Ohio Supreme Court Decision: Expert’s Testimony Without Viewing U.S. Trademark Register Insufficient to Support Counterfeiting Conviction

State v. Troisi, Slip Opinion No. 2010-Ohio-275.
Lake App. No. 2008-L-060, 179 Ohio App.3d 326, 2008-Ohio-6062. Judgment of the court of appeals affirmed.
Moyer, C.J., and Pfeifer, O'Donnell, Lanzinger, and Cupp, JJ., concur.
Lundberg Stratton and O'Connor, JJ., dissent.
Opinion: http://www.supremecourt.ohio.gov/rod/docs/pdf/0/2010/2010-Ohio-275.pdf

(Feb. 4, 2010) The Supreme Court of Ohio today ruled that a trademark-investigation expert’s testimony that he is aware that certain trademarks are registered but that he has never personally viewed the trademark-registration documents is insufficient to prove by itself that the trademarks are registered on the principal register in the United States Patent and Trademark Office as required for a conviction for trademark counterfeiting under R.C. 2913.34.

The Court’s 5-2 decision, which affirmed a ruling by the 11th District Court of Appeals, was authored by Chief Justice Thomas J. Moyer

The case involved Juanita Troisi of Kirtland, who was arrested and charged with trademark counterfeiting and possession of criminal tools after police raided a “purse party” hosted by Troisi at which she sold and offered for sale hundreds of purses, wallets, belts, jewelry items and other merchandise that were imitations or “knock-offs” of designer brand name items.

At trial, the state presented expert testimony by Timothy Richissin, a Cleveland police officer specializing in intellectual property crimes who has also served as a private consultant to brand name manufacturers and as an investigator of alleged knock-off merchandise. During his testimony, Richissin identified several examples of items seized by police at Troisi’s party as counterfeit, and not legitimate products of the manufacturers identified on the labels, based on his personal familiarity with the designers’ products. Richissin stated his opinion that the trademarks on each of the pieces he examined were substantially indistinguishable from the brand name manufacturer’s real trademarks. The state did not enter certified copies of the registered trademarks as evidence; no other witness testified about the registration status of the trademarks; and no examples of genuine trademarks or genuine products were introduced at trial.

A jury found Troisi guilty of one count of trademark counterfeiting and one count of possessing criminal tools. She appealed, and the 11th 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. Based on those findings, the court of appeals vacated Troisi’s convictions. The state sought and was granted Supreme Court review of the 11th District’s decision.

Writing for the Court, Chief Justice Moyer noted that in order to secure a conviction for violating R.C. 2913.34(A)(4), the state must prove that a defendant knowingly sold, offered for sale or otherwise made available goods “with the knowledge that a counterfeit mark is attached to, affixed to, or otherwise used in connection with the goods.” He noted further that R.C. 2913.34(F) defines a “counterfeit mark” as “a spurious trademark” that is “identical with or substantially indistinguishable from a mark that is registered on the principal register in the United States patent and trademark office” and the use of which “is likely to cause confusion or mistake or [to] deceive other persons.”

Applying those statutory requirements to Troisi’s case, the Chief Justice wrote: “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 if they had been renewed. In sum, his testimony was not sufficient to prove beyond a reasonable doubt that the marks were registered. Richissin’s testimony proved, at best, that the seized items bore marks that were ‘identical or substantially indistinguishable’ to marks provided to him during his training, but not to any mark proven to be registered as required by the statute.”

Because proof that a falsified trademark is a copy of one that appears in the national registry is an essential element of the crime of counterfeiting, the Chief Justice wrote, the evidence presented by the state was insufficient to support Troisi’s conviction and it must therefore be vacated. He wrote further that “(t)his gap in evidence is not due to a ‘procedural deficiency,’ permitting a retrial, as suggested by the state. Our holding that the evidence is insufficient for a conviction is based on a review of all the evidence, including Richissin’s testimony. Double-jeopardy protections therefore attach, and retrial is barred.”

Chief Justice Moyer’s opinion was joined by Justices Paul E. Pfeifer, Terrence O’Donnell, Judith Ann Lanzinger and Robert R. Cupp. Justices Evelyn Lundberg Stratton and Maureen O’Connor entered dissenting opinions.

Justice Stratton disagreed with the majority’s determination that the state’s evidence was insufficient to support a conviction because Richissin had not compared the trademarks on the goods offered by Troisi with the actual registered trademarks on file in the principal registry in Washington. She reasoned that neither federal nor state law require that a witness must personally observe or submit copies of an authentic trademark in order to qualify as an expert witness in a trademark-counterfeiting case. She went on to recognize that Richissin received extensive trademark-counterfeit training and had investigated over 50 trademark-counterfeiting cases. Thus, Justice Stratton believed that “Richissin’s training and experience were sufficient to permit him to provide expert testimony that the trademarks in this case were registered and that they were identical or substantially indistinguishable to the marks on the goods seized from Troisi.” She concluded that Richissin’s testimony, the evidence seized from Troisi, and Troisi’s confession were sufficient to support Troisi’s conviction.

Justice O’Connor wrote: “I join Justice Stratton’s dissent, but write separately to focus on the fact that the trier of fact, the jury, was in the best position to discern the weight and quality of the state’s expert, Mr. Richissin. ... The jury’s duty is to weigh the credibility of any witness, including an expert. ... Here the jury was charged on the law and the elements of R.C. 2913.34(A)(4), and it applied the law to the evidence. The jury concluded that the state had proved its case. In light of Troisi’s admission that she knew the goods were counterfeit, and Richissin’s testimony ... that Troisi’s goods were not authentic, the jury’s verdict should be respected.” Justice O’Connor’s opinion was joined by Justice Stratton.

Contacts
Teri Daniel, 440.350.2683, for the Lake County prosecutor’s office.

Dominic Vitantonio, 440.449.3333, for Juanita Troisi.

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