Pennsylvania Supreme Court overturns state anti-counterfeiting law

The Pennsylvania  Trademark Counterfeiting Act, codified at 18 Pa.C.S. 4119, established trademark counterfeiting as a crime under Pennsylvania state law.  Violations of the law could result in penalties of up to three times the retail value of goods sold with a counterfeit mark.

On October 6, 2009, the Pennsylvania Supreme Court overturned the Pennsylvania anti-counterfeiting law in the case of Commonwealth of Pennsylvania v. Omar.  Affirming the decision of the trial court, the Supreme Court found the language of the statue unconstitutionally overbroad. 

The statute defined the crime by stating:  “Any person who knowingly manufactures, uses, displays, advertises, distributes, offers for sale, sells, or possesses with intent to sell or distribute any items bearing or identified by a counterfeit mark shall be guilty of the crime of trademark counterfeiting.”  The statuted defined a “counterfeit mark” as, among other things, “any unauthorized reproduction or copy of intellectual property.” 

The Court found these sections to result in a prohibition against any use of a trademark, including uses that may be constitutionally protected speech.  As examples, the Court stated that the use of the trademark “Penn State” on a protest sign would be a crime under the law, and that the Court’s own use of the marks “Nike” or “Penn State” in its opinion would be prohibited.