PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
UNITED STATES OF AMERICA,
Plaintiff-Appellee,
v.
CHONG LAM,
Defendant-Appellant, No. 11-4056
v.
BURBERRY LIMITED; LOUIS VUITTON
NORTH AMERICA, INCORPORATED;
VSE CORPORATION,
Movants.
UNITED STATES OF AMERICA,
Plaintiff-Appellee,
v.
SIU YUNG CHAN,
Defendant-Appellant, No. 11-4081
v.
BURBERRY LIMITED; LOUIS VUITTON
NORTH AMERICA, INCORPORATED;
VSE CORPORATION,
Movants.
2 UNITED STATES v. LAM
Appeals from the United States District Court
for the Eastern District of Virginia, at Richmond.
James R. Spencer, Chief District Judge.
(3:07-cr-00374-JRS-1; 3:07-cr-00374-JRS-2)
Argued: January 27, 2012
Decided: April 16, 2012
Before SHEDD, DUNCAN, and FLOYD, Circuit Judges.
Affirmed by published opinion. Judge Duncan wrote the opin-
ion, in which Judge Shedd joined. Judge Floyd wrote a sepa-
rate opinion concurring in part, dissenting in part, and
dissenting from the judgment.
COUNSEL
ARGUED: Andrea L. Moseley, John Kenneth Zwerling,
ZWERLING, LEIBIG & MOSELEY, P.C., Alexandria, Vir-
ginia, for Appellants. John H. Zacharia, UNITED STATES
DEPARTMENT OF JUSTICE, Washington, D.C., for Appel-
lee. ON BRIEF: Cary Citronberg, ZWERLING, LEIBIG &
MOSELEY, P.C., Alexandria, Virginia, for Appellants.
Lanny A. Breuer, Assistant Attorney General, UNITED
STATES DEPARTMENT OF JUSTICE, Washington, D.C.;
Neil H. MacBride, United States Attorney, Alexandria, Vir-
ginia, Brian R. Hood, Jessica Aber Brumberg, Assistant
United States Attorneys, OFFICE OF THE UNITED
STATES ATTORNEY, Richmond, Virginia, for Appellee.
UNITED STATES v. LAM 3
OPINION
DUNCAN, Circuit Judge:
A jury convicted appellants Chong Lam and Siu Yung
Chan (collectively "Appellants") of conspiracy to traffic in
counterfeit goods, trafficking in counterfeit goods, and smug-
gling goods into the United States. The counterfeiting convic-
tions were based on the jury’s determination that a mark
displayed on goods Appellants imported into the United
States was a counterfeit of a trademark registered to fashion
designer Burberry Ltd. ("Burberry"), depicting its signature
plaid pattern (the "Burberry Check mark"). On appeal, Appel-
lants advance various challenges to their convictions for traf-
ficking in counterfeit goods under 18 U.S.C. § 2320(a). They
also assert that certain comments made by prosecutors at trial
necessitate a retrial. Because we find these arguments lacking
in merit, we affirm.
I.
A.
The convictions in this case arise out of Appellants’ partici-
pation in the manufacture, import, and sale of handbags and
wallets bearing counterfeit trademarks. Since 1999, Appel-
lants have owned or otherwise controlled at least 10 compa-
nies incorporated in the United States that engaged in the
importation of both legitimate and counterfeit handbags and
wallets.1 Lam also had authority over at least three companies
1
Specifically, the parties stipulated that Lam was president and Chan
was manager of Global Import, Inc. and Marco Leather Goods, Ltd.; that
Lam was an officer of The Perfect Impressions, Inc.; that Chan was presi-
dent and Lam was vice president of Marco USA, Inc. and C&L Develop-
ment, LLC; that Lam was president and Chan was treasurer of LY USA,
Inc.; that Lam was president and Chan was secretary of CP USA, Inc.; that
Chan was president of Best Handbags, Inc.; and that Lam was president
and Chan was manager of Golden Horse USA Corporation.
4 UNITED STATES v. LAM
located in China and Hong Kong that engaged in the manu-
facture and export of such goods.2 Appellants transferred sig-
nificant amounts of money among these various enterprises.
They also used the United States-based companies’ names
interchangeably when importing goods, seemingly for the
purpose of evading detection by U.S. Customs and Border
Protection ("CBP").
Between 2002 and 2005, CBP issued seizure notices to a
number of the corporations controlled by Appellants, each
time informing the individual company that certain goods it
had imported into the United States were being seized
because CBP had determined that the goods were labeled with
what were likely counterfeit trademarks.3 The marks CBP
identified as counterfeit were copies of legitimate marks reg-
istered to various luxury handbag and wallet manufacturers,
including Burberry. These seizures occurred at several ports
throughout the United States, including Houston, Texas;
Newark, New Jersey; Los Angeles, California; New York,
New York; and Norfolk, Virginia. Appellants’ decision to
spread their importing activities among multiple ports also
appeared to be a ploy to evade CBP.
The specific goods at issue here were seized in 2005 at the
port of Norfolk, Virginia. CBP became aware in August 2005
that shipments imported to Global Import, Inc. ("Global
2
The parties further stipulated that Lam was an officer of Hong Kong
Chung NGEI Investment, Ltd. and Chinese Prosperous International Ltd.;
that Lam was chairman and president of Chinese Prosperous Group; and
that Lam was the general manager of Longhai Zhong Yi Luggage and
Bags, Ltd. and Chinese Prosperous Development, Ltd.
3
CBP’s initial conclusion that the trademarks at issue here were counter-
feit is not determinative with regard to Appellants’ liability under 18
U.S.C. § 2320(a) or any other federal criminal statute implicated in this
case. The district court accordingly instructed the jury that, regardless of
CBP’s opinion on the matter, the jury bore the ultimate responsibility for
determining whether a mark used by Appellants met the definition of
"counterfeit" included in § 2320(e)(1).
UNITED STATES v. LAM 5
Import")—one of the companies controlled by Appel-
lants—contained what appeared to be counterfeit handbags. It
thereafter flagged all subsequent shipments imported to
Global Import, opening and examining containers included in
such shipments. This effort led to three seizures, occurring on
September 19, October 3, and October 10, 2005. On each
occasion, CBP opened containers destined for Global Import
and found goods bearing what appeared to be marks regis-
tered to Burberry and other luxury designers4 "secreted"
within legitimate handbags and gym bags. J.A. 1204. Specifi-
cally, CBP found a layer of legitimate merchandise on the top
and bottom of each container, followed by a cardboard
divider, concealing the goods bearing allegedly counterfeit
marks within the interior of the container. CBP seized goods
displaying marks it determined were likely counterfeit. These
goods form the basis for the charges brought against Appel-
lants.
B.
On March 26, 2009, a federal grand jury sitting in the East-
ern District of Virginia issued a superseding indictment charg-
ing Appellants5 with conspiracy to traffic in counterfeit goods
in violation of 18 U.S.C. § 371, trafficking in counterfeit
goods in violation of 18 U.S.C. § 2320(a), and smuggling
goods into the United States in violation of 18 U.S.C. § 545.
Appellants’ first trial, lasting from January 11-25, 2010,
resulted in a hung jury. Appellants’ contentions on appeal
arise from their convictions in the second trial.
4
CBP also seized goods displaying what it considered to be counterfeits
of trademarks registered to Gucci. The jury acquitted Appellants of coun-
terfeiting Gucci trademarks, however. We therefore discuss only the
seized goods bearing the counterfeit Burberry Check mark.
5
Eric Yuen, an employee of Appellants, was also charged in the indict-
ment. The jury acquitted Yuen on all counts.
6 UNITED STATES v. LAM
Prior to the second trial, Appellants filed a motion in limine
seeking to have the district court declare the phrase "substan-
tially indistinguishable," as used in 18 U.S.C. § 2320,
unconstitutionally vague. Section 2320(a) criminalizes "inten-
tionally traffic[king] or attempt[ing] to traffic in goods or ser-
vices and knowingly us[ing] a counterfeit mark on or in
connection with such goods or services, . . . the use of which
is likely to cause confusion, to cause mistake, or to deceive."
Section 2320(e)(1) uses the disputed term "substantially indis-
tinguishable" in its definition of "counterfeit mark," which it
defines as a "spurious mark" that, inter alia, "is identical with,
or substantially indistinguishable from, a mark registered on
the principal register in the United States Patent and Trade-
mark Office and in use." Appellants argued that an average
person could not understand the meaning of "substantially
indistinguishable" in this context and that the vagueness of the
term encouraged arbitrary enforcement of the anticounterfeit-
ing statute. They requested that the district court either declare
the statute unconstitutionally vague or narrowly construe the
language. The district court denied the motion.
C.
Appellants’ retrial began on June 2, 2010. As relevant here,
the government presented evidence that Burberry had regis-
tered the Burberry Check mark—a mark depicting Burberry’s
signature plaid pattern, created by intersecting red, white,
black, and grey lines against a tan background—with the
United States Patent and Trademark Office ("USPTO") in
1996. It demonstrated that Burberry also has a registered
trademark for an equestrian knight symbol (the "Burberry
Equestrian mark"). The government introduced into evidence
examples of authentic Burberry handbags displaying the Bur-
berry Check mark and authentic handbags displaying the
combination of the Burberry Check mark and the Burberry
Equestrian mark.
In addition, government witnesses testified that, in 2005,
Burberry instituted a civil suit against Marco Leather Goods,
UNITED STATES v. LAM 7
Ltd. ("Marco Leather Goods"), another company controlled
by Appellants, because the company had registered for copy-
right protection an image that appeared to be the Burberry
Check mark with an equestrian knight similar to the Burberry
Equestrian mark superimposed over it. Appellants refer to this
pattern as the "Marco mark," even though it was never regis-
tered as a trademark. This suit ended in a consent judgment
requiring Marco Leather Goods to transfer the copyright to
Burberry and to abandon an application it had filed with the
USPTO seeking to register the same image.
Finally, the government produced testimony describing the
seizures of goods imported by Appellants detailed above. A
CBP agent explained the manner in which the wallets and
handbags displaying allegedly counterfeit marks were pack-
aged and transported. The government also introduced a num-
ber of samples of the goods seized from Norfolk that bore the
allegedly counterfeit Burberry Check mark. Significantly,
these wallets and handbags displayed Appellants’ so-called
Marco mark—the above-described pattern, which consisted of
a plaid pattern similar to the Burberry Check mark with an
equestrian knight superimposed over it.6 At the close of the
government’s evidence, Appellants filed a motion for acquit-
tal pursuant to Federal Rule of Criminal Procedure 29, which
the district court denied.
In their case in chief, Appellants introduced expert testi-
mony describing the combination of the plaid pattern and the
knight overlay displayed on the goods seized at Norfolk as a
"composite mark that consists of a number of components."
J.A. 1381. Appellants’ expert opined that a mark combining
the Burberry Check mark and the Burberry Equestrian mark
could qualify for trademark protection independently from
both of the individual marks.
6
The jury did not find the knight displayed on these goods to be a coun-
terfeit of the Burberry Equestrian mark. Trial testimony indicates that it
differed from the Burberry Equestrian mark in several respects.
8 UNITED STATES v. LAM
At several points during the trial, the government suggested
that whether an allegedly counterfeit mark was substantially
indistinguishable from a legitimate mark should be analyzed
from the viewpoint of a hypothetical "reasonable consumer of
ordinary intelligence." J.A. 1368. The government made such
statements at least twice during its cross-examination of
Appellants’ witnesses. During closing argument, the govern-
ment also asserted several times that the jury should look to
"the perspective of the average person" in comparing the
goods. J.A. 1558. The district court sustained Appellants’
objections to these comments as incorrect statements of the
law.
In response to Appellants’ objections and directly follow-
ing the government’s closing argument, the district court
instructed the jury as follows:
Obviously, you are to be guided by the instructions
on the law that the court will provide to you. A lot
of the lawyers have made references to what the law
is or what they think it might be. But these instruc-
tions, I hope, will clear up, if there was some confu-
sion. . . . Listen to me when it comes to what the law
is.
J.A. 1559-60. At the beginning of formal jury instructions, the
district court further informed the jury that "it is your sworn
duty to follow the law as I am now in the process of defining
for you. You must follow all of my instructions as a whole."
J.A. 1560-61.
With regard to whether the mark on Appellants’ goods was
a counterfeit of the Burberry Check mark, the district court
instructed the jury:
[Y]ou have to determine whether or not the mark
that is alleged to be counterfeit is identical to or sub-
stantially indistinguishable from the mark that is reg-
UNITED STATES v. LAM 9
istered on the same goods in the Principal Register
of the [USPTO]. . . . [I]n order to carry out your
responsibility as it relates to that part of these
instructions, you have to compare the marks, the
mark on the alleged to be counterfeit and the mark
that is the genuine mark.
Now, you do that, and you make a decision. This is
based on your side-by-side comparison, use of your
own eyes, and any other evidence that came into the
record that might help you in that task. But it is for
you to decide. If you decide that the mark is not
identical or substantially indistinguishable, that
pretty much ends the inquiry. That means it is not
counterfeit.
J.A. 1587.
During deliberations, the jury submitted a question to the
district court, asking if "when comparing the Marco plaid on
the purses seized in Norfolk to the [Burberry Check mark],
should we consider the presence of the Marco knight?" J.A.
1603. The district court responded:
You have heard evidence and argument that you can
accept certain facts. On the one hand, the defendants
presented evidence and argued that you accept as a
fact that the plaid plus the Marco knight is a compos-
ite mark that should be compared as a composite
mark with the [Burberry Check mark]. On the other
hand, the government has put on evidence and
argued that the plaid pattern alone on the alleged
counterfeit bag is violative, meaning substantially
indistinguishable, from the [Burberry Check mark].
Depending on the way you find facts, you may con-
sider the Marco knight in comparing the marks.
That’s not the province of the court, it’s the province
of the jury. Of course, the defendants also contend
10 UNITED STATES v. LAM
that the plaid by itself is not substantially indistin-
guishable and therefore not counterfeit.
J.A. 1603-04. Appellants did not object to this response.
On June 10, 2010, the jury found Appellants guilty of con-
spiracy to traffic in counterfeit goods, trafficking in counter-
feit goods, and smuggling goods into the United States. The
counterfeiting-related convictions were based, in part, on its
determination that the plaid displayed on the goods seized
from Appellants at Norfolk was a counterfeit of the Burberry
Check mark.
D.
Appellants renewed their motion for acquittal, pursuant to
Rule 29(c), and moved for a new trial, pursuant to Federal
Rule of Criminal Procedure 33, on August 11, 2010. They
argued that the evidence presented at trial was insufficient as
a matter of law to sustain a guilty verdict under § 2320 and
that a new trial was required because the government’s alleg-
edly erroneous statements of law with respect to the perspec-
tive from which the jury was to determine whether a mark
was counterfeit prejudicially affected their rights such that
they were deprived of a fair trial.
The district court denied both motions. In a memorandum
opinion entered December 14, 2010, it first held that the evi-
dence presented at trial was sufficient to allow the jury to find
that the mark used on Appellants’ goods was substantially
indistinguishable from the Burberry Check mark—a question
"exclusively within the purview of the jury." J.A. 2861.
The district court next considered Appellants’ argument
that remarks made by the government necessitated a new trial.
It held that the government’s comments were improper
because, in its estimation, they incorrectly stated the perspec-
tive from which the jurors were to consider whether a mark
UNITED STATES v. LAM 11
was counterfeit. It next considered the six factors our circuit
takes into account when determining whether a prosecutor’s
comments were so prejudicial that they deprived a defendant
of a fair trial: (1) whether the government’s remarks mislead
the jury, (2) whether they were extensive, (3) the strength of
the evidence supporting conviction absent the comments, (4)
whether the government deliberately made the comments to
mislead the jury, (5) whether the defendant invited the com-
ments, and (6) the presence of a curative instruction. See
United States v. Lighty, 616 F.3d 321, 361 (4th Cir. 2010).
After thoroughly reviewing the trial transcript, the district
court found that, although the government’s comments were
misleading and extensive, and Appellants did not invite the
comments, the government did not make the comments with
the purpose of deliberately misleading the jury. It also found
that the government presented enough evidence to support
Appellants’ convictions in the absence of the misleading
remarks. Finally, the district court considered its curative
instructions, finding that they removed any prejudice the gov-
ernment’s comments created. The district court based its
denial of Appellants’ Rule 33 motion on this final determina-
tion. Appellants timely appealed.
II.
On appeal, Appellants advance four main arguments, all
stemming from their convictions for "intentionally traffic[k-
ing] or attempt[ing] to traffic in goods or services and know-
ingly us[ing] a counterfeit mark on or in connection with such
goods or services, . . . the use of which is likely to cause con-
fusion, to cause mistake, or to deceive." 18 U.S.C. § 2320(a).
As mentioned above, § 2320 goes on to define "counterfeit
mark" as, as relevant here, "a spurious mark . . . that is identi-
cal with, or substantially indistinguishable from, a [registered]
mark . . . the use of which is likely to cause confusion, to
cause mistake, or to deceive." 18 U.S.C. § 2320(e)(1)(A). To
obtain a conviction under § 2320(a), the government was
required to prove that Appellants "‘(1) trafficked or attempted
12 UNITED STATES v. LAM
to traffic in goods or services; (2) did so intentionally; (3)
used a counterfeit mark on or in connection with such goods
and services; and (4) knew the mark was counterfeit.’" United
States v. Habegger, 370 F.3d 441, 444 (4th Cir. 2004) (quot-
ing United States v. Giles, 213 F.3d 1247, 1249 (10th Cir.
2000)).
Appellants first challenge the district court’s denial of their
motion for judgment of acquittal, arguing that the evidence
presented at trial was insufficient to support their convictions.
Second, they contend that the district court’s response to the
jury’s question regarding the significance of the knight super-
imposed over the plaid pattern displayed on Appellants’
goods was erroneous. Third, they argue on appeal, as they did
below, that § 2320 is unconstitutionally vague. Finally,
Appellants contend that the district court abused its discretion
by denying their motion for a new trial in light of various
comments made by the government during the trial. We
address these contentions in turn.
A.
Appellants make two arguments regarding the sufficiency
of the evidence. First, they contend, as they did in their
motion pursuant to Rule 29, that the government’s evidence
was insufficient to allow the jury to conclude that the mark
used on their goods was a counterfeit of the Burberry Check
mark. Second, Appellants argue, for the first time on appeal,
that the government’s evidence was insufficient to allow the
jury to find that they had knowledge that the mark displayed
on their goods was a counterfeit, as § 2320(a) requires.
Under Rule 29, a district court, "on the defendant’s
motion[,] must enter a judgment of acquittal of any offense
for which the evidence is insufficient to sustain a conviction."
Fed. R. Crim. P. 29(a). We review de novo a district court’s
denial of a Rule 29 motion, "uphold[ing] a jury verdict if
there is substantial evidence, viewed in the light most favor-
UNITED STATES v. LAM 13
able to the [g]overnment, to support it." United States v. Per-
kins, 470 F.3d 150, 160 (4th Cir. 2006). "[S]ubstantial
evidence is evidence that a reasonable finder of fact could
accept as adequate and sufficient to support a conclusion of
a defendant’s guilt beyond a reasonable doubt." United States
v. Burgos, 94 F.3d 849, 862 (4th Cir. 1996) (en banc).
1.
Appellants’ principal contention as to why the evidence
was insufficient to allow a jury to conclude that the mark dis-
played on their goods was a counterfeit is that it consists of
a plaid background and equestrian knight overlay, whereas
the Burberry Check mark does not include an equestrian
knight. They assert that "[n]o rational jury would conclude
that a mark with a knight integrated onto it was a counterfeit
of a mark without a knight."7 Appellants’ Br. 23. We disagree,
7
We note that Appellants spend much of their brief contending that the
"antidissection rule" required the jury to, as a matter of law, consider their
mark as a whole, rather than look at the plaid component of the pattern
alone. The antidissection rule instructs that "[c]onflicting composite marks
are to be compared by looking at them as a whole, rather than breaking
the marks into their component parts for comparison." J. Thomas McCar-
thy, 4 McCarthy on Trademarks and Unfair Competition § 23.41 (4th ed.
2011). A composite mark is one that contains some matter that is descrip-
tive in nature—and, thus, would not alone be registerable as a trade-
mark—used in conjunction with nondescriptive matter. See Estate of P.D.
Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 541 (1920) (defining
"composite marks" as those which "contain both registerable and nonreg-
isterable matter"). It is unclear whether this rule applies to the Burberry
Check mark, as it is not a composite. Moreover, Appellants do not cite
to—nor have we found—any Supreme Court or Fourth Circuit case that
invokes the rule.
Even if the antidissection rule does apply here, however, it would only
have bearing on whether the evidence was sufficient to support a convic-
tion if we were to accept Appellants’ argument that, viewing their mark
as a whole, no reasonable jury could find it was a counterfeit of the Bur-
berry Check mark because of the presence of the equestrian knight. As we
explain in this section, we reject this contention. Appellants’ mark is simi-
14 UNITED STATES v. LAM
finding that the marks are similar enough to allow a reason-
able jury to draw such a conclusion—especially in light of the
evidence demonstrating that Burberry often sells goods dis-
playing the Burberry Check mark and the Burberry Equestrian
mark together.
A mark does not have to be an exact replica of a registered
trademark to be deemed a counterfeit. As stated, § 2320
defines a counterfeit mark as "identical to or substantially
indistinguishable from" a registered trademark. The Eleventh
Circuit has observed that "[t]he legislative history of Section
2320 indicates that . . . ‘a mark need not be absolutely identi-
cal to a genuine mark in order to be considered counterfeit.
Such an interpretation would allow counterfeiters to escape
liability by modifying the registered trademarks of their hon-
est competitors in trivial ways.’" United States v. Guerra, 293
F.3d 1279, 1288 (11th Cir. 2002) (quoting Joint Statement on
Trademark Counterfeiting Legislation, 130 Cong. Rec. 31,675
(1984)). This court has only once held that two marks were
so divergent that, as a matter of law, no rational jury could
find one was a counterfeit of the other. In a civil counterfeit-
ing case under the Lanham Act,8 we found that a dog toy
lar enough to the Burberry Check mark such that whether it was a counter-
feit was a factual issue for the jury to decide. The jury had the opportunity
to view both the Burberry Check mark and Appellants’ mark in their
entirety, and it determined that Appellants’ mark was a counterfeit, as it
was entitled to do as the finder of fact. Therefore, we find Appellants’
argument regarding the antidissection rule lacking in merit.
8
The Lanham Act defines "counterfeit" as "a spurious mark which is
identical with, or substantially indistinguishable from, a registered mark."
15 U.S.C. § 1127. Because of the similarity between this definition and the
§ 2320 definition of "counterfeit mark," we find Lanham Act civil coun-
terfeiting cases helpful to our analysis of criminal counterfeiting cases
brought under § 2320(a). We recognize that the standard may "be con-
strued more narrowly in a criminal context than in a civil context."
Guerra, 293 F.3d at 1288. But see 130 Cong. Rec. 31,675 (stating that the
criminal and civil standards are "identical in substance"). Even assuming
that the criminal standard is somewhat higher, however, the evidence pre-
sented here was sufficient to allow the jury to find the Appellants’ mark
was a counterfeit.
UNITED STATES v. LAM 15
manufacturer’s use of the name "Chewy Vuiton" and a mono-
gram design featuring the letters "CV" was, as a matter of
law, not substantially indistinguishable from the trademarked
"Louis Vuitton" and "LV" designs owned by Louis Vuitton
Malletier. See Louis Vuitton Malletier S.A. v. Haute Diggity
Dog, LLC, 507 F.3d 252, 269 (4th Cir. 2007). We based our
decision upon marked differences between the legitimate and
allegedly counterfeit goods, including their distinct names, the
different letters used in the respective monograms, their diver-
gent design and color patterns, and that the allegedly counter-
feit mark was displayed on dog toys, rather than handbags.
See id. ("In selling ‘Chewy Vuiton’ dog toys, Haute Diggity
Dog is not selling knock-off LOUIS VUITTON handbags
with a counterfeit LV mark, and no reasonable trier of fact
could so conclude."). Thus, our case law suggests that a good
displaying an allegedly counterfeit trademark must possess
pronounced differences from a legitimate trademarked good
for us to declare that no rational jury could find that it was a
counterfeit.
Here, viewing the evidence in the light most favorable to
the government, we find that Appellants’ mark was similar
enough to the legitimate Burberry mark that we cannot say,
as a matter of law, that no rational jury could conclude Appel-
lants’ mark was a counterfeit. We base this holding on the
similarity of the two marks. The plaid pattern displayed on
Appellants’ goods differs only slightly from the Burberry
Check mark—in color and in the shape of the boxes formed
by the stripes. Moreover, although the Burberry Check mark
does not include an equestrian knight, it is undisputed that
Burberry has obtained trademark protection for an equestrian
knight mark, and that it often sells handbags and other goods
displaying a combination of the two marks. It is also undis-
puted that Appellants used their mark on handbags—the same
category of goods on which Burberry used its marks. The dis-
trict court was therefore correct to afford the jury the opportu-
nity to view the government’s evidence9 and form an
9
As noted above, the government introduced numerous examples of the
goods seized at Norfolk bearing the allegedly counterfeit mark. It also
16 UNITED STATES v. LAM
independent conclusion regarding whether Appellants’ plaid
design was substantially indistinguishable from the Burberry
Check mark and whether the inclusion of the equestrian
knight figure made any difference. See United States v. Yi,
460 F.3d 623, 629 n.4 (5th Cir. 2006)(holding that it was for
the jury to determine whether a battery that used the signature
"Duracell" copper top and black body was a counterfeit, even
though the text on the counterfeit battery read "Dinacell").
And this evidence was sufficient to support the jury’s finding
that Appellants "used a counterfeit mark on or in connection
with [intentionally trafficking in] goods and services." See
Habegger, 370 F.3d at 444.
2.
Appellants next argue that the evidence presented at trial
was insufficient to allow a reasonable jury to determine that
they had knowledge that the mark displayed on their goods
was a counterfeit, as required by § 2320(a). Appellants failed
to raise this argument in their Rule 29(c) motion, however,
precluding the district court from having the first opportunity
to opine on it. When a defendant raises specific grounds in a
Rule 29 motion, grounds that are not specifically raised are
waived on appeal. See United States v. Stewart, 129 F. App’x
758, 766 (4th Cir. 2005) (per curiam) (unpublished).
Although we have not previously recognized this rule in a
published opinion, we join the majority of our sister circuits
by stating and adhering to it here. See, e.g., United States v.
Goode, 483 F.3d 676, 681 (10th Cir. 2007); United States v.
Moore, 363 F.3d 631, 638 (7th Cir. 2004), vacated on other
grounds, 543 U.S. 1100 (2005); United States v. Herrera, 313
F.3d 882, 884-85 (5th Cir. 2002); United States v. Quintana-
introduced examples of handbags displaying the legitimate Burberry
Check mark, as well as—of particular significance here—handbags dis-
playing the Burberry Check mark and the Burberry Equestrian mark used
in combination.
UNITED STATES v. LAM 17
Torres, 235 F.3d 1197, 1199 (9th Cir. 2000); United States v.
Belardo-Quinones, 71 F.3d 941, 945 (1st Cir. 1995); United
States v. Dandy, 998 F.2d 1344, 1356-57 (6th Cir. 1993);
United States v. Rivera, 388 F.2d 545, 548 (2d Cir. 1968); see
also Charles Alan Wright and Peter J. Henning, 2A Federal
Practice & Procedure § 469 (4th ed. 2011). We therefore
decline to consider Appellants’ argument for the first time on
appeal.10
B.
Appellants next contend that the district court erred when,
in response to the jury’s question, it instructed the jury to
decide for itself whether to consider the knight in determining
whether Appellants’ mark was a counterfeit. Appellants con-
cede that they did not object to this statement at trial. We
therefore review the district court’s instruction for plain error.
United States v. Wilson, 484 F.3d 267, 279 (4th Cir. 2007).
"Under plain error review, Appellants must show that (1)
the district court committed error, (2) the error was plain, and
(3) the error affected their substantial rights." Id. "An error is
‘plain’ when it is ‘obvious or clear under current law.’"
United States v. Brack, 651 F.3d 388, 392 (4th Cir. 2011)
(quoting United States v. Knight, 606 F.3d 171, 177 (4th Cir.
2010)). Even if Appellants make such a showing, "[t]he deci-
sion to correct the error lies within our discretion, and we
exercise that discretion only if the error ‘seriously affects the
10
To the extent that an exception to this rule exists in situations in which
a "manifest miscarriage of justice" has occurred, see Quintana-Torres, 235
F.3d at 1199, this is not such a case. The government presented ample evi-
dence at trial to allow a reasonable jury to conclude that Appellants were
aware that the marks on their handbags and wallets were counterfeit,
including evidence of: their use of multiple shell companies and multiple
ports to import the counterfeit goods, the manner in which they trans-
ported and concealed the counterfeit merchandise, the civil lawsuit Bur-
berry instituted against them, and the multiple seizure notices they
received from CBP between 2002 and 2005.
18 UNITED STATES v. LAM
fairness, integrity or public reputation of judicial proceed-
ings.’" Knight, 606 F.3d at 177-78 (quoting United States v.
Massenburg, 564 F.3d 337, 343 (4th Cir. 2009)).
Here, Appellants have not met the high standard required
to convince us to exercise our discretion. Their only conten-
tion as to why the district court’s instruction was error is that,
as a matter of law, the jury was required to consider the pres-
ence of the knight in addition to the plaid pattern when com-
paring Appellants’ goods to those bearing the legitimate
Burberry mark. Appellants point to no case law, and we have
found none, that supports this proposition. They therefore pro-
vide us with no basis on which we could conclude that the
district court erred. Even if the district court’s instruction was
erroneous, however, we cannot say the error was plain unless
Appellants establish it was "obvious or clear under current
law." See Brack, 651 F.3d at 392. Appellants have not met
that standard here. Therefore, we decline to afford them relief
under plain error review.
C.
Appellants next contend that § 2320 is unconstitutionally
vague. Specifically, they assert that the statute’s definition of
a "counterfeit mark" as "a spurious mark . . . that is identical
with, or substantially indistinguishable from" a mark regis-
tered on the principal register in the [USPTO]" does not
clearly explain how similar a mark must be for it to be consid-
ered counterfeit. Thus, Appellants contend, the statute encour-
ages arbitrary enforcement. "We review challenges to the
constitutionality of a statute . . . de novo." United States v.
Hsu, 364 F.3d 192, 196 (4th Cir. 2004).
For a criminal statute to comply with due process, it must
"‘provide adequate notice to a person of ordinary intelligence
that his contemplated conduct is illegal.’" Id. (quoting Buck-
ley v. Valeo, 424 U.S. 1, 77 (1976) (per curiam)). This entails
"defin[ing] the criminal offense (1) with sufficient definite-
UNITED STATES v. LAM 19
ness that ordinary people can understand what conduct is pro-
hibited and (2) in a manner that does not encourage arbitrary
and discriminatory enforcement." Skilling v. United States,
130 S. Ct. 2896, 2927 (2010) (quoting Kolender v. Lawson,
461 U.S. 352, 357 (1983)). The fact that Congress might have
written a statute more clearly does not make that statute
unconstitutionally vague. United States v. Powell, 423 U.S.
87, 94 (1975). Moreover, "where . . . a criminal statute regu-
lates economic activity, it generally is subject to a less strict
vagueness test." Hsu, 364 F.3d at 196 (quoting United States
v. Sun, 278 F.3d 302, 309 (4th Cir. 2002)).
We believe that § 2320 is sufficiently clear to allow an
ordinary person to understand what conduct it punishes.
Appellants take particular issue with the statute’s use of the
phrase "substantially indistinguishable" in the definition of a
counterfeit mark. We find, however, that considered in its
proper context, the meaning of this term is plain. See Kennedy
v. St. Joseph’s Ministries, Inc., 657 F.3d 189, 191 (4th Cir.
2011) ("[W]e must consider the context in which . . . statutory
words are used because ‘[w]e do not . . . construe statutory
phrases in isolation; we read statutes as a whole.’" (quoting
Ayes v. U.S. Dep’t of Veterans Affairs, 473 F.3d 104, 108 (4th
Cir. 2006))). For a person’s use of a certain mark to be pun-
ishable as trafficking in counterfeit goods, the mark must be
"spurious," and it must be "identical with, or substantially
indistinguishable from" a registered trademark. 18 U.S.C.
§ 2320(e)(1)(A). Black’s Law Dictionary defines "spurious"
as "[d]eceptively suggesting an erroneous origin; fake."
Black’s Law Dictionary 1533 (9th ed. 2009). In ordinary
usage, "substantial" means "[c]onsiderable in importance,
value, degree, amount, or extent." American Heritage Dictio-
nary 1727 (4th ed. 2006). "Indistinguishable" means
"[i]mpossible to differentiate or tell apart." Id. at 893. There-
fore, the statute, by its plain terms, makes clear that a mark
punishable as a counterfeit is one that suggests an erroneous
origin and is, to a considerable degree, impossible to distin-
guish from a legitimate mark. The proximity of the phrase
20 UNITED STATES v. LAM
"substantially indistinguishable" to the term "identical" fur-
ther emphasizes the degree to which a spurious mark must
resemble a legitimate mark for it to be considered a counter-
feit. Given the unambiguous nature of the statute’s plain lan-
guage, we conclude that it easily allows an ordinary person to
understand what the statute prohibits.
Supporting our conclusion is the fact that the only other cir-
cuits to have considered vagueness challenges to § 2320 have
similarly rejected such arguments. See United States v.
McEvoy, 820 F.2d 1170, 1172-73 (11th Cir. 1987) (holding
that § 2320, as a whole, is not unconstitutionally vague); see
also United States v. Bohai Trading Co., 45 F.3d 577, 580
(1st Cir. 1995) (determining that the phrase "at the time of the
manufacture or production," as used in the authorized-use
exception to § 2320, is not unconstitutionally vague); United
States v. Gantos, 817 F.2d 41, 44 (8th Cir. 1987) ("We have
considered Gantos’ argument[ ] that § 2320 is unconstitu-
tional . . . and find [it] to be without merit."). We find the
Eleventh Circuit’s observation with regard to this challenge
particularly apt:
The plain meaning of [§ 2320] cannot be seriously
disputed. The statute prohibits trafficking in goods
where one knowingly uses a counterfeit mark in con-
nection with those goods. A counterfeit is defined as
a spurious mark which is used in trafficking, is iden-
tical with or substantially indistinguishable from a
registered trademark, and is likely to cause confu-
sion, mistake or deception. The act has been applied
numerous times in a consistent manner and without
any court ever intimating that the act might be
unconstitutionally vague.
McEvoy, 820 F.2d at 1172-73 (citations omitted). Thus,
UNITED STATES v. LAM 21
Appellants’ challenge to the constitutionality of the statute
fails.11
D.
Finally, Appellants contend that the district court erred by
denying their motion for a new trial pursuant to Rule 33. They
claim, as they did before the district court, that a retrial is
necessitated by the government’s allegedly improper com-
ments at trial. Specifically, Appellants argue that prosecutors,
at several points during the trial, misstated the perspective the
jury should use when determining whether the mark displayed
on their goods was a counterfeit, implying that the jury should
consider a hypothetical "average person on the street" rather
than using its own judgment. These misstatements, Appellants
contend, were so prejudicial that they deprived them of a fair
trial.12
Rule 33 allows a district court to "[u]pon the defendant’s
motion, . . . vacate any judgment and grant a new trial if the
interest of justice so requires." Fed. R. Crim. P. 33(a). Here,
the district court agreed that prosecutors had misstated the law
and found that such comments were prejudicial. It neverthe-
less denied Appellants’ Rule 33 motion, however, finding that
any prejudice was cured by the district court’s correct state-
ment of the law and its instructions to the jury to apply the
law as stated by the court, not the attorneys. "We review for
11
Although our finding that Appellants fail to meet the first prong of the
unconstitutional vagueness test obviates our reaching the second prong,
we note that it is disingenuous, in light of the record before us, for Appel-
lants to claim their prosecution was "arbitrary" and the "result of [a]
relentless campaign of intimidation by Louis Vuitton, Burberry, and oth-
ers." Appellants’ Br. 37, 39.
12
Appellants also argue, for the first time on appeal, that the govern-
ment’s statement during closing argument that "a composite mark . . . has
nothing to do with this case" was likewise improper. J.A. 1433. They con-
tend that they should be granted a new trial on the basis of this comment.
We have considered this argument and find that it lacks merit.
22 UNITED STATES v. LAM
abuse of discretion a district court’s denial of a motion for a
new trial." United States v. Perry, 335 F.3d 316, 320 (4th Cir.
2003). "A court ‘should exercise its discretion to grant a new
trial sparingly,’ and . . . it should do so ‘only when the evi-
dence weighs heavily against the verdict.’" Id. (quoting
United States v. Wilson, 118 F.3d 228, 237 (4th Cir. 1997)).
A prosecutor’s statements at trial constitute reversible error
only if they were (1) improper and (2) "prejudicially affected
the defendant’s substantial rights so as to deprive the defen-
dant of a fair trial." United States v. Chorman, 910 F.2d 102,
113 (4th Cir. 1990). A number of factors are relevant to the
question of whether a defendant’s "substantial rights were
prejudiced to the point of denying him a fair trial." Lighty,
616 F.3d at 361. These factors are:
(1) the degree to which the prosecutor’s remarks
ha[d] a tendency to mislead the jury and to prejudice
the accused; (2) whether the remarks were isolated
or extensive; (3) absent the remarks, the strength of
competent proof introduced to establish the guilt of
the accused; and (4) whether the comments were
deliberately placed before the jury to divert attention
to extraneous matters. We also consider (5) whether
the prosecutor’s remarks were invited by improper
conduct of defense counsel, and (6) whether curative
instructions were given to the jury.
Id. (citations omitted). These factors should be "examined in
the context of the entire trial, and no one factor is dispositive."
Id.
In light of the district court’s comprehensive analysis and
the deferential standard of review, we focus on the presence
of curative instructions, which formed the basis of the district
court’s decision.13 Assuming without deciding that the gov-
13
We note that, as described above, the district court considered the
applicable standard with commendable care, making detailed findings
UNITED STATES v. LAM 23
ernment’s comments were improper and prejudicial, we find
that the district court did not abuse its discretion by conclud-
ing that its curative instructions were sufficient to ensure
Appellants were afforded a fair trial. As the district court
noted, "juries are presumed to follow their instructions." Rich-
ardson v. Marsh, 481 U.S. 200, 211 (1987); see also United
States v. Francisco, 35 F.3d 116, 119 (4th Cir. 1994). At trial,
the district court instructed the jury twice—including immedi-
ately following the government’s allegedly improper closing
argument—that it was required to apply the law as the district
court described it, not as the lawyers stated it. It also provided
the jury with lengthy instructions regarding the perspective it
was to use when determining whether the plaid used on
Appellants’ goods was a counterfeit of the Burberry Check
mark. It emphasized that the determination was to be based on
a "side-by-side comparison [and] use of [their] own eyes."
J.A. 1587. It also stated that if the jury "decide[d] the mark
[was] not identical or substantially indistinguishable," it must
find in favor of Appellants. Id. We do not believe it was an
abuse of discretion for the district court to presume the jury
followed these detailed instructions—a presumption our pre-
cedent requires.
Appellants advance no credible arguments to rebut the pre-
sumption that the jury followed its instructions here. They cite
to no relevant case law in support of their conclusory asser-
tion that "the presence of a curative instruction in a case like
regarding each of the six Lighty factors. Specifically, it found that the gov-
ernment’s remarks were misleading and extensive, and that Appellants did
nothing to invite the comments. It also found, however, that the comments
were not deliberately made to divert the jury’s attention and that the gov-
ernment’s evidence, absent the allegedly improper remarks, was strong
enough to support Appellants’ convictions. The district court finally con-
sidered the effect of its curative instructions, concluding they were suffi-
cient to undo any prejudice Appellants may have suffered as a result of the
government’s comments. Our focus is on this final finding because the
district court treated it as determinative.
24 UNITED STATES v. LAM
this one, with so many improper remarks made by the govern-
ment, is rarely sufficient to cure their prejudicial effect."
Appellants’ Br. 52. They also claim that the fact that the jury
asked a question during deliberations demonstrates that it did
not understand the instructions, but they likewise provide no
support for this assertion. As such, we conclude that it was
well within the district court’s discretion to deny Appellants’
request for a new trial, particularly given the heightened
showing we require of defendants before we will grant the
drastic relief of affording them a new trial.
With all due respect to our dissenting colleague, we believe
the standard of review—and the fact that the decision to grant
a new trial is itself highly discretionary—requires this conclu-
sion. We first note that the dissent spends the majority of its
16 pages focused on advancing two assertions that we have
assumed, for the sake of argument, are true: that the prosecu-
tion’s remarks were improper and that they prejudiced Appel-
lants. Because we assume the validity of both of these
conclusions, we take no issue with this portion of the dissent.
In its final three pages, the dissent expresses the view that
the district court’s instructions to the jury were insufficient to
cure the prejudice caused by the government’s comments.14 It
14
In so stating, the dissent cites to United States v. Wilson, 135 F.3d 291
(4th Cir. 1998), for the proposition that a "general curative instruction was
insufficient to cause the jury to disregard the prosecutor’s improper state-
ment." Ante at 39-40. In Wilson, the prosecution asserted during closing
argument that the defendant had committed a murder that was not part of
the indicted conduct. 135 F.3d at 297-99. This assertion was not supported
by the evidence presented at trial "or any reasonable inference that could
be drawn from it" and "came as a last-minute surprise" to the defense. Id.
In response, the district court did not offer a specific curative instruction,
but only "reminded the jury that the defendants were not on trial for
charges not alleged in the indictment"—a short time after overruling
defense counsel’s repeated objections to the murder argument. Id. at 302.
In these circumstances, we found the "general instruction . . . insufficient."
Id.
UNITED STATES v. LAM 25
also takes issue with the district court’s statement that the jury
could consider "other evidence that came into the record" in
determining whether the two marks were substantially indis-
tinguishable—in addition to a "side by side comparison" and
their "own eyes." J.A. 1587. It further opines that the district
court should have explicitly instructed the jury regarding the
limited effect of certain testimony. The question before us,
however, is not whether we would have instructed the jury
differently—as the dissent no doubt would have—because our
review is not de novo. Rather, we consider whether the dis-
trict court abused its discretion. Our review of the record indi-
cates that the district court undertook a thoughtful and
comprehensive review of the remarks made by the prosecu-
tion, the effect of those comments, and its responses to those
comments—which included two instructions to follow the law
as stated by the court, and not the lawyers, and specific
instructions to the jury to determine whether the marks were
substantially indistinguishable by performing a "side by side
comparison," by using their "own eyes," and to make the deci-
sion on their own. J.A. 1587. Unlike the district court, we do
not have the benefit of having witnessed the government’s
remarks, the jury’s reaction to those remarks, or the jury’s
understanding of the instructions. We therefore decline to
hold that the district court’s conclusion that its curative
instructions had their intended effect and that a new trial was
not required in the interest of justice constituted an abuse of
discretion.
In contrast, the district court here sustained Appellants’ objections to
the prosecution’s improper statements of the law, instructed the jury
immediately after the government’s closing argument to follow the
court’s, not the lawyers’, instructions regarding what the law required, and
subsequently provided detailed instructions regarding how the jury was to
apply the law. As such, we do not believe the situation in this case is com-
parable to that we confronted in Wilson. The dissent draws our attention
to no other cases that support its assertion that we should find that the
curative instruction here failed to cure the prejudice created by the prose-
cutor’s comments.
26 UNITED STATES v. LAM
III.
For the foregoing reasons, the judgment of the district court
is
AFFIRMED.
FLOYD, Circuit Judge, concurring in part, dissenting in part,
and dissenting from the judgment:
On no fewer than eight occasions during its closing and
rebuttal arguments, the government misstated the legal stan-
dard governing the key issue disputed by the parties at
trial—whether the genuine and allegedly counterfeit marks
were "substantially indistinguishable." Six of these misstate-
ments occurred after the district court sustained the first of
four defense objections to the remarks. Nevertheless, the dis-
trict court denied Lam and Chan’s Rule 33 motion for a new
trial, concluding that, although the statements were prejudi-
cial, the court’s curative instruction negated the prejudice.
Because I believe that these statements deprived Appellants of
a fair trial, and because I think the district court abused its dis-
cretion in concluding they did not, I respectfully dissent in
part from the majority opinion.
I.
To establish that a defendant has trafficked in counterfeit
goods, in violation of 18 U.S.C. § 2320, the government must
prove that, in connection with his goods, the defendant used
a "spurious mark . . . that is identical with, or substantially
indistinguishable from" a registered trademark and that the
use of this mark was "likely to cause confusion, to cause mis-
take, or to deceive." Id. § 2320(f)(1)(A). At trial, Lam and
Chan did not contest that they engaged in the conduct alleged
by the government—that is, that they imported handbags
bearing the "Marco mark." Rather, the central issue disputed
by the parties was whether Appellants’ Marco mark was "sub-
UNITED STATES v. LAM 27
stantially indistinguishable" from the registered Burberry
Check mark.
Yet during closing and rebuttal arguments, government
counsel repeatedly misstated the standard governing this key
issue. He instructed the jurors to assume the perspective of the
average consumer who failed to conduct a side-by-side exam-
ination of the marks, specifically directing them to adopt the
view of two government witnesses in place of their own con-
clusions regarding the marks. Despite numerous defense
objections sustained by the district court, the prosecutor con-
tinued to assert this erroneous legal standard.
A.
Government counsel first addressed the issue of the stan-
dard for evaluating whether the marks were substantially
indistinguishable in his closing argument. That determination,
the prosecutor informed the jury, should be made "from the
standpoint of the average purchaser." J.A. at 1426. He went
on to tell the jurors that they no longer occupied such a posi-
tion, stating the following:
Now, like you all, after spending more than a week
in this courtroom, we all probably know a whole lot
more about these marks than the average purchaser
does. All of us do. I mean, after all, how long do you
think an average purchaser spends looking at a mark
on a handbag or wallet to determine whether that
mark is substantially indistinguishable to a registered
mark that they know and remember before deciding
to make the purchase or move on to something else?
How long do you think they spend? 30 seconds? A
minute? It is not going to be a lot of time, certainly
not as long as the defendants have asked everyone in
the Court to stare and look at them.
Id. at 1427.
28 UNITED STATES v. LAM
The prosecutor then urged that, instead of relying on their
own examinations of the marks, jurors should adopt the per-
spective of two government witnesses, Beatrice Bartko and
Francis Golden Abel, consumers who had purchased Lam and
Chan’s handbags believing they were authentic Burberry
products. When moving to call Bartko and Abel as witnesses,
the government asserted that their testimony would be "rele-
vant to [the] material issue" of "likelihood of confusion," id.
at 892, and the district court admitted their testimony solely
for this purpose, id. at 640–41. See also United States v. Lam,
Action No. 3:07-CR-374, 2010 WL 5178839, at *5 (E.D. Va.
Dec. 14, 2010) ("The Government called Bartko and Abel as
witnesses for the likelihood of confusion element of the coun-
terfeiting claim only. . . . The Government was not allowed,
however, to use these witnesses as evidence that the marks
were substantially indistinguishable because they were not
called for that purpose.").
As already noted, however, in his closing argument, after
cautioning the jurors that they no longer possessed the per-
spective of an average consumer, the prosecutor told them to
"put[ ] [them]selves in the shoes of average purchasers on the
street, purchasers like Bea Bartko, purchasers like Fran Abel."
J.A. at 1427–28. Bartko and Abel, he recounted, compared the
"bag they [were] about to buy with what they remember[ed]
. . . of what the genuine mark look[ed] like," without conduct-
ing a side-by-side comparison. Id. at 1428–29.
At that time, defense counsel did not object to the govern-
ment’s comments. But during his closing argument, Chan’s
counsel stated that the government was "confus[ing] two
issues": whether "the bags confuse somebody if they saw
them" and "whether they are substantially indistinguishable or
not." Id. at 1482. By mingling these issues, defense counsel
noted, the government was "get[ting the jury] away from . . .
comparing the marks and making [its] own determination"
regarding distinguishability. Id.
UNITED STATES v. LAM 29
On rebuttal, government counsel once again asserted the
jurors should judge whether the marks "are substantially
indistinguishable from the perspective of an average person,
an average consumer." Id. at 1536. Appellants objected to this
statement, and the district court sustained the objection. Nev-
ertheless, the government immediately continued, "But what
the government suggests, what the government submits, is
this: That the evidence has proven that these bags are substan-
tially indistinguishable from authentic marks owned by Bur-
berry and Gucci to the average consumer." Id. at 1537. Again,
Appellants objected. The district court sustained the objection
on the ground that the government was "conflating two
issues," but the court instructed the government, "Go ahead
and make your argument. I will clear it up." Id.
Shortly thereafter, the government again argued that the
determination of whether the marks were substantially indis-
tinguishable should be made "from the perspective of the
average, ordinary consumer." Id. at 1540; see also id. ("[T]he
test is an average consumer."); id. at 1541 ("This case is about
assessing the evidence from the perspective of an average per-
son, an average consumer."). And the prosecutor further
admonished the jury that they—unlike Bartko and Abel—no
longer enjoyed that perspective. He stated the following:
And ladies and gentlemen of the jury, you have a
difficult task. You have a difficult task, because you
are supposed to assess these facts and look at these
Burberry knock-offs . . . from the standpoint of an
average consumer. You have been in this case listen-
ing to it for a week. You have already developed a
level of expertise and a perception of detail that I
would argue is way above the average consumer.
The average consumer includes people like Beatrice
Bartko, someone who was familiar with the Burberry
bags from shopping, from seeing it in catalogs, who
wanted to add to her collection. She saw a photo-
graph of a Marco bag on the Internet and purchased
30 UNITED STATES v. LAM
it and owned it for a year before determining, before
learning that the bag was counterfeit. And she said
that she thought it was a Burberry based on the pat-
tern, based on the mark. . . . She thought it was sub-
stantially indistinguishable. . . .
Another average consumer, an ordinary consumer,
someone who didn’t have the benefit of a week-long
trial as you have, was Frances Golden Abel. . . . She
bought this bag and for some time she thought it was
a real Burberry. She did it based on her familiarity
with the pattern. . . . She thought this was a real Bur-
berry. That is your evidence of an ordinary con-
sumer. . . . And I submit, the government submits,
that this is evidence both of substantially indistin-
guishable and the likelihood of confusion.
Now, [Chan’s defense counsel] in his closing
arguments basically said you have to look at the dif-
ferences. Sure, you do look at the differences. But
you start with the similarities. That’s what the ordi-
nary consumer does. The ordinary consumer sees
things and sees the similarities and is drawn to it
based on the similarities. . . . There are so many sim-
ilarities, they are substantially indistinguishable to
the ordinary purchaser.
Id. at 1541–43. The district court overruled defense counsels’
objection to this statement without explanation. The district
court went on to sustain one additional objection to the gov-
ernment’s instruction that the jury should "[k]eep [its] eye on
the perspective of the average person when [it is] looking at
substantially indistinguishable." Id. at 1558–59.
In total, the government told the jury to adopt the perspec-
tive of the average consumer on no fewer than eight distinct
occasions during closing arguments. By my count, six of
these comments occurred after the first sustained objection.
UNITED STATES v. LAM 31
The defense entered four objections, three of which the dis-
trict court sustained. Yet the government carried on in making
the erroneous statements and never sought clarification from
the district court regarding the nature of its error.
B.
As the majority notes, the district court provided several
instructions that, it concluded, cured the prejudice caused by
the government’s statements. First, the district court
instructed the jurors generally that they should listen to the
court, not the lawyers, regarding "what the law is." Id. at
1559–60. The district court then directed the jury to determine
whether the marks were substantially indistinguishable as fol-
lows:
[Y]ou have to determine whether or not the mark
that is alleged to be counterfeit is identical to or sub-
stantially indistinguishable from the [registered]
mark . . . . Now, in order to carry out your responsi-
bility as it relates to that part of these instructions,
you have to compare the marks, the mark . . . alleged
to be counterfeit and the mark that is the genuine
mark.
Now, you do that and you make a decision. This
is based on your side-by-side comparison, use of
your own eyes, and any other evidence that came
into the record that might help you in that task. But
it is for you to decide. . . . If you decide that it is sub-
stantially indistinguishable, then you have another
task to deal with, and that task has to do with now
that you have decided that it is counterfeit under the
definition that I have given you, you have to decide
whether or not this counterfeit mark is a mark the
use of which is likely to cause confusion or cause
mistake or to deceive. Everybody understanding
that? It is two separate things. Now, a lot of that got
32 UNITED STATES v. LAM
clouded up in some of these arguments and some of
the discussion. What must be counterfeit is the mark
itself, not the goods.
Id. at 1587–88.
The jury found Lam and Chan guilty on all counts relating
to the Burberry mark.
C.
Following their convictions, Lam and Chan filed a motion
under Federal Rule of Criminal Procedure 33 seeking a new
trial on the ground that the government’s improper statements
constituted reversible prosecutorial misconduct. The district
court concluded that the government’s remarks were both
improper and prejudicial. Lam, 2010 WL 5178839, at *4–9.
Nevertheless, it denied Appellants’ motion because it found
that its instructions to the jury cured this prejudice. Id. at *9.
II.
On appeal, we review the district court’s denial of Lam and
Chan’s motion for a new trial for abuse of discretion. See
United States v. Ibisevic, No. 11-4151, slip op. at 10 (4th Cir.
Mar. 14, 2012). And our review of the district court’s factual
findings regarding a claim of prosecutorial misconduct is for
clear error. United States v. Ellis, 121 F.3d 908, 927 (4th Cir.
1997).
"A prosecutor’s improper closing argument may ‘so
infect[ ] the trial with unfairness as to make the resulting con-
viction a denial of due process.’" United States v. Lighty, 616
F.3d 321, 359 (4th Cir. 2010) (quoting United States v. Wil-
son, 135 F.3d 291, 297 (4th Cir. 1998)). To determine
whether a prosecutor’s remarks require reversal, we consider
"(1) whether the remarks were, in fact, improper, and, (2) if
so, whether the improper remarks so prejudiced the defen-
UNITED STATES v. LAM 33
dant’s substantial rights that the defendant was denied a fair
trial."1 Id.
1
In setting out the standard for a Rule 33 motion, the district court stated
that a court should grant a new trial "only . . . if ‘the evidence weighs so
heavily against the verdict that it would be unjust to enter judgment.’"
Lam, 2010 WL 5178839, at *2 (quoting United States v. Arrington, 757
F.2d 1484, 1486 (4th Cir. 1985)). The majority, quoting United States v.
Perry, 335 F.3d 316, 320 (4th Cir. 2003), repeats this language. Ante at
21-22. Perry, in turn, is quoting United States v. Wilson, 118 F.3d 228,
237 (4th Cir. 1997), which itself quotes Arrington. A review of Wilson and
Arrington, however, reveals that they are addressing motions "based on
the weight of the evidence," where, of course, the jury verdict should be
upheld absent very strong evidence to the contrary. See Wilson, 118 F.3d
at 237 ("We have held that a district court should exercise its discretion
to grant a new trial ‘sparingly’ and that the district court should grant a
new trial based on the weight of the evidence ‘only when the evidence
weighs heavily against the verdict.’" (emphasis added) (quoting Arrington,
757 F.2d at 1486)); Arrington, 757 F.2d at 1485–86 (considering a Rule
33 motion based on the weight of the evidence). Perry involved a Rule 33
motion based on the weight of the evidence and on an inconsistent verdict.
See Perry, 335 F.3d at 322–23 & n.12.
We have found that a district court abused its discretion in denying a
motion for a new trial on other bases without imposing a separate require-
ment that the defendant demonstrate the evidence weighs heavily against
conviction. See Ibisevic, slip. op. at 19–21 (finding that the district court
abused its discretion denying the defendant’s motion for a new trial on the
ground of improperly excluded evidence because in applying harmless-
error analysis, regardless of whether the government’s evidence was suffi-
cient to convict, the court could not say with fair assurance that the error
had not substantially swayed the judgment). And, of course, "some consti-
tutional errors . . . are so fundamental and pervasive" that a new trial
should be granted without regard for any other facts or circumstances.
Delaware v. Van Arsdall, 475 U.S. 673, 681 (1986).
In the context of prosecutorial misconduct, we have held that a defen-
dant may obtain a new trial by demonstrating that the government made
improper remarks that prejudicially affected his substantial rights so as to
deprive him of a fair trial. See United States v. Higgs, 353 F.3d 281, 330
(4th Cir. 2003). Although we have identified the strength of the govern-
ment’s proof absent the improper remarks as one of several factors rele-
vant to the determination of prejudice, we have been careful to note that
no single factor is dispositive of the prejudice inquiry. See Lighty, 616
34 UNITED STATES v. LAM
A.
The government first urges that, contrary to the district
court’s conclusion, its statements were not improper and, as
a result, this court need not review the district court’s finding
with respect to prejudice. I disagree.
The district court found that the prosecutor’s remarks were
improper in two ways. First, "[t]he [g]overnment’s comments
regarding the standard for evaluating whether two marks are
substantially indistinguishable were erroneous" because, in
instructing the jurors that this determination should be made
from the perspective of the average consumer, the prosecutor
told the jury that they should not rely on their own visual
examination to make this factual finding. Lam, 2010 WL
5178839, at *5. Second, the government improperly cited
Bartko’s and Abel’s testimony to establish whether an aver-
age consumer would find the marks substantially indistin-
guishable. This testimony, however, could be used to prove
F.3d at 361. Indeed, we have not hesitated to grant a new trial on the basis
of prosecutorial misconduct where a defendant has established prejudice,
even if the government’s case is strong. See, e.g., Wilson, 135 F.3d at 302
(remanding for a new trial based on the prosecutor’s improper, prejudicial
statements despite "fully recognizing that the drug trafficking evidence . . .
was strong").
I do not believe that the weight of the evidence becomes a separate, dis-
positive factor in a Rule 33 motion based on prosecutorial misconduct.
Although the Constitution does not guarantee a perfect trial, a defendant
is entitled to a fair one. See Lighty, 616 F.3d at 336. Where he has been
deprived of a fair trial by virtue of a prosecutor’s improper remarks caus-
ing prejudice, I think our precedent establishes that a new trial is war-
ranted in the interest of justice. It appears that neither the majority nor the
district court has, in fact, treated the weight of the evidence as a separate
element necessary for the granting of a new trial. Accordingly, I think this
statement is properly read to require only that the facts establish the prose-
cutor’s improper statements caused prejudice based on the relevant fac-
tors, which include but are not limited to the strength of the government’s
case.
UNITED STATES v. LAM 35
only the likelihood-of-confusion element, as that was the sole
purpose for which these witnesses were called. "Thus, even if
an ‘average consumer’ analysis was relevant to the substan-
tially indistinguishable element, the [g]overnment presented
no evidence that the average consumer would have thought
the marks were substantially indistinguishable." Id. I agree
with the district court on both points.
It was clearly within the province of the jury, as fact finder,
to decide whether the Marco and Burberry marks were sub-
stantially indistinguishable. The government nevertheless
argues that its statements were correct in light of Montres
Rolex, S.A. v. Snyder, 718 F.2d 524 (2d Cir. 1983), and Pepe
(U.K.) Ltd. v. Ocean View Factory Outlet Corp., 770 F. Supp.
754 (D.P.R. 1991). See Montres Rolex, 718 F.2d at 533 (hold-
ing that the determination of whether two marks were sub-
stantially indistinguishable should be made from the
standpoint of an average purchaser, rather than an expert);
Pepe, 770 F. Supp. at 758 (discussing Montres Rolex). The
government failed to recognize, however, that both of these
cases arose in the context of civil forfeitures or seizures, with-
out a jury present to make the factual determination. See Mon-
tres Rolex, 718 F.2d at 527; Pepe, 770 F. Supp. at 755–56.
And it is clear that the Montres Rolex court was not holding
that a side-by-side examination of the contested marks was
inappropriate, but rather was rejecting a rule that the court
must adopt the view of an expert who, aided by specialized
knowledge and equipment, is able to identify differences
between marks that are not discernible to an average pur-
chaser. See Montres Rolex, 718 F.2d at 531 (rejecting a test
for the substantially indistinguishable element that depends
upon an expert’s ability to discern differences "aided by a
loupe or microscope" that "would be unnoticed or even undet-
ectable by the average purchaser").
Both the Second Circuit, in Montres Rolex, and the District
of Puerto Rico, in Pepe, conducted visual comparisons of the
goods at issue, rather than relying on the views of individuals
36 UNITED STATES v. LAM
who merely recalled the general appearance of the registered
trademarks. See Montres Rolex, 718 F.2d at 533 ("We exam-
ined the actual bracelets at oral argument . . . ."); Pepe, 770
F. Supp. at 759 ("Using the ‘ocular test’ of direct comparison
of the defendants’ goods with the genuine[,] the Blantor
defendants’ use of the mark PEPE is use of a counterfeit
mark." (citing Fimab-Finanziaria Maglificio Biellese Fratelli
Fila S.p.A. v. Helio Import-Export, Inc., 601 F. Supp. 1 (S.D.
Fla. 1983)). Use of the "ocular test" is particularly apt where
a jury is available to undertake the comparison. Thus, the gov-
ernment erred in instructing the jurors that they should not
conduct a visual comparison and that, after hearing evidence
at trial, they were no longer positioned to make the requisite
factual determination.
In addition, the district court correctly found that the gov-
ernment erred in directing the jury to adopt the views of
Bartko and Abel on this issue. The district court allowed these
witnesses’ testimony because it was relevant to the likelihood-
of-confusion issue.2 Yet the government repeatedly and exten-
sively invoked their testimony for the purpose of establishing
that the marks were substantially indistinguishable. This was,
as the district court found, improper.
I must next consider the district court’s determination
regarding whether the improper remarks caused prejudice
depriving Lam and Chan of a fair trial.
B.
We have identified the following factors as relevant to the
prejudice inquiry:
2
Likelihood of confusion is properly adjudged from the perspective of
the average purchaser based on the conditions encountered in the market-
place, where a close, side-by-side visual inspection of the goods is infeasi-
ble. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:58 (4th ed. 2011).
UNITED STATES v. LAM 37
"(1) the degree to which the prosecutor’s remarks
have a tendency to mislead the jury and to prejudice
the accused; (2) whether the remarks were isolated
or extensive; (3) absent the remarks, the strength of
competent proof introduced to establish the guilt of
the accused; and (4) whether the comments were
deliberately placed before the jury to divert attention
to extraneous matters." We also consider (5) whether
the prosecutor’s remarks were invited by improper
conduct of defense counsel, and (6) whether curative
instructions were given to the jury.
Lighty, 616 F.3d at 361 (citations omitted) (quoting United
States v. Adam, 70 F.3d 776, 780 (4th Cir. 1995)). No single
factor is dispositive. Id. Here, the district court found that fac-
tors one, two, and five favored granting a new trial; factor
three was mixed; and factors four and six favored the govern-
ment. See Lam, 2010 WL 5178839, at *6–11.
I agree with the district court that factor one, the tendency
of the prosecutor’s remarks to mislead the jury and prejudice
the defendant; factor two, the extensiveness of the remarks;
and factor five, whether Appellants invited the remarks, favor
Lam and Chan. The remarks were highly prejudicial. Whether
the marks were substantially indistinguishable was the central
issue disputed by the parties at trial. The government not only
misstated the relevant legal standard but also suggested that
the jurors should adopt the view of government witnesses in
place of their own. Accordingly, the government’s statements
were highly likely to mislead the jury.
Moreover, the remarks were extensive, particularly during
the government’s rebuttal argument, in which the prosecutor
cited the average-consumer standard no fewer than seven
times. The prosecutor also spoke at length on two occasions
about why he believed the jurors had become too sophisti-
cated to judge the evidence correctly and should, instead,
adopt the perspective of Bartko and Abel. The improper
38 UNITED STATES v. LAM
remarks pervaded the government’s argument, and the district
court correctly found they were extensive. I also agree with
the district court that Lam’s and Chan’s counsel did nothing
to invite these remarks.
As to the third factor, the strength of the government’s
proof absent the remarks, the district court found "that the
[g]overnment did not present a wealth of other evidence to
prove the substantially indistinguishable element of a counter-
feiting charge," but that the government presented some evi-
dence showing that Lam and Chan "knew they were
culpable." Id. at *8. Although the district court identified only
a limited body of evidence of guilt, I accept that this finding
was not clearly erroneous.3
I do find, however, that the district court clearly erred in
concluding that the prosecutor’s statements were not deliber-
ate. In my view, factor four must be found to favor Appel-
lants. The district court found that the prosecutor did not
deliberately seek to mislead the jury because he genuinely
believed that he had set forth the correct standard on the "sub-
stantially indistinguishable" element. Where, however, a pros-
ecutor continues to make an incorrect statement of the law
after the district court has sustained repeated objections to that
statement, notifying the prosecutor of the error, the court
should, in my opinion, infer some degree of deliberateness.
3
This finding, of course, is not dispositive. In prior cases, we have not
hesitated to order new trials due to improper remarks by prosecutors that
cause prejudice, even where the government presented sufficient or strong
evidence of guilt. Wilson, 135 F.3d at 302 (remanding for a new trial due
to the prosecutor’s improper and prejudicial statements during closing
arguments even while "fully recognizing that the drug trafficking evidence
against [the defendant] was strong"); United States v. Mitchell, 1 F.3d 235,
242 (4th Cir. 1993) (finding that the prosecution introduced sufficient evi-
dence other than the improper remarks to support a conviction, but never-
theless finding prejudice requiring reversal). Here, the government’s case
can withstand a sufficiency of the evidence challenge, but it was hardly
overwhelming. Indeed, a prior trial of Appellants on these charges resulted
in a mistrial due to a hung jury.
UNITED STATES v. LAM 39
To be clear, I do not disturb the district court’s finding that,
when the prosecutor began to speak, he believed that his state-
ments accurately reflected the law. But a prosecutor’s refusal
to acknowledge his error after multiple sustained objections
should be viewed as deliberate, and a court should deduce
from his decision to soldier on a deliberate attempt to mislead
the jury.
Likewise, the district court erred in failing to make a sepa-
rate determination of deliberateness with respect to the prose-
cutor’s references to Bartko’s and Abel’s testimony. The
government based its motion to admit this testimony on its
relevance to likelihood of confusion, and the prosecutor’s
plain disregard of the narrow purpose for which this evidence
was admitted further evinces the deliberate nature of his com-
ments.
The district court concluded, after considering the first five
factors, that the prosecutor’s statements were prejudicial. I
agree, but contrary to the district court, I believe that factor
four also militates in favor of prejudice.
C.
Despite finding that the government’s remarks were preju-
dicial, the district court held that its curative instructions were
sufficient to cure the prejudice. The majority, too, has treated
this factor as determinative. I cannot share their view that the
district court’s instructions dispelled the prejudice and
ensured Lam and Chan received a fair trial.
The district court noted that it provided general curative
instructions that the jury should follow the directions of the
court, rather than the lawyers, as to the applicable law. In light
of the pervasive and highly misleading nature of the prosecu-
tor’s comments, I have no difficulty concluding that these
general instructions were insufficient to cure the prejudice.
See Wilson, 135 F.3d at 302 (finding that general curative
40 UNITED STATES v. LAM
instruction was insufficient to cause the jury to disregard the
prosecutor’s improper statement in that case).
Furthermore, contrary to the district court’s finding, I can-
not agree that the court’s specific instruction on the "substan-
tially indistinguishable" element was sufficient to dissipate
the prejudicial effect of the prosecutor’s remarks. The district
court did tell the jury to compare the allegedly counterfeit
mark with the Burberry mark. J.A. at 1587. But it went on to
instruct the jury that it should base its determination of this
element not only on the jurors’ "side-by-side comparison" of
the marks, but also on "any other evidence that came into the
record." Id.
Thus, the district court allowed the jurors to rely on any and
all evidence introduced at trial and failed to focus the jurors
on the "ocular test." Most notably, at no time did the district
court limit the jurors’ use of Bartko’s and Abel’s testimony or
instruct them that Bartko and Abel had not conducted the req-
uisite visual comparison of the marks.4 Nor did the district
court disabuse the jurors of the notion that they had gathered
too much expertise to make the indistinguishability determi-
nation based on their own perceptions.
The district court’s instructions, therefore, failed to counter
several of the serious errors that the court had identified in the
prosecutor’s statements. And I do not think that the district
court was within the bounds of its proper discretion to find
that the limited guidance it provided to the jury was sufficient
to counter the strong evidence of prejudice established by the
remaining factors.
4
As evidence that its instruction was sufficient to cure the prejudice, the
district court cited the fact that the jury convicted Appellants of counter-
feiting the Burberry Check mark but not a Gucci trademark. Lam, 2010
WL 5178839, at *11. It is notable, then, that Bartko and Abel testified
only as to their confusion regarding goods bearing the Burberry mark, and
the prosecutor presented and cited no similar evidence regarding the Gucci
mark.
UNITED STATES v. LAM 41
III.
Ultimately, considering all factors relevant to the determi-
nation of prejudice, I am compelled to conclude that the gov-
ernment’s highly misleading and erroneous statements
regarding a central issue disputed at trial prejudiced Lam and
Chan, depriving them of the fair trial to which they are enti-
tled. Moreover, I find that the district court abused its discre-
tion in finding that its instructions to the jury cured this
prejudice. Accordingly, with all due respect to the district
court and my esteemed colleagues, I dissent.