Published January 21, 2014 by

CBP Can’t Hide Behind Ministerial Shield… sometimes

In the Corning Gilbert Inc. v. U.S., importer asked the Court of International Trade for an opinion about Customs and Border Protection (CBP) role in enforcing decisions of other agencies.  The specific issue concerned general exclusion order issued by International Trade Commission (ITC) in the patent infringement investigation for coaxial cable connectors.  Exercising ITC’s authority under 19 U.S.C. § 337(d)(2)(a), the Commission directed CBP to exclude all unlicensed “coaxial cable connectors that infringe claim 1 and/or claim 2 of U.S. Patent 6,558,194.”  Id.  Since the patent in question has only two claims, the ITC’s decision essentially concerned the whole patent.  Now here is the interesting part:  when deciding whether or not to exclude the merchandise, can CBP rely on interpretations of the ITC, or should CBP make its own inquiry?  In Corning Gilbert, CBP thought that reliance on ITC’s interpretation would suffice.  The Court, however, disagreed and requested CBP to exercise its own discretion: “Customs may have to go beyond the mechanical application of the ITC’s Section 337. It may have to look at evidence and analyze whether the importer, particularly a non-party such as Corning Gilbert, has established non-infringement.” Id. This holding is significant in light of CBP’s peculiar role as…

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Product Regulation U.S. Federal Agencies U.S. Federal Courts

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Published July 15, 2013 by

Importing Copyrighted Materials after Kirtsaeng Decision

Customs and Border Protection (CBP) scrutiny over intellectual property rights (IPR) is on the rise.  CBP reports on seizures are increasing and the agency begins incorporating IPR issues in the customs broker examination.  Since the IPR area is relatively complex, one may need to keep abreast of legal jurisprudence when CBP begins IPR inquiry of imported goods.  IPR primarily include three major areas: trademarks, copyrights, and patents.  Another area that does not come up as often includes trade secrets. Importers of copyrighted material are now well positioned to assert “First Sale” rule if those importers are bringing “copyrighted work lawfully made abroad.”  According to the U.S. Supreme Court Ruling in Kirtsaeng v. John Wiley & Sons, Inc. (2013) the purchaser of a lawful copyrighted work abroad (e.g. a book from an American publisher who lawfully sold it in Thailand) has a lawful right to bring it into the United States because “the owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.”  Id. citing Section 109(a) of the Copyright Act.  But watch out…

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Product Regulation U.S. Federal Agencies U.S. Federal Courts

Customs and Border Protection Intellectual Property Rights U.S. Supreme Court