DMLP files Amicus Brief Against Massachusetts's 'Anti-Counterfeiting' Law

Earlier this week the CMLP (under its new name, the Digital Media Law Project) sought leave to file an amicus brief in Boston Municipal Court in the case of Commonwealth v. Busa, which concerns a prosecution under Massachusetts's anti-counterfeiting law, M.G.L. ch. 266 § 147 ("Section 147"). I wanted to share a little bit about the statute, and why we decided to take the unusual step of appearing at the trial court level to urge the court to void the statute.

Section 147, at a quick glance, may look like a traditional trademark regulation. The statute punishes whoever willfully "manufactures, uses, displays, advertises, distributes, offers for sale, sells or possesses with intent to sell or distribute any item or services bearing or identified by a counterfeit mark." So far, highly unremarkable.

The statute deviates from mainstream trademark law, however, in its definition of "counterfeit mark," which includes "any unauthorized reproduction or copy of intellectual property." "Intellectual property," in turn, is defined as "any trademark, service mark, trade name, label, term, device, design or word" that is used by a person and is registered in a state trademark database or the USPTO Principal Register. Notably absent is the central test of trademark infringement: that the use is likely to cause confusion as to the origin or sponsorship of goods or services.

Without that, we have the criminalization of any manufacture, use, display, distribution, or sale of any item or service bearing a word, image, design, or other trademark that another person registered to identify goods or services, without such person's permission.  The Commonwealth need not prove that a consumer was confused or deceived, or that there was any form of source dilution, or even that the use bore any relationship to the types of goods or services relevant to the underlying trademark owner. No exceptions are made in the statute, not even for "non-trademark" uses, such as expressive uses or news reporting.

This is hard to appreciate in the abstract, so let me illustrate. The Boston Globe ran a story today entitled "Harvard Alumni Association apologizes for Unabomber listing." (The full story online is behind a paywall, but the headline suffices for this point.) HARVARD ALUMNI ASSOCIATION is a registered wordmark of Harvard College (USPTO Registration No. 3,106,854). By printing this title in the Globe today the newspaper displayed this mark, without authorization, on an "item or service." This meets the elements of Section 147.

And it gets worse: Because the use doesn't have to even refer to the original trademark, the statute criminalizes the act of displaying a word that by pure coincidence happens to be registered. For example, printing "Boston," in any context, would appear to violate Section 147, as at least nine different companies have registered the wordmark BOSTON for some form of good or service. This is what happens when you separate trademark law from its theoretical underpinnings – you get absurd results.

As we argue in our brief, this blanket criminalization is unconstitutionally overbroad under the First Amendment, because it criminalizes a wide array of constitutionally protected speech. Indeed, we are not the first to argue as such. Pennsylvania passed a highly similar law around the same time that Massachusetts passed its law, and three years ago the Supreme Court of Pennsylvania found the law unconstitutionally overbroad in Commonwealth v. Omar. In striking their version of the statute, the court noted: 

When the relevant definitions are inserted into the definition of the offense, the statute criminalizes the use of any items bearing an unauthorized reproduction of terms or words used by a person to identifythat person's goods or services. . . . As highlighted by the trial court, the statute, therefore, unconstitutionally prohibits protected speech, including the use of words on a sign praising or protesting any entity with a trademarked name, including Penn State. Taken to the extreme, even our use of the words "Nike" and "Penn State" in this opinion without the permission of the company or the university would fall under the current definition ofa counterfeit mark. Clearly, the statute prohibits a substantial amountof protected speech.

The effect of this is a perpetual cloud of criminality around people who routinely publish conten