Volume 88, Number 6

December 2013

Knock-Off My Mark, Get Set, Go to Jail? The Improprieties of Criminalizing Post-Sale Confusion

Zachary J. King

The Trademark Counterfeiting Act (TCA) has been widely applied to cases of postsale confusion, which occurs when someone buys a knock-off luxury item knowing that it is fake. When liability is predicated on post-sale activity, the only people that are confused are the members of the general public who observe someone wearing what looks like a genuine brand item—a Rolex watch or Louis Vuitton bag for instance—and think it is real when in fact it is not. While every circuit that has dealt with knock-off goods has held that post-sale confusion is criminalized by the TCA, this Note argues that this conclusion relies on an improper reading of the statute. The TCA was only designed to make criminal those actions that were clearly actionable civilly in 1984, when it was enacted. This Note will show that post-sale confusion was far from uniformly accepted civilly in 1984 and argue that, therefore, it should not be read into the TCA. Furthermore, this Note argues that the harms of post-sale confusion are identical to the harms of dilution, which was not covered in the Lanham Act until 1996 and was never included in the TCA. The Note then examines the statutory scheme to argue that Congress had only point-of-sale confusion in mind when it enacted the TCA. The statute unambiguously fails to cover more typical dilutive sales, which is strong evidence that, contrary to the courts’ collective reasoning, Congress did not have the harms of dilution in mind when it added criminal penalties to trademark law. Finally, this Note argues that, from a policy perspective, post-sale confusion should not be criminalized. The harms are small, and companies have had a great deal of success combatting knock-offs with civil actions. There is no need to impose severe fines and long prison terms for selling knock-offs. This Note concludes by stating that there are serious harms from counterfeits that create point-of-sale confusion, but the public does not take these seriously because they think only of knock-offs when they think about counterfeits. The decriminalization of the sale of knock-offs will allow the public to be more willing to accept the true dangers of “real” counterfeits and to become more vigilant in the marketplace.