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HQ 547557





February 13, 2001

RR:IT:VA 547557 KDW

CATEGORY: VALUATION

Mr. Frank Falkenburg
Continental Sports Group
1750 Bridgeway, Suite 200
Sausalito, CA 94965

RE: Royalties; commissions; price actually paid or payable; direct and indirect payment

Dear Mr. Falkenburg:

This is in response to your letter dated October 13, 1999, requesting a ruling concerning the dutiability of certain royalties and commissions paid by you to Puma North America, for products imported into the United States with the Puma trademark. Originally, as stated in our letter of October 13, 1999, we were unable to respond to your request for ruling for lack of sufficient information concerning the transactions at issue. We regret any delay in response.

FACTS:

Continental Sports Group (CSG) imports bags and accessories produced by various manufacturers, bearing the Puma logo. CSG entered into two licensing agreements with Puma North America (Puma NA), a subsidiary of Puma AG Corporation of Germany (Puma AG). The first agreement, entitled “Trademark License Agreement,” grants CSG the non-exclusive right and license to manufacture, or have manufactured, and sell Licensed Products bearing the “Puma” trademark in the United States. Licensed Products are defined as socks, underwear, and other products, including headbands, wristbands, water bottles, wallets, lanyards, scarves, bandanas, shoe laces, and knit gloves. Puma NA maintains, among other things, the right to exercise control over the nature and quality of the products licensed with its trademark as well as the advertising and promotion of those products. In return for the license, CSG agrees to pay Puma NA a royalty fee of 10% of the total goods sold. Also, CSG guarantees a minimum royalty payment of $100,000 for 1999, with an increase of $50,000 each year thereafter.

The agreement between Puma and CSG also contains a provision whereby World Cat Ltd.(“World Cat), a Puma sourcing organization, has the right of first refusal as buying agent with regard to the supply of licensed products manufactured outside of the United States in exchange for a five percent commission. CSG orally contracted with World Cat to locate potential manufacturers, convey its production needs, negotiate, and monitor manufacturing. No written buying agency agreement exists.

The second agreement, entitled “1999 Bags Trademark License Agreement,” grants CSG the non-exclusive right and license to manufacture or have manufactured licensed products and to sell, have sold, or use those products in the United States. Licensed products in this agreement are defined as all bags in the Puma AG international collection and other bags as agreed by the parties. In return for the license, CSG promises to pay Puma NA a royalty fee based upon the same formula as in the “Trademark License Agreement.” Both agreements contain a “Supplier’s Undertaking” which the foreign manufacturer must sign agreeing to terms that recognize Puma NA’s interest in protecting its trademark

Puma NA is a licensee of Puma AG. That licensing agreement was not submitted for our review. You state that the manufacturer, CSG, and Puma NA, are not related parties within the meaning of 19 U.S.C. 1401a(g).

You indicate that no written sales agreement exists between CGS and the manufacturers. CGS submits purchase orders to World Cat and is invoiced for the merchandise directly by the foreign manufacturers. World Cat separately invoices CGS for the buying commission. Sample copies of purchase orders, manufacturer’s invoices, and World Cat’s invoices, have been submitted by you. None of these documents references the royalty payments to be made by CSG to Puma NA.

ISSUES:

Is the commission paid by CSG to World Cat a bona fide buying commission, and thus, not added to the price actually paid or payable for imported merchandise?

Should the royalties paid by CSG to Puma NA be added to the price actually paid or payable for the imported merchandise under section 402(b)(1)(D) of the TAA?

LAW AND ANALYSIS:

The preferred method of appraisement for customs purposes 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. That section 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 five enumerated statutory additions. For the purpose of this prospective ruling request, we assume that transaction value is the applicable basis of appraisement.

The five enumerated statutory additions to the price actually paid or payable include: 1) the packing costs incurred by the buyer with respect to the imported merchandise; 2) any selling commission incurred by the buyer with respect to the imported merchandise; 3) the value, apportioned as appropriate, of any assist; 4) any royalty or license fee related to the imported merchandise 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; and 5) the proceeds of any subsequent resale, disposal, or use of the imported merchandise that accrue, directly or indirectly, to the seller.

The question in this case is, whether the commissions paid to World Cat, or the licensing fees paid to Puma are included as additions to the price actually paid or payable.

Commissions paid to World Cat

You state that the five percent commission paid to World Cat by CGS is a bona fide buying commission, and thus, does not fall within any of the statutory provisions for additions to the price actually paid or payable. While selling commissions are included in the price actually paid or payable, as a general matter, bona fide buying commissions are not added to the price actually paid or payable. Pier 1 Imports, Inc. v. U.S., 708 F. Supp. 351, 13 CIT 161, 164 (1989) citations omitted. The existence of a bona fide buying commission depends upon the relevant factors of the individual case. J.C. Penny Purchasing Corp. v. U.S., 451 F.Supp. 973 (Cust. Ct. 1978). The importer bears the burden of proving the existence of an agency relationship and that the payments to the agent are bona fide buying commissions. Rosenthal-Netter, Inc. v. U.S., 679 F.Supp. 21, 12 CIT 77 (1988).

The primary consideration in determining whether an agency relationship exists is the right of the principal to control the agent’s conduct with respect to those matters entrusted to the agent. J.C. Penny, supra. As evidence of a buying agency the courts have considered such factors as: the existence of an agency agreement, whether the stated agent’s actions were primarily for the benefit of the principal; whether the principal or agent is responsible for the shipping and handling costs; whether the importer could have purchased directly from the manufacturers without the agent; whether the agent operates an independent business primarily for its own benefit; and whether the agent is financially detached from the manufacturer of the merchandise. Dorco Imports v. United States, 67 Cust. Ct. 503, 512, R.D. 11753 (1971); see also Rosenthal-Netter, supra and New Trends, Inc. v. U.S., 645 F. Supp. 957, 10 CIT 637 (1986).

In the instant case, no written buying agency agreement was provided, but you state that CSG contracted with World Cat to locate potential manufacturers with competitive pricing, quality, and ensured on-time delivery. In its role, you state that World Cat will locate suppliers, transmit CSG’s desires, assist in factory negotiations, and monitor the manufacturing process for quality. You also state that CSG has total control over the buying process and may use the services of other agents, regardless of the right of first refusal stated in the agreement with Puma NA.

In addition, you confirm that World Cat is not related to any of the suppliers. You submit: copies of a purchase order submitted to World Cat by CSG; an invoice for commission from World Cat to CSG with proof of payment; an invoice from a manufacturer to CSG with proof of payment; and an invoice to CSG for international freight, insurance, and customs brokerage fees from an unrelated broker. The unit values stated on the purchase order match those charged by the manufacturers. While we note that World Cat is listed as the vendor on the purchase order, the separate invoicing, payments, and shipping documents indicate that World Cat operates independently of the sellers. Assuming that CSG is able to substantiate, as you state, that it has complete control over the buying process and that it and World Cat operate independently from one another and the manufacturers, we find that a bona fide buying agency exists between CSG and World Cat. Accordingly, the payments for that purpose need not be included in the transaction value for the imported merchandise.

Royalty and licensing fees paid to Puma NA:

You state that CSG pays Puma NA a 10% royalty on the total amount of goods sold with its trademark, but that Puma NA is unrelated to any of the manufacturers or sellers. Thus, you conclude that the royalty payments should not be added to the price actually paid or payable. Royalties and license fees are one of the five additions to the price actually paid or payable, as explained above. However, such fees must 1) be related to the imported merchandise; and 2) the payments must be a condition of the sale for exportation to the United States in order to be dutiable. See Statement of Administrative Action (SAA), H.R. Doc. No. 153 96 Cong., 1st Sess., pt 2 reprinted in, Dept. of the Treasury, Customs Valuation under the Trade Agreements Act of 1979 (October 1981) at 48-49.

Further, the dutiable status of royalty and license fees depends upon to whom the fees are paid and under what circumstances. Fees paid to the seller or a party related to the seller, rather than those paid to a third party, are more likely to be related to the merchandise sold for exportation and thus, dutiable. However, fees paid to a third party may in some instances be related to the imported merchandise such that they are a condition of sale. In 1993, Customs issued a notice in which we indicated that several inquiries could be made to determine whether the a royalty or license fee is related to the imported merchandise and required as a condition of sale: 1) Was the imported merchandise manufactured under a patent? 2) Was the fee involved in the production or sale of the imported merchandise? 3) Could the importer buy the product without paying the fee. 27:6 Cust. B. & Dec. 1 at 9-11. These inquiries are referred to as “Hasbro II,” after the case that prompted the notice. Negative responses to the first two questions, and an affirmative response to the third, suggest that a royalty or license fee is non-dutiable under section 402(b)(1)(D) of the TAA. Accordingly, we address these inquiries to the facts presented, where the fees in this case are paid to a third party unrelated to the seller of the merchandise sold for exportation.

The first inquiry is whether the imported merchandise is manufactured under patent. You state that the merchandise is not manufactured or subject to a patent. The latter inquiries are less straightforward, and the answers not as clear.

The second inquiry concerns whether the fees are involved in the sale or production of merchandise to be exported to the United States. In the instant case, the fees are paid to Puma, the licensor, for the use of its trademark on merchandise exported to the United States. You state that Puma is not related to the manufacturers or sellers, and that the agreement between Puma and CSG is not connected to the sale for exportation of the merchandise imported. Puma requires that CSG have its manufacturers execute a “Supplier’s Undertaking” which provides that the supplier shall only sell to Puma or its designee, and shall not subcontract manufacture or delivery of materials, parts, or components with the Puma logo without Puma’s approval. Further, Puma designates a buying agent with a right of first refusal for CSG to purchase its products. The buying agent, even if not the one named by Puma, must execute the “Trader’s Undertaking” which states that “[t]rader undertakes not to put order with any supplier for Products unless such supplier has been approved by Puma and has signed the Supplier’s Undertaking”Additionally, Puma reserves its right to inspect all production plants of the suppliers and supervise or control the correct performance of its undertaking. The licensor in this case has great control over the manufacture and sale of products containing its mark. Based on the evidence submitted, we conclude that the payments for the use of the licensed merchandise are indeed related to the imported goods and involved in the production and sale of the goods. Nonetheless, we noted in HRL 547226 that general quality control clauses are standard in trademark license agreements, and as such, do not necessarily mandate that the licensing fees are a condition of sale. Thus, our analysis does not stop here.

We turn our inquiry to the third question of whether the importer could buy the merchandise without paying the fee. In doing so, we recognize that, although the licensor exercises great control over the sale and production of the imported merchandise with its mark, the fees paid by CSG are not part of the agreement with the manufacturer. In addition, all indications are that CSG can purchase the merchandise and import it without paying the licensing fees to Puma. The fees do not appear to be linked to the purchase orders or invoices between the sellers and CSG. CSG may purchase and import the merchandise without paying Puma any royalty. Further, such fee is paid on those products that are manufactured in the United States as well. Accordingly, the response to the third inquiry is in the affirmative, and the royalty fees are therefore, nondutiable.

HOLDING:

Based on the circumstances described herein, the commissions paid by CSG to World Cat constitute bona fide buying commissions, which are not statutory additions to the price actually paid or payable for the imported merchandise. In addition, the royalty fees paid by CSG to Puma NA, under the circumstances described, are not conditions of
sale for exportation to the United States, and are therefore, not dutiable.

Sincerely,

Virginia L. Brown
Chief, Value Branch

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