Copyright Protection with US Customs and Border Protection Agency

Introduction:

International piracy of designs and products is a common place problem facing most businesses in the world today. It is not uncommon for the seller of an innovative product to face cheap imitations flooding the market within a few months of initial introduction.

The worst aspect of the problem is that judicial enforcement of copyright protections is difficult in many of the nations which are the worst violators of such rights. Anyone who has sought to obtain judicial relief in China or Indonesia, in Russia or Brazil will soon realize that their legal systems are seldom capable of providing effective results.

Before thinking that somehow the United States or Europe are more “honest” keep in mind that such accusations were made for decades against the United States by Britain in the early to mid-19^th Century. There can be little doubt that United States businesses routinely pirated British inventions and designs while court relief was almost impossible to obtain. Essentially, developing economies routinely steal concepts and designs from established economies and that is unlikely to change in the future.

But there is effective protection possible available for the United States businesses and it involves the correct use of the United States Customs and Border Control Agency (hereafter “CBP”.) This sub department of the Department of Homeland Security will seize pirated products if certain procedures are followed though, as discussed below, a bond may have to be posted.

This article shall discuss procedures required.

The Basic Methods:

In order to obtain CBP protection for its copyrighted designs, the business must first record its copyright(s) with the CBP. The recordation process allows the business to provide statements documenting actual instances of copyright infringement. After recordation, the CBP will monitor imports for items infringing the business’ copyright and deny entry and/or seize infringing items.

A business can also report any copyright violations through the CBP’s “e-Allegation” system. In addition, there are a number of options a business can utilize to educate the CBP about its copyright. Those options include: (i) producing a Product Information Guide; (ii) providing Product Training Sessions; and/or (iii) a general meeting with CBP staff. These educational options will arm the CBP with even more information and allow the CBP to identify infringing items more efficiently.

The Law:

I. Introduction:

United States Customs and Border Protection Authority and Recordation System

The United States Customs and Border Protection (CBP) is a part of the Department of Homeland Security and is the primary federal agency responsible for securing the US border. The CBP is an administrative agency with law enforcement powers that allow for search, seizure, and arrest, and the legal authority to make substantive determinations regarding infringement of copyrights pursuant to the Tariff Act of 1930, the Lanham Act of 1946, the Copyright Act of 1976, and the Digital Millennium Copyright Act of 1998.[1]

The CBP has a system through which intellectual property owners can record rights with the CBP, and the CBP will work with the owners to stop the importation and exportation of items that infringe upon the owners’ rights. The CBP website states that stopping the flow of fake items is “a priority” for the United States government. The CBP uses recordation information to actively monitor shipments and prevent the importation or exportation of infringing items. The Code of Federal Regulations provides the rules for the CBP recordation and enforcement for copyrights in 19 CFR §133.31 et seq. These rules provide that a copyright may be recorded with CBP for import protection.

II. Recordation

In order to be eligible for recording with the CBP, the copyright must already be registered with the U.S. Copyright Office.[2] A registered copyright can be recorded with the CBP through its website at the “Intellectual Property Rights e-Recordation (IPRR) online system. (iprr.cbp.gov). The website provides step-by-step instructions on how to record the copyright with the CBP. 19 CFR §133.31 outlines what information is required in an application to record a copyright as follows:

• The copyright registration information;
• The name and address of the copyright owner;
• If the applicant is claiming actual or potential injury, a statement setting forth the circumstances of such actual or potential injury;
• The country where the genuine articles are manufactured;
• The foreign entities who are permitted to use the work;
• Any foreign titles of the work;
• A copy of the copyright registration (and a certified copy of any transfer if the applicant for recordation is different than the owner on the registration);
• Electronic copies of the copyrighted materials; and
• The fee ($190).

It should be noted that unlike registration with the Copyright Office, a “collection” cannot be recorded as one work; therefore, a copyright owner must record each and every work individually. (A cost benefit analysis would need to be conducted to determine the total cost of recording multiple copyrights with the CBP in order to obtain copyright protection.)

Once the application for recordation is approved, the recordation is considered effective. Confirmation that the recordation has been approved can be obtained by searching for the recorded copyright through the CBP IPRR search website at: https://iprs.cbp.gov/#/ . An official Notice of Recordation is later mailed to the filing correspondent but it may take several months. Once recorded, the recordation lasts for twenty (20) years. Note that this period can be shorter if the copyright expires, is cancelled or revoked, or if the recorder seeks to cancel recordation.[3]

III. Enforcement

Once recorded, U.S. Customs can deny entry and seize items that infringe a copyright. Generally, CBP regulations provide for the possibility of enforcement action in two different scenarios: (1) the suspected item is “clearly piratical,” or (2) the suspected item is possibly piratical of the protected work.

1. Clearly Piratical. “Clearly Piratical” is defined as overwhelming and substantial similarity between the copyrighted elements of the protected work and the suspect item so as to clearly indicate that one work was based on the other.[4] Under 19 CFR §133.42, if CBP determines that items are clearly piratical, the infringing items are subject to seizure and forfeit. When items are seized under 19 CFR §133.42, CBP shall provide the owner of the copyright with notice of the seizure containing the following information: (1) the date of importation; (2) the port of entry; (3) a description of the merchandise; (4) the quantity involved;(5) the name and address of the manufacturer; (6) the country of origin of the merchandise; (7) the name and address of the exporter; and (8) the name and address of the importer.

2. Possibly Piratical. “Possibly Piratical” encompasses situations in which the CBP has “reasonable suspicion” to believe that the imported items are piratical of copyright works recorded with CBP.[5] In this situation, the process outlined in 19 CFR §133.43 applies. Generally, that process provides that the items are detained and the importer is notified with an opportunity to respond. If the importer does not respond and deny infringement within thirty (30) days, then CBP seizes the infringing items. However, if the importer denies the infringement within the thirty (30) days, then the copyright owner is notified and has thirty (30) days to request that the items be denied. The copyright towner can request a copy of the infringing item in order to evaluate the infringement after providing an appropriate bond. If the copyright owner seeks the denial of the items and files the appropriate bond, then the parties will be given a period of time where evidence is exchanged and submitted to CBP for review and decision.[6] If CBP determines that the item is infringing, then the item is destroyed and the bond is returned to the copyright owner.[7] However, if CBP determines that the item is not infringing, then the CBP releases the detained item and gives the copyright owner’s bond to the importer.[8]

IV. Practical Procedures.

In addition to recording a copyright with the CBP, the following section provides options a copyright owner can pursue to further protect his or her copyright through the CBP.

1. Reporting Copyright Violations to CBP. Anyone can report suspected intellectual property violations to CBP by accessing CBP’s “e-Allegations” system. (link: https://eallegations.cbp.gov/Home/Index2 ). The e-Allegations complaint can be filed anonymously. However, it should be noted that the CBP advises that in most situations the Privacy Act and the Trade Secrets Act law prevent the CBP from disclosing the results of any research conducted as a result of the allegation.[9]

2. Product Identification Guides. Copyright owners are encouraged to produce a Product Information Guide about the copyright and submit the guide to the CBP. These guides are used to assist the CBP to effectively identify counterfeit goods bearing the purported copyrights. All information included in the product identification guide is kept strictly confidential by the CBP. It is suggested the guide contain the following:

• Information about the company;
• The intellectual property owned by the company;
• Contact information;
• Registration number;
• Recordation number;
• Physical characteristics of the product;
• Photos of genuine and suspect versions of the goods;
• Manufacturing information; and
• An appropriate legal disclaimer, which can be found at www.cbp.gov/ipr.[10]

3. Product Training Sessions. In addition to creating a Product Information Guide, copyright owners are encouraged to provide Product Training Sessions to CBP personnel at ports of entry. The training sessions would provide the CBP with supplemental information about the copyright that would assist them in understanding the copyright and the owner’s related products. Further, the information provided in the sessions would assist CBP personnel in identifying counterfeit versions of the owner’s products more efficiently. In order to conduct a Product Training Session, requests must be made to the Assistant Port Director for trade at each point of entry.[11]
4. Meeting with CBP. The production of a Product Identification Guide or providing the CBP with Product Training Sessions may not be economically feasible for all copyright owners. An alternative would be to set a meeting with a CBP officer to explain what to look for, what types of items will likely be infringing upon the copyright and how the CBP can actively find an infringing item. The CBP is willing to meet with copyright attorneys to discuss intellectual property rights enforcement and on individual cases.

Conclusion:

Piracy cannot be eliminated until each nation allows full enforcement of the laws protecting intellectual property. That is unlikely for the foreseeable future, so the wise business person will seek alternative methods to protect products and ideas. Wise use of Customs enforcement is only one of a set of tools that are available and should form part of the arsenal each business amasses for its own protection.