[Trade related Intellectual Property Rights protection system in the United States]
■ Outline
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into effect in 1995, Tariff Act of the United States prescribes prohibited import and export articles that infringe intellectual property rights and regulates specific regulations for protection of intellectual property rights.
Though goods of infringement is difficult to identify, let alone determine whether infringement of intellectual property rights, it is inevitable to get through customs clearance in international trade, thus intellectual property rights protection system of Tariff Act plays as a effective means of enforcement.
Such protection system is applicable to not only the United States, also all the WTO member countries, so owners granted by intellectual property rights make good use of protection system of Tariff Act, in contrast, infringer suspect should pay attention to this part.
Intellectual property rights prescribed Tariff Act and relevant regulations, focusing on entry and related field, will be outlined below briefly.
■ Protection object of intellectual property rights and main related agency
Intellectual property rights of the United States mainly include Trademark, Patent, Copyright, Trade Secrets.
In particular, in the situation that foreign company collects various relevant information on U.S. industrial activities by hiring a consultant or advisor. If obtaining the secret of U.S. companies through illegal means or unauthorized copying, civil liability as well as criminal responsibility will be imposed on foreign countries or relevant foreigners. So foreign countries associated with intellectual property rights should pay much attention to this point.
☉ Trademark
ㅇ Trademark is a recognizable word, name, symbol, device that identifies and distinguishes the source of the goods of one party from those of others.
ㅇ Trademarks for currently using or planning to use, which are registered on the principal register of federal Patent and Trade Mark Office and Trade Mark Office of the States. Registration of trademark lasts for a period of then years for exclusive use by owner and is renewable.
☉ Patent
ㅇ Requirements for applying for patent, including three kinds of novelty, utility, non-obviousness of product or manufacture method.
ㅇ Applying for patent at Patent and Trade Mark Office and applicant will be granted patent after examination of application material.
ㅇ Patent lasts for a period of 17 years and design patent lasts for a period of 14 years.
☉ Copyright
ㅇ Copyright protection exists the moment a work is fixed in the United States and the protection period is determined by several points.
ㅇ Works published since 1978.1.1. are copyrighted for a limited time, author's lifetime and expire 70 years after the author's death.
ㅇ Work of anonym, pen name ,or of corporate authorship since to publication of 1978.1.1. is copyrighted to 120 years after creation or 95 years after publication, whichever endpoint is earlier.
ㅇ Works is regarded as a visual art in stable forms may be able to reproduce effect, so only idea itself cannot be protected.
ㅇ Authors are required to specify copyright on each works distributed publicly for copyright protection in the United States.
ㅇ The World Intellectual Property Organization's (WIPO) Copyright Treaty (WCT) and the performances and Phonograms Tready (WPPT) were daopted by the United States to form intellectual property rights system and protect with new technological environment in new digital age. Digital Millennium Copyright Act that including some exemptions from responsibility for online service providers is established.
☉ Main related agencies of U.S. intellectual property rights
ㅇ Patent and Trade Mark Office (PTO) : an agency in the United States Department of Commerce that grants patents and registers trademark after examination.
ㅇ Copyright Office (CO) : an division of Library of Congress, it conducts an examination whether meet the standard set by law or not and provides information on copyright. Registration of copyright contains recordings and films, computer softwares.
ㅇ Copyright Royalty Tribunal (CRT) : It was established by amendment of copyright in 1976. Compulsory license enable to use copyright with deposition of certain royalties that set by government according to law stipulation without permit of copyright owner. Transmission of cable television, radio, use of commercial jukebox is qualified for this category.
ㅇ Court of Appeals for the Federal Circuit (CAFC) : an court for second appeal, which is specialized in handling infringement of patent cases. Court performs central and ultimate role in litigation of intellectual property rights, which is regarded as essential civil cases.
■ CBP protection measures of intellectual property right - trademark, copyright
According to Tariff Act of 1930, Lanham Act of 1946, Copyright Act of 1976, US Customs and Border Protection (CBP) has authority to determine whether it is infringement of trademark and copyright registered in customs. Once identified as infringement of trademark or copyright, CBP has authority to prevent, inspect and arrest by actual means of restrain, detention, seizure, confiscation, etc. It is so-called border measure.
US Customs and Border Protection has no authorization on patent, but CBP is granted to execute exclusion order of importation from International Trade Commission (ITC) and implement border measure on violation of patent.
※ There are separate protection measure and border measure on intellectual property rights for FTA agreement signed countries with the United States, however, general border protection measures are outlined below.
☉ Measures on violation of copyright
1) Clearly Piratical Works
ㅇ For registered works recorded with CBP by owner : Initiate the process of confiscation and seizure
ㅇ For registered works without recordation with CBP by owner : potential seizure by executive reasons (infringement of copyright, criminal violation, etc.).
2) Possibly Piratical Works
ㅇ For registered works without recordation with CBP by owner : detention or seizure is not imposed on by Customs.
ㅇ Registered works recorded copyright with CBP by owner will be carried out as following procedures.
① CBP may inform importer and issue detention notice.
② Accept importer's claims in case of denial of infringement.
③ Inform and disclose to the copyright owner information, providing bond.
④ sample is provided to copyright owner, request exclusion order from copyright owner.
⑤ exchange claim between importer and copyright owner.
⑥ determination : infringement recognized, seizure, confiscation will be imposed on the imported goods. But failure to recognize infringement, imported goods will be released and importer will receive bond provided by copyright owner.
☉ Measures on violation of trademark
1) Counterfeit Marks
Counterfeit Marks refers to marks that are the same with federal registered trademark or substantially unable to identify.
ㅇ Recorded trademark with CBP by owner : confiscation or seizure is imposed on goods attached counterfeit marks.
ㅇ Not recorded trademark with CBP by owner : potential seizure by executive reasons (criminal violation, etc.).
2) Copy or Simulating Marks
Copy or simulating marks refers to marks that are confusingly similar to recorded trademarks, resulting in inducing confusion of origin and support.
ㅇ Recorded trademark with CBP by owner : importer may claim other exceptions within 30 business days of the date detention, in case so-called other exceptions are not recognized, the relevant goods are subject to confiscation.
ㅇ Not recorded trademark with CBP by owner : either detention or confiscation is not imposed.
3) Gray market goods (parallel imports or circumvention products)
ㅇ Gray market goods refers to goods that are attached marks and sold abroad outside of the United States without authorization of the U.S. trademark holder.
ㅇ Recorded trademark with CBP by owner : importer may claim other exceptions within 30 business days of the date detention, in case so-called other exceptions are not recognized, the relevant goods are subject to confiscation.
ㅇ Not recorded trademark with CBP by owner : either detention or confiscation is not imposed.
■ Protection act of author's intellectual property rights
Recorded trademark, copyright is strongly protected by CBP rather than not registered one, so it is very significant to make registration at CBP for protecting owner himself/herself.
☉ Tip on recordation of copyright
ㅇ Requirements for recordation
Requirements for registration of copyright with CBP are as follows. The copyright owner including any person who has acquired copyright ownership through an exclusive license, positive other means and claims actual or potential loss because of importations of copies (or phonorecords) of eligible works, may file a recordation application. But registered copyright shall be potential recordation at CBP in accordance with U.S. copyright law.
ㅇ Recordation
Recordation of copyright should include following information in writing and application shall be submitted at Intellectual Property Office of U.S. Customs and Border Protection.
- The name and address of the copyright owner or owners;
- If the application is a person claiming actual or potential injury by reason of actual or contemplated importations of copies or phonorecords of eligible work, a statement setting forth the circumstances of such actual or potential injury;
- The country of manufacture of genuine copies or phonorecords of the federally registered copyright;
- The name and principal address of any foreign person or business entity authorized or licensed to use the federally registered copyright, and a statement as to the exclusive rights authorized;
- The foreign title of the federally registered copy, if different from the U.S. title;
- In the case of an application to record a copyright in a sound recording, a statement setting forth the name(s) of the performing artist(s), and any other identifying names appearing on the surface of reproduction of the sound recording, or its label or container.
ㅇ Required materials for recordation
- "additional certificate" of registration of copyright issued by U.S. Copyright Office.
- 5 pieces of pictures of works in size of 8 x 10"1/2" or other similar things.
ㅇ Fee : $190 for each class of goods of a trademark the applicant wishes to record.
ㅇ Effective date and period : a period of 20 years from the date that recordation is
approved.
☉ Renewal of Copyright recordation
Copyright recordation can be continuously protected by Customs and Border after the expiration of 20 years of copyright recordation. There is no limit to the number of times for renewal of copyright recordation.
ㅇ Renewal application time : 3 months prior to the date of expiration
ㅇ Application materials for renewal
- materials of certificate show owner's effectiveness of copyright.
- if any update of name, address or other information of owner, a statement setting forth such updates.
ㅇ Renewal fee : $80 for each of class of goods of a trademark the applicant wishes to record.
☉ Tips on recordation of trademark
Recordation of trademark is similar to recordation of copyright.
However, Trademarks that are registered on the principal register of the U.S. Patent and Trademark Office are eligible for recordation with CBP.
Applicant shall pay a fee $190 for each class of goods of trademark and it is valid for a period of 10 years.
☉ Disclosure of information
It is very important to combine active cooperation of owner of intellectual property rights with inspection of CBP for preventing infringement of intellectual property rights. If doubt that trademark or copyright has been infringed, provide the following information to CBP and protect your own intellectual property rights actively.
• Name and address of importer or consignee of suspected goods (hereinafter referred to as violation goods);
• A detailed description of suspected goods for CBP to identify violation goods;
• Sample, picture, sketch of violation goods;
• Origin and country of reshipment of violation goods;
• Country of manufacture of violation goods;
• Name and address of business entities involving manufacture or distribution of violation goods;
• Information on transportation method and carriers of violation goods;
• Expected port of entry and date of violation goods presented to CBP;
• Classification of U.S. tariff schedule;
• Other evidences regarding to import of violation goods.
■ Reference : Investigation of U.S. ITC unfair practices in trade
☉ legal basis and scope, object
ㅇ Legal basis
Under Section 377 of Tariff Act (hereinafter referred to as Section 377), International Trade Commission (hereinafter referred to as ITC) has authorization to investigate goods imported and offered for sale in the United States whether existing unfair methods of competition or infringement of intellectual property or not. If such turn out to be true, ITC may issue order of import exclusion for relevant goods and also issue cease and desist order on unfair acts.
ㅇ Control scope
ITC prescribes importation acts or sales behavior of infringement of U.S. intellectual property rights as illegal practice and controls.
- Acts of infringement of U.S. patent and registered copyright;
- Acts of manufacture, production, assemble, collection by the process of U.S. patent;
- Acts of infringement of registered trademark under Trademark Law of 1946 and mask work registered semiconductor chip product, acts of infringement of exclusive right of designer.
ㅇ Object of investigation
Industries involving patent, copyright, trademark, mark work of semiconductor that existing or in the process of being established in the United States may become object of investigation. In other words, in case of industries that existing or in the process of being established, imported goods of infringement of U.S. intellectual property rights cannot be controlled on the basis of Section 377.
☉ Procedures for investigation
1) Request investigation: receipt of filed complaint from owner of U.S. intellectual property rights or implementation on authority as ITC.
2) Initiating investigation : determinate after receipt of filed complaint within 30 days or initiate on authority as ITC.
3) Submission of pleadings : Submit within in period of 20 days after notice of initiating investigation. if failure to submission of pleadings, may get unfavorable judgement in line with default judgment.
4) Final judgement given by administrative-law judge : Administrative-law judge conduct cases by evidence search, etc. procedures of actual final investigation and get through public hearing, then report judgement to ITC with document.
5) Final judgement of ITC : Unless informed order of retrial within 45 days after delivery of final judgement from administrative-law judge, final judgement given by administrative-law judge will be confirmed as judgement of ITC.
6) Determination of president : Final judgement of ITC may be denied in the name of policy reason within 60 days after final judgement of ITC. If no denial, the judgement of ITC will be confirmed as final determination.
■ Notes for importers
Protection of intellectual property is carried out intensely in the United States. Thus, it is recommended to check imported good to the United States whether involving infringement of intellectual property rights beforehand.
Importers must pay much attention to goods relating to trademark and copyright of intellectual property rights, because such goods is potential for prohibited, confiscation or seizure, etc. on authority of CBP.
Recorded trademark and copyright are available to confirm at Intellectual Property Rights database (IPR DB) of U.S. Customs and Border Protection (CBP).
