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Intellectual Property and International Law: What Every Business Should Know Abo

Anticounterfeiting Consumer Protection Act of 1996

On July 2, 1996, President Clinton signed the Anticounterfeiting Consumer Protection Act of 1996. Section 3 of the Act establishes counterfeiting and the trafficking of goods bearing counterfeit marks as a racketeering crime. Like any other criminal law, one can conspire to and attempt to violate the law. Further, since criminal law is involved, this opens the door for civil penalties as well. Section 10 of the Act modifies 19 U.S.C. §1526 to state that any person who directs, assists financially or otherwise, or aids and abets the importation of merchandise for sale or public distribution that is seized, shall be subject to a civil fine. What is missing from the civil penalties subsection are words such as "knowingly" and "intentionally" so those involved in importation must do what they can not to assist, aid, or abet. Attorneys, C.P.A.s, freight forwarders, customs brokers, bankers, and just about everyone involved must now do their part to stop trafficking in counterfeit goods or face penalties. This also includes owners of vessels, vehicles, and aircraft, as §13 of the Act forbids unlawful use of these in violation of the criminal provisions. Violations could lead to seizure of the vessels, vehicles, and aircraft, as is common in drug matters.

The Act is further strengthened by §§11 and 12, which call for public disclosure of aircraft manifests, and by allowing the Secretary of the Treasury to prescribe new regulations for entry documentation to determine if the goods sought to be imported bear an infringing trademark. One must remember to check for new regulations in the Code of Federal Regulations and the Federal Register before taking any actions.

Goods Already Passed Through Customs

Another powerful regulation is 19 C.F.R. §133.24, which allows for a demand for redelivery after release of the merchandise. If goods were released by Customs and the recordant discovers this, the port director (a Customs official) is to make demand on the importer for redelivery of the goods. If they are not redelivered, i.e., have already been sold, a claim for liquidated damages may be made.

Copyright Protection

Claims to copyrights which have been registered in accordance with the Copyright Act of July 1947, or the Copyright Act of 1976, may be recorded with Customs for import protection. An application to record a copyright must include a statement of actual or potential injury, the country of manufacture of the genuine copies or phonorecords, along with information identifying the copyright owner and all foreign persons or entities authorized or licensed to use the protected work.(3) An "additional certificate" of copyright registration issued by the U.S. Copyright Office must also accompany the application and five photocopies of the copyrighted work (except where the copyright covers a book, magazine, periodical, or similar matter readily identifiable by title or author). The recordation remains in effect for 20 years, unless the copyright ownership expires before that time.

As with trademarks and trade names, importation of infringing copies is prohibited. If the port director determines that an imported article is an infringing copy or phonorecord, it will be seized and the importer notified. The importer is then given an opportunity to contest the allegation that the article infringes a recorded copyright. If the importer contests the allegation, the copyright owner is supplied with a sample and notice that the copyright owner must demand exclusion, post a bond, and submit legal briefs, evidence, and other pertinent material to substantiate infringement. The burden of proof is on the copyright owner.

The copyright infringement procedure is as complicated as any administrative matter and there are important deadlines and cutoff dates which must be complied with. If the material is found to infringe on the copyright, the works are destroyed unless some "conditional" relief is possible. One such relief is to allow articles seized or detained to be returned to the country of export if the importer can show that he or she had no reasonable grounds for believing that his her actions constituted a violation. If articles infringing on a copyright have already cleared customs, the port director is promptly to demand redelivery, subject to a claim for liquidated damages if the articles are not redelivered.

The Anticounterfeiting Consumer Protection Act of 1996 provides criminal and civil protection for phonorecords, computer programs, packaging, and documentation, and motion pictures and other audiovisual works.

Patent Protection: Patent Surveys

The first requirement is that the patent be issued by the U.S. Patent and Trademark Office of the Department of Commerce. Since patents are more complicated than trademarks or trade names, obviously the Customs Service cannot check each item to determine how it works and if there is a violation of a patent. Some patent infringements may be quite obvious, while others may be quite difficult to detect. Thus, the Customs Service has only limited authority to assist patent owners and more active participation by the patent owner is required.

The remedies for patent owners are exclusion orders and seizure and/or forfeiture orders issued by the International Trade Commission under §337 of the Tariff Act of 1930. These orders are issued as remedies against the sale after importation of articles which infringe upon a patent or registered copyright, or which are made by a process covered by the claims of a patent. The major problem for U.S. patent owners is discovering who is infringing on the patent. The U.S. Customs Service can assist by providing the patent owner with the names and addresses of importers of merchandise which appears to infringe a registered patent.

Applications for patent surveys read more require the name of the patent owner, a certified copy of the patent, with additional photocopies, a statement of the requested length of the survey (two, four, or six months), and a list of all merchandise which is believed to infringe the patent, or in which it is a possible component part. Additional required information is the Harmonized Tariff System classification number, trade names, trademarks, and a statement of the manner in which the patent is used. Also required is a sample chemical analysis or other information used to identify the patented product or process. The Customs Service also requires identification of any information supplied in the patent survey application which is confidential or privileged.

The present costs of patent surveys are $1,000, for two months, $1,500, for four months, and $2,000, for six months. The more complicated the patented product or process, the more the patent owner will need to discuss the survey with Customs to better learn how to show the Customs officers what to look for in potential violations. If a patent survey demonstrates possible infringement, the evidence may be used to bring an action before the International Trade Commission.

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