HF 1116

as introduced - 88th Legislature (2013 - 2014) Posted on 03/04/2013 01:50pm

A bill for an act
relating to trademarks; defining trademark bullying; modifying remedies;
amending Minnesota Statutes 2012, sections 333.18, by adding a subdivision;
333.29, subdivision 1.

BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MINNESOTA:

Section 1.

Minnesota Statutes 2012, section 333.18, is amended by adding a
subdivision to read:

new text begin Subd. 9. new text end

new text begin Trademark bullying. new text end

new text begin "Trademark bullying" as used in sections 333.18
to 333.31 means the practice of a trademark holder using litigation tactics in an attempt
to enforce trademark rights beyond a reasonable interpretation of the scope of the rights
granted to the trademark holder.
new text end

Sec. 2.

Minnesota Statutes 2012, section 333.29, subdivision 1, is amended to read:

Subdivision 1.

Injunctive relief; money judgment.

An owner of a mark registered
under sections 333.18 to 333.31 may bring an action to enjoin the manufacture, use,
display, or sale of any counterfeits or imitations of the mark, and a court of competent
jurisdiction may grant injunctions to restrain the manufacture, use, display, or sale as
the court considers just and reasonable. The court may require the defendants to pay
to the owner either or both of the following: (1) all profits derived from the wrongful
manufacture, use, display, or sale; or (2) all damages suffered by reason of the wrongful
manufacture, use, display, or sale. The court may also order that counterfeits or imitations
in the possession or under the control of a defendant be delivered to an officer of the court,
or to the complainant, to be destroyed. The court, in its discretion, may enter judgment for
an amount not to exceed three times the profits and damages and reasonable attorneys'
fees of the prevailing party if the court finds the other party committed the wrongful acts
with knowledge or in bad faith or otherwise as according to the circumstances of the case.

new text begin The court in exceptional cases may also award reasonable attorney fees to the
prevailing party. Exceptional cases include cases where a party brings suit for harassment,
malicious, fraudulent, or willful purposes, including trademark bullying.
new text end

Sec. 3. new text begin EFFECTIVE DATE; APPLICATION.
new text end

new text begin Section 1 and 2 are effective August 1, 2013, and apply to actions arising from
incidents occurring on or after that date.
new text end