Filed: Dec. 17, 2008
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Summary: [DO NOT PUBLISH] IN THE UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT FILED _ U.S. COURT OF APPEALS No. 07-10106 ELEVENTH CIRCUIT _ December 17, 2008 THOMAS K. KAHN D. C. Docket No. 06-20169-CR-FAM UNITED STATES OF AMERICA, Plaintiff-Appellee, versus JUAN PENTON, Defendant-Appellant. _ Appeal from the United States District Court for the Southern District of Florida _ (December 17, 2008) Before BIRCH and MARCUS, Circuit Judges, and FORRESTER,* District Judge. PER CURIAM: * Honorable J.
Summary: [DO NOT PUBLISH] IN THE UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT FILED _ U.S. COURT OF APPEALS No. 07-10106 ELEVENTH CIRCUIT _ December 17, 2008 THOMAS K. KAHN D. C. Docket No. 06-20169-CR-FAM UNITED STATES OF AMERICA, Plaintiff-Appellee, versus JUAN PENTON, Defendant-Appellant. _ Appeal from the United States District Court for the Southern District of Florida _ (December 17, 2008) Before BIRCH and MARCUS, Circuit Judges, and FORRESTER,* District Judge. PER CURIAM: * Honorable J. ..
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[DO NOT PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT FILED
________________________ U.S. COURT OF
APPEALS
No. 07-10106 ELEVENTH CIRCUIT
________________________ December 17, 2008
THOMAS K. KAHN
D. C. Docket No. 06-20169-CR-FAM
UNITED STATES OF AMERICA,
Plaintiff-Appellee,
versus
JUAN PENTON,
Defendant-Appellant.
________________________
Appeal from the United States District Court
for the Southern District of Florida
_________________________
(December 17, 2008)
Before BIRCH and MARCUS, Circuit Judges, and FORRESTER,* District Judge.
PER CURIAM:
*
Honorable J. Owen Forrester, Senior United States District Judge for the Northern
District of Georgia, sitting by designation.
Defendant, Juan Jose Penton, was prosecuted for violating 18 U.S.C.
§ 2320(a), the Trademark Counterfeiting Act. After a jury trial, Penton was found
guilty and the court sentenced him to five years’ probation with five months of
home confinement, a $7500 fine and a $300 special assessment. On appeal,
Defendant argues that (1) the district court erred in denying his motion for
judgment of acquittal for the insufficiency of the evidence in general and
specifically with reference to Count 3 of the indictment; (2) the district court erred
in refusing to give Defendant’s requested jury instruction on his theory of the
defense; and (3) the Government’s improper closing argument deprived Defendant
of his due process right to a fair trial. After a thorough review, we find no
reversible error and affirm.
I. Background
The indictment charged Defendant with three counts of trafficking and
attempting to traffic in counterfeit goods – cigars – on October 5, 2005. Count 1
of the indictment alleges trafficking of Cuban Cigar Brands, N.V. (“CCB”) marks,
Count 2 of Max Rohr marks, and Count 3 of General Cigar Co. marks. Three
other counts were dropped by the Government at trial and are not at issue.
CCB is a corporation of the Netherlands Antilles with its principal place of
business in Fort Lauderdale, Florida. CCB owns the United States trademarks for
2
the following brands and associated artwork: Monte Cristo, H. Upmann, and Por
Larranaga. Max Rohr is a Delaware corporation with its principal place of
business in Delaware. Max Rohr owns the United States trademarks for Romeo y
Julieta and Trinidad. Altadis U.S.A. is a Delaware corporation with its principal
place of business in Fort Lauderdale, Florida. Altadis U.S.A. is the exclusive
licensee of CCB and Max Rohr.
General Cigar Co. is a Delaware corporation with its principal place of
business in New York, New York. General Cigar owns the United States
trademarks for Cohiba, Partagas, Flor de Tabacos de Partagas YCA, Hoyo de
Monterrey, Hoyo de Monterrey de Jose Gener Excalibur, Bolivar Simon Bolivar,
Simon Bolivar the Liberator, Punch Elite, Punch Punch, Punch Gran Fabrica de
Tabacos Punch, and de J. Valley ca Manuel Lopez Habana.
The police investigation of Penton began when Altadis U.S.A. provided
information to the Miami-Dade County police that enabled them to send an
undercover officer to Defendant’s shop. In a sting that occurred on October 5,
2005, Defendant sold to the officer and a confidential informant sixty boxes of
cigars: fifteen boxes of Cohiba Esplendidos, ten boxes of Montecristo Number 2,
ten boxes of Romeo y Julieta Churchill, ten boxes of Partagas Lusitania, ten boxes
of Hoyo de Monterrey Coronas, and five boxes of Hoyo de Monterrey Pyramid.
3
The boxes contained a combination of trademarked terms and artwork as well as
the words “Habana,” “Habana, Cuba,” “Habanos SA,” and “Hecho en Cuba.” The
boxes were sealed with fabricated Cuban seals and contained fake Cuban
government guarantees in the boxes. “Habana” was also printed on the cigar
rings. DE150, at 82-83.
Eric Workman, Altadis U.S.A.’s vice-president of marketing and national
accounts, testified at trial. He identified trademarked names and artwork for
Montecristo, Romeo y Julieta, Trinidad, H. Upmann, and Por Larranaga. DE150,
at 67-82. Mr. Workman published to the jury genuine cigar boxes, cigars, and
cigar rings for these brands. Id. He also testified that the boxes sold by Defendant
were not sold with Altadis U.S.A.’s authorization.
Id. at 83-85, 91. Mr. Workman
testified that he understood Defendant’s boxes referenced Cuba, but that it was not
unusual for genuine cigar manufacturers to reference Cuba in their packaging.
DE150, at 91-99. Cooper Gardiner, vice president of marketing for General Cigar
Co., provided similar testimony for the brands Partagas, Punch, Hoyo de
Monterrey, Bolivar, and Cohiba. Genuine boxes, cigars, and cigar rings for these
brands were published to the jury. DE152, at 50-55.
Defendant’s witness, Gary Arzt, an investor, business consultant, and avid
cigar smoker, also testified that most consumers do not see the outside of a cigar
4
box and simply ask for a brand name, such as Montecristo, without specifying
whether it is the Cuban variety or variety sold in the United States. DE156, at 94-
95. On cross-examination, Mr. Arzt testified that the artwork and trademark on
Defendant’s Romeo y Julieta cigar box was not substantially different from
Altadis U.S.A.’s Romeo y Julieta product. Id. at 110-11. Mr. Arzt testified the
same concerning Defendant’s Partagas artwork and that trademarked by General
Cigar in the United States.
Id. at 111-12.
Defendant testified at trial that he was imitating the Cuban brands which
were not protected in the United States. DE116, at 13-15. He said he did not
think it was a crime to sell boxes of replica “Cuban” cigars. Id. at 15. He testified
that he had never sold full boxes before the sting sale and his business was selling
empty “Cuban” trademarked boxes that were replicas of what he had in Cuba as a
child before the Revolution.
Id.
Both at the conclusion of the Government’s case and his defense, Defendant
moved for a judgment of acquittal. Defendant argued that there was no evidence
in the record that the Cohiba Esplendido and the Partagas Lusitania cigar brands
were “in use” in the United States, as required by the statute. DE156, at 77-79.
Defendant also contended that the evidence showed that there were “parallel”
marks in the United States and Cuba and that Defendant’s cigar boxes did not
5
imitate the United States marks, but rather the Cuban marks which are not
protected in the United States under the structure of the Helms-Burton statute. As
such, Defendant’s conduct did not violate 18 U.S.C. § 2320(a). Id. at 80; DE158,
at 36. With respect to Defendant’s “in use” argument on the Cohiba Esplendido
and the Partagas Lusitania cigars, the district court noted that in addition to those
brands, Count 3 also encompassed the Hoyo de Monterrey brand for which there
was testimony of “use” in the United States. Therefore, the court denied
Defendant’s motion on that basis but noted that it might eventually have
implications for sentencing. DE156, at 79. The court also denied Defendant’s
motion on his Cuban imitation theory.
Id. at 84-85.
II. Discussion
A. Sufficiency of the Evidence
We review the denial of a motion for judgment of acquittal and the
sufficiency of the evidence to sustain a conviction de novo viewing the evidence
in the light most favorable to the government, and drawing all reasonable
inferences and credibility choices in favor of the jury’s verdict. United States v.
Campa, 529 F.3d 980, 992 (11th Cir. 2008). “Whether the government proved the
jurisdictional element [of a statute] is measured as a challenge to the sufficiency of
6
the evidence.” United States v. Key, 76 F.3d 350, 353 (11th Cir. 1996) (per
curiam).
Defendant contends that his conviction violates the expanded Helms-Burton
Act because it equates to the Government granting protection to Cuban marks. He
also asserts that the Government did not offer proof that the marks were “in use”
or that their use would result in consumer confusion. We note initially that
Defendant did not raise his consumer confusion argument at trial, on his motions
for acquittal, or at any length in his initial appellate brief. We need not determine
whether Defendant waived this issue, however, because even considering
Defendant’s argument, the Government presented sufficient evidence of consumer
confusion at trial.
To understand the context of Defendant’s arguments, some background on
the Cuban revolution and eventual embargo imposed by the United States is
helpful. See generally Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462
(2d Cir. 2005), and
213 F. Supp. 2d 247 (S.D.N.Y. 2002). Fidel Castro took
control of the Cuban government on January 1, 1959.
Culbro, 213 F. Supp. 2d at
256. The Castro regime nationalized cigar manufacturers on September 15, 1960.
Id. Some of the owners of the appropriated companies fled to the United States
7
and other countries and reopened their businesses “using the trademarks their
families had owned before the government seizure.” Id.
The United States imposed an embargo on Cuba in 1963.
Culbro, 399 F.3d
at 465. The terms of the embargo were set forth in regulations promulgated by the
Office of Foreign Assets Control within the Department of Treasury.
Id. Those
regulations were eventually codified by Congress in 1996 in the Cuban Liberty
and Democracy Solidarity Act (“LIBERTAD Act”), Pub. L. No. 104-114, Title I,
§ 102, 110 Stat. 792 (1996) (codified at 22 U.S.C. § 6032(h)), also known as the
Helms-Burton Act. The embargo regulations prevent Cuban cigar companies from
selling cigars in the United States.
Id. As initially promulgated, however, the
embargo did not prevent tobacco companies controlled by the Cuban government
from registering trademarks in the United States. See
Culbro, 213 F. Supp. 2d at
256; Empresa Cubana Exportadora de Alimentos y Productos Varios v. United
States Dep’t of Treasury,
516 F. Supp. 2d 43, 47 (D.D.C. 2007). In a series of
litigation in the 1960s and 1970s, however, U.S. courts determined that the fleeing
families had obtained common law rights to the trademarks prior to the
nationalizations.
Culbro, 213 F. Supp. 2d at 256. As the rights of the individual
owners had been clarified, some families began selling trademark registrations to
8
U.S. cigar manufacturers. Id. at 256-57. Thus, the notion of “parallel brands”
developed. That is,
the Cuban government sells a Cuban cigar in Cuba and other parts of
the world under the same apparent trademark as an unrelated
company that sells a non-Cuban cigar in the U.S. It is not the same
trademark, however, as the U.S. cigars are sold under trademarks
which the owners had registered and used in the United States for the
sale of their cigars prior to the expropriation of the Cuban cigar
companies.
Id. at 257.
The Helms-Burton Act was further amended in 1999 to expand its coverage
to intellectual property rights.1 Section 211 of the amendment provides:
(a) (1) Notwithstanding any other provision of law, no
transaction or payment shall be authorized or approved
pursuant to section 515.527 of title 31, Code of Federal
Regulations, as in effect on September 9, 1998, with
respect to a mark, trade name, or commercial name that
is the same as or substantially similar to a mark, trade
name, or commercial name that was used in connection
with a business or assets that were confiscated unless the
original owner of the mark, trade name, or commercial
name, or the bona fide successor-in-interest has
expressly consented.
(2) No U.S. court shall recognize, enforce or otherwise
validate any assertion of rights by a designated national
1
This amendment was enacted on October 21, 1998, in Section 211 of the Omnibus
Consolidated and Emergency Supplemental Appropriations Act, 1999, Pub. L. No. 105-277, §
211, 112 Stat. 2681, 2681-88 (1998). There is no official legislative history of this amendment
which was passed as part of an omnibus appropriations bill and has no particular name. As the
parties have referred to it as the Helms-Burton Act, we will do so as well for the sake of
consistency.
9
based on common law rights or registration obtained
under such section 515.527 of such a confiscated mark,
trade name, or commercial name.
(b) No U.S. court shall recognize, enforce or otherwise validate
any assertion of treaty rights by a designated national or its
successor-in-interest under sections 44(b) or (e) of the
Trademark Act of 1946 (15 U.S.C. § 1126(b) or (e)) for a mark,
trade name, or commercial name that is the same as or
substantially similar to a mark, trade name, or commercial
name that was used in connection with a business or assets that
were confiscated unless the original owner of such mark, trade
name, or commercial name, or the bona fide successor-in-
interest has expressly consented.
Id. The import of this legislation is to prohibit Cuban companies from registering
“appropriated” trademarks in the United States without permission of the original
owner. U.S. courts are also prohibited from recognizing any such rights.
Defendant’s theory of the case is that his cigar box replicas were copies of
Cuban cigars and trademarks, not those of Altadis and General Cigar Co. Because
Cuban marks are not entitled to any protection in the United States, Defendant
argues, he cannot have committed a crime by copying Cuban trademarked
material. The problem for Defendant is that we have already rejected his defense
in a similar case. In United States v. Guerra, 293 F.3d 1279 (11th Cir. 2002), three
defendants were indicted for trafficking in counterfeit cigars. Guerra also
defended against the charges arguing that his products were meant to copy the
Cuban marks and not the United States marks.
Id. at 1287. In affirming Guerra’s
10
conviction under the terms of 18 U.S.C. § 2320(d), we determined that “it is
irrelevant that Guerra did not know the marks were registered in the United States,
or thought the marks were only unprotectable Cuban marks.” Id. Based on
Guerra, therefore, Defendant’s theory of Cuban counterfeiting is not available to
him.
We reject Defendant’s argument that Guerra is no longer good law because
it was issued prior to the 1998 amendment of the Helms-Burton Act which
purportedly established the idea of the “parallel marks.” Defendant’s argument
with respect to “parallel marks” is premised in his belief that under the Helms-
Burton Act, parallel marks are not entitled to protection in the United States. We
find, however, that this is not an accurate statement of the law. The Helms-Burton
Act provides that no transactions or enforcement of rights of Cuban trademarks
can occur under United States law. For this reason, the district court properly
instructed the jury that Cuban marks are entitled to no protection in United States
courts. This limitation, however, is not extended to a trademark that is properly
registered with the United States Patent and Trademark Office by a company
incorporated outside of Cuba. The mere fact that the trademarks used by Altadis
and the other victims in this case are “parallel” to marks used by Cuban companies
for Cuban cigars marketed outside the United States does not mean that the U.S.
11
marks registered by U.S. companies are not protected. Here, testimony at trial
demonstrated that the original owners sold their rights to various companies,
including Altadis U.S.A. and Cuban Cigar Co. More significantly, however, there
is nothing in the Helms-Burton Act which indicates it would apply to a federal
criminal prosecution.
Next, Defendant argues to us – as he did in the district court – that his
motion for acquittal on sufficiency of the evidence should at least have been
granted on Count 3 because the evidence showed that Cohiba Esplendidos and
Partagas Lusitania cigars are not sold in the United States and therefore could not
be “in use” under the terms of § 2320. Title 18 Section 2320(a) reads:
Whoever; intentionally traffics or attempts to traffic in goods or
services and knowingly uses a counterfeit mark on or in connection
with such goods or services, or intentionally traffics or attempts to
traffic in labels, patches, stickers, wrappers, badges, emblems,
medallions, charms, boxes, containers, cans, cases, hangtags,
documentation, or packaging of any type or nature, knowing that a
counterfeit mark has been applied thereto, the use of which is likely
to cause confusion, to cause mistake, or to deceive, shall, if an
individual, be fined not more than $2,000,000 or imprisoned not more
than 10 years, or both . . . .
Id. See also § 2320(e)(1)(A)(ii) (mark must be “identical with, or substantially
indistinguishable from, a mark registered on the principal register in the United
States Patent and Trademark Office and in use”).
12
As the district court recognized, Defendant correctly states the law as to
these two types of cigars; however, Count 3 also charged Defendant with
counterfeiting the Hoyo de Monterrey cigar also produced by General Cigar Co.
Because evidence was presented as to the Hoyo de Monterrey cigars, the jury was
still entitled to reach a verdict on Count 3 with any question of the number of
cigars impacted going to sentencing.
Finally, Defendant asserted at oral argument that the Government did not
present sufficient evidence with respect to whether the use was likely “to cause
confusion.” We note that Defendant did not raise this argument to the district
court at trial, although the district court carefully considered the Government’s
burden of proof on this statutory element. See, e.g., DE152, at 68-71 (district
court discussing what type of testimony would be required to demonstrate
confusion).
Significantly, during the trial, all parties agreed, based on our prior
precedent, that it is not necessary to show proof of confusion through the
testimony of consumers or experts or the admission of surveys. See United States
v. Torkington, 812 F.2d 1347 (11th Cir. 1987). In Torkington, the defendant was
charged with two counts of violating the Trademark Counterfeiting Act of 1984,
the same statute at issue in the instant matter. The district court held that
13
§ 2320(d)(1)(A) required a showing that direct purchasers would be likely
confused, mistaken or deceived by the allegedly counterfeit goods. Id. at 1349.
Because there was an enormous price differential between the counterfeit Rolex
watches offered by the defendant and authentic Rolex watches, the district court
held as a matter of law that it was unlikely that direct purchasers would be
confused.
We rejected this conclusion and held:
section 2320(d)(1)(A) does not require a showing that direct purchasers
would be confused, mistaken or deceived; rather, the section is satisfied
where it is shown that members of the purchasing public would be likely to
be confused, mistaken or deceived. Moreover, we find that this likely
confusion test includes the likelihood of confusion in a post-sale context.
Id. We further noted that it was a jury question as to whether a direct purchaser
would be confused, mistaken or deceived.
Id. at 1353 n.8. Thus, we reversed the
district court’s dismissal of the indictment against the defendant by noting that in
addition to the indictment that set forth each element of the crime, “the district
court had before it evidence that the allegedly counterfeit watches are externally
identical to authentic Rolex watches and bear both the name ‘Rolex’ and the Rolex
crown trademark emblem.”
Id. at 1354. Several of our sister circuits have reached
the same conclusion. See also United States v. Foote,
413 F.3d 1240 (10th Cir.
2005) (extending application beyond direct purchasers); United States v. Hon, 904
14
F.2d 803 (2d Cir. 1990) (same); United States v. Yamin,
868 F.2d 130 (5th Cir.
1989) (same); United States v. Gantos,
817 F.2d 41 (8th Cir. 1987) (same).
Furthermore, we reiterated in Guerra that it was not necessary for a
trademark holder to testify before the jury or that the agent who conducted the
investigation be qualified as an expert in a particular type of product. 293 F.3d
1279 (11th Cir. 2002). “In this case, the jury had been shown registered designs of
the trademarks for each cigar, as well as various cigar labels or bands produced by
authorized licensees. The jury therefore had a valid basis for comparison in
determining whether the designs were ‘identical or substantially identical.’”
Id. at
1288.
Here, Defendant was able to assert to the jury – through his own testimony,
and Mr. Artz’s, as well as the arguments of his counsel – that he was merely
mimicking Cuban cigar brands. This activity was not illegal, Defendant averred to
the jury, because Cuban trademarks do not receive protection in the United States.
The Government argued to the jury that Defendant’s cigar boxes were not replicas
of Cuban brands, but rather were confusingly similar to trademarks and artwork
registered by U.S. corporations with the United States Patent and Trademark
Office. Numerous witnesses testified about the appearance of the boxes and the
jury had the boxes in the jury room. According to its verdict, the jury ultimately
15
concluded that Defendant’s cigar boxes were likely to cause confusion with the
American brands. Defendant does not – and cannot argue – that the jury’s
conclusion is contrary to the weight of the evidence presented.
B. Jury Instructions
We review the district court’s refusal to give a requested jury instruction for
abuse of discretion. United States v. Richardson, 532 F.3d 1279, 1289 (11th Cir.
2008). A refusal to give a requested instruction is an abuse of discretion if: (1)
the requested instruction is correct, (2) the court did not address the substance of
the instruction in the charge, and (3) the failure to give the instruction seriously
impaired the defendant’s ability to present an effective defense.
Id.
During the charge conference, the parties debated whether it was necessary
for the court to instruct the jury on the Cuban embargo as well as “parallel marks.”
The court ultimately gave the jury the following instructions:
Title 18 United States Code, Section 2320(a) makes it a Federal
crime or offense for anyone to traffic in counterfeit goods or services.
For you to find the Defendant guilty of these crimes alleged in
Counts 1 to 3, you must be convinced that the government has proved
on the date alleged in each of the following beyond a reasonable
doubt:
First: That the Defendant trafficked, or attempted to
traffic, in goods, that is cigars.
16
Second: That such trafficking, or attempt to traffic, was
intentional;
Third: That the Defendant knowingly used a counterfeit
mark on, or in connection with, those goods; and
Fourth: That the use of the counterfeit marks was likely to
confuse the purchasing public to cause mistake, or
to deceive. The likely confusion test includes the
likelihood of confusion in a post-sale context.
The term “traffic” means to transport, transfer, or otherwise
dispose of, to another, for common commercial advantage or financial
gain.
See DE95, at 7.
The court instructed the jury on “Counterfeit Mark” as:
A “mark” is a word, name, symbol, or device, or any
combination thereof, used to identify and distinguish goods and to
indicate their source. A mark used on or in the sale of goods is
known as a trademark. A certificate of registration from the United
States Patent and Trademark Office is initial evidence of the validity
of the registered mark, of the ownership of the mark, and of the
owner’s exclusive right to use the registered mark. That is, such a
certificate is sufficient proof of the existence of a valid registered
mark unless outweighed by other evidence in the case.
A mark need not be absolutely identical to be considered
counterfeit.
A “counterfeit mark” is a mark that is spurious, or not genuine
or authentic and is identical with, or substantially indistinguishable
from, a mark in use and registered for those same goods or services
on the principal register in the United States Patent and Trademark
Office. In order for the mark on the goods at issue to be genuine, it
17
must be placed there by the legitimate owner of the mark or with the
owner’s authorization. The genuine mark must not only be federally
registered, but must also be in actual use at the time of the
defendant’s use of that mark. Finally, a counterfeit mark is a mark
the use of which is likely to confuse the purchasing public.
For you to find that the genuine marks were “in use,” the
Government must prove, beyond a reasonable doubt, that the genuine
marks were actually being used during the period of the offense by
the genuine mark holder on or in connection with the goods or
services for which the genuine marks are registered. Evidence of
such use may, but need not, include testimony that the mark appears
on every good; advertisement depicting the mark and its goods or
services; or legal action to enforce trademark rights.
See id. at 8.
The court described “Cuban marks” as:
United States trademark law does not protect Cuban
trademarks. However the law prohibits actions that deceive
consumers and impact a producer’s goodwill through the deceptive
and misleading use of protected marks. The Government has the
burden to prove that the use of the counterfeit of the protected marks
is likely to confuse the purchasing public. The Government also has
to prove that the defendant intentionally dealt in goods and
knowingly used a counterfeit of a protected mark in connection with
those goods. The government does not have to prove that the
defendant knew the law. What the government must prove is that he
intentionally trafficked in goods knowing that the goods are
counterfeit.
See id. at 11. At Defendant’s request, the court specifically agreed to add the
word “protected” throughout the “Cuban marks” instruction. At the charge
conference, Defendant conceded that the court’s addition of the word “protected”
18
mooted his request for a charge on the Cuban embargo. See DE158, at 131-34.2
Because of this concession before the district court, we do not consider any
arguments made by Defendant with respect to the Cuban embargo instruction.
On appeal, Defendant argues that the district court abused its discretion in
refusing to give his proffered instruction on “parallel marks.” Defendant’s
argument with respect to “parallel marks” is premised in his belief that under the
Helms-Burton Act, parallel marks are not entitled to protection in the United
States. We found above, however, that this is not an accurate statement of the law.
The mere fact that the trademarks used by Altadis and the other victims in this
case are “parallel” to marks used by Cuban companies for Cuban cigars marketed
outside the United States does not mean that the U.S. marks registered by U.S.
companies are not protected. Once this defense theory is recognized and rejected,
the issue of jury instructions is more readily analyzed.
2
Defendant had requested a charge on the Cuban Embargo which stated:
The Court has determined and instructs you as a matter of law that the sale of
Cuban cigars is illegal in the United States but not in other countries and that
trademarks in which Cuba has an interest are not protectable under United States
law.
See Appellant’s Brief, at 11. He also wanted a charge on “Invalid Cuban Marks”:
In this case the defendant contends that the alleged counterfeit mark used
on the cigars was invalid as a Cuban trade mark. The defendant has the burden of
proving by a preponderance of the evidence that the alleged counterfeit mark is a
Cuban trade mark.
If you find by a preponderance of the evidence that the alleged counterfeit
mark was a Cuban mark, your verdict should be for the defendant.
Id.
19
The court denied Defendant’s requested instruction on “parallel marks”
which read:
The defendant contends that the alleged counterfeit marks are
parallel marks and that the packaging of cigars in [sic] inherently
distinctive and identified the cigars as Cuban cigars with Cuban
marks. The defendant has the burden of proving by a preponderance
of the evidence that the alleged counterfeit marks are parallel marks.
Preponderance of the evidence means that you must be persuaded by
the evidence that it is more probably true than not true that the
counterfeit marks are parallel marks.
If you find by a preponderance of the evidence that the
counterfeit mark is distinguished from the United States protected
trademark, you must find the defendant not guilty.
See DE103.3
The court did offer, however, to give an instruction directly from the case
Defendant cited – Culbro, 213 F. Supp. 2d 247 – which provided:
“parallel brands” developed, i.e., the Cuban government sells a Cuban
cigar in Cuba and other parts of the world under the same apparent
trademark as an unrelated company that sells a non-Cuban cigar in the
U.S. It is not the same trademark, however, as the U.S. cigars are
sold under trademarks which the owners had registered and used
3
Defendant had also proposed a written instruction on the definition of parallel
trademarks which read:
The court has determined and instructs you as a matter of law that parallel
trademarks are not protected by United States law. In this case parallel
trademarks means those marks which the Cuban government sells in Cuba and
other parts of the world under the same apparent trademark as another company
that sells a non-Cuban cigar in the United States. They are not the same
trademarks.
See Appellant’s Brief, at 10.
20
in the United States for the sale of their cigars prior to the
expropriation of the Cuban cigar companies.
Id. at 256-57 (emphasis added). Defendant, however, would only agree to that
instruction if the court did not read the portion in bold. See DE158, at 114-16.
The court refused to give a partial definition but offered to Defendant that the
court would consider any other definition of “parallel marks” that Defendant could
locate.
Id. at 115-34. Defendant did not provide any.
As we have discussed above, there is no dispute that the concept of parallel
marks exists. However, the fact that marks can be described as “parallel” does not
mean that the marks registered in the United States by U.S. companies are not due
any protection. The Government elicited testimony at trial that the marks used by
Altadis and General Cigar Co. were traced to those used by the individual families
that left Cuba and came to the United States after the Cuban government
nationalized the cigar industry. DE152, at 4-5, 38-39. We disagree with
Defendant’s assertion that because one of the American companies holding the
trademarks is a subsidiary of a corporation partially owned by the Cuban
government, the American company would not be entitled to trademark protection
under Helms-Burton. Further, the instructions given by the district court made it
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clear that Cuban trademarks are not protected in the United States. Thus, the jury
was only comparing Defendant’s cigar boxes to the American trademarks.
We conclude that Defendant’s proffered “parallel marks” instruction was
not a complete statement of the law because it omitted a portion of the statement
made by the district court in Culbro. Further, we find that Defendant was
adequately able to argue his theory of defense to the jury without a “parallel mark”
instruction.
C. Prosecutorial Misconduct/Closing Arguments
“In reviewing claims of prosecutorial misconduct, ‘we must assess (1)
whether the challenged comments were improper; and (2) if so, whether they
prejudicially affected the substantial rights of the defendant.’” United States v.
Miranda, 279 Fed. Appx. 950, 951-52 (11th Cir. 2008) (per curiam) (quoting
United States v. Arias-Izquierdo, 449 F.3d 1168, 1177 (11th Cir. 2006)). As
Defendant’s counsel objected to the comments at trial, the standard of review is de
novo. United States v. Bailey,
123 F.3d 1381, 1400 (11th Cir. 1997). “A
defendant’s substantial rights are prejudicially affected when a reasonable
probability arises that, but for the remarks, the outcome of the trial would have
been different.” United States v. Eckhardt,
466 F.3d 938, 947 (11th Cir. 2006).
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In its initial closing, the Government argued that although Defendant used
boxes and labels designed to look like “Cuban” cigars, the names, symbols, and
artwork Defendant used were identical to or substantially indistinguishable from
the U.S. trademarks. Defendant’s attorney argued in his closing that copying
Cuban cigars and marks was not a crime because Cuba had no rights in the United
States. Defendant’s attorney also implied that Altadis U.S.A. was a puppet of the
Cuban government and that the Cuban government was behind Altadis U.S.A.’s
registration of marks in the United States and behind the prosecution of
Defendant. Specifically, Defendant’s counsel stated:
This is not about U.S. trademarks. Let me tell you how you know
that. You have to analyze, look at the big picture . . . . What is the
big picture here?
The big picture is easy. These guys are the little puppets of Altadis.
Who is Altadis? Altadis is fifty percent business partner of the Cuban
Government.
What were they looking for? They were trying to figure out a way
around U.S. laws to figure out how they could protect Cuban
trademarks. That’s really what this is all about.
See DE151, at 11.
In its rebuttal closing, the Government responded to defense counsel’s
assertions that Defendant did not commit a crime because Cuba had no rights in
the United States. The Government argued that if Defendant’s interpretation were
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correct, if a country such as Cuba or Venezuela decided to copy a McDonald’s
trademark, then anyone in the United States could open a McDonald’s (without
authorization from the company) by contending it was legal to do so because he
was just copying the Cuban or Venezuelan McDonald’s and not the U.S.
McDonald’s. In response to defense counsel’s comments about Altadis U.S.A.,
the Government stated that the case was not about the Cuban embargo and that the
jury would be receiving no instructions on the Cuban embargo. Rather, the jury
was only to determine whether Defendant violated 18 U.S.C. § 2320(a).
Specifically, Mr. Gilfarb, the prosecutor, stated:
I think Burger King used to have the phrase, have
it your way. The defendant cannot have it his way.
He can’t have it his way because the argument is
that if Cuba or any other nation decides to ignore
our laws about what is protected then anyone here
in the United States can copy that –
MR. HERRERA: Objection.
THE COURT: Grounds?
MR. HERRERA: Inconsistent with the law and facts.
THE COURT: Overruled. What the lawyers say is not the law
nor is it the facts. It’s what they think the facts
are. And the law I will give you the law. You will
decide what the facts are.
MR. GILFARB: Now Cuba decides it’s going to have a McDonalds
–
MR. HERRERA: Objection, Golden Rule.
THE COURT: Overruled.
MR. GILFARB: Then somebody in Hialeah says I am going to
have a McDonalds too, so it’s the Cuban
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McDonalds. Then you have Hugo Chavez who
decides he wants a McDonalds in Venezuela –
MR. HERRERA: Objection. This is Golden Rule.
THE COURT: Overruled.
MR. GILFARB: How long will that go on before U.S. trademark
law means nothing. That is the defendant having
it his way. U.S. law would mean nothing in the
end. This defendant stole what Castro couldn’t.
Reached into the United States and stole what
Castro could not.
Stole from these expatriates their reputations and
their names. That Altadis, S.A., the parent
company to one of the victims, only one of the
victims – by the way, if you decide to for some
reason ignore Altadis as the victim what is the
defense to General Cigar that Altadis, S.A. is
violating the embargo because it’s a Spanish
corporation not subject to the jurisdiction here that
has a subsidiary company that is victim to a
company that violates the embargo? Despite that
the U.S. Government granted them protection, the
protection of the Patent and Trademark Office.
That doesn’t make sense. Just because a company
that does business here has a parent that does
business with Cuba that violates the embargo.
There is not going to be an embargo instruction.
You will be instructed on the law relevant to this
case. There’s no embargo instruction.
See DE151, at 20-22.
We do not find the prosecutor’s remarks to be improper. Throughout the
trial, Defendant’s counsel referred to the situation in Cuba and accused the
Government of siding with Fidel Castro and protecting Cuban trademarks. He
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also repeatedly argued that the Government was going after the “little guy” and
protecting companies owned by the Cuban government. The Government’s
comments were in direct response to Defendant’s assertion that a guilty verdict
would be tantamount to supporting the Cuban government.
Even if we did find the comments to be improper, we would not find that
they prejudicially affected the substantial rights of the defendant. Upon objection
of defense counsel, the district court reminded the jury that the comments of the
lawyers reflect neither the law nor the facts. Both the Government and Defendant
were able to press their theories to the jury. The Government argued that
Defendant was copying the trademarks of U.S. companies; Defendant argued he
was copying Cuban trademarks which are not afforded protection in the United
States. With this issue squarely presented to the jury, nothing in the rebuttal
argument of the Government prejudiced Defendant’s right to have the jury
consider his theory of the evidence. We do not find there is a reasonable
probability that but for these remarks, the outcome of the trial would have been
different.
III. Conclusion
For the above-stated reasons, we AFFIRM Defendant’s convictions and
sentence.
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