PRINTER'S NO.  813

  

THE GENERAL ASSEMBLY OF PENNSYLVANIA

  

HOUSE BILL

 

No.

727

Session of

2009

  

  

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

  

  

REFERRED TO COMMITTEE ON JUDICIARY, MARCH 5, 2009  

  

  

  

AN ACT

  

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Amending Title 18 (Crimes and Offenses) of the Pennsylvania

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Consolidated Statutes, further providing for trademark

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counterfeiting.

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The General Assembly of the Commonwealth of Pennsylvania

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hereby enacts as follows:

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Section 1.  Section 4119 of Title 18 of the Pennsylvania

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Consolidated Statutes is amended to read:

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§ 4119.  Trademark counterfeiting.

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

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uses, displays, advertises, distributes, transports, offers for

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sale, sells or possesses with intent to sell or distribute any

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items or services bearing or identified by a counterfeit mark

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shall be guilty of the crime of trademark counterfeiting.

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

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

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presumed to possess said items with intent to sell or

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distribute.] (Reserved).

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(c)  Penalties.--

 


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

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violation of this section constitutes a misdemeanor of the

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first degree.

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

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the third degree if:

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(i)  the defendant has previously been convicted

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under this section; [or]

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(ii)  the violation involves more than 100 but less

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

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retail value of all items or services bearing or

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

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less than $10,000[.]; or

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(iii)  bodily injury to another results from a

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violation of this section.

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

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the second degree if:

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(i)  the defendant has been previously convicted of

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two or more offenses under this section;

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(ii)  the violation involves the manufacture or

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production of items bearing counterfeit marks; [or]

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

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bearing a counterfeit mark or the total retail value of

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all items or services bearing or identified by a

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

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(iv)  serious bodily injury to another results from a

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violation of this section.

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

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of items or services shall include the aggregate quantity or

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

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every counterfeit mark] the defendant manufactures, uses,

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

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possesses.

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

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

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times the retail value of the items or services bearing or

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

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extenuating circumstances are shown by the defendant.]

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(f)  Seizure, forfeiture and disposition.--

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

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constituting or derived from any proceeds obtained, directly

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

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

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items, objects, tools, machines, equipment, instrumentalities

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

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

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seized by [any] a law enforcement officer.

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(2)  All seized personal property referenced in paragraph

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(1) shall be forfeited in accordance with applicable law. 

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[unless the prosecuting attorney responsible for the charges

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and the intellectual property owner consent in writing to

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another disposition.] Upon the conclusion of all criminal and

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civil forfeiture proceedings, the court shall order that

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forfeited items bearing or consisting of a counterfeit mark

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be destroyed or alternatively disposed of in another manner

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with the written consent of the trademark owners and the

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prosecuting attorney responsible for the charges.

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

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section, the court shall order the person to pay restitution

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to the trademark owner and to any other victim of the

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offense. In determining the value of the property loss

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involving an offense against the trademark owner, a court

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shall grant restitution for all amounts, including expenses

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incurred by the trademark owner in the investigation and

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prosecution of the offense as well as the disgorgement of any

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profits realized by a person convicted of the offense.

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

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registration [of any intellectual property] shall be prima facie

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evidence of the facts stated therein.

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

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section shall be cumulative to the other civil and criminal

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remedies provided by law.

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

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

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subsection:

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

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it under section 2301 (relating to definitions).

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"Counterfeit mark."  [Any of the following:

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(1)  Any unauthorized reproduction or copy of

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intellectual property.

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(2)  Intellectual property affixed to any item knowingly

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sold, offered for sale, manufactured or distributed or

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identifying services offered or rendered, without the

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authority of the owner of the intellectual property.] A

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spurious mark that meets all of the following:

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

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connection with an item or service.

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(2)  Is identical with or substantially indistinguishable

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

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other state or on the principal register in the United States

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Patent and Trademark Office, whether or not the person knew

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the mark was registered.

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(3)  The application of which is either:

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

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to deceive; or

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(ii)  otherwise intended to be used on or in

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connection with the item or service for which the mark is

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registered.

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

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

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

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"Item."  Any of the following:

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(1)  Goods.

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(2)  Labels.

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(3)  Patches.

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(4)  Fabric.

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(5)  Stickers.

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(6)  Wrappers.

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(7)  Badges.

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(8)  Emblems.

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(9)  Medallions.

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(10)  Charms.

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(11)  Boxes.

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(12)  Containers.

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(13)  Cans.

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(14)  Cases.

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(15)  Hangtags.

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(16)  Documentation.

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(17)  Packaging.

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

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

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connection with any goods or services.

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

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for the item or service bearing or identified by the counterfeit

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

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

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counterfeiter's regular selling price of the finished product on

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

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following:

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

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item or service bearing or identified by a counterfeit mark,

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except that it shall be the retail price of the authentic

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counterpart if the item or service bearing or identified by a

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counterfeit mark would appear to a reasonably prudent person

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to be authentic. If no authentic reasonably similar

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counterpart exists, the retail value shall be the

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counterfeiter's regular selling price.

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(2)  If the items bearing a counterfeit mark are

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components of a finished product, the retail value shall be

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treated as if each component were a finished good and valued

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under paragraph (1).

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

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

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

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