SECTIONS 14245-14259 - California Statutes

BUSINESS AND PROFESSIONS CODE

SECTION 14245-14259

14245. (a) A person who does any of the following shall be subject
to a civil action by the owner of the registered mark, and the
remedies provided in Section 14250:
(1) Uses, without the consent of the registrant, any reproduction,
counterfeit, copy, or colorable imitation of a mark registered under
this chapter in connection with the sale, distribution, offering for
sale, or advertising of goods or services on or in connection with
which the use is likely to cause confusion or mistake, or to deceive
as to the source of origin of the goods or services.
(2) Reproduces, counterfeits, copies, or colorably imitates the
mark and applies the reproduction, counterfeit, copy, or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles,
or advertisements intended to be used upon or in connection with the
sale or other distribution in this state of goods or services. The
registrant shall not be entitled under this paragraph to recover
profits or damages unless the acts have been committed with knowledge
that the mark is intended to be used to cause confusion or mistake,
or to deceive.
(3) Knowingly facilitate, enable, or otherwise assist a person to
manufacture, use, distribute, display, or sell goods or services
bearing a reproduction, counterfeit, copy, or colorable imitation of
a mark registered under this chapter, without the consent of the
registrant. An action by a person is presumed to have been taken
knowingly following delivery to that person by personal delivery,
courier, or certified mail return receipt requested, of a written
demand to cease and desist that is accompanied by all of the
following:
(A) A copy of the certificate of registration and of a claimed
reproduction, counterfeit, copy, or colorable imitation of the
registered mark.
(B) A statement, made under penalty of perjury, by the owner of
the registered mark, by an officer of the corporation that owns the
registered mark, or by legal counsel for the owner of the registered
mark, that includes all of the following:
(i) The name or description of the infringer.
(ii) The product or service and mark being or to be infringed.
(iii) The dates of the infringement.
(iv) Other reasonable information to assist the recipient to
identify the infringer.
(4) The presumption created by paragraph (3) does not affect the
owner's burden of showing that there was a violation of this chapter.
(5) Paragraph (3) is applicable to a landlord or property owner
who provides, rents, leases, or licenses the use of real property
where goods or services bearing a reproduction, counterfeit, copy, or
colorable imitation of a mark registered pursuant to this chapter
are sold, offered for sale, or advertised, where the landlord or
property owner had control of the property and knew, or had reason to
know, of the infringing activity.
(b) Notwithstanding any other provision of this chapter, the
remedies given to the owner of the right infringed pursuant to this
section are limited as follows:
(1) If an infringer or violator is engaged solely in the business
of printing the mark or violating matter for others and establishes
that he or she was an innocent infringer or innocent violator, the
owner of the right infringed is entitled only to an injunction
against future printing of the mark by the innocent infringer or
innocent violator.
(2) If the infringement complained of is contained in, or is part
of, paid advertising matter in a newspaper, magazine, or other
similar periodical, or in an electronic communication as defined in
subsection (12) of Section 2510 of Title 18 of the United States
Code, the remedies of the owner of the right infringed against the
publisher or distributor of the newspaper, magazine, or other similar
periodical or electronic communication shall be confined to an
injunction against the presentation of the advertising matter in
future issues of the newspapers, magazines, or other similar
periodicals or in further transmissions of the electronic
communication. The limitation of this subdivision shall apply only to
innocent infringers and innocent violators.
(3) Injunctive relief is not available to the owner of the right
infringed with respect to an issue of a newspaper, magazine, or other
similar periodical or electronic communication containing infringing
matter if restraining the dissemination of the infringing matter in
a particular issue of the periodical or in an electronic
communication would delay the delivery of the issue or transmission
of the electronic communication after the regular time for delivery
and the delay would be due to the method by which publication and
distribution of the periodical or transmission of the electronic
communication is customarily conducted in accordance with sound
business practice, and not to a method or device adopted for the
evasion of this section or to prevent or delay the issuance of an
injunction or restraining order with respect to the infringing
matter.
(c) An innocent infringer or innocent violator is a person whose
acts were committed without knowledge that the mark was intended to
be used to cause confusion, mistake, or to deceive.

14247. (a) Subject to the principles of equity, an owner of a mark
that is famous and distinctive, whether inherently or through
acquired distinctiveness, shall be entitled to an injunction against
another person's commercial use of a mark or trade name, if such use
begins after the mark has become famous and is likely to cause
dilution of the famous mark, and to obtain such other relief as is
provided in this section. For purposes of this subdivision, a mark is
famous if it is widely recognized by the general consuming public of
this state, or by a geographic area of this state, as a designation
of source of the goods or services of the mark's owner. In
determining whether a mark is famous, a court may consider factors
including, but not limited to, all of the following:
(1) The duration, extent, and geographic reach of advertising and
publicity of the mark in this state, whether advertised or publicized
by the owner or third parties.
(2) The amount, volume, and geographic extent of sales in this
state of goods or services offered under the mark.
(3) The extent of actual recognition of the mark in this state.
(4) Whether the mark is the subject of a state registration in
this state, or a federal registration under the Act of March 3, 1881,
or under the Act of February 20, 1905, or on the principal register
under the Trademark Act of 1946 (15 U.S.C. Sec. 1051 et seq.), as
amended.
(b) In an action brought under this section, the owner of a famous
mark shall be entitled to injunctive relief throughout the
geographic area in which the mark is found to have become famous
prior to commencement of the junior use, but not beyond the borders
of this state. If the person against whom injunctive relief is sought
willfully intended to cause dilution of the famous mark, the owner
shall also be entitled to the remedies set forth in Section 14250,
subject to the discretion of the court and the principles of equity.
The following shall not be actionable under this section:
(1) Any fair use, including a nominative or descriptive fair use,
or facilitation of such fair use, of a famous mark by another person
other than as a designation of source for the person's own goods or
services, including use in connection with either of the following:
(A) Advertising or promotion that permits consumers to compare
goods or services.
(B) Identifying and parodying, criticizing, or commenting upon the
famous mark owner or the goods or services of the famous mark owner.
(2) Noncommercial use of the mark.
(3) All forms of news reporting and news commentary.

14250. (a) Any owner of a mark registered under this chapter may
proceed by suit to enjoin the manufacture, use, display, or sale of
any counterfeits thereof and any court of competent jurisdiction may
grant injunctions to restrain the manufacture, use, display, or sale
as may be deemed just and reasonable, and shall require the
defendants to pay to the owner up to three times their profits from,
and up to three times all damages suffered by reason of, the wrongful
manufacture, use, display, or sale. If, in any action brought under
this section, the court determines that any goods in the possession
of or services offered by a defendant bear or consist of a
counterfeit mark, the court shall order the destruction of any goods,
labels, packaging or any components bearing the counterfeit mark and
all instrumentalities used in the production of the counterfeit
goods, including, but not limited to, any items, objects, tools,
machines or equipment or, after obliteration of the counterfeit mark,
the court may dispose of those materials by ordering their transfer
to the state, a civil claimant, an eleemosynary institution, or any
appropriate private person other than the person from whom the
materials were obtained.
(b) The court, upon motion or ex parte application by a plaintiff
in a suit to enjoin the manufacture, use, display, or sale of
counterfeits, may order seizure of any goods, labels, packaging or
any components bearing the counterfeit mark and all instrumentalities
used in the production of the counterfeit goods, including, but not
limited to, any items, objects, tools, machines or equipment from
persons manufacturing, displaying for sale, or selling the goods,
upon a showing of good cause and a probability of success on the
merits and upon the posting of an undertaking pursuant to subdivision
(e). If it appears from the ex parte application that there is good
reason for proceeding without notification to the defendant, the
court may, for good cause shown, waive the requirement of notice for
the ex parte proceeding. The order of seizure shall specifically set
forth all of the following:
(1) The date or dates on which the seizure is ordered to take
place.
(2) A description of the counterfeit goods to be seized.
(3) The identity of the persons or class of persons to effect
seizure.
(4) A description of the location or locations at which seizure is
to occur.
(5) A hearing date not more than 10 court days after the last date
on which seizure is ordered at which any person from whom goods are
seized may appear and seek release of the seized goods. Any person
from whom seizure is effected shall be served with the order at the
time of seizure.
(c) Any person who causes seizure of goods that are not
counterfeit shall be liable in an amount equal to the following:
(1) Any damages proximately caused to any person having a
financial interest in the seized goods by the seizure of goods that
are not counterfeit.
(2) Costs incurred in defending against seizure of noncounterfeit
goods.
(3) Upon a showing that the person causing the seizure to occur
acted in bad faith, expenses, including reasonable attorneys' fees
expended in defending against the seizure of any noncounterfeit or
noninfringing goods.
(4) Punitive damages, if warranted.
(d) A person entitled to recover pursuant to subdivision (c) may
seek a recovery by cross-claim or motion made in the trial court and
served pursuant to Section 1011 of the Code of Civil Procedure. A
person seeking a recovery pursuant to this section may join any
surety on an undertaking posted pursuant to subdivision (b), and any
judgment of liability shall bind the person liable pursuant to
subdivision (c) and the surety jointly and severally, but the
liability of the surety shall be limited to the amount of the
undertaking.
(e) The court shall set the amount of the undertaking required by
subdivision (b) in accordance with the probable recovery of damages,
costs, and expenses under subdivision (c) if it were ultimately
determined that the goods seized were not counterfeit.
(f) Any person entitled to recover under subdivision (c) may,
within 30 days after the date of seizure, object to the undertaking
on the grounds that the surety or the amount of undertaking is
insufficient.
(g) The motion or application filed pursuant to subdivision (b)
shall include a statement advising the person from whom the goods are
seized that the undertaking has been filed, informing him or her of
his or her right to object to the undertaking on the grounds that the
surety or the amount of the undertaking is insufficient, and
advising the person from whom the goods are seized that an objection
to the undertaking must be made within 30 days after the date of
seizure.

14252. The enumeration of any right or remedy herein shall not
affect a registrant's right to prosecute under any penal law of this
state, including, but not limited to, Section 350 of the Penal Code.

14254. (a) Actions to require cancellation of a mark registered
pursuant to this chapter or in mandamus to compel registration of a
mark pursuant to this chapter shall be brought in the superior court.
(b) In an action in mandamus, the proceeding shall be based solely
upon the record before the secretary. In an action for cancellation,
the secretary shall not be made a party to the proceeding, but shall
be notified of the filing of the complaint by the clerk of the court
in which it is filed and shall be given the right to intervene in
the action.
(c) In any action brought against a nonresident registrant,
service may be effected upon the secretary as agent for service of
the registrant in accordance with the procedures established for
service upon nonresident corporations and business entities under
Sections 416.10 to 416.40, inclusive, of the Code of Civil Procedure,
and Sections 2110, 2111, and 2114 of the Corporations Code.

14259. Nothing herein shall adversely affect the rights or the
enforcement of rights in marks acquired in good faith at any time
within common law.