AVVO Talk: What Kind of Attorney/Lawyer Do I Need to Deal With Import & Export?

Question Continued: Long story short, I have imported couple handbags, jewlery etc from overseas. Few items are replica. U.S. Custom has seized my shipment. Sent me a letter and asking for a lot of money and an agreement by attorney to get shipment release. I need professional help, what kind of lawyer deals with import and export, to and from United States?

Also how long it takes to get this issue resolved in term of time frame?

Deanna's Response:

Hello,

 You need an International Trade Attorney to help you with this customs seizure and penalty/notice of liquidated damages, and since you can approach dealing with this in a few different ways - see the additional sheets (that they had received from US Customs) with the seizure notice related to forfeiture, submitting a petition, or administrative review - and need to do so soon, you will want to speak with an attorney sooner than later. Infringement can also lead to personal liability, in terms of money, and even criminal liability in cases where fraud is found, which you should also be aware of.

U.S. Customs Brokers Beware – Nike May be Coming After You Next

For over a year now, Nike has been approaching licensed U.S. Customshouse brokers and requesting the broker’s assistance to provide it with information regarding a specific (or multiple shipments). In an effort to assist Nike, brokers (naively) have been handing over information, only to be later “thanked” by Nike in the form of a lawsuit whose allegations are “supported” by the very papers the broker provided it with. These lawsuits seek millions of dollars as provided for by U.S. intellectual property law, which are some (of the many) statutes under which these cases are being brought.

In an effort to crack down on imports of counterfeit merchandise, Nike has been commencing lawsuits against licensed U.S. Customs brokers across the country.

You may be asking yourself, “Why the broker and not the importer of record?” After all, not only does it not make much sense to sue an agent rather than a principal, but brokers never see or touch the cargo. I know. I get that.

Due to the increase in identity theft however, Nike claims to be without knowledge of who the actual importer of record/consignee is. It is therefore creating an allegation that the broker is in cahoots with the importer of the counterfeit merchandise, thereby creating a conspiracy if you will.

Based on this theory, it is going after the smallest and most defenseless target out there – the customs broker – in an effort to get brokers to agree to specific terms and to perform certain so- called "safe guarding" activities, which Nike believes will cut back on incidents of attempted importations of counterfeits.

Naturally, where a broker has been engaged in no (as in Z-E-R-O) wrongdoing, it will attempt to assist with any investigation as it is able to. The problem is, doing so without the advice of counsel and, certainly moving forward in a lawsuit without counsel, might only end up hurting the broker's position as inadvertent admissions will have been made on the broker’s part in an attempt to "do the right thing" and clear its reputation.

Unfortunately, due to the Court’s preference of attorneys representing litigants, representation ultimately winds up being retained and the attorney is left to deal with untimely, or unnecessary, exposure initially caused by the unrepresented litigant (i.e., the customs broker).

To find out where and against whom Nike has brought cases against, you can search publicly on the Justia Dockets & Filings website [http://dockets.justia.com] and type in Nike, Inc. in the “Party Name” box, and click “Intellectual Property” in the drop down menu called “Type.”

Given the nature of Nike’s “bait and switch” tactic, should a customs broker be contacted by Nike wherein it requests that records be provided to it, trade counsel should immediately be contacted and any response to Nike would be to "contact your attorney."

Questions/comments? Post below or email me at clark.deanna@gmail.com

Protecting Intellectual Property: US Customs and Gray Market Goods

Preventing the importation of merchandise that infringes on the intellectual property rights of a United States trademark or copyright owner is one of US Customs’ mandates that it takes very seriously.

Determining who is authorized to import products that have on it the design, labeling, words, or other “work” that belongs to a non-importing party can be tricky. This is because, under most licensing agreements, a party (known as the “licensee”) is only given a limited right to use the “work” of another (known as the “licensor”) on its merchandise. Limitations may include use within a limited timeframe, or on certain types of products only.

Another limitation arises from distribution rights. These provide for the sale and/or distribution of a product within a certain geographical area.

Making a determination as to who has the authority to import articles upon which a protected “work” has been used can therefore become all the more complex when you add to these facts the following additional circumstances:

The lawful production of an article in one location which is then subsequently
(a) sold, and
(b) exported to another location outside of the limited licensed-for zone.

To give you an example in everyday language, this means that if I have permission to sell a good that has party “AA’s” logo on it in the European Union (EU) only, then in theory, I am precluded from selling it in another territory.

Okay, easy enough. But what if that product is lawfully sold within the EU and then that buying party decides to sell it for export to the United States?

Now we’re entering the “gray market” zone… (“doo-do-do-dooo, doo-do-do-dooo…” anyone out there remember the “Twilight Zone”© theme song?)

While preventing the importation of an outright counterfeit article (see the definition below) is a relatively easy concept to grasp, a lesser known concept, known as “gray market goods,” are another type of import that US Customs is on the look out for to intercept and prevent its importation.

A counterfeit trademark is a spurious mark that is identical with, or substantially indistinguishable from, a federally registered trademark. Merchandise imported into the United States bearing marks that are “counterfeit” of a federally registered trademark recorded with CBP shall be seized pursuant to section 526(e) of the Tariff Act of 1930 (19 U.S.C. §1526(e)), as implemented by 19 CFR § 133.21.

An easy way to think about the definition of a “gray market good” is to think of it as a “parallel good,” that is, it is

1) A genuine product (i.e., not a fake or counterfeit)
2) Lawfully made (typically overseas)
3) With the permission of the owner of the “work”
4) Which bears a copyright, trademark, or trade name, and
5) Is imported into the United States
6) Without the authorization of the United States trademark or copyright owner.

US Customs will protect gray market goods of only those copyrights, trademarks, and trade names that are recorded with its agency. This protective status commences from the time of recordation with US Customs of the “work.”

Where US Customs has conferred gray market protection, imported merchandise bearing the protected “work” will be detained and is subject to potential seizure, forfeiture, and of course, penalties, so you want to be sure to have all of your paper work in order to prove that you have been given permission to import products of this kind into the U.S. so that your shipments do not get held up at the border.

Questions/comments? Post below or email me at clark.deanna@gmail.com