Iccs Usa Corp. v. United States, Slip Op. 18-178

CourtU.S. Court of International Trade
Writing for the CourtBarnett, Judge
Citation357 F.Supp.3d 1314
Parties ICCS USA CORPORATION, Plaintiff, v. The UNITED STATES, Defendant.
Docket NumberSlip Op. 18-178,Court No. 17-00108
Decision Date26 December 2018

357 F.Supp.3d 1314

The UNITED STATES, Defendant.

Slip Op. 18-178
Court No. 17-00108

United States Court of International Trade.

December 26, 2018

357 F.Supp.3d 1315

Elon A. Pollack and Matthew R. Leviton, Stein Shostak Pollack & O'Hara, of Los Angeles, CA, for Plaintiff.

Jamie L. Shookman, Trial Attorney, Commercial Litigation Branch, Civil Division, U.S. Department of Justice, of New York, NY, for Defendant. With him on the brief were Chad A. Readler, Acting Assistant Attorney General, and Amy M. Rubin, Assistant Director. Of counsel on the brief was Yelena Slepak, Attorney, Office of the Assistant Chief Counsel, International Trade Litigation, U.S. Customs and Border Protection.


Barnett, Judge:

Before the court are cross motions for summary judgment. Confidential Def.'s Mot. for Summ. J., and Mem. in Supp. of Def.'s Mot. for Summ. J. ("Def.'s MSJ"), ECF No. 26;1 Pl.'s Cross-Mot. for Summ. J., and Resp. to Def.'s Mot. for Summ. J. ("Pl.'s XMSJ"), ECF No. 46-2. Plaintiff ICCS USA Corporation ("Plaintiff" or "ICCS") contests the denial of a protest challenging U.S. Customs and Border Protection's ("Customs" or "CBP") decision to issue a Notice to Redeliver (referred to as the "redelivery notice") for the goods in the subject entry,2 which notice was premised

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on Customs' determination that the goods—individual butane gas canisters—contained a counterfeit certification mark in violation of 19 U.S.C § 1526(e).3 See Compl. ¶ 3, ECF No. 7; Pl.'s XMSJ at 1, 4; Pl.'s Reply to Def.'s Opp'n to Pl.'s Cross-Mot. for Summ. J. ("Pl.'s Reply") at 1-3, ECF No. 54. The United States ("Defendant" or "the Government") contends that Customs correctly issued the redelivery notice because the goods displayed a counterfeit certification mark. See generally Def.'s MSJ. Plaintiff asserts that Customs improperly issued the redelivery notice because Plaintiff had authorization to display the mark. See generally Pl.'s XMSJ; Pl.'s Reply. For the reasons discussed below, Defendant's motion for summary judgment will be granted; Plaintiff's cross-motion for summary judgment will be denied.


1. Material Facts Not Genuinely in Dispute

The party moving for summary judgment must show "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." United States Court of International Trade ("USCIT") Rule 56(a). Parties filed cross motions for summary judgment and submitted separate statements of undisputed material facts with their respective motions and responses to the opposing party's statements. See DSOF; Pl.'s Resp. to DSOF; Pl.'s Statement of Undisputed Facts ("PSOF"), ECF No. 46-3; Confidential Def.'s Resp. to Pl.'s Rule 56.3 Statement of Material Facts to Which There is no Genuine Dispute ("Def.'s Resp. to PSOF"), ECF No. 49-1. Upon review of the parties' facts (and supporting exhibits), the court finds the following undisputed and material facts.4

ICCS is a corporation with a principal place of business in Los Angeles, California. Compl. ¶ 1; Answer ¶ 1, ECF No. 14. On January 19, 2017, ICCS imported 56,616 individual butane gas canisters that displayed a "PREMIUM" brand label. DSOF ¶¶ 2-3; Pl.'s Resp. to DSOF ¶¶ 2-3; PSOF ¶¶ 6–7; Def.'s Resp. to PSOF ¶¶ 6–7. The PREMIUM label was affixed on the outside of the butane gas canisters. PSOF ¶ 8; Def.'s Resp. to PSOF ¶ 8. At the time of importation, the canisters displayed a registered certification mark owned by Underwriters Laboratory ("UL").5 DSOF

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¶ 2; Pl.'s Resp. to DSOF ¶ 2. The certification mark consists of "UL" in a circle. See Def.'s Ex. 1, ECF No. 19-2 (photographs of the of the subject goods); Confidential Def.'s Ex. 10 at 1, ECF No. 26-1.

One Jung Can Mtf. Co. Ltd. ("OJC") manufactured the subject butane gas canisters. PSOF ¶ 2; Def.'s Resp. to PSOF ¶ 2. In October 2001, UL tested OJC's "MEGA-1" model of butane gas canisters and authorized OJC to display UL's certification mark on them. PSOF ¶ 3; Def.'s Resp. to PSOF ¶ 3; Confidential Pl.'s Ex. 2 at UL000069-72 (Report by UL issued on October 2001), ECF No. 47. As of February 2017, OJC had maintained authorization to display UL's certification mark on its MEGA-1 model of butane gas canisters. PSOF ¶ 4; Def.'s Resp. to PSOF ¶ 4; see also Confidential Pl.'s Ex. 7 (Letter from Katie Kim, Customer Relationship Management, UL Korea Inc., to Kevin Yoo, ICCS, regarding status of multiple listing relationship between OJC and ICCS, accompanying Pl.'s Protest) ("Kim Letter"), ECF No. 47.

In October 2015, UL issued to ICCS a "Quotation" for "multiple listing services." See Pl.'s Ex. 12 at UL000007-08, ECF No. 59. A multiple listing allows products certified by one company (referred to as the "basic applicant," which in this case is OJC) to be produced for marketing under the name of another company (referred to as the "multiple listee," which in this case is ICCS). Service Terms ¶ 1; Kim Letter. The Quotation incorporated by reference a Global Services Agreement ("GSA") and the Service Terms. Pl.'s Ex. 12 at UL000008; see generally Service Terms; Pl.'s Ex. 13 (GSA), ECF No. 59.6 ICCS signed the Quotation on October 7, 2015. See Pl.'s Ex. 12 at UL000009. The acceptance of the written Quotation established a Multiple Listing Services Agreement (otherwise referred to as "contract") between multiple listee ICCS and UL. See GSA ¶¶ 1-2. The Service Terms7 and the GSA form the contract between ICCS and UL. Id. ¶ 2.

UL maintains an Online Certifications Directory (otherwise referred to as "online directory"), which allows the public to "Verify a UL Listing, Classification, or Recognition." Def.'s MSJ at 3 n.4; Pl.'s XMSJ at 6; see also Confidential Pl.'s Ex. 9, ECF No. 47. The information that appears on UL's online directory is identical to the information that appears on a "Multiple Listing Correlation Sheet," which is an internal document within UL that is shared with UL's clients. Confidential Pl.'s Ex. 9; see generally Confidential Pl.'s Ex. 6 at UL000187 (Multiple Listing Correlation Sheet), ECF No. 47. Before February 8, 2017 (including on the date of entry), UL's Online Certification Directory listed only one model of butane gas canister under ICCS's name: "US BUTANE." Def.'s Ex. 2, ECF No. 19-2 (screenshot of UL's Online Certifications Directory). On February 8, 2017 (after the date of entry), UL updated both the Multiple Listing Correlation Sheet and its online directory to include

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additional models, including the PREMIUM model, of butane gas canister for ICCS. See Def.'s Ex. 3, ECF No. 19-2 (screenshot of UL's Online Certifications Directory); Confidential Pl.'s Exhibit 6 at UL000187 (Multiple Listing Correlation Sheet, revised on Feb. 8, 2017).

At the time of importation, CBP placed a manifest hold on the merchandise, which suspended its release from CBP's custody. DSOF ¶ 4; Pl.'s Resp. to DSOF ¶ 4. On January 30, 2017, CBP removed the manifest hold and released the merchandise from its custody. DSOF ¶ 4; Pl.'s Resp. to DSOF ¶ 4. On February 23, 2017, CBP issued ICCS the redelivery notice, stating that ICCS was in violation of 19 U.S.C § 1526(e). DSOF ¶ 8; Pl.'s Resp. to DSOF ¶ 8. ICCS redelivered to CBP 29,008 of the 56,616 canisters, which CBP seized on April 19, 2017. DSOF ¶¶ 9–10; Pl.'s Resp. to DSOF ¶¶9–10; see also PSOF ¶¶ 13–14; Def.'s Resp. to PSOF ¶¶ 13–14.

On May 1, 2017, CBP informed ICCS that the seized merchandise was subject to forfeiture pursuant to 19 U.S.C. § 1526(e) and provided notice of the seizure to UL. DSOF ¶10; Pl.'s Resp. to DSOF ¶ 10. On July 13, 2017, CBP issued ICCS a Notice of Penalty or Liquidated Damages Incurred and Demand for Payment with respect to the 27,608 canisters that ICCS did not redeliver. DSOF ¶ 11; Pl.'s Resp. to DSOF ¶ 11; see also PSOF ¶15; Def.'s Resp. to PSOF ¶ 15. CBP assessed damages against ICCS in the amount of $41,412.00. DSOF ¶11; Pl.'s Resp. to DSOF ¶ 11; see also PSOF ¶15; Def.'s Resp. to PSOF ¶ 15.

ICCS filed a protest against CBP's demand for redelivery on April 6, 2017. DSOF ¶12; Pl.'s Resp. to DSOF ¶ 12; see also PSOF ¶ 16; Def.'s Resp. to PSOF ¶ 16. In its protest, ICCS claimed that the redelivery notice was unlawful because ICCS had a multiple listing relationship with UL and, therefore, had UL's authorization to import the goods bearing the mark. Confidential Pl.'s Ex. 7. ICCS provided Customs with the Multiple Listing Correlation Sheet, which had been revised on February 8, 2017 to include the PREMIUM model. Id.

ICCS's protest was deemed denied on May 8, 2017.8 Def.'s Ex. 11, ECF No. 19-2. CBP did not review ICCS's contract terms with UL when it analyzed the certification mark on the goods. Pl.'s SOF ¶ 17; Def.'s Resp. to Pl.'s SOF ¶ 17. On May 26, 2017, UL asserted its position to CBP that its certification marks "are not retroactive." Confidential Pl.'s Ex. 8 at CBP000002, ECF No. 47.

2. Procedural History

Plaintiff filed this action on May 11, 2017. See Summons. Plaintiff's complaint alleges that Customs issued an improper redelivery notice...

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