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USA Brief in Wham-O

USA Brief in Wham-O

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Published by: lawrencehig on Jun 30, 2011
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This Court has held that the substantive prohibition against false marking is a

criminal one. Pequignot, 608 F.3d, at 1363; see also Boyd v. Schildkraut Giftware Corp.,

936 F.2d 76, 79 (2d Cir. 1991). That conclusion, however, does not alter the fact that

a qui tam action under Section 292(b) is a civil action to recover a civil fine. See

See Fish v. Manning, 31 F. 340, 340 (S.D.N.Y. 1887) (“The sufficiency of the


complaint is to be determined according to the rules applicable to civil actions, and

according to the state practice in similar or analogous actions at common law, and not

according to the analogies of criminal procedure.”); see also, e.g., Channel Master Corp.

v. JFD Electronics Corp., 260 F. Supp. 568 (E.D.N.Y. 1966) (Section 292(b) claim may

be joined with other civil claims); Trabon Engineering Corp. v. Eaton Mfg. Co., 37 F.R.D.

51 (N.D. Ohio 1964) (civil discovery rules apply); Sippit Cups, Inc. v. Michael's Creations,

Inc., 180 F. Supp. 58 (E.D.N.Y. 1960) (defendant must submit to discovery through

deposition); Hawloetz v. Kass, 25 F 765 (CCD NY 1885) (civil burden of proof and

rules of evidence apply).


Pequignot, 608 F.3d, at 1361-63. Thus, when the patent laws were recodified in 1952,

the Committee report described the changes to the false marking prohibition and

distinguished between the “criminal action” and the “[t]he informer action” (a synonym

for qui tam suit). S. Rep. 82-1979, at 31; cf. Kingsley Books, Inc., 354 U.S., at 441 (listing

separately “a criminal prosecution” and a “qui tam action”).

This two-pronged approach is consistent with the historic practice of “Congress

provid[ing] what we would now consider to be both civil and criminal penalties for the

same conduct, and authoriz[ing] private citizens to bring defendants to justice by ‘action

of debt’ [a civil action].” Krent, supra, at 297. It is also consistent with the statute’s


text which permits a qui tam plaintiff to “sue,” (§ 292(b)) – a term generally reserved for

civil actions.

Accordingly, if a person or company engages in false marking, the United States

may prosecute the criminal infraction and, if there is a conviction, ask a Court to

impose criminal penalties. Section 292(a) imposes a fine of not more than $500 per

An “action of debt” was a historic form of civil action used to collect sums of


money. See A Dictionary of American & English Law with Definitions of the

Technical Terms of the Canon and Civil Laws 353 (1888) (S. Rapalje & R. Lawrence

eds.); H. Black, Dictionary of Law Containing Definitions of the Terms and Phrases of

American and English Jurisprudence, Ancient and Modern 234 (1891) (giving as an

example of a “civil action,” an “action of debt”).


occurrence. 35 U.S.C. § 292(a). In the context of a criminal prosecution, because it is

a criminal fine for an infraction, that fine is increased by 18 U.S.C. § 3571 to a

maximum of $5,000 for individuals ($10,000 for corporations) per occurrence, or twice

the monetary gain or loss, whichever is greatest. See 18 U.S.C. § 3571(b)(2), (b)(7),

(c)(2), (c)(7), (d). And as Congress decided, a qui tam plaintiff may bring a civil action

to collect a civil penalty of up to $500 per occurrence. See § 292(b).

To be sure, some courts have described the civil penalty for false marking as

“penal” and sometimes relied on that label to interpret the substantive prohibition

narrowly. See, e.g., Mayview Corp. v. Rodstein, 620 F.2d 1347, 1359 (9th Cir. 1980);

Filmon Process Corp., 404 F.2d, at 1355, Brose, 455 F.2d, at 765; G. LeBlanc Corp., 310

F.2d, at 459. But that may reflect only an analysis of the substantive prohibition. See

United States ex rel. Marcus, 317 U.S., at 542.

Or, it may reflect that the term“penal” describes statutes that impose penalties,

including civil penalties. See, e.g., Filmon Process Corp., 404 F.2d, at 1355 (“35 U.S.C.

§ 292(b), while penal, is not a criminal statute.”); Black’s Law Dictionary (9th ed. 2009)

(defining “penal” as “Of, relating to, or being a penalty or punishment”; Black’s Law

Dictionary (9th ed. 2009) (defining a “penal action” as including “[a] civil proceeding

in which either the state or a common informer sues to recover a penalty from a

defendant who has violated a statute”); see also John Salmond, Jurisprudence 107


(Glanville L. Williams ed., 10th ed. 1947) (describing the historic practice of deterring

harmful conduct with “civil rather than of the criminal law” through “a penal action,

as being brought for the recovery of a penalty” that “might be brought, according to the

wording of the particular statute creating the penal action, either by the

Attorney–General on behalf of the state, or by a common informer on his own

account.”). Moreover, the narrow construction may reflect only a traditional rule of

interpretation that addressed “not only such statutes as in terms impose a fine, or

corporal punishment, or forfeiture as a consequence of violating laws, but also all acts

which impose * * * damages beyond compensation.” William M. Lile et al., Brief

Making and the Use of Law Books 344 (3d ed. 1914).

In any event, even if qui tam actions are not easily classified as “civil” or

“criminal,” they do not fall into any potential core executive power over criminal

prosecutions. It may not always be easy to classify a particular action as being civil or

criminal. See, e.g., Myers v. United States, 264 U.S. 95, 103 (1924) (describing contempt

as “sui generis”). But the fact that a qui tam action for false marking is not easily

classified as a criminal prosecution demonstrates that no special separation of powers

concerns attach. Cf. United States v. Halper, 490 U.S. 435, 451, n.11 (1989), overruled

by Hudson v. United States, 522 U.S. 93 (1997) (holding open whether a penalty in a

False Claims Act qui tam suit triggers double jeopardy concerns). This is especially so


given the history of qui tam actions. Cf. Young, 481 U.S. at 799-800 (contempt need not

“be considered an execution of the criminal law in which only the Executive Branch

may engage”).

This conclusion also follows from the practical reality that a qui tam suit is in so

many ways distinct from any ordinary criminal prosecution. A plaintiff has a private

interest in the case. He is not engaging in law enforcement for its own sake. And he

does not “have available [the] terrible array of coercive methods” that are available in

criminal prosecutions, “such as ‘police investigation and interrogation, warrants,

informers and agents whose activities are immunized, authorized wiretapping, civil

investigatory demands, [and] enhanced subpoena power.’” Young, 481 U.S., at 811.

At bottom, civil qui tam actions pose no greater risk of oppressive law enforcement than

do the vast array of privately prosecuted civil enforcement actions routinely initiated

by self-interested plaintiffs to vindicate their own rights. Cf. Newman-Green Inc. v.

Alfonzo-Larrain, 490 U.S. 826, 837 (1989) (“because law is an instrument of governance

rather than a hymn to intellectual beauty, some consideration must be given to

practicalities”) (internal quotation marks omitted).

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