N.Y. General Business Law § 360-m: Remedies

§ 360-m. Remedies. 1. Any owner of a mark registered under this

article may proceed by suit to enjoin the manufacture, use, display or

sale of any counterfeits or imitations thereof and any court of

competent jurisdiction may grant injunctions to restrain such

manufacture, use, display or sale as may be by the said court deemed

just and reasonable, and may require the defendants to pay to such owner

all profits derived from and/or all damages suffered by reason of such

wrongful manufacture, use, display or sale; and such court may also

order that any such counterfeits or imitations in the possession or

under the control of any defendant in such case be delivered to an

officer of the court, or to the complainant, to be destroyed or donated.

The court, in its discretion, may enter judgment for an amount not to

exceed three times such profits and damages and/or reasonable attorneys'

fees of the prevailing party in such cases where the court finds the

other party committed such wrongful acts with knowledge or in bad faith

or otherwise as according to the circumstances of this case. The

enumeration of any right or remedy herein shall not affect a

registrant's right to prosecute under the penal law.

2. If a court makes a determination that the counterfeit or imitation

products should be donated, then notice of that determination shall be

given to the lawful mark owner of the products. The notice shall state

that the court intends to donate the seized products to help indigent

individuals and that the donation will proceed unless the lawful mark

owner objects to the donation, in writing. The lawful mark owner will

have thirty days to object to the court to the donation. If the lawful

mark owner does not object, or gives no response within that period

despite having received the notice, then the court shall take that as a

granting of consent by the lawful mark owner that the donation should

proceed.

3. The counterfeit or imitation products may only be given to a

not-for-profit corporation that has an established history of providing

goods and services to indigent individuals. Organizations may petition

the court to be considered a recipient of the counterfeit or imitation

products. The judge, in his or her sole discretion, shall determine

whether an organization qualifies pursuant to this subdivision and which

organization shall receive the counterfeit or imitation products.

4. Any counterfeit or imitation products received by an organization

through this section may not be sold by the organization, nor may any

person or entity in possession of any of these products sell such

products.

5. Any not-for-profit corporation that has received counterfeit or

imitation products through this section must have the products'

identifying lawful mark tags removed or have the products marked,

altered, imprinted or indelibly stamped so as to prevent their resale or

any confusion with the actual products of the lawful mark owner. Such

products must also be inspected by the not-for-profit corporation to

ensure that they are in a condition consistent with the federal consumer

safety standards that would ordinarily apply to the sale of comparable

legitimate products.

6. Provided, however, that the only counterfeit or imitation products

that may be donated pursuant to this section shall be clothing,

including shoes, and all other counterfeit or imitation products must be

destroyed in accordance with this section or any other provision of

applicable law.