United States v. Chong Lam

677 F.3d 190, 2012 WL 1258996
CourtCourt of Appeals for the Fourth Circuit
DecidedApril 16, 2012
Docket11-4056, 11-4081
StatusPublished
Cited by82 cases

This text of 677 F.3d 190 (United States v. Chong Lam) is published on Counsel Stack Legal Research, covering Court of Appeals for the Fourth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
United States v. Chong Lam, 677 F.3d 190, 2012 WL 1258996 (4th Cir. 2012).

Opinions

Affirmed by published opinion. Judge DUNCAN wrote the opinion, in which Judge SHEDD joined. Judge FLOYD ■wrote a separate opinion concurring in part, dissenting in part, and dissenting from the judgment.

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 smuggling goods into the United States. The counterfeiting convictions 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, Appellants advance various challenges to their convictions for trafficking in counterfeit goods under 18 U.S.C. § 2820(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’ participation in the manufacture, import, and sale of handbags and wallets bearing counterfeit trademarks. Since 1999, Appellants have owned or otherwise controlled at least 10 companies 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 located in China and Hong Kong that engaged in the manufacture and export of such goods.2 Appellants transferred significant 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 [194]*194counterfeit were copies of legitimate marks registered 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 Import”) — one of the companies controlled by Appellants — 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 registered to Burberry and other luxury designers4 “secreted” within legitimate handbags and gym bags. J.A. 1204. Specifically, 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 Appellants.

B.

On March 26, 2009, a federal grand jury sitting in the Eastern District of Virginia issued a superseding indictment charging 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.

Prior to the second trial, Appellants filed a motion in limine seeking to have the district court declare the phrase “substantially indistinguishable,” as used in 18 U.S.C. § 2320, unconstitutionally vague. Section 2320(a) criminalizes “intentionally trafficfking] or attempting] to traffic in goods or services 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 indistinguishable” 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 Trademark Office and in use.” Appellants argued that an average person could not understand the meaning of “substantially indistinguishable” in this context [195]*195and that the vagueness of the term encouraged arbitrary enforcement of the anticounterfeiting 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 registered 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 Burberry 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, Ltd. (“Marco Leather Goods”), another company controlled by Appellants, because the company had registered for copyright 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 registered 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.

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Cite This Page — Counsel Stack

Bluebook (online)
677 F.3d 190, 2012 WL 1258996, Counsel Stack Legal Research, https://law.counselstack.com/opinion/united-states-v-chong-lam-ca4-2012.