DMLP Amicus Update: Narrow Victory in Massachusetts Anti-Counterfeiting Case

The DMLP recently appeared as an amicus curiae in Commonwealth v. Busa, a case brought in Boston Municipal Court under Massachusetts's anti-counterfeiting law, M.G.L. ch. 266 ยง 147 ("Section 147"). Yesterday morning the BMC gave us a narrow victory by granting the defendant's motion to dismiss, but without resolving the underlying question of Section 147's constitutional validity.

The case arose after defendant Matthew Busa sold anti-Vancouver Canucks shirts outside of the Boston Garden during last year's Stanley Cup Finals. The shirts had the Canucks logo with a circle and line through it (approximated in the image at right), and on the back read "Boston Fights, Vancouver Bites," a reference to an incident from game 1 of the finals. The Commonwealth arrested Busa and seized these shirts under Section 147, claiming that they were an unauthorized reproduction of the Canucks's trademark. Busa filed a motion to dismiss the indictment on a variety of grounds, including unconstitutional overbreadth and copyright preemption. At yesterday's hearing Busa also moved to report the question of Section 147's constitutional validity to the Massachusetts Appeals Court under Massachusetts Criminal Procedure Rule 34.

The DMLP filed an amicus brief in support of the motion to dismiss, urging the court to declare Section 147 invalid. As we noted previously, the infirmity of this law rests not with what it says, but what it omits. Section 147 makes it a crime to manufacture, use, display, distribute, or sell any item or service bearing a word, image, or design that another person uses as a registered trademark, without such person's authorization. There is no requirement for the Commonwealth to show that the use is likely to cause confusion as to the good or service's origin. No exception is made for uses of others' trademarks that are protected under traditional trademark law, such as a use to refer to the original mark holder (a common occurrence in news reporting) or use of works for their non-trademark, common-language meaning. As our brief argues, the blanket prohibition of any unauthorized reproduction or display of any word or image used as a registered trademark is overbroad to the point of absurdity, and also transforms the law into a form of copyright regulation, thus interfering with Congress's exclusive domain in that area.

Yesterday morning Judge Raymond Dougan heard oral arguments on the two motions brought by Busa. After the Commonwealth stated that they did not oppose Busa's motion to dismiss, Busa's attorney, Michael Roitman, asked the court to hold on the motion to dismiss and report the constitutional question first, so as to preserve a formal challenge to the statute itself. Judge Dougan declined to do so, granting the motion to dismiss and denying the motion to report.

So where does that leave us?

There's a lot of good to take away from this. Busa will not be punished for selling the shirts that he sold, and the case lays a clear path for others to follow when challenging Section 147 prosecutions. I was very glad to see the Commonwealth's decision not to oppose the motion to dismiss, and hope that our brief helped inform the DA's decision. (And while we're on this point, another big, big thank you the HLS Cyberlaw Clinic and clinical students Michael Adelman and Brandon Hammer for their help with the brief.)

But that said, Section 147 remains on the books, and that fact poses a danger to free expression. The law still punishes a wide array of protected speech, and its existence may lead to additional improper prosecution or a chilling effect around speakers.

There is also something insidious about how this particular case played out. Mr. Busa desired to express an opinion, produced articles that embody that opinion, and attempted to distribute those articles so as to convey that opinion to others. This is classic free speech, even if done in the context of sports rivalries and t-shirts. And the state, in turn, seized the articles before they could reach the public, held them until they no longer had significance, and then dropped the charges so as to prevent a challenge to the underlying authority to seize in the first place. This is a classic restraint on free speech, and one capable of the repeating-while-evading-review behavior that leads the Supreme Court to loosen the regular case or controversy requirements.

But all of these problems are easily curable. I hope that the Massachusetts legislature takes this occasion to revise the law, inserting the appropriate safeguards to limit its application and preserve its constitutionality. It's a shame that Mr. Busa had to go through all of this, but hopefully he will be the last.

Andy Sellars is a staff attorney at the Digital Media Law Project and a fellow at the Berkman Center for Internet & Society. While arguing for the greater principle at stake, he agrees wholeheartedly with Matthew Busa's sentiments regarding the Bruins and the Canucks.


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