Intellectual Property Law

Ninth Circuit Finds Counterfeiting Constitutes Crime of Moral Turpitude

By Michael Atkins

Senegal citizen Elimane Tall got involved in counterfeiting. In 2003, he pled guilty to one count of “counterfeit of a registered mark” in violation of California Penal Code § 350(a)(2), which imposes criminal penalties on any person who “willfully manufactures, intentionally sells, or knowingly possesses for sale any counterfeit of a mark registered with the Secretary of State or registered on the Principal Register of the United States Patent and Trademark Office…” In 2004, Mr. Tall pleaded guilty to nine new counts of “counterfeit of a registered mark” and one count of “counterfeit of a registered mark with a prior,” which landed him in prison.

After serving his time, the U.S. Department of Homeland Security sought to have him deported under the Immigration and Nationality Act as an alien convicted of a crime of “moral turpitude.” The immigration judge adopted the government’s position that “fraud is so inextricably woven into the statute as to clearly be an ingredient of the crime,” and ruled that Mr. Tall’s counterfeiting crimes indeed involved “moral turpitude.”

Mr. Tall appealed to the Ninth Circuit, which affirmed the immigration judge in a published decision. Its analysis is interesting for trademark lawyers because it characterizes counterfeiting as a form of fraud and theft:

“Under the categorical approach, § 350(a) is a crime involving moral turpitude because it is an inherently fraudulent crime. Either an innocent purchaser is tricked into buying a fake item; or even if the purchaser knows the item is counterfeit, the owner of the mark has been robbed of its value. The crime is really a species of theft. All of the conduct punished by § 350(a), ‘willfully manufactur[ing], intentionally sell[ing], or knowingly possess[ing] for sale any counterfeit … mark,’ is inherently fraudulent because each type of conduct ‘involve[s] knowingly false representations to gain something of value.’”

That’s a pretty good summary why counterfeiting — and even trademark infringement — is worth fighting against.

The case cite is Tall v. Mukasey, 517 F.3d 1115, No. 06-72804 (9th Cir. Feb. 12, 2008).

Full post as published by Seattle Trademark Lawyer on April 15, 2008 (boomark / email).