COP-1 RR:IT:IP 460269
Mr. Bruce N. Shulman
Stein, Shostak, Shostak & O'Hara
1620 L Street, Suite 807
Washington, D.C. 20036-5605
RE: Piratical copies; Lace bibs; Battenburg Lace Doilies
Dear Mr. Shulman:
This is in response to your letter regarding certain lace
doilies, lace bibs and suspect importations of same.
FACTS:
Copyright registration VA 557-136 is claimed by Wimpole Street,
Inc. The copyright has been recorded with Customs, recordation
number COP 93-00229. The registration covers certain lace
doilies in a Battenburg pattern. A copy of the recordation
issuance accompanied your letter.
Copyright registration TX 3 263 631 is claimed by Wimpole Street,
Inc., and has not been recorded with Customs. The registration
is for the "Babies in Battenburg Pattern Book" and covers the
pattern book as evidenced by the "TX" prefix to the registration
number. A copy of the registration certificate accompanied your
letter. Selected pages from the Wimpole Street catalog, also
accompanying your letter, depict lace bibs of which one appears
to be based on the doily pattern copyright recorded with Customs
(COP 93-00229). We note that the Wimpole bib is shown as a line
drawing, rather than an actual photograph.
You believe that certain lace bibs being sold by a third party
are piratical of Wimpole Street's copyrighted work(s). Attached
to your letter are pages from the third party's catalog, a copy
of a photograph of the suspect bib, and invoices from the third
party for an actual bib purchased from the third party. Your
letter does not provide the basis for your assertion that the
bibs are imported into the United States.
ISSUE:
Are the suspect bibs piratical of the copyright claimed by
Wimpole Street?
Assuming that the bibs are piratical, are they subject to the
laws governing Customs' enforcement against piratical items?
LAW AND ANALYSIS:
In Customs Headquarters Ruling Letter ("HQ") 732914, we stated:
The Copyright Act defines a "collective work" as a
periodical issue, anthology, or encyclopedia, in which a
number of contributions, constituting separate and
independent works themselves, are assembled into a
collective whole.: 17 U.S.C. 101. Catalogues can be
regarded as collective works for the purpose of copyright
protection.
In your letter, you point out that the copyright certificate
at issue pertains to sequins patterns that are arranged in a
catalogue. You note that copyright for a catalogue
containing the works of several authors generally protects
that particular arrangement of the articles depicted in the
catalogue and not the articles themselves. See 17 U.S.C.
202(c) ("Copyright in each separate contribution to a
collective work is distinct from copyright in the collective
work as a whole, and vests initially in the author of the
contribution.").
Often, however, when a single statutory "author" applies for
copyright protection for several works, (eg. A group of
songs, poems, or drawings), the author will assemble
representations of those works into a volume or "catalogue,"
rather than applying for several individual registration
certificates. In that situation, the copyright protects not
only the arrangement of the works reproduced in the
catalogue but the works themselves. Walco Products, Inc. V.
Kittay & Blitz, Inc., 354 F. Supp. 121, 125 (S.D.N.Y. 1972)
("The Copyright Act . . . protects each of the component
portions of a catalogue."). [additional citations omitted]
Sequins International, as the "author" of each of the sequin
patterns, applied for and was granted copyright protection
under a single title. When determining the type of
protection to be given to intellectual property rights
registered with Customs, we are guided by valid certificates
as they are issued. In this case, there is no apparent
reason why the copyright registered with Customs should not
be given full protection. Therefore, products which
infringe the Sequins International catalogue or the designs
reproduced therein will be subject to seizure.
In this case, Wimpole Street has obtained a valid copyright
registration for the "Babies in Battenburg Lace Pattern Book"
("pattern book" copyright), a collective work as defined by the
Copyright Act. And, under the rationale of HQ 732914, products
which infringe the designs therein will be subject to seizure.
We note that the pattern book copyright has not been recorded
with Customs, and as a result only clearly piratical products
will be subject to seizure. We encourage Wimpole Street to
record the pattern book with Customs to obtain the full
protection afforded to possibly as well as clearly piratical
copies of the designs.
Inasmuch as the genuine lace bib, as well as the suspect lace bib
are reproduced only in photocopied photographs, we request that
actual samples of the articles be provided to this office.
Because the test for piracy involves comparison of the protected
and suspect works, and because the detail of each item cannot be
seen in the photocopies, we cannot determine with certainty at
this time that the suspect bibs are clearly piratical.
Finally, your letter did not provide a basis for determining
whether the suspect goods are imported. To fully protect the
copyrighted work(s), Customs requires as much information as
possible about the goods. Specifically, requests such as this
should provide the suspected sources of manufacture, specifically
named suspect importers with addresses, possible tariff
classifications and other information that will assist in
identifying infringing imports as well as distinguishing genuine
articles. We have notified Customs field offices that such goods
should be detained for a detailed comparison, and will update
that notification if additional information can be made
available.
HOLDING:
Based on the information provided, the suspect lace bibs may be
piratical of one or more copyrighted works owned by Wimpole
Street. The goods may be detained if offered for entry into the
United States.
Assuming that the imported goods are found to be piratical or
possibly piratical of the copyrighted work(s), the detention and
seizure authorities afforded Customs may be invoked.
Sincerely,
John F. Atwood, Chief
Intellectual Property Rights Branch