Criminal Trademark Enforcement and the Problem of Inevitable Creep

This Article, delivered as the 2017 Oldham Lecture at the University of Akron School of Law, focuses on the federal Trademark Counterfeiting Act (TCA), the primary source of federal criminal trademark sanctions. That statute was intended to increase the penalties associated with the most egregious form of trademark infringement — use of an identical mark for goods identical to those for which the mark is registered and in a context in which the use is likely to deceive consumers about the actual source of the counterfeiter's goods. The TCA was intended to ratchet up the penalties associated with counterfeiting, but only in cases involving particularly egregious conduct.Several recent trends in the application of the TCA, however, suggest that doctrinal creep is afoot. Not only has Congress twice broadened the statute and increased the associated penalties, but courts also have played an active role in expanding the range of conduct that is subject to liability under the TCA. These trends are consistent with a number of parallel developments in and around intellectual property law in which provisions created on the promise of narrow application to the most serious violations have in fact been applied far more broadly than originally claimed. Collectively these developments suggest a strong tendency for this form of regulation (particularly the use of extreme, but supposedly narrowly-tailored, sanctions) to fail along the scope dimension. Indeed, that evolution is so common that one might think it is inevitable. This should give lawmakers real pause when considering these types of legal responses. To put it simply, if these provisions are initially justifiable only to the extent they are limited to the truly egregious cases, then their costs are likely to exceed their benefits over time because narrow application will not hold