It is easy to understand why examples of an aggravated felony would include rape, bank robbery, murder, mayhem, arson or trainwrecking. An aggravated felony is one that is serious and often violent. Likewise, an aggravated felony can involve sophistication and planning. It is much more than criminal negligence.
Jose Rodriguez-Valencia was convicted of six charges of “willfully manufacturing, intentionally selling and knowingly possessing” more than 1,000 items having a counterfeit trademark on them. Each charge was based on California Penal Code § 350(a)(2).
Mr. Rodriguez-Valencia, a Mexico native, is not a U.S. citizen. The Board of Immigration, acting upon the convictions, determined that his convictions constituted an aggravated felony under 8 U.S.C. § 101(a)(43)(R) as an offense “relating to counterfeiting.” The Board of Immigration therefore ruled that he was subject to removal from the United States.
Mr.-Valencia appealed, arguing that first, the term “counterfeiting” refers only to the imitation of currency and that, second, his conviction under Penal Code § 350 did not require proof of his intent to defraud. In other words, as to the second argument, his conduct was not proven as intentional.
In ruling on his appeal, in Jose Rodriguez-Valencia v. Eric H. Holder, Jr., DJDAR 11023 (July 21, 2011), the United States Court of Appeals for the Ninth Circuit disagreed. The court used as its starting point the 1990 case of Taylor v. United States, 495 U.S. 575 (1990), which defined what is an aggravated felony.
Taylor had been further refined by a 2008 case from the Ninth Circuit called Penuliar v. Mukasey, 528 F.3d 603 (9th Cir. 2008), which said an offense is an aggravated felony only if the full range of conduct covered by the statute falls within the meaning of the term. The court then looked at how various courts had defined counterfeiting and agreed that at first, counterfeiting historically only referred to money.
However, over time, the term “counterfeiting” expanded to refer to improper use of court seals, federal agency seals, customs papers, ship’s papers, passports and stamps. It then noted that in 1984, Congress criminalized trafficking in counterfeit goods in the Trademark Counterfeiting Act of 1984. Congress then attached stiff penalties to such conduct, which the court noted was broadly defined.
The Ninth Circuit Court of Appeals also noted that the First and Third Circuits have held that convictions for counterfeiting trademarks did meet the definition of counterfeiting under 8 U.S.C. § 101(a)(43).
Then looking to Mr.-Valencia’s argument that he should not have been found to have intended to defraud anyone in specific, the Ninth Circuit Court of Appeals quickly dispensed with this, noting that counterfeiting is an inherently fraudulent crime. It did not matter that the prosecution could not name a specific person that Valencia intended to defraud. Indeed, it was reasonable to infer that Valencia intended to defraud anyone and everyone who would buy items with the fake trademark and therefore enrich Valencia.
The court therefore denied Valencia’s petition for review. In other words, Valencia remained subject to removal from the United States for his conviction.
If you are charged with trademark infringement, do not trust your defense to an inexperienced lawyer who may not understand the current state of the law. Greg Hill is an attorney in Torrance, California. He is a U.S. Naval Academy graduate (B.S., 1987), Boston University graduate (M.B.A., 1994) and Loyola Law School graduate (J.D., 1998). Greg Hill & Associates represents clients in Torrance, Long Beach and the surrounding areas in white collar crimes such as trademark infringement, as well as more common crimes such as DUI, domestic violence and restraining orders, among other crimes. Visit the firm’s website at http://www.greghillassociates.com or the firm’s Facebook page at http://www.facebook.com/pages/greg-hill-associates/198954460153651.