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A bill to be entitled

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An act relating to the protection of trademarks against

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counterfeiting; amending s. 495.001, F.S.; defining the

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terms "counterfeit mark" and "retail value"; creating s.

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495.1315, F.S.; providing that a person commits the

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offense of involving goods bearing a counterfeit mark if

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the person knowingly manufactures, uses, distributes,

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displays, advertises, transports, sells, offers for sale,

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or possesses with intent to sell, transport, or distribute

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within this state any goods, services, or items bearing a

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counterfeit mark; providing that if a person has in his or

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her possession or under his or her control more than 25

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counterfeit items, an inference arises that the items are

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being possessed with the intent to offer for sale, sell,

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or distribute the items in violation of law; providing

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that a person who engages in the offense of involving

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goods bearing a counterfeit mark commits a misdemeanor of

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the first degree, a felony of the third degree, or a

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felony of the second degree, depending on the quantity of

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items or the retail value of the items; providing that a

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person who engages in the offense of involving goods

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bearing a counterfeit mark commits a felony of the third

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degree, a felony of the second degree, or a felony of the

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first degree, if, as a result of committing the offense,

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the person knowingly or by culpable negligence causes or

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allows to be caused bodily injury, serious bodily injury,

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or death to another; requiring that convictions for a

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second or subsequent offenses be reclassified; authorizing

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the court to order a person to pay a fine up to three

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times the retail value of the goods seized, manufactured,

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or sold, whichever is greater; requiring the court to

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order a person convicted of the offense of involving goods

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bearing a counterfeit mark to pay restitution to the

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trademark owner and any other victim of the offense;

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requiring the court to order a person convicted of the

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offense of involving goods bearing a counterfeit mark to

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forfeit to the state any property constituting or derived

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from any proceeds that the person obtained, directly or

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indirectly, as the result of the offense and forfeit any

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property used to commit the offense; requiring the court

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to order that any forfeited item bearing or consisting of

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a counterfeit mark be destroyed or disposed of; providing

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that conviction for an offense of involving goods bearing

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a counterfeit mark does not preclude the person's

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liability for any civil remedy available under law;

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providing an effective date.

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Be It Enacted by the Legislature of the State of Florida:

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     Section 1.  Section 495.011, Florida Statutes, is amended to

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read:

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     495.011  Definitions.--As used in this chapter:

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     (1)  "Abandoned" applies to a mark when either of the

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following occurs:

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     (a)  When its use has been discontinued with intent not to

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resume such use. Intent not to resume use may be inferred from

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circumstances. Nonuse for 3 consecutive years shall constitute

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prima facie evidence of abandonment.

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     (b)  When any course of conduct of the owner, including acts

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of omission or commission, causes the mark to lose its

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significance as a mark.

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     (2)  "Applicant" means the person filing an application for

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registration of a mark under this chapter and the legal

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representatives, successors, or assigns of such person.

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     (3)  "Certification mark" means any word, name, symbol, or

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device, or any combination thereof, used by a person other than

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the owner of the mark to certify regional or other origin,

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material, mode of manufacture, quality, accuracy, or other

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characteristics of such person's goods or services or that the

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work or labor on the goods or services was performed by members

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of a union or other organization.

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     (4)  "Collective mark" means a trademark or service mark

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used by the members of a cooperative, an association, or other

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collective group or organization, and includes marks used to

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indicate membership in a union, an association, or other

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organization.

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     (5) "Counterfeit mark" means a spurious mark:

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     (a) That is applied to or used in connection with any

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goods, services, labels, patches, stickers, wrappers, badges,

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emblems, medallions, charms, boxes, containers, cans, cases,

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hangtags, documentation, or packaging or any other components of

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any type or nature which are designed, marketed, or otherwise

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intended to be used on or in connection with any goods or

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services;

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     (b) That is identical with, or substantially

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indistinguishable from, a mark that is registered in this state,

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in any state, or on the principal register in the United States

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Patent and Trademark Office, or that is protected by the Amateur

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Sports Act of 1978, 36 U.S.C. s. 380, and in use, regardless of

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whether the defendant knew the mark was so registered; and

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     (c) The application or use of which is likely to cause

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confusion, to cause mistake, or to deceive or is otherwise

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intended to be used on or in connection with the goods or

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services for which the mark is registered.

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An otherwise legitimate mark is considered counterfeit if, by

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altering the nature of any item to which it is affixed, the

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altered item bearing the otherwise legitimate mark is likely, in

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the course of commerce, to cause confusion, to cause mistake, or

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to deceive.

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     (6)(5) "Department" means the Florida Department of State

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or its designee charged with the administration of this chapter.

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     (7)(6) "Dilution" means the lessening of the capacity of a

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mark to identify and distinguish goods or services, regardless of

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the presence or absence of:

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     (a)  Competition between the owner of the mark and other

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parties.

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     (b)  Likelihood of confusion, mistake, or deception.

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     (8)(7) "Mark" includes any trademark, service mark,

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certification mark, or collective mark entitled to registration

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under this chapter, whether or not registered.

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     (9)(8) "Person," and any other word or term used to

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designate the applicant or other party entitled to a benefit or

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privilege or rendered liable under the provisions of this

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chapter, means a juristic person as well as a natural person.

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"Juristic person" includes a firm, partnership, corporation,

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union, association, or other organization capable of suing and

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being sued in a court of law.

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     (10)(9) "Registrant" means the person to whom the

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registration of a mark under this chapter is issued and the legal

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representatives, successors, or assigns of such person.

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     (11)(10) "Related company" means any person whose use of a

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mark is controlled by the owner of the mark with respect to the

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nature and quality of the goods or services on or in connection

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with which the mark is used.

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     (12) "Retail value" means:

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     (a) The counterfeiter's regular selling price for the goods

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or services; however, if the goods or services bearing a

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counterfeit mark would appear to a reasonably prudent person to

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be authentic, the retail value is the price of the authentic

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counterpart. If no authentic reasonably similar counterpart

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exists, the retail value is the counterfeiter's regular selling

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price.

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     (b) In the case of labels, patches, stickers, wrappers,

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badges, emblems, medallions, charms, boxes, containers, cans,

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cases, hangtags, documentation, or packaging or any other

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components of any type or nature which are designed, marketed, or

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otherwise intended to be used on or in connection with any goods

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or services, each component of the finished good, which shall be

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valued as provided in paragraph (a).

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     (13)(11) "Service mark" means any word, name, symbol, or

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device, or any combination thereof, used by a person to identify

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and distinguish the services of such person, including a unique

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service, from the services of others, and to indicate the source

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of the services, even if that source is unknown. Titles,

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character names, and other distinctive features of radio or

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television programs may be registered as service marks

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notwithstanding that the person or the programs may advertise the

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goods of the sponsor.

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     (14)(12) "Trade name" means any name used by a person to

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identify a business or vocation of such person.

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     (15)(13) "Trademark" means any word, name, symbol, or

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device, or any combination thereof, used by a person to identify

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and distinguish the goods of such person, including a unique

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product, from those manufactured or sold by others, and to

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indicate the source of the goods, even if the source is unknown.

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     (16)(14) "Use" means the bona fide use of a mark in the

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ordinary course of trade and not used merely for the purpose of

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reserving a right in a mark. For purposes of this chapter, a mark

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is deemed to be in use:

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     (a)  On goods when:

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     1.  The mark is placed in any manner on the goods, their

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containers or the displays associated therewith, or on the tags

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or labels affixed thereto, or, if the nature of the goods makes

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such placement impracticable, on documents associated with the

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goods or their sale; and

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     2.  The goods are sold or transported in this state.

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     (b)  On services when the mark is used or displayed in the

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sale or advertising of services and the services are rendered in

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this state.

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     Section 2.  Section 495.1315, Florida Statutes, is created

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to read:

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     495.1315 Offenses involving counterfeit trademarks;

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criminal penalties.--

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     (1) A person commits the offense of involving goods bearing

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a counterfeit mark if the person knowingly manufactures, uses,

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distributes, displays, advertises, transports, sells, offers for

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sale, or possesses with intent to sell, transport, or distribute

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within this state any goods, services, labels, patches, stickers,

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wrappers, badges, emblems, medallions, charms, boxes, containers,

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or cans bearing a counterfeit mark, or any cases, hangtags,

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documentation, or packaging or any other components of any type

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or nature which are designed, marketed, or otherwise intended to

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be used on or in connection with any goods or services bearing a

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counterfeit mark.

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     (2) A person who has in his or her possession or under his

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or her control more than 25 goods, labels, patches, fabric,

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stickers, wrappers, badges, emblems, medallions, charms, boxes,

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containers, cans, cases, hangtags, documentation, or packaging or

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any other components of any type or nature bearing a counterfeit

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mark, unless satisfactorily explained, gives rise to an inference

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that the items are being possessed with the intent to offer for

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sale, sell, or distribute the items in violation of this section.

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     (3) Except as provided in paragraphs (a), (b), and (c), a

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person engaging in an offense involving goods bearing a

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counterfeit mark commits a misdemeanor of the first degree,

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punishable as provided in s. 775.082 or s. 775.083.

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     (a) If the offense involves 100 items or more, but fewer

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than 1,000 items, bearing one or more counterfeit marks or, if

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the goods involved in the offense have a retail value of more

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than $2,500, but less than $20,000, the person commits a felony

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of the third degree, punishable as provided in s. 775.082, s.

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775.083, or s. 775.084.

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     (b) If the offense involves 1,000 items or more bearing one

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or more counterfeit marks or, if the goods involved in the

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offense have a retail value of $20,000 or more, the person

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commits a felony of the second degree, punishable as provided in

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s. 775.082, s. 775.083, or s. 775.084.

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     (c) If while committing an offense under this section or as

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a result of committing an offense under this section a person

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knowingly or by culpable negligence causes or allows to be

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caused:

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     1. Bodily injury to another, that person commits a felony

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of the third degree, punishable as provided in s. 775.082, s.

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775.083, or s. 775.084.

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     2. Serious bodily injury to another, that person commits a

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felony of the second degree, punishable as provided in s.

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775.082, s. 775.083, or s. 775.084.

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     3. Death to another, that person commits a felony of the

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first degree, punishable as provided in s. 775.082, s. 775.083,

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or s. 775.084.

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     (d) If a person, after having previously been convicted of

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committing an offense under this section, is convicted of a

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second or subsequent offense under this section, the second or

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subsequent offense shall be reclassified as follows:

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     1. In the case of a felony of the second degree, to a

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felony of the first degree.

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     2. In the case of a felony of the third degree, to a felony

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of the second degree.

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     3. In the case of a misdemeanor, to a felony of the third

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degree.

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For purposes of sentencing under chapter 921 and determining

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incentive gain-time eligibility under chapter 944, a felony

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offense that is reclassified under this paragraph is ranked one

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level above the ranking under s. 921.0022 or s. 921.0023 of the

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felony offense committed. For purposes of sentencing under

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chapter 921 and determining incentive gain-time eligibility under

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chapter 944, the misdemeanor offense is ranked in level 4 of the

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offense severity ranking chart.

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     (4) In lieu of a fine otherwise authorized by law, if a

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person has been convicted of an offense involving goods bearing

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counterfeit marks, the court may order the person to pay a fine

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up to three times the retail value of the goods seized,

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manufactured, or sold, whichever is greater, and may enter orders

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awarding court costs and the costs of investigation and

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prosecution. The court shall hold a hearing to determine the

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amount of the fine.

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

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section, the court, pursuant to s. 775.089, shall order the

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person to pay restitution to the trademark owner and any other

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victim of the offense. In determining the value of the property

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loss involving an offense against the trademark owner, the court

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shall, for purposes of determining restitution grant restitution

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for any and all amounts, including, but not limited to, 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 such offense.

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     (6)(a) The following property is subject to seizure by any

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law enforcement officer and subject to forfeiture to the state

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and no property right shall exist in such property:

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     1. Any article bearing or consisting of a counterfeit mark

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used in committing a violation of this section.

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     2. Any property used, in any manner or part, to commit or

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to facilitate the commission of a violation of this section.

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     (b) The court, in imposing sentence on a person convicted

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of an offense under this section, shall order, in addition to any

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other sentence imposed, that the person forfeit to the state:

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     1. Any property constituting or derived from any proceeds

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the person obtained, directly or indirectly, as the result of the

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offense;

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     2. Any of the person's property used, or intended to be

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used, in any manner or part, to commit, facilitate, aid, or abet

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the commission of the offense; and

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     3. Any item that bears or consists of a counterfeit mark

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used in committing the offense.

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     (c) At the conclusion of all criminal and civil forfeiture

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proceedings, the court shall order that any forfeited item

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bearing or consisting of a counterfeit mark be destroyed or

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alternatively disposed of in another manner with the written

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consent of the trademark owner. The owner of the registered or

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protected mark is responsible for the costs incurred in disposing

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of the forged or counterfeit items.

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     (7)(a) Any state or federal certificate of registration of

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trademark is prima facie evidence of the facts stated therein.

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     (b) Notwithstanding any other law, prosecution may be had

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for all violations of this section and for any other criminal

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violation that may apply. Prosecution for violation of any of the

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offenses described in this section does not preclude the

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applicability of any other provision of law which presently

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applies or may in the future apply to any transaction that

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violates this section, unless such provision is inconsistent with

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the terms of this section.

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     (c) Conviction for an offense under this section does

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not preclude the defendant's liability for any civil remedy

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available under law.

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     Section 3.  This act shall take effect July 1, 2008.