SIXTH DIVISION
June 29, 2018
No. 1-15-2826
2018 IL App (1st) 152826
IN THE
APPELLATE COURT OF ILLINOIS
FIRST JUDICIAL DISTRICT
THE PEOPLE OF THE STATE OF ILLINOIS, ) Appeal from the
) Circuit Court of
Plaintiff-Appellee, ) Cook County.
)
v. ) No. 14 CR 10077
)
ABDOURHMAN GUEYE, ) Honorable
) William H. Hooks,
Defendant-Appellant. ) Judge Presiding.
)
JUSTICE CONNORS delivered the judgment of the court, with opinion.
Presiding Justice Hoffman and Justice Delort concurred in the judgment and opinion.
OPINION
¶1 Defendant Abdourhman Gueye was convicted of counterfeit trademark violation
following a bench trial and was sentenced to one year of probation. On appeal, defendant
contends that the State failed to prove him guilty beyond a reasonable doubt of violating the
Counterfeit Trademark Act (Act) (765 ILCS 1040/2 (West 2014)), where he lacked the intent to
deceive. Defendant argues in the alternative that the Act, which criminalizes knowingly selling a
product with a counterfeit mark, violates state and federal constitutional guarantees of due
process. For the following reasons, we affirm.
¶2 BACKGROUND
¶3 Defendant was charged with violating section 2 of the Act. The indictment stated:
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“[Defendant] knowingly kept, or had in his possession with the intent that the
same should be sold or disposed of, any goods or merchandise to which any
counterfeit mark or imitation trademarks were attached or affixed or in which any
counterfeit mark or imitation trademarks were printed, painted, stamped or
impressed to wit: items bearing the counterfeit trademark of Michael Kors,
Burberry, and Tory Burch of which he was not the rightful owner of such
trademarks and he knowingly sold, offered for sale, or held for sale fewer than
100 counterfeit items, and he has previously been convicted of a violation of the
*** Act.”
¶4 Defendant waived his right to a jury. At the bench trial, Officer Daniel Stapleton testified
that on May 17, 2014, at approximately 2 p.m., he was assigned to work on undercover buys of
counterfeit purses. Officer Stapleton testified that he was working with Lindsey Thompson, from
the Department of Homeland Security, and that he was assigned to do an undercover buy on the
corner of E. Chicago Avenue and N. Rush Street Officer Stapleton testified that on the date in
question, defendant was standing at that corner by his “purse stand,” which was a rack and table
with numerous purses hanging from it. Agent Thompson handled the purses and looked at them.
Officer Stapleton asked defendant the price of the purses Agent Thomas was holding, and
defendant responded that it was $20. Officer Stapleton testified that he asked defendant “why a
Michael Kors purse was only twenty dollars.” Officer Stapleton testified that, “[Defendant] said
they were fake. That’s why they were so cheap.” Officer Stapleton then purchased the purse.
¶5 Officer Stapleton testified that he and Agent Thompson then took the purse to Kevin
Read, a private investigator with whom they were working, for inspection. Officer Stapleton
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testified that after conversing with Read, other officers they were working with arrested
defendant.
¶6 Read testified that he is a licensed private investigator, and that one of his responsibilities
is to work with trademark companies, and to assist them in investigating individuals or fixed
locations that “sell counterfeit merchandise.” Read testified that he has done work for Nike,
Louis Vuitton, Burberry, Tory Burch, Chanel, Michael Kors, and others. Read testified that he is
trained by brand owners on how to “identify counterfeit merchandise.”
¶7 Read testified that he attended trainings with these brands, wherein he met with a
representative from each company. Read is then provided with training materials, including
direction on how to identify counterfeit merchandise. Read specifically testified that the brands
“provide me with samples of both counterfeit and authentic merchandise,” as well as information
on how to specifically identify “counterfeit merchandise as opposed to an authentic item.”
¶8 The State then expressed that it wished to qualify Read as an expert in identifying
counterfeit purses. Defense counsel made a request to ask the witness questions regarding his
qualifications as an expert. Defense counsel then asked Read what his definition of counterfeit
was, to which Read replied that if an item depicted a trademark, but that item was not
manufactured by that brand company, it would be deemed to be counterfeit. Defense counsel
then asked Read if there was a distinction between counterfeit and imitation, to which Read
replied that the item has to have the actual trademark affixed to the item, and if the trademark is
affixed to the item, but the item was not manufactured by that company, then it is a counterfeit
item. The court then found Read to be an “expert witness in the area of counterfeit purse
identification.”
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¶9 Read testified that his role on the day in question was to identify the “suspect counterfeit
merchandise.” Read testified that Officer Stapleton and Agent Thompson tendered a handbag to
him, which they had purchased from defendant. It was orange in color, and depicted the
trademark for Michael Kors, “[s]pecifically the MK marking with the word Michael Kors.” Read
stated that he pulled on the label and noticed that the label was affixed through two metal
brackets onto the bag. Read testified that on an authentic bag, a hole would not have been cut
into the bag because that causes the label to easily pop out. He then popped the label out in open
court.
¶ 10 Read also testified that a silicone gel pack was inside the item, which was indicative that
it was counterfeit, and that it was “probably shipped from China, where it was manufactured.”
Read also testified that if it was an authentic Michael Kors bag, it would have an inventory
number affixed to the inside of the bag. Read testified that the hardware would also depict the
Michael Kors trademarks if it was authentic. The item in question had zippers that did not depict
a trademark. After examining the item, Read determined that it was a counterfeit Michael Kors
purse.
¶ 11 Read further testified that on the afternoon in question, he heard defendant say that he
was selling the handbags to make a living, and that he knew the handbags were fake. After
defendant was arrested, Read inspected other items at defendant’s purse stand. He found
handbags and wallets “depicting various trademarks.” Read testified that there were items
depicting trademarks of Tory Burch, Michael Kors, and Burberry.
¶ 12 Read then testified that he inspected a counterfeit Tory Burch purse. He noticed “that the
Tory Burch, the T, the one going up and the one going down, which is the registered trademark
for Tory Burch.” Read testified that the hardware did not display the Tory Burch trademark and
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that an authentic purse would have the trademark on the hardware. Read testified that the
stitching was frayed, and that if it was an authentic handbag, there would be an identification
number on the inside of the bag. It was Read’s opinion that the handbag in question was a
counterfeit item.
¶ 13 The State then showed Read another purse that had been recovered from defendant on the
day in question. Read testified that the purse was not a counterfeit purse. Read testified that
although it had a logo on it, the logo was not a registered trademark, and therefore it was not a
counterfeit purse.
¶ 14 The State then asked to change the indictment to eliminate the word “Burberry” because
there were “additional inventories that we didn’t bring to court, to the courtroom today. There is
no Burberry in these exhibits.” The trial court noted that if the State failed to prove beyond a
reasonable doubt that one of the items was a Burberry item, “that would not eliminate the whole
of the charge.” The parties then stipulated as to several exhibits that depicted the certified copies
of trademarks for Tory Burch and Michael Kors. The State also presented a certified copy of
defendant’s conviction for violating the Act on March 13, 2014. It was a Class A misdemeanor,
for which defendant received one year of conditional discharge.
¶ 15 The trial court then had the parties submit additional briefs discussing the case of People
v. Revlon, Inc., 99 Ill. App. 2d 463 (1968), and its applicability to the case at bar. After hearing
argument and reading the briefs, the trial court found defendant guilty of selling counterfeit
Michael Kors and Tory Burch handbags, and sentenced him to one year of probation. Defendant
now appeals.
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¶ 16 ANALYSIS
¶ 17 On appeal, defendant contends that the State failed to prove him guilty of violating
section 2 of the Act where it failed to prove that he had the intent to deceive consumers.
Alternatively, defendant contends that the Act is unconstitutional.
¶ 18 Proof Beyond a Reasonable Doubt
¶ 19 In analyzing a claim for sufficiency of the evidence, we must determine whether, taking
the evidence in the light most favorable to the State, any rational trier of fact could have found
the essential elements of the crime beyond a reasonable doubt. In re Q.P., 2015 IL 118569, ¶ 24.
It is the responsibility of the trier of fact to resolve conflicts, and weigh and draw reasonable
inferences from the testimony and other evidence. In re Jonathon C.B., 2011 IL 107750, ¶ 59.
The trier of fact need not be satisfied beyond a reasonable doubt as to each link in the chain of
circumstances. Id. ¶ 60. Instead, it is sufficient if all the evidence, taken together, satisfies the
trier of fact beyond a reasonable doubt of the defendant’s guilt. Id. The trier of fact is not
required to disregard inferences that flow normally from the evidence, nor to seek all possible
explanations consistent with innocence and elevate them to reasonable doubt. Id. A conviction
will be reversed only where the evidence is so unreasonable, improbable, or unsatisfactory that a
reasonable doubt of the defendant’s guilt remains. Id. ¶ 64.
¶ 20 We start by reciting the section of the Act under which defendant was convicted. Section
2 of the Act states:
“Whoever uses a counterfeit mark or imitates any trade-mark or service mark of
which he or she is not the rightful owner or in any way utters or circulates any
counterfeit or imitation of such a trade-mark or service mark or knowingly uses
such counterfeit or imitation or knowingly sells or disposes of or keeps or has in
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his or her possession, with intent that the same shall be sold or disposed of, any
goods, wares, merchandise, or other product of labor or service, to which any
such counterfeit or imitation is attached or affixed, or on which any such
counterfeit or imitation is printed, painted, stamped or impressed, or knowingly
sells or disposes of any goods, wares, merchandise or other product of labor
contained in any box, case, can, or package to which or on which any such
counterfeit or imitation is attached, affixed, printed, painted, stamped or
impressed, or keeps or has in his possession with intent that the same shall be sold
or disposed of *** shall be guilty of a Class A misdemeanor for each offense, or
in the case of a counterfeit item shall be punished as provided in Section 8.”
(Emphasis added.) 765 ILCS 1040/2 (West 2014).
¶ 21 In his indictment, defendant was charged with violating section 2 of the Act in that:
“He knowingly kept, or had in his possession with the intent that the same should
be sold or disposed of, any goods or merchandise to which any counterfeit mark
or imitation trademarks were attached or affixed or in which any counterfeit mark
or imitation trademarks were printed, painted, stamped or impressed to wit: items
bearing the counterfeit trademark of Michael Kors, Burberry, and Tory Burch of
which he was not the rightful owner of such trademarks and he knowingly sold,
offered for sale, or held for sale fewer than 100 counterfeit items, and he has
previously been convicted of a violation of the *** Act.”
¶ 22 Accordingly, the elements of the offense that the State had to prove beyond a reasonable
doubt were that defendant (1) knowingly kept or had in his possession, (2) with intent that the
same shall be sold or disposed of, (3) any goods or merchandise to which a counterfeit mark was
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attached or affixed, and (4) that he was not the rightful owner of such trademark depicted. Id.
The only element that the parties contest is the third element: whether the item sold to Officer
Stapleton was affixed with a counterfeit mark.
¶ 23 A counterfeit item is defined in section 1 of the Act as “any goods, components of goods,
or services made, produced or knowingly sold or knowingly distributed that use or display a
counterfeit mark.” Id. § 1. A “ ‘[c]ounterfeit mark’ ” means a “spurious mark”:
“(1) That is applied to or used in connection with any goods, services,
labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms,
boxes, containers, cans, cases, hangtags, documentation, or packaging or any
other components of any type or nature that are designed, marketed, or otherwise
intended to be used on or in connection with any goods or services;
(2) That is identical with, or substantially indistinguishable from, a mark
registered in this State, any state, or on the principal register in the United States
Patent and Trademark Office and in use, whether or not the defendant knew such
mark was so registered; and
(3) The application or use of which either (i) is likely to cause confusion,
to cause mistake, or to deceive; or (ii) otherwise intended to be used on or in
connection with the goods or services for which the mark is registered.” Id.
¶ 24 Accordingly, to prove that the handbags at defendant’s purse stand displayed counterfeit
marks, the State had to prove that the marks were affixed to the handbags, and that such marks
were identical to, or substantially indistinguishable from, the registered Michael Kors and Tory
Burch trademarks. Here, the State presented evidence that the label on the handbag sold to
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Officer Stapleton contained an identical mark to the registered trademark of Michael Kors, which
consisted of “MK” followed by the words “Michael Kors.”
¶ 25 The question then becomes whether the application of the Michael Kors trademark and
the Tory Burch trademark to the handbags in question was “likely to cause confusion, to cause
mistake, or to deceive.” Id. The plain language of the statute makes clear that the “likely to cause
confusion, mistake, or to deceive” portion of the definition of the term “counterfeit mark” is in
connection with “application” of the spurious mark to the item that is to be sold. In other words,
the handbags in question became counterfeit items the moment the registered trademarks of
Michael Kors and Tory Burch were affixed to them because the application of those registered
trademarks were “likely to cause confusion, to cause mistake, or to deceive.” Applying a
registered trademark to a handbag that was not manufactured by the registered trademark holder
is certainly likely to cause confusion, to cause mistake, or to deceive because only an expert,
upon close inspection, would know that the handbag bearing a registered trademark was not
manufactured by the trademark holder. Accordingly, viewing this evidence in a light most
favorable to the State, we find that the trial court did not abuse its discretion in finding that the
State proved beyond a reasonable doubt that the handbags in question bore counterfeit marks and
that defendant violated section 2 of the Act.
¶ 26 Defendant maintains, relying on Revlon, that an intent to deceive is implicit in the term
“counterfeit,” and therefore the handbag was not a counterfeit item because defendant had no
intention of deceiving Officer Stapleton when he told Officer Stapleton that the bag was “fake.”
However, Revlon, which was decided in 1968, was published before any amendments to the
statute in question had been made. Most importantly, the statute in question in Revlon did not
contain a definition for the term “counterfeit item” or “counterfeit mark.” Accordingly, the case
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analyzed the term “counterfeit” in the predecessor to section 2 of the Act, using a different
definition than that which exists in the current version of the Act.
¶ 27 In the Revlon decision, Revlon, Inc., was charged with violating the Illinois Trade Mark
Statute (statute) (Ill. Rev. Stat. 1963, ch. 140, ¶ 25), in that it used Clairol’s registered trademark
on its boxes of hair dye without Clairol’s consent. Revlon, 99 Ill. App. 2d at 464-65. Section 25
of the statute provided, “Every person who shall use or display a trade-mark of which he is not
the lawful owner in any manner not authorized by such owner shall be deemed guilty of a
misdemeanor ***.” Ill. Rev. Stat. 1963, ch. 140, ¶ 25. The only issue on appeal was the “narrow
issue” of whether the statute intended to proscribe conduct in in the absence of any deception.
Revlon, 99 Ill. App. 2d at 466. The court noted that since there were no cases construing or
applying the statute, it would look to other sections of the 1955 revision of Chapter 140. Revlon,
99 Ill. App. 2d at 468. The court discussed section 24 of the statute, which stated:
“Whoever counterfeits or imitates any trademark of which he is not the rightful
owner or in any way utters or circulates any counterfeit or imitation of such a
trade-mark or knowingly uses such counterfeit or imitation or knowingly sells or
disposes of or keeps or has in his possession, with intent that the same shall be
sold or disposed of, any goods, wares, merchandise, or other product of labor to
which any such counterfeit or imitation is attached or affixed, or on which any
such counterfeit or imitation is printed, painted, stamped or impressed, or
knowingly sells or disposes of any goods, wares, merchandise or other product of
labor contained in any box, case, can or package to which or on which any such
counterfeit or imitation is attached *** shall be punished ***.” Ill. Rev. Stat.
1963, ch. 140, ¶ 24.
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¶ 28 The court then stated, “ ‘Counterfeit’ means ‘false representation’ or ‘imitation with
intent to deceive,’ thus it may be said that something which is counterfeit is an imitation but it is
more than an imitation, it is imitation plus deception.” Revlon, 99 Ill. App. 2d at 471 (quoting 10
Words & Phrases 40). The court stated that, “Deception does not arise from mere imitation of a
trade-mark but does arise from imitation and use in connection with the promotion of goods or
services.” Id. The court then concluded that because section 25 of the statute, which penalized a
person for there mere “use or display” of a trademark, and did not include the word “counterfeit”
or any element of deception, failed to state an offense. Id. at 473.
¶ 29 In the case at bar, on the other hand, the offense for which defendant was charged—
knowingly selling items to which a counterfeit mark is affixed—includes the term “counterfeit
mark,” which is now defined as a “spurious mark,” affixed to any goods, which is “likely to
cause confusion, to cause mistake, or to deceive.” 765 ILCS 1040/1 (West 2014). Moreover, in
People v. Ebelechukwu, 403 Ill. App. 3d 62, 67 (2010), a case that was decided based on the
current language of the Act, this court noted that the Act “provid[es] criminal penalties for
trafficking in counterfeit goods to which a trademark is attached.” This court stated that the Act
was intended to “protect trademark holders from misappropriation of their investment and
penalize those individuals who infringe on trademarks by trafficking in counterfeit goods.” Id.
Accordingly, the purpose of the Act is not only to penalize those individuals selling counterfeit
items under the guise that the items are authentic, but also to penalize those who disclaim to the
consumer, as was done in this case, that the item is “fake.” In both scenarios, the offender is
infringing on trademarks by trafficking counterfeit items bearing registered trademarks, and
misappropriating the investment of the trademark holder.
¶ 30 Constitutionality of Statute
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¶ 31 Defendant alternatively argues that section 2 of the Act is unconstitutional because it fails
to require a culpable mental state beyond mere knowledge. “A statute is presumed constitutional,
and the party challenging the statute bears the burden of demonstrating its invalidity.” People v.
Malchow, 193 Ill. 2d 413, 418 (2000). “Whether a statute is constitutional is a question of law
that we review de novo.” Id.
¶ 32 The fourteenth amendment to the United States Constitution and article I, section 2, of
the Illinois Constitution protect individuals from the deprivation of life, liberty, or property
without due process of law. U.S. Const., amend. XIV; Ill. Const. 1970, art. I, § 2. “Under the
banner of its police power, the legislature has wide discretion to fashion penalties for criminal
offenses, but this discretion is limited by the constitutional guarantee of substantive due process,
which provides that a person may not be deprived of liberty without due process of law.” People
v. Madrigal, 241 Ill. 2d 463, 466 (2011). When the challenged statute does not affect a
fundamental constitutional right, the appropriate test for determining its constitutionality is the
highly deferential rational basis test. Id. Under that test, a statute will be sustained if it bears a
reasonable relationship to a public interest to be served, and the means adopted are a reasonable
method of accomplishing the desired objective. Id.
¶ 33 A statute violates due process if it potentially subjects “wholly innocent conduct to
criminal penalty without requiring a culpable mental state beyond mere knowledge.” Id. at 467.
In such a case, the statute “fails the rational basis test because it does not represent a reasonable
method of preventing the targeted conduct.” Id. at 468. Here, defendant, relying on Madrigal,
contends that because section 2 of the Act merely requires that the offender “knowingly” sell or
intend to sell counterfeit items, the statute violates due process. We disagree.
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¶ 34 In Madrigal, the statute at issue involved identity theft and stated that a person commits
the offense of identity theft when he or she knowingly:
“(1) uses any personal identifying information or personal identification
document of another person to fraudulently obtain credit, money, goods, services,
or other property, or
(2) uses any personal identification information or personal identification
document of another with intent to commit any felony theft or other felony
violation of State law not set forth in paragraph (1) of this subsection (a), or
(3) obtains, records, possesses, sells, transfers, purchases, or manufactures
any personal identification information or personal identification document of
another with intent to commit or to aid or abet another in committing any felony
theft or other felony violation of State law, or
(4) uses, obtains, records, possesses, sells, transfers, purchases, or
manufactures any personal identification information or personal identification
document of another knowing that such personal identification information or
personal identification documents were stolen or produced without lawful
authority, or
***
(7) uses any personal identification information or personal identification
document of another for the purpose of gaining access to any record of the actions
taken, communications made or received, or other activities or transactions of that
person, without the prior express permission of that person.” (Emphases added.)
720 ILCS 5/16G-15(a) (West 2008).
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¶ 35 The Illinois Supreme Court found in Madrigal that the first five offenses listed in
subparagraphs (a)(1) through (a)(5) “require a criminal purpose in addition to the general
knowledge that one is committing the actions specified,” and “clearly do not fall within the
parameters of the line of cases that deal with statutes that potentially punish innocent conduct.”
Madrigal, 241 Ill. 2d at 470. The court went on to find that (a)(7), on the other hand, clearly did
“not require criminal intent, criminal knowledge, or a criminal purpose” because it potentially
punished wholly innocent conduct like doing a computer search through Google or a social
networking site that could uncover records or transactions of a person. Id. at 470-71.
¶ 36 Conversely, the statute at issue in our case does not have the potential to punish wholly
innocent conduct. And is, in fact, precisely akin to section (a)(4) of the above statute, which our
supreme court expressly found properly required a criminal purpose. Section (a)(4) of the statute
at issue in Madrigal states, in pertinent part, that a person is guilty of identity theft if he or she
sells any personal identification documents of another, “knowing that such personal identification
information or personal identification documents were stolen or produced without lawful
authority.” (Emphases added.) 720 ILCS 5/16G-15(a)(4) (West 2008). The same requirements
are present here. Section 2 of the Act requires, in pertinent part, that whoever uses a counterfeit
mark of which he or she is not the rightful owner, or in any way “knowingly” sells any goods to
which any such counterfeit mark is attached or affixed, shall be guilty of a Class A misdemeanor.
Accordingly, just as selling personal identification documents that are known to be stolen
constitutes a criminal purpose, so too does selling items that are known to be counterfeit. We
therefore find that this statute does not violate due process.
¶ 37 Defendant nevertheless contends that section 2 has the potential to punish wholly
innocent conduct like that which occurred in Revlon—when a company uses another company’s
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trademark for comparison purposes on its box. However, as discussed above, the statute under
which Revlon was charged stated, “Every person who shall use or display a trade-mark of which
he is not the lawful owner in any manner not authorized by such owner shall be deemed guilty of
a misdemeanor ***.” Ill. Rev. Stat. 1963, ch. 140, ¶ 25. As explained in detail above, the lack of
the word “counterfeit” from this statute, potentially criminalized innocent behavior such as this
one—where a company used another company’s trademark for comparison purposes. The
definition of a counterfeit mark includes the requirements that (1) it be applied to any goods,
(2) it is identical with, or substantially indistinguishable from, a mark registered in this state, any
state, or on the principal register in the United States Patent and Trademark Office and in use,
and (3) the application of which is (i) likely to cause confusion, to cause mistake, or to deceive,
or (ii) otherwise intended to be used on or in connection with the goods or services for which the
mark is registered. 765 ILCS 1040/1 (West 2014). The very essence of a counterfeit item is that
it is created with the intent to cause confusion between it and an authentic item. As a result, we
find that if a person knows an item is a counterfeit item, and sells or intends to sell that item, that
person has committed a crime under section 2 of the Act.
¶ 38 Similarly, we reject defendant’s argument that section 2 would potentially criminalize the
wholly innocent conduct of selling a handbag marked, “not made by Michael Kors,” or if the
product uses the trademark for parody purposes. If a product stated that it was “not made by
Michael Kors,” it would not be a counterfeit item because the definition of a counterfeit item is
one that bears a registered trademark that is identical with, or substantially indistinguishable
with, a registered trademark, and which is likely to cause confusion, to cause mistake, or to
deceive. A handbag that states, “not made by Michael Kors” would not be confused or mistaken
with an authentic Michael Kors handbag.
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¶ 39 Defendant’s final contention is that the use of the word “or” in part three of the definition
of a counterfeit mark potentially criminalizes wholly innocent conduct. The third requirement for
a spurious mark to be deemed a counterfeit mark is that the application of such mark “either (i) is
likely to cause confusion, to cause mistake, or to deceive; or (ii) otherwise intended to be used on
or in connection with the goods or services for which the mark is registered.” Id. Defendant
claims that the use of “or” in the definition signifies that under subset (ii) of the third element of
the definition of counterfeit mark, a person could be punished for selling a handbag that states,
“not made by Michael Kors,” as that would be applying a registered trademark on goods for
which the trademark was intended, despite the fact that such use would not likely cause
confusion or mistake.
¶ 40 As recognized by both parties, the federal counterpart to the Act states that the term
“counterfeit mark” means a spurious mark:
“(i) that is used in connection with trafficking any goods, services, labels,
patches, stickers, wrappers, badges, emblems, medallions, charms, boxes,
containers, cans, cases, hangtags, documentation, or packaging of any type or
nature;
(ii) that is identical with, or substantially indistinguishable from, a mark
registered on the principal register in the United States Patent and Trademark
Office and in use, whether or not the defendant knew such mark was so
registered;
(iii) that is applied to or used in connection with the goods or services for
which the mark is registered with the United States Patent and Trademark Office,
or is applied to or consists of a label, patch, sticker, wrapper, badge, emblem,
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medallion, charm, box, container, can, case, hangtag, documentation, or
packaging of any type or nature that is designed, marketed, or otherwise intended
to be used on or in connection with the goods or services for which the mark is
registered in the United States Patent and Trademark Office; and
(iv) the use of which is likely to cause confusion, to cause mistake, or to
deceive[.]” (Emphasis added.) 18 U.S.C. § 2320(f)(1)(A) (West 2012).
¶ 41 Accordingly, the federal counterpart to the statute at issue defines a counterfeit mark as
one requiring both the likelihood of confusion, mistake, or deceit, as well as the use on or in
connection with the goods or services for which the mark is registered. This is different from the
definition in Illinois, which requires either the likelihood of confusion or the use on or in
connection with the goods or services for which the mark is registered. While we find this
discrepancy problematic, this issue is not properly before this court.
¶ 42 “[C]ourts do not rule on the constitutionality of a statute where its provisions do not
affect the parties [citation], and decide constitutional questions only to the extent required by the
issues in the case.” People v. Mosley, 2015 IL 115872, ¶ 11. Defendant was charged in this case
under section 2 of the Act, in that he knowingly sold items bearing counterfeit marks. The State
presented evidence that certain handbags defendant was selling were counterfeit in that they bore
identical marks to that of trademarks registered to Michael Kors and Tory Burch. The State, in
closing argument, specifically argued that “the deception is the bag itself.” In its briefs to the trial
court after presenting evidence, it stated that the definition of a counterfeit mark included the
element that “the application or use of the mark is likely to cause confusion or mistake or to
deceive.” The trial court noted in its decision that the deception was to the public, since the
handbag bore a registered trademark. There was no discussion whatsoever of subset (ii) of the
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third element of the definition of counterfeit mark, and therefore the constitutionality of that
subset is not before this court as it would not affect the parties. See id.
¶ 43 CONCLUSION
¶ 44 For the foregoing reasons, we affirm the judgment of the circuit court of Cook County.
¶ 45 Affirmed.
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