Conviction for Counterfeit Zyprexa Appealed

the government also contends that zyprexa's compliance with fda justice's manual on prosecuting intellectual property crimes explains that this f i l e d evidence was insufficient to establish that the zyprexa trademark was: (1) were registered and used prior to and after the conspiracy was formed . . . ." 164 alleging that the trademark holders registered and used trademarks for items testimony from the eli lilly employee that the potency range of each zyprexa is the preferred procedure for proving registration. united states department counterfeit zyprexa, tamiflu, plavix, casodex, and aricept, respectively. the connection with such goods or services." 18 u.s.c. � 2320(a)(1). to establish a the trademarks were registered on the principal register. the employee testified enforcement agent that the items seized from the defendant's business were requirement, as indicated by the employee's testimony. a statement that a drug of justice, prosecuting intellectual property crimes 101 (3d ed. 2006), available at http://www.justice.gov/criminal/cybercrime/ipmanual/ipma2006.pdf. in the united states court of appeals mark so used was counterfeit." united states v. hanafy, 302 f.3d 485, 487 (5th plaintiff-appellee cir. 2002). xu challenges only the third element--proof that he used a violation, the government must prove that: "(1) the defendant trafficked or identical to items registered as trademarks with the uspto, was sufficient to may be registered on the uspto's supplemental register, recorded with counterfeit products, with tags affixed showing various trademarks registered 3 address xu's argument that there was no evidence that the mark was "in use" registered on the principal register in the united states patent and trademark f. app'x at 585. the court found that a contemporaneously filed civil complaint, principal register, as opposed to being registered in some other manner. no. 09-20074 moreover, the statement that the trademark was "registered," standing alone, appellant kevin xu was convicted by a jury of conspiring to traffic in evidence from which a jury could reasonably conclude that zyprexa was a here, the government did not introduce a certificate of registration for traffic, was intentional; (3) the defendant used a counterfeit mark on or in zyprexa, but not samples of the original, authentic drug from which a jury could we have found no case in this circuit addressing the quantum of proof case: 09-20074 document: 00511042472 page: 3 date filed: 03/04/2010 appeal from the united states district court office, and (2) "in use" at the time of the offense. register in the united states patent and trademark office ["uspto"] and in requirements indicates registration on the principal register. they point to defraud and mislead, in violation of 21 u.s.c. �� 331(a) and 333(a)(2) (counts "registered commitment." nor did the government make any attempt to show no. 09-20074 counterfeit pharmaceutical drugs, in violation of 18 u.s.c. � 371 (count 1), case: 09-20074 document: 00511042472 page: 1 date filed: 03/04/2010 (counts 5 � 9). xu filed a post-verdict motion for judgment of acquittal pursuant was required to demonstrate that the mark was registered on the uspto's 2000). no. 09-20074 principal register, as required to meet the definition of "counterfeit" under 18 (unpublished); united states v. defreitas, 92 f. supp. 2d 272, 278 (s.d.n.y. essential elements of the crime beyond a reasonable doubt." id. (quoting march 4, 2010 sufficient to show the third element of a violation of � 2320(a)(1). it is section 2320 punishes "[w]hoever[] intentionally traffics or attempts to at the time of the offense. "relevant question is whether, after viewing the evidence in the light most emilio m. garza, circuit judge: trademark registered on the principal register, but that it failed to do so. the made to demonstrate that authentic zyprexa carried the same symbol. the closest the government came to presenting testimony about the employee's statement did nothing to establish that the mark was listed on the 5 conspiracy can be indirectly established . . . [by] evidence that trademarks . . . eli lilly, he never stated that zyprexa was a mark registered on the uspto's 4 principal register. 18 u.s.c. � 2320(e)(1)(a)(ii); see also united states 2 employee of eli lilly (the manufacturer of zyprexa) was sufficient to show that prove that the trademarks were registered and in use. id. similarly, in uspto's principal register. because we reverse on this ground, we need not kevin xu, united states court of appeals that a "registered commitment" has anything to do with registration on the traffic in goods or services and knowingly uses a counterfeit mark on or in case: 09-20074 document: 00511042472 page: 4 date filed: 03/04/2010 trademark registration is usually a simple pro forma matter of offering a 2�4), and trafficking in counterfeit goods, in violation of 18 u.s.c. � 2320(a) similar to those found in the defendant's possession, and testimony from a law see united states v. park, 164 f. app'x 584, 585�86 (9th cir. 2006) an expert, were sufficient proof that the marks at issue were registered and in from xu. although the employee referred to the zyprexa as "counterfeit" and defreitas, the court found that actual samples of both the genuine and zyprexa. xu contends that the government was, therefore, required to produce no. 09-20074 connection with such goods or services; and (4) the defendant knew that the united states of america, v. clerk explained how the samples obtained from xu differed from the drug produced by introducing into interstate commerce misbranded drugs with the intent to with, or substantially indistinguishable from, a mark registered on the principal attempted to traffic in goods or services; (2) such trafficking, or the attempt to symbol that's next to zyprexa" on one of the allegedly counterfeit containers of before smith, garza, and clement, circuit judges. case: 09-20074 document: 00511042472 page: 2 date filed: 03/04/2010 we review de novo the denial of a rule 29 motion for a judgment of to federal rule of criminal procedure 29(c) as to counts 5 � 9 for trafficking in acquittal. united states v. valle, 538 f.3d 341, 344 (5th cir. 2008). in tablet is a "registered commitment." no testimony was offered defining a in park, the ninth circuit held that "registration and use at the time of u.s.c. � 2320(e)(1)(a)(ii). use." 18 u.s.c. � 2320(e)(1)(a)(ii). thus, a rational juror must be able to by the trademark holder, coupled with testimony from the company's ceo and element" that must be satisfied to charge a � 2320 violation). the eli lilly favorable to the prosecution, any rational trier of fact could have found the package of allegedly counterfeit goods, not authentic drugs, and no effort was infer trademark registration. the government argues that testimony of an district court granted his motion, except as to count 5, for trafficking in the principal register" and "in use." that he conducted tests on samples of the suspected counterfeit zyprexa obtained symbol." this too is insufficient. first, the symbol being discussed was on a case: 09-20074 document: 00511042472 page: 5 date filed: 03/04/2010 "counterfeit mark." under the statute, a "counterfeit mark" must be "identical on the principal register. is insufficient to sustain the conviction. a trademark may be registered in a crimes 101. to prove that the mark was counterfeit, however, the government charles r. fulbruge iii the medication. the employee stated that it was the "registered trademark government introduced a number of exhibits of the allegedly counterfeit uspto's principal register, as opposed to simply some form of fda method of proof, at least two courts have found other types of evidence sufficient. conclude beyond a reasonable doubt that the mark at issue was "registered on trademark itself was when the eli lilly employee was asked about the "little found beyond a reasonable doubt that the zyprexa mark was registered on the united states department of justice,prosecuting intellectual property determining if there was sufficient evidence to support a conviction, the (noting that federal registration on the principal register is a "jurisdictional unsurprising that we have not previously considered this issue because proving accordingly, the judgment of conviction on count 5 is vacated and the customs, or registered with state agencies. see, e.g., 15 u.s.c. � 1091 et seq.; department of justice, prosecuting intellectual property crimes 101 omitted). counterfeit zyprexa. xu appeals his conviction on that count, arguing that the jackson v. virginia, 443 u.s. 307, 319 (1979)) (internal quotation marks use. 92 f. supp. 2d at 278. fifth circuit for the fifth circuit for the foregoing reasons, we find that a rational juror could not have case is remanded for resentencing consistent with this opinion. defendant-appellant certified copy of the certificate of registration. indeed, the department of potency level is a "registered commitment" is simply not evidence of registration although offering certificates of registration may be the most straightforward no. 09-20074 number of ways. in addition to registration on the principal register, a mark for the southern district of texas