The Defendant was originally charge, by felony complaint, with Failure to Disclose the Origin of a Recording in the First Degree and Trademark Counterfeiting in the Second Degree, in violation of Penal Law §§ 275.40 and 165.72, respectively. On July 29, 2010, pursuant to CPL § 180.50(3), Hon. Martin J. Massell dismissed the felony complaints and replaced them with misdemeanor complaints, accompanied by a supporting deposition of Gene Maloney, charging the Defendant with Failure to Disclose the Origin of a Recording in the Second Degree and Trademark Counterfeiting in the Third Degree, in violation of Penal Law §§ 275.35 and 165.71, respectively.

The Defendant now moves for an order "dismissing the Information" as being facially insufficient, granting Discovery and Inspection of the DVD's and/or CD's involved in this matter, along with any exculpatory information in the People's possession, and ordering a Sandoval ^[FN1] hearing. The People oppose dismissal, consent to providing the requested items, at a mutually convenient time, and consent to the Sandoval relief, to be held immediately before trial.

I, Gene Maloney have spoken to PO Sikinger NCPD 1st pct regarding Digital Video Discs (DVDs) seized/purchased from the above named defendant on or about 1/3/10. I am confident that the titles such as, Avatar, Alvin and the Chipmunks, The Squeakuel, The Blind Side, and 2012 do not clearly disclose the actual name and address of the manufacturer. The copyrights and/or exclusive distribution rights of said titles are owned by member companies of the MPAA, additionally these trademarks are currently registered and were in use at the time and date of the arrest to wit: Warner Brothers, 20th Century Fox and Sony.

I base my conclusions upon my experience and the formal training I received as a member of the Motion Picture Association of America (MPAA). Specifically, the seized DVDs lack the indicia of legitimate digital video disc such as original artwork or a security label attached to the packaging.

Additionally, the seized DVDs bear the traits of unauthorized discs, to wit:

X The discs are in DVDR format as opposed to replicated

X These titles have not been released in DVD format

X Discs do not contain title

X Discs do not contain region code

X Discs do not contain studio logo

X Package artwork is photocopied [*3]

X Disc does not contain identifiable origination numbers (IFPI)

X Inserts have inaccurate information (improper cast,misspellings,incorrect story line)

This accusatory instrument, like any other, will be found facially sufficient where, in conformity with CPL §§ 100.15 and 100.40, it contains an accusatory part, designating the offense charged, CPL § 100.15(2), setting forth every element thereof, People v. Hall, 48 NY2d 927, 425 N.Y.S.2d 56 (1979), and a factual part containing "a statement of the complainant alleging facts of an evidentiary character supporting or tending to support the charges[,]" CPL § 100.15(3) based upon either the complainant's personal knowledge or upon information and belief. CPL § 100.15(3) The factual part, taken together with any supporting depositions, must contain non-hearsay allegations which, if true, establish every element of the offense charged, People v. Moore, 5 NY3d 725, 800 N.Y.S.2d 49 (2005); People v. Thomas, 4 NY3d 143, 791 N.Y.S.2d 68 (2005) "provid[ing] reasonable cause to believe that the defendant committed the offense[.]" People v. Alejandro, 70 NY2d 133, 517 N.Y.S.2d 927 (1987); CPL § 100.40(4)(b)

The factual allegations in the accusatory instrument and supporting deposition should be viewed in a light most favorable to the People, People v. Martinez, 16 Misc 3d 1111(A), 847 N.Y.S.2d 898, (Dist.Ct. Nassau Co. 2007); People v. Delmonaco, 16 Misc 3d 526, 837 N.Y.S.2d 869 (Dist.Ct. Nassau Co. 2007); People v. Mendelson, 15 Misc 3d 925, 834 N.Y.S.2d 445 (Dist.Ct. Nassau Co. 2007) and should not be given an overly restrictive or technical reading, People v. Casey, 95 NY2d 354, 717 N.Y.S.2d 88 (2000); People v. Baumann & Sons Buses, Inc., 6 NY3d 404, 813 N.Y.S.2d 27 (2006). They must, however, be sufficient to serve the purpose of providing the Defendant with notice enabling him to prepare for trial and to distinguish the offense sufficiently to prevent him from again being tried for the same offense. People v. McDermott, 69 NY2d 889, 515 N.Y.S.2d 225 (1987); People v. McGuire, 5 NY2d 523, 186 N.Y.S.2d 250 (1959)

Before addressing the specific elements of the crime charged, the court notes that neither the misdemeanor complaint nor the supporting deposition annexed thereto are based upon non-hearsay statements. The deposition of P.O. Peter E. Sikinger is "[b]ased upon information and belief, source of said information and belief is through P.O. observations and statements from complainant representing Motion Picture Association of America[.]" It is unclear if Officer Sikinger is the "P.O." who made the observations upon which he relies or if these observations were made by a different "P.O." who then related his or her observations to Officer Sikinger. If the latter, all of his representations are hearsay statements. Nevertheless, even if the alleged observations of the Defendant possessing DVDs and offering them for sale were made by Officer Sikinger, his statements concerning the alleged counterfeit trademarks was based upon statements made to him by an unidentified representative of the Motion Picture Association of America. These statements are clearly hearsay statements. Moreover, all of the statements made by Gene Maloney, in his supporting deposition, are clearly based upon what he was told by Officer Sikinger and not upon his firsthand observation and examination of the DVDs in question, as he unequivocally avers that he "ha[s] spoken to PO Sikinger NCPD 1st pct regarding Digital Video Discs (DVDs) seized/purchased from the above named defendant on or about 1/3/10." For these reasons alone, the accusatory instrument must be found to be facially [*4]insufficient.

The above notwithstanding, even if Officer Sikinger's and Mr. Maloney's depositions were based entirely upon their own firsthand observations, they fail to set forth, in evidentiary form, every element of the crime charged.

Penal Law § 165.71 provides:

A person is guilty of trademark counterfeiting in the third degree when, with the intent to deceive or defraud some other person or with the intent to evade a lawful restriction on the sale, resale, offering for sale, or distribution of goods, he or she manufactures, distributes, sells, or offers for sale goods which bear a counterfeit trademark, or possesses a trademark knowing it to be counterfeit for the purpose of affixing it to any goods.

See: People v. Cisse, 171 Misc 2d 185, 653 N.Y.S.2d 1017 (Crim. Ct. Queens Co.1996)

It is readily apparent that not all counterfeiting or piracy is criminalized; only those involving trademarks which are registered and in use. People v. Jobe, 20 Misc 3d 1114(A), 867 N.Y.S.2d 377 (Crim. Ct. Kings Co. 2008) While "such copying, or palming off' may nevertheless give rise to civil liability under theories of unfair competition[,]" People v. Jobe, 20 Misc 3d 1114(A), 867 N.Y.S.2d 377 (Crim. Ct. Kings Co. 2008), "[i]t is clear that it is the trademark itself the registered word, name, symbol or device that is protected by the trademark counterfeiting statute." People v. Rosenthal, 6 Misc 3d 1004(A), 800 N.Y.S.2d 354 (Crim.Ct.NY Co. 2003)

"A sufficient accusatory instrument charging Trademark Counterfeiting in the Third Degree (PL § 165.71) must allege that (1) at a specified time and location the defendant displayed and offered for sale a counterfeit item; (2) identify and distinguish the characteristics of the genuine and counterfeit trademarks; and (3) state that the trademark is registered and in use (citation omitted)." People v. Wu Cheng, 4 Misc 3d 377, 777 N.Y.S.2d 895 (Civ.Ct. NY Co. 2004); see also: People v. R.S., 13 Misc 3d 1213(A), 824 N.Y.S.2d 757 (Crim. Ct. NY Co. 2006) If Officer Sikinger's deposition was in the first person, making clear that the observations he relates were his, it would satisfy the first element. If Mr. Maloney's deposition was based upon his own observation, and not what he was told by Officer Sikinger, his supporting deposition would satisfy the third element. Neither Officer Sikinger's nor Mr. Maloney's depositions establish the second necessary element.

The Defendant correctly argues that the accusatory instrument fails to identify or distinguish the characteristics of the genuine and counterfeit trademarks, which is necessary before the pleadings will be found facially sufficient. See: People v. Fong, 17 Misc 3d 1103(A), Slip Copy, 2007 WL 2782363 (City Crim. Ct. New York Co. 2007) People v. Rosenthal, supra.; People v. R.S., supra. Contrary to the People's opposition, the "titles" of the DVDs allegedly being offered for sale by the Defendant are not the items' trademark.

A trademark is "any word, name, symbol, or device, or any combination thereof adopted and used by a person to identify goods made by a person and which distinguish them from those manufactured or sold by others which is in use and which is registered, filed or recorded under the laws of this state or of any other state or is registered in the principal register of the United States patent and trademark office" Penal Law § 165.70(1)(a). People v. Mangane, 28 Misc 3d 1224(A), Slip Copy, 2010 WL 3275743 (City Crim. Ct. N.Y.Co. 2010) A counterfeit trademark is "... a spurious trademark or an imitation of a trademark that is: (a) used in [*5]connection with trafficking in goods; and (b) used in connection with the sale, offering for sale or distribution of goods that are identical with or substantially indistinguishable from a trademark as defined in subdivision one of this section." Penal Law § 165.70(2). People v. Mangane, id. More simply stated, "[t]he trademark distinguishes ... goods from those manufactured or sold by others and is registered, filed, or recorded under the laws of the appropriate state or is registered in the principal register of the United States patent and trademark office." People v. Ensley, 183 Misc 2d 141, 702 N.Y.S.2d 752 (Crim.Ct. NY Co.1999)

While the supporting deposition herein lists the trademarked names, without identifying or distinguishing their characteristics, "to wit: Warner Brothers, 20th Century Fox and Sony," conspicuously absent from the supporting deposition is any allegation that any of these trademarks were attached to the DVDs in question or that the allegedly counterfeit trademarks were the same or substantially similar to the genuine trademarks. This is fatal to the sufficiency of this accusatory instrument. People v. R.S., supra.; People v. Jobe, supra.; People v. Ensley, supra. Compare: People v. Guan, 2003 WL 21169478 (App.Term 1st Dept. 2003) ["The information-comprising the misdemeanor complaint and supporting depositions ... identifies and distinguishes the characteristics of the genuine and counterfeit trademarks"]; People v. Thiam, 189 Misc 2d 810, 736 N.Y.S.2d 846 (Crim.Ct. NY Co. 2001) ["The complaint specifically states that the handbags contained a counterfeit Kate Spade trademark and that the sunglasses contained a counterfeit Oakley trademark. Police Officer Brian Cirone alleges that he could determine that the merchandise being offered for sale bore counterfeit trademarks because of the manner in which the trademarks were affixed to the merchandise."]; People v. Guo Zhang, 14 Misc 3d 82, 831 N.Y.S.2d 819 (App.Term First Dept. 2007) lv. den. 8 NY3d 951, 836 N.Y.S.2d 562 (2007) [The information ... identified and distinguished the characteristics of the genuine and counterfeit trademarks]; People v. Fong, supra. ["the accusatory instrument specifically states the merchandise bears a counterfeit SONY trademark. It is substantially the same as the genuine trademark except that the counterfeit has poor quality artwork [and] has no studio logo on packaging' while the genuine trademark has professional quality artwork [and] has studio logo on disc or packaging'."

The absence of such necessary allegations is not cured by the further allegations that "the seized DVDs lack the indicia of legitimate digital video disc such as original artwork or a security label attached to the packaging[,]" or that they "are in DVDR format as opposed to replicated ... have not be released in DVD format ... do not contain title ... do not contain region code ... do not contain studio logo ... [p]ackage artwork is photocopied ... does not contain identifiable origination numbers (IFPI) ... [or] [i]nserts have inaccurate information (improper cast, misspellings, incorrect story line)[.]" See: People v. R.S., supra.; People v. Jobe, supra.; People v. Cheng, supra.

Accordingly, that branch of the Defendant's motion which seeks an order dismissing the information charging the Defendant with Trademark Counterfeiting in the Third Degree is granted.

ORDERED, that Count 4 is dismissed.

That branch of the Defendant's motion seeking a Sandoval hearing is granted; and, it is hereby

ORDERED, that such hearing shall be held immediately before the commencement of trial.

That branch of the Defendant's motion seeking Discovery and Inspection of the DVDs and/or CD's here in question is granted; and, it is hereby

ORDERED, that such DVDs and/or CDs be made available to the Defendant for inspection on the next calendar date of January 18, 2011.

This constitutes the decision and order of the court.

Dated: Hempstead, New York

January 3, 2011

___________________________

ANDREW M. ENGEL

J.D.C.