manufactured distrib- or or rendered, uted services or identifying offered without authority the owner of the intellectual 18 Pa. property.” 4119(i). (a) Combining (i)(l), C.S. subsections the court noted, “this statute makes it to reproduce any unlawful trade- part, Counterfeiting In 1. relevant the Trademark provides: Statute (a) manufactures, uses, Any person knowingly Offense who defined.— advertises, distributes, sale, displays, possesses offers for sells or any intent to sell or distribute items or services or identified by a guilty counterfeit mark shall be of the crime of trademark counterfeiting. * 4= * (i) section, used in following Definitions. —As words phrases meanings given shall have the to them in this subsection: Any following: "Counterfeit mark.” (1) Any reproduction copy property. unauthorized or intellectual sold, property knowingly Intellectual affixed item offered sale, identifying or manufactured distributed services offered rendered, authority without the owner of the intelleсtual property. trademark, mark, name, property." Any "Intellectual service trade label, device, term, design adopted person or word or used identify person's goods or services. 18 Pa.C.S. *5 owner use, permission the express without any
mark for (emphasis at 5 Slip Op. Garrity property.” of the intellectual would prohibition that this The court observed in original). “[w]rit[ing] activity such as constitutionally protected apply as, such sign, placard on a political the words ‘Penn State’ ”2 Id. The court for the Constitution.’ ‘Penn students State Counterfeiting Statute that the Trademark therefore held filed charge dismissed unconstitutionally overbroad and statute. the then-unconstitutional Garrity violating for against the March initially appealed Although Commonwealth leaving appeal, in it abandoned the Garrity, 2000 decision County. in controlling law Centre Garrity Price, No. County Centre v. Similarly, (November 15, 2007), court, the trial CP-14-CR-2211-2006 charges dismissed filed judge presiding, same trial with the Counterfeiting Stat a defendant under the Trademark against rejected argument the Commonwealth’s ute. The court stat counterfeit trademark upheld states have similar other not criminalize the utes, those statutes did observing the trademark. “use” of A. is the case of Omar Omar.
Currently before this Court 16, 2007, Omar for policе stopped Appellee officer May On County. limit on Route 80 Centre exceeding speed to be appeared a number of boxes of what seeing Upon sneakers, Omar Appellee Nike the officer arrested counterfeit Al Counterfeiting Trademark Statute. for violation of the of the search legality though Appellee challenged Omar the trial court determined suppress, seizure in a motion to unneces of the search was legality that consideration of Price, followed in that the Garrity, its decision sary given that “an The court observed statute was unconstitutional. it is as purpose; statute is ineffective unconstitutional 2, quoting Tr. Glen- Slip Op. if it were never enacted.” Ct. political speech, Although upon our focus is the criminalization criminalize children the statute would also trial court observed house, painting "Penn painting their tree football fans "Penn State” on faces, gardener spelling State” with out "Penn State” on their flowers, with Penn State to promoters printing t-shirts and concert of a concert. Id. denote the location Gery Corp. Zoning Hearing Bd. Dover Tp., 589 Pa. *6 (Pa.2006). 1033, 907 A.2d 1043 Accordingly, finding a defect criminal on the face of the information that prеvented prosecu tion, quashed the court the information and dismissed the against Appellee charges Omar. Court,
In the other case appeal consolidated for before this Appellee Daniel J. for selling O’Connor was arrested hats the Penn logo State outside Beaver Stadium on the campus. Penn Appellee State O’Connor was charged violating the Trademark Counterfeiting Statute he did because not the appropriate approval have to use the Penn State name and on logo the hats. filed a Appellant O’Connor motion to quash information upon prior based trial court’s determination that the statute was As in unconstitutional. case, Appellee trial Omar’s court dismissed the charges. The Commonwealth appeals now decisions dismissing the charges upon based the trial court’s conclusion that the is unconstitutionally vague and overbroad. Given trial holding court’s of unconstitutionality, this Court noted jurisdiction probable and consolidated the Commonwealth’s appeals relating Appellees Omar and O’Connor.
The that Commonwealth asserts the trial court erred when it concluded that the Trademark Counterfeiting Statute was unconstitutional. The Commonwealth observes that constitutional, courts must presume that statutes are and strike them only as unconstitutional if the statute clearly, palpably, plainly violates the Constitution. See Common Davidson, (Pa.2007). wealth 595 Pa. A.2d Accordingly, the Commonwealth emphasizes heavy burden of proof placed upon challenging those the constitutionality of a statute. The correctly Commonwealth notes that a statute unconstitutionally is if overbroad only statute criminalizes constitutionally substantial amount of protected speech. See DePaul, 969 553. unconstitutionally Given that we determine that statute is over- broad, secondary we holding need not address the statute is unconstitutionally vague. also Counter- that the Trademark
The Commonwealth asserts overbroad, unconstitutionally claiming not Statute is feiting to sell those with the intent persons it is limited to trademarks, thus with counterfeit distribute items of constitu- not reach a substantial amount the statute does observes that tionally protected speech. Commonwealth on unconstitutionality centered analysis the trial court’s “use” in the of the offense of inclusion of the word definition however, Commonwealth, as- counterfeiting. The trademаrk only when the counterfeit trade- applies that the statute serts Implicitly, “with intent to sell or distribute.” mark used phrase that the “with intent to contending “possess,” to the word applies sell distribute” (a), but immediately proceeds phrase which subsection *7 (a), of in including also to entire list verbs subsection the its the breadth the support argument “use.” To relies intent, upon the the statute limited Commonwealth George, decision in Commonwealth v. Superior Court’s (Pa.Super.2005), emphasized in which the court rejected George, the intent to In the court defendant’s sell.4 the of the evidence where sufficiency argument defendant’s possession the defendant claimed that the statute required Instead, twenty-five counterfeit items with the intent to sell. merely the court observed the statute the provided to be from possession intent sell could the presumed twenty-five items.5 statute,
Moving
the
of the
enacted
beyond
currently
words
relies
to
proposed
the Commonwealth
on a
amendment
the
statute,
states,
provi-
statutes from our sister
and additional
mistakenly
The
with the
in
4.
Commonwealth
credits
decision
asserts,
Indeed,
George.
Supreme
the Commonwealth
“The
Court of
statute,
Pennsylvania
Counterfeiting
George
twice
has
rеviewed the
Sow[,
(Pa.Super.2004),]
did the
Echoing of items ‘use, ... display [or] distribute[ion]’ mere izing mark’ mark, ‘counterfeit defining bearing a counterfeit word,’ the Trademark Coun- term or broadly ‘any to include array of constitu- to a broad easily applied statute is terfeiting at 4. Appel- activity.” Brief O’Connor tionally protected at a sign “Nike” on the use of word lees note that fall labor” would sweatshop as “Nike uses rally, such protest Counterfeiting Statute the reach of the Trademark within of a the unauthorized use activity would involve because identify goods or services. by or term used another word Indeed, they that the brief submitted contend Appellees be- Counterfeiting Statute case violated the Trademark (to an item parties) the Court and they cause distributеd words, such as an unauthorized containing reproduction State, other entities to Penn that are used Nike and or services. identify goods that the inclusion of the also rebut the argument
Appellees to all the applies “with intent to sell or distribute” phrase (a) “use” and including in the of the statute verbs subsection phrase only applies contend that the “display.” Appellees immediately precedes phrase, which “possess,” the verb construction, statutory citing the standards of accordance with Packer, 481, 798 568 Pa. (Pa.2002) “the established cannon of construc- (observing well words or qualifying courts should generally apply tion that them”). immediately They preceding to the words phrases to all the verbs would phrase further note that applying would prohibit result the statute lead to absurd sell and from distribut- from with intent to selling individuals with intent to distribute. ing (2) sought actually the harm or evil to be did cause or threaten defining did so to an extent prevented the law the offense or conviction; or the condemnation of too trivial to warrant reasonably presents that it cannot such other extenuations Assembly authority regarded envisaged by or other the General forbidding the offense. Pa.C.S.
As the
constitutionality of
stаtute is a pure ques
law,
tion
our
standard of review is de
and
scope
novo
our
Davidson,
is plenary.
Moreover,
review
See
An challenge generally overbreadth limited to the First falling issues under Amendment of the United States Constitution, protecting right to free speech. See David son, recognized We have that “the Constitu tion provides significant from protection overbroad laws that chill speech within the First Amendment’s vast and privileged (internal omitted). sphere.” Id. quotations protected When expression, issue, as political speech, such is at “both the U.S. Supreme Court and Court have recognized that overbreadth doctrine the facial permits invalidation of laws inhibit the exercise First if rights Amendment impermissible applications law are substantial when judged relation the statute’s plainly legitimate sweep.” DePaul, (internal omitted). quotation 969 A.2d at marks has been the judgment “[I]t of this Court that the possible harm to society permitting unprotected some speech go unpunished outweighed by possibility protected
606 grievances left perceived be muted and
speech may of others inhibitory overly effects of possible to fester because of DeFrancesco, Pa. 481 broad statutes.” Commonwealth (Pa.1978). litigant asserting a Accordingly, 398 A.2d is not demonstrate challenge required an overbreadth may but instead protected speech, violated his own statute by demonstrating unconstitutionality a statute’s prove very may existence cause others not before “the statute’s or constitutionally protected speeсh to refrain from court Davidson, at expression.” is for whether a statute determining The standard is well overbroad established: unconstitutionally only punishes
A overbroad if it as constitutionally protected activity illegal lawful well as Thus, determining a statute is uncon- activity. whether overbreadth, due a court’s first task is to stitutional whether the enactment reaches a substantial determine over- constitutionally conduct. The protected amount real, but breadth of statute must be substantial well, in relation to the judged plainly legitimate statute’s Consequently, if statute’s overbreadth is substan- sweep. tial, it may anyone it not be enforced until against only unprotected activity. to reach narrowed (internal omitted). quotation Id. citations and marks likely agree We legislative intent Counterfeiting behind Trademark Stat of a prohibit deceptive, ute was to unauthorized use that it profit, prohibit trademark was not intended to words in constitutionally protected the use of trademarked Although the statute has a laudable and constitution speech. al written language of statute as purpose, plain trademarks, much prohibits range many broader of uses constitutionally protected speech. of which involvе provides: In relevant the statute part, § 4119. counterfeiting Trademark (a) manufac- Any person knowingly Offense who defined.— distributes, sale, tures, uses, advertises, offers for displays, with intent to sell or distribute items possesses sells mark shall or services or identified a counterfeit counterfeiting. of the crime of trademark guilty ‡ % sfc % % (i) section, in this following Definitions.—As used words phrases meanings shall have to them in this given subsection: Any mark.” of the following:
“Counterfeit (1) Any reproduction copy unauthorized of intellec- tual property. *11 item Intellectual affixed to property any knowingly
sold, sale, offered for manufactured or distributed or rendered, identifying services offered or without the authority of the owner of the intellectual property. trademark, “Intellectual property.” Any mark, service name, label, term, device, trade or word design adopted used a to by person identify or that person’s goods or services. §
18 Pa.C.S. Although the argues that the statute only prohibits the use of “counterfeit marks” when the user intends or to sell distribute the product the statute de- deceptively, “counterfeit broadly “[a]ny fines mark” to include unautho- reproduction or of copy rized intellectual property,” where “intellectual defined property” by the statute to include trademark, mark, name, label, term, service “[a]ny trade device, design or word or adopted by used a to person identify 4119(i) that person’s goods § or services.” 18 (empha- Pa.C.S. added). Therefore, any sis of a unauthorized use “term” or by “word” another engaged person identify person’s goods or services is According- “counterfeit mark.” definition ly, property of intellectual criminalizes not only trademark, the use which would the stylized include word, or name but also the mere logo regard without to font or color. When the relevant definitions inserted into the offense, definition the statute the use of any criminalizes an bearing reproduction items unauthorized terms or words or services. identify person’s goods person used (i). court, the 4119(a), by the trial highlighted As 18 Pa.C.S. statute, therefore, protected unconstitutionally prohibits or sign praising on a including the use words speech, name, entity including with a trademarked any protesting extreme, even our use of the words Penn Taken to State. permis- opinion “Penn in this without “Nike” and State” fall under the university or the would company sion of the the statute Clearly, of a counterfeit mark. current definition David- protected speech. amount of substantial prohibits son, A.2d at 208. attempt must decline the Commonwealth’s
We
“with intent to sell
distribute”
apply
limiting phrase
in the definition of the offense
the entire list
verbs
(a),
limit the reach of the
properly
which would
subsection
offense, again,
is defined
unprotected activity.
statute to
manufactures, uses,
who
“Any person
knowingly
displays,
sale,
advertises, distributes,
or possesses
offers for
sells
to sell or distribute
items or services
intent
the crime
guilty
a counterfeit mark shall be
identified
4119(a)
counterfeiting.”
(emphasis
trademark
18 Pa.C.S.
added).
of grammar,
the “last antecedent” rule
Applying
distribute,”
solely
“with intent to sell and
to the
phrase
applies
*12
clause,
“possesses,”
immediately precedes
verb
which
that
that the statute
of a counterfeit
prohibits
possession
such
item with the intent to sell or distribute that item.
trademark
Packer,
(observing
We
Commonwealth’s other arguments
by
also cannot save the statute
allowing us
incorporate
intent to sell or distribute into the
definition
the offense. A
review of the Superior
George,
Court’s decision in
upon
relied
the Commonwealth
by
support
significance
of the intent
distribute,
or
to sell
reveals that that ease did not consider the
statute,
constitutionality of the
only
considered the intent
of the defendant in
regard
whether there was sufficient
“possession
distribute,”
evidence of
with intent to sell
or
involving possession,
case
not use. George,
We can no balm for additionally unconstitutionality find of Pennsylvania’s Counterfeiting Trademark Statute statutes of our sister cited states Commonwealth. The statute, looks the Florida but fails to note statute has since been repealed, effective October 2008. Fla. Stat. 831.05.8 The Commonwealth also relies provided: 8. The Florida Statute *13 sale, knowingly Whoever knowingly purchases sells or or offers for keeps possession, and or has in his or her with intent the that same disposed, goods any having forged
shall be sold or or vends thereon a statute, fails to but counterfeiting trademark the Oregon upon statute limits that that plain language observe to those incidents whеre of the criminalization reach or distribute.”9 with intent to sell “knowingly acts and person additionally Pennsylvania’s compares The Commonwealth Colorado,11 fails but to indicate that of Texas statute to speak did not as those statutes applying the cases cited that additionally It ob- constitutionality of the statutes. to the Maryland have that the District of Columbia and serves have not chal- counterfeiting statutes been trademark trademark, any knowingly or sale or who sells counterfeit or offers for forged conjunction counter- with or which service is sold service association, mark, knowing person, entity, any or feit service counterfeited, forged guilty of crime of or shall be same to goods selling offering sale counterfeit or services. or for Moreover, added). (emphasis § we note that this Stat. 831.05 Fla. sale, unequivocally applies only to items intended for where statute Pennsylvania through plain make that clear statute does not language of the statute. Oregon provides: 9. The statute knowingly counterfeiting person person trademark A commits if to sell distribute and without consent the intent or distributes, sale, uses, advertises, for or registrant displays, offers sells any a mark or serviсe possesses item that bears a counterfeit of registered by under this a counterfeit of mark identified chapter registered registered or under 15 chapter or under this knowledge the mark counterfeit. U.S.C. 1052 with added). (emphasis § 647.135
Or.Rev.Stat. following behavior: 10. Texas criminalizes person intentionally person an if the manufac- A commits offense advertises, distributes, sale, sells, tures, possess- displays, offers for or or a counterfeit mark or an item or es with intent to sell distribute that: service mark; (1) by or bears identified a counterfeit or is person or knows or have known bears is identified should mark. a counterfeit 32.23(b). Tex. Penal Code following The Colorado criminalizes the behavior: person counterfeiting if intention- person A trademark such commits advertises, distributes, sale, manufactures, ally sells, displays, offers marks, goods, possesses or or with intent to sell or distribute are, bear, person are identified one services that the knows custody, possession, more counterfeit marks and has or control mark. twenty-five than items a counterfeit more Colo.Rev.Stat. 18-5-110.5. *14 Moreover, grounds.12 on the statutes lenged constitutional by the do not the “use” of cited criminalize trademarks, with the primary items counterfeit which wаs by judge, given flaw as determined the trial constitutional use encompass “use” would of the counterfeit trademark protest protected on or other sign activity.13 Although that that Assembly we have no doubt General did not intend to criminalize use of terms or words absent to profit goods, intent from the sale of counterfeit we are enacted, by language bound as which criminalizes a sub- Davidson, amount protected speech.14 stantial of 938 A.2d at Accordingly, we affirm the decision the Centre Coun- ty striking Common Pleas 18 Pa.C.S. unconstitutionally overbroad. provides:
12. The District of
statute
Columbia
person
counterfeiting
person
A
commits the offense
if such
willful-
manufactures, advertises, distributes,
sale, sells,
ly
pos-
offers for
items,
bearing
with intent
distribute
sesses
to sell or
or services
or identified
a counterfeit mark.
be a
There shall
rebuttable
having
presumption
person
possession, custody,
that a
or control of
bearing
more than
possesses
15 items
counterfeit mark
said items
intent to sell or distribute.
Maryland
provides:
D.C.Code 22-902. The
statute
manufacture,
person
advertise,
may
willfully
produce, display,
A
not
distribute,
sell,
sale,
possess
offer for
with the intent to sell or
goods
person
distribute
or services that the
knows
or arе
identified
a counterfeit mark.
Code,
Law, §
MD
Criminal
8-611.
Oregon
acknowledge
13. We
that the
statute
does criminalize
"use’'
However,
Pennsylvania’s
item with a
an
counterfeit mark.
unlike
statute,
Oregon
plainly
persons
limits its reach to those
who
knowingly
use the counterfeit trademark
and with intent to sell. See
supra at 188 n. 9.
respect
dissenting justices,
all
14. With
due
we fail to see the
finding
ambiguity
Beverages
relevance of our
in Malt
Distribs. Ass'n v.
Bd.,
Liquor
(Pa.2009),
Pa.
Control
974 A.2d
Chief Justice make the I write to Majority Opinion. separately I join following observations. and the Dissent- Majority Opinion tension between the view, in Greеnspan, my rests Opinion of Madame Justice
ing
rationally
could
doubt
trade-
person
in the fact that no
of
against
a serious offense
laws
counterfeiting
mark
worthy
Assembly’s
that is
of the General
this Commonwealth
ten-
exacerbating
Further
police powers.
exercise
its
that,
the facial deficiencies of the
notwithstanding
sion is
statute,
profiteer-
in the
sort of
appellees
engaged
very
were
could
activity
unquestionably
properly
the statute
ing
626,
981 A.2d
target. See
Dissenting Op. Greenspan,
J.
was a violation
(“Clearly,
Appellees
at 198
the conduct of these
trademarks,
Appellees’
and Penn
behavior
of Nike
State’s
That
should have their convictions
illegal.
Appellees
was
...
an
overturned due to overbreadth of the Statute
has
aura
injustice.”).
If the law were such that
ensnared
this
persons properly
bring
challenges,1
dispute
statute lacked
facial
standing
But,
controlling
here would be avoidable.
as I understand
law
Court,
cases,
in
Amendment
Supreme
from
U.S.
First
permitted
even
scoundrels are
to forward facial
unquestioned
faux,
champions
vicarious
challenges essentially
—
Generally
rights
speaking, constitutional
cannot be asserted vicarious-
Oklahoma,
601, 610,
2908,
ly. See
v.
413 U.S.
93 S.Ct.
37
Broadrick
(1973) ("Embedded
governing
L.Ed.2d 830
in the traditional
rules
adjudication
principle
person
is the
that a
to whom a
constitutional
may constitutionally
applied
challenge
be
will not be heard to
ground
may conceivably
applied
that it
unconsti-
that statute on
Court.").
others,
tutionally to
in other situations not before the
rights
others
before the court who
from
have refrained
protected speech or
due
constitutionally
expression
very
to the
Oklahoma,
existence of the statute.
Broadrick
413 U.S.
612,
601,
2908,
(“[T]he
S.Ct.
37 L.Ed.2d
has altered its traditional rules of standing
permit
the—in
First
overly
Amendment area —attacks on
broad statutes with
no requirement
person
making the attack demon-
strate that his own conduct could not be regulated by a statute
drawn
the requisite narrow
Com-
specificity.”); accord
Davidson,
1,
(2007).2
monwealth v.
595 Pa.
938 A.2d
soAnd we have no
but
accept
litigation
choice
as it is
presented.
I recognize the force of the concern
expressed
Greenspan’s Dissenting Opinion,
Justice
which has marshaled
argument
a substantial
in favor of a finding that the General
deceptive
Assembly
“only
meant
criminalize
use
recognized word mark
the context of
a sale
distribu-
Dissenting
tion.”
Op. Greenspan,
J. at
614 must follow generally criminal laws applying
Courts in lan- statutory meaning plain unambiguous and because simply .... not altered guage proposition This on challenged constitutional a statute application to avoid constitu- grounds. Statutes should construed not a canon is interpretative but questions, tional language for the to rewrite enacted judiciary license legislature. Albertini, 680, 2897, 675, 472 105 S.Ct.
United States U.S. Frankston, (1985); 504 Pa. 536 accord Heller v. L.Ed.2d 1291, (1984). 528, 475 A.2d present, this case does not Respectfully, my judgment, drafted suggests, merely poorly the Dissenting Opinion 615, J. at 981 A.2d Op. Greenspan, statute. Dissenting See a criminal at 191 Court should declare (arguing “[t]his void-for-vagueness statute to be unconstitutional under the merely because the drafters utilized overbreadth standards here”). Majority is the As the clumsy grammar, as case determines, “the of the statute as Opinion plain language 186) at (Majority written” at 981 A.2d Op. prohibits constitutionally amount of when protected sрeech substantial in relation the statute’s id. at judged legitimate sweep. See 607-09, A.2d broad (describing at 186-87 definitions “[wjhen concluding terms set in statute relevant forth and the relevant definitions are inserted into the definition of offense, the statute criminalizes the use of items an unauthorized terms or words used reproduction services”). identify person person’s goods Dissenting Opinion ambiguity (Dissenting Op. finds “latent” 195) at to the only by looking J. Greenspan, statute, intent of supposed purpose structure Statutory 1921 of our contravention Section Construction 1921(b) (“When Act, see 1 Pa.C.S. the words of a statute *17 ambiguity, clear and free from all the letter of it is not to be under its Nev- disregarded pretext pursuing spirit.”). face, ertheless, statute, unambiguous, may on its and we essentially not those obvious deficiencies to re-write disregard until keep counterfeiting illegal statute so to trademark
615 manages to in a Assembly General define offense manner. I Accordingly, constitutional am constrained agree overbroad, that the statute is I unconstitutionally and join the Majority Opinion. EAKIN, Dissenting.
Justice join IWhilst Madame Justice dissent conclud- Greenspan’s ing Pennsylvania’s Counterfeiting Statute, Trademark Pa. 18 4119, §C.S. is not so as to vague overbroad be deemed unconstitutional, I write con- separately because references trasting statute to recent in Beverages this our Malt holding Distributors Pennsylvania Liquor Association v. Control Board, (Pa.2009). dissent, 1144 974 A.2d In her Madame Justice Greenspan states Court properly found the statute at issue in Beverages Malt to be ambiguous, yet now refuses to find ambiguity statute, the current which I find to contain even more tenuous language. Dissenting Op., at 617- 18, 981 I 193-94. dissented in Malt Beverages, believing Therefore, the statute there was I ambiguous. cannot with agree statements suggesting this Court properly statutory found ambiguity Beverages. in Malt In all other aspects, join I Madame Justice dissent. Greenspan’s GREENSPAN,
Justice Dissenting. Although agree my I colleagues that Pennsylvania’s Statute, (the Trademark Counterfeiting 18 Pa.C.S. “Statute”), drafted, I inartfully conclude cannot vague Statute is so ought overbroad that it to be deemed unconstitutional. This should not declare a criminal statute to be unconstitutional under void-for-vagueness merely overbreadth standards because the drafters utilized clumsy grammar, as is the case here. This Court an has obligation a interpret statute a constitutional manner Commonwealth, 573, wherever possible. DePaul 600 Pa. (2009) (“we 536, 969 A.2d required, n. 5 whenever possiblе, construe statute a manner that its upholds constitutionality”); Co., Commonwealth v. Pure Oil 303 Pa. must, A. (holding court if reasonably construe possible, so as find the statute *18 616 this clear
constitutional). Here, fails to follow majority the view, is, inconsistent my in opinion majority and the mandate of Malt in the case similar holding recent with this Court’s Bd., 974 A.2d Liquor Ass’n v. Pa. Control Distribs. Beverages failure in this majority’s (Pa.2009).1 In my opinion, 1144 mis- whereby grammatical dangerous precedent sets a case statute, a criminal result in Assembly will take the General basis, thereunder, overturned. On being and convictions dissent. respectfully I constitutionality and to determine
It is the role of particular what Assembly to determine of the the role General As this Court goal. to achieve its should be used language Penn Dist.: Reichley v. North Sch. noted forum appropriate is not an judicial system The adversarial well or poorly, works legislation whether this analyzing If a statute does not ways or in unforeseen. as intended body to appropriate is the legislature expected, work as That corrective legislation. and enact judgment make the considerations policy competence weigh has the body competence has the initially body and that legislate considerаtions, efficacy of the initial reassess those continuing thereunder and the wisdom of legislation, changing course. (1993). 123, basic tenet of 519, 129 It is a Pa. 626 A.2d
533 that, the constitution evaluating when statutory construction the General statute, presume a court must of a ality of the intend to violate Constitution Assembly did not when it Pennsylvania promulgated or of States United 1922(3); Tpk. Pennsylvania 1 see also statute. Pa.C.S. Commonwealth, 347, 1085, 1094 Pa. 899 A.2d 587 Comm’n enacted General legislation duly (holding unless will not be declared unconstitutional Assembly Pennsylva- violates clearly, palpably plainly legislation Malt Although Beverages the instant case Malt differs from challenge, that case and Beverages involve a constitutional did not present similar to those language raised therein issues of the statute similarity question of presented in the instant case. Given precedent fol- Beverages, its should be statutory construction in Malt my infra at n. 4. case. discussion in the instant See lowed Constitutions). nia then, and United States Again this Court should, possible, whenever construe a statute to its uphold DePaul, constitutionality. 969 A.2d at (citing In re Wil- L., (1978)). liam Pa. 383 A.2d my In opinion, this is even more principle important the context of evaluating criminal statute which will struck down if the *19 statute is found to be unconstitutional.
Any doubt as to the a constitutionality of statute be is to resolved in favor of the statute to be finding constitutional. Bullock, 480, Commonwealth v. 590 207, Pa. 913 A.2d 212 (2006) (holding that Against the Crimes the Unborn Act Child was neither unconstitutionally overbroad); vague nor Reich ley, at 626 A.2d 128 (reversing the order the trial court unconstitutional); 195 holding Act see also Colville v. Alleghe Bd., ny 433, (2007) County 424, Ret. 592 Pa. 926 A.2d 433 (noting that a is reviewing precluded court from a construing statute in a manner that produce would an absurd or unrea result). sonable As a presumption, result party challenging constitutionality of the statute bears the signif icant to prove burden statute is unconstitutional. 121, Harrisburg Zogby, 1079, Sch. Dist. v. 574 Pa. 828 A.2d (2003); 1087 Davidson, 1, v. Commonwealth 595 Pa. 938 A.2d 198, (2007). 207 A party may successfully argue that a statute is unconstitutional demonstrating that the statute is either void for vagueness or overbroad.
Under
standard,
the void-for-vagueness
a statute
will
found unconstitutional
if the statute is so
only
vague
persons of common
must
intelligence
necessarily guess
its
at
differ
meaning
application.
as to its
v.
Commonwealth
Craven,
431,
451,
(2003);
572 Pa.
817 A.2d
454
Commonwealth
Cotto,
(2000).
32,
217,
v.
562 Pa.
753 A.2d
220
A
will
statute
not be found
if the
unconstitutional
statute defines the crimi
nal offense with sufficient
ordinary
definiteness that
people
can understand what
is prohibited,
conduct
and in a manner
that does
encourаge arbitrary
and discriminatory enforce
Davidson,
ment.
938
207. A
statute will not be
terms,
deemed unconstitutionally vague if
its
when read
context,
Cotto,
sufficiently
specific.
(citing
618 Hendrickson, 277, 724 Pa. A.2d 315 v. 555
(1999)
Act was constitutional
concluding
Juvenile
because,
legislative
when
in the context of its elaborated
read
That
its
was not
General
language
vague).
purpose,
precise
more
lan-
could have chosen clearer and
Assembly
it
which
achieving
sought
the end
equally capable
guage
in fact
not mean that
the statute which it
drafted
does
Powell,
v.
unconstitutionally vague. United States
U.S.
(1975).
87, 94,
316,
96 S.Ct.
46 L.Ed.2d
standard,
will be found
Under
overbreadth
statute
if
lawful
unconstitutionally
punishes
overbroad
it
constitu-
tionally protected activity
activity.2
as well as
David-
illegal
son,
Thus, in
938 A.2d at
whether
determining
overbreadth,
unconstitutional
a court’s first task is to
due
whether
the enactment
reaches
substantial
determine
constitutionally protected
amount of
conduct. Commonwealth
Ickes,
Pa.
(citing Village
873 A.2d
Inc.,
Estates,
Flipside,
Estates v.
455 U.S.
Hoffman
489,
Hoffman
*20
494,
(1982)).
1186,
102
619 (2007) Greenbaum, 196, 553, (listing 591 Pa. A.2d 564-65 that can utilized intent glean legislative factors be statute); a Fin. underpinning Pennsylvania Responsibility Pa. Assigned English, Claims Plan 664 A.2d susceptible is unclear or (noting that where differing courts must look to in interpretations, legislative tent). Statute,
Turning
reading
majority
to a close
of the
that the
is not ambiguous. They
concurrence conclude
Statute
evaluate
other
anything
plain
therefore decline to
than
meaning of the
I
with their
language.
disagree
Statute’s
ambiguity
conclusion vis-a-vis
and with their
interpretation
litigants’
As
language.
varying interpreta-
Statute’s
demonstrate,
subject
tions
the Statute
Statute
not,
various
The Statute is
as the
interpretations.
majority
and concurrence
clear on its face.
on
suggest,
Depending
how
read,
it may prohibit
activity
Statute
a broad class of
may
it
prohibit only
aforementioned
in the context
activity
a sale
distribution.
question
statutory
presented
construction
is not
question
case
unlike the
to this
in the
presented
recent Malt
case.4 In
Beverages
Beverages,
Malt
this Court
ambiguity
found
in a statute that
contained clause
could
in either
limiting
read
or an
expansive manner.
(“The
at 1152
crux of the dispute focuses on whether the two
types
beer sales
in Section
contemplated
102—the sale of
for
consumption
beer
on-site
sale of
carry-out
and the
beer for
purchases
independent alternatives or
whether
sale
—are
is contingent upon
beer
takeout
the sale of beer for
consumption
premises
facility.”).
on the
Because the
*21
Beverages,
litigants argued
ambiguous
4.
In Malt
the
that a statute was
subject
interpretations
to different
there
but
was no constitutional
challenge
contrary,
to a
statute.
criminal
To the
that case involved a
divergence
applied.
my
mere
how a
as to
civil statute should be
In
greater
opinion,
gravity
the instant case is one
than
of even
Malt
Here,
Beverages.
challengers
Court
a
ask this
to declare
criminal
challenge
Beverages
If
statute unconstitutional.
in Malt
and the
language
justify
of the
were
statute
issue therein
sufficient
a
case,
finding
ambiguity
required
in that
in
a similar result
is
higher.
case where
stakes are
instant
even
inter-
subject to two different
in
was
Beverages
statute Malt
held that
the statute was
properly
pretations,
intent to
the stat-
interpret
and utilized
ambiguous
legislative
(“we
party’s interpretation
at 1153
find that each
ute.
Id.
therefore,
and,
the statute
is
statutory language
plausible
ambiguity
a latent
As in all cases where
ambiguous.
exists,
statutory
canons of
construc-
we resort to the
statute
intent.”).
the Legislature’s
tion to discover
here, even in the face
rejects
approach
such an
majority
in Malt
present
than was
ambiguous language
of far more
Beverages
Beverages. Like the statute at issue Malt
interpreta-
at least two reasonable
subject
here is
Statute
we
ambiguity,
is therefore
Due to this
ambiguous.
tions and
in a vacuum
not to evaluate the
of the Statute
ought
language
of the
language
should evaluate the
Statute
but instead
Assembly’s
Pennsylvania
intent. See
light of
General
Plan,
Pursuant to the of Section language “manufactures, uses, displays, who ad- any person knowingly vertises, sale, sells or with intent to sell or possesses offers for items or services or identified any distribute counterfeit mark” shall be of the crime of trademark guilty 4119(a). 4119(f) § counterfeiting. 18 Section Pa.C.S. mark,” in part, defines a “counterfeit as unautho- Statute reproduction rized trademark. 18 Pa.C.S. copy 4119(i).6 4119(b) § states that a person Section Statute general I am mindful of the rule of construction that where the words ambiguity, of a statute are “clear and free from all the letter of [the disregarded pretext pursuing is not to be under the its statute] rule, 1921(b). where, Notwithstanding general spirit.” 1 Pa.C.S. here, ambiguous may of a a court consider words 1921(c). legislativе extrinsic evidence to determine intent. Pa.C.S. relevant The term "counter- 6. The Statute contains several definitions. following: feit mark” is defined to include the (1) Any reproduction copy property. unauthorized of intellectual *22 pre- who more than 25 counterfeit items possesses may be to possess sumed them with the intent sell or distribute. 18 4119(b). § Pa.C.S. Statute, a majority applies reading literal to the de-
clares the language Statute’s to be unambiguous, and there- fore does not evaluate legislative intent. The concurrence reaches the same I conclusion. cannot agree ap- their proach. is This not a case litigant where a has asserted in a ambiguity single, undefined term. isNor this a case ambiguity alleged where two but reasonable would persons not actually differ as to the interpretation of a statute. The instant case is one involving complex a Statute with unusual grammar and a clause that can be read either limit the of entirety a statutory provision only or to limit one listed Here, inartfully action. drafted Statute is indeed ambigu- ous and the ambiguity latent exists in the of very structure are, Statute. There simply, two reasonable ways which to 4119(a) Therefore, read an Section Statute. of analysis legislative intent necessary prevent an literal overly of interpretation contrary Statute to the drafter’s intent prevent and to an improper of a invalidation criminal statute. 1921(b). Pa.C.S. The majority, by its literal reading, rules that the General Assembly any intended to a prohibit mere use of recognized mind, word or mark. To my reading is flawed. The legislative intent behind the Statute is clear. The General Assembly intended to only criminalize of deceptive use a or recognized word mark in the context a sale or distribu- tion. The Assembly’s General use of the term “counterfeit” emphasizes that use or deceptive word mark is sold, property knowingly Intellectual affixed to item offered sale, identifying for rendered, manufactured or distributed or services offered or authority without the owner intellectual property. 4119(i). 18 Pa.C.S. property" The term “intellectual is defined as trademark, mark, name, label, term, “[a]ny device, design service trade adopted by person identify or person's word used goods services.” Id. Moreover, pre- no reason for there would be
prohibited. in the instance “intent to or distribute” of an sell sumption if to sell or distribute was items an intent possession *23 the Statute’s for a violation of the Statute. When required it clear that both becomes comprehensively read sections required a sale or distribution are order deception the Statute. violate scant,7 has review of the Statute been
Although appellate intent that recognized legislative has the Superior the Court of in the a sale or only applied context the Statute 881, v. 878 A.2d 883- George, In Commonwealth distribution. the evaluated the (Pa.Super.2005), Superior Court Statute 86 where sufficiency challenge the context of a evidence videotapes counterfeit displaying the defendant was arrested did argued street. The public on a defendant Statute 4119(b) that intent to sell not because states apply Section a possesses be inferred where defendant counterfeit may items, just 10 argued possessed and the defendant that he time of arrest. Id. at 885. videotapes counterfeit his rejecting argument, Superior In the defendant’s Court where a although reasoned that intent to sell could be inferred items, so as the possessed long more than defendant sell, pos could an intent to Commonwealth demonstrate In so illegal. holding, session of fewer items was also Id. intent of implicitly legislative ruled Superior apply was the Statute to where trademark only the Statute for is done in the context of a sale or distribution. counterfeiting Similarly, applies only arising the Statute circumstances not counterfeiting. apply from does outside Statute context, a mark recognized whether word or regardless intent of the not to criminalize the is used. The Statute contrary, or To recognized phrase. mere use a word (Pa. Crespo, See 884 A.2d 964-66 Commw.2005) (discussing seizure of items in the case counterfeit Statute); a has where defendant been accused a violation Sow, (holding (Pa.Super.2004) Commonwealth v. 860 A.2d 154-55 law). preempted federal Statute is prevent of the is to from decep- the intent Statute individuals utilizing a mark in the context of a sale or tively recognized distribution. 4119(a) Statute requirements
Section of the sets forth the 4119(a), violation of the Pursuant Section Statute. uses, manufactures, person knowingly displays, who “[a]ny advertises, distributes, sale, possesses offers for sells or to sell or bearing intent distribute items or services mark of the shall be crime of guilty identified counterfeit 4119(a) (emphasis trademark counterfeiting.” Pa.C.S. added). Although the of the could be more grammar Statute 4119(a) Statute, precise, pursuant use of Section mark is criminal where a person counterfeit intends to distribute sell or an item service that mark. Al- mark, Statute mentions the use of a though counterfeit *24 use of mere that mark not sufficient is to violate statute. Statute, To violate the person a must use the mark and intend or to sell distribute items that mark. bearing deceptive The clause “with intent to or sell distribute” modifies all of the it. language preceding
Had the drafters inserted the clause “with intent to sell or sentence, earlier in distribute” there could be no dispute they only prohibit that intended to of a deceptive use mark in of a context sale or distribution. following The language have been would clearer and less “any ambiguous: person who, with services, intent to sell distribute or items or any uses, knowingly manufactures, advertises, displays, distrib- utes, sale, or possesses offers for or sells items services bearing or counterfeit identified a mark shall be guilty the crime trademark counterfeiting.” appar- The drafters selected an ently awkward location for the clause “with intent distribute,” to sell or poor but that choice should invalidate the entire Statute. major
The interpretation distinction between thе majority’s of the Statute my interpretation own revolves around all whether use of terms or protected prohibited, words is or words in the context only the use of terms and
whether sale majority interprets The prohibited. or distribution in the use of terms and words only prohibit concedes that if majority The context of sale or distribution. read to apply to sell or distribute” is “with intent phrase in the of the offense the entire list of verbs definition subsection(a), its reach to then the limits properly Statute A.2d at 187. unprotected activity. Majority Op. “with intent phrase then becomes whether question The immediate words “sells only or modifies to sell distribute” phrase, phrase or whether possesses” precede In language modifies all the of this sentence Statute. use, words, manufacture, display, is it adver- illegal other distribute, tise, bearing protected or offer for sale an item manufacture, use, advertise, it illegal display, mark —or is distribute, item mark protected or offer for sale an that item is intended to be sold or distributed? only where could have drafted the Statute Assembly The General concretely question. resolve this manner would majority, rigid application grammar in their rules to the interpretation, phrase detriment of realistic holds the immediate only “with intent to sell or distribute” modifies words “sells or possesses.” it unclear whether the “with intent phrase
The fact that the immediate words “sells to sell or distribute” modifies or modifies all the verbs the sentence demon- possesses” *25 majority’s limiting in the ambiguity strates Statute. grammar while consistent with strict interpretation, perhaps rules, the is inappropriate ambiguous is here where Statute in requirements intent is clear. legislative and Other sentence, verbs, clearly which to all the enumerated apply term clearly. example, “knowingly” not set off For does the which fol- modify only immediately the word “manufactures” purse If an end-user carries a counterfeit but has no lows? counterfeit, majority’s under the knowledge purse that the is rules, subject that user is to application grammar strict term may only modify arrest because the “knowingly” Plainly legislature verb “manufactures.” had no such illegal intention. It is to knowingly manufacture counterfeit item, certainly prohibited but the other actions are illegal also if knowingly. done opinion,
In my ambiguous Statute is and common sense must be utilized concert with grammatical interpretation legislature’s and the intent in to at order arrive the Statute’s meaning. This common sense is crucial approach here where the alternative tois strike down a criminal statute unnecessar- Statute, ily. The hardly clarity, while a model of is neither unconstitutionally vague nor overbroad. Persons of ordinary need not or intelligence guess the meaning application of the Statute. Nor does the Statute fail to describe a violation stated, pursuant sufficient definiteness. to Simply it Statute deceptive criminal to make of a recognized use word or mark the purpose of a sale distribution. When Statute is read the context Assembly’s General legislative intent, clear as evidenced presumption 4119(b), intent set distribute sell forth Section it is clear that use mere of mark is not criminalized. The grammar Statute, while unconventionally somewhat structured, nevertheless defines a violation pass sufficiently void-for-vagueness and overbreadth review it is not neces- sary to strike down the Statute.
Respectfully, we should mindful that our role determine whether there exists any constitutional interpreta- tion of the Statute when read in context of the legislative Here, intent. the Commonwealth offers a reading Statute that sufficiently renders the Statute so well-drafted to be The majority constitutional. declines to adopt no reading offers different constitutional interpretation. I do not believe we should decline a constitutional reading statute where one is possible. Any doubts as the constitu- tionality are to be resolved in Statute favor of finding that it is constitutional. *26 have more
Here, precise could chosen Assembly the General infringe- trademark capable prohibiting of language equally is not the before this Court. See inquiry ment. But that Powell, should not 316. This Court 423 U.S. 96 S.Ct. it unconstitutional because could the Statute declare my In artfully opinion, majority drafted. have been more determining for whether a is erodes the standard inappropriate particularly unconstitutional. erosion is case, it conduct was Appellees’ where is clear the instant interpretation reasonable illegal any and under prohibited Nike transported counterfeit Appellee the Statute.8 Omar state for resale. O’Connor was Appellee sneakers across lines parking Penn in a lot selling arrested counterfeit State hats of these Clearly, Appel- outside Beaver conduct Stadium. trademarks, Penn and lees was a violation Nike and State’s was That should have illegal. Appellees behavior Appellees’ Statute, due to overbreadth of the their convictions overturned guise invoking protections under the First Amendment, injustice. an aura has precedent majority
Even more is the set problematic mere poor grammar Now that inarticulateness or is opinion. unconstitutional, declaring the standard for a statute scores statutes have to be unconstitu- may serious criminal declared charged tional. The invites defendant under a opinion constitutionality the statute’s challenge criminal statute and suggests may that such a be successful based challenge upon I Assembly’s poor placement. the General word believe this and, I precedent agree majority creates unwise while drafted, I that the cannot conclude that it inartfully Statute so as to burden of poorly significant drafted overcome Based required unconstitutionality. to demonstrate on proof majority respectfully I dissent from the foregoing, constitutional. would hold that Statute is constitutionality applied, question presented 8. Had we with a been court, majority examples i.e. as in set forth the trial may finding litigant different. result have been Such would viability. impinge the Statute’s