VAL R:C:V 545612 LPF

Kathleen M. Murphy, Esq.
Katten Muchin & Zavis
525 West Monroe St. - Suite 1600
Chicago, IL 60661-3693

RE: Sale for exportation; Dutiability of royalty payments for use of trademark; HRLs 545271, 544923

Dear Ms. Murphy:

This is in response to your letters of March 31, 1994 and November 14, 1994, submitted on behalf of Sears, Roebuck and Co. (Sears) in which you request a ruling concerning the valuation of luggage. We have granted your request for confidential treatment of the information indicated in the November 14 submission. We regret the delay in replying.

FACTS:

Sears obtains a portion of the luggage, which it imports and sells through its retail stores, from York Luggage Company (York) of Lambertville, NJ, a company which you advise is unrelated to Sears within the meaning of section 402(g) of the Tariff Act of 1930, as amended by the Trade Agreements Act of 1979 (TAA), codified at 19 U.S.C. 1401a. You explain that Sears provides York with price, quantity, production standards, and other specifications or requirements so that York can identify appropriate manufacturers to supply such merchandise. Once Sears and York reach an agreement regarding the price and features of the product, they enter into a purchase contract. The price paid by Sears includes a mark-up over the price paid by York to the unrelated, independent manufacturers in China, Thailand and Taiwan. You included with your submission a sample contract as well as invoices from York to Sears and the factory to York.

Pursuant to the purchase contracts between Sears and York, the luggage is shipped from the independent factories to Sears in the U.S. At the time of production, you advise that the merchandise is designated for shipment to Sears and may not be sold to other York customers in the U.S. or elsewhere. The purchase contracts provide that "two samples of each size and color, properly labeled and packaged must be submitted . . . for approval prior to production." When shipped from the factory, each piece of luggage has a Sears stock number and a Sears bar-coded string tag. In addition, a Jordache hang tag is permanently attached to the luggage before shipment. Finally, you state that the luggage and packaging contains all marking necessary for importation into the U.S. market. For these reasons, it is your position that the merchandise is clearly destined for export to the U.S. at the time of sale from the independent factories to York and that these sales constitute independent, arm's length transactions. Accordingly, you submit that Customs must value the imported luggage at the price paid by York to the foreign manufacturers.

The luggage at issue also bears either a "Sears" or "Jordache" label. York is an authorized licensee of the Jordache trademark in the U.S. Sears understands that York pays a royalty to Jordache for the use of the trademark on luggage it sells to its U.S. customers, including Sears. The royalty paid by York is equal to seven percent of the price it charges Sears for the luggage. Sears is not a licensee of the trademark used on the merchandise. Accordingly, you explain that Sears is a purchaser of merchandise for which York is authorized to use the Jordache trademark, rather than a licensee of any trademark rights.

For luggage sold under the Sears label, York does not pay a royalty. Thus, the price charged by York for such merchandise simply is the factory price with a mark-up. The price charged by York for merchandise sold under the Jordache label includes the same mark-up. However, in order to maintain its margin on sales of Jordache-labeled luggage, York adjusts its sales price to Sears to cover the seven percent royalty payment. Consequently, the royalty payment becomes part of the total price charged by York for the merchandise. Under this pricing arrangement, York applies the same mark-up over factory price to all of the luggage it sells to Sears, regardless of whether it bears the Sears or Jordache label. However, the price of luggage sold under the Jordache label includes an additional 7% to cover the royalty paid by York. It is your position that the payments made by York to Jordache do not constitute dutiable royalties. ISSUE:

Whether transaction value, as established by the sale between the foreign manufacturers and York is the appropriate basis for valuation and whether the royalties at issue constitute dutiable royalties to be included within the transaction value.

LAW AND ANALYSIS:

The preferred method of appraising merchandise imported into the United States is transaction value pursuant to section 402(b) of the Tariff Act of 1930, as amended by the Trade Agreements Act of 1979 (TAA), codified at 19 U.S.C. 1401a. Section 402(b)(1) of the TAA provides, in pertinent part, that the transaction value of imported merchandise is the "price actually paid or payable for the merchandise when sold for exportation to the United States" plus enumerated statutory additions, including any royalty or license fee related to the imported merchandise that the buyer is required to pay as a condition of the sale for export to the U.S. (section 402(b)(1)(D)) and the proceeds of any subsequent resale, disposal or use of the imported merchandise that accrue to the seller (section 402(b)(1)(E)).

The "price actually paid or payable" is defined in section 402(b)(4)(A) of the TAA as the "total payment (whether direct or indirect, and exclusive of any costs, charges, or expenses incurred for transportation, insurance, and related services incident to the international shipment of the merchandise...) made, or to be made, for the imported merchandise by the buyer to, or for the benefit of, the seller."

Sale for Exportation

Customs recognizes the term "sale," as articulated in the case of J.L. Wood v. U.S., 62 CCPA 25, 33, C.A.D. 1139, 505 F.2d 1400, 1406 (1974), to be defined as: the transfer of property from one party to another for consideration. In determining whether a bona fide sale has taken place between a potential buyer and seller of imported merchandise, no single factor is determinative. Rather, the relationship is to be ascertained by an overall view of the entire situation, with the result in each case governed by the facts and circumstances of the case itself. Dorf International, Inc. v. United States, 61 Cust. Ct. 604, A.R.D. 245 (1968).

However, several factors may indicate whether a bona fide sale exists between a potential buyer and seller. In determining whether property or ownership has been transferred, Customs considers whether the potential buyer has assumed the risk of loss and acquired title to the imported merchandise. In addition, Customs may examine whether the potential buyer paid for the goods, and whether, in general, the roles of the parties and circumstances of the transaction indicate that the parties are functioning as buyer and seller.

In determining whether the relationship of the parties to the transaction in question is that of a buyer-seller, where the parties maintain an independence in their dealings, as opposed to that of a principal-agent, where the former controls the actions of the latter, some of the relevant considerations are whether the potential buyer:

a. provided (or could provide) instructions to the seller;

b. was free to sell the items at any price he or she desired;

c. selected (or could select) his or her own customers without consulting the seller; and

d. could order the imported merchandise and have it delivered for his or her own inventory.

In reviewing the documents presented to us, we note that, in our opinion, they do not clearly establish that a bona fide sale exists between the foreign manufacturer and York. Pursuant to 19 U.S.C. 1484(a)(1), the importer of record shall, using reasonable care, make and complete entry by filing with Customs, among other things, the declared value of the merchandise. Accordingly, if the importer of record is able to establish by adequate evidence that a bona fide sale has occurred, the decisions reached in Nissho Iwai American Corp. v. United States, 786 F. Supp. 1002 (CIT 1992) rev'd 982 F.2d 505 (Fed. Cir. 1992) and Synergy Sport International, Ltd., v. United States, Slip. Op. 93-5 (Ct. Int'l Trade, decided January 12, 1993) are relevant. In particular, these decisions may be relevant in determining whether a sale was clearly destined for export to the U.S. or whether transaction value is appropriately based on a manufacturer's price, rather than a middleman's price. For purposes of this case, we have assumed that the importer of record is able to establish that such a bona fide sale between the manufacturer and York has occurred.

In Nissho Iwai and Synergy, the U.S. Court of Appeals for the Federal Circuit and the Court of International Trade, respectively, addressed the proper dutiable value of merchandise imported pursuant to a three-tiered distribution arrangement involving a foreign manufacturer, a middleman, and a U.S. purchaser. In both cases the middleman was the importer of record. Both courts held that the manufacturer's price, rather than the middleman's price, was valid as long as the transaction between the manufacturer and the middleman fell within the statutory provision for valuation. The courts explained that in order for a transaction to be viable under the valuation statute, it must be a sale negotiated at "arm's length" free from any nonmarket influences and involving goods "clearly destined for export to the United States."

In regard to this particular matter, you have advised that the middleman, York, and the foreign manufacturers are not related and that the sales from the foreign manufacturers to York constitute independent, arm's length transactions. Moreover, you have presented evidence demonstrating that the merchandise is destined for the U.S. The submitted purchase contracts between the importer, Sears, and the middleman indicate that the luggage is designed and manufactured according to the importer's specifications. These contracts also state that pre-production samples, apparently from the manufacturers, are to be provided to the importer.

Furthermore, the luggage, when shipped from the factory has a Sears stock number and bar-coded string tag. The luggage and packaging also contains all the requisite marking for importation into the U.S. Finally, you have submitted copies of invoices between a foreign manufacturer and York and between Sears and York indicating that the luggage will be shipped directly from the manufacturers to Sears. Based on the evidence presented and the assumption that there is a bona fide sale between the manufacturer and York, the sale between the middleman and the foreign manufacturer is an arm's length sale, and the merchandise is "sold for exportation to the U.S." within the meaning of section 402(b)(1). This position is in accord with Headquarters Ruling Letter (HRL) 545271, issued March 4, 1994.

Dutiability of Royalties

Based on the information provided, since the royalties are not part of the price actually paid or payable for the merchandise by York, we must consider whether these amounts constitute royalties or proceeds to be added to the price. In this regard, the Statement of Administrative Action (SAA), adopted by Congress with the passage of the TAA, explains that "[a]dditions for royalties and license fees will be limited to those that the buyer is required to pay, directly or indirectly, as a condition of the sale of the imported merchandise for exportation to the United States. [R]oyalties and license fees paid to third parties for use, in the United States, of copyrights and trademarks related to the imported merchandise, will generally be considered as selling expenses of the buyer and therefore will not be dutiable." Statement of Administrative Action, H.R. Doc. No. 153, Pt. II, 96th Cong., 1st Sess. (1979), reprinted in Department of the Treasury, Customs Valuation under the Trade Agreements Act of 1979 at 48-49 (1981).

In the General Notice, Dutiability of Royalty Payments, Vol. 27, No. 6 Cust. B. & Dec. at 1 (February 10, 1993), Customs articulated three factors, based on prior court decisions, for determining whether a royalty was dutiable. These factors were whether: 1) the imported merchandise was manufactured under patent; 2) the royalty was involved in the production or sale of the imported merchandise and; 3) the importer could buy the product without paying the fee. Affirmative responses to factors one and two and a negative response to factor three would indicate that the payments were a condition of sale and, therefore, dutiable as royalty payments.

First, the luggage is not manufactured under patent or trademark. The luggage is produced by the foreign manufacturers independently from, and without regard to, the Jordache trademark. Furthermore, the royalty is not involved in the production or sale of the imported merchandise. The royalty, in this case, is paid for the right to use the Jordache trademark in the U.S. The payments to Jordache, an unrelated third party licensor, are separate and apart from the payments made to the foreign manufacturers. Finally, it is apparent that the luggage can be bought without paying the fee. In fact, a portion of the luggage is Sears labeled, as opposed to Jordache labeled. We understand that no documents or agreements between the parties require the royalties to be paid to Jordache if the luggage is bought without the Jordache trademark. Accordingly, the royalty payments at issue are not a condition of sale of the imported merchandise and, therefore, do not constitute an addition to the price actually paid or payable for the imported merchandise pursuant to section 402(b)(1)(D). We assume nothing within the license agreement is contrary to this finding. In any event, we agree that HRL 544923, issued February 22, 1994, is instructive in this regard.

We note that the payments do not constitute proceeds pursuant to section 402(b)(1)(E) since they do not accrue directly or indirectly to the seller as a result of subsequent resale, disposal or use of the merchandise. See Statement of Administrative Action, H.R. Doc. No. 153, Pt. II, 96th Cong., 1st Sess. (1979), reprinted in Department of the Treasury, Customs Valuation under the Trade Agreements Act of 1979 at 49 (1981).

The above royalty/proceeds analysis is not applicable in the event the importer is unable to establish that there is a bona fide sale between the foreign manufacturer and York, and it is determined that transaction value is based on the price Sears pays for the imported luggage.

HOLDING:

Based on the facts submitted and the assumptions as stated, the transaction value of the imported merchandise appropriately is based on the price paid by the middleman, York, to the foreign manufacturers. In such case, the additional payments made to Jordache do not constitute dutiable royalties to be included within the transaction value of the imported merchandise.


Sincerely,


John Durant, Director
Commercial Rulings Division