Bill Text: NJ S1417 | 2012-2013 | Regular Session | Introduced
Bill Title: Revises and expands New Jersey Trademark Anti-Counterfeiting Act.
Spectrum: Partisan Bill (Democrat 1-0)
Status: (Introduced - Dead) 2012-02-06 - Introduced in the Senate, Referred to Senate Judiciary Committee [S1417 Detail]
Download: New_Jersey-2012-S1417-Introduced.html
Sponsored by:
Senator NIA H. GILL
District 34 (Essex and Passaic)
SYNOPSIS
Revises and expands New Jersey Trademark Anti-Counterfeiting Act.
CURRENT VERSION OF TEXT
As introduced.
An Act providing for the protection of trademarks against counterfeiting and amending P.L.1997, c.57.
Be It Enacted by the Senate and General Assembly of the State of New Jersey:
1. Section 1 of P.L.1997, c.57 (C.2C:21-32) is amended to read as follows:
1. a. This act shall be known and may be cited as the "New Jersey Trademark [Counterfeiting] Anti-Counterfeiting Act."
b. As used in this act:
(1) "Counterfeit mark" means a spurious mark:
(a) that is applied to or used in connection with any goods, services, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services;
(b) that is identical with or substantially indistinguishable from a [genuine] mark that is registered on the principal register in the United States Patent and Trademark Office or registered in the New Jersey Secretary of State's office or any other state; or a spurious mark that is identical with or substantially indistinguishable from the words, names, symbols, emblems, signs, insignias or any combination thereof, of the United States Olympic Committee or the International Olympic Committee; whether or not the defendant knew such mark was registered; and [that]
(c) the application or use of which either (i) is likely to cause confusion, to cause mistake, or to deceive; or (ii) otherwise is used or is intended to be used on, or in conjunction with, goods or services for which the [genuine] mark is registered and in use.
(2) "Retail value" means:
(a) the counterfeiter's regular selling price for the item or service bearing or identified by the counterfeit mark [. In], unless the goods or services bearing a counterfeit mark would appear to a reasonably prudent person to be authentic, then the retail value shall be the price of the authentic counterpart; or if no reasonably similar counterpart exists, then the retail value shall remain the counterfeiter's regular selling price; and
(b) in the case of [items] labels, patches,
fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes,
containers, cans, cases, hangtags, documentation, or packaging or any other
components of any type or nature bearing a counterfeit mark which
are components of a finished product, that are designed, marketed, or
otherwise intended to be used on or in connection with any goods or services,
the retail value shall be [the
counterfeiter's regular selling price of the finished product on or in which
the component would be utilized]
treated as if each component was a finished good valued as detailed in
subparagraph (a) of paragraph (2) of subsection b. of this section.
(3) "Bodily injury" means "bodily injury" as defined in subsection a. of N.J.S.2C:11-1 or "significant bodily injury" as defined in subsection d. of N.J.S.2C:11-1.
(4) "Serious bodily injury" means "serious bodily injury" as defined in subsection b. of N.J.S.2C:11-1.
c. A person commits the offense of counterfeiting who, [with the intent to deceive or defraud some other person,] knowingly manufactures, uses, displays, advertises, distributes, transports, offers for sale, sells, or possesses with intent to sell or distribute within New Jersey, or in conjunction with commercial activities within New Jersey, any [item] goods, services, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services, bearing, or identified by, a counterfeit mark.
A person who has in his possession or under his control more than 25 [items] goods, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature bearing a counterfeit mark shall be presumed [to have violated this section] not simply to be in possession of such, but to possess said items with intent to offer for sale, sell or distribute in violation of this section.
d. (1) An offense set forth in this act shall be punishable as a crime of the fourth degree if:
the offense involves fewer than 100 items bearing a counterfeit mark; or
the offense involves a total retail value of less than $1,000.00 [for all items bearing, or services identified by, a counterfeit mark]; or
the offense involves a first conviction under this act.
(2) An offense set forth in this act shall be punishable as a crime of the third degree if:
the offense involves 100 or more but fewer than 1,000 items bearing a counterfeit mark; or
the offense involves a total retail value of $1,000.00 or more but less than $15,000.00 [of all items bearing, or services identified by, a counterfeit mark]; or
the offense involves a second conviction under this act; or
by the commission of any offense under this section, the offender knowingly or recklessly causes or attempts to cause the bodily injury of another.
(3) An offense set forth in this act shall be punishable as a crime of the second degree if:
the offense involves 1,000 or more items bearing a counterfeit mark; or
the offense involves a total retail value of $15,000.00 or more [of all items bearing, or services identified by a counterfeit mark]; or
the offense involves a third or subsequent conviction under this act; or
by the commission of any offense under this section, the offender knowingly or recklessly causes or attempts to cause the serious bodily injury or death of another.
In addition, any person convicted under this act, notwithstanding the provisions of N.J.S.2C:43-3, shall be fined by the court an amount up to threefold the retail value of the [items] goods, services, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services involved, providing that the fine imposed shall not exceed the following amounts: for a crime of the fourth degree, $100,000.00; for a crime of the third degree, $250,000.00; and for a crime of the second degree, $500,000.00.
e. (1) All [items] goods, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services bearing a counterfeit mark, and all personal property, including but not limited to, any items, objects, tools, machines, equipment, instrumentalities or vehicles of any kind, employed or used in connection with a violation of this act, and any property constituting or derived from any proceeds the person obtained, directly or indirectly, as the result of the offense shall be subject to forfeiture in accordance with the procedures set forth in chapter 64 of Title 2C of the New Jersey Statutes.
(2) At the conclusion of all criminal forfeiture proceedings, civil forfeiture proceedings, or both, the court shall order that any forfeited goods, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services bearing or consisting of a counterfeit mark shall be destroyed or alternatively disposed of in another manner with the written consent of the trademark owners.
(3) When a person is convicted of an offense under this section, the court, shall order the person to pay restitution to the trademark owner and any other victim of the offense as an offense against property. In determining the value of the property loss involving an offense against the trademark owner, a court shall grant restitution for any and all amounts, including, but not limited to, expenses incurred by the trademark owner in the investigation, prosecution, or both of the offense as well as the disgorgement of any profits realized by a person convicted of such offense.
f. For purposes of this act:
(1) the quantity or retail value of [items] goods, services, labels, patches, fabric, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging or any other components of any type or nature that are designed, marketed, or otherwise intended to be used on or in connection with any goods or services shall include the aggregate quantity or retail value of all such items [bearing,] or services identified by [,] every counterfeit mark the defendant manufactures, uses, transports [displays], advertises, distributes, offers for sale, sells or possesses;
(2) any State or federal certificate of registration [of any intellectual property] shall be prima facie evidence of the facts stated therein.
g. Conviction for an offense under this act does not preclude the defendant's liability for the civil remedy available pursuant to section 2 of P.L.1987, c.454 (C.56:3-13.16).
(cf: P.L.1999, c.313, s.1)
2. This act shall take effect of the first day of the second month following enactment.
STATEMENT
This bill revises the "New Jersey Trademark Counterfeiting Act," P.L.1997, c.57 (C.2C:21-32), to make it consistent with the Model State Anti-Counterfeiting Act adopted by the International Anti-Counterfeiting Coalition and the International Trademark Association. As part of this revision, the bill would rename the act the "New Jersey Trademark Anti-Counterfeiting Act."
The revised act prohibits the intentional manufacture, use, display, advertisement, distribution, sale, or possession with intent to sell, of goods or services bearing or identified by a counterfeit mark. Under the act, counterfeiting is graded as a crime of the second, third, or fourth degree based on the following factors: the number of items bearing the counterfeit mark, the total retail value of the items involved, and whether the offense is a first, second, third or subsequent conviction. The act also provides enhanced fines for persons convicted of counterfeiting based on the retail value of the items involved. In addition, the act provides that all items bearing a counterfeit mark and all items used in connection with counterfeiting would be subject to forfeiture.
The bill broadens the scope of activities prohibited, increases the penalties for a violation, permits property obtained by the offender with the proceeds from counterfeiting to be recovered in a forfeiture proceeding, and augments the rights of trademark holders with respect to the offense.
The bill makes several changes designed to broaden the scope of the offense and make it easier to prosecute counterfeiting cases successfully, including:
· expanding the definition of "counterfeit mark" to be comparable to the definition of that term as used in the federal criminal counterfeiting statute, 18 U.S.C. s.2320, and to cover marks registered in other states but not registered in this State or with the United States Patent and Trademark Office;
· replacing the general term "item" with more specific language designed to clarify that the law applies to trafficking in the counterfeit marks themselves as well as goods bearing counterfeit marks;
· adding a provision stating that if a person possesses more than 25 counterfeit items he shall be deemed to be in possession of the items with the intent to offer for sale, sell or distribute in violation of the law;
· removing language requiring that an offender act "with the intent to deceive or defraud some other person";
· criminalizing the transportation of counterfeit goods within the State; and
· removing the word "genuine," as it applies to the legally recognized trademark, from the definition of "counterfeit mark."
Definition of "retail value."
Under current law, retail value is measured by the regular selling price for the counterfeit item. Under the bill, retail value would be the price of the authentic counterpart of the counterfeit item, if the counterfeit item would appear to a reasonably prudent person to be authentic. This change is intended to increase the retail value associated with an offense. A further potential increase in retail value is accomplished under the bill by providing language expanding the retail value of an offender's actions to cover all items or services identified by every counterfeit mark the offender manufacturers, uses, transports, advertises, distributes, offers for sale, sells, or possesses.
Since retail value associated with a counterfeiting offense is one of the factors that determine the grading of such offense, increasing this retail value using the means provided by the bill will result in more severe penalties for violators.
Upgrading the crime.
In addition to the changes to grading caused by the change to the meaning of retail value, the bill upgrades a violation to a crime of the third degree if during the commission of the offense the offender knowingly or recklessly causes or attempts to cause the bodily injury of another. If the offender causes or attempts to cause serious bodily injury or death of another, the crime is upgraded to a crime of the second degree.
The bill defines bodily injury and serious bodily injury by cross-referencing to relevant "bodily injury" definitions used under the State's criminal homicide statutes. See N.J.S.2C:11-1, subsections a., b., and d. Applying these definitions, the bill provides that: "bodily injury" is either (1) physical pain, illness or any impairment of physical condition, or (2) bodily injury which creates a temporary loss of function of any bodily member or organ or temporary loss of one of the five senses; and "serious bodily injury" is bodily injury which creates a substantial risk of death or which causes serious, permanent disfigurement, or protracted loss of impairment of the function of any bodily member or organ.
Forfeiture proceedings.
The bill also adds language permitting forfeiture proceedings to be instituted against any property constituting or derived from any proceeds the person obtained, directly or indirectly, as a result of the counterfeiting offense.
Disposal of goods and restitution.
Finally, the bill strengthens the rights of trademark owners with respect to offenses by adding language requiring that at the conclusion of all criminal and civil forfeiture proceedings that the goods bearing the counterfeit mark be destroyed or alternatively disposed of with the written consent of the trademark owner. The bill would also require that convicted counterfeiters pay restitution to the trademark owner, which would include expenses incurred by the trademark owner in the investigation and prosecution of the offenses as well as the disgorgement of any profits realized by a person convicted of such offense.
