Chapter 647 — Trademarks and Service Marks; Music Royalties
2025 EDITION
TRADEMARKS AND SERVICE MARKS; MUSIC
ROYALTIES
TRADE REGULATIONS AND PRACTICES
TRADEMARKS AND SERVICE MARKS
(Generally)
647.005 Definitions
(Registration)
647.009 Filing, service,
copying and certification fees
647.015 Application for
registration
647.017 When mark is in use;
abandonment of mark
647.024 Rules for classes of
goods and services
647.029 Examination of
application by Secretary of State; amendment of application; refusal to
register mark; priority of concurrent applications
647.035 Marks ineligible for
registration
647.045 Certificate of
registration; contents; evidentiary effect
647.055 Period of registration;
renewal; notice
647.065 Assignment; filing with
Secretary of State; legal and evidentiary effect; public record of
registrations
647.075 Cancellation of
registrations
647.077 Action to cancel mark
or compel registration; Secretary of State not a party
(Remedies)
647.085 Fraudulent registration
prohibited; liability; action for damages
647.095 Prohibited acts;
liability
647.105 Remedies for
infringement
647.107 Grounds for injunctive
relief; famous marks
647.111 Seizure of counterfeit
goods in infringement proceeding; liability for wrongful seizure; undertaking
647.115 Effect of chapter on
marks or trade names acquired at common law; effect of civil remedies on
criminal statutes; intent and construction of chapter
647.135 Trademark
counterfeiting
647.140 Trademark
counterfeiting in third degree; penalty
647.145 Trademark
counterfeiting in second degree; penalty
647.150 Trademark
counterfeiting in first degree; penalty
647.155 Seizure, forfeiture and
disposal
ROYALTIES FOR MUSICAL WORKS
647.700 Definitions for ORS
647.700 to 647.730
647.705 Requirements for
performing rights societies
647.708 Requirement for
performing rights society to have authorization to do business in state
647.710 Requirements for
contracts for payment of royalties
647.715 Prohibited conduct
647.720 Action for damages;
injunction; fines
647.725 Relationship to other
laws
647.728 Conduct of
investigations by performing rights society
647.730 Applicability of ORS
647.700 to 647.730
TRADEMARKS AND SERVICE MARKS
(Generally)
647.005
Definitions. As
used in this chapter:
(1) “Applicant”
means a person that files an application to register a mark under this chapter,
and the person’s legal representatives, successors or assigns.
(2) “Dilution”
means an association that arises from the similarity between a mark or trade
name and a famous mark, regardless of the presence or absence of competition
between the owner of the famous mark and another party, actual or likely
confusion, mistake, deception or actual economic injury, if the association:
(a) Impairs the
distinctiveness of the famous mark, an association commonly known as dilution
by blurring; or
(b) Harms the
reputation of the famous mark, an association commonly known as dilution by
tarnishment.
(3) “Mark” means
a trademark or service mark entitled to registration under this chapter whether
registered or not.
(4) “Person”
means an individual, firm, partnership, corporation, association, limited
liability company, union or other organization capable of suing or being sued
in a court.
(5) “Registrant”
means a person to whom the registration of a mark is issued under this chapter,
and the person’s legal representatives, successors or assigns.
(6) “Retail value”
means:
(a) For items
that bear a counterfeit mark and are components of a finished product, the
regular selling price of the finished product in which the component would be
utilized.
(b) For items
that bear a counterfeit mark other than items described in paragraph (a) of
this subsection and for services that are identified by a counterfeit mark, the
regular selling price of the item or service.
(7) “Service mark”
means a word, name, symbol or device or a combination of words, names, symbols
or devices that a person uses to identify and distinguish the person’s
services, including a unique service, from another person’s services and to
indicate the source of the services, even if the source is unknown.
(8) “Trademark”
means a word, name, symbol or device or a combination of words, names, symbols
or devices that a person uses to identify and distinguish the person’s goods,
including a unique product, from another person’s goods and to indicate the
source of the goods, even if the source is unknown.
(9) “Trade name”
means a name that a person uses to identify the person’s business or vocation.
(10)(a) “Use”
means a bona fide use of a mark as described in ORS 647.017 in the ordinary
course of trade.
(b) “Use” does
not include a use of a mark made merely to reserve a right in a mark. [1961
c.497 §1; 1965 c.511 §1; 1981 c.633 §71; 1989 c.931 §1; 1999 c.722 §7; 2009
c.459 §1]
(Registration)
647.009
Filing, service, copying and certification fees. The Secretary of State shall
collect the fees described in ORS 56.140 for each document delivered for filing
under this chapter and for process served on the Secretary of State under this
chapter. The Secretary of State may collect the fees described in ORS 56.140
for copying a public record under this chapter, certifying the copy or
certifying other facts of record under this chapter. [1991 c.132 §23; 1999
c.652 §17; 2009 c.459 §4]
647.010 [Repealed by 1961 c.497 §16]
647.015
Application for registration.
(1) Subject to the limitations set forth in this chapter, a person who uses a
mark may file an application to register the mark with the Secretary of State
in a manner that complies with the Secretary of State’s requirements. The
application must set forth at least the following information:
(a) The name and
business address of the person applying for registration. If the person is a
corporation, the application must list the state of incorporation. If the
person is a partnership, the application must list the state in which the
partnership is organized and the names of the general partners. If the person
is a limited liability company, the application must list the state in which
the limited liability company was formed.
(b) The goods or
services on or in connection with which the mark is used, the mode or manner in
which the mark is used on or in connection with the goods or services and the
class into which the goods or services fall.
(c) The date when
the mark was first used anywhere and the date when the applicant or a
predecessor in interest first used the mark in this state.
(d) A statement
that:
(A) The applicant
owns the mark;
(B) The mark is
in use; and
(C) To the
knowledge of the person that is verifying the application, no other person has
registered the mark with the federal government or in this state or has the
right to use the mark or a mark that so resembles the mark as to be likely to
cause confusion or mistake or to deceive when applied to the goods or services
of the other person.
(2) As part of
the application, the Secretary of State may require the applicant to:
(a) State whether
the applicant or a predecessor in interest has filed an application to register
the mark or portions or a composite of the mark with the United States Patent
and Trademark Office and, if so, provide:
(A) The filing
date and serial number of each application filed in connection with the mark;
(B) The status of
the application; and
(C) The reasons
why the mark was finally refused registration or an application did not
otherwise result in a registration, if the mark was refused registration or the
application did not result in a registration.
(b) Provide a
drawing of the mark that complies with the Secretary of State’s requirements.
(3) The
applicant, a member of the firm applying or an officer of the corporation,
limited liability company or association applying to register the mark shall
sign and verify the application by oath, affirmation or declaration under
penalty of perjury.
(4) The applicant
as part of the application shall submit one specimen of the mark as actually
used. [1961 c.497 §3; 1965 c.511 §2; 1971 c.318 §2; 1985 c.728 §84; 1991 c.132 §20;
2009 c.459 §5]
647.017 When
mark is in use; abandonment of mark.
(1) For purposes of this chapter, a mark is in use:
(a) On goods that
are sold or transported in commerce in this state when the mark is placed in
any manner on:
(A) Goods, other
containers or displays associated with the goods or tags or labels affixed to
the goods; or
(B) Documents
associated with the goods or the sale of the goods, if the nature of the goods
makes placing the mark on the items identified in subparagraph (A) of this
paragraph impractical.
(b) On services
that are rendered in this state when the mark is used or displayed in selling
or advertising the services.
(2) A mark is
abandoned if either of the following occurs:
(a) Use of the
mark has been discontinued with intent not to resume the use. Intent not to
resume use may be inferred from circumstances. Nonuse for two consecutive years
is prima facie evidence of abandonment.
(b) A course of
conduct of the owner, including a failure to act, causes the mark to lose
significance as a mark.
(3) A title,
character name that a person uses and other distinctive features of a radio or
television program may be registered as a service mark notwithstanding that the
title, name or feature or the program may advertise the goods of the sponsor. [2009
c.459 §3]
647.020 [Repealed by 1961 c.497 §16]
647.024 Rules
for classes of goods and services.
(1) The Secretary of State by rule may establish classes of goods and services
for convenience in the administration of this chapter. The classes that the
Secretary of State establishes may not limit or extend an applicant’s or
registrant’s rights and shall conform to the classes the United States Patent
and Trademark Office has adopted to the extent practicable.
(2) A single
application to register a mark may include any or all goods or services on or
in connection with which the mark is actually being used.
(3) If an
application includes more than one class, the Secretary of State may collect a
fee under ORS 56.140 for each class. [1985 c.728 §84b (enacted in lieu of
647.025); 2009 c.459 §6]
647.025 [1961 c.497 §9; 1965 c.511 §3;
repealed by 1985 c.728 §§84a,110 (647.024 enacted in lieu of 647.025)]
647.029
Examination of application by Secretary of State; amendment of application;
refusal to register mark; priority of concurrent applications. (1) The Secretary of State, at the
Secretary of State’s sole discretion, may examine an application filed under
ORS 647.015 for conformity with the provisions of this chapter. This section
does not require the Secretary of State to conduct an examination or
investigation in connection with an application for registration.
(2) An applicant
shall provide additional pertinent information the Secretary of State requests,
including a description of a design that is used as a mark. The applicant or,
with the applicant’s authorization, the Secretary of State may amend the
application to conform with the Secretary of State’s requirements or as the
applicant deems advisable to respond to a rejection or objection. The Secretary
of State may require the applicant to submit a new application.
(3) The Secretary
of State may require the applicant to disclaim an unregisterable component of a
mark that is otherwise registerable. The applicant may voluntarily disclaim a
component of a mark that the applicant has applied to register. An applicant’s
disclaimer does not prejudice or affect the applicant’s or a registrant’s
rights that exist or arise in the matter the applicant disclaimed or the
applicant’s or a registrant’s rights of registration on another application if
the matter the applicant disclaimed is or has become distinctive of the
applicant’s or registrant’s goods or services.
(4) If the
Secretary of State finds that an applicant is not entitled to register a mark,
the Secretary of State shall notify the applicant and provide the Secretary of
State’s reasons for the finding. The Secretary of State shall provide the
applicant with a reasonable time in which to reply or amend the application and
shall examine the amended application in accordance with the provisions of this
section. The applicant may continue to amend the application until:
(a) The Secretary
of State in a final order refuses to register the mark; or
(b) The applicant
abandons the application by failing to reply to the Secretary of State’s notice
or amend the application within the time the Secretary of State specifies.
(5) If the Secretary
of State in a final order refuses to register a mark, the applicant may seek a
writ of mandamus under ORS 34.105 to 34.240 to compel the Secretary of State to
register the mark. The court may grant the writ if the applicant proves that
the statements in the application are true and that the mark is otherwise
entitled to registration. The court may not assess costs or award damages
against the Secretary of State in an action for a writ of mandamus brought
under this section.
(6) If the
Secretary of State is concurrently processing applications that seek to
register the same mark or a mark that is likely to cause confusion or mistake
or to deceive when used on or in connection with goods or services identified
in the applications, the Secretary of State shall grant priority to the
applications in the order in which they were filed. If the Secretary of State
grants a registration for a mark on the basis of an application filed prior to
other applications, the Secretary of State shall reject the other applications.
A rejected applicant may bring an action to cancel the registration the
Secretary of State granted on the basis that the rejected applicant had prior
or superior rights to the mark. [1985 c.728 §85b; 1987 c.94 §104; 2009 c.459 §7]
647.030 [Repealed by 1961 c.497 §16]
647.035 Marks
ineligible for registration.
(1) A mark that an applicant submits for registration may not be registered if
the mark consists of or comprises:
(a) Matter that
is immoral, deceptive or scandalous;
(b) Matter that
may disparage, bring into contempt or disrepute or falsely suggest a connection
with a person, living or dead, an institution, a belief or a national symbol;
(c) The flag,
coat of arms or other insignia of the United States, a state or municipality or
a foreign nation or a simulation of the flag, coat of arms or insignia;
(d) The name or
signature of or a portrait that identifies a particular living individual,
unless the individual has given written consent; or
(e) A mark that
so resembles a mark registered in this state, or a mark or trade name
previously used and not abandoned by another person, as to be likely to cause
confusion or mistake or to deceive when used on or in connection with the
applicant’s goods or services.
(2)(a) A mark may
not be registered if the mark is:
(A) Merely
descriptive or deceptively misdescriptive of the applicant’s goods or services;
(B) Primarily
geographically descriptive or deceptively misdescriptive of the applicant’s
goods or services; or
(C) Primarily
merely a surname.
(b) The
provisions of paragraph (a) of this subsection do not prevent the Secretary of
State from registering a mark used by the applicant that has become distinctive
of the applicant’s goods or services. The Secretary of State may accept as
evidence that the mark has become distinctive, when used on or in connection
with the applicant’s goods or services, proof that the applicant has used the
mark continuously in this state for five years before the date on which the
applicant made the claim that the mark has become distinctive of the applicant’s
goods or services. [1961 c.497 §2; 1965 c.511 §4; 1971 c.318 §3; 1985 c.728 §85;
2005 c.22 §450; 2009 c.459 §8]
647.040 [Amended by 1959 c.261 §1;
repealed by 1961 c.497 §16]
647.045 Certificate
of registration; contents; evidentiary effect. (1) Upon compliance by an
applicant with the requirements of this chapter, the Secretary of State shall
issue and deliver a certificate of registration to the applicant. The Secretary
of State may issue as the certificate of registration a copy of the application
marked with the word “filed.”
(2) The
certificate of registration must show:
(a) The
registrant’s name and business address. If the registrant is a corporation, the
certificate must show the state of incorporation. If the registrant is a
partnership, the certificate must show the state in which the partnership is
organized and the names of the general partners. If the registrant is a limited
liability company, the certificate must show the state in which the limited
liability company was formed.
(b) The date the
applicant claimed as the first use of the mark anywhere and the date claimed as
the first use of the mark in this state.
(c) The class and
description of the goods or services on or in connection with which the mark is
used.
(d) A
reproduction of the mark.
(e) The
registration date and the term of registration.
(3) A certificate
of registration issued by the Secretary of State under this chapter, or a copy
of the certificate duly certified by the Secretary of State, is competent and
sufficient proof of the registration of the mark in an action or proceeding
brought in a court in this state. [1961 c.497 §4; 1965 c.511 §5; 1971 c.318 §4;
1985 c.728 §86; 2009 c.459 §9]
647.050 [Repealed by 1961 c.497 §16]
647.055 Period
of registration; renewal; notice.
(1) Registration of a mark under this chapter is effective for a term of five
years from the date of registration and may be renewed for successive five-year
terms. The Secretary of State shall renew the registration if the registrant:
(a) Submits an
application for renewal, verified as provided in ORS 647.015 (3), within 180
days before the term of registration expires;
(b) Includes with
the application a statement, verified as provided in ORS 647.015 (3), that the
mark has been in use and is still in use; and
(c) Includes with
the application a specimen showing actual use of the mark.
(2) A
registration that is effective on June 23, 2009, shall remain in effect for the
remainder of the term of registration. The registration may be renewed as
provided in subsection (1) of this section.
(3) The Secretary
of State, before the term of registration expires, shall notify the registrant
in writing at the mailing address shown for the registrant in the current
records of the Secretary of State that the registrant must renew the
registration. [1961 c.497 §§5,7; 1965 c.511 §6; 1971 c.318 §5; 1981 c.633 §72;
1985 c.728 §86a; 1989 c.931 §2; 1991 c.132 §21; 2009 c.459 §10]
647.060 [Repealed by 1961 c.497 §16]
647.065
Assignment; filing with Secretary of State; legal and evidentiary effect;
public record of registrations.
(1) A mark and the registration for the mark under this chapter are assignable
with the goodwill of the business in which the mark is used, or with the part
of the goodwill of the business that is connected with the use of and
symbolized by the mark.
(2) To assign the
registration, a registrant must sign a written instrument. The registrant may
submit the instrument to the Secretary of State for filing. After filing the
instrument, the Secretary of State may issue to the assignee a certificate of
registration that is effective for the remainder of the term of registration.
(3) An assignment
of registration under this section is void as against a subsequent purchaser
that purchases the registration for valuable consideration and without notice
of the assignment unless the assignment is submitted to the Secretary of State
of State for filing within 90 days after the assignment or before the
subsequent purchase, whichever is later.
(4) A registrant
or applicant for registration may submit for filing with the Secretary of State
a change of name for the registration or the application. The Secretary of
State may issue a certificate of registration for an assigned application in
the assignee’s name or may issue a certificate of registration in the assignee’s
name for the remainder of the term of registration.
(5) The Secretary
of State, at the Secretary of State’s sole discretion, may receive for filing
other signed written instruments related to a mark that is registered or an
application that is pending, such as licenses, security interests or mortgages.
(6)
Acknowledgment is prima facie evidence of the execution of an assignment or
other instrument. If the Secretary of State accepts an instrument for filing,
the Secretary of State’s record is prima facie evidence of the execution.
(7) The Secretary
of State may accept for filing a photocopy of an instrument if a party to the
instrument or a successor to the party certifies that the photocopy is a true
and correct copy of the original instrument.
(8) The Secretary
of State shall keep for public examination a record of all marks registered or
renewed under this chapter and all documents submitted for filing under this
section. [1961 c.497 §6; 1965 c.511 §7; 1971 c.318 §6; 1985 c.351 §25; 1985
c.728 §87a; 2005 c.22 §451; 2009 c.459 §11]
647.070 [Repealed by 1961 c.497 §16]
647.075
Cancellation of registrations.
(1) The Secretary of State shall cancel a registration for a mark or part of a
registration if:
(a) The Secretary
of State receives a voluntary request from the registrant or the assignee of
record to cancel the registration.
(b) The
registration has not been renewed in accordance with the provisions of ORS
647.055.
(c) A court of
competent jurisdiction either orders cancellation of the registration or makes
any of the following findings:
(A) The
registered mark has been abandoned.
(B) The
registrant is not the owner of the mark.
(C) The
registration was granted improperly.
(D) The
registration was obtained fraudulently.
(E) The
registered mark is the generic name for the goods or services or a portion of
the goods or services for which the mark has been registered.
(F) The
registered mark is likely to cause confusion or mistake or to deceive because
of the registered mark’s similarity to a mark registered with the United States
Patent and Trademark Office and not abandoned before the application for the
registered mark was filed under ORS 647.015.
(2) If the
registrant proves that the registrant has a concurrent registration in the
United States Patent and Trademark Office that covers an area that includes
this state, the Secretary of State may not cancel the registration for the area
covered by the concurrent registration notwithstanding a court’s finding under
subsection (1)(c)(F) of this section. [1961 c.497 §8; 1965 c.511 §8; 1971 c.318
§7; 1981 c.633 §73; 1985 c.728 §88; 2009 c.459 §12]
647.077 Action
to cancel mark or compel registration; Secretary of State not a party. An action to cancel a mark
registered under this chapter or an action in mandamus to compel the Secretary
of State to register a mark must be brought in a circuit court in this state.
An action in mandamus must be based solely on the record before the Secretary
of State. In an action to cancel a mark, a person may not name the Secretary of
State as a party but the court shall notify the Secretary of State and permit
the Secretary of State to intervene in the proceeding. [2009 c.459 §18]
647.080 [Repealed by 1961 c.497 §16]
(Remedies)
647.085
Fraudulent registration prohibited; liability; action for damages. (1) A person may not, on the
person’s behalf or on behalf of another person, apply for, obtain or maintain a
filing or registration for a mark under this chapter by knowingly making a
false or fraudulent representation or declaration, orally or in writing, or by
other fraudulent means.
(2) A person that
violates subsection (1) of this section is liable to pay all damages sustained
in consequence of the filing or registration. The party injured by the filing
or registration may bring an action for damages in a court of competent jurisdiction.
[1961 c.497 §10; 1965 c.511 §9; 1971 c.318 §8; 1981 c.633 §73a; 2009 c.459 §13]
647.090 [Repealed by 1961 c.497 §16]
647.095
Prohibited acts; liability.
(1) A person may not:
(a) Use without
the registrant’s consent and in connection with a sale, distribution, offer for
sale or advertisement of goods or services a reproduction, counterfeit, copy or
colorable imitation of a mark registered under this chapter if the use is
likely to cause confusion or mistake or to deceive as to the origin of the
goods or services; or
(b) Apply a mark
described in paragraph (a) of this subsection to a label, sign, print, package,
wrapper, receptacle or advertisement intended for use in connection with the
sale or distribution of goods or services within this state.
(2) A person that
acts as described in subsection (1) of this section is liable for the remedies
provided in ORS 647.105 in a civil action brought by the registrant, except
that the registrant may not recover profits or damages from the person unless
the person acted as described in subsection (1)(b) of this section with the
intent to cause confusion or mistake or to deceive. [1961 c.497 §11; 1965 c.511
§10; 1985 c.566 §1; 2009 c.459 §14]
647.100 [Repealed by 1961 c.497 §16]
647.105
Remedies for infringement.
(1) An owner of a mark registered under this chapter may proceed in a civil
action to seek an injunction against the manufacture, use, display or sale of a
counterfeit or imitation of the mark. A court of competent jurisdiction may:
(a) Grant
injunctions to restrain the manufacture, use, display or sale as the court
deems just and reasonable;
(b) Require the
defendant to pay to the owner all profits the defendant derived and all damages
the owner suffered from the manufacture, use, display or sale; and
(c) Order
counterfeits or imitations in the defendant’s possession or under the defendant’s
control to be delivered to an officer of the court or the owner to be
destroyed.
(2) If the court
finds that the defendant acted in bad faith, with knowledge or otherwise
according to the circumstances of the case, the court in the court’s discretion
may enter a judgment in an amount not to exceed three times the sum of the
defendant’s profits and the owner’s damages and reasonable attorney fees. If
the court finds that the plaintiff acted in bad faith, vexatiously, wantonly or
for oppressive reasons, the court in the court’s discretion may award
reasonable attorney fees to the defendant. [1961 c.497 §12; 1965 c.511 §11;
1985 c.566 §2; 2009 c.459 §15]
647.107
Grounds for injunctive relief; famous marks. (1) Subject to the principles of equity, the owner of
a mark that is famous and distinctive in this state, inherently or through
acquired distinctiveness, is entitled to an injunction against another person’s
commercial use of the mark if:
(a) The other
person’s use began after the mark became famous; and
(b) The use is
likely to cause dilution of the famous mark.
(2) A mark is
famous if the general consuming public of this state or of a geographic area
within this state widely recognizes the mark as a designation of the source of
the mark owner’s goods or services. In determining whether a mark is famous, a
court may consider factors such as:
(a) The duration,
extent and geographic reach of advertising and publicity of the mark in this
state by the owner or by other persons;
(b) The amount,
volume and geographic extent of sales of goods or services offered under the
mark in this state;
(c) The extent to
which the mark is actually recognized in this state; and
(d) Whether the
mark is registered in this state, appears on the principal register created
under the Trademark Act of 1946, 60 Stat. 427, 15 U.S.C. 1051 et seq., or is
otherwise registered under federal law.
(3) In an action
brought under this section, the owner of a famous mark is entitled to
injunctive relief throughout the geographic area in which the court finds that
the mark became famous before the other person began the other person’s use of
the mark. The court may not order injunctive relief outside this state.
(4) If the court
finds that the other person willfully intended to cause dilution of the famous
mark, the owner is entitled to the remedies provided in this chapter, subject
to the court’s discretion and the principles of equity.
(5) An owner of a
famous mark may not bring an action for another person’s use if the use is a
nominative or descriptive fair use or facilitation of a nominative or
descriptive fair use, other than as a designation of source for the other
person’s own goods or services, including a use:
(a) In connection
with:
(A) Advertising
or promotion that permits consumers to compare goods or services; or
(B) Identifying
or parodying, criticizing or commenting upon the owner of the famous mark or
the goods or services of the owner of the famous mark;
(b) That is
noncommercial; or
(c) That
constitutes news reporting or news commentary. [1971 c.122 §2; 2009 c.459 §16]
647.110 [Repealed by 1961 c.497 §16]
647.111
Seizure of counterfeit goods in infringement proceeding; liability for wrongful
seizure; undertaking.
(1) In a civil action under ORS 647.105, upon motion by the plaintiff with or
without notice to the defendant, the court may order seizure of the counterfeit
goods from any person manufacturing, displaying for sale or selling the goods
if the plaintiff shows good cause and a probability of success on the merits
and posts an undertaking under subsection (6) of this section.
(2) If the
plaintiff makes a motion without notice to the defendant for an order for
seizure and the court determines from the motion that there is good reason for
proceeding without notice to the defendant, the court may waive the requirement
of notice and order seizure of the counterfeit goods.
(3) Any person
from whom seizure is effected by order of the court under this section shall be
served with the order at the time of the seizure. The order of seizure shall
set forth:
(a) The date or
dates on which the seizure is ordered to take place;
(b) A description
of the counterfeit goods to be seized;
(c) The identity
of the person or description of the authority of the person who will seize the
counterfeit goods;
(d) A description
of the location or locations at which seizure is to occur; and
(e) 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.
(4) If the
plaintiff causes seizure of goods that are not counterfeit, the plaintiff shall
be liable for the following damages, costs and expenses:
(a) Any damages
proximately caused by the seizure of goods that are not counterfeit to any
person having a financial interest in the seized goods.
(b) Costs
incurred by any person in defending against seizure of noncounterfeit goods.
(c) Expenses,
including reasonable attorney defending against the seizure of any
noncounterfeit or noninfringing goods, upon a showing that the plaintiff acted
in bad faith in causing the seizure to occur.
(d) Punitive
damages, if warranted.
(5) A person
seeking a recovery under subsection (4) of this section may join any surety on
an undertaking posted under subsection (6) of this section. Any judgment of
liability shall bind the person liable under subsection (4) of this section and
the surety jointly and severally, but the liability of the surety shall be
limited to the amount of the undertaking.
(6) The court
shall set the amount of the undertaking required by subsection (1) of this
section in accordance with the recovery of damages, costs and expenses under
subsection (4) of this section that would be likely if the court ultimately
were to determine that the goods seized were not counterfeit.
(7) Any person
entitled to recover under subsection (4) of this section, within 30 days after
the date of seizure, may object to the undertaking on the ground that the
surety or the amount of undertaking is insufficient.
(8) The motion
filed pursuant to subsection (1) of this section shall include a statement:
(a) Advising the
person from whom the goods are seized that the undertaking has been filed;
(b) Informing the
person of the right to object to the undertaking on the ground that the surety
or the amount of the undertaking is insufficient; and
(c) Advising the
person from whom the goods are seized that the objection to the undertaking
must be made within 30 days after the date of seizure. [1985 c.566 §4]
647.115 Effect
of chapter on marks or trade names acquired at common law; effect of civil
remedies on criminal statutes; intent and construction of chapter. (1) The provisions of this chapter
do not adversely affect the rights or the enforcement of rights in marks or
trade names acquired in good faith at any time at common law.
(2) The
enumeration of a right or remedy in this chapter does not affect the right of a
registrant to prosecute under a penal law of this state.
(3) The intent of
this chapter is to provide for a system of trademark registration and
protection substantially consistent with the system of trademark registration
and protection set forth in 15 U.S.C. 1051 et seq. Construction given the
provisions set forth in 15 U.S.C. 1051 et seq. constitutes persuasive authority
for interpreting and construing this chapter. [1961 c.497 §14; 1965 c.511 §12;
1985 c.566 §5; 1985 c.728 §89; 2009 c.459 §19]
647.120 [Repealed by 1961 c.497 §16]
647.125 [1985 c.566 §6; repealed by 1999
c.722 §9]
647.130 [Repealed by 1961 c.497 §16]
647.135
Trademark counterfeiting.
(1) A person commits trademark counterfeiting if the person knowingly and with
the intent to sell or distribute and without the consent of the registrant
uses, displays, advertises, distributes, offers for sale, sells or possesses
any item that bears a counterfeit of a mark or any service that is identified
by a counterfeit of a mark registered under this chapter or registered under
this chapter or registered under 15 U.S.C. 1052 with knowledge that the mark is
counterfeit.
(2) For purposes
of this section, a mark is counterfeit if:
(a) It is a mark
that is identical to or substantially indistinguishable from a registered mark;
and
(b) It is used on
or in connection with the same type of goods or services for which the genuine
mark is registered.
(3) A person does
not commit trademark counterfeiting if the person has adopted and lawfully used
the same or a confusingly similar mark in the rendition of like services or the
manufacture of like goods in this state from a date before the effective date
of registration of the service mark or trademark and continues to use the mark
after the effective date of registration. [1999 c.722 §2]
647.140
Trademark counterfeiting in third degree; penalty. (1) A person commits the crime of
trademark counterfeiting in the third degree if the person commits trademark
counterfeiting as described in ORS 647.135 and:
(a) The total
number of items bearing the counterfeit mark is not more than 100; or
(b) The total
retail value of all of the items bearing the counterfeit mark or services that
are identified by the counterfeit mark is not more than $1,000.
(2) Trademark
counterfeiting in the third degree is a Class A misdemeanor. Notwithstanding
ORS 161.655, if the person convicted under this section is a corporation, the
maximum fine that may be imposed is $100,000. [1999 c.722 §3]
647.145
Trademark counterfeiting in second degree; penalty. (1) A person commits the crime of
trademark counterfeiting in the second degree if the person:
(a) Commits
trademark counterfeiting as described in ORS 647.135 and:
(A) Has one prior
conviction for trademark counterfeiting in any degree;
(B) The total
number of items bearing the counterfeit mark is more than 100 but less than
1,000; or
(C) The total
retail value of all of the items bearing the counterfeit mark or services that
are identified by the counterfeit mark is more than $1,000 but less than
$10,000.
(b) Knowingly
manufactures or produces with intent to sell or distribute any item that bears
a counterfeit mark or any service that is identified by a counterfeit mark.
(2) Trademark
counterfeiting in the second degree is a Class C felony. However,
notwithstanding ORS 161.655, if the person is convicted under:
(a) Subsection
(1)(a)(A) of this section and is a corporation, the maximum fine that may be
imposed is $200,000.
(b) Subsection
(1)(b) of this section and the person has one prior conviction for trademark
counterfeiting in any degree and is a corporation, the maximum fine that may be
imposed is $200,000. [1999 c.722 §4]
647.150
Trademark counterfeiting in first degree; penalty. (1) A person commits the crime of
trademark counterfeiting in the first degree if the person commits trademark
counterfeiting as described in ORS 647.135 or 647.145 (1)(b) and:
(a) Has two or
more prior convictions for trademark counterfeiting in any degree;
(b) The total
number of items bearing the counterfeit mark is 1,000 or more; or
(c) The total
retail value of all of the items bearing the counterfeit mark or services that
are identified by the counterfeit mark is $10,000 or more.
(2) Trademark
counterfeiting in the first degree is a Class B felony. [1999 c.722 §5]
647.155
Seizure, forfeiture and disposal.
(1) The following are subject to seizure and forfeiture in the same manner as
the proceeds of prohibited conduct under ORS chapter 131A:
(a) All raw
materials and equipment that are used, or intended for use, in providing,
manufacturing and delivering items bearing a counterfeit mark or services
identified by a counterfeit mark;
(b) All
conveyances that are used, or intended for use, to transport items bearing a
counterfeit mark;
(c) All books,
records, computers and data that are used or intended for use in the
production, manufacture, sale or delivery of items bearing a counterfeit mark
or services identified by a counterfeit mark; and
(d) All moneys,
negotiable instruments, balances in deposit or other accounts, securities or
other things of value furnished or intended to be furnished by any person in
the course of activity constituting a violation of ORS 647.140, 647.145 or
647.150.
(2) Items bearing
a counterfeit mark are subject to seizure and disposition as provided in ORS
133.525 to 133.703. However, if the registrant so requests, the agency holding
the seized items shall release the seized items to the registrant or make such
other disposition as the registrant directs. If the registrant does not direct
disposition of the seized items, the agency shall destroy the items. [1999
c.722 §6; 2001 c.780 §§17,17a; 2009 c.78 §60]
ROYALTIES FOR MUSICAL
WORKS
647.700
Definitions for ORS 647.700 to 647.730. As used in ORS 647.700 to 647.730:
(1) “Copyright
owner” means a person that owns a copyright that is recognized and enforceable
under the Copyright Act of 1976 (P.L. 94-553, 17 U.S.C. 101 et seq.).
(2) “Perform”
means to disseminate a musical work by playing a recording of the musical work
in public, by broadcasting the musical work by radio, television, cable
television, satellite or other means or by playing the musical work live in
public.
(3) “Performing
rights society” means an association or corporation that grants a license on
behalf of a copyright owner to perform a copyrighted musical work, including
but not limited to the following societies and corporations:
(a) The American
Society of Composers, Authors and Publishers (ASCAP);
(b) Broadcast
Music, Inc. (BMI); and
(c) SESAC.
(4) “Proprietor”
means an owner of a retail establishment, restaurant, inn, bar, tavern, sports
or entertainment facility or any other similar place of business or
professional office located in this state in which the public may assemble and
in which copyrighted musical works may be performed.
(5) “Royalty”
means a fee provided to a copyright owner or performing rights society for a
license to perform a musical work. [1997 c.236 §1; 2018 c.28 §4]
Note: 647.700 to 647.730 were enacted
into law by the Legislative Assembly but were not added to or made a part of
ORS chapter 647 or any series therein by legislative action. See Preface to
Oregon Revised Statutes for further explanation.
647.705
Requirements for performing rights societies. (1) A performing rights society may not enter into,
or offer to enter into, a contract under the terms of which a proprietor must
pay royalties unless the performing rights society, at least 72 hours before
entering into the contract, provides to the proprietor or an employee of the
proprietor:
(a) Information,
at the proprietor’s request, as to whether specific copyrighted musical works
are in the repertoire of the performing rights society;
(b) An
opportunity to review, electronically and free of charge, the most current
available list of the performing rights society’s members or affiliates, and
the most current available list of the musical works that the performing rights
society licenses, in a format that the proprietor can search by title,
publisher and performing artist; and
(c) A schedule of
rates and terms under which the performing rights society will collect
royalties under the contract, including the terms of any sliding scale or
schedule for any increase or decrease of the rates for the duration of the
contract.
(2) A performing
rights society may not license or attempt to license a proprietor to perform a
musical work in this state unless the performing rights society each year
submits to the Secretary of State for filing an electronic template copy of
each performing rights form contract that a performing rights society offers to
a proprietor in this state under which the proprietor would pay royalties.
(3) The Secretary
of State’s duty to file documents under this section is ministerial. The
Secretary of State need not review or verify the contents of performing rights
contracts for compliance with this section. [1997 c.236 §2; 2018 c.28 §5]
Note: See note under 647.700.
647.708
Requirement for performing rights society to have authorization to do business
in state. A
performing rights society may not collect royalties, fees, penalties or other
amounts for performing copyrighted musical works or enter into a contract to
collect royalties for performing a copyrighted musical work unless the
performing rights society is authorized to do business in this state. This
section does not apply to a performing rights society that by law is exempt
from a requirement to have an authorization to do business in this state. [2018
c.28 §3]
Note: See note under 647.700.
647.710
Requirements for contracts for payment of royalties. A contract that a performing
rights society executes or renews in this state under which a proprietor pays
royalties must be:
(1) In writing;
(2) Signed by the
parties; and
(3) Written to
include, at a minimum, the following information:
(a) The
proprietor’s name and business address and the name and location of each place
of business to which the contract applies;
(b) The name of
the performing rights society;
(c) The duration
of the contract; and
(d) The schedule
of rates and terms of the royalties the performing rights society will collect
under the contract, including the terms of any sliding scale or schedule for
any increase or decrease of the rates for the duration of the contract. [1997
c.236 §3; 2018 c.28 §6]
Note: See note under 647.700.
647.715
Prohibited conduct.
A performing rights society or any agent or employee of a performing rights
society may not:
(1) Enter onto
the premises of a proprietor’s business to discuss or inquire about a contract
under which the proprietor will pay royalties without first:
(a) Providing
identification to the proprietor or the proprietor’s employees; and
(b) Specifying
the purpose of the entry;
(2) Use abusive,
profane or obscene language when communicating with a proprietor or the
proprietor’s employees;
(3) Communicate
with a proprietor or the proprietor’s employees in person or by telephone in
locations or at times other than in the proprietor’s place of business during
regular business hours unless the proprietor’s place of business is not open to
the public and the proprietor or an employee, agent or representative of the
proprietor agrees to communicate in a different location or at a different
time;
(4) Communicate
with a proprietor or the proprietor’s employees after receiving notice from the
proprietor’s attorney that the performing rights society or an agent or
employee of the performing rights society must address communications to the
proprietor’s attorney, except that a performing rights society or an agent or
employee of the performing rights society may communicate directly with the
proprietor or the proprietor’s employees if the attorney fails to respond to
communications for a period of 60 days or more;
(5) Engage in any
coercive conduct, act or practice that is substantially disruptive to a
proprietor’s business;
(6) Use or
attempt to use any unfair or deceptive act or practice in negotiating with a proprietor;
or
(7) Fail to
comply with or fulfill the obligations imposed by ORS 647.705 and 647.710. [1997
c.236 §4; 2018 c.28 §7]
Note: See note under 647.700.
647.720 Action
for damages; injunction; fines.
(1) Any person may bring an action to recover actual damages and reasonable
attorney fees or seek an injunction or any other remedy available at law or in
equity for a violation of ORS 647.705, 647.708, 647.710 or 647.715.
(2) In addition
to and not in lieu of any damages a person may recover under subsection (1) of
this section, a court may impose a fine of not more than $1,000 for each
willful violation of ORS 647.705, 647.708, 647.710 or 647.715. [1997 c.236 §5;
2018 c.28 §8]
Note: See note under 647.700.
647.725
Relationship to other laws.
The rights, remedies and prohibitions in ORS 647.700 to 647.730 are in addition
to and cumulative to any other right, remedy or prohibition accorded by common
law, federal law or the statutes of this state. ORS 647.700 to 647.730 do not
deny, abrogate or impair any common law or statutory right, remedy or
prohibition. [1997 c.236 §6; 2018 c.28 §9]
Note: See note under 647.700.
647.728
Conduct of investigations by performing rights society. ORS 647.700 to 647.730 do not
prohibit a performing rights society from conducting investigations to
determine whether a proprietor is performing copyrighted musical works or
informing a proprietor of the proprietor’s obligations under the Copyright Act
of 1976 (P.L. 94-553, 17 U.S.C. 101 et seq.) and other copyright laws or
regulations of the United States. [2018 c.28 §2]
Note: See note under 647.700.
647.730
Applicability of ORS 647.700 to 647.730. ORS 647.700 to 647.730 do not apply to contracts
between copyright owners or performing rights societies and broadcasters
licensed by the Federal Communications Commission or to contracts with cable
television operators, cable television programmers or other similar
transmission services. ORS 647.700 to 647.730 do not apply to musical works
performed in synchronization with an audiovisual film or tape. [1997 c.236 §7]
Note: See note under 647.700.
647.990 [Repealed by 1961 c.497 §16]
647.991 [1985 c.566 §7; repealed by 1999
c.722 §9]
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