§ 360-M — Remedies

§ 360-m. Remedies. 1. Any owner of a mark registered under this\narticle may proceed by suit to enjoin the manufacture, use, display or\nsale of any counterfeits or imitations thereof and any court of\ncompetent jurisdiction may grant injunctions to restrain such\nmanufacture, use, display or sale as may be by the said court deemed\njust and reasonable, and may require the defendants to pay to such owner\nall profits derived from and/or all damages suffered by reason of such\nwrongful manufacture, use, display or sale; and such court may also\norder that any such counterfeits or imitations in the possession or\nunder the control of any defendant in such case be delivered to an\nofficer of the court, or to the complainant, to be destroyed or donated.\nThe court, in its discretion, may enter judgment for an amount not to\nexceed three times such profits and damages and/or reasonable attorneys'\nfees of the prevailing party in such cases where the court finds the\nother party committed such wrongful acts with knowledge or in bad faith\nor otherwise as according to the circumstances of this case. The\nenumeration of any right or remedy herein shall not affect a\nregistrant's right to prosecute under the penal law.\n 2. If a court makes a determination that the counterfeit or imitation\nproducts should be donated, then notice of that determination shall be\ngiven to the lawful mark owner of the products. The notice shall state\nthat the court intends to donate the seized products to help indigent\nindividuals and that the donation will proceed unless the lawful mark\nowner objects to the donation, in writing. The lawful mark owner will\nhave thirty days to object to the court to the donation. If the lawful\nmark owner does not object, or gives no response within that period\ndespite having received the notice, then the court shall take that as a\ngranting of consent by the lawful mark owner that the donation should\nproceed.\n 3. The counterfeit or imitation products may only be given to a\nnot-for-profit corporation that has an established history of providing\ngoods and services to indigent individuals. Organizations may petition\nthe court to be considered a recipient of the counterfeit or imitation\nproducts. The judge, in his or her sole discretion, shall determine\nwhether an organization qualifies pursuant to this subdivision and which\norganization shall receive the counterfeit or imitation products.\n 4. Any counterfeit or imitation products received by an organization\nthrough this section may not be sold by the organization, nor may any\nperson or entity in possession of any of these products sell such\nproducts.\n 5. Any not-for-profit corporation that has received counterfeit or\nimitation products through this section must have the products'\nidentifying lawful mark tags removed or have the products marked,\naltered, imprinted or indelibly stamped so as to prevent their resale or\nany confusion with the actual products of the lawful mark owner. Such\nproducts must also be inspected by the not-for-profit corporation to\nensure that they are in a condition consistent with the federal consumer\nsafety standards that would ordinarily apply to the sale of comparable\nlegitimate products.\n 6. Provided, however, that the only counterfeit or imitation products\nthat may be donated pursuant to this section shall be clothing,\nincluding shoes, and all other counterfeit or imitation products must be\ndestroyed in accordance with this section or any other provision of\napplicable law.\n