THE STATE OF OHIO, APPELLANT, v. TROISI, APPELLEE.
No. 2008-2490
Supreme Court of Ohio
Submitted September 30, 2009-Decided February 4, 2010
124 Ohio St.3d 404, 2010-Ohio-275
MOYER, C.J.
{11} This case requires us to determine whether the requirements of
{12} Appellee, Juanita Troisi, hosted a “purse party” in Kirtland, Ohio, where she оffered purses and other items for sale. The Kirtland police were informed of this party by an invitee. After determining that “knock-off designer labels” might be sold at the party, Sergeant Jamie Tavano contacted Timothy Richissin for help on the case. Richissin, a sergeant with the Cleveland Police Department, was also employed at the time by the Professional Invеstigation Consulting Agency, where he specialized in investigating intellectual-property issues. The police conducted a raid of the purse party, seizing over 1,700 allegedly counterfeit purses, wallets, and jewelry pieces. At the scene, the police also obtained a written statement from Troisi in which she admitted knowing that “the purses and wallets were not аuthentic.”
{13} Troisi was indicted on four counts:
{14} A jury found Troisi guilty of one count of trademark counterfeiting and one count of possessing criminal tools. The Elеventh District Court of Appeals reversed, holding that there was insufficient evidence for the jury to find that the items seized bore a counterfeit mark as defined by law and that Richissin‘s testimony was improper because it was introduced without a proper foundation. Troisi‘s convictions were vacated. We accepted the state‘s discretionary appeal.
III
{15} The General Assembly has defined the crime of trademark counterfeiting in
{17} In deciding whether the evidence presented at trial was sufficient to support a criminal conviction, a court must ” ‘determine whether such evidence, if believed, would convince the average mind of the defendant‘s guilt beyond a reasonable doubt.” In re Washington (1998), 81 Ohio St.3d 337, 339, 691 N.E.2d 285, quoting State v. Jenks (1991), 61 Ohio St.3d 259, 574 N.E.2d 492, paragraph two of the syllabus. The evidence is viewed in the light most favorable to the prosecution, and a reviewing court will not infringe upon the province of the jury by reweighing the evidence. Id. If the evidence is found to be insufficient to prove every element beyond a reasonable doubt, the Double Jeopardy Clausеs of the United States and Ohio Constitutions bar retrial. State v. Brewer, 121 Ohio St.3d 202, 2009-Ohio-593, 903 N.E.2d 284, ¶ 15. In contrast, when sufficient evidence has been introduced at trial to convict, “but on appeal, some of that evidence is determined to have been improperly admitted,” retrial is not barred. Id. at ¶ 25.
{18} We hold that the state provided insufficient evidence to show that the trademarks Richissin compared with the marks on the seized bags were registered on the principal register in the United States Patent and Trademark Office. The statute contains very specific language protecting only those marks registered on the principal register. Richissin testified that through his “training and experience,” he was aware that the marks were registered but that he had personally never seen any documents from the United States Patent and Trademark Office showing the registration. He had never obtained official trademark records, he had never seen any of the trademarks on a registry document, and he did not know when the trademarks were issued, when they expired, or whether they had been renewed. In sum, his testimony was not sufficient to prove beyond a reasonаble doubt that the marks were registered. Richissin‘s testimony proved, at best, that the seized items bore marks that were “identical [to] or substantially indistinguishable” from marks provided to him during his training, but not identical to or indistinguishable from any mark proven to be registered as required by the statute.
{19} Nor does Troisi‘s written confession help the prosecution meet its burden of proving the registration elеment of the crime. Troisi admitted that she knew that the “purses and wallets were not authentic,” but that admission does not prove that any of the marks Richissin used in his comparisons were registered. The confession may be useful to the prosecution in proving other elements of their case, but it does not prove the registry status of any trademark.
{111} We need not address the state‘s second proposition of law, which argues that the appellate court‘s decision improperly limited the prosecutor to introducing certified copies of trademark registrations to prove the “identical or substantially indistinguishable” element of the crime. This issue is moot, as the state did not first prove the registration of the trademarks to which the seized trademarks must be identical or substantiаlly indistinguishable.
{12} For the foregoing reasons, we affirm the judgment of the court of appeals.
Judgment affirmed.
PFEIFER, O‘DONNELL, LANZINGER, and CUPP, JJ., concur.
LUNDBERG STRATTON and O‘CONNOR, JJ., dissent.
LUNDBERG STRATTON, J., dissenting.
{13} I respectfully dissent because I believe that the state presented sufficient evidence to support Troisi‘s conviction for selling counterfeit goods pursuant to
{14} It is a crime to offer for sale and to sell goods with knowledge that a counterfeit mark is attached tо or otherwise used in connection with those goods.
{15} “It is identical with or substantially indistinguishable from a mark that is registered on the principal register in the United States patent and trademark office for the same goods or services as the goods or services to whiсh or in connection with which the spurious trademark or spurious service mark is attached, affixed, or otherwise used * * *,” and “[i]ts use is likely to cause confusion or mistake or to deceive other persons.” (Emphasis added.)
{16} A jury convicted Troisi of one count of trademark counterfeiting under
{17} The majority affirms the court of appeals’ judgment, holding that there was insufficient evidence to show that the trademarks at issue were registered because Richissin had never personally viewed or obtained any trademark records. Majority opinion at ¶ 8. The majority further states that “Richissin‘s testimony proved, at best, that the seized items bore marks that were ‘identical [to] or substantially indistinguishable’ from marks provided to him during his training, but not identical to or indistinguishable from any mark proven to be registered as required by the statute.” Id. Finally, the majority determines that its decision makes moot the issue whether the appellate court‘s decision “improperly limited the prosecutor to introducing certified copies of trademark registrations to prove the ‘identical or substantially indistinguishable’ element of the crime.” Id. at ¶ 11.
Expert Testimony
{18} In essence, the majority holds that Richissin‘s training is insufficient to qualify him as an expert to testify as to whether the trademarks at issue herein were registered or whethеr they were “identical with or substantially indistinguishable from” the marks on the seized goods because he had not personally viewed the registered trademarks. However, the majority cites no law to support its conclusion that trademark-counterfeiting cases can be proved only by direct evidence or personal observation of the trademark, and
{19} There are few Ohio cases that interpret
{20} While personal observation or direct evidence of a trademark might be the best evidence in a tradеmark-counterfeiting case, it is not the only means of proving that a trademark is registered. Nor is it the only means of proving that a counterfeit mark is identical to or substantially indistinguishable from an authentic mark. See United States v. Guerra (2002), 293 F.3d 1279, 1288
{21} “Evid.R. 702(B) provides that a witness may qualify as an expert by reason of his or her specialized knowledge, skill, experience, training, or education. Neither special education nor certification is necessary to confer expert status upon a witness. The individual offered as an expert need not have complete knowledge of the field in question, as long as the knowledge he or she possesses will aid the trier of fact in performing its fact-finding function.” State v. Hartman (2001), 93 Ohio St.3d 274, 285, 754 N.E.2d 1150, citing State v. Baston (1999), 85 Ohio St.3d 418, 423, 709 N.E.2d 128; State v. D‘Ambrosio (1993), 67 Ohio St.3d 185, 191, 616 N.E.2d 909.
{22} A handbook on intellectual-property crimes published by the United States Department of Justice states that “[w]hen trying to determine which trademarks the defendant infringed, prosecutors and agents should consult with the victim. Although the government itself can search for trademarks on the United States Patent and Trademark Office‘s website, these searches can be cumbersome. Given the range of perceptible elements that can be registered as marks-witness the color pink for Owеns-Corning fiberglass, the NBC chime, the Burberry plaid, and the shape of the Coca-Cola bottle (respectively U.S. Trademark Reg. Nos. 1439132 and 2380742, 0916522, 2022789, and 1057884)-the victim is best suited to identify which elements were registered as marks and which may have been counterfeited.” (Emphasis added.) United States Department of Justice, Prosecuting Intellectual Property Crimes (3d Ed.2006) 100 (available at http://www.usdoj/criminаl/cybercrime/ipmanual/ipma2006.pdf). Thus, trademark owners would also be best suited to instruct others on differentiating between authentic and counterfeit marks and products.
{23} In the instant case, trademark owners, including Gucci, Prada, Coach, Dior, Fendi, Dooney & Bourke, Tiffany, Burberry, Chanel, Kate Spade, Louis Vuitton, and Versace, trained Richissin to recognize their registered trademarks. The training also taught Richissin how to recognize counterfeit goods from authentic trademarked goods by looking for “red-flag” indicators with respect to the product‘s security tags, logos, and packaging. Since 2002, Richissin has attended approximately 30 such training sessions and receives updates regarding product changes by e-mail. Richissin also testified that hе has participated in investigating over 50 trademark-counterfeiting cases in the past several years.
Evidence
{25} Richissin testified that through his training, he learned that the Gucci, Prada, Coach, Dior, Fendi, Dooney & Bourke, Tiffany, Burberry, Chanel, Kate Spade, Louis Vuitton, and Versace trademarks were registered on the principal register in the United States Patent and Trademark Office. He also testified that the goods offered by the state as evidence were represented as being made by these registered-trademark owners.
{26} Richissin further testified that these goods had marks affixed to them that were identical or substantiаlly indistinguishable from authentic, registered trademarks. For example, he testified that a mark appearing on a purse seized from Troisi was “identical” to the registered Coach trademark. Yet, he testified, the purse was not an authentic Coach purse, because it had plastic handles, which authentic Coach purses do not have. Richissin also testified that a purported Tiffany trademark was not affixed to a piece of jewelry in the proper location to be an authentic Tiffany trademark, and consequently, the mark was counterfeit, as was the jewelry.
{27} Distinguishing such fine details, especially where the counterfeit marks are almost indistinguishable from authentic marks, requires extensive training and experience оf an expert because it is beyond the knowledge of the average juror. In other words, the more substantially indistinguishable the counterfeit trademark is, the more important it is to have the expert explain the differences between authentic goods and counterfeit goods.
{28} Comparison of a counterfeit mark to an authentic trademark by a layman may be of little value in reaching the ultimate determination whether goods are counterfeit. The majority gives far too much weight to this single factor.
{29} Thus, I would hold that Richissin‘s testimony aided the jury in determining whether Troisi engaged in trademark counterfeiting. See State v. Hartman (2001), 93 Ohio St.3d 274, 285, 754 N.E.2d 1150.
{30} The record also contains statements from Troisi admitting that the goods seized were counterfeit. For example, Richissin testified that during his investigation in this case, he attempted to buy a purse from Troisi. The prosecutor asked Richissin the following questions regarding his purchase of the purse from Troisi:
{31} “Q. Was there any discussion prior to your purchase?
{132} “A. We tried to get [Troisi] down on the price. We asked her if we could purchase the purse for forty dollars, rather than fifty dollars.
{1134} “A. She said to me, Do you know [how] much it would cost to buy that purse if it was real.”
{135} Morеover, in her statement to police, Troisi stated that she “had copy bags” and knew that “it was error to sell them.” She also stated that she “knew that the purses and wallets were not authentic.”
{36} Troisi‘s admissions regarding her knowledge of the counterfeit nature of the goods are totally ignored by the majority. I believe that Troisi‘s testimony, along with the seized goods and Richissin‘s testimоny, establishes her guilt beyond a reasonable doubt.
Conclusion
{137} Viewing the evidence in a light most favorable to the state, I would find that there is sufficient evidence to support Troisi‘s conviction for trademark counterfeiting. Accordingly, I would reverse the court of appeals judgment and reinstate the jury‘s verdict.
O‘CONNOR, J., concurs in the foregoing opinion.
O‘CONNOR, J., dissenting.
{138} I join Justice Lundberg Stratton‘s dissent but write separately to focus on the fаct that the trier of fact, the jury, was in the best position to discern the weight and quality of the state‘s evidence, including the testimony of the state‘s expert, Mr. Richissin.
{139} The court of appeals’ decision focuses on the state‘s failure to introduce a certified copy of the trademarks on file with the United States Patent and Trademark Office and concludes that thе state‘s omission is grounds for reversing the jury‘s verdict. But the focus should remain on the rule that it is the role of the jury, not the appellate court, to determine the weight and credibility of the evidence adduced at trial, including Richissin‘s testimony that he can identify a counterfeit good by virtue of his training and experience.
{140} The jury‘s duty is to weigh the credibility of any witness, including an expert. As we stated in State v. Jamison (1990), 49 Ohio St.3d 182, 191, 552 N.E.2d 180, “[t]he weight to be given evidence and the credibility of witnesses are jury issues. State v. DeHass (1967), 10 Ohio St.2d 230, 39 O.O.2d 366, 227 N.E.2d 212, paragraph one of the syllabus. ‘It is the minds of the jurors and not the minds of the judges of an appellate court that are to be convinced.’ State v. Petro (1947), 148 Ohio St. 473, 501, 36 O.O. 152, 163, 76 N.E.2d 355, 369.”
LUNDBERG STRATTON, J., concurs in the foregoing opinion.
Charles E. Coulson, Lake County Prosecuting Attorney, and Teri R. Daniel and Charles F. Cichocki, Assistant Prosecuting Attorneys, for appellant.
Argie, D‘Amico & Vitantonio and Dominic J. Vitantonio, for appellee.