S T A T E O F N E W Y O R K
________________________________________________________________________
6966
I N S E N A T E
April 17, 2012
___________
Introduced by Sen. GRIFFO -- read twice and ordered printed, and when
printed to be committed to the Committee on Consumer Protection
AN ACT to amend the general business law and the penal law, in relation
to the disposal of counterfeit products
THE PEOPLE OF THE STATE OF NEW YORK, REPRESENTED IN SENATE AND ASSEM-
BLY, DO ENACT AS FOLLOWS:
Section 1. Section 360-m of the general business law, as added by
chapter 319 of the laws of 1996, is amended to read as follows:
S 360-m. Remedies. 1. Any owner of a mark registered under this arti-
cle may proceed by suit to enjoin the manufacture, use, display or sale
of any counterfeits or imitations thereof and any court of competent
jurisdiction may grant injunctions to restrain such manufacture, use,
display or sale as may be by the said court deemed just and reasonable,
and may require the defendants to pay to such owner all profits derived
from and/or all damages suffered by reason of such wrongful manufacture,
use, display or sale; and such court may also order that any such coun-
terfeits or imitations in the possession or under the control of any
defendant in such case be delivered to an officer of the court, or to
the complainant, to be destroyed OR DONATED. The court, in its
discretion, may enter judgment for an amount not to exceed three times
such profits and damages and/or reasonable attorneys' fees of the
prevailing party in such cases where the court finds the other party
committed such wrongful acts with knowledge or in bad faith or otherwise
as according to the circumstances of this case. The enumeration of any
right or remedy herein shall not affect a registrant's right to prose-
cute under the penal law.
2. IF A COURT MAKES A DETERMINATION THAT THE COUNTERFEIT OR IMITATION
PRODUCTS SHOULD BE DONATED, THEN NOTICE OF THAT DETERMINATION SHALL BE
GIVEN TO THE LAWFUL MARK OWNER OF THE PRODUCTS. THE NOTICE SHALL STATE
THAT THE COURT INTENDS TO DONATE THE SEIZED PRODUCTS TO HELP INDIGENT
INDIVIDUALS AND THAT THE DONATION WILL PROCEED UNLESS THE LAWFUL MARK
OWNER OBJECTS TO THE DONATION, IN WRITING. THE LAWFUL MARK OWNER WILL
HAVE THIRTY DAYS TO OBJECT TO THE COURT TO THE DONATION. IF THE LAWFUL
MARK OWNER DOES NOT OBJECT, OR GIVES NO RESPONSE WITHIN THAT PERIOD
EXPLANATION--Matter in ITALICS (underscored) is new; matter in brackets
[ ] is old law to be omitted.
LBD08012-03-2
S. 6966 2
DESPITE HAVING RECEIVED THE NOTICE, THEN THE COURT SHALL TAKE THAT AS A
GRANTING OF CONSENT BY THE LAWFUL MARK OWNER THAT THE DONATION SHOULD
PROCEED.
3. THE COUNTERFEIT OR IMITATION PRODUCTS MAY ONLY BE GIVEN TO A
NOT-FOR-PROFIT CORPORATION THAT HAS AN ESTABLISHED HISTORY OF PROVIDING
GOODS AND SERVICES TO INDIGENT INDIVIDUALS. ORGANIZATIONS MAY PETITION
THE COURT TO BE CONSIDERED A RECIPIENT OF THE COUNTERFEIT OR IMITATION
PRODUCTS. THE JUDGE, IN HIS OR HER SOLE DISCRETION, SHALL DETERMINE
WHETHER AN ORGANIZATION QUALIFIES PURSUANT TO THIS SUBDIVISION AND WHICH
ORGANIZATION SHALL RECEIVE THE COUNTERFEIT OR IMITATION PRODUCTS.
4. ANY COUNTERFEIT OR IMITATION PRODUCTS RECEIVED BY AN ORGANIZATION
THROUGH THIS SECTION MAY NOT BE SOLD BY THE ORGANIZATION, NOR MAY ANY
PERSON OR ENTITY IN POSSESSION OF ANY OF THESE PRODUCTS SELL SUCH
PRODUCTS.
5. ANY COUNTERFEIT OR IMITATION PRODUCTS RECEIVED BY AN ORGANIZATION
THROUGH THIS SECTION MUST HAVE THE PRODUCTS' TAGS REMOVED OR HAVE THE
PRODUCTS MARKED, ALTERED, IMPRINTED OR INDELIBLY STAMPED SO AS TO
PREVENT THEIR RESALE OR ANY CONFUSION WITH THE ACTUAL PRODUCTS OF THE
LAWFUL MARK OWNER.
6. PROVIDED, HOWEVER, THAT THE ONLY COUNTERFEIT OR IMITATION PRODUCTS
THAT MAY BE DONATED PURSUANT TO THIS SECTION SHALL BE CLOTHING, AND ALL
OTHER COUNTERFEIT OR IMITATION PRODUCTS MUST BE DESTROYED.
S 2. Section 165.74 of the penal law, as amended by chapter 535 of the
laws of 1995, is amended to read as follows:
S 165.74 Seizure and DISTRIBUTION OR destruction of goods bearing coun-
terfeit trademarks.
Any goods manufactured, sold, offered for sale, distributed or
produced in violation of this article may be seized by any police offi-
cer. The magistrate must, within forty-eight hours after arraignment of
the defendant, determine whether probable cause exists to believe that
the goods had been manufactured, sold, offered for sale, distributed or
produced in violation of this article, and upon a finding that probable
cause exists to believe that the goods had been manufactured, sold,
offered for sale, distributed, or produced in violation of this article,
the court shall authorize such articles to be retained as evidence pend-
ing the trial of the defendant. Upon conviction of the defendant, the
articles in respect whereof the defendant stands convicted shall be
destroyed OR DONATED. Destruction shall not include auction, sale or
distribution of the items in their original form. DONATION OF THE ITEMS
SHALL BE MADE AT THE COURT'S DISCRETION UPON THE REQUEST OF ANY LAW
ENFORCEMENT AGENCY AND PURSUANT TO THE RESTRICTIONS AND PROCEDURES OF
SECTION THREE HUNDRED SIXTY-M OF THE GENERAL BUSINESS LAW, FOR THE BENE-
FIT OF INDIGENT INDIVIDUALS.
S 3. This act shall take effect immediately.