What should I do if my products are seized for copyright infringement?

What should I do if my products are seized for copyright infringement?

A copyright protects an original work of authorship.  Books, photographs, paintings, music, movies and computer software are all works which can be granted copyright protection.  A copyright is granted to the creator of a new work when the work is fixed in a tangible medium, or saved in a permanent way.  Registration of a work with the United States Copyright Office is not a prerequisite for a copyright to be granted, but registration strengthens a copyright owners rights.  A copyright owner is granted the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original.  If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.  To demonstrate copyright infringement, a copyright holder must show (1) that an alleged infringer had access to the protected work and (2) substantial similarity between an accused work and the protected work.

Global trade has made it common for copyrighted works to be produced in one country and imported into another country.  Products which are imported into the United States are scrutinized by the United States Customs and Border Protection.  One of things which Customs and Border Protection is on the look out for is copyright infringement.

Businesses that sell products for importation into the United States must be mindful of United States copyright law.  Most businesses, especially contract manufacturers, are so happy to gain a new client that they overlook the need to ensure that the client has the right to import the product into the United States.  Export businesses that produce products subject to a copyright run the risk of having their products seized by Customs and Border Protection and never getting paid by the client.  Whether the client didn’t know that the products were copyrighted or the client was hoping to sneak the products over the border is irrelevant to the innocent export business that made the products and never gets paid.

The good news is a business can perform some due diligence to see if the products they are being asked to product infringe on a copyright.  The Intellectual Property Rights Search (IPRS) database contains Customs and Border Protection recorded trademarks, trade names, and copyrights which are available for viewing by right holders and the public.

The Customs and Border Protection categorizes the level of copyright infringement, into two levels: “clearly piratical” and “possibly piratical” of the protected work. Piratical copies are considered “identical or substantially similar copies of a registered copyrighted work,” produced and imported without authorization.

Clearly piratical copies have overwhelming and substantial similarity between the imported product and the copyrighted work.  Under 19 C.F.R. § 133.42, the Customs and Border Protection will seize “clearly piratical” copies and start forfeiture proceedings under 19 C.F.R. § 162.

Possibly piratical copies give Customs and Border Protection reasonable suspicion to believe the imported product is piratical of the copyrighted work.  If a shipment is determined to be possibly piratical Customs and Border Protection will begin an administrative process to determine whether the products infringe.  The importer and the copyright owner will both be informed of the shipment.  The importer will be given 30 days to file a denial of infringement.  The copyright owner will then be given 30 days to file a demand for exclusion.  The copyright owner must also pay a bond which will be paid to the importer in the event that the products are found not to infringe.  Customs and Border Protection will then have an administrative hearing to determine whether the products infringe.

Having products seized by Customs and Border Protection can be unpleasant, but if a business performs some due diligence before shipping and responds to accusations of copyright infringement in a timely manner it is possible to overcome these accusations.

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