SENATE AMENDED

THE GENERAL ASSEMBLY OF PENNSYLVANIA

HOUSE BILL

INTRODUCED BY YOUNGBLOOD, CRUZ, CREIGHTON, HORNAMAN, W. KELLER, KORTZ, MILLER, MURT, READSHAW, SIPTROTH, K. SMITH AND CALTAGIRONE, MARCH 5, 2009

SENATOR GREENLEAF, JUDICIARY, IN SENATE, AS AMENDED, JANUARY 26, 2010   

AN ACT

Amending Title 18 (Crimes and Offenses) of the Pennsylvania

Consolidated Statutes, further providing for trademark

counterfeiting.

The General Assembly of the Commonwealth of Pennsylvania

hereby enacts as follows:

Section 1.  Section 4119 of Title 18 of the Pennsylvania

Consolidated Statutes is amended to read:

§ 4119.  Trademark counterfeiting.

(a)  Offense defined.--Any person who knowingly

[manufactures, uses, displays, advertises, distributes,

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transports, offers for sale, sells or possesses with intent to

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sell or distribute] and with intent to sell or to otherwise

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transfer for purposes of commercial advantage or private

financial gain:

(1)  manufactures;

(2)  sells;

(3)  offers for sale;

(4)  displays;

(5)  advertises;

(6)  distributes; or

(7)  transports any items or services bearing or

identified by a counterfeit mark shall be guilty of the crime

of trademark counterfeiting.

(b)  [Presumption.--A person having possession, custody or

control of more than 25 items bearing a counterfeit mark may be

presumed to possess said items with intent to sell or

distribute.] (Reserved).

(c)  Penalties.--

(1)  Except as provided in paragraphs (2) and (3), a

violation of this section constitutes a misdemeanor of the

first degree.

(2)  A violation of this section constitutes a felony of

the third degree if:

(i)  the defendant has previously been convicted

under this section; [or]

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(ii)  the violation involves more than 100 but less

than 1,000 items bearing a counterfeit mark or the total

retail value of all items or services bearing or

identified by a counterfeit mark is more than $2,000, but

less than $10,000[.]; or

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(iii)  bodily injury to another results from a

violation of this section..

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(3)  A violation of this section constitutes a felony of

the second degree if:

(i)  the defendant has been previously convicted of

two or more offenses under this section;

(ii)  the violation involves the manufacture or

production of items bearing counterfeit marks; [or]

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(iii)  the violation involves 1,000 or more items

bearing a counterfeit mark or the total retail value of

all items or services bearing or identified by a

counterfeit mark is more than $10,000[.]; or

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(iv)  serious bodily injury to another results from a

violation of this section..

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(d)  Quantity or retail value.--The quantity or retail value

of items or services shall include the aggregate quantity or

retail value of all items or services [bearing or identified by

every counterfeit mark] the defendant manufactures, [uses,

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displays, advertises, distributes, offers for sale, sells or

possesses] sells, offers for sale, displays, advertises,

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distributes or transports.

(e)  Fine.--Any person convicted under this section shall be

fined in accordance with existing law or an amount up to three

times the retail value of the items or services bearing or

identified by a counterfeit mark, whichever is greater.[, unless

extenuating circumstances are shown by the defendant.]

(f)  Seizure, forfeiture and disposition.--

(1)  Any items bearing a counterfeit mark, any property

constituting or derived from any proceeds obtained, directly

or indirectly, as the result of an offense under this section 

and all personal property, including, but not limited to, any

items, objects, tools, machines, equipment, instrumentalities

or vehicles of any kind, [knowingly employed or] used in

connection with a violation of this section [may] shall be

seized by [any] a law enforcement officer.

(2)  (i)  All seized personal property referenced in

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paragraph (1) shall be forfeited in accordance with

[applicable law. [unless law unless the prosecuting

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attorney responsible for the charges and the intellectual

property owner consent in writing to another

disposition.] the procedures set forth in section 6501(d)

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(relating to scattering rubbish).

(ii)  Upon the conclusion of all criminal and civil

forfeiture proceedings, the court shall order that

forfeited items bearing or consisting of a counterfeit

mark be destroyed or alternatively disposed of in another

manner with the written consent of the trademark owners

and the prosecuting attorney responsible for the charges.

(3)  (i)  If a person is convicted of an offense under

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this section, the court shall order the person to pay

restitution to the trademark owner and to any other

victim of the offense. In determining the value of the

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property loss offense.

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(ii)  In determining the value of the property loss 

involving an offense against the trademark owner, a court

shall grant restitution for all amounts, including

expenses incurred by the trademark owner in the

investigation and prosecution of the offense as well as

the disgorgement of any profits realized by a person

convicted of the offense.

(g)  Evidence.--Any Federal or State certificate of

registration [of any intellectual property] shall be prima facie

evidence of the facts stated therein.

(h)  Remedies cumulative.--The remedies provided for in this

section shall be cumulative to the other civil and criminal

remedies provided by law.

(i)  Definitions.--As used in this section, the following

words and phrases shall have the meanings given to them in this

subsection:

"Bodily injury."  The term shall have the same meaning given

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it under section 2301 (relating to definitions).

"Counterfeit mark."  [Any of the following:

(1)  Any unauthorized reproduction or copy of

intellectual property.

(2)  Intellectual property affixed to any item knowingly

sold, offered for sale, manufactured or distributed or

identifying services offered or rendered, without the

authority of the owner of the intellectual property.] A

spurious mark that meets all of the following:

(1)  Is applied to, used or intended to be used in

connection with an item or service.

(2)  Is identical with or substantially indistinguishable

from a mark registered and in use in this Commonwealth, any

other state or on the principal register in the United States

Patent and Trademark Office, whether or not the person knew

the mark was registered.

(3)  The application of which is either:

(i)  likely to cause confusion, to cause mistake or

to deceive; or

(ii)  otherwise intended to be used on or in

connection with the item or service for which the mark is

registered.

["Intellectual property."  Any trademark, service mark, trade

name, label, term, device, design or word adopted or used by a

person to identify that person's goods or services.]

"Item."  Any of the following:

(1)  Goods.

(2)  Labels.

(3)  Patches.

(4)  Fabric.

(5)  Stickers.

(6)  Wrappers.

(7)  Badges.

(8)  Emblems.

(9)  Medallions.

(10)  Charms.

(11)  Boxes.

(12)  Containers.

(13)  Cans.

(14)  Cases.

(15)  Hangtags.

(16)  Documentation.

(17)  Packaging.

(18)  Any other components of a type or nature that are

designed, marketed or otherwise intended to be used on or in

connection with any goods or services.

"Retail value."  [The counterfeiter's regular selling price

for the item or service bearing or identified by the counterfeit

mark. In the case of items bearing a counterfeit mark which are

components of a finished product, the retail value shall be the

counterfeiter's regular selling price of the finished product on

or in which the component would be utilized.] One of the

following:

(1)  The counterfeiter's regular selling price for the

item or service bearing or identified by a counterfeit mark,

except that it shall be the retail price of the authentic

counterpart if the item or service bearing or identified by a

counterfeit mark would appear to a reasonably prudent person

to be authentic. If no authentic reasonably similar

counterpart exists, the retail value shall be the

counterfeiter's regular selling price.

(2)  If the items bearing a counterfeit mark are

components of a finished product, the retail value shall be

treated as if each component were a finished good and valued

under paragraph (1).

"Serious bodily injury."  The term shall have the same

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meaning given it under section 2301 (relating to definitions).

Section 2.  This act shall take effect in 60 days.