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U.S. Attorneys' Manual
Criminal Resource Manual

1706. Joint Statement On Trademark Counterfeiting Legislation, 130 Cong. Rec. H12076, H12078 -- Introduction

Joint Statement on Trademark Counterfeiting Legislation, 130 Cong. Rec. H12076, H12078 (daily ed. Oct. 10, 1984) (hereinafter "Joint Statement").

H 120761

JOINT STATEMENT ON TRADEMARK COUNTERFEITING LEGISLATION

On June 28, 1984, the Senate approved S.875, the Trademark Counterfeiting Act of 1984, whose principal sponsor was Senator CHARLES McC.MATHIAS, Jr, chairman of the Subcommittee on Patents, Copyrights, and Trademarks of the Senate Judiciary Committee. That bill was also sponsored by Judiciary Committee--Chairman STROM THURMOND, Senator HOWELL HEFLIN, Senator JOHN WARNER, Senator CHRISTOPHER DODD, Senator ALAN SIMPSON, Senator LOWELL WEIKER, Senator PETE WILSON, Senator CLAIRBORNE PELL, Senator JESSE HELMS, Senator FRANK LAUTENBERG, Senator JOHN CHAFEE, Senator CHIC HECHT, Senator CHARLES PERCY, Senator JOSEPH BIDEN, Senator JAMES ABDNOR, and Senator PATRICK LEAHY.

On September 12, 1984, the House of Representatives approved a similar measure, H.R. 6071, also titled the Trademark Counterfeiting Act of 1984. That bill was sponsored by Representative WILLIAM J. HUGHES, chairman of the Subcommittee on Crime of the House Judiciary Committee, Representative PETER W. RODINO, Jr. chairman of the Judiciary Committee, Representative HAROLD SAWYER, ranking Republican member of the Subcommittee on Crime, Representative BRUCE MORRISON, Representative LARRY SMITH, Representative EDWARD FEIGHAN, Representative CHARLES SCHUMER, Representative E. CLAY SHAW, Jr., Representative F. JAMES SENSENBRENNER, Jr., and Representative NANCY JOHNSON.

The Senate and House bills both aimed at accomplishing three primary changes in the law: First, creation of criminal penalties for intentionally dealing in materials that one knows to be counterfeit; second, authorization for mandatory or virtually mandatory awards of treble (sic) damages and attorneys fees in civil counterfeiting cases; and third, authorization for ex parte court orders for the seizure of counterfeit materials when it can be shown that the defendant would be likely to attempt to conceal or transfer the materials.

The principal sponsors of S. 875 and H.R. 6071 have worked together to draft a compromise bill that incorporates the best features of those two bills. The amendment to House Joint Resolution 648 relating to trademark counterfeiting is the product of those negotiations. It retains the three central features of the House and Senate bills, while harmonizing the technical differences between those bills as passed. The present statement explains the provisions of the compromise bill, although, of course the reports filed by the Senate and House Judiciary Committee with respect to S. 875 and H.R. 6071 should be consulted as to those matters not discussed in this statement.

There are minor differences between this statement and one placed in the CONGRESSIONAL RECORD, October 4, 1984, S13066-S13072, by the distinguished Senator from Maryland, CHARLES McC. MATHIAS. The House and Senate sponsors intend this statement to be the final and authoritative explanation of the legislative intent of this act.

U.S. SENATE
COMMITTEE ON THE JUDICIARY
Washington, DC, October 9, 1984.
Hon. William J. Hughes,
Chairman, Subcommittee on Crime,Committee on the
Judiciary, House of Representatives, Washington, DC

Dear Representative Hughes:

I am writing to confirm our understanding, as the chief sponsors of the Trademark Counterfeiting Act of 1984, about the legislative history of that Act. As you know, we have worked together to prepare a joint Explanatory Statement about this legislation. At the time of Senate passage of the Act, as an amendment to H.J. Res 648, a draft of this Statement was printed at pages Sl3066-S13072 in the Congressional Record of October 4, 1984. Since then, we have agreed to certain further modifications of the Statement. The Joint Explanatory Statement that appears in today's Record of House proceedings is the version upon which the Senate and House sponsors of this bill have agreed.

With best wishes,

Sincerely,

CHARLES McC. MATHIAS, Jr.
U.S. Senator

As explained more fully below, this act is intended to apply to counterfeits both of registered trademarks and of Olympic designations that are protected under Section 110 of the Olympic Charter Act, 36 U.S.C. 380. Unless otherwise indicated, any use of the term "mark" or "trademark" is intended to include Olympic designations. The scope of this act is narrower than current law, in that it creates enhanced penalties only for certain types of egregious conduct prohibited by existing law. The bill does not affect current statutory or common law governing other conduct proscribed by the Lanham Act, or other Federal, State, or local laws relating to trademarks. The same reservation applies to conduct covered by section 110 of the Olympic Charter Act.

T06 Amendments to title 18 of the United States Code that are contained in this bill rely to a great extent on concepts and definitions in the Lanham Act, the basic Federal statute governing trademarks. Unless it does so explicitly, this act does not in any way modify the Lanham Act or judicial interpretations of it.

[cited in Criminal Resource Manual 1715; Criminal Resource Manual 1716; Criminal Resource Manual 1717; USAM 9-68.100]