United States v. Diallo

575 F.3d 252, 92 U.S.P.Q. 2d (BNA) 1609, 2009 U.S. App. LEXIS 16999, 2009 WL 2342668
Court of Appeals for the Third Circuit·Decided July 31, 2009·No. 07-3641·Published·Cited by 23 cases

Opinions

OPINION

SMITH, Circuit Judge.

A petit jury convicted Mamadou Diallo of intentionally trafficking in goods and knowingly using a counterfeit mark on or in connection with those goods in violation of 18 U.S.C. § 2320(a). The goods were handbags bearing a counterfeit “LV” logo. The counterfeit “LV” logo was substantially indistinguishable from the genuine “LV” logo owned by the Louis Vuitton Malletier Corporation, a designer of luxury handbags. Diallo contends that his conviction should be set aside because the evidence was insufficient in that it failed to establish his “use” of the counterfeit mark. Alternatively, Diallo asserts that his conviction should be vacated because the jury instruction defining the term “use” was incorrect. For reasons explained below, we will affirm.

I.

On July 13, 2005, Pennsylvania State Trooper Timothy Callahan stopped Diallo’s [254] van on Interstate-80 because the license plate was not illuminated. During the traffic stop, Trooper Callahan observed numerous sealed plastic bags in the van. After the traffic stop was concluded, Trooper Callahan explained to Diallo that he was free to go, but proceeded to mention that Interstate-80 is a corridor for the transportation of drugs from New York. He asked if Diallo had any drugs or firearms in the van. When Diallo denied possession of any such items, Trooper Callahan asked him what was contained in the plastic bags. Diallo replied that the bags contained clothes. When Trooper Callahan asked to see the clothes, Diallo opened the rear of the vehicle, pulled out a plastic bag, and opened it. What Trooper Callahan observed were numerous handbags bearing the “LV” mark. Knowing that Louis Vuitton handbags were an exclusive item sold only by Louis Vuitton stores, Trooper Callahan asked Diallo to whom the bags belonged. Diallo admitted they belonged to him and showed Trooper Callahan a business license from Indianapolis. Unimpressed, Trooper Callahan arrested Diallo.

A grand jury for the United States District Court for the Western District of Pennsylvania subsequently returned a one-count indictment against Diallo, charging him with violating 18 U.S.C. § 2320(a).1 A jury trial commenced on April 10, 2006. The witnesses presented by the Government in its case in chief included Trooper Callahan, Diallo’s passenger, Housseinou Diakhaby, expert witnesses who explained that the handbags were not genuine products of the Louis Vuitton Malletier Corporation, and a previous customer of Diallo’s Indianapolis store who related how she discovered that handbags she had purchased were not genuine Louis Vuitton handbags.

Diallo submitted his proposed jury instructions on the second day of trial. Relying upon the Supreme Court’s decision in Bailey v. United States, 516 U.S. 137, 116 S.Ct. 501, 133 L.Ed.2d 472 (1995), and its interpretation of the word “uses” in 18 U.S.C. § 924(c), Diallo argued that the jury had to find beyond a reasonable doubt that he actively employed the counterfeit mark on or in connection with the handbags by displaying or offering them for sale. Consistent with this theory, Diallo moved for a judgment of acquittal under Federal Rule of Criminal Procedure 29. He claimed that because the handbags were sealed in bags in the back of his van they had not been displayed or offered for sale. The District Court reserved ruling on this motion.

During closing arguments, Diallo’s counsel conceded that all but one of the elements of the offense were met — the element of “use.” He argued that “use” required active employment of the mark by showing or displaying the goods bearing the counterfeit mark. On rebuttal, the government argued that “use begins when [Diallo] bought them in New York, carried them along the highway for purposes of using them at his commercial venture to sell.” The prosecutor explained to the jury that Diallo “uses them when he buys them as inventory, as stuff he is going to take to his business in Indianapolis, [and] put up on all of those racks.”

[255] The Court instructed that the government had to prove beyond a reasonable doubt:

First, that the defendant trafficked or attempted to traffic in goods.
Second, that such trafficking or attempt to traffic was intentional.
Third, that the defendant used a counterfeit mark on or in connection with the goods.
And fourth, that the defendant knew the marks used on the goods were counterfeit.

The Court defined “traffics” and “counterfeit mark” in accordance with their statutory definitions. Because the statute does not define “use,” however, the jury instructions did not elaborate on the meaning of that term. During its deliberations, the jury submitted a question to the Court:

What is the definition of “use” as it pertains to this trial ... [and] the 3rd [and] 4th elements of the charge? Is it pertaining to a physical exchange or use of one or more senses?

The District Court excused the jury for the night, and the following morning provided counsel an opportunity to respond to the question. Defense counsel, again relying on the Supreme Court’s decision in Bailey, urged that the instruction should “say affirmative acquisition is not enough to prove that the defendant used a mark on or in connection with the goods, that possession is not enough, that possession with intent to sell is not enough, and that trafficking, as defined by statute, is not enough to prove use.... ”

After considering counsel’s arguments, the District Court distinguished the Supreme Court’s decision in Bailey and declared that

the prudent course is to provide the jury with a dictionary definition of the word “use” both from Black’s Law Dictionary and the Webster’s Third New International Dictionary, Unabridged Version, and the Court will reduce that instruction into writing and make it part of the record....

The instruction to the jury stated that the “Definition of the word ‘use’ ” is “[t]o make use of, to put into action or convert to one’s service, to avail oneself of, to have recourse to or enjoyment of, to employ.” Defense counsel objected to the portion of the definition that said “to have recourse to or enjoyment of.” Following this instruction, the jury deliberated briefly before finding Diallo guilty of violating 18 U.S.C. § 2320(a). Post-verdict, Diallo renewed his Rule 29 motion for judgment of acquittal, challenging the sufficiency of the evidence for the element of use.2

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United States v. Diallo, 575 F.3d 252, 92 U.S.P.Q. 2d (BNA) 1609, 2009 U.S. App. LEXIS 16999, 2009 WL 2342668 (3d Cir. 2009).

575 F.3d 252 (United States v. Diallo) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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