BILL ANALYSIS                                                                                                                                                                                                    



                                                                  SB 324
                                                                  Page  1


          SENATE THIRD READING
          SB 324 (Cedillo)
          As Amended  June 11, 2009
          Majority vote 

           SENATE VOTE  :37-0  
           
           PUBLIC SAFETY       6-0                                          
           
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          |Ayes:|Arambula, Hagman,         |     |                          |
          |     |Ammiano, Gilmore, Hill,   |     |                          |
          |     |Ma                        |     |                          |
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           SUMMARY  :  Authorizes lawfully registered owners of intellectual  
          property to consent to the donation of seized counterfeit goods to  
          charity.  Specifically,  this bill  :  

          1)States that upon request of any law enforcement agency and  
            consent from the lawful registrants, a court may consider a  
            motion to have seized counterfeit goods donated to nonprofit  
            organizations.

          2)Specifies that the purpose of distributing the goods to charity  
            is to benefit persons living in poverty and that no charge shall  
            be rendered upon the persons served by the charitable  
            organization.  

          3)Excludes recordings and audiovisual works.  

           EXISTING LAW  :

          1)States that any person who willfully manufactures, intentionally  
            sells, or knowingly possesses for sale any counterfeit of a mark  
            registered with the California Secretary of State or registered  
            on the United States Patent and Trademark Office shall be  
            punishable as follows:

             a)   If the offense involves less than 1,000 of the articles  
               with a total retail value less than the standard for grand  
               theft (over $400 to $487), the defendant is guilty of a  
               misdemeanor, punishable by a fine of not more than $5,000,  
               imprisonment in a county jail for up to one year, or by both.  
                If the defendant is a corporation, by a fine of not more  







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               than $100,000; or,

             b)   When the crime involves 1,000 or more articles, or has a  
               total retail value that meets the standard for grand theft  
               (over $400 to $487), the crime is an alternate  
               felony-misdemeanor, punishable by imprisonment in a county  
               jail for up to one year, or in the state prison for 16  
               months, 2 years or 3 years, by a fine not to exceed $250,000,  
               or both.   If the defendant is a corporation, the maximum  
               fine is $500,000.  

          2)Provides that a repeated violation of the counterfeit trademark  
            statute is an alternate felony-misdemeanor, punishable by a fine  
            of not more than $50,000, imprisonment in a county jail for not  
            more than one year, or in the state prison for 16 months, or 2  
            or 3 years, or both.  If the defendant is a corporation, the  
            maximum fine is $200,000.  

          3)Provides that where a defendant is convicted of a trademark  
            counterfeiting, the court shall order the forfeiture and  
            destruction of all of counterfeit marks and all counterfeit  
            items.  The court, with specified exceptions for community  
            property vehicles, shall also order forfeiture and destruction  
            or other disposition of all means of making the marks, and all  
            other devices for making or transporting the marks used in  
            connection with the violation.  

          4)Describes "fair use" of a trademark, which is not subject to  
            prosecution or a civil action, as any 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;

             c)   Non-commercial use of the mark; and,

             d)   All forms of news reporting and news commentary.  

           FISCAL EFFECT  :   None

           COMMENTS  :   According to the author, "The underground market of  
          counterfeit goods is sizable and growing rapidly.  In 2007, United  







                                                                  SB 324
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          States Customs Officials seized $197 million in counterfeit goods,  
          up 27% from the previous year.  The county Economic Development  
          Corporation estimates about $2 billion worth of counterfeit goods  
          are sold annually in Los Angeles alone.

          "Yet, in our state there are over 150,000 individuals and families  
          who are homeless on any given night.  This number of homeless  
          Californians will likely grow in the next two years because of job  
          loss and the impact of home foreclosures.

          "SB 324 provides for a practical method in aiding our state's  
          homeless by repurposing counterfeit shoes and clothes after their  
          confiscation and with the trademark owner's consent.  The donation  
          of these items to non profit agencies will fill the paucity of  
          public funding created by budget cuts homeless and women's  
          shelters face.  This bill is also an environmentally sound fit to  
          non-commercial redistribution of the items.  Landfills are already  
          at capacity and the destruction of goods adds to the immense waste  
          in our communities.

          "Under current law, upon conviction and confiscation of  
          counterfeit items, such items must be destroyed.  In some  
          instances items have been donated by the Los Angeles City  
          Attorney's office to organizations serving the homeless with the  
          permission of the trademark owners.  The organizations taking  
          possession of counterfeit goods go to great lengths to ensure the  
          items do not re-enter commerce by removing tags and imprinting the  
          pieces with an indelible stamp.  However, there is a reluctance to  
          continue this practice because the statute calls for destruction  
          regardless of trademark owner's consent and there is not  
          sufficient case law to guide the protocol for donating goods.

          "SB 324 will take an existing problem and transform it into a  
          transparent solution for non profit agencies that serve the  
          homeless and indigents in our communities."   

          Please see the policy committee for a full discussion of this  
          bill.
           

          Analysis Prepared by  :    Gabriel Caswell / PUB. S. / (916)  
          319-3744                                                 FN:  
          0001466