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HQ 458172





CPR-3 CO:R:IT:I 458172 VEA

CATEGORY: COPYRIGHT

Area Director of Customs
U.S. Customs
Routes 1 & 9 South
Room 200
Newark, New Jersey 07114

RE: Suspected copyright infringement of Sequins International Inc. compilation of embroidered sequins patterns (U.S. Copyright Office Registration No. TXu 197-291, unpublished; Customs Issuance Recordation Issuance No. 88-069)

Dear Madam:

This is in response to your memorandum dated May 16, 1994, in which you forward the file on entry no. 311-0115445-3 to the Office of Regulations and Rulings (Intellectual Property Rights Branch) pursuant to 19 C.F.R. Section 133.43(c)(1) of the Customs Regulations for a decision on alleged infringement of the above referenced copyright owned by Sequins International Incorporated.

FACTS:

The Entry documents indicate that on December 12, 1993, forty-eight cartons of embroidered sequined fabric were imported by Zelouf International Corporation from Korea. The goods arrived at the port of Newark, New Jersey on December 20, 1993. Customs officers detained the shipment on the suspicion that it infringed pattern # 2140 which is included in a compilation of embroidered sequin patterns registered with the U.S. Copyright Office and recorded with Customs.

In a letter dated December 22, 1993, Customs notified the importer that the imported goods were suspected of infringing a copyright owned by Sequins International Incorporated. The importer denied infringement. Pursuant to 19 C.F.R. Section 133.43(b) of the Customs Regulations, Customs notified the copyright owner of the detention. The copyright owner, through counsel, filed a written demand requesting that Customs deny entry to the goods and deposited a bond in the amount of $77,011.00.

Pursuant to T.D. 93-87 (Exchange of Briefs in Copyright Infringement Actions), the importer and copyright owner were given an opportunity to exchange briefs and related materials prior to providing them to Customs. In accordance with Section 133.43(c)(1), the file was forwarded to Customs Headquarters for a decision on the infringement issue.

The copyright at issue is a compilation of unpublished embroidered sequin patterns registered with the U.S. Copyright Office as TXu 197-291 and recorded with Customs under Recordation No. 88-069. The particular pattern at issue,#2140, consists of horizontal rows of black sequins placed on a swatch of nylon fabric.

ISSUE:

Whether the imported embroidered fabric infringes pattern # 2140 owned by Sequins International Incorporated?

LAW AND ANALYSIS:

Section 602(b) of the Copyright Act, 17 U.S.C. Section 602(b), prohibits the importation of articles which infringe a copyright. Section 603(b)(2) requires that the person seeking exclusion of infringing merchandise pursuant to Section 602(b) furnish proof of a specified nature and in accordance with prescribed procedures, that the copyright in which such person claims an interest is valid and that the importation would violate the prohibition in Section 602 of the Copyright Act.

Section 102(a) of the Copyright Act, 17 U.S.C. Section 102(a), states that copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed.... Section 103(a) provides that compilations and derivative works are included in the works which are copyrightable under Section 102. The Copyright Act defines a "compilation" as a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. 17 U.S.C. Section 101.

In interpreting Section 102(a), courts have held that to receive copyright protection a work must be original and also possess a minimal level of creativity. JonWoods Fashions, Inc. v.Donald C. Curran, 8 U.S.P.Q. 2d 1870 (1988); Thomas Wilson & Co.v.Irving J.Dorfman Co.,433 F. 2d 409 (2d Cir. 1970). See also M.Nimmer, Nimmer on Copyright, Section201[A] at 2-8 (1979 ed.). To be "original" the work need not be novel, but rather only belong to the author and not copied from another. L.Batlin & Sons,Inc.v.Snyder,536 F. 2d 486 (2d Cir. 1976). A work may be entirely the product of the claimant's independent efforts and original, but still be denied protection if it lacks any creativity. Nimmer, Section 2.08 (B)(3).

These principles have also been applied by courts in cases where the copyrighted work is a compilation. See Feist Publications Inc. v Rural Telephone Service.,Co., Inc., 499 U.S. 340, 113 S. Ct. 1282 (1991). Feist involved an action for copyright infringement of listings obtained from
the white pages of a local telephone directory which were compiled into another directory. The court held that although a valid copyright existed in the telephone directory as a whole, the white pages were not entitled to protection because the raw data that they contained was not arranged in an original or creative way. It noted that "the mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author."

Applying the above principles to this case, we find that the compilation of sequined patterns registered as a claim to copyright with the U.S. Copyright Office may be entitled to protection. However, as a separate work, pattern #2140 is not entitled to copyright protection. Pattern # 2140 consists of horizontal rows of sequins placed on a piece of nylon fabric which are connected by thin pieces of black thread. The sequins are not arranged in a particular pattern or design and are simply sewn together on the fabric. Since there is nothing novel or creative about arranging sequins in horizontal rows, pattern # 2140 clearly lacks even the minimal degree of creativity or originality required for protection under the Copyright Act.

Also, it is our understanding based on consultations with representatives from the U.S. Copyright Office, which is responsible for registering copyrights, that it takes the position that although an unpublished collection of items as a whole may support a claim to copyright, there may be items in the collection, if considered separately, which would not support a separate claim to copyright. Thus, if any of the items are used individually, outside of the context of the collection, they might not be protected by copyright.

Finally, the copyright owner notes in its brief that U.S. Customs upheld the validity of this compilation in a 1990 ruling letter (HQ File 73294) which stated that the copyright protects not only the arrangement of the works reproduced in the catalogue but the works themselves. The issue was whether Customs would protect the compilation or catalog of sequin patterns registered as TXu 197-291. Although we held that the registered copyright for the compilation should be given full protection, we also noted that "the Copyright Act provides protection for all the copyrightable component parts of the thing copyrighted, and the proprietor has all the rights in respect thereto which he would have, if each part were individually copyrighted under the act " (emphasis added). Including this language in the ruling clearly reflects Customs position that the component parts of a copyrighted work must also be copyrightable in order to be protected.

HOLDING:

We find that the imported articles do not infringe the copyright recorded with U.S. Customs and are not subject to seizure and forfeiture under 17 U.S.C. Section 603 because as a separate work, sequined pattern #2140 does not possess the minimal degree of creativity required for copyright protection. Pursuant to 19 C.F.R. Section 133.44(b), the District Director shall release all detained merchandise and transmit the copyright owner's bond to the importer. Copies of this decision should be provided to all interested parties.

John F. Atwood, Chief
Intellectual Property Rights Branch

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