Copyright Claims Board: Active Proceedings and Evidence, 69890-69917 [2021-26058]
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69890
Federal Register / Vol. 86, No. 233 / Wednesday, December 8, 2021 / Proposed Rules
LIBRARY OF CONGRESS
Copyright Office
37 CFR Parts 201, 220, 222, 225, 226,
227, 228, 229, 230, 231, 232, and 233
[Docket No. 2021–8]
Copyright Claims Board: Active
Proceedings and Evidence
U.S. Copyright Office, Library
of Congress.
ACTION: Notice of proposed rulemaking.
AGENCY:
The U.S. Copyright Office is
issuing a notice of proposed rulemaking
to establish procedures governing active
proceedings before the Copyright Claims
Board and post-determination
procedures. The proposed rule provides
requirements regarding procedural
practice, scheduling, conferences,
discovery, written testimony, hearings,
settlement, smaller claims, default and
failure to prosecute, records, postdetermination procedures, and conduct
of parties. The Office intends to initiate
a subsequent rulemaking regarding law
student representation.
DATES: Initial written comments must be
received no later than 11:59 p.m.
Eastern Time on February 7, 2022.
Written reply comments must be
received no later than 11:59 p.m.
Eastern Time on February 22, 2022.
ADDRESSES: For reasons of Government
efficiency, the Copyright Office is using
the regulations.gov system for the
submission and posting of public
comments in this proceeding. All
comments are therefore to be submitted
electronically through regulations.gov.
Specific instructions for submitting
comments are available on the
Copyright Office website at https://
copyright.gov/rulemaking/case-actimplementation/active-proceedings/. If
electronic submission of comments is
not feasible due to lack of access to a
computer or the internet, please contact
the Office using the contact information
below for special instructions.
FOR FURTHER INFORMATION CONTACT:
Megan Efthimiadis, Assistant to the
General Counsel, by email at meft@
copyright.gov, or by telephone at 202–
707–8350.
SUPPLEMENTARY INFORMATION:
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SUMMARY:
I. Background
On December 27, 2020, the President
signed into law the Copyright
Alternative in Small-Claims
Enforcement (‘‘CASE’’) Act of 2020.1
1 Public Law 116–260, sec. 212, 134 Stat. 1182,
2176 (2020).
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The CASE Act directs the Copyright
Office to establish the Copyright Claims
Board (‘‘CCB’’), a voluntary, alternative
forum to federal court for parties to seek
resolution of copyright disputes that
have a low economic value (‘‘small
copyright claims’’).2 The CCB’s creation
does not displace or limit a party’s
ability to bring small copyright claims
in federal court, but rather provides a
streamlined and cost-effective
alternative forum to decide those
claims.3 The CCB has authority to hear
copyright infringement claims, claims
seeking a declaration of noninfringement, and misrepresentation
claims under section 512(f) of title 17.4
Participation in the CCB is voluntary for
all parties,5 and all determinations are
non-precedential.6 Congress directed
that the CCB begin operations by
December 27, 2021, though the Register
may, for good cause, extend that
deadline by not more than 180 days.7
The CASE Act directs the Register of
Copyrights to establish the regulations
by which the CCB will conduct its
proceedings, subject to the provisions of
chapter 15 and relevant principles of
law under title 17.8 On March 26, 2021,
the Copyright Office published a
notification of inquiry (‘‘NOI’’) inviting
public comment on various aspects of
the CCB’s operations, which the Office
noted would be established through a
series of rulemakings.9 The Office has
2 See, e.g., H.R. Rep. No. 116–252, at 18–20
(2019); S. Rep. No. 116–105, at 7–8 (2019). Note, the
CASE Act legislative history cited is for H.R. 2426
and S. 1273, the CASE Act of 2019, a bill nearly
identical to the CASE Act of 2020. See H.R. 2426,
116th Cong. (2019); S. 1273, 116th Cong. (2019). In
developing the CASE Act, Congress drew on model
legislation in the Office’s 2013 policy report,
Copyright Small Claims, https://www.copyright.gov/
docs/smallclaims/usco-smallcopyrightclaims.pdf
(‘‘Copyright Small Claims’’). Congress also
incorporated the Office’s report and supporting
materials into the statute’s legislative history. H.R.
Rep. No. 116–252, at 19; S. Rep. No. 116–105, at
2.
3 H.R. Rep. No. 116–252, at 17; S. Rep. No. 116–
105, at 2–3, 9.
4 17 U.S.C. 1504(c)(1)–(3). The CCB cannot issue
injunctive relief, but can require that an infringing
party cease or mitigate its infringing activity in the
event such party agrees and the agreement is
reflected in the proceeding’s record. Id. at
1504(e)(2)(A)(i), (e)(2)(B). This provision also
applies to parties making knowing material
misrepresentations under section 512(f). Id. at
1504(e)(2)(A)(ii).
5 See id. at 1504(a); H.R. Rep. No. 116–252, at 17,
21; S. Rep. No. 116–105, at 3, 11.
6 H.R. Rep. No. 116–252, at 21–22, 33; S. Rep. No.
116–105, at 14.
7 Public Law 116–260, sec. 212(d), 134 Stat. at
2199.
8 17 U.S.C. 1506(a)(1).
9 86 FR 16156 (Mar. 26, 2021). Comments
received in response to the March 26, 2021 NOI are
available at https://www.regulations.gov/document/
COLC-2021-0001-0001/comment. References to
these comments are by party name (abbreviated
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issued two previous notices 10 and one
final rule 11 related to CCB procedures.
In this notice, the Office proposes
procedures related to conducting an
active proceeding, post-determination
review, smaller claims, and the conduct
of parties. The Office will issue
additional proposed rules related to
CCB proceedings in one or more
subsequent rulemakings.
II. Proposed Rule
A. Management of Parties
1. Joinder
The CASE Act provides that a claim
or counterclaim shall be dismissed
without prejudice if the CCB determines
that it is unsuitable for determination
due to a failure to join a necessary
party.12 The statute does not define or
otherwise address procedures governing
necessary parties. One comment
proposed that the Office adopt Rules 19
and 20 of the Federal Rules of Civil
Procedure (‘‘FRCP’’), which speak to
joinder of parties, to CCB proceedings.13
The Office has determined, however,
that permitting joinder of third parties
could significantly alter the nature of a
proceeding and consequently could
impact the notice provided to parties in
some cases—for example, where a
respondent declined to exercise its right
to opt out based on its understanding of
the parties and scope of the proceeding.
Instead, the Office proposes that
existing parties who believe that a
necessary third party has not been
joined should raise this issue with the
CCB by filing a short letter setting forth
the basis of such belief. After any other
party already in the proceeding has an
opportunity to file an opposing letter,
the CCB will evaluate the alleged
deficiency and, if it determines that a
necessary party has not been joined, it
will dismiss the proceeding without
prejudice as unsuitable. The claimant
may refile its claim with the necessary
party included.
The proposed rule also provides that
a necessary third party may file a
request to intervene with the CCB. Each
party must then file a response stating
whether the party agrees that the
proposed intervenor is a necessary party
and provide the basis for that position.
The CCB will evaluate the request and
may hold a conference with all parties
where appropriate), followed by ‘‘Initial NOI
Comments’’ or ‘‘Reply NOI Comments,’’ as
appropriate.
10 86 FR 53897 (Sept. 29, 2021); 86 FR 49273
(Sept. 2, 2021).
11 86 FR 46119 (Aug. 18, 2021).
12 17 U.S.C. 1506(f)(3).
13 Am. Intell. Prop. L. Ass’n (‘‘AIPLA’’) Initial
NOI Comments at 7.
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and the third party requesting
intervention. If the CCB determines that
the intervening party is not a necessary
party, it will deny the request and the
proceeding will continue with the
original parties. If the CCB determines
that the intervening party is a necessary
party, it will permit the intervening
party to join the proceeding, as long as
no other party opposes the intervention.
A party opposing the intervention of a
necessary party will not need to provide
reasons for its opposition. If any party
opposes the intervention, the
proceeding will be dismissed without
prejudice. The proposed rule thus
permits a necessary party to be joined
only if all parties agree.
The Office welcomes any comments
as to whether the statute permits joinder
of parties as outlined in the proposed
rule and the appropriateness of the
procedures proposed herein.
2. Dismissal
Under the statute, a claimant may
elect to voluntarily dismiss a claim,
respondent, or proceeding by written
request at any time before a respondent
files a response to the claim.14
Similarly, a counterclaimant may elect
to voluntarily dismiss a counterclaim by
written request before the claimant files
a response to the counterclaim.15 Upon
receipt of such a written request, the
CCB shall dismiss the claim or
counterclaim, as the case may be,
without prejudice.16
The statute is not explicit as to
whether a party may voluntarily
withdraw a claim or counterclaim after
a response to it has been filed. The
Office’s proposed rule addresses this
scenario and provides that, if a written
request to withdraw a claim or a
counterclaim is received after the
response has been filed, the CCB will
dismiss the claim or counterclaim with
prejudice, unless all parties have
entered into a written stipulation that
the claim or counterclaim will be
dismissed without prejudice or unless
the CCB determines the dismissal
should be without prejudice in the
interests of justice. This procedure
provides a mechanism for a claimant or
counterclaimant to unilaterally
withdraw a claim after a response has
been served, which furthers the
statutory goal of providing a voluntary
forum for the resolution of claims.17 The
proposed rule also protects the interests
of a responding party, who has invested
time and resources into the proceeding,
and is in line with the FRCP.18 The
Office welcomes comments on the
advisability of including a procedure for
unilaterally withdrawing a claim or
counterclaim after the response has
been served and whether resulting
dismissals should be with or without
prejudice. To the extent commenters
believe that such dismissals typically
should be with prejudice, the Office
invites comment on whether the CCB
should be able to dismiss a case without
prejudice if the circumstances show that
such action is in the interests of justice.
The proposed rule also provides that
a written request to withdraw a claim or
counterclaim should include a brief
statement signed by the party seeking
dismissal. In addition, it provides that
claims or counterclaims that are
voluntarily withdrawn before a response
is filed may be dismissed with prejudice
if all parties agree in a written
stipulation that is filed with the CCB.
This option is intended to facilitate
early settlement negotiations. Voluntary
dismissal will not impact any other
claims or counterclaims in the
proceeding.
3. Default and Failure To Prosecute
i. Default Determinations
The CCB may enter a default
determination in an active proceeding
where the respondent ‘‘has failed to
appear or has ceased participating in the
proceeding.’’ 19 The statute empowers
the Office to establish additional
requirements that must be met before
the CCB may issue a default
determination.20 The legislative history
notes that the statute ‘‘establishes a
strong presumption against default
judgments’’ and provides greater
protections against default than those
available in federal court proceedings.21
The Office accordingly believes it is
important to have safeguards against
defaults where possible, and to ensure
that parties are given adequate notice
before a default can be issued.
To obtain a default determination, the
claimant must still ‘‘submit relevant
evidence and other information in
support of the claimant’s claim and any
asserted damages,’’ even where the
respondent has failed to appear or has
ceased participating.22 The CCB then
will evaluate the evidence, along with
any other requested submissions, and
determine whether the materials
provided are sufficient to support a
finding in the claimant’s favor and, if so,
18 Fed.
14 17
U.S.C. 1506(q)(1).
15 Id. at 1506(q)(2).
16 Id. at 1506(q)(1)–(2).
17 H.R. Rep. No. 116–252, at 17.
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19 17
R. Civ. P. 41.
U.S.C. 1506(u).
20 Id.
21 H.R.
22 17
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any appropriate relief and damages.23 If
the CCB then determines that a default
determination is appropriate, it must
prepare the determination and provide
a written notice to the respondent
through all known addresses, including
email addresses, and provide the
respondent thirty days to file a
submission in opposition to the default
determination.24 The CCB must
consider a timely response from the
respondent, ‘‘and, after allowing the
other parties to address such
submissions, [shall] maintain, or amend
its proposed determination as
appropriate, and the resulting
determination shall not be a default
determination.’’ 25 If the respondent
fails to respond to the notice, the CCB
‘‘shall proceed to issue the default
determination,’’ although the CCB may
later vacate such determination ‘‘in the
interests of justice.’’ 26 A federal court
may also vacate the default
determination ‘‘if it is established that
the default . . . was due to excusable
neglect.’’ 27
The Office requested comments
concerning ‘‘any issues that should be
considered relating to a respondent’s
default, including but not limited to
regulations regarding proof of damages
in default proceedings.’’ 28 Some
commenters urged the Office to adopt
regulations designed to reduce the risk
of the CCB becoming a ‘‘default
judgment mill.’’ 29 Suggestions included
regulations concerning the specific form
of evidence a claimant must produce in
support of a damages claim,30 or a
presumption against or even a
prohibition on statutory damages
awards in cases of default.31 The Office
is concerned, however, that regulations
that increase the claimant’s burden in
proving damages or circumscribe the
kinds of damages available in the case
of a default beyond what is already
provided in the statute could
incentivize respondents to avoid
engaging with CCB proceedings due to
the perception that the claimant is not
likely to be able to prove or to be
awarded significant damages. This
could increase, not reduce, the risk that
the CCB would be perceived as a default
23 Id.
24 Id.
at 1506(u)(2).
at 1506(u)(3).
26 Id. at 1506(u)(4).
27 Id. at 1508(c)(1)(C).
28 86 FR at 16162 (citing H.R. Rep. No. 116–252,
at 24).
29 Authors All. Initial NOI Comments at 7; Engine
Initial NOI Comments at 8–9.
30 AIPLA Initial NOI Comments at 7; Ben Vient
Initial NOI Comments at 4.
31 Engine Initial NOI Comments at 9; Univ. of
Mich. Libr. Initial NOI Comments at 3.
25 Id.
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judgment mill. The proposed rule
accordingly does not include such
provisions.
Commenters also urged the Office to
adopt regulations ensuring that the
claimant’s submissions are carefully
scrutinized, that service was effective,32
and that the CCB considers any
applicable defenses.33 Others opposed a
regulation allowing claimants to move
for a default determination, rather than
providing the CCB with exclusive
authority to initiate default
proceedings.34 The Office appreciates
these comments and has endeavored to
establish a multistep process designed
to make default less likely through the
use of built-in safeguards encouraging
respondents to engage in the process,
while also considering the interests of
claimants.
The Office, as allowed but not
required under section 1506(u), has
proposed a notice system with extra
safeguards to avoid defaults where
possible. Under the proposed rule,
where there has been a missed deadline
or requirement, the CCB, following a
party’s request or on its own initiative,
may issue a notice, which will be
delivered by mail and to known email
addresses for the respondent or
counterclaim respondent, explaining
that failure to participate may result in
the CCB entering a default
determination against that party. This
notice will explain the meaning and
consequences of a default determination
and provide the respondent with thirty
days from the notice to cure the missed
deadline or requirement. If the
respondent has not re-engaged by curing
the missed deadline or otherwise
responding to the notice within fifteen
days into the thirty-day window, the
CCB will send a second notice to the
respondent that re-attaches the first
notice and reminds the respondent that
it must cure the missed deadline or
requirement by the thirty-day deadline.
If the respondent cures the missed
deadline or requirement within the
thirty-day window, the proceeding will
32 Motion Picture Ass’n, Recording Indus. Ass’n
of Am. & Software and Info. Ass’n of Am. (‘‘MPA,
RIAA & SIIA’’) Initial NOI Comments at 16; Ryan
Fountain Initial NOI Comments at 2.
33 Engine Initial NOI Comments at 9.
34 Copyright Alliance, Am. Photographic Artists,
Am. Soc’y for Collective Rights Licensing, Am.
Soc’y of Media Photographers, The Authors Guild,
CreativeFuture, Digital Media Licensing Ass’n,
Graphic Artists Guild, Indep. Book Pubs. Ass’n,
Music Creators N. Am., Nat’l Music Council of the
United States, Nat’l Press Photographers Ass’n, N.
Am. Nature Photography Ass’n, Prof. Photographers
of Am., Recording Academy, Screen Actors GuildAm. Fed. of Television and Radio Artists, Soc’y of
Composers & Lyricists, Songwriters Guild of Am. &
Songwriters of N. Am. (‘‘Copyright Alliance, et al.’’)
Reply NOI Comments at 16–17.
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resume and the CCB will issue a revised
scheduling order, if necessary. If the
respondent fails to cure the missed
deadline but otherwise responds with
an indication of an intent to re-engage
in the proceeding, the CCB will consider
the response and may either provide the
respondent with additional time to cure
the missed deadline, or may proceed
with the default process, to avoid, for
instance, a respondent continually
taking extensions on deadlines without
permission and only acting when
defaults are issued. If the respondent
fails to cure the missed deadline or
requirement within the thirty-day
window and does not otherwise request
and receive additional time to cure the
missed deadline, the CCB may proceed
with the default process by requiring the
claimant to submit evidence in support
of a default determination. Such
evidence shall take the form of the
direct written testimony that the
claimant ordinarily would put forward
prior to a determination on the merits,
and the CCB may request additional
evidence that the claimant has within
its possession. The CCB will then
consider such evidence, taking into
account any meritorious defenses that
the respondent may have had, and
determine whether the evidence is
sufficient to support a finding in favor
of the claimant. If so, the CCB will
determine the appropriate relief and
damages, if any, and prepare a proposed
default determination that includes the
CCB’s finding in favor of the claimant,
the damages awarded, if any, and the
dismissal of any counterclaims asserted
by the respondent. The CCB will
provide written notice to the respondent
of the default determination and its
legal significance, and attach the
proposed default determination and
provide the respondent with thirty days
from the notice to respond.
If the respondent responds to this
default determination notice by
providing evidence in opposition, the
CCB will review the respondent’s
submissions and may request additional
information, including written
testimony. If the respondent indicates
an intent to re-engage in the proceeding,
but does not submit timely evidence,
the CCB will have the discretion to
either grant additional time to submit
evidence or proceed with issuing the
default determination. The claimant
will have an opportunity to respond to
any submissions from the respondent,
and the CCB, in its discretion, may elect
to hold a hearing. After considering any
additional evidence or other
information provided by the parties, the
CCB will either maintain or amend its
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proposed determination. As the CCB
will then have considered evidence
from both parties, the resulting final
determination will not be classified as a
default determination. The effect of this
classification is that the resulting final
determination may not be challenged as
a default determination in a federal
district court pursuant to 17 U.S.C.
1508(c). The respondent may, however,
seek reconsideration as outlined in 17
U.S.C. 1506(w) and the accompanying
regulations in part 230 of title 37.
If the respondent fails to respond to
the notice of pending default
determination, the CCB will issue the
determination as a final determination.
The respondent may challenge the
default determination in federal court
within ninety days of its issuance or,
provided that it has not yet initiated
proceedings in federal court, may
submit a request to the CCB that the
default determination be vacated. The
claimant will have an opportunity to
respond to this request, and both parties
will follow the general procedures for
reconsideration requests with respect to
their submissions. The CCB may then
vacate the default determination if it
finds that vacating the determination is
in the interests of justice.
The statute does not speak to the
disposition of a proceeding where the
claimant’s evidence is insufficient to
support a finding in its favor. Under the
proposed rule, if the CCB determines
that the claimant’s evidence is
insufficient, it will dismiss the
proceeding without prejudice. The
Office believes that this approach is
appropriate given that the claimant may
have been unable to sufficiently gather
supporting evidence through discovery
due to the default of the respondent. A
dismissal with prejudice thus could
unfairly penalize a claimant and reward
a defaulting respondent.
While the statute is generally
designed to be lenient and to avoid
defaults, in order to avoid abuse of the
system, the proposed rule permits the
CCB, in its discretion, to proceed with
the default process without issuing the
two notices described above, and to
move forward with requiring the
claimant to submit evidence in support
of a default determination if a
respondent misses a third deadline in a
proceeding without good cause. This
provision is aimed at encouraging
timely participation and preventing
respondents from repeatedly using the
default provisions as a backdoor
extension for deadlines. The Office
appreciates any comments concerning
whether such a provision is advisable,
and whether there are any other
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appropriate and effective methods for
preventing abuse of the default process.
ii. Failure To Prosecute
The statute establishes a procedure
whereby proceedings may be dismissed
due to the failure of a claimant to
complete service or to otherwise
participate in the proceeding. Under the
statute, the CCB will dismiss a
respondent or an entire proceeding, as
is applicable, without prejudice where a
claimant does not complete service on
one or more respondents within ninety
days of the CCB approving the claim.35
Once a proceeding becomes active, if a
claimant (including a counterclaimant)
fails to meet one or more deadlines or
requirements set forth in the CCB’s
scheduling order without justifiable
cause, the CCB may dismiss the claims
after providing the claimant with
written notice and a thirty-day period to
respond and cure the missed deadline.36
If the claimant does not comply, the
CCB, after considering any response the
claimant provides other than actually
complying with the requirements of the
missed deadline, may dismiss the
claims.37 As with default
determinations, the CCB may
subsequently vacate a dismissal ‘‘in the
interests of justice,’’ 38 and a federal
court may vacate the determination ‘‘if
it is established that the default or
failure was due to excusable neglect.’’ 39
The Office solicited comments
concerning regulations governing a
claimant’s failure to prosecute its
claims. One commenter suggested that
the regulations permit a respondent to
move for dismissal for failure to
prosecute,40 while others opposed such
a regulation.41
The proposed rule concerning a
claimant’s failure to complete service
creates a distinction between necessary
parties and non-necessary parties. If a
claimant fails to timely serve a
respondent whose participation is not
necessary to adjudicate the claims
against other parties, the CCB will
dismiss that respondent from the
proceeding without prejudice, and the
proceeding will continue against any
remaining respondents. On the other
hand, if a claimant fails to timely serve
a respondent who is a necessary party,
the CCB will dismiss the proceeding
without prejudice. If the claimant does
not timely serve each and every
35 17
36 Id.
U.S.C. 1506(v)(1).
at 1506(v)(2).
37 Id.
38 Id.
39 Id.
at 1508(c)(1)(C).
Initial NOI Comments at 8.
41 Copyright Alliance, et al. Reply NOI Comments
at 16–17.
40 Amazon
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respondent, the CCB will dismiss the
proceeding without prejudice.
The proposed rule pertaining to a
claimant’s failure to prosecute generally
mirrors the provisions regarding a
respondent’s default. Under the
proposed rule, at the request of a party
or on its own initiative, the CCB may
issue a notice to the claimant, which
will be delivered by mail and to all
known email addresses for the claimant,
that failure to prosecute may result in
the CCB issuing a determination
dismissing the claimant’s claims. This
notice will explain the legal effects of
such a determination and provide the
claimant with thirty days to cure the
missed deadline or requirement. If the
claimant has not re-engaged fifteen days
into this thirty-day window, the CCB
will send a second notice to the
claimant that re-attaches the first notice
and reminds the claimant that it must
cure the missed deadline or requirement
by the thirty-day deadline.
If the claimant cures the missed
deadline or requirement within the
thirty-day window, the proceeding will
resume and the CCB will issue a revised
scheduling order, if necessary. If the
claimant fails to cure the missed
deadline but otherwise responds with
an indication of an intent to re-engage
in the proceeding, the CCB will consider
the response and may either provide the
claimant with additional time to cure
the missed deadline or requirement, or
may proceed with issuing a
determination dismissing the claims. If
the claimant fails to cure the missed
deadline or requirement within the
thirty-day window and does not
otherwise request and receive additional
time to cure the missed deadline, the
CCB will issue a determination
dismissing the claims. Such a dismissal
will be with prejudice and may include
an award of attorneys’ fees and costs, if
appropriate. As with a default
determination, the claimant may
challenge the determination in federal
court within ninety days of its issuance
or, provided that it has not yet initiated
proceedings in federal court, may
submit a request to the CCB that the
determination be vacated. The
respondent will have an opportunity to
respond to this request, and both parties
will follow the general procedures for
reconsideration requests with respect to
their submissions. The CCB may then
vacate the determination in the interests
of justice.
The Office welcomes any comments
concerning the proposed rules
concerning a claimant’s failure to
proceed and specifically, whether they
strike the proper balance between the
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rights and interests of a respondent and
a claimant.
4. Conduct of Parties
The statute contains several
provisions that are designed to deter
and address improper conduct from
parties in proceedings before the CCB.
These include provisions authorizing
the CCB to penalize bad-faith conduct
by awarding costs and attorneys’ fees,
and to bar repeat bad-faith actors from
initiating proceedings before the CCB
for a period of twelve months.42
i. Bad-Faith Conduct
Under the statute, the CCB may award
reasonable costs and attorneys’ fees
where it determines that ‘‘a party
pursued a claim, counterclaim, or
defense for a harassing or other
improper purpose, or without a
reasonable basis in law or fact, . . .
unless inconsistent with the interests of
justice.’’ 43 Such an award is typically
limited to $5,000, but where the party
appeared pro se, the award may only
include costs and is capped at $2,500.44
The award may be increased beyond the
statutory limit ‘‘in extraordinary
circumstances’’ where there is a
demonstrated ‘‘pattern or practice of bad
faith conduct.’’ 45 The statute also
authorizes the CCB to bar a party from
initiating claims for a period of twelve
months if it determines that the party
engaged in certain bad-faith conduct
more than once in a twelve-month
period.46 If it reaches such a
determination, the CCB must also
dismiss without prejudice any pending
proceedings that were commenced by
the bad-faith actor, except that dismissal
of any active proceeding requires the
written consent of the respondent.47
In response to the NOI, commenters
suggested that the Office create a
streamlined process or standardized
forms to report bad-faith conduct 48 and
publish a list of bad-faith actors who
have been barred from using the CCB.49
Commenters also recommended that the
Office establish rules preventing
copyright ‘‘trolls’’ from abusing the
42 17
U.S.C. 1506(y)(2).
43 Id.
44 Id.
at 1506(y)(2)(A).
at 1506(y)(2)(B).
46 Id. at 1506(y)(3).
47 Id.
48 Amazon Reply NOI Comments at 4; Amazon
Initial NOI Comments at 11–12; Copyright Alliance,
et al. Initial NOI Comments at 42.
49 Copyright Alliance, et al. Reply NOI Comments
at 20; Comput. & Comms’s Indus. Assoc. & internet
Assoc. (‘‘CCIA & IA’’) Initial NOI Comments at 7–
8.
45 Id.
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CCB.50 One commenter suggested that
the regulations include a mechanism,
similar to Anti-SLAPP motions,51
whereby a respondent can make an
early motion to dismiss a bad-faith
claim.52
The proposed rule makes both parties
and party representatives subject to
various bad-faith conduct provisions.
Under the proposed rule, the CCB will
review, as part of its determination of an
award of costs or attorneys’ fees,
whether a party or its representative
engaged in bad-faith conduct. The
Office has defined ‘‘bad-faith conduct’’
consistent with the statute, and the rule
clarifies that such conduct may occur at
any time during a proceeding. At any
point prior to determination, the CCB
may order a party or its representative
to show cause why certain conduct does
not constitute bad-faith conduct. The
party or representative will have three
days to file a response.
A party may also raise allegations of
bad-faith conduct. To do so, the party
must file a letter describing the alleged
conduct, attaching any relevant exhibits,
and seeking a conference. The accused
party has seven days in which to file a
response if it wishes. After reviewing
the parties’ submissions, the CCB must
either make a finding that no bad-faith
conduct occurred or schedule a
conference to address the request. The
CCB will consider the parties’ letters,
any arguments on the issue, and the
accused party’s behavior in other CCB
proceedings in the preceding twelve
months in determining whether to
award attorneys’ fees and costs. If the
CCB determines that an award of
attorneys’ fees and costs is appropriate,
the award will be included in the final
determination and will be in accordance
with the allowable amounts set forth in
the statute.
The proposed rule also provides that
a party or representative who engages in
bad-faith conduct on more than one
occasion within a twelve-month period
will be barred from initiating claims
before the CCB for a period of twelve
months. The CCB must dismiss any
pending proceedings brought by a party
who engaged in repeated bad-faith
50 Elec. Frontier Found. (‘‘EFF’’) Initial NOI
Comments at 3; John Boushka Initial NOI
Comments at 1.
51 Anti-SLAPP statutes are laws designed to deter
strategic lawsuits against public participation
(‘‘SLAPP’’), that is, lawsuits that have the primary
purpose of suppressing legitimate criticism or
opposition. Such statutes set forth a special form of
motion practice, referred to as an ‘‘Anti-SLAPP
motion,’’ that permits the early dismissal of such
lawsuits. See, e.g., DC Comics v. Pac. Pictures
Corp., 706 F.3d 1009, 1013 (9th Cir. 2013)
(discussing California Anti-SLAPP statute).
52 Gordon Fiermark Initial NOI Comments at 1.
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conduct within the requisite time
period. In its discretion, the CCB may
also bar a representative from
participating further in any claims
pending before the CCB, after
consideration of any hardship to parties
represented by that person. If a
representative is barred from further
representing a party in a pending claim,
the CCB will consider requests from that
party asking the Board to provide
additional time or a stay of the pending
action to allow that party to find other
representation. As with the proposed
rule pertaining to bad-faith conduct
within a proceeding, allegations of
multiple instances of bad-faith conduct
may be raised either by the CCB at any
point during a proceeding through an
order to show cause or by a party at any
point after a proceeding has been
initiated. A party may raise such
allegations through a letter which
describes the instances of bad-faith
conduct, attaches relevant exhibits, and
requests a conference. A respondent
will not waive the ability to opt out of
the proceeding if it raises allegations of
bad-faith conduct with the CCB prior to
the expiration of the period to opt out.
The accused party will have an
opportunity to respond, regardless of
whether the allegations are raised by the
CCB or another party.
After reviewing the parties’
submissions, the CCB will either make
a finding that no bad-faith conduct
occurred or hold a conference to address
the allegations. The CCB will consider
the parties’ letters, any arguments on the
issue, and the accused party’s behavior
in other proceedings before the CCB. If
an accused party has been subject to an
award of attorneys’ fees or costs by the
CCB due to bad-faith conduct at any
point in the prior twelve months, then
that will be considered an additional
instance of bad-faith conduct for
purposes of establishing the bar on
initiating claims. However, the CCB may
also consider other evidence of bad-faith
conduct by the accused party, even if
such conduct ultimately did not result
in a formal finding or an award of
attorneys’ fees or costs. For example, the
CCB may consider instances in which
the accused party filed claims that were
found to be noncompliant, or bad-faith
proceedings that were initiated by the
accused party where the respondent
opted out. If the CCB determines that
the accused party has engaged in badfaith conduct on more than one
occasion in a twelve-month period, the
CCB will issue a written determination
that provides that the accused party will
be barred from initiating claims before
the CCB for twelve months and, where
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the bad-faith actor is a party and not a
representative, that any pending
proceedings commenced by the party be
dismissed without prejudice, with the
exception that the dismissal of active
proceedings requires the written
consent of the respondent in those
proceedings.
The proposed rule does not provide
for the publication of a list of bad-faith
actors who have been barred from
initiating proceedings, as some
commenters suggested, because the
Office believes that such a list would be
unduly harsh, especially for nonattorneys. The CCB will, however, make
certain records and findings related to
bad-faith conduct public, so that parties
are able to identify patterns of bad-faith
conduct and bring them to its attention.
The Copyright Claims Attorneys will be
positioned to identify parties who,
notwithstanding being barred from
initiating proceedings, do so anyway in
spite of a bar and will classify such
proceedings as noncompliant. The
Office welcomes any other comments
concerning the proposed rules for badfaith conduct, including whether there
should be publication of a list of badfaith actors.
ii. Attorney Conduct
The Office also requested comments
regarding the adoption of regulations
pertaining to the conduct of attorneys,
such as whether to prohibit attorneys
who have been suspended from
practicing law from participating in CCB
proceedings and whether to adopt rules
addressing such issues as conduct and
discipline, duties of candor, fraud
prevention, and, if necessary, sanction,
suspension, exclusion, or censure.53
Commenters generally agreed on the
advisability of such regulations. Some
commenters suggested that the CCB
should have the ability to bar or
suspend attorneys who engage in badfaith conduct,54 and some suggested that
the CCB should report such attorneys to
their respective bar associations.55
Several commenters agreed that
disbarred, suspended, or sanctioned
attorneys should not be permitted to
practice before CCB.56 Other suggestions
were to have the CCB establish rules of
professional conduct 57 as well as
requirements that attorneys representing
53 86
FR 16164–65.
& IA Initial NOI Comments at 7.
55 Id.; MPA, RIAA & SIIA Initial NOI Comments
at 21.
56 Am. Bar Ass’n Intell. Prop. L. Sec. (‘‘ABA–
IPL’’) Reply NOI Comments at 8–9; Google Initial
NOI Comments at 2; Univ. of Mich. Libr. Initial NOI
Comments at 7.
57 Univ. of Mich. Libr. Initial NOI Comments at
7.
54 CCIA
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a party identify themselves; an attorney
appearance include a representation
that the attorney is a member of a bar
in good standing; and an attorney who
is aware of bad-faith behavior
committed by another attorney inform
the CCB.58
The proposed rule requires attorneys
or other representatives to file a notice
of appearance that consists of the name
of the case, the attorney’s bar number
(where one exists) in a state in which
the attorney has been admitted to
practice, the case number, the person on
whose behalf the appearance is made,
and the attorney or representative’s
contact information, including email
address and telephone number.
Attorneys or other representatives must
file a similar notice when withdrawing
an appearance. Except for law student
representatives, attorneys must be a
member in good standing of a state, the
District of Columbia, or a United States
territory or commonwealth bar.
Attorneys and representatives must file
a statement under penalty of perjury
that they are currently qualified and
authorized to represent the party on
whose behalf they have appeared.
As some comments suggested, the
proposed rule prohibits attorneys or
representatives who have been
disbarred by any court from
representing parties before the CCB. If
an attorney in an active or pending
proceeding is disbarred after a notice of
appearance is made, the attorney must
report the disbarment to the CCB and
withdraw representation. The proposed
rule does not prohibit disbarred
attorneys or representatives from
representing themselves pro se where
they are a party in a proceeding.
The proposed rule also makes clear
that attorneys and representatives who
appear before the CCB have a duty of
candor and impartiality toward the CCB
and a duty of fairness towards opposing
parties and counsel. The proposed rule
does not establish independent rules of
professional conduct. Instead, the CCB
will look to the District of Columbia’s
rules of professional conduct and the
rules in the jurisdiction in which the
representative practices in determining
whether an attorney or representative
has breached these duties.
The proposed rule empowers the CCB
to bar attorneys or representatives who
violate any of these standards of
conduct, or are otherwise found to be
engaging in bad-faith conduct, from
representing parties before the CCB for
twelve months. The Office agrees with
commenters that such a provision is
58 Copyright Alliance, et al. Initial NOI Comments
at 42.
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advisable, and believes the Register has
the authority under section 1506(a)(1) to
prescribe regulations governing the
conduct of attorneys in proceedings
before the CCB. Such authority would
seem to necessarily include the ability
to temporarily bar attorneys from
appearing before the CCB. Furthermore,
the statute expressly authorizes a
twelve-month bar for parties who
engage in repeated bad-faith conduct,59
and defines the term ‘‘party’’ to include
‘‘the attorney of a party, as
applicable.’’ 60 The Office invites
comments concerning the CCB’s
authority to discipline or bar attorneys
or representatives in this way and
whether there are any other methods
available to the CCB that should be
considered.
5. Limitation on Cases
The statute provides the Office with
the option of establishing regulations to
limit the number of proceedings a party
may bring each year ‘‘in the interests of
justice and the administration of the
Copyright Claims Board.’’ 61 Congress
explained that this power ‘‘functions as
both a docket management tool . . . and
as protection against abusive
conduct.’’ 62 In the NOI, the Office
indicated its expectation that it would
exercise this authority, subject to reevaluation after the CCB is able to
determine the size of its workload.63
The Office sought public comment
relating to the initial limitation of the
permitted number of proceedings a
claimant may file each year.64
Commenters were generally supportive
of a limit on the number of claims a
party may bring in a year, and suggested
limits that ranged from two to four
hundred cases.65 A few commenters
opposed a limit due to concerns that it
would disproportionately disadvantage
claimants who hold copyrights in many
works 66 or that a strict limitation would
run the risk of being arbitrary and
capricious.67 One commenter suggested
59 17
U.S.C. 1506(y).
at 1501(3)(B).
61 Id. at 1504(g).
62 H.R. Rep. No. 116–252, at 31.
63 86 FR 16164.
64 Id.
65 CCIA & IA Initial NOI Comments at 6 (10
cases); Copyright Alliance, et al. Initial NOI
Comments at 41 (20 cases for first year, with
discretion to permit more cases for good cause and
in interests of justice); Davis Jr. & Luce Initial NOI
Comments at 3 (two cases seeking damages over
$2500); George LaBonty Initial NOI Comments at 1;
Univ. of Mich. Initial NOI Comments at 6–7 (10–
12 cases); Verizon Initial NOI Comments at 6–7
(four cases).
66 MPA, RIAA & SIIA Initial NOI Comments at
19–20.
67 Science Fiction and Fantasy Writers of Am.
Reply NOI Comments at 6.
60 Id.
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a similar restriction be imposed on firms
and agents, prohibiting them from
representing more than one claim per
client per year.68 Other commenters
suggested certain exemptions from the
limitation, including for
counterclaims,69 for proceedings where
a respondent ultimately opts out or that
otherwise do not become active,70 and
for organizations acting on behalf of
multiple rights holders.71 One
commenter suggested that the Office
consider the financial situation of the
claimant and the market price of the
infringed work in determining the
limit.72
Upon consideration of these
comments, the Office has proposed a
requirement that a party may file no
more than ten proceedings in any
twelve-month period. The Office
believes this limit will help to ensure
that the CCB is able to effectively
manage its docket, particularly given
that the Office has not proposed an
upper limit on the total number of
proceedings that may be pending before
the CCB, as discussed further below.
The Office also seeks to avoid the
possibility that proceedings may be
overwhelmed by just a few claimants. A
private attorney or law firm may
represent a claimant in no more than
forty proceedings in any twelve-month
period. A proceeding will count toward
this limitation as soon as it is filed,
regardless of how it is resolved (e.g.,
even if it is found noncompliant or
unsuitable, is voluntarily dismissed, or
is dismissed due to a respondent’s opt
out). However, amendments to a claim
or the filing of counterclaims will not
count toward this limit. Any action
taken for the sole purpose of avoiding
this limitation will constitute bad-faith
conduct under the proposed rule. At
this time, the proposed rule does not
limit the maximum number of total
proceedings that may be filed before the
CCB by all parties combined.
The proposed rule also provides the
CCB with the ability to impose a
temporary limitation on the number of
proceedings that may be pending before
it or the number of proceedings that a
party or representative may have
pending before the CCB in a twelvemonth period. Such a limitation would
remain in place for a period that may
not exceed six months in the absence of
a notice and comment rulemaking. This
68 Verizon
Initial NOI Comments at 6–7.
Alliance, et al. Initial NOI Comments
69 Copyright
at 41.
70 Id. at 41–42; MPA, RIAA & SIIA Initial NOI
Comments at 20.
71 Copyright Alliance, et al. Initial NOI Comments
at 41.
72 Niskanen Center Initial NOI Comments at 5.
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provision is intended to enable the CCB
to react quickly in the event that it is
inundated with more claims than it is
able to handle. Claimants confronted
with a potential statute of limitations
issue because of the moratorium may
file a claim accompanied by a
declaration under penalty of perjury
attesting that the statute of limitations
will expire during the stay and setting
forth facts in support of that conclusion.
If the CCB determines that the statute of
limitations likely will expire during the
stay based on the facts set forth in the
declaration, the CCB will hold the claim
in abeyance and conduct its compliance
review of the claim after the end of the
moratorium.
The Office welcomes any comments
as to whether these limitations strike the
proper balance between the interests of
the parties and the efficient
management of the CCB’s work.
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B. Management of Proceedings
1. Applicability of Federal Rules of Civil
Procedure and Federal Rules of
Evidence
The statute includes a general
prohibition on formal motion practice,
subject to certain exceptions, but
permits parties to make various
‘‘requests.’’ 73 The statute also sets forth
the types of evidence that the CCB may
consider in a proceeding—namely,
relevant documentary and other
nontestimonial evidence as well as
relevant testimonial evidence submitted
under penalty of perjury.74 The statute
does not otherwise speak to the
applicability of the FRCP and the
Federal Rules of Evidence (‘‘FRE’’).
The Office solicited comments
regarding whether it should adopt any
provisions of the FRCP in areas relevant
to the CCB’s operations, potentially with
modifications to simplify them and
make them more accessible.75 The
Office received several comments on
this issue with wide-ranging
recommendations on the applicability of
the Federal Rules to CCB proceedings.
Commenters suggested additional
models to look to beyond the Federal
Rules 76 and recommended specific
provisions that they thought the CCB
should adopt, such as those regarding
initial status conferences 77 and
mechanisms for summary dismissal of
unsuitable claims.78 Several
commenters agreed that CCB
proceedings should be more flexible and
73 17
U.S.C. 1506(m).
at 1506(o).
75 86 FR 16168.
76 ACUS Initial NOI Comments at 1–3.
77 AIPLA Initial NOI Comments at 6.
78 LCA Reply NOI Comments at 4.
74 Id.
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permissive than federal proceedings,79
especially with respect to the admission
of evidence.80 Some commenters
emphasized that the CCB should make
use of standardized forms, as opposed to
the more customized approach to
submissions in federal court
proceedings.81
The Office agrees with commenters
that CCB proceedings should be more
flexible and permissive than federal
court proceedings. Similarly, and
especially given the lack of need to
worry about confusing a jury, and the
desire not to force unsophisticated
parties to learn the rules of evidence,
the Board will be more flexible in
accepting evidence than a strict
adherence to the FRE would require.82
Accordingly, the proposed rule makes
clear that the CCB is not bound by the
FRCP or the FRE and that citations by
parties to the FRCP and FRE will only
be considered to the extent they are
persuasive.
2. Scheduling Order
The statute provides that the CCB will
issue a scheduling order, which may be
amended in the interests of justice,
specifying the deadlines in a proceeding
upon confirmation that it has become an
active proceeding.83 The CCB may also
hold conferences to address case
management or discovery issues.84
Under the proposed rule, the required
scheduling order will include deadlines
for the filing of the respondent’s
response to the claim (including any
counterclaims); the date and time of a
pre-discovery conference; deadlines for
service upon other parties of responses
to the CCB’s standard interrogatories
and standard production of document
requests; other discovery deadlines; the
deadline for requests for leave to seek
additional discovery; the date of the
close of discovery; the date and time of
a post-discovery conference; and the
deadline for the filing of written
testimony. The proposed rule does not
set forth specific timeframes for each of
these deadlines so that the CCB has
flexibility to assess the pace of
proceedings and the need for docket
management.
79 AIPLA
Initial NOI Comments at 8.
Copyright Alliance, et al. Initial NOI
Comments at 22.
81 AIPLA Initial NOI Comments at 1; Copyright
Alliance, et al. Initial NOI Comments at 21–22;
Vient Initial NOI Comments at 4.
82 The CASE Act provides that the Board CCB
may consider various forms of evidence and that
‘‘such evidence may be admitted without
application of formal rules of evidence.’’ 17 U.S.C.
1506(o).
83 Id. at 1506(k).
84 Id. at 1506(l).
80 Id.;
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The proposed rule also provides that
the CCB may hold additional
conferences beyond the pre-discovery
conference and the post-discovery
conference on its own initiative or at the
request of any party. All such
conferences will be held virtually. The
proposed rule also permits the CCB to
amend the initial scheduling order as
needed. The Office invites comments as
to whether any other deadlines should
be included in the initial scheduling
order.
The proposed rule contemplates that
one or more Officers will hold all
conferences. The Office observes,
however, that proceedings could be
streamlined and made more efficient if
Copyright Claims Attorneys are
permitted to hold conferences that do
not involve the resolution of a dispute
and instead relate to logistical,
scheduling, or other non-substantive
matters. Accordingly, the Office solicits
comments as to whether it has the
authority to permit such conferences to
be held by Copyright Claims Attorneys
rather than Officers.
3. Amending Pleadings
While the statute does not speak to
amended pleadings, the Office proposes
a rule that would generally prohibit a
claimant from making substantive
changes without another review by the
Copyright Claims Attorneys, or after the
time for a respondent to opt out has
expired.85 Under the proposed rule, a
claimant may freely amend its claim
once as a matter of course before the
claim is served by filing the proposed
amendment for a compliance review.86
If the compliance review by the
Copyright Claims Attorney already has
been completed at the time of the
proposed amendment, it must be
submitted for a new review by a
Copyright Claims Attorney to ensure
that the claim as modified is compliant.
A claimant seeking to amend a claim
during the opt-out period may do so
only with the CCB’s leave. To seek such
leave, the claimant must submit a short
letter to the CCB that sets forth the
reasons for the amendment. The CCB
will freely grant leave to amend a claim
if justice so requires, after considering
whether the basis for the amendment
should have been reasonably known to
the claimant before the claim was
served, along with any other relevant
considerations. If the CCB grants leave
for the amendment, it must still be
submitted for a compliance review by a
85 See
Fed. R. Civ. Pro. 15.
detailed explanation of the compliance
review can be found in the Office’s notice of
proposed rulemaking on initiation of CCB
proceedings. See 86 FR 53898–99.
86 A
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Copyright Claims Attorney. If the
Copyright Claims Attorney determines
that the amended claim is compliant,
the claimant must serve the amended
claim on the respondent within fourteen
days. Once the claimant serves the
amended claim, the period for the
respondent to opt out will begin anew,
and it will have sixty days to determine
whether to opt out of the proceeding.
If a party seeks to amend a pleading
after the opt-out period has expired, it
may only do so with the leave of the
CCB. If the CCB grants such leave, the
amendment still must be submitted for
a compliance review. To make a request
to amend a pleading after service, the
party must submit a short letter to the
CCB, and any opposing parties will be
provided with an opportunity to object
or to state that they do not object. The
CCB will freely grant leave as justice so
requires, after considering whether
permitting amendment would prejudice
any party or unduly delay the
proceeding, and whether the party
seeking amendment reasonably should
have known of the basis for an
amendment earlier. Responses to
amended pleadings must be made
within the later of the time remaining to
respond to the original pleading or
within twenty-one days of the CCB’s
issuance of notification that the
amended pleading is compliant.
In proposing this approach, the Office
seeks to ensure that the respondent
knows the nature and scope of a claim
before the opt-out period expires. In
other words, the Office wishes to avoid
scenarios where amendments
substantially change the nature of the
proceeding after the opt-out decision
has been made. At the same time, the
Office believes it is appropriate to
permit certain amendments after
service, especially where an obvious
typographical error has been made. The
Office seeks comments concerning these
issues and the proper mechanisms for
allowing amendments after service of a
pleading while preserving the purpose
of the opt-out provision.
4. Consolidation
The statute is silent concerning
whether claims may be consolidated
where they involve identical parties or
identical facts and circumstances, or
severed where they involve disparate
claims. In line with the suggestion of
one commenter,87 the proposed rule
provides that the CCB may consolidate
active proceedings that involve the same
parties or that arise out of the same facts
and circumstances for purposes of
87 Science Fiction and Fantasy Writers of Am.
Initial NOI Comments at 6.
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conducting discovery, submitting
evidence, or holding hearings, but not
for purposes of CCB determinations and
any damages award. Regarding
severance, Copyright Claims Attorneys
likely will, in the ordinary course, be
able to identify during their review
process instances where multiple claims
involving disparate facts and
circumstances have been asserted, and
can require that the claimant separate
out such disparate claims. The proposed
rule also permits the CCB to sever
proceedings with respect to some or all
parties, claims, and issues where it
becomes evident that a single
proceeding includes distinct claims
involving disparate facts and
circumstances that would be
inappropriate to resolve in a single
proceeding.
Unlike the rule on consolidation,
claims that have been severed will be
treated together for purposes of
damages, so that the cumulative amount
of damages awarded in the severed
proceedings cannot exceed the
maximum damages under the statute for
one proceeding. The CCB may dismiss
one of the severed proceedings if it finds
it to be unsuitable, while allowing the
remaining proceeding or proceedings to
continue.
The CCB may consolidate or sever
proceedings either on its own or at the
request of a party, provided that all
affected parties receive reasonable
notice and an opportunity to be heard.
A party seeking consolidation or
severance must submit a short letter to
the CCB, setting forth the basis for the
request, seeking a conference between
the CCB and parties from each affected
case, and, in the case of a consolidation,
providing the docket numbers of each
affected proceeding. Parties opposed to
the consolidation or severance may file
a response objecting to the request. The
CCB will consider whether
consolidation or severance is necessary
and balance the necessity for such
action with the timeliness of the request
and any undue prejudice that may
result.
The Office is interested in public
comments concerning the advisability of
these proposals. In particular, the Office
seeks input as to whether the proposed
rule that consolidated proceedings will
remain separate for purposes of
determinations and damages could be
used to evade the statutory caps on
damages awards in CCB proceedings,
and whether, despite the proposed rule
against a party taking actions to avoid
case filing limitations, the proposed rule
concerning severance could enable
parties to evade the limitation on the
number of proceedings filed by a single
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party if a party was able to make
disparate claims against various
respondents in a single claim filing, all
of which should not have been filed
together, and then attempt to treat all
those claims as one filing even if later
severed.
5. Settlement
The statute empowers Officers to
facilitate the settlement between parties
of claims and counterclaims.88 It also
permits some or all of the parties, at any
point in an active proceeding, to request
a settlement conference with an Officer.
Parties may also jointly submit a
settlement agreement, which may be
adopted in the CCB’s final
determination.89 Congress was clear that
the statute ‘‘reflects an intent to
encourage compromise and settlement’’
and is ‘‘designed to promote
compromise,’’ as further reflected by the
requirement that at least one of the
Officers have experience with
alternative dispute resolution.90
The proposed rule provides that the
CCB will encourage voluntary
settlement and will, at a minimum,
discuss the appropriateness of holding a
settlement conference as part of the prediscovery and post-discovery
conferences. At any point in an active
proceeding, some or all parties may
jointly request a settlement conference
with an Officer either orally at a
conference or in writing. If the request
is made in writing, it must indicate
which other parties, if any, join in the
request. The party or parties may
request a stay of the proceeding while
settlement discussions are ongoing. Any
opposing party may submit a response
letter objecting to the settlement
conference or the stay. Stays will be at
the CCB’s discretion. If no party objects,
the CCB will schedule a settlement
conference. If one or more party objects,
the CCB may still schedule a conference
with some or all of the parties, after
considering the basis for the objection
and whether any claims or
counterclaims may be resolved if the
CCB holds a conference with only the
consenting parties in attendance.
Three days prior to the settlement
conference, each participating party
must submit a position statement by
email to the Officer presiding over the
settlement conference, which can be
provided to the other parties by
agreement, and may include a limited
number of exhibits, to facilitate the
settlement discussions. The CCB may
88 17
U.S.C. 1503(a)(1)(F).
at 1506(r).
90 17 U.S.C. 1502(b)(3)(iii); H.R. Rep. No. 116–
252, at 24.
89 Id.
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issue an order staying the proceedings
for a period of up to thirty days at the
time the conference is scheduled,
during or following the conference, or at
the request of the parties. Such a stay
may be extended at the request of the
parties, provided that they are
participating in ongoing settlement
discussions. If settlement discussions
have not been successful at the time the
stay (or an extension thereof) expires,
the CCB will issue an amended
scheduling order.
If settlement discussions are
successful and some or all of the parties
have reached a resolution, the parties
may notify the CCB that they wish to
dismiss some or all of the claims or
counterclaims and may also include in
their request for a dismissal that the
CCB adopt some or all of the settlement
terms in the final determination. The
CCB will dismiss any claims or
counterclaims covered by the settlement
agreement with prejudice (unless the
parties have agreed otherwise) and will
adopt any requested settlement terms
into the final determination, unless the
CCB determines that they are clearly
unconscionable.
The Office invites any comments
concerning whether there are any other
regulations that should be adopted to
facilitate settlement between the parties.
In particular, the Office seeks input on
whether the CCB should be able to order
a settlement conference where it sees
possible benefit to holding a conference
even where one or more parties object.
The Office also seeks comment
regarding the participation of Officers in
settlement conferences. Under the
statute, a determination must be reached
by ‘‘the majority of the Copyright Claims
Board,’’ 91 which suggests that an Officer
who participates in a settlement
conference must also participate in the
determination. The Office notes that in
the federal litigation system, there are
varying approaches within the district
courts 92 regarding who should preside
over settlement conferences. Some
allow district judges to preside over
such conferences,93 while others prefer
the use of magistrate judges,94 outside
neutrals,95 or some combination
91 17
U.S.C. 1506(t).
of Justice, ‘‘ADR in the Federal
District Courts’’ (Mar. 2016), https://
www.justice.gov/archives/olp/file/827536/
download.
93 See, e.g., D. Nev. L. Civ. R. 16.5; E.D. Mich. L.
Civ. R. 16.3.
94 See, e.g., D. Ariz. L. Civ. R. 83.10; D. Colo. L.
Civ. R. 16.6.
95 See, e.g., U.S. District Court for the Southern
District of New York, ‘‘Mediation Program
Procedures,’’ at 10 (July 2020); N.D. Ca. L. ADR R.
2–5.
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defendants in federal litigation; 102 and
that claimants should be required to
indicate as part of the initial claim
whether they are seeking $5,000 or less
in damages.103 The legislative history
suggested that the Office could consider
delaying rulemaking concerning smaller
claims proceedings until it has an
opportunity to evaluate its ordinary
procedures and caseload in practice.104
The Office has considered this
suggestion and has decided to institute
smaller claims procedures at the outset
in order to provide an option of an
increasingly streamlined process for
claims of $5,000 or less. The Office
believes that providing such a process
will provide benefits in terms of
efficiency and simplicity to parties and
may enable the CCB to handle more
claims than it otherwise could.
Under the proposed rule, a claimant
may either request consideration under
the smaller claims procedures at the
6. Smaller Claims
time of filing or amend its request any
time prior to service of the claim. When
The statute directs the Office to
the claimant seeks to amend its choice
establish regulations concerning claims
after the compliance review but before
in which the total damages sought by
service, the CCB must issue a new
the claimant do not exceed $5,000,
initial notice reflecting the change, so
exclusive of attorneys’ fees and costs.
that the notice served on the respondent
These smaller claims are to be
states that the proceeding will be
considered and determined by not fewer
conducted under the rules for smaller
than one Officer. Such determinations
claims. However, once the claimant
will have the same effect as a
chooses the smaller claims procedures
97
determination issued by the full CCB.
and completes service, that decision
The legislative history states that such
may not be reversed without the consent
proceedings should ‘‘have the same
of the other parties and leave of the
procedural protections of any other
CCB.
claim before the Copyright Claims
Smaller claims proceedings will be
Board,’’ other than that they may be
heard by one Officer, who will be
98
heard by a single Officer.
assigned on a rotating basis at the CCB’s
The Office solicited comments
discretion. Discovery in smaller claims
concerning procedures for such
proceedings will be limited to the
‘‘smaller claims,’’ including regulations
standard interrogatories, requests for
that would increase the efficiency of
admission, and the standard production
such proceedings while retaining the
of document requests provided by the
CCB’s standard procedural
CCB, as discussed further below. The
protections.99 Several commenters
presiding Officer shall not consider any
suggested that there be a strong
requests for additional discovery, and
presumption against discovery in
expert testimony will be prohibited in
smaller claims proceedings.100 Other
smaller claims proceedings, since any
suggestions included that only Officers
benefits of additional discovery or
with substantial experience with
expert testimony are unlikely to
copyright infringement claims be
outweigh the costs and delays that they
permitted to preside over smaller claims may cause. The assigned Officer will
proceedings; 101 that respondents should issue a determination based solely on
receive the same protections available to the written testimony and without
holding a hearing prior to issuing a
96 See, e.g., E.D. Va. L. Civ. R. 83.6.
determination.
97 17 U.S.C. 1506(z).
The Office welcomes comments
98 H.R. Rep. No. 116–252, at 17.
concerning the proposed rule for
99 86 FR 16162–63.
smaller claims and whether it strikes a
100 Copyright Alliance, et al. Reply NOI
proper balance between streamlining
Comments at 17; AIPLA Initial NOI Comments at
thereof.96 The Office recognizes the
possibility that a separation between the
Officer who presides over a settlement
conference and the Officers who serve
as the ultimate decision-makers could
further encourage participation in
voluntary settlement negotiations, and
seeks comments assessing the likelihood
that parties will engage in settlement
when the Officer who presides over the
settlement conference will also be
involved in the final determination. The
Office is also interested in comment
regarding any statutory authority for the
recusal of the settlement conference
Officer from a proceeding, only to
terminate the recusal if the two
remaining Officers fail to agree on a
determination, and whether parties
could stipulate to such a recusal and to
abide by a decision issued by only the
Officers not involved in settlement
discussions.
7; Copyright Alliance, et al. Initial NOI Comments
at 29; MPA, RIAA & SIAA Initial NOI Comments
at 17.
101 Copyright Alliance, et al. Initial NOI
Comments at 29.
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102 Google
103 MPA,
Initial NOI Comments at 2.
RIAA & SIAA Initial NOI Comments at
16–17.
104 S. Rep. No. 116–105, at 8.
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the process while providing the
procedural protections available to other
claims before the CCB.
7. Records and Publication
Under the statute, each final
determination of the CCB will be made
available on a publicly accessible
website.105 The Office is also directed to
establish regulations related to the
publication of other records and
information concerning CCB
determinations.106 The Office
previously indicated that it had
requested the provision of an electronic
filing and case management system from
the Library of Congress’ Office of the
Chief Information Officer, which would
provide capabilities comparable to
existing case management systems
operated by other courts and
tribunals.107 The Office sought
comments concerning public access to
CCB records and proceedings, as well as
certification of records and
determinations.108 Several commenters
agreed that access to determinations and
other filings should be publicly
available, but information provided
during the course of discovery should
not be made available.109 Other
commenters argued that there should be
a presumption of public access to CCB
filings,110 and that access should be
free.111 A few commenters requested
that the CCB make available statistics
related to CCB proceedings.112
The Office recognizes that the CCB
shares characteristics of both court and
ADR proceedings.113 Just as some
litigants prefer arbitration in part
because the records in such proceedings
are not made available to the public,
some claimants and respondents may
105 17
U.S.C. 1506(t)(3).
106 Id.
107 86
FR 16163.
108 Id.
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109 ABA–IPL Reply NOI Comments at 7;
Copyright Alliance, et al. Initial NOI Comments at
38; MPA, RIAA & SIIA Initial NOI Comments at 19.
110 EFF Initial NOI Comments at 4; Univ. of Mich.
Initial NOI Comments at 5.
111 Internet Archive Initial NOI Comments at 3.
112 Engine Initial NOI Comments at 9; Univ. of
Mich. Initial NOI Comments at 5.
113 See 17 U.S.C. 1502(b)(9) (providing that the
CCB is housed in the Copyright Office); id. at
1509(b) (providing that a CCB proceeding qualifies
as an alternative dispute resolution process for
purposes of referral by district courts).
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prefer that access to their filings in CCB
proceedings be limited. Such a feature
might, in fact, play a role in some
parties’ determinations whether to file a
claim with the CCB or whether to opt
out of a CCB proceeding. Moreover, CCB
determinations are not precedential, and
therefore the public interest in such
proceedings is arguably less compelling
than it is in judicial proceedings.114 The
proposed rule seeks to balance public
access with the confidentiality interests
of the parties. It provides that the
official written record of a CCB
proceeding will consist of the parties’
submissions and documents issued by
the CCB. Members of the public may
inspect the available official written
record through the electronic filing
system, with the exception of any
materials that have been designated as
confidential by the parties. The Office
welcomes comment on whether there
should be additional safeguards for
parties to mutually agree to withdraw
certain types of records from public
view.
The proposed rule also addresses
other issues related to public access to
CCB proceedings and documents. The
CCB may, in its discretion, make a
transcript of a hearing using available
technology or a court reporter. The
Office anticipates that, in general, the
CCB will use standard speech to text
transcript technology that is available
with the CCB’s videoconferencing
system. At the request of a party, the
CCB may designate an official reporter
to record and/or transcribe a hearing.
The requesting party or parties will be
responsible for paying the reporter for
the cost of the official transcript
directly. The Office welcomes comment
regarding whether such informal raw
transcripts, which may contain various
errors, should be added to the official
record. Attendance at CCB hearings will
be limited to the parties and their
representatives, except with leave of the
CCB. Requests for leave to attend a CCB
hearing must be made in writing. To
certify a CCB record, the Office proposes
to utilize preexisting services through
114 See, e.g., 5 U.S.C. 574 (requiring
communications provided to a neutral during
federal alternative dispute resolution be held
confidential unless one of four statutory exceptions
apply).
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69899
its Records Research and Certification
Section.
C. Discovery
The statute allows limited discovery
in CCB proceedings. Discovery may
include ‘‘the production of relevant
information and documents, written
interrogatories, and written requests for
admission,’’ as established by Office
regulations.115 The CCB has the
discretion to approve, upon a showing
of good cause, requests for additional
relevant discovery on a limited basis.116
The CCB also may request specific
information and documents from
parties, consistent with the interests of
justice.117 In addition, the CCB may
issue a protective order to protect
confidential materials at the request of
a party and for good cause.118 The CCB
is empowered to apply an adverse
inference concerning disputed facts
against a party who fails to timely
provide relevant discovery materials in
response to a proper request, after
providing that party with notice and an
opportunity to respond.119
Congress provided for limited
discovery in CCB proceedings to
‘‘ensure that the proceedings are
streamlined and efficient.’’ 120 As
explained in the Office’s Copyright
Small Claims report, discovery in
federal courts is the ‘‘primary reason for
the length of federal court litigation’’
and is associated with ‘‘often substantial
costs and potential for abuse by
exploitative litigants.’’ 121 Consistent
with this goal, the Office proposes a
period of limited discovery involving
the use of standard CCB-issued
interrogatories and standard CCB-issued
document requests, and allowing parties
to serve limited requests for admission.
Requests for additional discovery may
be granted for good cause shown. While
the CCB may consider requests for
expert witnesses, such requests will be
disfavored.
115 17
U.S.C. 1506(n).
116 Id.
117 Id.
at 1506(n)(1).
at 1506(n)(2).
119 Id. at 1506(n)(3).
120 86 FR 16162.
121 Copyright Small Claims at 13.
118 Id.
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1. Protective Orders
The Office solicited comments related
to the issuance of protective orders and
the CCB’s handling of confidential
information, including whether the CCB
should adopt a standard model
protective order.122 Commenters
overwhelmingly endorsed the idea of a
standard protective order established at
the initiation of discovery, similar to the
procedures used by the Trademark Trial
and Appeal Board (‘‘TTAB’’).123 Some
commenters argued that an ‘‘Attorneys’
Eyes Only’’ level of confidentiality
would be inappropriate, as many parties
likely will be proceeding pro se.124
Others, however, believed that such a
designation for commercially sensitive
information would be advisable.125
The Office agrees with the suggestion
of providing a standard protective order
to be issued at the request of any party.
Under the proposed rule, once
requested by any party, this order will
govern all discovery material exchanged
over the course of the proceeding, and
will provide that discovery material
received from another party may only be
used in connection with the proceeding
and must be returned or disposed of at
the conclusion of the proceeding. The
parties may negotiate customized
protective orders that include additional
protections for highly sensitive
materials. Customized protective orders
must be approved by the CCB, and a
request for deviation from the standard
protective order must explain the need
for such deviation.
The standard protective order will
provide a single tier of confidentiality.
To promote public access and minimize
the number of sealed filings, the
proposed rule prohibits the bulk
marking of documents as ‘‘confidential’’
and mandates that confidentiality
designations be made on a documentby-document basis.
Confidential discovery materials, or
any discussions thereof, may be
submitted to the CCB in redacted form
or filed under seal. If a document is
filed under seal as part of written
testimony, a redacted version of the
document must be included in the
public record. The proposed rule also
requires the redaction of certain
122 86
FR 16162.
Reply NOI Comments at 6; Spotify
Reply NOI Comments at 3; AIPLA Initial NOI
Comments at 7; Amazon Initial NOI Comments at
7–8; Copyright Alliance, et al. Initial NOI
Comments at 27; MPA, RIAA, SIIA Initial NOI
Comments at 14–15.
124 Copyright Alliance, et al. Reply NOI
Comments at 16; MPA, RIAA & SIIA Initial NOI
Comments at 14–15.
125 Spotify Reply NOI Comments at 3; Amazon
Reply NOI Comments at 6.
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personally identifiable information from
public filings, regardless of whether the
discovery material has been marked
confidential.
2. Interrogatories
Commenters favored a limit on the
number of interrogatories permitted.126
One comment suggested that the CCB
promulgate a standard set of
interrogatories tailored to particular
categories of claims, with the option to
add a limited number of additional
questions of each party’s choosing.127
Another comment suggested that parties
be permitted to propound additional
interrogatories beyond an initial limited
number upon a showing of good
cause.128
The Office has reviewed these
suggestions and proposes that, absent
leave, interrogatories in CCB
proceedings be limited to a standard set
that is provided by the CCB through the
its website. These standard
interrogatories will, in all cases, solicit
information related to witnesses,
individuals with knowledge of the
claims and defenses, relevant
agreements between the parties,
damages, and a description of relevant
documents. The CCB will also
promulgate standard interrogatories
specifically tailored to the type of
claims at issue. For example, a party
asserting an infringement claim or
responding to a non-infringement claim
will respond to standard interrogatories
that solicit information pertaining to the
allegedly infringed work’s copyright
registration, ownership, publication
history, and creation, along with the
basis of the party’s belief that the
opposing party’s activities constitute
infringement, the discovery of the
alleged infringement, and any attempts
to cause the infringement to be ceased
or mitigated. A party responding to an
infringement claim or asserting a noninfringement claim will respond to
standard interrogatories that solicit
information pertaining to the
ownership, publication history, and
creation of the allegedly infringing
work, along with information pertaining
to the party’s defenses, any continued
use of the allegedly infringing work, and
any revenues or profits directly
attributable to the allegedly infringing
work.
126 Copyright Alliance, et al. Initial NOI
Comments at 23; Amazon Initial NOI Comments at
6–7; MPA, RIAA & SIAA Initial NOI Comments at
12.
127 Copyright Alliance, et al. Initial NOI
Comments at 23.
128 MPA, RIAA & SIAA Initial NOI Comments at
12.
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A party asserting a misrepresentation
claim under 17 U.S.C. 512(f) will
respond to standard interrogatories that
solicit information pertaining to the
notification or counter notification, the
identity of and any relevant
communications with the internet
service provider in question or with
others, the basis for the party’s belief
that the notification or counter
notification contained a
misrepresentation, and any harm caused
by the alleged misrepresentation. A
party responding to a 512(f)
misrepresentation claim will respond to
standard interrogatories that solicit
information pertaining to the basis for
its defenses and any relevant
communications with the internet
service provider in question or with
others.
Under the proposed rule, parties have
an obligation to update their
interrogatory responses, and serve these
updated responses on the other parties,
as soon as possible following the
discovery of relevant new or updated
information.
The Office welcomes any comments
concerning the standard interrogatories
set forth in the proposed rule and is
specifically interested in any comments
concerning any other categories of
information the standard interrogatories
should cover.
3. Requests for Admission
Commenters favored similar limits on
the number of requests for admission
that may be served in CCB
proceedings.129 Under the proposed
rule, parties may serve requests for
admission on each other party
concerning the facts, the application of
law to facts, opinions about either, or
the genuineness of documents. The
Office proposes that the content of
requests for admission be left to the
discretion of parties rather than making
use of standard forms. Requests for
admission must be separately stated in
numbered paragraphs, and responses
are due thirty days after service. Matters
admitted will be treated as conclusively
established, unless the CCB permits an
admission to be withdrawn or amended
on request and for good cause shown. If
a matter is not admitted, a party must
specifically deny it or state in detail
why the party cannot admit or deny it.
Any denial must fairly respond to the
substance of the request, and an answer
may specify that part of the request is
admitted and then state what is denied.
A party may assert lack of knowledge or
information in response to a request, but
129 Id.; Amazon Initial NOI Comments at 6–7;
CCIA & IA Initial NOI Comments at 4–5.
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only with a representation that the party
made a reasonable inquiry in attempting
to answer the request, but that the
information it knows or can readily
obtain is insufficient to enable it to
admit or deny the information in the
request.
While this rule is modeled after the
FRCP,130 the Office proposes a few
important modifications. First, the
number of requests for admissions
without leave of the CCB is limited to
ten, and the rule makes explicit that
compound requests are barred. In
addition, in contrast to the FRCP, if a
party fails to timely respond to a request
for admission, the matter asserted is not
automatically admitted. However, the
CCB in its discretion may deem it
admitted pursuant to its power to apply
adverse inferences with respect to
discovery violations under 17 U.S.C.
1506(n)(3).
The Office welcomes public input
into this proposed provision,
specifically whether there should be any
further limitations on the subject matter
of the requests for admission and
whether the proposed rule strikes the
proper balance in adapting the FRCP for
pro se parties.
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4. Production of Documents
Several commenters suggested that
the regulations pertaining to the
production of documents be drafted so
to avoid the production of large
amounts of electronically stored
information (‘‘ESI’’),131 as this is a
common feature of federal court
litigation that significantly increases the
costs and burdens on the parties during
discovery. These commenters suggested
that the regulations make clear that ESI
productions must be limited to what is
available through searches that a
layperson can reasonably handle and
should not require the retention of a
discovery vendor.132 One comment also
suggested that the regulations prohibit
‘‘document dumps’’ of large amounts of
irrelevant or duplicative materials.133
The Office agrees with these
suggestions. Under the proposed rule,
the CCB will provide standard
document production requests that will
be available on its website. As with the
standard interrogatories, these
document requests will always involve
certain common categories—such as
130 Fed.
R. Civ. Pro. 36.
Alliance, et al. Initial NOI
Comments at 25–26; MPA, RIAA & SIIA Initial NOI
Comments at 13–14.
132 Copyright Alliance, et al. Initial NOI
Comments at 25–26; MPA, RIAA & SIIA Initial NOI
Comments at 13–14.
133 Copyright Alliance, et al. Initial NOI
Comments at 26.
131 Copyright
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documents the party is likely to use in
support of its claims or defenses,
documents the party is aware of which
conflict with its claims or defenses, and
documents related to damages—as well
as document requests specific to the
type of claim at issue. A party asserting
infringement or responding to a noninfringement claim will be required to
produce a copy of the allegedly
infringed work and allegedly infringing
material (if applicable and available to
the claimant), agreements related to the
works at issue, ownership of the
allegedly infringed work, pertinent
documents where the allegedly
infringed work is a derivative work,
documents related to the allegedly
infringing work, and documents relating
to attempts to cause the alleged
infringement to be ceased or mitigated.
A party responding to an infringement
claim or asserting a non-infringement
claim will be required to produce a copy
of the allegedly infringing material,
agreements related to the works at issue,
documents related to the creation of the
allegedly infringing material, documents
pertaining to the allegedly infringed
material, and documents relating to any
revenues and profits directly
attributable to the allegedly infringing
material. With respect to section 512(f)
misrepresentation claims, parties will be
required to produce a copy of the
notification or counter notification at
issue, communications with the relevant
internet service provider or others
related to the notification or counter
notification, and documents pertaining
to the truth or falsity of any
representations made in the notification
or counter notification.
In responding to document requests,
each party must conduct a reasonable
search for responsive documents within
its possession or under its control,
including in the files of its agents,
employees, representatives, or others
acting on its behalf. Responsive
documents may include ESI. In line
with commenters’ suggestions, however,
a reasonable search of ESI shall not
exceed manual searches that are easily
accomplished by a layperson and need
not include searches that require the
assistance of third parties, such as a
document vendor. Responses to
document requests that include large
amounts of irrelevant or duplicative
material will constitute bad-faith
conduct. Under the proposed rule, a
party has an obligation to disclose the
existence of any responsive materials
that are no longer in its possession and
explain why they are no longer in its
possession. A party also has an
obligation to supplement its production
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as soon as practicable if it later finds
responsive documents.
The Office solicits comments as to
this proposed rule. The Office is
specifically interested in any comments
related to whether the proposed rule
will sufficiently limit the scope and size
of document productions in CCB
proceedings. The Office welcomes any
suggestions pertaining to mechanisms
for further limiting the scope of
productions, as well as any other
categories of relevant documents that
should be included in the standard
document production requests.
5. Disputes and Sanctions
The proposed rule requires parties to
attempt to resolve discovery disputes in
good faith without involving the CCB, a
principle found in the FRCP.134 Parties
must meet and confer, at least through
a phone call, to attempt to reach a
resolution prior to raising a discovery
dispute with the CCB. If such an attempt
fails, a party seeking discovery may file
a short letter describing the dispute and
seeking a conference with the CCB, and
an opposing party will have an
opportunity to file a response prior to
the conference. The CCB may then hold
a conference and issue an order
resolving the dispute either during or
following the conference and, if
applicable, set a deadline for
compliance.
If the party fails to timely comply, the
party seeking discovery may send a
notice to the allegedly noncompliant
party that provides an additional ten
days to comply. If the allegedly
noncompliant party still fails to comply,
the party seeking discovery may request
that the CCB impose sanctions. This
request may be no longer than ten pages,
plus supporting documents, and the
opposing party will have an opportunity
to file a response. The CCB may hold a
conference to address the request for
sanctions and will impose sanctions in
its sole discretion and upon good cause
shown where the opposing party is
found to be noncompliant with the
CCB’s discovery order. The sanctions
imposed by the CCB may include an
adverse inference against the
noncompliant party regarding the facts
directly related to the disputed
discovery. The proposed rule provides
that the CCB may also consider
imposing sanctions when awarding
attorneys’ fees and costs during a final
determination.
The Office is interested in comments
concerning whether this proposed rule
strikes the proper balance between the
interests and rights of the respective
134 Fed.
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parties. The Office is also interested in
comments concerning whether it has the
authority to issue any monetary
sanctions specifically related to a
discovery dispute.
D. Evidence
The statute sets out specific categories
of evidence that the CCB may consider
in making a determination:
Documentary and other nontestimonial
evidence, sworn written testimony, and
oral testimony taken at a hearing.135 In
exceptional cases, expert witness
testimony or other types of testimony
may be permitted for good cause
shown.136 Testimony may be admitted
without application of formal rules of
evidence.137 The Office solicited
comment regarding applicable standards
for evidence and received comments
suggesting that the CCB look to outside
sources for establishing evidence
standards, such as immigration
courts 138 and the Copyright Royalty
Board (‘‘CRB’’).139
The proposed rule for evidentiary
standards is modeled after the CRB’s
rule,140 as applicable. The Office
proposes adopting the general standard
of accepting all evidence that is relevant
and not unduly repetitious or
privileged, as well as the CRB’s
standards for testimony and objections
at hearings. In addition, the proposed
rule clarifies the role of FRE 401 and
403, and reserves the CCB’s right to
discount or exclude evidence with
serious credibility issues. It also
establishes that only documentary
evidence submitted during the written
testimony phase may be introduced at a
hearing, except evidence required
during cross-examination or redirect
examination. The Office has not
incorporated the CRB’s provision
requiring that physical copies of
evidentiary materials be provided to all
parties, due to the online nature of CCB
proceedings.141 Similarly, due to the
nature of CCB proceedings, the Office
also does not incorporate the CRB’s
standards regarding the introduction of
studies and analyses.
The proposed rule further provides
that testifying witnesses at hearings
must take an oath or affirmation prior to
their testimony. Parties may conduct
direct examination, cross-examination,
and redirect examination, but the CCB
may limit the number of witnesses who
135 17
U.S.C. 1506(o).
136 Id.
137 Id.
at 1506(o)(2).
Initial NOI Comments at 8.
139 Copyright Alliance, et al. Initial NOI
Comments at 22.
140 37 CFR 351.10.
141 Id. at § 351.10(d).
138 AIPLA
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testify or the scope of the questioning.
Parties will be entitled to raise
objections to evidence during the
hearing, and the Board will consider
those objections if based on valid
reasoning, even if not based on the
technical rules of evidence.
E. Written Testimony
The CCB is barred from instituting
formal motion practice except that it
‘‘may request or permit parties to make
submissions addressing relevant
questions of fact or law, or other
matters, including matters raised sua
sponte by the Officers, and offer
responses thereto.’’ 142 The CCB is
further allowed to hear various
‘‘requests’’ from the parties.143 As part
of its broad flexibility to regulate CCB
proceedings,144 the Office proposes a
process of written testimony at the close
of discovery that establishes the legal
and factual basis for the dispute. The
Office intends that this process may
establish the entire record for the CCB’s
consideration and that hearings will be
held at the CCB’s discretion and as set
forth below.
A claimant or counterclaimant begins
the process by submitting written direct
testimony in support of its claim or
counterclaim. Any party subsequently
responding to that claim shall file
written response testimony thirty days
following service of the direct
testimony. Finally, the original claimant
or counterclaimant may, but is not
required to, file written reply testimony
fourteen days following service.
Direct and responsive testimony
comprises documentary evidence,
witness statements, and party
statements. Documentary evidence
consists of non-testimonial evidence
sponsored by a witness with knowledge
of its contents and authenticity, unless
the document was produced by an
opposing party. Such evidence must
have been served on the opposing
parties, and accompanied by a
numbered document list that briefly
describes each document included.
Witness statements consist of sworn
written testimony, from non-expert
witnesses unless leave for experts has
been granted, testifying to factual
information based on the witness’s
personal knowledge, and sponsoring
certain documents in the document list.
A party statement is a brief statement of
no more than twelve double-spaced
pages that sets forth a party’s position as
to key facts, the law, and damages. For
a claimant, such damages information
includes whether it is seeking statutory
or actual damages and any profits of an
alleged infringer. For a respondent, such
information includes whether it would
voluntarily agree to an order stopping it
from engaging in activities found
unlawful; 145 such an agreement may be
taken into account by the CCB in
determining damages. Both elections
may be changed prior to a final
determination, and a respondent’s
agreement to an injunction will not be
considered in any way when reviewing
liability. Reply testimony may only
include new documentary evidence and
witness statements to the extent that
they are required to contradict or rebut
evidence presented by the opposing
party in its response.
F. Hearings
In the course of a proceeding, the CCB
may conduct hearings.146 Hearings on
the merits may be held as long as there
are no fewer than two Officers to
‘‘receive oral presentations on issues of
fact or law from parties and witnesses
to a proceeding.’’ 147 These hearings,
whenever possible, are to be carried out
online or by phone, ‘‘except that, in
cases in which physical or other
nontestimonial evidence material to a
proceeding cannot be furnished to the
Copyright Claims Board through
available telecommunications facilities,
the [Board] may make alternative
arrangements . . . that do not prejudice
any other party to the proceeding.’’ 148
The hearing must be noted in the record
and transcribed.
The Office proposes that a hearing not
be required at the close of written
testimony, but may be held at the CCB’s
discretion, and may be convened on the
CCB’s own initiative or upon a request
from any party for a hearing. A party
need not give detailed reasons for its
request for a hearing, but the request
must be included in a party statement
submitted during the written testimony
phase. Once the hearing has been
conducted, no additional testimony or
evidence may be submitted, except as
set forth in post-determination
proceedings.
The Office understands that while
alternative arrangements may be made
for the submission of material physical
or nontestimonial evidence that cannot
be furnished virtually, the statute
appears to require virtual hearings.149
However, the Office is interested in
providing a mechanism for in-person
145 Id.
at 1504(e)(2).
at 1503(a)(1)(E).
147 Id. at 1506(p).
148 Id. at 1506(c)(2).
149 Id.
146 Id.
142 17
U.S.C. 1506(m)(2).
at 1506(m)(1).
144 Id. at 1506(a)(1), 1510(a)(1).
143 Id.
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hearings in the circumstance where
such a hearing is requested by all parties
and all parties can attend. The Office
welcomes comments regarding this
provision and whether the statute can
be read to allow in-person hearings
when requested by all parties and where
all parties can attend.
G. Post-Determination Proceedings
After a determination is rendered, the
CCB may reconsider it for clear error of
law or fact upon request of a party.150
If reconsideration is denied, the Register
of Copyrights may review the CCB’s
decision upon request of a party to
determine whether there was an abuse
of discretion in denying
reconsideration.151 The Office requested
comment on both post-determination
proceedings, and proposes regulations
as further set forth below.
1. Request for Reconsideration
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The CCB’s determinations are subject
to reconsideration or amendment by the
CCB itself, if a party submits a written
request within thirty days of the final
determination.152 After providing other
parties an opportunity to address the
request for reconsideration, the CCB
shall either deny the request or issue an
amended final determination.153 The
request should not merely repeat
previous arguments made before the
CCB, and the CCB will not accept new
evidence unless a party demonstrates
through clear and convincing evidence
that the evidence was not available in
the exercise of reasonable diligence
prior to the submission of written
testimony. After the requesting party
sets forth the purported error that it
believes was material to the outcome or
a technical mistake, the non-requesting
party has the opportunity to respond or
otherwise oppose the points made. The
Office proposes that responses to
requests for reconsideration be filed
within twenty-one days after service of
a request for reconsideration, and that
each party’s brief may be no more than
twelve double-spaced pages. The Office
has not included a provision for a reply
to the response by the requesting party
before the CCB renders a decision, as
the statute contemplates only ‘‘an
opportunity [for other parties] to
address [the] request.’’ 154
2. Register’s Review
Where the CCB denies a party’s
request for reconsideration of a final
at 1506(w).
at 1506(w), (x).
152 Id. at 1506(w).
153 Id.
154 Id. at 1506(x).
determination in whole or in part, that
party can request that the Register
review the determination. Such review
‘‘shall be limited to consideration of
whether the Copyright Claims Board
abused its discretion in denying
reconsideration of the
determination.’’ 155 A request must be
accompanied by ‘‘a reasonable filing
fee,’’ to be established by regulation.156
After other parties have had an
opportunity to address the
reconsideration request, the Register
must either ‘‘deny the request for
review, or remand the proceeding to the
Copyright Claims Board for
reconsideration of issues specified in
the remand and for issuance of an
amended final determination.’’ 157 The
Office sought public input on any issues
relating to the Register’s review,
including regulatory standards for the
substance of a request, a reasonable
filing fee, and post-review
procedures.158
Under the proposed rule, a party may
request the Register’s review within 30
days of a denial of a request for
reconsideration. The request must
identify what the requesting party
believes to be the CCB’s abuse of
discretion in denying the request for
reconsideration and must be
accompanied by a filing fee. The Office
proposes that responses be filed within
twenty-one days after service of a
request for Register’s review, following
procedures similar to those set forth
above with regard to a request for
reconsideration filed with the CCB.
Only evidence that was previously
submitted to the CCB as part of written
testimony, at a hearing, or in response
to a specific request for evidence from
the CCB may be submitted as part of the
Register’s review process.
The statute provides ‘‘[i]f the
Copyright Claims Board denies a party
a request for reconsideration of a final
determination, . . . that party may . . .
request review.’’ 159 This provision is
silent as to the non-requesting party’s
ability to request the Register’s review if
it loses the reconsideration request. That
seems to suggest that only a party who
has unsuccessfully requested
reconsideration by the CCB may seek
Register review, but not the nonrequesting party, even where the request
was successful and the determination is
amended. Accordingly, the Office has
not included a provision for the nonmoving party to request review of an
150 Id.
155 Id.
151 Id.
156 Id.
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158 86
159 17
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U.S.C. 1506(x).
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amended final determination. The
Office invites comment on this issue, as
well as the appropriateness of allowing
the party which did not seek
reconsideration, but which now finds
itself on the losing end of the matter, to
seek reconsideration of an amended
final determination (i.e., reconsideration
of the reconsideration) without
relitigating issues the CCB has already
considered.
Finally, the Office proposes a $300 fee
to request the Register’s review. In
setting this fee, the Office finds that the
fee applicable to a second request for
reconsideration of a denial of
registration provides a useful analogue.
When the Registration Program refuses
to register a work, the applicant has two
opportunities to request
reconsideration. The first request is
considered within the Registration
Program. Second requests are
considered by the Register or her
designee, the General Counsel, and a
third senior member of the Office.160
The fee for a second reconsideration is
$700,161 though the actual cost for
providing the service is $4,471.162 The
Office anticipates that the Register’s
review of a CCB determination will
operate in a similar manner and will
necessarily involve the time and
expertise of the Register and senior staff.
Setting the fee at $300 reasonably
reflects the narrower scope of review
under this procedure as compared to
registration requests for reconsideration
and, in combination with the proposed
filing fee for initiating a claim,163
complies with the statutory ceiling of
$402.164
List of Subjects
37 CFR Part 201
Copyright, General provisions.
37 CFR Part 220
Claims, Copyright, General.
37 CFR Part 222
Claims, Copyright.
160 See generally U.S. Copyright Office,
Compendium of U.S. Copyright Practices, ch. 1700
(3d ed. 2021).
161 37 CFR 201.3(d)(4)(ii).
162 Booz Allen Hamilton, 2017 Fee Study Report
2, 26 (2017), https://www.copyright.gov/
rulemaking/feestudy2018/fee_study_report.pdf.
163 See 86 FR 53905 (proposed 37 CFR
201.3(g)(1)).
164 17 U.S.C. 1501(c) (setting the sum total of
filing fees as no less than $100 and no more than
the cost of filing an action in a district court of the
United States). The statutory fee for filing suit in a
federal district court is $350, 28 U.S.C. 1914(a), and
an additional fee of $52 is charged as an
administrative fee by the Judicial Conference of the
United States. Id.
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37 CFR Part 225
Claims, Copyright.
Subchapter A—Copyright Office and
Procedures
37 CFR Part 232
Claims, Copyright.
37 CFR Part 226
Claims, Copyright.
PART 201—GENERAL PROVISIONS
37 CFR Part 233
1. The authority citation for part 201
continues to read as follows:
■
Claims, Copyright.
37 CFR Part 227
Proposed Regulations
Claims, Copyright.
For the reasons stated in the
preamble, the U.S. Copyright Office
proposes to further amend chapter II,
subchapters A and B, of title 37 Code of
Federal Regulations, as proposed to be
amended at 86 FR 53897 (September 29,
2021), as follows:
37 CFR Part 228
Claims, Copyright.
37 CFR Part 229
Claims, Copyright.
37 CFR Part 230
Claims, Copyright.
37 CFR Part 231
Authority: 17 U.S.C. 702.
Section 201.10 also issued under 17 U.S.C.
304.
2. In § 201.3, revise the first column
heading in table 4 to paragraph (g) and
add paragraph (g)(3) to read as follows:
■
§ 201.3 Fees for registration, recordation,
and related services, special services, and
services performed by the Licensing
Section and the Copyright Claims Board.
*
Claims, Copyright.
*
*
(g) * * *
*
*
TABLE 4 TO PARAGRAPH (g)
Fees
($)
Copyright claims board fees
*
*
*
*
*
*
(3) Filing fee for review of a final CCB determination by the Register ...............................................................................................
Subchapter B—Copyright Claims Board and
Procedures
■
3. Revise part 220 to read as follows:
PART 220—GENERAL PROVISIONS
Sec.
220.1
220.2
220.3
220.4
Definitions.
Authority and functions.
Handbook.
Timing.
Authority: 17 U.S.C. 702, 1510.
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§ 220.1
Definitions.
For purposes of this subchapter:
(a) A claim becomes an active
proceeding when the claimant has filed
proof of service and the respondent has
not, within the sixty day opt-out period,
submitted an opt-out notice to the
Copyright Claims Board.
(b) Bad-faith conduct occurs when a
party pursues a claim, counterclaim, or
defense for a harassing or other
improper purpose, or without a
reasonable basis in law or fact. Such
conduct may occur at any point during
a proceeding, including before a
proceeding becomes an active
proceeding.
(c) A default determination is a final
determination issued as part of the
default procedures set forth in 17 U.S.C.
1506(u) when the respondent does not
participate in those procedures.
(d) A final determination is a decision
that concludes an active proceeding
before the Board and is binding only on
the participating parties. A final
determination generally assesses the
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merits of the claims in the proceeding,
except when issued to dismiss a
claimant’s claims for failure to
prosecute.
(e) Standard interrogatories are
written questions provided by the Board
that a party in an active proceeding
must answer as part of discovery.
(f) An initial notice means the notice
of a proceeding that accompanies a
claim or counterclaim in a Copyright
Claims Board proceeding as described
in 17 U.S.C. 1506(g).
(g) A second notice means the notice
of a proceeding sent by the Copyright
Claims Board as described in 17 U.S.C.
1506(h).
(h) Standard production of document
requests are written requests provided
by the Board requiring a party to
provide documents, other information,
or tangible evidence as part of discovery
in an active proceeding.
§ 220.2
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300
Handbook.
The Copyright Claims Board may
issue a handbook explaining the Board’s
practices and procedures. The handbook
may be viewed, downloaded, or printed
from the Board’s website. The handbook
will not override any existing statute or
regulation.
§ 220.4
Timing.
When the start or end date for
calculating any deadline set forth in this
subchapter falls on a weekend or a
Federal holiday, the start or end date
shall be extended to the next Federal
workday. Any document subject to a
deadline must be either submitted to the
electronic filing system by 11:59 p.m.
Eastern Time on the date of the deadline
or dispatched by the date of the
deadline.
PART 222—PROCEEDINGS
4. The authority citation for part 222
continues to read as follows:
■
Authority: 17 U.S.C. 702, 1510.
Authority and functions.
The Copyright Claims Board
(‘‘Board’’) is an alternative forum to
Federal court in which parties may
voluntarily seek to resolve certain
copyright-related claims regarding any
category of copyrighted work, as
provided in chapter 15 of title 17 of the
United States Code. The Board’s
proceedings are governed by title 17 of
the United States Code and the
regulations in this subchapter.
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§ 220.3
*
■
5. Add § 222.1 to read as follows:
§ 222.1 Applicability of the Federal Rules
of Civil Procedure and Federal Rules of
Evidence.
The rules of procedure and evidence
governing proceedings before the
Copyright Claims Board (‘‘Board’’) are
set forth in this part. Parties may cite to
the Federal Rules of Civil Procedure or
the Federal Rules of Evidence (‘‘FRE’’)
as persuasive authority. The Board may
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consider arguments referencing the
Federal Rules of Civil Procedure or FRE,
but is not bound by the Federal Rules
of Civil Procedure or FRE, and will only
consider them to the extent that they are
persuasive in the context of this
subchapter.
■ 6. Add §§ 222.10 through 222.19 to
read as follows:
*
*
*
*
*
Sec.
222.10
222.11
222.12
222.13
222.14
222.15
222.16
222.17
222.18
222.19
*
*
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§ 222.10
Scheduling order.
Amending pleadings.
Consolidation or severance.
Additional parties.
Written testimony on the merits.
Hearings.
Withdrawal of claims; dismissal.
Settlement.
Protective orders.
Evidence.
*
*
§ 222.11
*
Scheduling order.
(a) Timing. Upon confirmation that a
proceeding becomes an active
proceeding, the Board shall issue an
initial scheduling order.
(b) Content of initial scheduling order.
The scheduling order shall include the
dates or deadlines for:
(1) Filing of a response to the claim
by the respondent;
(2) A pre-discovery conference with a
Copyright Claims Officer (‘‘Officer’’) to
discuss case management, including
discovery, and the possibility of
resolving the claims and any
counterclaims through settlement;
(3) Service of responses to standard
interrogatories;
(4) Service of requests for admission;
(5) Service of documents in response
to standard production of document
requests;
(6) Requests for leave to seek
additional discovery;
(7) Close of discovery;
(8) A post-discovery conference with
an Officer to discuss further case
management, including the need for any
additional discovery, and the possibility
of resolving the claims and any
counterclaims through settlement; and
(9) Filing of each party’s written
testimony and responses, pursuant to
§ 222.14.
(c) Conferences. In addition to those
identified in paragraph (b) of this
section, the Board may hold additional
conferences to manage the proceedings
and resolve disputes, at its own election
or at the request of any party.
Conferences may be held by one or more
Officers and shall be held virtually.
(d) Amended scheduling order. The
Board may amend the initial scheduling
order—
(1) Upon the clearance of a
counterclaim by a Copyright Claims
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Attorney pursuant to 37 CFR 224.1(c)(1),
to add a deadline for the service of a
response by a claimant to a
counterclaim and to amend other
previously scheduled dates in the prior
scheduling order;
(2) Upon request of one or more of the
parties to an active proceeding
submitted through the Board’s
electronic filing system;
(3) As necessary to adjust the
schedule for conferences or hearings or
the staying of any proceedings;
(4) As necessary to facilitate
settlement pursuant to § 222.17; or
(5) Upon its own initiative in the
interests of maintaining orderly
administration of the Board’s docket.
Amending pleadings.
(a) Amendments before service. A
party may freely amend its pleading
once as a matter of course prior to
service of its claim or counterclaim. Any
claim or counterclaim that is amended
shall be submitted for a compliance
review by a Copyright Claims Attorney.
(b) Amendments during the opt-out
period. A claimant seeking to amend a
claim during the opt-out period may do
so only with leave of the Board.
(1) Requests for leave to amend. To
request the Board’s leave, the claimant
must submit a letter to the Board, no
longer than five pages in length, setting
forth the reasons why an amended claim
is appropriate. In determining whether
to grant leave to amend a pleading, the
Board shall freely grant leave if justice
so requires after considering whether
the basis for the amendment reasonably
should have been known to the claimant
before the claim was served or during
the time period specified in paragraph
(a) of this section, along with any other
relevant considerations.
(2) Compliance review of amended
claims. If the Board grants leave to
amend a claim, any amendment shall be
submitted by the claimant for a
compliance review by a Copyright
Claims Attorney.
(3) Time for service of the amended
claim. The claimant shall serve the
amended claim on the respondent
within 14 days after a Copyright Claims
Attorney finds it to be compliant.
(4) Extension of the opt-out period.
The respondent shall have 60 days from
service of the amended claim to opt out
of the proceeding pursuant to 37 CFR
223.1.
(c) Non-infringement claims or
defenses or misrepresentation claims. A
party asserting non-infringement or
defending against a claim of
infringement or misrepresentation may
amend its pleading after service of its
initial responses to standard
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69905
interrogatories, where the party
disclosed additional defenses beyond
those set forth in the initial pleading.
Such amendment shall be as a matter of
right.
(d) All other amendments. In all other
cases, a party may amend its pleading
only with the Board’s leave. If the Board
grants leave, any amendment shall be
submitted for a compliance review.
(1) Time to respond. Unless the Board
orders otherwise, any required response
to an amended pleading must be made
within the time remaining to respond to
the original pleading or within 21 days
after the Board’s notification that the
amended pleading is compliant,
whichever is later.
(2) Procedure for request for leave to
amend. The party seeking leave to
amend must submit a short letter to the
Board, no longer than five pages in
length, setting forth the reasons why an
amended pleading is appropriate. Any
other party may file a response, no
longer than five pages in length, within
14 days of the date of service of the
request for leave to amend, stating its
views concerning the request. No reply
letters shall be permitted unless the
Board grants leave.
(3) Standard for granting leave to
amend. In determining whether to grant
leave to amend a pleading, the Board
shall freely grant leave if justice so
requires after considering whether any
other party will be prejudiced if the
amendment is permitted (including the
impact the amendment might have on a
respondent’s right to opt out of the
proceeding), whether the proceedings
will be unduly delayed if the
amendment is permitted, and whether
the basis for the amendment reasonably
should have been known to the
amending party before the pleading was
served or during the time period
specified in paragraph (a) of this
section, along with any other relevant
considerations.
§ 222.12
Consolidation or severance.
(a) Consolidation. If a claimant has
multiple active proceedings against the
same respondent or that arise out of the
same facts and circumstances, the Board
may consolidate the proceedings for
purposes of conducting discovery,
submitting evidence to the Board, or
holding hearings. Consolidated
proceedings shall remain separate for
purposes of Board determinations and
any damages awards.
(b) Severance. If a single proceeding
includes distinct claims involving
disparate facts and circumstances that
would be difficult, time-consuming, or
otherwise inappropriate to resolve in a
single proceeding, the Board may sever
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the proceedings with respect to some or
all parties, claims, and issues. Severed
proceedings shall be treated as one
proceeding for purposes of statutory
damages. The Board may in its
discretion dismiss one of the severed
proceedings as unsuitable for resolution
under these regulations without
dismissing other severed proceedings.
(c) Timing. The Board may
consolidate or sever proceedings at any
time upon its own authority or
following consideration of a request by
any party, with reasonable notice and
opportunity to be heard provided to all
affected parties.
(d) Procedure. The party seeking
consolidation or severance must submit
a short letter to the Board, no longer
than five pages in length, setting forth
the reasons for the request, requesting a
conference with the Board and the
parties from each affected case, and, in
the case of a request for consolidation,
providing the Board with the docket
numbers for each affected proceeding.
Parties opposing consolidation or
severance may file a response letter, no
longer than five pages in length, within
14 days of the date of service of the
request for consolidation or severance,
objecting to the request. No reply letters
shall be permitted, unless the Board
grants leave for a reply.
(e) Standard for granting request. In
determining whether to grant a request
to consolidate or sever, the Board shall
consider whether consolidation or
severance is necessary and balance that
need with the timeliness of the request
and whether any undue prejudice has
resulted from the delay in making the
request.
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§ 222.13
Additional parties.
(a) When applicable. A necessary
party is a person or entity whose
absence would prevent the Board from
according complete relief among
existing parties, or who claims an
interest related to the subject of the
proceeding such that reaching a
determination in the proceeding may
impair or impede that person’s or
entity’s ability to protect that interest as
a practical matter, or in whose absence
an existing party would be subject to a
substantial risk of incurring double,
multiple, or inconsistent obligations
because of that interest.
(b) Failure to join a necessary party.
At any time, any party who believes in
good faith that a necessary party has not
been joined may file a letter, no longer
than three pages in length, notifying the
Board of the failure to join the necessary
party and providing the basis for such
belief. An opposing party may file a
response, no longer than three pages in
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length, within 14 days of the date of
service of the letter, in opposition. If the
Board determines that a necessary party
has not been joined, it shall dismiss the
proceeding without prejudice.
(c) Intervention of a necessary party.
At any time, a necessary third party
seeking to intervene may file a letter, no
longer than three pages in length, setting
forth the reasons for the request and
requesting a conference with the Board.
Within 14 days of the date of service
request, each party to the proceeding
shall file a letter, no longer than three
pages in length, indicating whether it
agrees that the intervening party is a
necessary party, and the basis thereof, or
whether it opposes the intervention.
After evaluating the parties’ letters, the
Board may hold a conference between
the parties to the proceeding and the
intervening party to address the request.
(d) Board determination. (1) If the
Board determines that the intervening
party is not a necessary party, it shall
deny the request and resume the
proceeding, unless all parties agree that
the party should be joined.
(2) If the Board determines that the
intervening party is a necessary party, it
shall—
(i) Permit the intervening party to join
the proceeding, if no party indicated
that it opposed the request to intervene;
or
(ii) Dismiss the proceeding without
prejudice, if any party indicated that it
opposed the request to intervene.
§ 222.14
Written testimony on the merits.
(a) Timing. At the times specified
within the scheduling order, any party
asserting a claim or counterclaim shall
file written direct testimony in support
of that claim or counterclaim. Any party
responding to a claim or counterclaim
shall file written response testimony
within 30 days following the date of
service of written direct testimony. Any
party who asserted a claim or
counterclaim may file written reply
testimony within 14 days following the
date of service of written response
testimony.
(b) Direct and response testimony.
Written direct and response testimony
shall consist of documentary evidence,
witness statements, and a party
statement.
(1) Documentary evidence. (i)
Documentary evidence must be
accompanied by a statement that lists
each attached document and provides a
brief description of each document and
how it bears on a claim or counterclaim;
(ii) Each document must be sponsored
by a witness with knowledge of its
contents and authenticity, unless the
document statement states that the
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document was produced by an opposing
party during discovery; and
(iii) Direct or response documentary
evidence shall only include documents
that were served on opposing parties
pursuant to the scheduling order, absent
leave from the Board, which shall be
granted only for good cause.
(2) Witness statements. A witness
statement must—
(i) Be sworn under penalty of perjury
by the witness;
(ii) Be detailed as to the substance of
the witness’s knowledge and must be
organized into numbered paragraphs;
(iii) Contain only factual information
based on the witness’s personal
knowledge and may not contain legal
argument; and
(iv) Reference any documents
included in the document statement
that are sponsored by the witness, with
a brief statement as to the basis for the
witness’s knowledge of the document’s
authenticity.
(3) Party statement. A party
statement—
(i) Shall set forth the party’s position
as to the key facts, laws, and damages;
(ii) Need not have a table of contents
or authorities;
(iii) Shall have a title page with the
case’s caption and the title of the
document (e.g., Party Statement of
Respondent John Doe);
(iv) Shall be limited to 12 doublespaced pages, not including the title
page or any signatures or certificates of
service, in 12-point font or larger for
both body text and footnotes, with at
least one-inch margins on the top,
bottom, left, and right of each page;
(v) For a claimant or counterclaimant
seeking damages, shall include a
statement as to whether the party is
seeking statutory damages or actual
damages and any profits. This election
may be changed at any time up until
final determination by the Board; and
(vi) For a respondent or counterclaim
respondent, may include a statement as
to whether, if found liable on a claim or
counterclaim, the party would
voluntarily agree to an order stopping it
from engaging in the activities found
unlawful in the future as specified in 17
U.S.C. 1504(e)(2). Such an election may
be considered in appropriate cases by
the Board in determining an amount of
damages, if any, pursuant to 17 U.S.C.
1504, and such election may be changed
at any time up until final determination
by the Board. The statement shall take
the following form: ‘‘[Claim/
Counterclaim] respondent agrees that if
it is found liable, it agrees to an order
that it will stop the activity found to be
unlawful.’’ Such a statement will not be
considered by the Board in any way in
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making its determination as to liability,
and shall be considered only as to
damages.
(c) Reply testimony. Written reply
testimony must be limited to addressing
or rebutting specific evidence set forth
in written response testimony. Written
reply testimony may consist of
documentary evidence, witness
statements, and a party statement as set
forth in this paragraph (c).
(1) Documentary evidence. In addition
to the requirements of paragraph (b)(1)
of this section, documentary evidence
presented by a party as part of written
reply testimony must be limited to
documentary evidence required to
contradict or rebut specific evidence
that was presented in an opposing
party’s written response testimony and
shall not include any documentary
evidence previously presented as part of
the submitting party’s direct testimony.
(2) Witness statements. In addition to
the requirements of paragraph (b)(2) of
this section, a reply witness statement
must be limited to facts not previously
included in that witness’s prior
statement, and must be limited to facts
that contradict or rebut specific
evidence that was presented in an
opposing party’s written response
testimony. The reply witness’s
statement must refer to any documents
the reply witness is sponsoring in the
same manner as set forth in paragraph
(b)(2) of this section.
(3) Party statement. A party statement
in reply must be limited to rebutting or
addressing an opposing party’s written
response testimony and may not include
any discussion of the facts, the law, or
damages that was included in that
party’s direct party statement. A reply
party statement is subject to the same
formatting rules set forth in paragraph
(b)(3) of this section except that it must
be limited to 7 double-spaced pages, not
including the title page or any
signatures or certificates of service, in
12-point font or larger for both body text
and footnotes, with at least one-inch
margins on the top, bottom, left, and
right of each page.
(d) Certification. All written
testimony submitted to the Board must
include a certification by the party
submitting such testimony that it is
accurate and truthful.
(e) Request for hearing. Any party
may include in a party statement a
request for a hearing on the merits
before the Board, consistent with
§ 222.15.
(f) No additional filing. Following
filing of any written reply testimony, no
further written testimony or evidence
may be submitted to the Board, unless
at the specific request of the Board, or
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as appropriate at a hearing on the merits
ordered by the Board.
§ 222.15
Hearings.
(a) Timing. In any action, the Board
may hold a hearing following
submission of each party’s written
direct, response, and reply testimony if
it determines that such a hearing is
appropriate or advisable. The Board
may decide to hold a hearing on its own
initiative or after consideration of a
request for a hearing from any party.
(b) Virtual hearings. All hearings shall
be held virtually and may be recorded
as deemed necessary by the Board.
(c) Requesting a hearing. A request for
a hearing on the merits of a case must
be included in a party statement,
pursuant to § 222.14(e). The Board, in
its sole discretion, shall choose whether
to hold a hearing, and may elect to hold
a hearing absent a request from a party.
(d) Content of request. Any request in
a party statement for a hearing on the
merits of a case shall consist of a short
statement to the following effect: ‘‘[Party
name] requests a hearing pursuant to 37
CFR 222.14(e).’’ The statement should
include the reasons why the party
believes the request should be granted.
(e) Scheduling order. When the Board
determines that a hearing on the merits
of a case is appropriate, it will issue an
amended scheduling order setting forth
the date of the hearing and deadlines for
any additional evidence requested by
the Board or for a pre-hearing
conference, if applicable.
(f) Close of evidence. Following a
hearing on the merits of a case, no
additional written testimony or
evidence may be submitted to the Board
unless at the Board’s specific request.
§ 222.16
Withdrawal of claims; dismissal.
A party may request to withdraw its
own claim or counterclaim by filing a
written request with the Board seeking
withdrawal, and therefore dismissal.
Such written request shall consist of a
brief statement seeking dismissal and
shall be signed by the party seeking the
dismissal.
(a) Before a response. If the written
request is received before a response to
the claim or counterclaim is filed with
the Board, the Board shall dismiss the
claim or counterclaim without
prejudice, unless all parties agree in a
written stipulation filed with the Board
that the claim or counterclaim shall be
dismissed with prejudice.
(b) After a response. If the written
request is received after a response to
the claim or counterclaim is filed with
the Board, the Board shall issue a final
determination dismissing the claim or
counterclaim with prejudice, unless the
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Board determines in the interests of
justice that such dismissal shall be
without prejudice or all parties agree in
a written stipulation filed with the
Board that the claim or counterclaim
shall be dismissed without prejudice.
(c) Effect of dismissal. Dismissal of a
claim or counterclaim under this section
will not affect remaining claims or
counterclaims in the proceeding.
§ 222.17
Settlement.
(a) General. The Board shall
encourage voluntary settlement between
the parties of any claims or
counterclaims. The appropriateness of a
settlement conference, at a minimum,
shall be raised at the pre-discovery and
post-discovery conferences set forth in
§ 222.10(b).
(b) Requesting settlement
conference—(1) Timing. At any point in
an active proceeding, some or all of the
parties may jointly request a conference
with an Officer to facilitate settlement
discussions.
(2) Form and content of request. The
request can be made orally at any Board
conference or it can be made in writing.
If made in writing, the request shall
consist of a brief letter requesting a
settlement conference and indicating
which parties join in the request. The
parties may also include in such letter
a request to stay the proceedings while
settlement discussions are ongoing.
Granting a request for a stay shall be at
the Board’s discretion.
(3) Response to request. Any party
that objects to the request for a
settlement conference, or joins in the
request for a settlement conference but
not a request for a stay of proceedings,
may file a response with the Board
within seven days of the date of service
of the request seeking a settlement
conference. Such response shall consist
of a brief letter indicating that the party
objects to a settlement conference, or a
stay of proceedings, and stating the
basis for that objection.
(c) Scheduling settlement conference.
If the request for a settlement
conference, and any request for a stay,
is jointly made among the parties, or if
no party files a response within seven
days of the date of service of the request,
the Board shall schedule a settlement
conference with all parties subject to the
request. If one or more parties files a
response, upon consideration of the
objections and whether any claims or
counterclaims may be resolved with
only the consenting parties in
attendance, the Board may schedule a
conference with some or all parties.
(d) Settlement proceedings. Three
days prior to a settlement conference,
each party participating in the
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conference shall submit a position
statement to the presiding Officer by
email and, when there is agreement
among the parties, serve such statement
on the other participating parties
outside of the electronic filing system.
The position statement shall be in letter
form, shall not exceed five pages,
including any salutations and
signatures, and shall attach no more
than 20 pages of exhibits, absent leave
of the presiding Officer, although leave
shall not be necessary should the page
limit be exceeded due to an exhibit
being a necessary agreement or contract.
The statement must set forth:
(1) A brief overview of the facts and
contentions;
(2) The relief sought, including the
amount of damages, if any;
(3) Whether or to what extent the
alleged wrongful conduct is currently
taking place; and
(4) Any prior attempts at resolution,
including any offers or counteroffers
made to the other party.
(e) Stay of proceeding. To provide the
parties with an opportunity to pursue
settlement and negotiate any resulting
settlement agreement, the Board in its
discretion may stay the proceeding for
a period of 30 days concurrently with an
order scheduling a settlement
conference, at the time of or following
the settlement conference, or at the
request of the parties. The parties may
request an extension of the stay in good
faith to facilitate ongoing settlement
discussions. If a settlement has not been
reached at the time the stay, or any
extension thereof, has expired, the
Board shall issue an amended
scheduling order to govern the
remainder of the proceeding.
(f) Settlement agreement. If some or
all parties reach a settlement, such
parties may submit to the Board a letter
that they jointly wish to dismiss some
or all of the claims and counterclaims.
The parties may include a request that
the Board adopt some or all of the terms
of the settlement in its final
determination.
(g) Effect of settlement agreement.
Upon receipt of a joint request to
dismiss claims due to settlement, the
Board shall dismiss the claims or
counterclaims contemplated by the
agreement with prejudice, unless the
parties have included in their request
that the claims or counterclaims shall be
dismissed without prejudice. If the
parties have requested that the Board
adopt some or all of the terms of the
settlement in its final determination, the
Board may issue a final determination
incorporating such terms unless the
Board finds them clearly
unconscionable.
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§ 222.18
Protective orders.
(a) Standard protective order. At the
request of any party, the Board’s
standard protective order, as described
in this section, shall govern all
discovery material exchanged during
the proceeding to protect against
improper use or disclosure.
(1) Standard of use. Discovery
material received from another party
may be used only in connection with
the proceeding, and all copies must be
returned or disposed of within 30 days
of a determination or dismissal, or
within 30 days of the exhaustion of the
time for any review or appeal of the
Board’s final determination, whichever
is later.
(2) Confidentiality. Discovery material
may be designated as ‘‘confidential’’
only if the party reasonably and in good
faith believes that it consists of:
(i) Bona fide confidential financial
information previously not disclosed to
the public;
(ii) Bona fide confidential and nonobvious business plans, product
development information, or marketing
plans previously not disclosed to the
public;
(iii) Any information of a truly
personal or intimate nature regarding
any individual not known by the public;
or
(iv) Any other category of information
that the Board grants leave to designate
as ‘‘confidential.’’
(3) Case-by-case basis. Parties must
make confidentiality determinations on
a document-by-document basis and
shall not designate as ‘‘confidential’’ all
discovery material produced in bulk.
(4) Submitting confidential
information. Confidential discovery
materials, or references to or discussions
of confidential discovery materials in
other documents, may be submitted to
the Board by either filing them under
seal or redacting the confidential
document. If filed under seal, the
confidential document must be
accompanied by a redacted copy that
may be included in the public record.
(5) Determination of confidentiality by
the Board. The Board may in its
discretion remove a confidentiality
designation from any material on its
own initiative or upon consideration of
a request from a party. Parties are
expected to attempt to resolve disputes
over confidentiality designations before
bringing such disputes to the Board.
(b) Custom protective orders. Custom
protective orders negotiated by the
parties are disfavored. The parties may
request that the Board enter a custom
protective order that has been
negotiated by the parties and that may
provide for additional protections for
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highly sensitive materials. Such a
request must be accompanied by a
stipulation between the parties that
explains the need for such a custom
protective order. The Board may in its
discretion decide whether to grant the
parties’ request for a custom protective
order.
(c) Personally identifiable
information. Regardless of whether
discovery material has been designated
as ‘‘confidential,’’ parties must redact
social security numbers, taxpayer
identification numbers, birth dates,
health information protected by law, the
names of any individuals known to be
minors, and financial account numbers
from any public filings.
§ 222.19
Evidence.
(a) Admissibility. All evidence that is
relevant and not unduly repetitious or
privileged shall be admissible. Evidence
which has authentication or credibility
issues will have its weight discounted
accordingly. The Board reserves the
right to discount evidence or not admit
evidence with serious credibility issues
entirely, or to request clarification from
a party. The Board may apply FRE 401
and 403 in weighing evidence, but the
Board is not bound by the FRE. Parties
may cite to the FRE as persuasive
authority when making an argument
about the credibility, weight, or
admissibility of a piece of evidence.
(b) Examination of witnesses. All
witnesses testifying at a hearing before
the Board shall be required to take an
oath or affirmation before testifying. At
a hearing, parties may conduct direct
examination (substantively limited to
the testimony of the witness in the
written statements and an oral summary
of that testimony); cross-examination
(limited to matters raised on direct
examination or submitted through
witness statements); and redirect
examination (limited to matters raised
on cross-examination). The Board may
limit the number of witnesses or scope
of questioning.
(c) Exhibits in hearing—(1)
Submission. Unless they are specifically
excluded by the Board’s own initiative
or due to the Board’s ruling on an
objection raised by a party, all properly
sponsored documents submitted by the
parties through their statements
submitted under § 222.14 shall be
deemed admitted and marked as
exhibits in the same order as presented
through the party’s document statement.
To the extent additional documents are
allowed by the Board at a hearing on the
merits, such evidence may also be
presented as exhibits to all parties and
marked by the presenting party starting
with the next number after the exhibits
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attached to the party’s document
statement.
(2) Separation of irrelevant portions.
In any large documents, relevant and
material matter in an exhibit must be
plainly marked to distinguish it from
immaterial or irrelevant material.
(3) Summary exhibits. The contents of
voluminous documentary evidence
which cannot be conveniently examined
at the hearing may be presented in the
form of a chart, summary, or
calculation. Absent leave of the Board,
evidence supporting the summary
exhibit must have been produced to the
other parties in discovery and admitted
as exhibits.
(d) Objections. Parties are entitled to
raise objections to evidence during the
course of the hearing and to raise an
objection that an opposing party has not
furnished non-privileged underlying
documents.
(e) New exhibits for use in crossexamination or redirect examination.
Exhibits not submitted as part of written
testimony may be shown to a witness on
cross-examination or redirect
examination only for the purposes of
impeachment or rehabilitation. Copies
of such exhibits must be distributed to
the Board and other parties before being
shown, unless the Board directs
otherwise.
■ 7. Part 225 is added to read as follows:
PART 225—DISCOVERY
Sec.
225.1 General practices.
225.2 Standard interrogatories.
225.3 Requests for admission.
225.4 Standard production of document
requests.
225.5 Disputes and sanctions.
Authority: 17 U.S.C. 702, 1510.
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§ 225.1
General practices.
This part prescribes rules pertaining
to procedures for discovery conducted
in proceedings before the Copyright
Claims Board (‘‘Board’’).
(a) Standard discovery practice.
Except as otherwise provided in this
section, discovery in proceedings before
the Board shall be limited to the
methods set forth in this part and shall
use the standard forms provided on the
Board’s website. Discovery responses
and documents shall be served on the
other parties, but shall not be filed with
the Board unless as part of written
testimony or as needed in support of
other filings.
(1) Certifications. All discovery
material exchanged among the parties or
submitted to the Board must include a
certification by the party submitting
such material that it is accurate and
truthful.
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(2) Form of requests to Board.
Requests to the Board related to
discovery may be raised to the Board
during a conference or by letter, as set
forth in this section.
(b) Timing of discovery. The exchange
of discovery material shall take place at
the times and within the deadlines
specified by the scheduling order. The
Board may modify the discovery
deadlines set forth in the scheduling
order at the request of any party upon
a showing of good cause or through its
own initiative. Such requests may be
made orally during a conference with
the Board or by letter. Any letter
requests shall be limited to two pages
and shall set forth the original date of
the deadline and the requested
extension, provide the basis for the
scheduling modification, indicate
whether the other parties consent or
object to the modification, and whether
any other dates in the scheduling order
will be affected by the modification.
Any party that objects to the requested
scheduling modification may file a
response letter within three days of the
date of service of the letter request,
which shall be limited to two pages and
set forth the basis for the objection.
(c) Conferences. The Board shall hold
a pre-discovery conference and a postdiscovery conference, as set forth in 37
CFR 222.10. The Board may hold
additional conferences to manage
discovery and resolve any disputes, at
its own election or at the request of any
party. Conferences may be held by one
or more Copyright Claims Officers
(‘‘Officers’’), with the exception of postdiscovery conferences and any
conferences to decide a dispute, both of
which shall be held by one or more
Officers. Conferences shall be held
virtually.
(d) Request for additional discovery.
Any party may request additional
discovery within the deadlines set forth
in the scheduling order.
(1) Allowable discovery. Except for
the standard discovery provided in this
part, any additional discovery requested
must be narrowly tailored to the issues
at hand, not covered by the standard
discovery set forth in this part, highly
likely to lead to the production of
information relevant to the core issues
of the matter, and not result in an undue
burden on the party responding to the
request.
(2) Standard for additional discovery.
The Board will grant a request for
additional discovery upon a showing of
good cause. In considering a request for
additional discovery, the Board shall
balance the needs and circumstances of
the case against the burden of additional
discovery on any party, along with the
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amount in dispute and overall goal of
efficient resolution of the proceeding.
(3) Consent from parties. Prior to
filing a request for additional discovery,
the requesting party should make
reasonable efforts to secure the consent
of, or a compromise with, the other
party regarding the proposed additional
discovery request.
(4) Form of request. A request for
additional discovery must be made by
letter, no more than three pages, not
including the additional requests
themselves—
(i) Specifically indicating the means
of additional discovery requested and
the information sought;
(ii) Setting forth the basis and
justifications for the request;
(iii) Indicating whether the other
parties consent or object to the request;
and
(iv) Attaching a copy of the additional
discovery requests.
(5) Response to request. Within seven
days of the date of service of a letter
requesting additional discovery, any
party that opposes the request may file
a response letter of no more than three
pages. No reply letters shall be
permitted, unless the Board grants leave
for a reply.
(e) Request for expert witnesses. An
expert witness may be used in a
proceeding only with leave of the Board.
The use of expert witnesses in
proceedings before the Board is highly
disfavored and requests shall be rarely
granted.
(1) Standard for permitting expert
witnesses. The Board shall grant a
request by a party to introduce an expert
witness only in exceptional
circumstances and upon a showing that
the case cannot fairly proceed without
the use of the expert. In considering a
request for an expert witness, the Board
shall balance the needs and
circumstances of the case, and whether
the request is made by one party or
jointly among the parties, against the
burden that permitting the expert
testimony would impose on any other
party, the costs to the opposing party of
retaining a rebuttal witness, the amount
in dispute, and the overall goal of
efficient resolution of the proceeding. If
the Board grants a request by a party to
introduce an expert witness, an
opposing party shall have the
opportunity to introduce a rebuttal
expert witness as a matter of course
within an appropriate amount of time
set by the Board. The Board will set a
schedule for the service of the expert
report and any rebuttal report and will
adjust the dates in the existing
scheduling order as needed.
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(2) Form of request. A request for an
expert witness must be made by letter,
no more than five pages, at the time set
forth for requests for additional
discovery in the scheduling order. The
letter must specifically indicate the
topics of the expert’s proposed
testimony, the name of the proposed
expert, and the anticipated cost of
retaining the expert, and must set forth
the basis and justifications for the
request, and indicate whether the other
parties consent or object to the request.
(3) Form of response. Within seven
days of the date of service of a request
for leave to offer an expert witness, any
party that opposes the request may file
a response letter of no more than five
pages. No reply letters shall be
permitted, unless the Board grants leave
for a reply.
(4) Form of expert testimony. Any
expert testimony permitted by the Board
shall be submitted along with the
offering party’s written direct or
response testimony in the form of an
expert statement. An expert statement
must—
(i) Be sworn under penalty of perjury
by the expert witness;
(ii) Be organized into numbered
paragraphs;
(iii) Be detailed as to the substance of
the expert’s opinion and the basis and
reasons therefor;
(iv) Disclose the facts or data
considered by the expert witness in
forming the expert witness’s opinions;
(v) Describe the expert witness’s
qualifications, including a list of all
publications authored and speaking
engagements in the previous 10 years;
(vi) Include a list of all other cases in
which the expert witness testified as an
expert at trial or by deposition during
the previous four years; and
(vii) Include a statement of the
compensation to be paid for the study
and testimony in the case.
(5) Unauthorized expert testimony.
Any expert testimony that is introduced
in any way without the Board’s express
permission shall be stricken by the
Board and shall not be considered in the
Board’s determination.
(f) Definitions. As used in this part,
the term ‘‘document’’ shall refer to any
tangible piece of information—
including writings, drawings, graphs,
charts, photographs, sound recordings,
images, and other data or data
compilations—stored in any medium
from which information can be obtained
either directly or, if necessary, after
translation by the responding party into
a reasonably usable form, whether in
written or electronic form, an object, or
otherwise. The Board shall read this
definition broadly so that there is a
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comprehensive production of materials
by each side needed to fairly decide
matters before the Board, so long as that
production is easily accomplished by a
layperson.
§ 225.2
Standard interrogatories.
(a) General. Parties in an active
proceeding shall use the set of standard
interrogatories provided on the Board’s
website. Standard interrogatories shall
consist of information pertaining to:
(1) The identity and nature of
witnesses whom the parties plan to use
in the proceeding, including contact
information for the witnesses, if known;
(2) The identity of any other
individuals who may have material
information related to the claims or
defenses, including contact information
for the individuals, if known;
(3) Any agreement or other
relationship between the parties
relevant to the claim;
(4) Any damages sought; and
(5) A description of documents
relevant to the claims and defenses.
(b) For a party asserting infringement.
In addition to the witness, damages, and
document description information in
paragraph (a) of this section, the
standard interrogatories for a party
asserting an infringement claim or
responding to a claim for noninfringement shall consist of
information pertaining to:
(1) The allegedly infringed work’s
copyright registration, to the extent such
information differs from or adds to
information provided in the claim;
(2) The allegedly infringed work’s
compliance with any relevant copyright
formalities;
(3) The party’s ownership of the
copyright in the allegedly infringed
work;
(4) Publication history for the
allegedly infringed work;
(5) The creation date and creation
process for the allegedly infringed work,
including whether the work is a joint or
derivative work or was created through
employment or subject to an agreement;
(6) Where the allegedly infringed
work is a derivative work, the
preexisting elements in the work,
including ownership of those
preexisting elements, and rights to use
those preexisting elements;
(7) A description of the alleged
infringer’s access to the allegedly
infringed work, if known;
(8) The basis for the party’s belief that
the opposing party’s activities constitute
infringement of the allegedly infringed
work;
(9) The discovery of the opposing
party’s alleged infringement by the
party;
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(10) A description and calculation of
the damages suffered by the party as a
result of the alleged infringement; and
(11) Any attempts by the party to
cause the infringement to be ceased or
mitigated prior to bringing the claim.
(c) For a party asserting noninfringement. In addition to the
information in paragraph (a) of this
section, the standard interrogatories for
a party responding to an infringement
claim or asserting a claim for noninfringement shall consist of
information pertaining to:
(1) The party’s ownership of the
copyright in the allegedly infringing
material;
(2) The publication history of the
allegedly infringing material;
(3) The creation date and creation
process for the allegedly infringing
material, including whether any
allegedly infringing work is a joint or
derivative work or was created through
employment or subject to an agreement;
(4) Where the allegedly infringing
material is a derivative work, the
preexisting elements in the work,
including ownership of those
preexisting elements, and rights to use
those preexisting elements;
(5) Any information indicating that
the party alleging infringement does not
own a copyright in the allegedly
infringed work;
(6) All defenses to infringement
asserted by the party and a detailed
basis for those defenses;
(7) The basis for any other reasons the
party believes that its actions do not
constitute infringement;
(8) Any continued use of the allegedly
infringing material; and
(9) For a party responding to
infringement claims or counterclaims,
the revenues and profits the party has
received directly related to the sale or
use of the allegedly infringing material,
as well as the deductible expenses
directly related to that sale or use, and
the elements of profit for that sale or use
attributable to factors other than the
copyrighted work.
(d) For a party asserting
misrepresentation. In addition to the
information in paragraph (a) of this
section, the standard interrogatories for
a party asserting a claim of
misrepresentation under 17 U.S.C.
512(f) shall consist of information
pertaining to:
(1) The notification or counter
notification that allegedly contained a
misrepresentation;
(2) The identity of the internet service
provider to which the notification or
counter notification was sent;
(3) Any communications with the
internet service provider, the parties, or
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others related to the notification or
counter notification at issue;
(4) The basis for the party’s belief that
the notification or counter notification
included a misrepresentation; and
(5) The harm, including a description
and calculation of damages, caused by
the alleged misrepresentation.
(e) For a party responding to
misrepresentation claims. In addition to
the information in paragraph (a) of this
section, the standard interrogatories for
a party responding to a claim of
misrepresentation under 17 U.S.C.
512(f) shall consist of information
pertaining to:
(1) All defenses asserted to the
misrepresentation claim and the basis
for those assertions;
(2) The basis for any other reasons the
party believes that its statement did not
constitute a misrepresentation; and
(3) Any communications with the
internet service provider, the parties, or
others related to the notification or
counter notification at issue.
(f) Duty to update. A party has an
obligation to update its interrogatory
responses and serve updated responses
on the other parties as soon as
practicable after the discovery of new or
updated information.
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§ 225.3
Requests for admission.
(a) General. Parties in an active
proceeding may serve a maximum of 10
requests for admission on each other
party relating to:
(1) Facts, the application of law to
fact, or opinions about either; and
(2) The genuineness of any described
documents, a copy of which must be
attached to the request for admission.
(b) Form. Each matter must be
separately stated in a request for
admission in a numbered paragraph.
Compound requests for admission shall
not be permitted.
(c) Responses to requests for
admission. A response to a request for
admission must be served within 30
days from the date of service of a
request for admission. A matter
admitted is conclusively established
unless the Board, on request and for
good cause shown, permits the
admission to be withdrawn or amended.
If a matter is not admitted, the answer
must specifically deny it or state in
detail why the responding party cannot
truthfully admit or deny it. A denial
must fairly respond to the substance of
the matter, and when good faith requires
that a party qualify an answer or deny
only part of a matter, the answer must
specify the part admitted and qualify or
deny the rest. The responding party may
assert lack of knowledge or information
as a reason for failing to admit or deny
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only if the party states that it has made
reasonable inquiry and that the
information it knows or can readily
obtain is insufficient to enable it to
admit or deny.
(d) Failure to respond. A matter is not
automatically admitted if a party fails to
respond to a request for admission
within the required timeframe.
However, the Board may deem it
admitted in the Board’s discretion
subject to the Board’s power to apply
adverse inferences to discovery
violations under 17 U.S.C. 1506(n)(3).
§ 225.4 Standard production of document
requests.
(a) General. Parties in an active
proceeding shall use the relevant set of
standard production of document
requests provided on the Board’s
website. Standard production of
document requests shall include copies
of:
(1) All documents the party is likely
to use in support of its claims or
defenses;
(2) All other documents of which the
party is reasonably aware that conflict
with the party’s claims or defenses;
(3) All documents related to damages;
and
(4) All documents referred to in, or
that were used in preparing, any of the
party’s responses to standard
interrogatories.
(b) For a party asserting infringement.
In addition to the information in
paragraph (a) of this section, the
standard production of document
requests for a party asserting an
infringement claim or responding to a
claim for non-infringement shall
include copies of:
(1) The work claimed to be infringed,
its copyright registration, and all
correspondence with the Copyright
Office regarding that registration;
(2) The allegedly infringing material,
if reasonably available;
(3) Where the allegedly infringed
work is a derivative work, documents
showing the preexisting works used and
related to ownership of and rights to use
those preexisting elements;
(4) Documents related to the allegedly
infringing material, including
communications about the allegedly
infringing material;
(5) Agreements related to ownership
of or rights in the works at issue;
(6) Documents related to the party’s
ownership of the copyright in the
allegedly infringed work;
(7) Documents relating to the damages
suffered by the party as a result of the
alleged infringement; and
(8) Documents related to attempts by
the party to cause the cessation or
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69911
mitigation of infringement prior to
bringing the claim.
(c) For a party asserting noninfringement. In addition to the
information in paragraph (a) of this
section, the standard production of
document requests for a party
responding to an infringement claim or
asserting a claim for non-infringement
shall include copies of:
(1) The allegedly infringing material;
(2) Documents related to the allegedly
infringed work, including
communications regarding the allegedly
infringed work;
(3) Documents related to the creation
of the allegedly infringing material or
rights regarding the allegedly infringing
material;
(4) Agreements related to ownership
of or rights in the works at issue; and
(5) For a party responding to
infringement claims or counterclaims,
documents related to the revenues and
profits the party has received directly
related to the sale or use of the allegedly
infringing material, as well as the
deductible expenses directly related to
that sale or use, and the elements of
profit for that sale or use attributable to
factors other than the copyrighted work.
(d) For party asserting
misrepresentation. In addition to the
information in paragraph (a) of this
section, the standard production of
document requests for a party asserting
a claim of misrepresentation under 17
U.S.C. 512(f) shall include copies of:
(1) The notification or counter
notification at issue;
(2) Communications with the internet
service provider concerning the
notification or counter notification at
issue; and
(3) Documents pertaining to the truth
or falsity of any representations made in
the notification or counter notification.
(e) For party responding to
misrepresentation claims. In addition to
the information in paragraph (a) of this
section, the standard production of
document requests for a party
responding to a claim of
misrepresentation under 17 U.S.C.
512(f) shall include copies of:
(1) Communications with the internet
service provider concerning the
notification or counter notification at
issue; and
(2) Documents pertaining to the truth
or falsity of any representations made in
the notification or counter notification.
(f) Document searches and
productions—(1) General. Each party
shall have an obligation to conduct a
reasonable search for any responsive
documents of any files in its possession
or under its control, including the files
of any of the party’s agents, employees,
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representatives, or others acting on the
party’s behalf.
(2) Electronically stored information.
Documents responsive to the standard
requests, or any additional requests
permitted by the Board, may include
electronically stored information
(‘‘ESI’’), including emails and computer
files. A reasonable search under the
circumstances shall include the ESI of
the party and the party’s agents,
employees, representatives, or others
acting on the party’s behalf, except
that—
(i) ESI searches shall not exceed
manual searches that are easily
accomplished by a layperson; and
(ii) Parties need not conduct searches
that would reasonably require the
assistance of third parties, such as a
document vendor that the party would
have to hire to assist with or accomplish
document collection or storage.
(3) Voluminous productions.
Responses to document requests that
include large amounts of irrelevant or
duplicative material shall constitute
bad-faith conduct.
(4) Responsive documents no longer
in possession of party. A party shall
disclose any materially responsive
documents that the party is aware exist
or once existed, but are no longer in the
possession of that party, and shall
explain why the documents are no
longer in the possession of the party,
including the circumstances
surrounding any destruction of
documents.
(5) Duty to update. A party has an
obligation to preserve all material
documents and to update its production
of documents by providing to the other
parties any documents it later finds
responsive to the Board’s standard
requests or any other document requests
allowed by the Board as soon as
practicable after the discovery of such
documents.
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§ 225.5
Disputes and sanctions.
(a) Obligation to attempt resolution.
Parties shall attempt in good faith to
resolve any discovery disputes without
the involvement of the Board. A party
must confer with an opposing party, at
least through a phone call, in an attempt
to reach a resolution prior to raising any
discovery dispute with the Board.
(b) Request for conference to resolve
dispute. If an attempt to resolve a
discovery dispute fails, the party
seeking discovery may file a request by
letter, no more than three pages not
including the attachments referred to in
this paragraph (b), for a conference with
the Board. The letter request shall:
(1) Describe the dispute;
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(2) State that party’s position with
respect to the dispute;
(3) Include a statement that the
request is made following an attempted
resolution call between the parties along
with the date of such call, or explain
why a call was not possible; and
(4) Attach the relevant discovery
responses already provided by the
opposing party, except for disputes
pertaining to production of document
requests, which shall attach a list of
documents produced in response to the
requests.
(c) Response to request for conference.
Within seven days of the date of service
of the letter request, an opposing party
may submit a response to a request for
a conference by letter, no more than
three pages, not including any
attachments, which states the opposing
party’s position with respect to the
dispute. No reply letters shall be
permitted, unless the Board grants leave
for a reply.
(d) Determination by Board.
Following receipt of the request and any
response, the Board may schedule a
conference to address the discovery
dispute in its discretion. One or more
Officers may participate in the
conference. During or following the
conference, the Board shall issue an
order resolving the discovery dispute
and, in the event of a decision in favor
of the aggrieved party, setting a deadline
for compliance.
(e) Failure to comply with order. If a
party fails to timely comply with the
Board’s discovery order, the party
seeking discovery may send a notice to
the noncompliant party giving the
noncompliant party 10 days to comply.
If the noncompliant party fails to
comply within 10 days of receipt of the
notice, the aggrieved party may file a
request for sanctions with the Board.
(f) Sanctions—(1) Form of request for
sanctions. A request for sanctions shall
be no more than 10 double-spaced
pages, not including the attachments
referred to in this paragraph (f)(1), in 12point font or larger, for both body text
and footnotes, with at least one-inch
margins on the top, bottom, left, and
right of each page and shall attach the
relevant discovery responses already
provided by the opposing party, except
for disputes pertaining to production of
document requests, which shall attach a
list of documents produced in response
to the requests.
(2) Form of response to request for
sanctions. Within 14 days of the date of
service of the request for sanctions, the
opposing party may file a response to
the request. The response shall be no
more than 10 double-spaced pages in
12-point font or larger, for both body
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text and footnotes, with at least oneinch margins on the top, bottom, left,
and right of each page. No reply papers
will be accepted absent leave of the
Board.
(3) Standard for granting request.
Following receipt of a request for
sanctions and any response from the
opposing party, the Board may hold a
conference to address the request for
sanctions. In the Board’s sole discretion
and upon good cause shown, sanctions
may be imposed if the opposing party is
found to be noncompliant with the
Board’s discovery order.
(4) Relief. Sanctions imposed for
noncompliance with a discovery order
of the Board may include an adverse
inference with respect to the disputed
facts directly related to the discovery in
question against the noncompliant
party.
(5) Implications for award of
attorneys’ fees and costs. The Board
may consider the assessment of
discovery sanctions when considering
the awarding of attorneys’ fees and costs
during a final determination.
■ 8. Part 226 is added to read as follows:
PART 226—SMALLER CLAIMS
Sec.
226.1 General.
226.2 Requesting a smaller claims
proceeding.
226.3 Nature of a smaller claims
proceeding.
Authority: 17 U.S.C. 702, 1510.
§ 226.1
General.
When total monetary relief sought in
a claim does not exceed $5,000
(exclusive of attorneys’ fees and costs),
the claim may be adjudicated under the
procedures set forth in this part.
§ 226.2 Requesting a smaller claims
proceeding.
A claimant may request consideration
of a claim under the smaller claim
procedures in this part at the time of
filing a claim. The claimant may also
amend its filing at any time prior to
service of the claim to modify its
selection concerning smaller claim
procedures. If the initial notice has
already been issued, the claimant shall
request reissuance of the initial notice
with the smaller claim proceeding
notice. Once the claimant chooses
whether to proceed via a smaller claims
proceeding or via the standard
proceeding in 37 CFR parts 222 and 225,
it may not amend its choice without
consent of the other parties and leave of
the Board.
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§ 226.3 Nature of a smaller claims
proceeding.
(a) Proceeding before a Copyright
Claims Officer. A smaller claims
proceeding shall be heard by one
Officer. One of the three Officers shall
hear smaller claims proceedings on a
rotating basis at the Copyright Claims
Board’s discretion.
(b) Limited discovery. Discovery
between the parties is limited to the
standard discovery set forth in 37 CFR
225.2 through 225.4. Parties may not
submit additional discovery requests,
and the assigned Officer will not
consider such requests.
(c) No expert testimony. Parties may
not submit expert testimony for
consideration. Any expert testimony
submitted shall be disregarded by the
assigned Officer.
(d) Determination on written
testimony. The Officer will issue a
determination based on the written
testimony submitted pursuant to 37 CFR
222.14. No hearing will be held prior to
a determination.
■ 9. Part 227 is added to read as follows:
PART 227—DEFAULT
Sec.
227.1 Failure by respondent to appear or
participate in proceeding.
227.2 Submission of evidence by claimant
in support of default determination.
227.3 Notice of proposed default
determination.
227.4 Opportunity for respondent to submit
evidence.
227.5 Issuance of determination.
Authority: 17 U.S.C. 702, 1510.
jspears on DSK121TN23PROD with PROPOSALS3
§ 227.1 Failure by respondent to appear or
participate in proceeding.
(a) General. For purposes of this
section, the term ‘‘respondent’’ shall
include counterclaim respondents. If a
respondent fails to file a response or
fails, without justifiable cause, to meet
any filing deadline or other requirement
set forth in the scheduling order or other
order, upon notice of a party or by its
own initiative, the Copyright Claims
Board (‘‘Board’’) may issue a notice to
the respondent following the missed
deadline or requirement.
(b) Contents of notice—(1) First
notice. A notice issued under this
section shall inform the respondent that
failure to participate in the proceeding
may result in the Board entering a
default determination against the
respondent, including dismissal of any
counterclaims asserted by the
respondent, and shall explain the legal
effects of a default determination. The
notice shall provide the respondent
with 30 days from the date of the notice
to cure the missed deadline or
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requirement. The notice shall be issued
to the respondent by mail and all known
email addresses.
(2) Second notice. If the respondent
has failed to respond 15 days after the
notice of the pendency of the default
determination, the Board shall send a
second notice to the respondent
according to the procedures set forth in
paragraph (b)(1) of this section. Such
notice shall attach the first notice and
shall remind the respondent that it must
cure the missed deadline or requirement
within 30 days from the date of the first
notice.
(c) Response to notice. If the
respondent cures the missed deadline or
requirement within the time specified
by the notice, the proceeding shall
resume and the Board shall issue a
revised scheduling order, if necessary. If
the respondent fails to timely cure but
submits a response that indicates an
intent to re-engage with the proceeding,
the Board shall consider the response
and either provide the respondent with
additional time to meet the deadline or
proceed with the default determination
process. If the respondent fails to cure
the missed deadline or requirement
within the time specified by the notice
and does not otherwise respond to the
notice, the Board shall require the
claimant to submit evidence in support
of a default determination, as set forth
in § 227.2.
(d) Multiple missed deadlines. A
respondent may cure a missed deadline
according to the procedure set forth in
this section twice without default being
issued. If the respondent misses a third
deadline in the scheduling order
without good cause, the Board may, in
its discretion, proceed directly to
requiring submission of evidence to
proceed with a default determination as
set forth in § 227.2.
69913
§ 227.3 Notice of proposed default
determination.
(a) Consideration of evidence.
Following submission of evidence by
the claimant, as set forth in § 227.2, the
Board shall review such evidence and
shall determine whether it is sufficient
to support a finding in favor of the
claimant under applicable law. As part
of its review, the Board shall consider
whether the respondent has a
meritorious defense. If the Board finds
the evidence sufficient to support a
finding in favor of the claimant, it shall
determine the appropriate relief and
damages, if any, to be awarded.
(1) If the Board determines that the
evidence is sufficient to support a
finding in favor of the claimant, the
Board shall prepare a proposed default
determination.
(2) If the Board determines that the
evidence is insufficient to support a
finding in favor of the claimant, the
Board shall dismiss the proceeding
without prejudice.
(b) Proposed default determination.
The proposed default determination
shall include a finding in favor of the
claimant and the damages awarded, if
any. The proposed default
determination shall also include
dismissal of any counterclaims asserted
by the respondent.
(c) Notice to respondent. The Board
shall provide written notice to the
respondent of the pendency of the
default determination and the legal
significance of the default
determination, including any liability
for damages, if applicable, as set forth in
17 U.S.C. 1506(u)(2). The notice shall be
accompanied by the proposed default
determination and shall provide the
respondent 30 days, beginning on the
date of the notice, to submit any
evidence or other information in
opposition to the proposed default
determination.
§ 227.2 Submission of evidence by
claimant in support of default
determination.
§ 227.4 Opportunity for respondent to
submit evidence.
(a) General. If a respondent fails to
appear or ceases to participate in the
proceeding and the Board elects to
proceed to a default determination, the
Board shall require the claimant to
submit written direct testimony, as set
forth in § 227.1.
(b) Additional evidence. Following
submission of the claimant’s written
testimony in support of a default
determination, the Board shall consider
the claimant’s submissions and may
request any additional evidence from
the claimant within the claimant’s
possession.
(a) Response to notice by respondent.
The respondent may submit in writing
any evidence or information in
opposition to the proposed default
determination. The Board shall consider
the submission and may request that the
respondent submit additional
information, including in the form of
written response testimony, as set forth
in 37 CFR 222.14, by a deadline set by
the Board. If the respondent fails to
timely submit evidence but submits a
response that indicates an intent to reengage with the proceeding, the Board
shall consider the response and either
provide the respondent with additional
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time to submit evidence or proceed with
issuing the default determination.
(b) Response to respondent’s
submissions. If the respondent provides
any evidence or other information in
response to the notice of the pending
default determination, the other parties
to the proceeding shall be provided an
opportunity to address such
submissions by a deadline set by the
Board.
(c) Hearings. The Board may hold a
hearing at its discretion.
§ 227.5
Issuance of determination.
jspears on DSK121TN23PROD with PROPOSALS3
(a) Determination after respondent
submits evidence. If the respondent
provides evidence or information as set
forth in § 227.4, the Board shall consider
all submissions. The Board then shall
maintain or amend its proposed default
determination. The resulting
determination shall not be a default
determination and instead shall be a
final determination. The respondent
may not challenge such determination
under 17 U.S.C. 1508(c)(1)(C) and may
only request reconsideration pursuant to
17 U.S.C. 1506(w) and the procedures
set forth in part 230 of this subchapter.
(b) Determination after respondent
fails to respond to notice. If the
respondent fails to respond to the notice
of pending default determination, the
Board shall issue the proposed default
determination as a final determination.
The respondent may only challenge
such determination to the extent
permitted under 17 U.S.C. 1508(c) or the
procedures set forth in paragraph (c) of
this section.
(c) Vacating a default determination.
If additional proceedings have not been
initiated under 17 U.S.C. 1508(c), the
respondent may request in writing that
the default determination be vacated
and provide the reasons why the
decision should be vacated. The
respondent and claimant shall follow
the general procedures for a request for
reconsideration as set forth in part 230
of this subchapter. The Board may
vacate the default determination in the
interests of justice.
■ 10. Part 228 is added to read as
follows:
PART 228—CLAIMANT’S FAILURE TO
PROCEED
Sec.
228.1 Claimant or counterclaimant’s failure
to complete service.
228.2 Claimant or counterclaimant’s failure
to prosecute.
Authority: 17 U.S.C. 702, 1510.
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§ 228.1 Claimant or counterclaimant’s
failure to complete service.
(a) Failure to serve a respondent who
is not a necessary party. If a claimant
fails to timely complete service on a
respondent who is not a necessary
party, pursuant to 37 CFR 222.13, the
Copyright Claims Board (‘‘Board’’) shall
dismiss that respondent from the
proceeding without prejudice. The
proceeding shall continue against any
remaining respondents.
(b) Failure to serve a respondent who
is a necessary party. If a claimant fails
to timely complete service on a
respondent who is a necessary party,
pursuant to 37 CFR 222.13, the Board
shall dismiss the proceeding without
prejudice.
(c) Complete failure to serve
respondents. For a claim to proceed, a
claimant must complete service on at
least one respondent. If a claimant does
not timely file any proof of service, the
Board shall dismiss the proceeding
without prejudice.
§ 228.2 Claimant or counterclaimant’s
failure to prosecute.
(a) General. If a claimant or
counterclaimant fails to proceed in an
active proceeding without justifiable
cause, as demonstrated by a failure to
meet any filing deadline or requirement
set forth in the scheduling order or other
order, upon request of a party or on its
own initiative, the Board shall issue a
notice following the missed deadline or
requirement.
(b) Contents of notice. (1) A notice
issued under paragraph (a) of this
section shall inform the claimant that
failure to proceed in the proceeding may
result in the Board issuing a
determination dismissing the claimant’s
claims, including an award of attorneys’
fees and costs where appropriate, and
shall explain the legal effects of such a
determination. The notice shall provide
the claimant with 30 days, beginning on
the date of the notice, to respond to the
notice and meet the missed deadline or
requirement. The notice shall be issued
to the claimant by mail and all known
email addresses.
(2) If the claimant has failed to
respond 15 days after the notice of the
failure to proceed, the Board shall send
a second notice to the claimant
according to the procedures set forth in
paragraph (b)(1) of this section. Such
notice shall attach the first notice and
shall remind the claimant that it must
respond and meet the missed deadline
or requirement within 30 days from the
date of the first notice.
(c) Response to notice. (1) If the
claimant cures the missed deadline or
requirement within the time specified
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by the notice, the proceeding shall
resume and the Board shall issue a
revised scheduling order, if necessary.
(2) If the claimant fails to cure the
missed deadline or requirement within
the time specified by the notice but
submits a response that indicates an
intent to re-engage with the proceeding,
the Board shall consider the response
and either provide the claimant with
additional time to cure the missed
deadline or requirement or issue a
determination dismissing the claimant’s
claims.
(3) If the claimant fails to cure the
missed deadline or requirement within
the time specified by the notice and
does not otherwise respond to the
notice, the Board shall issue a
determination dismissing the claimant’s
claims.
(d) Determination dismissing claims.
A determination dismissing the
claimant’s claims for failure to proceed
in the active proceeding shall be with
prejudice and shall include an award of
attorneys’ fees and costs pursuant to 37
CFR 232.3, if appropriate. The claimant
may only challenge such determination
to the extent permitted under 17 U.S.C.
1508(c) or the procedures set forth in
paragraph (e) of this section.
(e) Vacating a determination
dismissing claims. If additional
proceedings have not been initiated
under 17 U.S.C. 1508(c), the claimant
may request in writing that the
determination be vacated and provide
the reasons supporting the request. The
claimant and respondent shall follow
the general procedures for a request for
reconsideration as set forth in part 230
of this subchapter. The Board may
vacate the determination of dismissal in
the interests of justice.
■ 11. Part 229 is added to read as
follows:
PART 229—RECORDS AND
PUBLICATION
Sec.
229.1
229.2
Access to records and proceedings.
Record certification.
Authority: 17 U.S.C. 702, 1510.
§ 229.1 Access to records and
proceedings.
(a) Official written record.
Submissions by parties to a proceeding
and documents issued by the Copyright
Claims Board (‘‘Board’’) shall constitute
the official written record.
(b) Access to record. Any member of
the public may inspect the official
written record through the electronic
filing system, except any materials that
have been marked confidential pursuant
to 37 CFR 222.18.
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(c) Attendance at hearing. Attendance
at a Board hearing, including virtual
hearings, is limited to the parties to the
proceeding and their representatives,
except with leave of the Board. A
request for attendance may be made in
writing.
(d) Hearing transcript. The Board may
cause a transcript of a hearing to be
made by using an official reporter or any
technology that is available to the
Board. At the request of any party, the
Board may designate an official reporter
to attend and transcribe a hearing or to
prepare a transcript from a recording of
a hearing. The requesting party or
parties shall pay the reporter directly for
the cost of creating an official transcript.
§ 229.2
PART 230—REQUESTS FOR
RECONSIDERATION
General.
This part prescribes rules pertaining
to procedures for reconsideration of a
final determination issued by the
Copyright Claims Board (‘‘Board’’). A
party may request reconsideration
according to the procedures in this part
if the party identifies a clear error of law
or fact material to the outcome or a
technical mistake. A party may also
request reconsideration to vacate a
default determination.
jspears on DSK121TN23PROD with PROPOSALS3
§ 230.2
Request for reconsideration.
Upon receiving a final determination
from the Board, any party may request
that the Board reconsider its
determination. Such a request must be
filed within 30 days of the
determination and shall be no more
than 12 doubled-spaced pages in 12point font or larger, for both body text
and footnotes, with at least one-inch
margins on the top, bottom, left, and
right of each page. The request must
identify a clear error of law or fact that
was material to the outcome or a
technical mistake. The request shall not
merely repeat any oral or written
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Response to request.
A party opposing a request for a
reconsideration may file a response to
the request within 21 days of the date
of service of the request. Such response
shall be no more than 12 double-spaced
pages in 12-point font or larger, for both
body text and footnotes, with at least
one-inch margins on the top, bottom,
left, and right of each page. No reply
shall be filed by the party seeking
reconsideration absent leave of the
Board.
No new evidence.
Evidence that was not previously
submitted to the Board as part of written
testimony or at a hearing or in response
to a specific request for evidence from
the Board shall not be submitted as part
of a request for reconsideration or a
response to a request, except where the
party demonstrates, through clear and
convincing evidence, that the evidence
was not available to that party in the
exercise of reasonable diligence prior to
the submission of written testimony or
prior to the hearing.
§ 230.5
General.
Request for reconsideration.
Response to request.
No new evidence.
Determination.
Authority: 17 U.S.C. 702, 1510.
§ 230.1
§ 230.3
§ 230.4
Record certification.
Upon a written request to the Records
Research and Certification Section of
the U.S. Copyright Office pursuant to 37
CFR 201.2, and payment of the
appropriate fee pursuant to 37 CFR
201.3, the Board will certify the official
record of a proceeding.
■ 12. Part 230 is added to read as
follows:
Sec.
230.1
230.2
230.3
230.4
230.5
argument made to the Board as part of
the proceeding but shall be specific as
to the purported error or technical
mistake that is the subject of the request.
Determination.
After the filing of response papers or
after the time for a party opposing the
request for reconsideration to file a
response has elapsed, the Board shall
consider the request and any response
and shall either deny the request for
reconsideration or issue an amended
final determination. The Board will base
its decision on the party’s written
submissions.
■ 13. Part 231 is added to read as
follows:
PART 231—REGISTER’S REVIEW
Sec.
231.1
231.2
231.3
231.4
231.5
231.6
General.
Request for Register’s review.
Response to request.
No new evidence.
Standard of review.
Determination.
Authority: 17 U.S.C. 702, 1510.
§ 231.1
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Request for Register’s review.
A party may not file for review of the
Board’s final determination by the
Register of Copyrights unless it has first
filed, and had denied, a request for
reconsideration. Where the Board has
denied a request for reconsideration, the
party who requested reconsideration
may request review of the final
determination by the Register of
Copyrights. Such a request must be filed
within 30 days of the denial of a request
for reconsideration and shall be no more
than 15 doubled-spaced pages in 12point font or larger, for both body text
and footnotes, with at least one-inch
margins on the top, bottom, left, and
right of each page. The request must
include the reasons the party believes
there was an abuse of discretion in
denying the request for reconsideration.
The request must be accompanied by
the filing fee set forth in 37 CFR
201.3(g).
§ 231.3
Response to request.
A party opposing the request for
review may file a response to the
request for review within 21 days of the
date of service of the request. Such
response shall be no more than 15
double-spaced pages in 12-point font or
larger, for both body text and footnotes,
with at least one-inch margins on the
top, bottom, left, and right of each page.
The request must include the reasons
the party believes there was no abuse of
discretion in denying the request for
reconsideration. No reply filings shall
be permitted.
§ 231.4
No new evidence.
Evidence that was not previously
submitted to the Board as part of written
testimony or at a hearing or in response
to a specific request for evidence from
the Board shall not be submitted as part
of a request for review or a response to
a request for review.
§ 231.5
Standard of review.
The Register’s review shall be limited
to consideration of whether the Board
abused its discretion in denying
reconsideration of the determination.
§ 231.6
General.
This part prescribes rules pertaining
to procedures for review by the Register
of Copyrights of a final determination by
the Copyright Claims Board (‘‘Board’’).
A party whose request for
reconsideration has been denied under
37 CFR 230.5 may seek review of the
final determination by the Register of
Copyrights not later than 30 days after
a request for reconsideration has been
denied in whole or in part.
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69915
Determination.
After the filing of response papers or
after the time for a party opposing the
request for review to file a response has
elapsed, the Register shall consider the
request and any response and shall
either deny the request for review or
remand the proceeding to the Board for
reconsideration of issues specified in
the remand and for issuance of an
amended final determination. The
Register will base such a decision on the
party’s written submissions.
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14. Part 232 is added to read as
follows:
■
PART 232—CONDUCT OF PARTIES
Sec.
232.1
232.2
232.3
232.4
232.5
General.
Representations to the Board.
Bad-faith conduct.
Bar on initiating claims.
Attorney and representative conduct.
Authority: 17 U.S.C. 702, 1510.
§ 232.1
General.
All parties and any attorneys or other
representatives shall act with the utmost
respect for others and shall behave
ethically and truthfully in connection
with all submissions and appearances
before the Copyright Claims Board
(‘‘Board’’).
§ 232.2
Representations to the Board.
By submitting materials or advocating
positions before the Board, a party,
including any attorneys representing a
party, certifies that to the best of the
party’s knowledge, information, and
belief, formed after a reasonable inquiry
under the circumstances:
(a) It is not being presented for any
improper purpose;
(b) Any legal contentions are made in
good faith based on the party’s
reasonable understanding of existing
law;
(c) Any factual contentions have
evidentiary support or, if specifically so
identified, will likely have evidentiary
support after a reasonable opportunity
for further investigation or discovery;
and
(d) Any denials of factual contentions
have evidentiary support or, if
specifically so identified, are reasonably
based on belief or a lack of information.
jspears on DSK121TN23PROD with PROPOSALS3
§ 232.3
Bad-faith conduct.
(a) General. The Board shall award
costs and attorneys’ fees as part of a
determination where it is established
that a party or its representative engaged
in bad-faith conduct, unless such an
award would be inconsistent with the
interests of justice.
(b) Allegations of bad-faith conduct—
(1) On the Board’s initiative. On its own,
and prior to a final determination, the
Board may order a party or its
representative to show cause why
certain conduct does not constitute badfaith conduct. Within seven days, the
party or representative accused of badfaith conduct shall file a letter response
to this order, which shall be not more
than three pages.
(2) On a party’s initiative. A party that
in good faith believes that another party
or its representative has engaged in badfaith conduct, may file a letter
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describing the alleged bad-faith
conduct, attaching any relevant exhibits,
and requesting a conference with the
Board. Within seven days of the date of
service of the letter, the accused party
or representative may file a response to
this letter. Any letters described within
this paragraph (b)(2) shall be no longer
than three pages. No reply letters shall
be permitted, unless the Board grants
leave for a reply.
(c) Establishing bad-faith conduct.
After an accused party’s or
representative’s response letter has been
filed under paragraph (b) of this section,
or the time to file such a letter has
passed, the Board shall either make a
determination that no bad-faith conduct
occurred or schedule a conference
concerning the allegations.
(d) Determining the award. In
determining whether to award
attorneys’ fees and costs due to bad-faith
conduct, and the amount of any such
award, the Board shall consider the
letters submitted by the parties, any
arguments on the issue, and the accused
party’s or representative’s behavior in
other proceedings. Any award of
attorneys’ fees or costs shall be included
in the final determination. Such an
award shall be limited to an amount of
not more than $5,000, unless—
(1) The adversely affected party
appeared pro se in the proceeding, in
which case the award shall be limited
to costs in an amount of not more than
$2,500; or
(2) Extraordinary circumstances are
present, such as a demonstrated pattern
or practice of bad-faith conduct, in
which case the Board may award costs
and attorneys’ fees in excess of the
limitations in this section.
§ 232.4
Bar on initiating claims.
(a) General. A party or a party
representative that has been found to
have engaged in bad-faith conduct on
more than one occasion within a 12month period shall be subject to the
penalties set forth in paragraph (d) of
this section.
(b) Allegations of multiple instances
of bad-faith conduct—(1) On the
Board’s initiative. On its own, and at
any point during a proceeding, the
Board may order a party or its
representative to show cause why
certain conduct engaged in on more
than one occasion within a 12-month
period does not constitute bad-faith
conduct. Within seven days, such
accused party or representative shall file
a letter response to this order, which
shall be not more than three pages in
length.
(2) On a party’s initiative. A party that
in good faith believes that another party
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or its representative to the proceeding
has engaged in bad-faith conduct before
the Board on more than one occasion
within a 12-month period, may file a
letter with the Board at any point after
a proceeding has been initiated. Such
letter shall describe the alleged
instances of bad-faith conduct, include
the case numbers for any other instances
of bad-faith conduct if known, attach
any relevant exhibits, and request a
conference with the Board. Such a letter
filed by a respondent before the time to
opt out of the proceeding has expired
shall not operate as a waiver of that
respondent’s right to opt out of the
proceeding. Within seven days of the
date of service of the letter, the accused
party or representative may file a
response to this letter. Any letters
described within this section shall be
not more than three pages in length. No
reply letters shall be permitted unless
the Board grants leave.
(c) Establishing bad-faith conduct.
After an accused party’s or
representative’s response letter has been
filed under paragraph (b) of this section,
the Board shall either make a
determination that the party or
representative has not engaged in badfaith conduct before the Board on more
than one occasion within a 12-month
period, or shall schedule a conference
concerning the allegations. An award of
attorneys’ fees or costs against the
accused party or its representative,
pursuant to § 232.3, within the prior 12
months shall establish an instance of
bad-faith conduct within the requisite
time period. The Board may consider
other evidence of bad-faith conduct by
the accused party or representative that
did not result in an award of attorneys’
fees or costs pursuant to § 232.3,
including but not limited to claims that
were reviewed by a Copyright Claims
Attorney and found to be noncompliant
or where proceedings were initiated but
the respondent opted out.
(d) Penalties. In determining whether
to bar a party from initiating claims or
a representative from initiating claims
on a party’s behalf, the Board shall
consider the letters submitted by the
parties, any arguments on the issue, and
the accused party’s or representative’s
behavior in other proceedings. The
Board shall issue its determination in
writing. If the Board determines that the
accused party or representative has
engaged in bad-faith conduct on more
than one occasion within a 12-month
period, such determination shall
include:
(1) A provision that the accused party
be barred from initiating a claim, or in
the case of a representative, barred from
initiating claims for parties, before the
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Board for a period of 12 months
beginning on the date on which the
Board makes such a finding;
(2) In the case of bad-faith conduct by
a party, dismissal without prejudice of
any proceeding commenced by that
party or by the representative on behalf
of a party that is still pending before the
Board at the time the finding is made,
except that active proceedings shall be
dismissed only if the respondent
provides written consent to the
dismissal; and
(3) In the case of a representative, a
provision that the representative be
barred from representing any party
before the Board for a period of 12
months beginning on the date on which
the Board makes such a finding. In
deciding whether the representative
shall be barred from representing other
parties in already pending proceedings,
the Board may take into account the
hardship to the parties represented by
the sanctioned representative. If a
representative is barred from further
representing a party in a pending claim,
the Board will consider requests from
that party asking the Board to amend the
scheduling order or issue a stay of the
pending action to allow that party to
find other representation. Whether to
issue amend the scheduling order or
issue a stay shall be at the Board’s
discretion.
jspears on DSK121TN23PROD with PROPOSALS3
§ 232.5 Attorney and representative
conduct.
(a) Notices of appearance. If a party
elects to be represented by an attorney
or other representative in a proceeding,
such attorney or representative must file
a notice of appearance that provides the
name of the case, the representative’s
bar number in a State in which the
representative has been admitted to
practice (if applicable), the case number
(if assigned), the person on whose
behalf the appearance is made, and the
representative’s mailing address, email
address, and telephone number. Similar
notice must also be given for any
withdrawal of appearance.
(b) Bar admissions. An attorney must
be a member in good standing of the bar
of the highest court of a State, the
District of Columbia, or any territory or
commonwealth of the United States. A
law student representative must qualify
under regulations governing law student
representation of a party ([to be
proposed at 37 CFR part 234]). An
attorney or representative must file with
the Board a written statement under
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penalty of perjury that the attorney or
representative is currently qualified and
is authorized to represent the party on
whose behalf the attorney or
representative appears.
(c) Disbarred attorneys. Any attorney
or representative who has been
disbarred by any Federal court, a court
of any State, the District of Columbia, or
any territory or commonwealth of the
United States shall not be allowed to
represent a party before the Board. If an
attorney in any proceeding active or
pending before the Board is disbarred
after a notice of appearance has been
made, the attorney must report the
disbarment to the Board and withdraw
representation from any proceeding.
(d) Duties toward the Board and the
parties. An attorney or representative
has a duty of candor and impartiality
toward the Board, and a duty of fairness
toward opposing parties and counsel. In
assessing whether an attorney or
representative has breached its duties,
the Board shall consider the rules of
professional conduct of the District of
Columbia and the State in which the
attorney practices.
(e) Penalties for violation. Any
attorney or representative found to be in
violation of any of the rules of conduct
as set forth in this section, or who is
otherwise found to be behaving
unethically or inappropriately before
the Board, may be barred from
representing parties in proceedings
before the Board for a period of twelve
months.
■ 15. Part 233 is added to read as
follows:
PART 233—LIMITATION ON CASES
Sec.
233.1
233.2
233.3
General.
Limitation on proceedings.
Temporary limitations.
Authority: 17 U.S.C. 702, 1510.
§ 233.1
General.
This part prescribes rules pertaining
to the management of the Copyright
Claims Board’s (‘‘Board’s’’) docket and
prevention of abuse of the Board’s
proceedings.
§ 233.2
Limitation on proceedings.
(a) Maximum number of proceedings
filed by a party. A party, including a
corporate party’s parents, subsidiaries,
and affiliates, shall file no more than 10
Copyright Claims Board proceedings in
any 12-month period. A private attorney
or law firm shall represent a claimant in
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69917
no more than 40 Copyright Claims
Board proceedings in any 12-month
period. A proceeding shall count toward
this limitation as soon as it is filed,
regardless of how the proceeding is
resolved, whether it is found to be
noncompliant or unsuitable, voluntarily
dismissed, or fails to become active due
to a respondent’s opt-out. Amendments
to a claim and counterclaims filed in
response to a claim shall not count
toward this limit.
(b) Circumvention of limit. It shall be
considered bad-faith conduct under 37
CFR 232.3 for a party to take any action
for the sole purpose of avoiding the
limitation on the number of proceedings
that may be filed as set forth in this
section.
(c) Maximum total number of
proceedings before the Board. There
shall not be a maximum total number of
proceedings that may be filed before the
Board.
§ 233.3
Temporary limitations.
(a) Moratorium on new claims. When
the Board has determined that the
number of pending cases before it has
overwhelmed the capacity of the Board,
the Board may impose a temporary stay
on the filing of claims or on the number
of claims that may be filed by a party
or representative. The Board shall
publish an announcement of that
determination on its website, stating the
effective date of the stay, and the
duration of the stay, not to exceed six
months.
(b) Exception to moratorium. If a
claimant’s statute of limitations under
17 U.S.C. 1504(b) is about to expire
during the stay under paragraph (a) of
this section, the claimant may file a
claim on or before the statutory deadline
accompanied by a declaration under
penalty of perjury stating that the statute
of limitations will expire during the stay
and setting forth facts in support of that
conclusion. If the Board determines that
the statute of limitations likely will
expire during the stay based on the facts
set forth in the declaration, the Board
shall hold the claim in abeyance and
conduct a compliance review following
the end of the stay.
Dated: November 24, 2021.
Kevin R. Amer,
Acting General Counsel and Associate
Register of Copyrights.
[FR Doc. 2021–26058 Filed 12–7–21; 8:45 am]
BILLING CODE 1410–30–P
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Agencies
[Federal Register Volume 86, Number 233 (Wednesday, December 8, 2021)]
[Proposed Rules]
[Pages 69890-69917]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-26058]
[[Page 69889]]
Vol. 86
Wednesday,
No. 233
December 8, 2021
Part V
Library of Congress
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Copyright Office
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37 CFR Parts 201, 220, 222, et al.
Copyright Claims Board: Active Proceedings and Evidence; Proposed Rule
Federal Register / Vol. 86 , No. 233 / Wednesday, December 8, 2021 /
Proposed Rules
[[Page 69890]]
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LIBRARY OF CONGRESS
Copyright Office
37 CFR Parts 201, 220, 222, 225, 226, 227, 228, 229, 230, 231, 232,
and 233
[Docket No. 2021-8]
Copyright Claims Board: Active Proceedings and Evidence
AGENCY: U.S. Copyright Office, Library of Congress.
ACTION: Notice of proposed rulemaking.
-----------------------------------------------------------------------
SUMMARY: The U.S. Copyright Office is issuing a notice of proposed
rulemaking to establish procedures governing active proceedings before
the Copyright Claims Board and post-determination procedures. The
proposed rule provides requirements regarding procedural practice,
scheduling, conferences, discovery, written testimony, hearings,
settlement, smaller claims, default and failure to prosecute, records,
post-determination procedures, and conduct of parties. The Office
intends to initiate a subsequent rulemaking regarding law student
representation.
DATES: Initial written comments must be received no later than 11:59
p.m. Eastern Time on February 7, 2022. Written reply comments must be
received no later than 11:59 p.m. Eastern Time on February 22, 2022.
ADDRESSES: For reasons of Government efficiency, the Copyright Office
is using the regulations.gov system for the submission and posting of
public comments in this proceeding. All comments are therefore to be
submitted electronically through regulations.gov. Specific instructions
for submitting comments are available on the Copyright Office website
at https://copyright.gov/rulemaking/case-act-implementation/active-proceedings/. If electronic submission of comments is not feasible due
to lack of access to a computer or the internet, please contact the
Office using the contact information below for special instructions.
FOR FURTHER INFORMATION CONTACT: Megan Efthimiadis, Assistant to the
General Counsel, by email at [email protected], or by telephone at
202-707-8350.
SUPPLEMENTARY INFORMATION:
I. Background
On December 27, 2020, the President signed into law the Copyright
Alternative in Small-Claims Enforcement (``CASE'') Act of 2020.\1\ The
CASE Act directs the Copyright Office to establish the Copyright Claims
Board (``CCB''), a voluntary, alternative forum to federal court for
parties to seek resolution of copyright disputes that have a low
economic value (``small copyright claims'').\2\ The CCB's creation does
not displace or limit a party's ability to bring small copyright claims
in federal court, but rather provides a streamlined and cost-effective
alternative forum to decide those claims.\3\ The CCB has authority to
hear copyright infringement claims, claims seeking a declaration of
non-infringement, and misrepresentation claims under section 512(f) of
title 17.\4\ Participation in the CCB is voluntary for all parties,\5\
and all determinations are non-precedential.\6\ Congress directed that
the CCB begin operations by December 27, 2021, though the Register may,
for good cause, extend that deadline by not more than 180 days.\7\
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\1\ Public Law 116-260, sec. 212, 134 Stat. 1182, 2176 (2020).
\2\ See, e.g., H.R. Rep. No. 116-252, at 18-20 (2019); S. Rep.
No. 116-105, at 7-8 (2019). Note, the CASE Act legislative history
cited is for H.R. 2426 and S. 1273, the CASE Act of 2019, a bill
nearly identical to the CASE Act of 2020. See H.R. 2426, 116th Cong.
(2019); S. 1273, 116th Cong. (2019). In developing the CASE Act,
Congress drew on model legislation in the Office's 2013 policy
report, Copyright Small Claims, https://www.copyright.gov/docs/smallclaims/usco-smallcopyrightclaims.pdf (``Copyright Small
Claims''). Congress also incorporated the Office's report and
supporting materials into the statute's legislative history. H.R.
Rep. No. 116-252, at 19; S. Rep. No. 116-105, at 2.
\3\ H.R. Rep. No. 116-252, at 17; S. Rep. No. 116-105, at 2-3,
9.
\4\ 17 U.S.C. 1504(c)(1)-(3). The CCB cannot issue injunctive
relief, but can require that an infringing party cease or mitigate
its infringing activity in the event such party agrees and the
agreement is reflected in the proceeding's record. Id. at
1504(e)(2)(A)(i), (e)(2)(B). This provision also applies to parties
making knowing material misrepresentations under section 512(f). Id.
at 1504(e)(2)(A)(ii).
\5\ See id. at 1504(a); H.R. Rep. No. 116-252, at 17, 21; S.
Rep. No. 116-105, at 3, 11.
\6\ H.R. Rep. No. 116-252, at 21-22, 33; S. Rep. No. 116-105, at
14.
\7\ Public Law 116-260, sec. 212(d), 134 Stat. at 2199.
---------------------------------------------------------------------------
The CASE Act directs the Register of Copyrights to establish the
regulations by which the CCB will conduct its proceedings, subject to
the provisions of chapter 15 and relevant principles of law under title
17.\8\ On March 26, 2021, the Copyright Office published a notification
of inquiry (``NOI'') inviting public comment on various aspects of the
CCB's operations, which the Office noted would be established through a
series of rulemakings.\9\ The Office has issued two previous notices
\10\ and one final rule \11\ related to CCB procedures. In this notice,
the Office proposes procedures related to conducting an active
proceeding, post-determination review, smaller claims, and the conduct
of parties. The Office will issue additional proposed rules related to
CCB proceedings in one or more subsequent rulemakings.
---------------------------------------------------------------------------
\8\ 17 U.S.C. 1506(a)(1).
\9\ 86 FR 16156 (Mar. 26, 2021). Comments received in response
to the March 26, 2021 NOI are available at https://www.regulations.gov/document/COLC-2021-0001-0001/comment. References
to these comments are by party name (abbreviated where appropriate),
followed by ``Initial NOI Comments'' or ``Reply NOI Comments,'' as
appropriate.
\10\ 86 FR 53897 (Sept. 29, 2021); 86 FR 49273 (Sept. 2, 2021).
\11\ 86 FR 46119 (Aug. 18, 2021).
---------------------------------------------------------------------------
II. Proposed Rule
A. Management of Parties
1. Joinder
The CASE Act provides that a claim or counterclaim shall be
dismissed without prejudice if the CCB determines that it is unsuitable
for determination due to a failure to join a necessary party.\12\ The
statute does not define or otherwise address procedures governing
necessary parties. One comment proposed that the Office adopt Rules 19
and 20 of the Federal Rules of Civil Procedure (``FRCP''), which speak
to joinder of parties, to CCB proceedings.\13\ The Office has
determined, however, that permitting joinder of third parties could
significantly alter the nature of a proceeding and consequently could
impact the notice provided to parties in some cases--for example, where
a respondent declined to exercise its right to opt out based on its
understanding of the parties and scope of the proceeding. Instead, the
Office proposes that existing parties who believe that a necessary
third party has not been joined should raise this issue with the CCB by
filing a short letter setting forth the basis of such belief. After any
other party already in the proceeding has an opportunity to file an
opposing letter, the CCB will evaluate the alleged deficiency and, if
it determines that a necessary party has not been joined, it will
dismiss the proceeding without prejudice as unsuitable. The claimant
may refile its claim with the necessary party included.
---------------------------------------------------------------------------
\12\ 17 U.S.C. 1506(f)(3).
\13\ Am. Intell. Prop. L. Ass'n (``AIPLA'') Initial NOI Comments
at 7.
---------------------------------------------------------------------------
The proposed rule also provides that a necessary third party may
file a request to intervene with the CCB. Each party must then file a
response stating whether the party agrees that the proposed intervenor
is a necessary party and provide the basis for that position. The CCB
will evaluate the request and may hold a conference with all parties
[[Page 69891]]
and the third party requesting intervention. If the CCB determines that
the intervening party is not a necessary party, it will deny the
request and the proceeding will continue with the original parties. If
the CCB determines that the intervening party is a necessary party, it
will permit the intervening party to join the proceeding, as long as no
other party opposes the intervention. A party opposing the intervention
of a necessary party will not need to provide reasons for its
opposition. If any party opposes the intervention, the proceeding will
be dismissed without prejudice. The proposed rule thus permits a
necessary party to be joined only if all parties agree.
The Office welcomes any comments as to whether the statute permits
joinder of parties as outlined in the proposed rule and the
appropriateness of the procedures proposed herein.
2. Dismissal
Under the statute, a claimant may elect to voluntarily dismiss a
claim, respondent, or proceeding by written request at any time before
a respondent files a response to the claim.\14\ Similarly, a
counterclaimant may elect to voluntarily dismiss a counterclaim by
written request before the claimant files a response to the
counterclaim.\15\ Upon receipt of such a written request, the CCB shall
dismiss the claim or counterclaim, as the case may be, without
prejudice.\16\
---------------------------------------------------------------------------
\14\ 17 U.S.C. 1506(q)(1).
\15\ Id. at 1506(q)(2).
\16\ Id. at 1506(q)(1)-(2).
---------------------------------------------------------------------------
The statute is not explicit as to whether a party may voluntarily
withdraw a claim or counterclaim after a response to it has been filed.
The Office's proposed rule addresses this scenario and provides that,
if a written request to withdraw a claim or a counterclaim is received
after the response has been filed, the CCB will dismiss the claim or
counterclaim with prejudice, unless all parties have entered into a
written stipulation that the claim or counterclaim will be dismissed
without prejudice or unless the CCB determines the dismissal should be
without prejudice in the interests of justice. This procedure provides
a mechanism for a claimant or counterclaimant to unilaterally withdraw
a claim after a response has been served, which furthers the statutory
goal of providing a voluntary forum for the resolution of claims.\17\
The proposed rule also protects the interests of a responding party,
who has invested time and resources into the proceeding, and is in line
with the FRCP.\18\ The Office welcomes comments on the advisability of
including a procedure for unilaterally withdrawing a claim or
counterclaim after the response has been served and whether resulting
dismissals should be with or without prejudice. To the extent
commenters believe that such dismissals typically should be with
prejudice, the Office invites comment on whether the CCB should be able
to dismiss a case without prejudice if the circumstances show that such
action is in the interests of justice.
---------------------------------------------------------------------------
\17\ H.R. Rep. No. 116-252, at 17.
\18\ Fed. R. Civ. P. 41.
---------------------------------------------------------------------------
The proposed rule also provides that a written request to withdraw
a claim or counterclaim should include a brief statement signed by the
party seeking dismissal. In addition, it provides that claims or
counterclaims that are voluntarily withdrawn before a response is filed
may be dismissed with prejudice if all parties agree in a written
stipulation that is filed with the CCB. This option is intended to
facilitate early settlement negotiations. Voluntary dismissal will not
impact any other claims or counterclaims in the proceeding.
3. Default and Failure To Prosecute
i. Default Determinations
The CCB may enter a default determination in an active proceeding
where the respondent ``has failed to appear or has ceased participating
in the proceeding.'' \19\ The statute empowers the Office to establish
additional requirements that must be met before the CCB may issue a
default determination.\20\ The legislative history notes that the
statute ``establishes a strong presumption against default judgments''
and provides greater protections against default than those available
in federal court proceedings.\21\ The Office accordingly believes it is
important to have safeguards against defaults where possible, and to
ensure that parties are given adequate notice before a default can be
issued.
---------------------------------------------------------------------------
\19\ 17 U.S.C. 1506(u).
\20\ Id.
\21\ H.R. Rep. No.116-252, at 24.
---------------------------------------------------------------------------
To obtain a default determination, the claimant must still ``submit
relevant evidence and other information in support of the claimant's
claim and any asserted damages,'' even where the respondent has failed
to appear or has ceased participating.\22\ The CCB then will evaluate
the evidence, along with any other requested submissions, and determine
whether the materials provided are sufficient to support a finding in
the claimant's favor and, if so, any appropriate relief and
damages.\23\ If the CCB then determines that a default determination is
appropriate, it must prepare the determination and provide a written
notice to the respondent through all known addresses, including email
addresses, and provide the respondent thirty days to file a submission
in opposition to the default determination.\24\ The CCB must consider a
timely response from the respondent, ``and, after allowing the other
parties to address such submissions, [shall] maintain, or amend its
proposed determination as appropriate, and the resulting determination
shall not be a default determination.'' \25\ If the respondent fails to
respond to the notice, the CCB ``shall proceed to issue the default
determination,'' although the CCB may later vacate such determination
``in the interests of justice.'' \26\ A federal court may also vacate
the default determination ``if it is established that the default . . .
was due to excusable neglect.'' \27\
---------------------------------------------------------------------------
\22\ 17 U.S.C. 1506(u)(1).
\23\ Id.
\24\ Id. at 1506(u)(2).
\25\ Id. at 1506(u)(3).
\26\ Id. at 1506(u)(4).
\27\ Id. at 1508(c)(1)(C).
---------------------------------------------------------------------------
The Office requested comments concerning ``any issues that should
be considered relating to a respondent's default, including but not
limited to regulations regarding proof of damages in default
proceedings.'' \28\ Some commenters urged the Office to adopt
regulations designed to reduce the risk of the CCB becoming a ``default
judgment mill.'' \29\ Suggestions included regulations concerning the
specific form of evidence a claimant must produce in support of a
damages claim,\30\ or a presumption against or even a prohibition on
statutory damages awards in cases of default.\31\ The Office is
concerned, however, that regulations that increase the claimant's
burden in proving damages or circumscribe the kinds of damages
available in the case of a default beyond what is already provided in
the statute could incentivize respondents to avoid engaging with CCB
proceedings due to the perception that the claimant is not likely to be
able to prove or to be awarded significant damages. This could
increase, not reduce, the risk that the CCB would be perceived as a
default
[[Page 69892]]
judgment mill. The proposed rule accordingly does not include such
provisions.
---------------------------------------------------------------------------
\28\ 86 FR at 16162 (citing H.R. Rep. No. 116-252, at 24).
\29\ Authors All. Initial NOI Comments at 7; Engine Initial NOI
Comments at 8-9.
\30\ AIPLA Initial NOI Comments at 7; Ben Vient Initial NOI
Comments at 4.
\31\ Engine Initial NOI Comments at 9; Univ. of Mich. Libr.
Initial NOI Comments at 3.
---------------------------------------------------------------------------
Commenters also urged the Office to adopt regulations ensuring that
the claimant's submissions are carefully scrutinized, that service was
effective,\32\ and that the CCB considers any applicable defenses.\33\
Others opposed a regulation allowing claimants to move for a default
determination, rather than providing the CCB with exclusive authority
to initiate default proceedings.\34\ The Office appreciates these
comments and has endeavored to establish a multistep process designed
to make default less likely through the use of built-in safeguards
encouraging respondents to engage in the process, while also
considering the interests of claimants.
---------------------------------------------------------------------------
\32\ Motion Picture Ass'n, Recording Indus. Ass'n of Am. &
Software and Info. Ass'n of Am. (``MPA, RIAA & SIIA'') Initial NOI
Comments at 16; Ryan Fountain Initial NOI Comments at 2.
\33\ Engine Initial NOI Comments at 9.
\34\ Copyright Alliance, Am. Photographic Artists, Am. Soc'y for
Collective Rights Licensing, Am. Soc'y of Media Photographers, The
Authors Guild, CreativeFuture, Digital Media Licensing Ass'n,
Graphic Artists Guild, Indep. Book Pubs. Ass'n, Music Creators N.
Am., Nat'l Music Council of the United States, Nat'l Press
Photographers Ass'n, N. Am. Nature Photography Ass'n, Prof.
Photographers of Am., Recording Academy, Screen Actors Guild-Am.
Fed. of Television and Radio Artists, Soc'y of Composers &
Lyricists, Songwriters Guild of Am. & Songwriters of N. Am.
(``Copyright Alliance, et al.'') Reply NOI Comments at 16-17.
---------------------------------------------------------------------------
The Office, as allowed but not required under section 1506(u), has
proposed a notice system with extra safeguards to avoid defaults where
possible. Under the proposed rule, where there has been a missed
deadline or requirement, the CCB, following a party's request or on its
own initiative, may issue a notice, which will be delivered by mail and
to known email addresses for the respondent or counterclaim respondent,
explaining that failure to participate may result in the CCB entering a
default determination against that party. This notice will explain the
meaning and consequences of a default determination and provide the
respondent with thirty days from the notice to cure the missed deadline
or requirement. If the respondent has not re-engaged by curing the
missed deadline or otherwise responding to the notice within fifteen
days into the thirty-day window, the CCB will send a second notice to
the respondent that re-attaches the first notice and reminds the
respondent that it must cure the missed deadline or requirement by the
thirty-day deadline.
If the respondent cures the missed deadline or requirement within
the thirty-day window, the proceeding will resume and the CCB will
issue a revised scheduling order, if necessary. If the respondent fails
to cure the missed deadline but otherwise responds with an indication
of an intent to re-engage in the proceeding, the CCB will consider the
response and may either provide the respondent with additional time to
cure the missed deadline, or may proceed with the default process, to
avoid, for instance, a respondent continually taking extensions on
deadlines without permission and only acting when defaults are issued.
If the respondent fails to cure the missed deadline or requirement
within the thirty-day window and does not otherwise request and receive
additional time to cure the missed deadline, the CCB may proceed with
the default process by requiring the claimant to submit evidence in
support of a default determination. Such evidence shall take the form
of the direct written testimony that the claimant ordinarily would put
forward prior to a determination on the merits, and the CCB may request
additional evidence that the claimant has within its possession. The
CCB will then consider such evidence, taking into account any
meritorious defenses that the respondent may have had, and determine
whether the evidence is sufficient to support a finding in favor of the
claimant. If so, the CCB will determine the appropriate relief and
damages, if any, and prepare a proposed default determination that
includes the CCB's finding in favor of the claimant, the damages
awarded, if any, and the dismissal of any counterclaims asserted by the
respondent. The CCB will provide written notice to the respondent of
the default determination and its legal significance, and attach the
proposed default determination and provide the respondent with thirty
days from the notice to respond.
If the respondent responds to this default determination notice by
providing evidence in opposition, the CCB will review the respondent's
submissions and may request additional information, including written
testimony. If the respondent indicates an intent to re-engage in the
proceeding, but does not submit timely evidence, the CCB will have the
discretion to either grant additional time to submit evidence or
proceed with issuing the default determination. The claimant will have
an opportunity to respond to any submissions from the respondent, and
the CCB, in its discretion, may elect to hold a hearing. After
considering any additional evidence or other information provided by
the parties, the CCB will either maintain or amend its proposed
determination. As the CCB will then have considered evidence from both
parties, the resulting final determination will not be classified as a
default determination. The effect of this classification is that the
resulting final determination may not be challenged as a default
determination in a federal district court pursuant to 17 U.S.C.
1508(c). The respondent may, however, seek reconsideration as outlined
in 17 U.S.C. 1506(w) and the accompanying regulations in part 230 of
title 37.
If the respondent fails to respond to the notice of pending default
determination, the CCB will issue the determination as a final
determination. The respondent may challenge the default determination
in federal court within ninety days of its issuance or, provided that
it has not yet initiated proceedings in federal court, may submit a
request to the CCB that the default determination be vacated. The
claimant will have an opportunity to respond to this request, and both
parties will follow the general procedures for reconsideration requests
with respect to their submissions. The CCB may then vacate the default
determination if it finds that vacating the determination is in the
interests of justice.
The statute does not speak to the disposition of a proceeding where
the claimant's evidence is insufficient to support a finding in its
favor. Under the proposed rule, if the CCB determines that the
claimant's evidence is insufficient, it will dismiss the proceeding
without prejudice. The Office believes that this approach is
appropriate given that the claimant may have been unable to
sufficiently gather supporting evidence through discovery due to the
default of the respondent. A dismissal with prejudice thus could
unfairly penalize a claimant and reward a defaulting respondent.
While the statute is generally designed to be lenient and to avoid
defaults, in order to avoid abuse of the system, the proposed rule
permits the CCB, in its discretion, to proceed with the default process
without issuing the two notices described above, and to move forward
with requiring the claimant to submit evidence in support of a default
determination if a respondent misses a third deadline in a proceeding
without good cause. This provision is aimed at encouraging timely
participation and preventing respondents from repeatedly using the
default provisions as a backdoor extension for deadlines. The Office
appreciates any comments concerning whether such a provision is
advisable, and whether there are any other
[[Page 69893]]
appropriate and effective methods for preventing abuse of the default
process.
ii. Failure To Prosecute
The statute establishes a procedure whereby proceedings may be
dismissed due to the failure of a claimant to complete service or to
otherwise participate in the proceeding. Under the statute, the CCB
will dismiss a respondent or an entire proceeding, as is applicable,
without prejudice where a claimant does not complete service on one or
more respondents within ninety days of the CCB approving the claim.\35\
Once a proceeding becomes active, if a claimant (including a
counterclaimant) fails to meet one or more deadlines or requirements
set forth in the CCB's scheduling order without justifiable cause, the
CCB may dismiss the claims after providing the claimant with written
notice and a thirty-day period to respond and cure the missed
deadline.\36\ If the claimant does not comply, the CCB, after
considering any response the claimant provides other than actually
complying with the requirements of the missed deadline, may dismiss the
claims.\37\ As with default determinations, the CCB may subsequently
vacate a dismissal ``in the interests of justice,'' \38\ and a federal
court may vacate the determination ``if it is established that the
default or failure was due to excusable neglect.'' \39\
---------------------------------------------------------------------------
\35\ 17 U.S.C. 1506(v)(1).
\36\ Id. at 1506(v)(2).
\37\ Id.
\38\ Id.
\39\ Id. at 1508(c)(1)(C).
---------------------------------------------------------------------------
The Office solicited comments concerning regulations governing a
claimant's failure to prosecute its claims. One commenter suggested
that the regulations permit a respondent to move for dismissal for
failure to prosecute,\40\ while others opposed such a regulation.\41\
---------------------------------------------------------------------------
\40\ Amazon Initial NOI Comments at 8.
\41\ Copyright Alliance, et al. Reply NOI Comments at 16-17.
---------------------------------------------------------------------------
The proposed rule concerning a claimant's failure to complete
service creates a distinction between necessary parties and non-
necessary parties. If a claimant fails to timely serve a respondent
whose participation is not necessary to adjudicate the claims against
other parties, the CCB will dismiss that respondent from the proceeding
without prejudice, and the proceeding will continue against any
remaining respondents. On the other hand, if a claimant fails to timely
serve a respondent who is a necessary party, the CCB will dismiss the
proceeding without prejudice. If the claimant does not timely serve
each and every respondent, the CCB will dismiss the proceeding without
prejudice.
The proposed rule pertaining to a claimant's failure to prosecute
generally mirrors the provisions regarding a respondent's default.
Under the proposed rule, at the request of a party or on its own
initiative, the CCB may issue a notice to the claimant, which will be
delivered by mail and to all known email addresses for the claimant,
that failure to prosecute may result in the CCB issuing a determination
dismissing the claimant's claims. This notice will explain the legal
effects of such a determination and provide the claimant with thirty
days to cure the missed deadline or requirement. If the claimant has
not re-engaged fifteen days into this thirty-day window, the CCB will
send a second notice to the claimant that re-attaches the first notice
and reminds the claimant that it must cure the missed deadline or
requirement by the thirty-day deadline.
If the claimant cures the missed deadline or requirement within the
thirty-day window, the proceeding will resume and the CCB will issue a
revised scheduling order, if necessary. If the claimant fails to cure
the missed deadline but otherwise responds with an indication of an
intent to re-engage in the proceeding, the CCB will consider the
response and may either provide the claimant with additional time to
cure the missed deadline or requirement, or may proceed with issuing a
determination dismissing the claims. If the claimant fails to cure the
missed deadline or requirement within the thirty-day window and does
not otherwise request and receive additional time to cure the missed
deadline, the CCB will issue a determination dismissing the claims.
Such a dismissal will be with prejudice and may include an award of
attorneys' fees and costs, if appropriate. As with a default
determination, the claimant may challenge the determination in federal
court within ninety days of its issuance or, provided that it has not
yet initiated proceedings in federal court, may submit a request to the
CCB that the determination be vacated. The respondent will have an
opportunity to respond to this request, and both parties will follow
the general procedures for reconsideration requests with respect to
their submissions. The CCB may then vacate the determination in the
interests of justice.
The Office welcomes any comments concerning the proposed rules
concerning a claimant's failure to proceed and specifically, whether
they strike the proper balance between the rights and interests of a
respondent and a claimant.
4. Conduct of Parties
The statute contains several provisions that are designed to deter
and address improper conduct from parties in proceedings before the
CCB. These include provisions authorizing the CCB to penalize bad-faith
conduct by awarding costs and attorneys' fees, and to bar repeat bad-
faith actors from initiating proceedings before the CCB for a period of
twelve months.\42\
---------------------------------------------------------------------------
\42\ 17 U.S.C. 1506(y)(2).
---------------------------------------------------------------------------
i. Bad-Faith Conduct
Under the statute, the CCB may award reasonable costs and
attorneys' fees where it determines that ``a party pursued a claim,
counterclaim, or defense for a harassing or other improper purpose, or
without a reasonable basis in law or fact, . . . unless inconsistent
with the interests of justice.'' \43\ Such an award is typically
limited to $5,000, but where the party appeared pro se, the award may
only include costs and is capped at $2,500.\44\ The award may be
increased beyond the statutory limit ``in extraordinary circumstances''
where there is a demonstrated ``pattern or practice of bad faith
conduct.'' \45\ The statute also authorizes the CCB to bar a party from
initiating claims for a period of twelve months if it determines that
the party engaged in certain bad-faith conduct more than once in a
twelve-month period.\46\ If it reaches such a determination, the CCB
must also dismiss without prejudice any pending proceedings that were
commenced by the bad-faith actor, except that dismissal of any active
proceeding requires the written consent of the respondent.\47\
---------------------------------------------------------------------------
\43\ Id.
\44\ Id. at 1506(y)(2)(A).
\45\ Id. at 1506(y)(2)(B).
\46\ Id. at 1506(y)(3).
\47\ Id.
---------------------------------------------------------------------------
In response to the NOI, commenters suggested that the Office create
a streamlined process or standardized forms to report bad-faith conduct
\48\ and publish a list of bad-faith actors who have been barred from
using the CCB.\49\ Commenters also recommended that the Office
establish rules preventing copyright ``trolls'' from abusing the
[[Page 69894]]
CCB.\50\ One commenter suggested that the regulations include a
mechanism, similar to Anti-SLAPP motions,\51\ whereby a respondent can
make an early motion to dismiss a bad-faith claim.\52\
---------------------------------------------------------------------------
\48\ Amazon Reply NOI Comments at 4; Amazon Initial NOI Comments
at 11-12; Copyright Alliance, et al. Initial NOI Comments at 42.
\49\ Copyright Alliance, et al. Reply NOI Comments at 20;
Comput. & Comms's Indus. Assoc. & internet Assoc. (``CCIA & IA'')
Initial NOI Comments at 7-8.
\50\ Elec. Frontier Found. (``EFF'') Initial NOI Comments at 3;
John Boushka Initial NOI Comments at 1.
\51\ Anti-SLAPP statutes are laws designed to deter strategic
lawsuits against public participation (``SLAPP''), that is, lawsuits
that have the primary purpose of suppressing legitimate criticism or
opposition. Such statutes set forth a special form of motion
practice, referred to as an ``Anti-SLAPP motion,'' that permits the
early dismissal of such lawsuits. See, e.g., DC Comics v. Pac.
Pictures Corp., 706 F.3d 1009, 1013 (9th Cir. 2013) (discussing
California Anti-SLAPP statute).
\52\ Gordon Fiermark Initial NOI Comments at 1.
---------------------------------------------------------------------------
The proposed rule makes both parties and party representatives
subject to various bad-faith conduct provisions. Under the proposed
rule, the CCB will review, as part of its determination of an award of
costs or attorneys' fees, whether a party or its representative engaged
in bad-faith conduct. The Office has defined ``bad-faith conduct''
consistent with the statute, and the rule clarifies that such conduct
may occur at any time during a proceeding. At any point prior to
determination, the CCB may order a party or its representative to show
cause why certain conduct does not constitute bad-faith conduct. The
party or representative will have three days to file a response.
A party may also raise allegations of bad-faith conduct. To do so,
the party must file a letter describing the alleged conduct, attaching
any relevant exhibits, and seeking a conference. The accused party has
seven days in which to file a response if it wishes. After reviewing
the parties' submissions, the CCB must either make a finding that no
bad-faith conduct occurred or schedule a conference to address the
request. The CCB will consider the parties' letters, any arguments on
the issue, and the accused party's behavior in other CCB proceedings in
the preceding twelve months in determining whether to award attorneys'
fees and costs. If the CCB determines that an award of attorneys' fees
and costs is appropriate, the award will be included in the final
determination and will be in accordance with the allowable amounts set
forth in the statute.
The proposed rule also provides that a party or representative who
engages in bad-faith conduct on more than one occasion within a twelve-
month period will be barred from initiating claims before the CCB for a
period of twelve months. The CCB must dismiss any pending proceedings
brought by a party who engaged in repeated bad-faith conduct within the
requisite time period. In its discretion, the CCB may also bar a
representative from participating further in any claims pending before
the CCB, after consideration of any hardship to parties represented by
that person. If a representative is barred from further representing a
party in a pending claim, the CCB will consider requests from that
party asking the Board to provide additional time or a stay of the
pending action to allow that party to find other representation. As
with the proposed rule pertaining to bad-faith conduct within a
proceeding, allegations of multiple instances of bad-faith conduct may
be raised either by the CCB at any point during a proceeding through an
order to show cause or by a party at any point after a proceeding has
been initiated. A party may raise such allegations through a letter
which describes the instances of bad-faith conduct, attaches relevant
exhibits, and requests a conference. A respondent will not waive the
ability to opt out of the proceeding if it raises allegations of bad-
faith conduct with the CCB prior to the expiration of the period to opt
out. The accused party will have an opportunity to respond, regardless
of whether the allegations are raised by the CCB or another party.
After reviewing the parties' submissions, the CCB will either make
a finding that no bad-faith conduct occurred or hold a conference to
address the allegations. The CCB will consider the parties' letters,
any arguments on the issue, and the accused party's behavior in other
proceedings before the CCB. If an accused party has been subject to an
award of attorneys' fees or costs by the CCB due to bad-faith conduct
at any point in the prior twelve months, then that will be considered
an additional instance of bad-faith conduct for purposes of
establishing the bar on initiating claims. However, the CCB may also
consider other evidence of bad-faith conduct by the accused party, even
if such conduct ultimately did not result in a formal finding or an
award of attorneys' fees or costs. For example, the CCB may consider
instances in which the accused party filed claims that were found to be
noncompliant, or bad-faith proceedings that were initiated by the
accused party where the respondent opted out. If the CCB determines
that the accused party has engaged in bad-faith conduct on more than
one occasion in a twelve-month period, the CCB will issue a written
determination that provides that the accused party will be barred from
initiating claims before the CCB for twelve months and, where the bad-
faith actor is a party and not a representative, that any pending
proceedings commenced by the party be dismissed without prejudice, with
the exception that the dismissal of active proceedings requires the
written consent of the respondent in those proceedings.
The proposed rule does not provide for the publication of a list of
bad-faith actors who have been barred from initiating proceedings, as
some commenters suggested, because the Office believes that such a list
would be unduly harsh, especially for non-attorneys. The CCB will,
however, make certain records and findings related to bad-faith conduct
public, so that parties are able to identify patterns of bad-faith
conduct and bring them to its attention. The Copyright Claims Attorneys
will be positioned to identify parties who, notwithstanding being
barred from initiating proceedings, do so anyway in spite of a bar and
will classify such proceedings as noncompliant. The Office welcomes any
other comments concerning the proposed rules for bad-faith conduct,
including whether there should be publication of a list of bad-faith
actors.
ii. Attorney Conduct
The Office also requested comments regarding the adoption of
regulations pertaining to the conduct of attorneys, such as whether to
prohibit attorneys who have been suspended from practicing law from
participating in CCB proceedings and whether to adopt rules addressing
such issues as conduct and discipline, duties of candor, fraud
prevention, and, if necessary, sanction, suspension, exclusion, or
censure.\53\ Commenters generally agreed on the advisability of such
regulations. Some commenters suggested that the CCB should have the
ability to bar or suspend attorneys who engage in bad-faith
conduct,\54\ and some suggested that the CCB should report such
attorneys to their respective bar associations.\55\ Several commenters
agreed that disbarred, suspended, or sanctioned attorneys should not be
permitted to practice before CCB.\56\ Other suggestions were to have
the CCB establish rules of professional conduct \57\ as well as
requirements that attorneys representing
[[Page 69895]]
a party identify themselves; an attorney appearance include a
representation that the attorney is a member of a bar in good standing;
and an attorney who is aware of bad-faith behavior committed by another
attorney inform the CCB.\58\
---------------------------------------------------------------------------
\53\ 86 FR 16164-65.
\54\ CCIA & IA Initial NOI Comments at 7.
\55\ Id.; MPA, RIAA & SIIA Initial NOI Comments at 21.
\56\ Am. Bar Ass'n Intell. Prop. L. Sec. (``ABA-IPL'') Reply NOI
Comments at 8-9; Google Initial NOI Comments at 2; Univ. of Mich.
Libr. Initial NOI Comments at 7.
\57\ Univ. of Mich. Libr. Initial NOI Comments at 7.
\58\ Copyright Alliance, et al. Initial NOI Comments at 42.
---------------------------------------------------------------------------
The proposed rule requires attorneys or other representatives to
file a notice of appearance that consists of the name of the case, the
attorney's bar number (where one exists) in a state in which the
attorney has been admitted to practice, the case number, the person on
whose behalf the appearance is made, and the attorney or
representative's contact information, including email address and
telephone number. Attorneys or other representatives must file a
similar notice when withdrawing an appearance. Except for law student
representatives, attorneys must be a member in good standing of a
state, the District of Columbia, or a United States territory or
commonwealth bar. Attorneys and representatives must file a statement
under penalty of perjury that they are currently qualified and
authorized to represent the party on whose behalf they have appeared.
As some comments suggested, the proposed rule prohibits attorneys
or representatives who have been disbarred by any court from
representing parties before the CCB. If an attorney in an active or
pending proceeding is disbarred after a notice of appearance is made,
the attorney must report the disbarment to the CCB and withdraw
representation. The proposed rule does not prohibit disbarred attorneys
or representatives from representing themselves pro se where they are a
party in a proceeding.
The proposed rule also makes clear that attorneys and
representatives who appear before the CCB have a duty of candor and
impartiality toward the CCB and a duty of fairness towards opposing
parties and counsel. The proposed rule does not establish independent
rules of professional conduct. Instead, the CCB will look to the
District of Columbia's rules of professional conduct and the rules in
the jurisdiction in which the representative practices in determining
whether an attorney or representative has breached these duties.
The proposed rule empowers the CCB to bar attorneys or
representatives who violate any of these standards of conduct, or are
otherwise found to be engaging in bad-faith conduct, from representing
parties before the CCB for twelve months. The Office agrees with
commenters that such a provision is advisable, and believes the
Register has the authority under section 1506(a)(1) to prescribe
regulations governing the conduct of attorneys in proceedings before
the CCB. Such authority would seem to necessarily include the ability
to temporarily bar attorneys from appearing before the CCB.
Furthermore, the statute expressly authorizes a twelve-month bar for
parties who engage in repeated bad-faith conduct,\59\ and defines the
term ``party'' to include ``the attorney of a party, as applicable.''
\60\ The Office invites comments concerning the CCB's authority to
discipline or bar attorneys or representatives in this way and whether
there are any other methods available to the CCB that should be
considered.
---------------------------------------------------------------------------
\59\ 17 U.S.C. 1506(y).
\60\ Id. at 1501(3)(B).
---------------------------------------------------------------------------
5. Limitation on Cases
The statute provides the Office with the option of establishing
regulations to limit the number of proceedings a party may bring each
year ``in the interests of justice and the administration of the
Copyright Claims Board.'' \61\ Congress explained that this power
``functions as both a docket management tool . . . and as protection
against abusive conduct.'' \62\ In the NOI, the Office indicated its
expectation that it would exercise this authority, subject to re-
evaluation after the CCB is able to determine the size of its
workload.\63\
---------------------------------------------------------------------------
\61\ Id. at 1504(g).
\62\ H.R. Rep. No. 116-252, at 31.
\63\ 86 FR 16164.
---------------------------------------------------------------------------
The Office sought public comment relating to the initial limitation
of the permitted number of proceedings a claimant may file each
year.\64\ Commenters were generally supportive of a limit on the number
of claims a party may bring in a year, and suggested limits that ranged
from two to four hundred cases.\65\ A few commenters opposed a limit
due to concerns that it would disproportionately disadvantage claimants
who hold copyrights in many works \66\ or that a strict limitation
would run the risk of being arbitrary and capricious.\67\ One commenter
suggested a similar restriction be imposed on firms and agents,
prohibiting them from representing more than one claim per client per
year.\68\ Other commenters suggested certain exemptions from the
limitation, including for counterclaims,\69\ for proceedings where a
respondent ultimately opts out or that otherwise do not become
active,\70\ and for organizations acting on behalf of multiple rights
holders.\71\ One commenter suggested that the Office consider the
financial situation of the claimant and the market price of the
infringed work in determining the limit.\72\
---------------------------------------------------------------------------
\64\ Id.
\65\ CCIA & IA Initial NOI Comments at 6 (10 cases); Copyright
Alliance, et al. Initial NOI Comments at 41 (20 cases for first
year, with discretion to permit more cases for good cause and in
interests of justice); Davis Jr. & Luce Initial NOI Comments at 3
(two cases seeking damages over $2500); George LaBonty Initial NOI
Comments at 1; Univ. of Mich. Initial NOI Comments at 6-7 (10-12
cases); Verizon Initial NOI Comments at 6-7 (four cases).
\66\ MPA, RIAA & SIIA Initial NOI Comments at 19-20.
\67\ Science Fiction and Fantasy Writers of Am. Reply NOI
Comments at 6.
\68\ Verizon Initial NOI Comments at 6-7.
\69\ Copyright Alliance, et al. Initial NOI Comments at 41.
\70\ Id. at 41-42; MPA, RIAA & SIIA Initial NOI Comments at 20.
\71\ Copyright Alliance, et al. Initial NOI Comments at 41.
\72\ Niskanen Center Initial NOI Comments at 5.
---------------------------------------------------------------------------
Upon consideration of these comments, the Office has proposed a
requirement that a party may file no more than ten proceedings in any
twelve-month period. The Office believes this limit will help to ensure
that the CCB is able to effectively manage its docket, particularly
given that the Office has not proposed an upper limit on the total
number of proceedings that may be pending before the CCB, as discussed
further below. The Office also seeks to avoid the possibility that
proceedings may be overwhelmed by just a few claimants. A private
attorney or law firm may represent a claimant in no more than forty
proceedings in any twelve-month period. A proceeding will count toward
this limitation as soon as it is filed, regardless of how it is
resolved (e.g., even if it is found noncompliant or unsuitable, is
voluntarily dismissed, or is dismissed due to a respondent's opt out).
However, amendments to a claim or the filing of counterclaims will not
count toward this limit. Any action taken for the sole purpose of
avoiding this limitation will constitute bad-faith conduct under the
proposed rule. At this time, the proposed rule does not limit the
maximum number of total proceedings that may be filed before the CCB by
all parties combined.
The proposed rule also provides the CCB with the ability to impose
a temporary limitation on the number of proceedings that may be pending
before it or the number of proceedings that a party or representative
may have pending before the CCB in a twelve-month period. Such a
limitation would remain in place for a period that may not exceed six
months in the absence of a notice and comment rulemaking. This
[[Page 69896]]
provision is intended to enable the CCB to react quickly in the event
that it is inundated with more claims than it is able to handle.
Claimants confronted with a potential statute of limitations issue
because of the moratorium may file a claim accompanied by a declaration
under penalty of perjury attesting that the statute of limitations will
expire during the stay and setting forth facts in support of that
conclusion. If the CCB determines that the statute of limitations
likely will expire during the stay based on the facts set forth in the
declaration, the CCB will hold the claim in abeyance and conduct its
compliance review of the claim after the end of the moratorium.
The Office welcomes any comments as to whether these limitations
strike the proper balance between the interests of the parties and the
efficient management of the CCB's work.
B. Management of Proceedings
1. Applicability of Federal Rules of Civil Procedure and Federal Rules
of Evidence
The statute includes a general prohibition on formal motion
practice, subject to certain exceptions, but permits parties to make
various ``requests.'' \73\ The statute also sets forth the types of
evidence that the CCB may consider in a proceeding--namely, relevant
documentary and other nontestimonial evidence as well as relevant
testimonial evidence submitted under penalty of perjury.\74\ The
statute does not otherwise speak to the applicability of the FRCP and
the Federal Rules of Evidence (``FRE'').
---------------------------------------------------------------------------
\73\ 17 U.S.C. 1506(m).
\74\ Id. at 1506(o).
---------------------------------------------------------------------------
The Office solicited comments regarding whether it should adopt any
provisions of the FRCP in areas relevant to the CCB's operations,
potentially with modifications to simplify them and make them more
accessible.\75\ The Office received several comments on this issue with
wide-ranging recommendations on the applicability of the Federal Rules
to CCB proceedings. Commenters suggested additional models to look to
beyond the Federal Rules \76\ and recommended specific provisions that
they thought the CCB should adopt, such as those regarding initial
status conferences \77\ and mechanisms for summary dismissal of
unsuitable claims.\78\ Several commenters agreed that CCB proceedings
should be more flexible and permissive than federal proceedings,\79\
especially with respect to the admission of evidence.\80\ Some
commenters emphasized that the CCB should make use of standardized
forms, as opposed to the more customized approach to submissions in
federal court proceedings.\81\
---------------------------------------------------------------------------
\75\ 86 FR 16168.
\76\ ACUS Initial NOI Comments at 1-3.
\77\ AIPLA Initial NOI Comments at 6.
\78\ LCA Reply NOI Comments at 4.
\79\ AIPLA Initial NOI Comments at 8.
\80\ Id.; Copyright Alliance, et al. Initial NOI Comments at 22.
\81\ AIPLA Initial NOI Comments at 1; Copyright Alliance, et al.
Initial NOI Comments at 21-22; Vient Initial NOI Comments at 4.
---------------------------------------------------------------------------
The Office agrees with commenters that CCB proceedings should be
more flexible and permissive than federal court proceedings. Similarly,
and especially given the lack of need to worry about confusing a jury,
and the desire not to force unsophisticated parties to learn the rules
of evidence, the Board will be more flexible in accepting evidence than
a strict adherence to the FRE would require.\82\ Accordingly, the
proposed rule makes clear that the CCB is not bound by the FRCP or the
FRE and that citations by parties to the FRCP and FRE will only be
considered to the extent they are persuasive.
---------------------------------------------------------------------------
\82\ The CASE Act provides that the Board CCB may consider
various forms of evidence and that ``such evidence may be admitted
without application of formal rules of evidence.'' 17 U.S.C.
1506(o).
---------------------------------------------------------------------------
2. Scheduling Order
The statute provides that the CCB will issue a scheduling order,
which may be amended in the interests of justice, specifying the
deadlines in a proceeding upon confirmation that it has become an
active proceeding.\83\ The CCB may also hold conferences to address
case management or discovery issues.\84\
---------------------------------------------------------------------------
\83\ Id. at 1506(k).
\84\ Id. at 1506(l).
---------------------------------------------------------------------------
Under the proposed rule, the required scheduling order will include
deadlines for the filing of the respondent's response to the claim
(including any counterclaims); the date and time of a pre-discovery
conference; deadlines for service upon other parties of responses to
the CCB's standard interrogatories and standard production of document
requests; other discovery deadlines; the deadline for requests for
leave to seek additional discovery; the date of the close of discovery;
the date and time of a post-discovery conference; and the deadline for
the filing of written testimony. The proposed rule does not set forth
specific timeframes for each of these deadlines so that the CCB has
flexibility to assess the pace of proceedings and the need for docket
management.
The proposed rule also provides that the CCB may hold additional
conferences beyond the pre-discovery conference and the post-discovery
conference on its own initiative or at the request of any party. All
such conferences will be held virtually. The proposed rule also permits
the CCB to amend the initial scheduling order as needed. The Office
invites comments as to whether any other deadlines should be included
in the initial scheduling order.
The proposed rule contemplates that one or more Officers will hold
all conferences. The Office observes, however, that proceedings could
be streamlined and made more efficient if Copyright Claims Attorneys
are permitted to hold conferences that do not involve the resolution of
a dispute and instead relate to logistical, scheduling, or other non-
substantive matters. Accordingly, the Office solicits comments as to
whether it has the authority to permit such conferences to be held by
Copyright Claims Attorneys rather than Officers.
3. Amending Pleadings
While the statute does not speak to amended pleadings, the Office
proposes a rule that would generally prohibit a claimant from making
substantive changes without another review by the Copyright Claims
Attorneys, or after the time for a respondent to opt out has
expired.\85\ Under the proposed rule, a claimant may freely amend its
claim once as a matter of course before the claim is served by filing
the proposed amendment for a compliance review.\86\ If the compliance
review by the Copyright Claims Attorney already has been completed at
the time of the proposed amendment, it must be submitted for a new
review by a Copyright Claims Attorney to ensure that the claim as
modified is compliant.
---------------------------------------------------------------------------
\85\ See Fed. R. Civ. Pro. 15.
\86\ A detailed explanation of the compliance review can be
found in the Office's notice of proposed rulemaking on initiation of
CCB proceedings. See 86 FR 53898-99.
---------------------------------------------------------------------------
A claimant seeking to amend a claim during the opt-out period may
do so only with the CCB's leave. To seek such leave, the claimant must
submit a short letter to the CCB that sets forth the reasons for the
amendment. The CCB will freely grant leave to amend a claim if justice
so requires, after considering whether the basis for the amendment
should have been reasonably known to the claimant before the claim was
served, along with any other relevant considerations. If the CCB grants
leave for the amendment, it must still be submitted for a compliance
review by a
[[Page 69897]]
Copyright Claims Attorney. If the Copyright Claims Attorney determines
that the amended claim is compliant, the claimant must serve the
amended claim on the respondent within fourteen days. Once the claimant
serves the amended claim, the period for the respondent to opt out will
begin anew, and it will have sixty days to determine whether to opt out
of the proceeding.
If a party seeks to amend a pleading after the opt-out period has
expired, it may only do so with the leave of the CCB. If the CCB grants
such leave, the amendment still must be submitted for a compliance
review. To make a request to amend a pleading after service, the party
must submit a short letter to the CCB, and any opposing parties will be
provided with an opportunity to object or to state that they do not
object. The CCB will freely grant leave as justice so requires, after
considering whether permitting amendment would prejudice any party or
unduly delay the proceeding, and whether the party seeking amendment
reasonably should have known of the basis for an amendment earlier.
Responses to amended pleadings must be made within the later of the
time remaining to respond to the original pleading or within twenty-one
days of the CCB's issuance of notification that the amended pleading is
compliant.
In proposing this approach, the Office seeks to ensure that the
respondent knows the nature and scope of a claim before the opt-out
period expires. In other words, the Office wishes to avoid scenarios
where amendments substantially change the nature of the proceeding
after the opt-out decision has been made. At the same time, the Office
believes it is appropriate to permit certain amendments after service,
especially where an obvious typographical error has been made. The
Office seeks comments concerning these issues and the proper mechanisms
for allowing amendments after service of a pleading while preserving
the purpose of the opt-out provision.
4. Consolidation
The statute is silent concerning whether claims may be consolidated
where they involve identical parties or identical facts and
circumstances, or severed where they involve disparate claims. In line
with the suggestion of one commenter,\87\ the proposed rule provides
that the CCB may consolidate active proceedings that involve the same
parties or that arise out of the same facts and circumstances for
purposes of conducting discovery, submitting evidence, or holding
hearings, but not for purposes of CCB determinations and any damages
award. Regarding severance, Copyright Claims Attorneys likely will, in
the ordinary course, be able to identify during their review process
instances where multiple claims involving disparate facts and
circumstances have been asserted, and can require that the claimant
separate out such disparate claims. The proposed rule also permits the
CCB to sever proceedings with respect to some or all parties, claims,
and issues where it becomes evident that a single proceeding includes
distinct claims involving disparate facts and circumstances that would
be inappropriate to resolve in a single proceeding.
---------------------------------------------------------------------------
\87\ Science Fiction and Fantasy Writers of Am. Initial NOI
Comments at 6.
---------------------------------------------------------------------------
Unlike the rule on consolidation, claims that have been severed
will be treated together for purposes of damages, so that the
cumulative amount of damages awarded in the severed proceedings cannot
exceed the maximum damages under the statute for one proceeding. The
CCB may dismiss one of the severed proceedings if it finds it to be
unsuitable, while allowing the remaining proceeding or proceedings to
continue.
The CCB may consolidate or sever proceedings either on its own or
at the request of a party, provided that all affected parties receive
reasonable notice and an opportunity to be heard. A party seeking
consolidation or severance must submit a short letter to the CCB,
setting forth the basis for the request, seeking a conference between
the CCB and parties from each affected case, and, in the case of a
consolidation, providing the docket numbers of each affected
proceeding. Parties opposed to the consolidation or severance may file
a response objecting to the request. The CCB will consider whether
consolidation or severance is necessary and balance the necessity for
such action with the timeliness of the request and any undue prejudice
that may result.
The Office is interested in public comments concerning the
advisability of these proposals. In particular, the Office seeks input
as to whether the proposed rule that consolidated proceedings will
remain separate for purposes of determinations and damages could be
used to evade the statutory caps on damages awards in CCB proceedings,
and whether, despite the proposed rule against a party taking actions
to avoid case filing limitations, the proposed rule concerning
severance could enable parties to evade the limitation on the number of
proceedings filed by a single party if a party was able to make
disparate claims against various respondents in a single claim filing,
all of which should not have been filed together, and then attempt to
treat all those claims as one filing even if later severed.
5. Settlement
The statute empowers Officers to facilitate the settlement between
parties of claims and counterclaims.\88\ It also permits some or all of
the parties, at any point in an active proceeding, to request a
settlement conference with an Officer. Parties may also jointly submit
a settlement agreement, which may be adopted in the CCB's final
determination.\89\ Congress was clear that the statute ``reflects an
intent to encourage compromise and settlement'' and is ``designed to
promote compromise,'' as further reflected by the requirement that at
least one of the Officers have experience with alternative dispute
resolution.\90\
---------------------------------------------------------------------------
\88\ 17 U.S.C. 1503(a)(1)(F).
\89\ Id. at 1506(r).
\90\ 17 U.S.C. 1502(b)(3)(iii); H.R. Rep. No. 116-252, at 24.
---------------------------------------------------------------------------
The proposed rule provides that the CCB will encourage voluntary
settlement and will, at a minimum, discuss the appropriateness of
holding a settlement conference as part of the pre-discovery and post-
discovery conferences. At any point in an active proceeding, some or
all parties may jointly request a settlement conference with an Officer
either orally at a conference or in writing. If the request is made in
writing, it must indicate which other parties, if any, join in the
request. The party or parties may request a stay of the proceeding
while settlement discussions are ongoing. Any opposing party may submit
a response letter objecting to the settlement conference or the stay.
Stays will be at the CCB's discretion. If no party objects, the CCB
will schedule a settlement conference. If one or more party objects,
the CCB may still schedule a conference with some or all of the
parties, after considering the basis for the objection and whether any
claims or counterclaims may be resolved if the CCB holds a conference
with only the consenting parties in attendance.
Three days prior to the settlement conference, each participating
party must submit a position statement by email to the Officer
presiding over the settlement conference, which can be provided to the
other parties by agreement, and may include a limited number of
exhibits, to facilitate the settlement discussions. The CCB may
[[Page 69898]]
issue an order staying the proceedings for a period of up to thirty
days at the time the conference is scheduled, during or following the
conference, or at the request of the parties. Such a stay may be
extended at the request of the parties, provided that they are
participating in ongoing settlement discussions. If settlement
discussions have not been successful at the time the stay (or an
extension thereof) expires, the CCB will issue an amended scheduling
order.
If settlement discussions are successful and some or all of the
parties have reached a resolution, the parties may notify the CCB that
they wish to dismiss some or all of the claims or counterclaims and may
also include in their request for a dismissal that the CCB adopt some
or all of the settlement terms in the final determination. The CCB will
dismiss any claims or counterclaims covered by the settlement agreement
with prejudice (unless the parties have agreed otherwise) and will
adopt any requested settlement terms into the final determination,
unless the CCB determines that they are clearly unconscionable.
The Office invites any comments concerning whether there are any
other regulations that should be adopted to facilitate settlement
between the parties. In particular, the Office seeks input on whether
the CCB should be able to order a settlement conference where it sees
possible benefit to holding a conference even where one or more parties
object. The Office also seeks comment regarding the participation of
Officers in settlement conferences. Under the statute, a determination
must be reached by ``the majority of the Copyright Claims Board,'' \91\
which suggests that an Officer who participates in a settlement
conference must also participate in the determination. The Office notes
that in the federal litigation system, there are varying approaches
within the district courts \92\ regarding who should preside over
settlement conferences. Some allow district judges to preside over such
conferences,\93\ while others prefer the use of magistrate judges,\94\
outside neutrals,\95\ or some combination thereof.\96\ The Office
recognizes the possibility that a separation between the Officer who
presides over a settlement conference and the Officers who serve as the
ultimate decision-makers could further encourage participation in
voluntary settlement negotiations, and seeks comments assessing the
likelihood that parties will engage in settlement when the Officer who
presides over the settlement conference will also be involved in the
final determination. The Office is also interested in comment regarding
any statutory authority for the recusal of the settlement conference
Officer from a proceeding, only to terminate the recusal if the two
remaining Officers fail to agree on a determination, and whether
parties could stipulate to such a recusal and to abide by a decision
issued by only the Officers not involved in settlement discussions.
---------------------------------------------------------------------------
\91\ 17 U.S.C. 1506(t).
\92\ Department of Justice, ``ADR in the Federal District
Courts'' (Mar. 2016), https://www.justice.gov/archives/olp/file/827536/download.
\93\ See, e.g., D. Nev. L. Civ. R. 16.5; E.D. Mich. L. Civ. R.
16.3.
\94\ See, e.g., D. Ariz. L. Civ. R. 83.10; D. Colo. L. Civ. R.
16.6.
\95\ See, e.g., U.S. District Court for the Southern District of
New York, ``Mediation Program Procedures,'' at 10 (July 2020); N.D.
Ca. L. ADR R. 2-5.
\96\ See, e.g., E.D. Va. L. Civ. R. 83.6.
---------------------------------------------------------------------------
6. Smaller Claims
The statute directs the Office to establish regulations concerning
claims in which the total damages sought by the claimant do not exceed
$5,000, exclusive of attorneys' fees and costs. These smaller claims
are to be considered and determined by not fewer than one Officer. Such
determinations will have the same effect as a determination issued by
the full CCB.\97\ The legislative history states that such proceedings
should ``have the same procedural protections of any other claim before
the Copyright Claims Board,'' other than that they may be heard by a
single Officer.\98\
---------------------------------------------------------------------------
\97\ 17 U.S.C. 1506(z).
\98\ H.R. Rep. No. 116-252, at 17.
---------------------------------------------------------------------------
The Office solicited comments concerning procedures for such
``smaller claims,'' including regulations that would increase the
efficiency of such proceedings while retaining the CCB's standard
procedural protections.\99\ Several commenters suggested that there be
a strong presumption against discovery in smaller claims
proceedings.\100\ Other suggestions included that only Officers with
substantial experience with copyright infringement claims be permitted
to preside over smaller claims proceedings; \101\ that respondents
should receive the same protections available to defendants in federal
litigation; \102\ and that claimants should be required to indicate as
part of the initial claim whether they are seeking $5,000 or less in
damages.\103\ The legislative history suggested that the Office could
consider delaying rulemaking concerning smaller claims proceedings
until it has an opportunity to evaluate its ordinary procedures and
caseload in practice.\104\ The Office has considered this suggestion
and has decided to institute smaller claims procedures at the outset in
order to provide an option of an increasingly streamlined process for
claims of $5,000 or less. The Office believes that providing such a
process will provide benefits in terms of efficiency and simplicity to
parties and may enable the CCB to handle more claims than it otherwise
could.
---------------------------------------------------------------------------
\99\ 86 FR 16162-63.
\100\ Copyright Alliance, et al. Reply NOI Comments at 17; AIPLA
Initial NOI Comments at 7; Copyright Alliance, et al. Initial NOI
Comments at 29; MPA, RIAA & SIAA Initial NOI Comments at 17.
\101\ Copyright Alliance, et al. Initial NOI Comments at 29.
\102\ Google Initial NOI Comments at 2.
\103\ MPA, RIAA & SIAA Initial NOI Comments at 16-17.
\104\ S. Rep. No. 116-105, at 8.
---------------------------------------------------------------------------
Under the proposed rule, a claimant may either request
consideration under the smaller claims procedures at the time of filing
or amend its request any time prior to service of the claim. When the
claimant seeks to amend its choice after the compliance review but
before service, the CCB must issue a new initial notice reflecting the
change, so that the notice served on the respondent states that the
proceeding will be conducted under the rules for smaller claims.
However, once the claimant chooses the smaller claims procedures and
completes service, that decision may not be reversed without the
consent of the other parties and leave of the CCB.
Smaller claims proceedings will be heard by one Officer, who will
be assigned on a rotating basis at the CCB's discretion. Discovery in
smaller claims proceedings will be limited to the standard
interrogatories, requests for admission, and the standard production of
document requests provided by the CCB, as discussed further below. The
presiding Officer shall not consider any requests for additional
discovery, and expert testimony will be prohibited in smaller claims
proceedings, since any benefits of additional discovery or expert
testimony are unlikely to outweigh the costs and delays that they may
cause. The assigned Officer will issue a determination based solely on
the written testimony and without holding a hearing prior to issuing a
determination.
The Office welcomes comments concerning the proposed rule for
smaller claims and whether it strikes a proper balance between
streamlining
[[Page 69899]]
the process while providing the procedural protections available to
other claims before the CCB.
7. Records and Publication
Under the statute, each final determination of the CCB will be made
available on a publicly accessible website.\105\ The Office is also
directed to establish regulations related to the publication of other
records and information concerning CCB determinations.\106\ The Office
previously indicated that it had requested the provision of an
electronic filing and case management system from the Library of
Congress' Office of the Chief Information Officer, which would provide
capabilities comparable to existing case management systems operated by
other courts and tribunals.\107\ The Office sought comments concerning
public access to CCB records and proceedings, as well as certification
of records and determinations.\108\ Several commenters agreed that
access to determinations and other filings should be publicly
available, but information provided during the course of discovery
should not be made available.\109\ Other commenters argued that there
should be a presumption of public access to CCB filings,\110\ and that
access should be free.\111\ A few commenters requested that the CCB
make available statistics related to CCB proceedings.\112\
---------------------------------------------------------------------------
\105\ 17 U.S.C. 1506(t)(3).
\106\ Id.
\107\ 86 FR 16163.
\108\ Id.
\109\ ABA-IPL Reply NOI Comments at 7; Copyright Alliance, et
al. Initial NOI Comments at 38; MPA, RIAA & SIIA Initial NOI
Comments at 19.
\110\ EFF Initial NOI Comments at 4; Univ. of Mich. Initial NOI
Comments at 5.
\111\ Internet Archive Initial NOI Comments at 3.
\112\ Engine Initial NOI Comments at 9; Univ. of Mich. Initial
NOI Comments at 5.
---------------------------------------------------------------------------
The Office recognizes that the CCB shares characteristics of both
court and ADR proceedings.\113\ Just as some litigants prefer
arbitration in part because the records in such proceedings are not
made available to the public, some claimants and respondents may prefer
that access to their filings in CCB proceedings be limited. Such a
feature might, in fact, play a role in some parties' determinations
whether to file a claim with the CCB or whether to opt out of a CCB
proceeding. Moreover, CCB determinations are not precedential, and
therefore the public interest in such proceedings is arguably less
compelling than it is in judicial proceedings.\114\ The proposed rule
seeks to balance public access with the confidentiality interests of
the parties. It provides that the official written record of a CCB
proceeding will consist of the parties' submissions and documents
issued by the CCB. Members of the public may inspect the available
official written record through the electronic filing system, with the
exception of any materials that have been designated as confidential by
the parties. The Office welcomes comment on whether there should be
additional safeguards for parties to mutually agree to withdraw certain
types of records from public view.
---------------------------------------------------------------------------
\113\ See 17 U.S.C. 1502(b)(9) (providing that the CCB is housed
in the Copyright Office); id. at 1509(b) (providing that a CCB
proceeding qualifies as an alternative dispute resolution process
for purposes of referral by district courts).
\114\ See, e.g., 5 U.S.C. 574 (requiring communications provided
to a neutral during federal alternative dispute resolution be held
confidential unless one of four statutory exceptions apply).
---------------------------------------------------------------------------
The proposed rule also addresses other issues related to public
access to CCB proceedings and documents. The CCB may, in its
discretion, make a transcript of a hearing using available technology
or a court reporter. The Office anticipates that, in general, the CCB
will use standard speech to text transcript technology that is
available with the CCB's videoconferencing system. At the request of a
party, the CCB may designate an official reporter to record and/or
transcribe a hearing. The requesting party or parties will be
responsible for paying the reporter for the cost of the official
transcript directly. The Office welcomes comment regarding whether such
informal raw transcripts, which may contain various errors, should be
added to the official record. Attendance at CCB hearings will be
limited to the parties and their representatives, except with leave of
the CCB. Requests for leave to attend a CCB hearing must be made in
writing. To certify a CCB record, the Office proposes to utilize
preexisting services through its Records Research and Certification
Section.
C. Discovery
The statute allows limited discovery in CCB proceedings. Discovery
may include ``the production of relevant information and documents,
written interrogatories, and written requests for admission,'' as
established by Office regulations.\115\ The CCB has the discretion to
approve, upon a showing of good cause, requests for additional relevant
discovery on a limited basis.\116\ The CCB also may request specific
information and documents from parties, consistent with the interests
of justice.\117\ In addition, the CCB may issue a protective order to
protect confidential materials at the request of a party and for good
cause.\118\ The CCB is empowered to apply an adverse inference
concerning disputed facts against a party who fails to timely provide
relevant discovery materials in response to a proper request, after
providing that party with notice and an opportunity to respond.\119\
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\115\ 17 U.S.C. 1506(n).
\116\ Id.
\117\ Id. at 1506(n)(1).
\118\ Id. at 1506(n)(2).
\119\ Id. at 1506(n)(3).
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Congress provided for limited discovery in CCB proceedings to
``ensure that the proceedings are streamlined and efficient.'' \120\ As
explained in the Office's Copyright Small Claims report, discovery in
federal courts is the ``primary reason for the length of federal court
litigation'' and is associated with ``often substantial costs and
potential for abuse by exploitative litigants.'' \121\ Consistent with
this goal, the Office proposes a period of limited discovery involving
the use of standard CCB-issued interrogatories and standard CCB-issued
document requests, and allowing parties to serve limited requests for
admission. Requests for additional discovery may be granted for good
cause shown. While the CCB may consider requests for expert witnesses,
such requests will be disfavored.
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\120\ 86 FR 16162.
\121\ Copyright Small Claims at 13.
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[[Page 69900]]
1. Protective Orders
The Office solicited comments related to the issuance of protective
orders and the CCB's handling of confidential information, including
whether the CCB should adopt a standard model protective order.\122\
Commenters overwhelmingly endorsed the idea of a standard protective
order established at the initiation of discovery, similar to the
procedures used by the Trademark Trial and Appeal Board
(``TTAB'').\123\ Some commenters argued that an ``Attorneys' Eyes
Only'' level of confidentiality would be inappropriate, as many parties
likely will be proceeding pro se.\124\ Others, however, believed that
such a designation for commercially sensitive information would be
advisable.\125\
---------------------------------------------------------------------------
\122\ 86 FR 16162.
\123\ ABA-IPL Reply NOI Comments at 6; Spotify Reply NOI
Comments at 3; AIPLA Initial NOI Comments at 7; Amazon Initial NOI
Comments at 7-8; Copyright Alliance, et al. Initial NOI Comments at
27; MPA, RIAA, SIIA Initial NOI Comments at 14-15.
\124\ Copyright Alliance, et al. Reply NOI Comments at 16; MPA,
RIAA & SIIA Initial NOI Comments at 14-15.
\125\ Spotify Reply NOI Comments at 3; Amazon Reply NOI Comments
at 6.
---------------------------------------------------------------------------
The Office agrees with the suggestion of providing a standard
protective order to be issued at the request of any party. Under the
proposed rule, once requested by any party, this order will govern all
discovery material exchanged over the course of the proceeding, and
will provide that discovery material received from another party may
only be used in connection with the proceeding and must be returned or
disposed of at the conclusion of the proceeding. The parties may
negotiate customized protective orders that include additional
protections for highly sensitive materials. Customized protective
orders must be approved by the CCB, and a request for deviation from
the standard protective order must explain the need for such deviation.
The standard protective order will provide a single tier of
confidentiality. To promote public access and minimize the number of
sealed filings, the proposed rule prohibits the bulk marking of
documents as ``confidential'' and mandates that confidentiality
designations be made on a document-by-document basis.
Confidential discovery materials, or any discussions thereof, may
be submitted to the CCB in redacted form or filed under seal. If a
document is filed under seal as part of written testimony, a redacted
version of the document must be included in the public record. The
proposed rule also requires the redaction of certain personally
identifiable information from public filings, regardless of whether the
discovery material has been marked confidential.
2. Interrogatories
Commenters favored a limit on the number of interrogatories
permitted.\126\ One comment suggested that the CCB promulgate a
standard set of interrogatories tailored to particular categories of
claims, with the option to add a limited number of additional questions
of each party's choosing.\127\ Another comment suggested that parties
be permitted to propound additional interrogatories beyond an initial
limited number upon a showing of good cause.\128\
---------------------------------------------------------------------------
\126\ Copyright Alliance, et al. Initial NOI Comments at 23;
Amazon Initial NOI Comments at 6-7; MPA, RIAA & SIAA Initial NOI
Comments at 12.
\127\ Copyright Alliance, et al. Initial NOI Comments at 23.
\128\ MPA, RIAA & SIAA Initial NOI Comments at 12.
---------------------------------------------------------------------------
The Office has reviewed these suggestions and proposes that, absent
leave, interrogatories in CCB proceedings be limited to a standard set
that is provided by the CCB through the its website. These standard
interrogatories will, in all cases, solicit information related to
witnesses, individuals with knowledge of the claims and defenses,
relevant agreements between the parties, damages, and a description of
relevant documents. The CCB will also promulgate standard
interrogatories specifically tailored to the type of claims at issue.
For example, a party asserting an infringement claim or responding to a
non-infringement claim will respond to standard interrogatories that
solicit information pertaining to the allegedly infringed work's
copyright registration, ownership, publication history, and creation,
along with the basis of the party's belief that the opposing party's
activities constitute infringement, the discovery of the alleged
infringement, and any attempts to cause the infringement to be ceased
or mitigated. A party responding to an infringement claim or asserting
a non-infringement claim will respond to standard interrogatories that
solicit information pertaining to the ownership, publication history,
and creation of the allegedly infringing work, along with information
pertaining to the party's defenses, any continued use of the allegedly
infringing work, and any revenues or profits directly attributable to
the allegedly infringing work.
A party asserting a misrepresentation claim under 17 U.S.C. 512(f)
will respond to standard interrogatories that solicit information
pertaining to the notification or counter notification, the identity of
and any relevant communications with the internet service provider in
question or with others, the basis for the party's belief that the
notification or counter notification contained a misrepresentation, and
any harm caused by the alleged misrepresentation. A party responding to
a 512(f) misrepresentation claim will respond to standard
interrogatories that solicit information pertaining to the basis for
its defenses and any relevant communications with the internet service
provider in question or with others.
Under the proposed rule, parties have an obligation to update their
interrogatory responses, and serve these updated responses on the other
parties, as soon as possible following the discovery of relevant new or
updated information.
The Office welcomes any comments concerning the standard
interrogatories set forth in the proposed rule and is specifically
interested in any comments concerning any other categories of
information the standard interrogatories should cover.
3. Requests for Admission
Commenters favored similar limits on the number of requests for
admission that may be served in CCB proceedings.\129\ Under the
proposed rule, parties may serve requests for admission on each other
party concerning the facts, the application of law to facts, opinions
about either, or the genuineness of documents. The Office proposes that
the content of requests for admission be left to the discretion of
parties rather than making use of standard forms. Requests for
admission must be separately stated in numbered paragraphs, and
responses are due thirty days after service. Matters admitted will be
treated as conclusively established, unless the CCB permits an
admission to be withdrawn or amended on request and for good cause
shown. If a matter is not admitted, a party must specifically deny it
or state in detail why the party cannot admit or deny it. Any denial
must fairly respond to the substance of the request, and an answer may
specify that part of the request is admitted and then state what is
denied. A party may assert lack of knowledge or information in response
to a request, but
[[Page 69901]]
only with a representation that the party made a reasonable inquiry in
attempting to answer the request, but that the information it knows or
can readily obtain is insufficient to enable it to admit or deny the
information in the request.
---------------------------------------------------------------------------
\129\ Id.; Amazon Initial NOI Comments at 6-7; CCIA & IA Initial
NOI Comments at 4-5.
---------------------------------------------------------------------------
While this rule is modeled after the FRCP,\130\ the Office proposes
a few important modifications. First, the number of requests for
admissions without leave of the CCB is limited to ten, and the rule
makes explicit that compound requests are barred. In addition, in
contrast to the FRCP, if a party fails to timely respond to a request
for admission, the matter asserted is not automatically admitted.
However, the CCB in its discretion may deem it admitted pursuant to its
power to apply adverse inferences with respect to discovery violations
under 17 U.S.C. 1506(n)(3).
---------------------------------------------------------------------------
\130\ Fed. R. Civ. Pro. 36.
---------------------------------------------------------------------------
The Office welcomes public input into this proposed provision,
specifically whether there should be any further limitations on the
subject matter of the requests for admission and whether the proposed
rule strikes the proper balance in adapting the FRCP for pro se
parties.
4. Production of Documents
Several commenters suggested that the regulations pertaining to the
production of documents be drafted so to avoid the production of large
amounts of electronically stored information (``ESI''),\131\ as this is
a common feature of federal court litigation that significantly
increases the costs and burdens on the parties during discovery. These
commenters suggested that the regulations make clear that ESI
productions must be limited to what is available through searches that
a layperson can reasonably handle and should not require the retention
of a discovery vendor.\132\ One comment also suggested that the
regulations prohibit ``document dumps'' of large amounts of irrelevant
or duplicative materials.\133\
---------------------------------------------------------------------------
\131\ Copyright Alliance, et al. Initial NOI Comments at 25-26;
MPA, RIAA & SIIA Initial NOI Comments at 13-14.
\132\ Copyright Alliance, et al. Initial NOI Comments at 25-26;
MPA, RIAA & SIIA Initial NOI Comments at 13-14.
\133\ Copyright Alliance, et al. Initial NOI Comments at 26.
---------------------------------------------------------------------------
The Office agrees with these suggestions. Under the proposed rule,
the CCB will provide standard document production requests that will be
available on its website. As with the standard interrogatories, these
document requests will always involve certain common categories--such
as documents the party is likely to use in support of its claims or
defenses, documents the party is aware of which conflict with its
claims or defenses, and documents related to damages--as well as
document requests specific to the type of claim at issue. A party
asserting infringement or responding to a non-infringement claim will
be required to produce a copy of the allegedly infringed work and
allegedly infringing material (if applicable and available to the
claimant), agreements related to the works at issue, ownership of the
allegedly infringed work, pertinent documents where the allegedly
infringed work is a derivative work, documents related to the allegedly
infringing work, and documents relating to attempts to cause the
alleged infringement to be ceased or mitigated. A party responding to
an infringement claim or asserting a non-infringement claim will be
required to produce a copy of the allegedly infringing material,
agreements related to the works at issue, documents related to the
creation of the allegedly infringing material, documents pertaining to
the allegedly infringed material, and documents relating to any
revenues and profits directly attributable to the allegedly infringing
material. With respect to section 512(f) misrepresentation claims,
parties will be required to produce a copy of the notification or
counter notification at issue, communications with the relevant
internet service provider or others related to the notification or
counter notification, and documents pertaining to the truth or falsity
of any representations made in the notification or counter
notification.
In responding to document requests, each party must conduct a
reasonable search for responsive documents within its possession or
under its control, including in the files of its agents, employees,
representatives, or others acting on its behalf. Responsive documents
may include ESI. In line with commenters' suggestions, however, a
reasonable search of ESI shall not exceed manual searches that are
easily accomplished by a layperson and need not include searches that
require the assistance of third parties, such as a document vendor.
Responses to document requests that include large amounts of irrelevant
or duplicative material will constitute bad-faith conduct. Under the
proposed rule, a party has an obligation to disclose the existence of
any responsive materials that are no longer in its possession and
explain why they are no longer in its possession. A party also has an
obligation to supplement its production as soon as practicable if it
later finds responsive documents.
The Office solicits comments as to this proposed rule. The Office
is specifically interested in any comments related to whether the
proposed rule will sufficiently limit the scope and size of document
productions in CCB proceedings. The Office welcomes any suggestions
pertaining to mechanisms for further limiting the scope of productions,
as well as any other categories of relevant documents that should be
included in the standard document production requests.
5. Disputes and Sanctions
The proposed rule requires parties to attempt to resolve discovery
disputes in good faith without involving the CCB, a principle found in
the FRCP.\134\ Parties must meet and confer, at least through a phone
call, to attempt to reach a resolution prior to raising a discovery
dispute with the CCB. If such an attempt fails, a party seeking
discovery may file a short letter describing the dispute and seeking a
conference with the CCB, and an opposing party will have an opportunity
to file a response prior to the conference. The CCB may then hold a
conference and issue an order resolving the dispute either during or
following the conference and, if applicable, set a deadline for
compliance.
---------------------------------------------------------------------------
\134\ Fed. R. Civ. Pro. 37.
---------------------------------------------------------------------------
If the party fails to timely comply, the party seeking discovery
may send a notice to the allegedly noncompliant party that provides an
additional ten days to comply. If the allegedly noncompliant party
still fails to comply, the party seeking discovery may request that the
CCB impose sanctions. This request may be no longer than ten pages,
plus supporting documents, and the opposing party will have an
opportunity to file a response. The CCB may hold a conference to
address the request for sanctions and will impose sanctions in its sole
discretion and upon good cause shown where the opposing party is found
to be noncompliant with the CCB's discovery order. The sanctions
imposed by the CCB may include an adverse inference against the
noncompliant party regarding the facts directly related to the disputed
discovery. The proposed rule provides that the CCB may also consider
imposing sanctions when awarding attorneys' fees and costs during a
final determination.
The Office is interested in comments concerning whether this
proposed rule strikes the proper balance between the interests and
rights of the respective
[[Page 69902]]
parties. The Office is also interested in comments concerning whether
it has the authority to issue any monetary sanctions specifically
related to a discovery dispute.
D. Evidence
The statute sets out specific categories of evidence that the CCB
may consider in making a determination: Documentary and other
nontestimonial evidence, sworn written testimony, and oral testimony
taken at a hearing.\135\ In exceptional cases, expert witness testimony
or other types of testimony may be permitted for good cause shown.\136\
Testimony may be admitted without application of formal rules of
evidence.\137\ The Office solicited comment regarding applicable
standards for evidence and received comments suggesting that the CCB
look to outside sources for establishing evidence standards, such as
immigration courts \138\ and the Copyright Royalty Board
(``CRB'').\139\
---------------------------------------------------------------------------
\135\ 17 U.S.C. 1506(o).
\136\ Id.
\137\ Id. at 1506(o)(2).
\138\ AIPLA Initial NOI Comments at 8.
\139\ Copyright Alliance, et al. Initial NOI Comments at 22.
---------------------------------------------------------------------------
The proposed rule for evidentiary standards is modeled after the
CRB's rule,\140\ as applicable. The Office proposes adopting the
general standard of accepting all evidence that is relevant and not
unduly repetitious or privileged, as well as the CRB's standards for
testimony and objections at hearings. In addition, the proposed rule
clarifies the role of FRE 401 and 403, and reserves the CCB's right to
discount or exclude evidence with serious credibility issues. It also
establishes that only documentary evidence submitted during the written
testimony phase may be introduced at a hearing, except evidence
required during cross-examination or redirect examination. The Office
has not incorporated the CRB's provision requiring that physical copies
of evidentiary materials be provided to all parties, due to the online
nature of CCB proceedings.\141\ Similarly, due to the nature of CCB
proceedings, the Office also does not incorporate the CRB's standards
regarding the introduction of studies and analyses.
---------------------------------------------------------------------------
\140\ 37 CFR 351.10.
\141\ Id. at Sec. 351.10(d).
---------------------------------------------------------------------------
The proposed rule further provides that testifying witnesses at
hearings must take an oath or affirmation prior to their testimony.
Parties may conduct direct examination, cross-examination, and redirect
examination, but the CCB may limit the number of witnesses who testify
or the scope of the questioning. Parties will be entitled to raise
objections to evidence during the hearing, and the Board will consider
those objections if based on valid reasoning, even if not based on the
technical rules of evidence.
E. Written Testimony
The CCB is barred from instituting formal motion practice except
that it ``may request or permit parties to make submissions addressing
relevant questions of fact or law, or other matters, including matters
raised sua sponte by the Officers, and offer responses thereto.'' \142\
The CCB is further allowed to hear various ``requests'' from the
parties.\143\ As part of its broad flexibility to regulate CCB
proceedings,\144\ the Office proposes a process of written testimony at
the close of discovery that establishes the legal and factual basis for
the dispute. The Office intends that this process may establish the
entire record for the CCB's consideration and that hearings will be
held at the CCB's discretion and as set forth below.
---------------------------------------------------------------------------
\142\ 17 U.S.C. 1506(m)(2).
\143\ Id. at 1506(m)(1).
\144\ Id. at 1506(a)(1), 1510(a)(1).
---------------------------------------------------------------------------
A claimant or counterclaimant begins the process by submitting
written direct testimony in support of its claim or counterclaim. Any
party subsequently responding to that claim shall file written response
testimony thirty days following service of the direct testimony.
Finally, the original claimant or counterclaimant may, but is not
required to, file written reply testimony fourteen days following
service.
Direct and responsive testimony comprises documentary evidence,
witness statements, and party statements. Documentary evidence consists
of non-testimonial evidence sponsored by a witness with knowledge of
its contents and authenticity, unless the document was produced by an
opposing party. Such evidence must have been served on the opposing
parties, and accompanied by a numbered document list that briefly
describes each document included. Witness statements consist of sworn
written testimony, from non-expert witnesses unless leave for experts
has been granted, testifying to factual information based on the
witness's personal knowledge, and sponsoring certain documents in the
document list. A party statement is a brief statement of no more than
twelve double-spaced pages that sets forth a party's position as to key
facts, the law, and damages. For a claimant, such damages information
includes whether it is seeking statutory or actual damages and any
profits of an alleged infringer. For a respondent, such information
includes whether it would voluntarily agree to an order stopping it
from engaging in activities found unlawful; \145\ such an agreement may
be taken into account by the CCB in determining damages. Both elections
may be changed prior to a final determination, and a respondent's
agreement to an injunction will not be considered in any way when
reviewing liability. Reply testimony may only include new documentary
evidence and witness statements to the extent that they are required to
contradict or rebut evidence presented by the opposing party in its
response.
---------------------------------------------------------------------------
\145\ Id. at 1504(e)(2).
---------------------------------------------------------------------------
F. Hearings
In the course of a proceeding, the CCB may conduct hearings.\146\
Hearings on the merits may be held as long as there are no fewer than
two Officers to ``receive oral presentations on issues of fact or law
from parties and witnesses to a proceeding.'' \147\ These hearings,
whenever possible, are to be carried out online or by phone, ``except
that, in cases in which physical or other nontestimonial evidence
material to a proceeding cannot be furnished to the Copyright Claims
Board through available telecommunications facilities, the [Board] may
make alternative arrangements . . . that do not prejudice any other
party to the proceeding.'' \148\ The hearing must be noted in the
record and transcribed.
---------------------------------------------------------------------------
\146\ Id. at 1503(a)(1)(E).
\147\ Id. at 1506(p).
\148\ Id. at 1506(c)(2).
---------------------------------------------------------------------------
The Office proposes that a hearing not be required at the close of
written testimony, but may be held at the CCB's discretion, and may be
convened on the CCB's own initiative or upon a request from any party
for a hearing. A party need not give detailed reasons for its request
for a hearing, but the request must be included in a party statement
submitted during the written testimony phase. Once the hearing has been
conducted, no additional testimony or evidence may be submitted, except
as set forth in post-determination proceedings.
The Office understands that while alternative arrangements may be
made for the submission of material physical or nontestimonial evidence
that cannot be furnished virtually, the statute appears to require
virtual hearings.\149\ However, the Office is interested in providing a
mechanism for in-person
[[Page 69903]]
hearings in the circumstance where such a hearing is requested by all
parties and all parties can attend. The Office welcomes comments
regarding this provision and whether the statute can be read to allow
in-person hearings when requested by all parties and where all parties
can attend.
---------------------------------------------------------------------------
\149\ Id.
---------------------------------------------------------------------------
G. Post-Determination Proceedings
After a determination is rendered, the CCB may reconsider it for
clear error of law or fact upon request of a party.\150\ If
reconsideration is denied, the Register of Copyrights may review the
CCB's decision upon request of a party to determine whether there was
an abuse of discretion in denying reconsideration.\151\ The Office
requested comment on both post-determination proceedings, and proposes
regulations as further set forth below.
---------------------------------------------------------------------------
\150\ Id. at 1506(w).
\151\ Id. at 1506(w), (x).
---------------------------------------------------------------------------
1. Request for Reconsideration
The CCB's determinations are subject to reconsideration or
amendment by the CCB itself, if a party submits a written request
within thirty days of the final determination.\152\ After providing
other parties an opportunity to address the request for
reconsideration, the CCB shall either deny the request or issue an
amended final determination.\153\ The request should not merely repeat
previous arguments made before the CCB, and the CCB will not accept new
evidence unless a party demonstrates through clear and convincing
evidence that the evidence was not available in the exercise of
reasonable diligence prior to the submission of written testimony.
After the requesting party sets forth the purported error that it
believes was material to the outcome or a technical mistake, the non-
requesting party has the opportunity to respond or otherwise oppose the
points made. The Office proposes that responses to requests for
reconsideration be filed within twenty-one days after service of a
request for reconsideration, and that each party's brief may be no more
than twelve double-spaced pages. The Office has not included a
provision for a reply to the response by the requesting party before
the CCB renders a decision, as the statute contemplates only ``an
opportunity [for other parties] to address [the] request.'' \154\
---------------------------------------------------------------------------
\152\ Id. at 1506(w).
\153\ Id.
\154\ Id. at 1506(x).
---------------------------------------------------------------------------
2. Register's Review
Where the CCB denies a party's request for reconsideration of a
final determination in whole or in part, that party can request that
the Register review the determination. Such review ``shall be limited
to consideration of whether the Copyright Claims Board abused its
discretion in denying reconsideration of the determination.'' \155\ A
request must be accompanied by ``a reasonable filing fee,'' to be
established by regulation.\156\ After other parties have had an
opportunity to address the reconsideration request, the Register must
either ``deny the request for review, or remand the proceeding to the
Copyright Claims Board for reconsideration of issues specified in the
remand and for issuance of an amended final determination.'' \157\ The
Office sought public input on any issues relating to the Register's
review, including regulatory standards for the substance of a request,
a reasonable filing fee, and post-review procedures.\158\
---------------------------------------------------------------------------
\155\ Id.
\156\ Id.
\157\ Id.
\158\ 86 FR 16164.
---------------------------------------------------------------------------
Under the proposed rule, a party may request the Register's review
within 30 days of a denial of a request for reconsideration. The
request must identify what the requesting party believes to be the
CCB's abuse of discretion in denying the request for reconsideration
and must be accompanied by a filing fee. The Office proposes that
responses be filed within twenty-one days after service of a request
for Register's review, following procedures similar to those set forth
above with regard to a request for reconsideration filed with the CCB.
Only evidence that was previously submitted to the CCB as part of
written testimony, at a hearing, or in response to a specific request
for evidence from the CCB may be submitted as part of the Register's
review process.
The statute provides ``[i]f the Copyright Claims Board denies a
party a request for reconsideration of a final determination, . . .
that party may . . . request review.'' \159\ This provision is silent
as to the non-requesting party's ability to request the Register's
review if it loses the reconsideration request. That seems to suggest
that only a party who has unsuccessfully requested reconsideration by
the CCB may seek Register review, but not the non-requesting party,
even where the request was successful and the determination is amended.
Accordingly, the Office has not included a provision for the non-moving
party to request review of an amended final determination. The Office
invites comment on this issue, as well as the appropriateness of
allowing the party which did not seek reconsideration, but which now
finds itself on the losing end of the matter, to seek reconsideration
of an amended final determination (i.e., reconsideration of the
reconsideration) without relitigating issues the CCB has already
considered.
---------------------------------------------------------------------------
\159\ 17 U.S.C. 1506(x).
---------------------------------------------------------------------------
Finally, the Office proposes a $300 fee to request the Register's
review. In setting this fee, the Office finds that the fee applicable
to a second request for reconsideration of a denial of registration
provides a useful analogue. When the Registration Program refuses to
register a work, the applicant has two opportunities to request
reconsideration. The first request is considered within the
Registration Program. Second requests are considered by the Register or
her designee, the General Counsel, and a third senior member of the
Office.\160\ The fee for a second reconsideration is $700,\161\ though
the actual cost for providing the service is $4,471.\162\ The Office
anticipates that the Register's review of a CCB determination will
operate in a similar manner and will necessarily involve the time and
expertise of the Register and senior staff. Setting the fee at $300
reasonably reflects the narrower scope of review under this procedure
as compared to registration requests for reconsideration and, in
combination with the proposed filing fee for initiating a claim,\163\
complies with the statutory ceiling of $402.\164\
---------------------------------------------------------------------------
\160\ See generally U.S. Copyright Office, Compendium of U.S.
Copyright Practices, ch. 1700 (3d ed. 2021).
\161\ 37 CFR 201.3(d)(4)(ii).
\162\ Booz Allen Hamilton, 2017 Fee Study Report 2, 26 (2017),
https://www.copyright.gov/rulemaking/feestudy2018/fee_study_report.pdf.
\163\ See 86 FR 53905 (proposed 37 CFR 201.3(g)(1)).
\164\ 17 U.S.C. 1501(c) (setting the sum total of filing fees as
no less than $100 and no more than the cost of filing an action in a
district court of the United States). The statutory fee for filing
suit in a federal district court is $350, 28 U.S.C. 1914(a), and an
additional fee of $52 is charged as an administrative fee by the
Judicial Conference of the United States. Id.
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List of Subjects
37 CFR Part 201
Copyright, General provisions.
37 CFR Part 220
Claims, Copyright, General.
37 CFR Part 222
Claims, Copyright.
[[Page 69904]]
37 CFR Part 225
Claims, Copyright.
37 CFR Part 226
Claims, Copyright.
37 CFR Part 227
Claims, Copyright.
37 CFR Part 228
Claims, Copyright.
37 CFR Part 229
Claims, Copyright.
37 CFR Part 230
Claims, Copyright.
37 CFR Part 231
Claims, Copyright.
37 CFR Part 232
Claims, Copyright.
37 CFR Part 233
Claims, Copyright.
Proposed Regulations
For the reasons stated in the preamble, the U.S. Copyright Office
proposes to further amend chapter II, subchapters A and B, of title 37
Code of Federal Regulations, as proposed to be amended at 86 FR 53897
(September 29, 2021), as follows:
Subchapter A--Copyright Office and Procedures
PART 201--GENERAL PROVISIONS
0
1. The authority citation for part 201 continues to read as follows:
Authority: 17 U.S.C. 702.
Section 201.10 also issued under 17 U.S.C. 304.
0
2. In Sec. 201.3, revise the first column heading in table 4 to
paragraph (g) and add paragraph (g)(3) to read as follows:
Sec. 201.3 Fees for registration, recordation, and related services,
special services, and services performed by the Licensing Section and
the Copyright Claims Board.
* * * * *
(g) * * *
Table 4 to Paragraph (g)
------------------------------------------------------------------------
Copyright claims board fees Fees ($)
------------------------------------------------------------------------
* * * * * * *
(3) Filing fee for review of a final CCB determination 300
by the Register........................................
------------------------------------------------------------------------
Subchapter B--Copyright Claims Board and Procedures
0
3. Revise part 220 to read as follows:
PART 220--GENERAL PROVISIONS
Sec.
220.1 Definitions.
220.2 Authority and functions.
220.3 Handbook.
220.4 Timing.
Authority: 17 U.S.C. 702, 1510.
Sec. 220.1 Definitions.
For purposes of this subchapter:
(a) A claim becomes an active proceeding when the claimant has
filed proof of service and the respondent has not, within the sixty day
opt-out period, submitted an opt-out notice to the Copyright Claims
Board.
(b) Bad-faith conduct occurs when a party pursues a claim,
counterclaim, or defense for a harassing or other improper purpose, or
without a reasonable basis in law or fact. Such conduct may occur at
any point during a proceeding, including before a proceeding becomes an
active proceeding.
(c) A default determination is a final determination issued as part
of the default procedures set forth in 17 U.S.C. 1506(u) when the
respondent does not participate in those procedures.
(d) A final determination is a decision that concludes an active
proceeding before the Board and is binding only on the participating
parties. A final determination generally assesses the merits of the
claims in the proceeding, except when issued to dismiss a claimant's
claims for failure to prosecute.
(e) Standard interrogatories are written questions provided by the
Board that a party in an active proceeding must answer as part of
discovery.
(f) An initial notice means the notice of a proceeding that
accompanies a claim or counterclaim in a Copyright Claims Board
proceeding as described in 17 U.S.C. 1506(g).
(g) A second notice means the notice of a proceeding sent by the
Copyright Claims Board as described in 17 U.S.C. 1506(h).
(h) Standard production of document requests are written requests
provided by the Board requiring a party to provide documents, other
information, or tangible evidence as part of discovery in an active
proceeding.
Sec. 220.2 Authority and functions.
The Copyright Claims Board (``Board'') is an alternative forum to
Federal court in which parties may voluntarily seek to resolve certain
copyright-related claims regarding any category of copyrighted work, as
provided in chapter 15 of title 17 of the United States Code. The
Board's proceedings are governed by title 17 of the United States Code
and the regulations in this subchapter.
Sec. 220.3 Handbook.
The Copyright Claims Board may issue a handbook explaining the
Board's practices and procedures. The handbook may be viewed,
downloaded, or printed from the Board's website. The handbook will not
override any existing statute or regulation.
Sec. 220.4 Timing.
When the start or end date for calculating any deadline set forth
in this subchapter falls on a weekend or a Federal holiday, the start
or end date shall be extended to the next Federal workday. Any document
subject to a deadline must be either submitted to the electronic filing
system by 11:59 p.m. Eastern Time on the date of the deadline or
dispatched by the date of the deadline.
PART 222--PROCEEDINGS
0
4. The authority citation for part 222 continues to read as follows:
Authority: 17 U.S.C. 702, 1510.
0
5. Add Sec. 222.1 to read as follows:
Sec. 222.1 Applicability of the Federal Rules of Civil Procedure and
Federal Rules of Evidence.
The rules of procedure and evidence governing proceedings before
the Copyright Claims Board (``Board'') are set forth in this part.
Parties may cite to the Federal Rules of Civil Procedure or the Federal
Rules of Evidence (``FRE'') as persuasive authority. The Board may
[[Page 69905]]
consider arguments referencing the Federal Rules of Civil Procedure or
FRE, but is not bound by the Federal Rules of Civil Procedure or FRE,
and will only consider them to the extent that they are persuasive in
the context of this subchapter.
0
6. Add Sec. Sec. 222.10 through 222.19 to read as follows:
* * * * *
Sec.
222.10 Scheduling order.
222.11 Amending pleadings.
222.12 Consolidation or severance.
222.13 Additional parties.
222.14 Written testimony on the merits.
222.15 Hearings.
222.16 Withdrawal of claims; dismissal.
222.17 Settlement.
222.18 Protective orders.
222.19 Evidence.
* * * * *
Sec. 222.10 Scheduling order.
(a) Timing. Upon confirmation that a proceeding becomes an active
proceeding, the Board shall issue an initial scheduling order.
(b) Content of initial scheduling order. The scheduling order shall
include the dates or deadlines for:
(1) Filing of a response to the claim by the respondent;
(2) A pre-discovery conference with a Copyright Claims Officer
(``Officer'') to discuss case management, including discovery, and the
possibility of resolving the claims and any counterclaims through
settlement;
(3) Service of responses to standard interrogatories;
(4) Service of requests for admission;
(5) Service of documents in response to standard production of
document requests;
(6) Requests for leave to seek additional discovery;
(7) Close of discovery;
(8) A post-discovery conference with an Officer to discuss further
case management, including the need for any additional discovery, and
the possibility of resolving the claims and any counterclaims through
settlement; and
(9) Filing of each party's written testimony and responses,
pursuant to Sec. 222.14.
(c) Conferences. In addition to those identified in paragraph (b)
of this section, the Board may hold additional conferences to manage
the proceedings and resolve disputes, at its own election or at the
request of any party. Conferences may be held by one or more Officers
and shall be held virtually.
(d) Amended scheduling order. The Board may amend the initial
scheduling order--
(1) Upon the clearance of a counterclaim by a Copyright Claims
Attorney pursuant to 37 CFR 224.1(c)(1), to add a deadline for the
service of a response by a claimant to a counterclaim and to amend
other previously scheduled dates in the prior scheduling order;
(2) Upon request of one or more of the parties to an active
proceeding submitted through the Board's electronic filing system;
(3) As necessary to adjust the schedule for conferences or hearings
or the staying of any proceedings;
(4) As necessary to facilitate settlement pursuant to Sec. 222.17;
or
(5) Upon its own initiative in the interests of maintaining orderly
administration of the Board's docket.
Sec. 222.11 Amending pleadings.
(a) Amendments before service. A party may freely amend its
pleading once as a matter of course prior to service of its claim or
counterclaim. Any claim or counterclaim that is amended shall be
submitted for a compliance review by a Copyright Claims Attorney.
(b) Amendments during the opt-out period. A claimant seeking to
amend a claim during the opt-out period may do so only with leave of
the Board.
(1) Requests for leave to amend. To request the Board's leave, the
claimant must submit a letter to the Board, no longer than five pages
in length, setting forth the reasons why an amended claim is
appropriate. In determining whether to grant leave to amend a pleading,
the Board shall freely grant leave if justice so requires after
considering whether the basis for the amendment reasonably should have
been known to the claimant before the claim was served or during the
time period specified in paragraph (a) of this section, along with any
other relevant considerations.
(2) Compliance review of amended claims. If the Board grants leave
to amend a claim, any amendment shall be submitted by the claimant for
a compliance review by a Copyright Claims Attorney.
(3) Time for service of the amended claim. The claimant shall serve
the amended claim on the respondent within 14 days after a Copyright
Claims Attorney finds it to be compliant.
(4) Extension of the opt-out period. The respondent shall have 60
days from service of the amended claim to opt out of the proceeding
pursuant to 37 CFR 223.1.
(c) Non-infringement claims or defenses or misrepresentation
claims. A party asserting non-infringement or defending against a claim
of infringement or misrepresentation may amend its pleading after
service of its initial responses to standard interrogatories, where the
party disclosed additional defenses beyond those set forth in the
initial pleading. Such amendment shall be as a matter of right.
(d) All other amendments. In all other cases, a party may amend its
pleading only with the Board's leave. If the Board grants leave, any
amendment shall be submitted for a compliance review.
(1) Time to respond. Unless the Board orders otherwise, any
required response to an amended pleading must be made within the time
remaining to respond to the original pleading or within 21 days after
the Board's notification that the amended pleading is compliant,
whichever is later.
(2) Procedure for request for leave to amend. The party seeking
leave to amend must submit a short letter to the Board, no longer than
five pages in length, setting forth the reasons why an amended pleading
is appropriate. Any other party may file a response, no longer than
five pages in length, within 14 days of the date of service of the
request for leave to amend, stating its views concerning the request.
No reply letters shall be permitted unless the Board grants leave.
(3) Standard for granting leave to amend. In determining whether to
grant leave to amend a pleading, the Board shall freely grant leave if
justice so requires after considering whether any other party will be
prejudiced if the amendment is permitted (including the impact the
amendment might have on a respondent's right to opt out of the
proceeding), whether the proceedings will be unduly delayed if the
amendment is permitted, and whether the basis for the amendment
reasonably should have been known to the amending party before the
pleading was served or during the time period specified in paragraph
(a) of this section, along with any other relevant considerations.
Sec. 222.12 Consolidation or severance.
(a) Consolidation. If a claimant has multiple active proceedings
against the same respondent or that arise out of the same facts and
circumstances, the Board may consolidate the proceedings for purposes
of conducting discovery, submitting evidence to the Board, or holding
hearings. Consolidated proceedings shall remain separate for purposes
of Board determinations and any damages awards.
(b) Severance. If a single proceeding includes distinct claims
involving disparate facts and circumstances that would be difficult,
time-consuming, or otherwise inappropriate to resolve in a single
proceeding, the Board may sever
[[Page 69906]]
the proceedings with respect to some or all parties, claims, and
issues. Severed proceedings shall be treated as one proceeding for
purposes of statutory damages. The Board may in its discretion dismiss
one of the severed proceedings as unsuitable for resolution under these
regulations without dismissing other severed proceedings.
(c) Timing. The Board may consolidate or sever proceedings at any
time upon its own authority or following consideration of a request by
any party, with reasonable notice and opportunity to be heard provided
to all affected parties.
(d) Procedure. The party seeking consolidation or severance must
submit a short letter to the Board, no longer than five pages in
length, setting forth the reasons for the request, requesting a
conference with the Board and the parties from each affected case, and,
in the case of a request for consolidation, providing the Board with
the docket numbers for each affected proceeding. Parties opposing
consolidation or severance may file a response letter, no longer than
five pages in length, within 14 days of the date of service of the
request for consolidation or severance, objecting to the request. No
reply letters shall be permitted, unless the Board grants leave for a
reply.
(e) Standard for granting request. In determining whether to grant
a request to consolidate or sever, the Board shall consider whether
consolidation or severance is necessary and balance that need with the
timeliness of the request and whether any undue prejudice has resulted
from the delay in making the request.
Sec. 222.13 Additional parties.
(a) When applicable. A necessary party is a person or entity whose
absence would prevent the Board from according complete relief among
existing parties, or who claims an interest related to the subject of
the proceeding such that reaching a determination in the proceeding may
impair or impede that person's or entity's ability to protect that
interest as a practical matter, or in whose absence an existing party
would be subject to a substantial risk of incurring double, multiple,
or inconsistent obligations because of that interest.
(b) Failure to join a necessary party. At any time, any party who
believes in good faith that a necessary party has not been joined may
file a letter, no longer than three pages in length, notifying the
Board of the failure to join the necessary party and providing the
basis for such belief. An opposing party may file a response, no longer
than three pages in length, within 14 days of the date of service of
the letter, in opposition. If the Board determines that a necessary
party has not been joined, it shall dismiss the proceeding without
prejudice.
(c) Intervention of a necessary party. At any time, a necessary
third party seeking to intervene may file a letter, no longer than
three pages in length, setting forth the reasons for the request and
requesting a conference with the Board. Within 14 days of the date of
service request, each party to the proceeding shall file a letter, no
longer than three pages in length, indicating whether it agrees that
the intervening party is a necessary party, and the basis thereof, or
whether it opposes the intervention. After evaluating the parties'
letters, the Board may hold a conference between the parties to the
proceeding and the intervening party to address the request.
(d) Board determination. (1) If the Board determines that the
intervening party is not a necessary party, it shall deny the request
and resume the proceeding, unless all parties agree that the party
should be joined.
(2) If the Board determines that the intervening party is a
necessary party, it shall--
(i) Permit the intervening party to join the proceeding, if no
party indicated that it opposed the request to intervene; or
(ii) Dismiss the proceeding without prejudice, if any party
indicated that it opposed the request to intervene.
Sec. 222.14 Written testimony on the merits.
(a) Timing. At the times specified within the scheduling order, any
party asserting a claim or counterclaim shall file written direct
testimony in support of that claim or counterclaim. Any party
responding to a claim or counterclaim shall file written response
testimony within 30 days following the date of service of written
direct testimony. Any party who asserted a claim or counterclaim may
file written reply testimony within 14 days following the date of
service of written response testimony.
(b) Direct and response testimony. Written direct and response
testimony shall consist of documentary evidence, witness statements,
and a party statement.
(1) Documentary evidence. (i) Documentary evidence must be
accompanied by a statement that lists each attached document and
provides a brief description of each document and how it bears on a
claim or counterclaim;
(ii) Each document must be sponsored by a witness with knowledge of
its contents and authenticity, unless the document statement states
that the document was produced by an opposing party during discovery;
and
(iii) Direct or response documentary evidence shall only include
documents that were served on opposing parties pursuant to the
scheduling order, absent leave from the Board, which shall be granted
only for good cause.
(2) Witness statements. A witness statement must--
(i) Be sworn under penalty of perjury by the witness;
(ii) Be detailed as to the substance of the witness's knowledge and
must be organized into numbered paragraphs;
(iii) Contain only factual information based on the witness's
personal knowledge and may not contain legal argument; and
(iv) Reference any documents included in the document statement
that are sponsored by the witness, with a brief statement as to the
basis for the witness's knowledge of the document's authenticity.
(3) Party statement. A party statement--
(i) Shall set forth the party's position as to the key facts, laws,
and damages;
(ii) Need not have a table of contents or authorities;
(iii) Shall have a title page with the case's caption and the title
of the document (e.g., Party Statement of Respondent John Doe);
(iv) Shall be limited to 12 double-spaced pages, not including the
title page or any signatures or certificates of service, in 12-point
font or larger for both body text and footnotes, with at least one-inch
margins on the top, bottom, left, and right of each page;
(v) For a claimant or counterclaimant seeking damages, shall
include a statement as to whether the party is seeking statutory
damages or actual damages and any profits. This election may be changed
at any time up until final determination by the Board; and
(vi) For a respondent or counterclaim respondent, may include a
statement as to whether, if found liable on a claim or counterclaim,
the party would voluntarily agree to an order stopping it from engaging
in the activities found unlawful in the future as specified in 17
U.S.C. 1504(e)(2). Such an election may be considered in appropriate
cases by the Board in determining an amount of damages, if any,
pursuant to 17 U.S.C. 1504, and such election may be changed at any
time up until final determination by the Board. The statement shall
take the following form: ``[Claim/Counterclaim] respondent agrees that
if it is found liable, it agrees to an order that it will stop the
activity found to be unlawful.'' Such a statement will not be
considered by the Board in any way in
[[Page 69907]]
making its determination as to liability, and shall be considered only
as to damages.
(c) Reply testimony. Written reply testimony must be limited to
addressing or rebutting specific evidence set forth in written response
testimony. Written reply testimony may consist of documentary evidence,
witness statements, and a party statement as set forth in this
paragraph (c).
(1) Documentary evidence. In addition to the requirements of
paragraph (b)(1) of this section, documentary evidence presented by a
party as part of written reply testimony must be limited to documentary
evidence required to contradict or rebut specific evidence that was
presented in an opposing party's written response testimony and shall
not include any documentary evidence previously presented as part of
the submitting party's direct testimony.
(2) Witness statements. In addition to the requirements of
paragraph (b)(2) of this section, a reply witness statement must be
limited to facts not previously included in that witness's prior
statement, and must be limited to facts that contradict or rebut
specific evidence that was presented in an opposing party's written
response testimony. The reply witness's statement must refer to any
documents the reply witness is sponsoring in the same manner as set
forth in paragraph (b)(2) of this section.
(3) Party statement. A party statement in reply must be limited to
rebutting or addressing an opposing party's written response testimony
and may not include any discussion of the facts, the law, or damages
that was included in that party's direct party statement. A reply party
statement is subject to the same formatting rules set forth in
paragraph (b)(3) of this section except that it must be limited to 7
double-spaced pages, not including the title page or any signatures or
certificates of service, in 12-point font or larger for both body text
and footnotes, with at least one-inch margins on the top, bottom, left,
and right of each page.
(d) Certification. All written testimony submitted to the Board
must include a certification by the party submitting such testimony
that it is accurate and truthful.
(e) Request for hearing. Any party may include in a party statement
a request for a hearing on the merits before the Board, consistent with
Sec. 222.15.
(f) No additional filing. Following filing of any written reply
testimony, no further written testimony or evidence may be submitted to
the Board, unless at the specific request of the Board, or as
appropriate at a hearing on the merits ordered by the Board.
Sec. 222.15 Hearings.
(a) Timing. In any action, the Board may hold a hearing following
submission of each party's written direct, response, and reply
testimony if it determines that such a hearing is appropriate or
advisable. The Board may decide to hold a hearing on its own initiative
or after consideration of a request for a hearing from any party.
(b) Virtual hearings. All hearings shall be held virtually and may
be recorded as deemed necessary by the Board.
(c) Requesting a hearing. A request for a hearing on the merits of
a case must be included in a party statement, pursuant to Sec.
222.14(e). The Board, in its sole discretion, shall choose whether to
hold a hearing, and may elect to hold a hearing absent a request from a
party.
(d) Content of request. Any request in a party statement for a
hearing on the merits of a case shall consist of a short statement to
the following effect: ``[Party name] requests a hearing pursuant to 37
CFR 222.14(e).'' The statement should include the reasons why the party
believes the request should be granted.
(e) Scheduling order. When the Board determines that a hearing on
the merits of a case is appropriate, it will issue an amended
scheduling order setting forth the date of the hearing and deadlines
for any additional evidence requested by the Board or for a pre-hearing
conference, if applicable.
(f) Close of evidence. Following a hearing on the merits of a case,
no additional written testimony or evidence may be submitted to the
Board unless at the Board's specific request.
Sec. 222.16 Withdrawal of claims; dismissal.
A party may request to withdraw its own claim or counterclaim by
filing a written request with the Board seeking withdrawal, and
therefore dismissal. Such written request shall consist of a brief
statement seeking dismissal and shall be signed by the party seeking
the dismissal.
(a) Before a response. If the written request is received before a
response to the claim or counterclaim is filed with the Board, the
Board shall dismiss the claim or counterclaim without prejudice, unless
all parties agree in a written stipulation filed with the Board that
the claim or counterclaim shall be dismissed with prejudice.
(b) After a response. If the written request is received after a
response to the claim or counterclaim is filed with the Board, the
Board shall issue a final determination dismissing the claim or
counterclaim with prejudice, unless the Board determines in the
interests of justice that such dismissal shall be without prejudice or
all parties agree in a written stipulation filed with the Board that
the claim or counterclaim shall be dismissed without prejudice.
(c) Effect of dismissal. Dismissal of a claim or counterclaim under
this section will not affect remaining claims or counterclaims in the
proceeding.
Sec. 222.17 Settlement.
(a) General. The Board shall encourage voluntary settlement between
the parties of any claims or counterclaims. The appropriateness of a
settlement conference, at a minimum, shall be raised at the pre-
discovery and post-discovery conferences set forth in Sec. 222.10(b).
(b) Requesting settlement conference--(1) Timing. At any point in
an active proceeding, some or all of the parties may jointly request a
conference with an Officer to facilitate settlement discussions.
(2) Form and content of request. The request can be made orally at
any Board conference or it can be made in writing. If made in writing,
the request shall consist of a brief letter requesting a settlement
conference and indicating which parties join in the request. The
parties may also include in such letter a request to stay the
proceedings while settlement discussions are ongoing. Granting a
request for a stay shall be at the Board's discretion.
(3) Response to request. Any party that objects to the request for
a settlement conference, or joins in the request for a settlement
conference but not a request for a stay of proceedings, may file a
response with the Board within seven days of the date of service of the
request seeking a settlement conference. Such response shall consist of
a brief letter indicating that the party objects to a settlement
conference, or a stay of proceedings, and stating the basis for that
objection.
(c) Scheduling settlement conference. If the request for a
settlement conference, and any request for a stay, is jointly made
among the parties, or if no party files a response within seven days of
the date of service of the request, the Board shall schedule a
settlement conference with all parties subject to the request. If one
or more parties files a response, upon consideration of the objections
and whether any claims or counterclaims may be resolved with only the
consenting parties in attendance, the Board may schedule a conference
with some or all parties.
(d) Settlement proceedings. Three days prior to a settlement
conference, each party participating in the
[[Page 69908]]
conference shall submit a position statement to the presiding Officer
by email and, when there is agreement among the parties, serve such
statement on the other participating parties outside of the electronic
filing system. The position statement shall be in letter form, shall
not exceed five pages, including any salutations and signatures, and
shall attach no more than 20 pages of exhibits, absent leave of the
presiding Officer, although leave shall not be necessary should the
page limit be exceeded due to an exhibit being a necessary agreement or
contract. The statement must set forth:
(1) A brief overview of the facts and contentions;
(2) The relief sought, including the amount of damages, if any;
(3) Whether or to what extent the alleged wrongful conduct is
currently taking place; and
(4) Any prior attempts at resolution, including any offers or
counteroffers made to the other party.
(e) Stay of proceeding. To provide the parties with an opportunity
to pursue settlement and negotiate any resulting settlement agreement,
the Board in its discretion may stay the proceeding for a period of 30
days concurrently with an order scheduling a settlement conference, at
the time of or following the settlement conference, or at the request
of the parties. The parties may request an extension of the stay in
good faith to facilitate ongoing settlement discussions. If a
settlement has not been reached at the time the stay, or any extension
thereof, has expired, the Board shall issue an amended scheduling order
to govern the remainder of the proceeding.
(f) Settlement agreement. If some or all parties reach a
settlement, such parties may submit to the Board a letter that they
jointly wish to dismiss some or all of the claims and counterclaims.
The parties may include a request that the Board adopt some or all of
the terms of the settlement in its final determination.
(g) Effect of settlement agreement. Upon receipt of a joint request
to dismiss claims due to settlement, the Board shall dismiss the claims
or counterclaims contemplated by the agreement with prejudice, unless
the parties have included in their request that the claims or
counterclaims shall be dismissed without prejudice. If the parties have
requested that the Board adopt some or all of the terms of the
settlement in its final determination, the Board may issue a final
determination incorporating such terms unless the Board finds them
clearly unconscionable.
Sec. 222.18 Protective orders.
(a) Standard protective order. At the request of any party, the
Board's standard protective order, as described in this section, shall
govern all discovery material exchanged during the proceeding to
protect against improper use or disclosure.
(1) Standard of use. Discovery material received from another party
may be used only in connection with the proceeding, and all copies must
be returned or disposed of within 30 days of a determination or
dismissal, or within 30 days of the exhaustion of the time for any
review or appeal of the Board's final determination, whichever is
later.
(2) Confidentiality. Discovery material may be designated as
``confidential'' only if the party reasonably and in good faith
believes that it consists of:
(i) Bona fide confidential financial information previously not
disclosed to the public;
(ii) Bona fide confidential and non-obvious business plans, product
development information, or marketing plans previously not disclosed to
the public;
(iii) Any information of a truly personal or intimate nature
regarding any individual not known by the public; or
(iv) Any other category of information that the Board grants leave
to designate as ``confidential.''
(3) Case-by-case basis. Parties must make confidentiality
determinations on a document-by-document basis and shall not designate
as ``confidential'' all discovery material produced in bulk.
(4) Submitting confidential information. Confidential discovery
materials, or references to or discussions of confidential discovery
materials in other documents, may be submitted to the Board by either
filing them under seal or redacting the confidential document. If filed
under seal, the confidential document must be accompanied by a redacted
copy that may be included in the public record.
(5) Determination of confidentiality by the Board. The Board may in
its discretion remove a confidentiality designation from any material
on its own initiative or upon consideration of a request from a party.
Parties are expected to attempt to resolve disputes over
confidentiality designations before bringing such disputes to the
Board.
(b) Custom protective orders. Custom protective orders negotiated
by the parties are disfavored. The parties may request that the Board
enter a custom protective order that has been negotiated by the parties
and that may provide for additional protections for highly sensitive
materials. Such a request must be accompanied by a stipulation between
the parties that explains the need for such a custom protective order.
The Board may in its discretion decide whether to grant the parties'
request for a custom protective order.
(c) Personally identifiable information. Regardless of whether
discovery material has been designated as ``confidential,'' parties
must redact social security numbers, taxpayer identification numbers,
birth dates, health information protected by law, the names of any
individuals known to be minors, and financial account numbers from any
public filings.
Sec. 222.19 Evidence.
(a) Admissibility. All evidence that is relevant and not unduly
repetitious or privileged shall be admissible. Evidence which has
authentication or credibility issues will have its weight discounted
accordingly. The Board reserves the right to discount evidence or not
admit evidence with serious credibility issues entirely, or to request
clarification from a party. The Board may apply FRE 401 and 403 in
weighing evidence, but the Board is not bound by the FRE. Parties may
cite to the FRE as persuasive authority when making an argument about
the credibility, weight, or admissibility of a piece of evidence.
(b) Examination of witnesses. All witnesses testifying at a hearing
before the Board shall be required to take an oath or affirmation
before testifying. At a hearing, parties may conduct direct examination
(substantively limited to the testimony of the witness in the written
statements and an oral summary of that testimony); cross-examination
(limited to matters raised on direct examination or submitted through
witness statements); and redirect examination (limited to matters
raised on cross-examination). The Board may limit the number of
witnesses or scope of questioning.
(c) Exhibits in hearing--(1) Submission. Unless they are
specifically excluded by the Board's own initiative or due to the
Board's ruling on an objection raised by a party, all properly
sponsored documents submitted by the parties through their statements
submitted under Sec. 222.14 shall be deemed admitted and marked as
exhibits in the same order as presented through the party's document
statement. To the extent additional documents are allowed by the Board
at a hearing on the merits, such evidence may also be presented as
exhibits to all parties and marked by the presenting party starting
with the next number after the exhibits
[[Page 69909]]
attached to the party's document statement.
(2) Separation of irrelevant portions. In any large documents,
relevant and material matter in an exhibit must be plainly marked to
distinguish it from immaterial or irrelevant material.
(3) Summary exhibits. The contents of voluminous documentary
evidence which cannot be conveniently examined at the hearing may be
presented in the form of a chart, summary, or calculation. Absent leave
of the Board, evidence supporting the summary exhibit must have been
produced to the other parties in discovery and admitted as exhibits.
(d) Objections. Parties are entitled to raise objections to
evidence during the course of the hearing and to raise an objection
that an opposing party has not furnished non-privileged underlying
documents.
(e) New exhibits for use in cross-examination or redirect
examination. Exhibits not submitted as part of written testimony may be
shown to a witness on cross-examination or redirect examination only
for the purposes of impeachment or rehabilitation. Copies of such
exhibits must be distributed to the Board and other parties before
being shown, unless the Board directs otherwise.
0
7. Part 225 is added to read as follows:
PART 225--DISCOVERY
Sec.
225.1 General practices.
225.2 Standard interrogatories.
225.3 Requests for admission.
225.4 Standard production of document requests.
225.5 Disputes and sanctions.
Authority: 17 U.S.C. 702, 1510.
Sec. 225.1 General practices.
This part prescribes rules pertaining to procedures for discovery
conducted in proceedings before the Copyright Claims Board (``Board'').
(a) Standard discovery practice. Except as otherwise provided in
this section, discovery in proceedings before the Board shall be
limited to the methods set forth in this part and shall use the
standard forms provided on the Board's website. Discovery responses and
documents shall be served on the other parties, but shall not be filed
with the Board unless as part of written testimony or as needed in
support of other filings.
(1) Certifications. All discovery material exchanged among the
parties or submitted to the Board must include a certification by the
party submitting such material that it is accurate and truthful.
(2) Form of requests to Board. Requests to the Board related to
discovery may be raised to the Board during a conference or by letter,
as set forth in this section.
(b) Timing of discovery. The exchange of discovery material shall
take place at the times and within the deadlines specified by the
scheduling order. The Board may modify the discovery deadlines set
forth in the scheduling order at the request of any party upon a
showing of good cause or through its own initiative. Such requests may
be made orally during a conference with the Board or by letter. Any
letter requests shall be limited to two pages and shall set forth the
original date of the deadline and the requested extension, provide the
basis for the scheduling modification, indicate whether the other
parties consent or object to the modification, and whether any other
dates in the scheduling order will be affected by the modification. Any
party that objects to the requested scheduling modification may file a
response letter within three days of the date of service of the letter
request, which shall be limited to two pages and set forth the basis
for the objection.
(c) Conferences. The Board shall hold a pre-discovery conference
and a post-discovery conference, as set forth in 37 CFR 222.10. The
Board may hold additional conferences to manage discovery and resolve
any disputes, at its own election or at the request of any party.
Conferences may be held by one or more Copyright Claims Officers
(``Officers''), with the exception of post-discovery conferences and
any conferences to decide a dispute, both of which shall be held by one
or more Officers. Conferences shall be held virtually.
(d) Request for additional discovery. Any party may request
additional discovery within the deadlines set forth in the scheduling
order.
(1) Allowable discovery. Except for the standard discovery provided
in this part, any additional discovery requested must be narrowly
tailored to the issues at hand, not covered by the standard discovery
set forth in this part, highly likely to lead to the production of
information relevant to the core issues of the matter, and not result
in an undue burden on the party responding to the request.
(2) Standard for additional discovery. The Board will grant a
request for additional discovery upon a showing of good cause. In
considering a request for additional discovery, the Board shall balance
the needs and circumstances of the case against the burden of
additional discovery on any party, along with the amount in dispute and
overall goal of efficient resolution of the proceeding.
(3) Consent from parties. Prior to filing a request for additional
discovery, the requesting party should make reasonable efforts to
secure the consent of, or a compromise with, the other party regarding
the proposed additional discovery request.
(4) Form of request. A request for additional discovery must be
made by letter, no more than three pages, not including the additional
requests themselves--
(i) Specifically indicating the means of additional discovery
requested and the information sought;
(ii) Setting forth the basis and justifications for the request;
(iii) Indicating whether the other parties consent or object to the
request; and
(iv) Attaching a copy of the additional discovery requests.
(5) Response to request. Within seven days of the date of service
of a letter requesting additional discovery, any party that opposes the
request may file a response letter of no more than three pages. No
reply letters shall be permitted, unless the Board grants leave for a
reply.
(e) Request for expert witnesses. An expert witness may be used in
a proceeding only with leave of the Board. The use of expert witnesses
in proceedings before the Board is highly disfavored and requests shall
be rarely granted.
(1) Standard for permitting expert witnesses. The Board shall grant
a request by a party to introduce an expert witness only in exceptional
circumstances and upon a showing that the case cannot fairly proceed
without the use of the expert. In considering a request for an expert
witness, the Board shall balance the needs and circumstances of the
case, and whether the request is made by one party or jointly among the
parties, against the burden that permitting the expert testimony would
impose on any other party, the costs to the opposing party of retaining
a rebuttal witness, the amount in dispute, and the overall goal of
efficient resolution of the proceeding. If the Board grants a request
by a party to introduce an expert witness, an opposing party shall have
the opportunity to introduce a rebuttal expert witness as a matter of
course within an appropriate amount of time set by the Board. The Board
will set a schedule for the service of the expert report and any
rebuttal report and will adjust the dates in the existing scheduling
order as needed.
[[Page 69910]]
(2) Form of request. A request for an expert witness must be made
by letter, no more than five pages, at the time set forth for requests
for additional discovery in the scheduling order. The letter must
specifically indicate the topics of the expert's proposed testimony,
the name of the proposed expert, and the anticipated cost of retaining
the expert, and must set forth the basis and justifications for the
request, and indicate whether the other parties consent or object to
the request.
(3) Form of response. Within seven days of the date of service of a
request for leave to offer an expert witness, any party that opposes
the request may file a response letter of no more than five pages. No
reply letters shall be permitted, unless the Board grants leave for a
reply.
(4) Form of expert testimony. Any expert testimony permitted by the
Board shall be submitted along with the offering party's written direct
or response testimony in the form of an expert statement. An expert
statement must--
(i) Be sworn under penalty of perjury by the expert witness;
(ii) Be organized into numbered paragraphs;
(iii) Be detailed as to the substance of the expert's opinion and
the basis and reasons therefor;
(iv) Disclose the facts or data considered by the expert witness in
forming the expert witness's opinions;
(v) Describe the expert witness's qualifications, including a list
of all publications authored and speaking engagements in the previous
10 years;
(vi) Include a list of all other cases in which the expert witness
testified as an expert at trial or by deposition during the previous
four years; and
(vii) Include a statement of the compensation to be paid for the
study and testimony in the case.
(5) Unauthorized expert testimony. Any expert testimony that is
introduced in any way without the Board's express permission shall be
stricken by the Board and shall not be considered in the Board's
determination.
(f) Definitions. As used in this part, the term ``document'' shall
refer to any tangible piece of information--including writings,
drawings, graphs, charts, photographs, sound recordings, images, and
other data or data compilations--stored in any medium from which
information can be obtained either directly or, if necessary, after
translation by the responding party into a reasonably usable form,
whether in written or electronic form, an object, or otherwise. The
Board shall read this definition broadly so that there is a
comprehensive production of materials by each side needed to fairly
decide matters before the Board, so long as that production is easily
accomplished by a layperson.
Sec. 225.2 Standard interrogatories.
(a) General. Parties in an active proceeding shall use the set of
standard interrogatories provided on the Board's website. Standard
interrogatories shall consist of information pertaining to:
(1) The identity and nature of witnesses whom the parties plan to
use in the proceeding, including contact information for the witnesses,
if known;
(2) The identity of any other individuals who may have material
information related to the claims or defenses, including contact
information for the individuals, if known;
(3) Any agreement or other relationship between the parties
relevant to the claim;
(4) Any damages sought; and
(5) A description of documents relevant to the claims and defenses.
(b) For a party asserting infringement. In addition to the witness,
damages, and document description information in paragraph (a) of this
section, the standard interrogatories for a party asserting an
infringement claim or responding to a claim for non-infringement shall
consist of information pertaining to:
(1) The allegedly infringed work's copyright registration, to the
extent such information differs from or adds to information provided in
the claim;
(2) The allegedly infringed work's compliance with any relevant
copyright formalities;
(3) The party's ownership of the copyright in the allegedly
infringed work;
(4) Publication history for the allegedly infringed work;
(5) The creation date and creation process for the allegedly
infringed work, including whether the work is a joint or derivative
work or was created through employment or subject to an agreement;
(6) Where the allegedly infringed work is a derivative work, the
preexisting elements in the work, including ownership of those
preexisting elements, and rights to use those preexisting elements;
(7) A description of the alleged infringer's access to the
allegedly infringed work, if known;
(8) The basis for the party's belief that the opposing party's
activities constitute infringement of the allegedly infringed work;
(9) The discovery of the opposing party's alleged infringement by
the party;
(10) A description and calculation of the damages suffered by the
party as a result of the alleged infringement; and
(11) Any attempts by the party to cause the infringement to be
ceased or mitigated prior to bringing the claim.
(c) For a party asserting non-infringement. In addition to the
information in paragraph (a) of this section, the standard
interrogatories for a party responding to an infringement claim or
asserting a claim for non-infringement shall consist of information
pertaining to:
(1) The party's ownership of the copyright in the allegedly
infringing material;
(2) The publication history of the allegedly infringing material;
(3) The creation date and creation process for the allegedly
infringing material, including whether any allegedly infringing work is
a joint or derivative work or was created through employment or subject
to an agreement;
(4) Where the allegedly infringing material is a derivative work,
the preexisting elements in the work, including ownership of those
preexisting elements, and rights to use those preexisting elements;
(5) Any information indicating that the party alleging infringement
does not own a copyright in the allegedly infringed work;
(6) All defenses to infringement asserted by the party and a
detailed basis for those defenses;
(7) The basis for any other reasons the party believes that its
actions do not constitute infringement;
(8) Any continued use of the allegedly infringing material; and
(9) For a party responding to infringement claims or counterclaims,
the revenues and profits the party has received directly related to the
sale or use of the allegedly infringing material, as well as the
deductible expenses directly related to that sale or use, and the
elements of profit for that sale or use attributable to factors other
than the copyrighted work.
(d) For a party asserting misrepresentation. In addition to the
information in paragraph (a) of this section, the standard
interrogatories for a party asserting a claim of misrepresentation
under 17 U.S.C. 512(f) shall consist of information pertaining to:
(1) The notification or counter notification that allegedly
contained a misrepresentation;
(2) The identity of the internet service provider to which the
notification or counter notification was sent;
(3) Any communications with the internet service provider, the
parties, or
[[Page 69911]]
others related to the notification or counter notification at issue;
(4) The basis for the party's belief that the notification or
counter notification included a misrepresentation; and
(5) The harm, including a description and calculation of damages,
caused by the alleged misrepresentation.
(e) For a party responding to misrepresentation claims. In addition
to the information in paragraph (a) of this section, the standard
interrogatories for a party responding to a claim of misrepresentation
under 17 U.S.C. 512(f) shall consist of information pertaining to:
(1) All defenses asserted to the misrepresentation claim and the
basis for those assertions;
(2) The basis for any other reasons the party believes that its
statement did not constitute a misrepresentation; and
(3) Any communications with the internet service provider, the
parties, or others related to the notification or counter notification
at issue.
(f) Duty to update. A party has an obligation to update its
interrogatory responses and serve updated responses on the other
parties as soon as practicable after the discovery of new or updated
information.
Sec. 225.3 Requests for admission.
(a) General. Parties in an active proceeding may serve a maximum of
10 requests for admission on each other party relating to:
(1) Facts, the application of law to fact, or opinions about
either; and
(2) The genuineness of any described documents, a copy of which
must be attached to the request for admission.
(b) Form. Each matter must be separately stated in a request for
admission in a numbered paragraph. Compound requests for admission
shall not be permitted.
(c) Responses to requests for admission. A response to a request
for admission must be served within 30 days from the date of service of
a request for admission. A matter admitted is conclusively established
unless the Board, on request and for good cause shown, permits the
admission to be withdrawn or amended. If a matter is not admitted, the
answer must specifically deny it or state in detail why the responding
party cannot truthfully admit or deny it. A denial must fairly respond
to the substance of the matter, and when good faith requires that a
party qualify an answer or deny only part of a matter, the answer must
specify the part admitted and qualify or deny the rest. The responding
party may assert lack of knowledge or information as a reason for
failing to admit or deny only if the party states that it has made
reasonable inquiry and that the information it knows or can readily
obtain is insufficient to enable it to admit or deny.
(d) Failure to respond. A matter is not automatically admitted if a
party fails to respond to a request for admission within the required
timeframe. However, the Board may deem it admitted in the Board's
discretion subject to the Board's power to apply adverse inferences to
discovery violations under 17 U.S.C. 1506(n)(3).
Sec. 225.4 Standard production of document requests.
(a) General. Parties in an active proceeding shall use the relevant
set of standard production of document requests provided on the Board's
website. Standard production of document requests shall include copies
of:
(1) All documents the party is likely to use in support of its
claims or defenses;
(2) All other documents of which the party is reasonably aware that
conflict with the party's claims or defenses;
(3) All documents related to damages; and
(4) All documents referred to in, or that were used in preparing,
any of the party's responses to standard interrogatories.
(b) For a party asserting infringement. In addition to the
information in paragraph (a) of this section, the standard production
of document requests for a party asserting an infringement claim or
responding to a claim for non-infringement shall include copies of:
(1) The work claimed to be infringed, its copyright registration,
and all correspondence with the Copyright Office regarding that
registration;
(2) The allegedly infringing material, if reasonably available;
(3) Where the allegedly infringed work is a derivative work,
documents showing the preexisting works used and related to ownership
of and rights to use those preexisting elements;
(4) Documents related to the allegedly infringing material,
including communications about the allegedly infringing material;
(5) Agreements related to ownership of or rights in the works at
issue;
(6) Documents related to the party's ownership of the copyright in
the allegedly infringed work;
(7) Documents relating to the damages suffered by the party as a
result of the alleged infringement; and
(8) Documents related to attempts by the party to cause the
cessation or mitigation of infringement prior to bringing the claim.
(c) For a party asserting non-infringement. In addition to the
information in paragraph (a) of this section, the standard production
of document requests for a party responding to an infringement claim or
asserting a claim for non-infringement shall include copies of:
(1) The allegedly infringing material;
(2) Documents related to the allegedly infringed work, including
communications regarding the allegedly infringed work;
(3) Documents related to the creation of the allegedly infringing
material or rights regarding the allegedly infringing material;
(4) Agreements related to ownership of or rights in the works at
issue; and
(5) For a party responding to infringement claims or counterclaims,
documents related to the revenues and profits the party has received
directly related to the sale or use of the allegedly infringing
material, as well as the deductible expenses directly related to that
sale or use, and the elements of profit for that sale or use
attributable to factors other than the copyrighted work.
(d) For party asserting misrepresentation. In addition to the
information in paragraph (a) of this section, the standard production
of document requests for a party asserting a claim of misrepresentation
under 17 U.S.C. 512(f) shall include copies of:
(1) The notification or counter notification at issue;
(2) Communications with the internet service provider concerning
the notification or counter notification at issue; and
(3) Documents pertaining to the truth or falsity of any
representations made in the notification or counter notification.
(e) For party responding to misrepresentation claims. In addition
to the information in paragraph (a) of this section, the standard
production of document requests for a party responding to a claim of
misrepresentation under 17 U.S.C. 512(f) shall include copies of:
(1) Communications with the internet service provider concerning
the notification or counter notification at issue; and
(2) Documents pertaining to the truth or falsity of any
representations made in the notification or counter notification.
(f) Document searches and productions--(1) General. Each party
shall have an obligation to conduct a reasonable search for any
responsive documents of any files in its possession or under its
control, including the files of any of the party's agents, employees,
[[Page 69912]]
representatives, or others acting on the party's behalf.
(2) Electronically stored information. Documents responsive to the
standard requests, or any additional requests permitted by the Board,
may include electronically stored information (``ESI''), including
emails and computer files. A reasonable search under the circumstances
shall include the ESI of the party and the party's agents, employees,
representatives, or others acting on the party's behalf, except that--
(i) ESI searches shall not exceed manual searches that are easily
accomplished by a layperson; and
(ii) Parties need not conduct searches that would reasonably
require the assistance of third parties, such as a document vendor that
the party would have to hire to assist with or accomplish document
collection or storage.
(3) Voluminous productions. Responses to document requests that
include large amounts of irrelevant or duplicative material shall
constitute bad-faith conduct.
(4) Responsive documents no longer in possession of party. A party
shall disclose any materially responsive documents that the party is
aware exist or once existed, but are no longer in the possession of
that party, and shall explain why the documents are no longer in the
possession of the party, including the circumstances surrounding any
destruction of documents.
(5) Duty to update. A party has an obligation to preserve all
material documents and to update its production of documents by
providing to the other parties any documents it later finds responsive
to the Board's standard requests or any other document requests allowed
by the Board as soon as practicable after the discovery of such
documents.
Sec. 225.5 Disputes and sanctions.
(a) Obligation to attempt resolution. Parties shall attempt in good
faith to resolve any discovery disputes without the involvement of the
Board. A party must confer with an opposing party, at least through a
phone call, in an attempt to reach a resolution prior to raising any
discovery dispute with the Board.
(b) Request for conference to resolve dispute. If an attempt to
resolve a discovery dispute fails, the party seeking discovery may file
a request by letter, no more than three pages not including the
attachments referred to in this paragraph (b), for a conference with
the Board. The letter request shall:
(1) Describe the dispute;
(2) State that party's position with respect to the dispute;
(3) Include a statement that the request is made following an
attempted resolution call between the parties along with the date of
such call, or explain why a call was not possible; and
(4) Attach the relevant discovery responses already provided by the
opposing party, except for disputes pertaining to production of
document requests, which shall attach a list of documents produced in
response to the requests.
(c) Response to request for conference. Within seven days of the
date of service of the letter request, an opposing party may submit a
response to a request for a conference by letter, no more than three
pages, not including any attachments, which states the opposing party's
position with respect to the dispute. No reply letters shall be
permitted, unless the Board grants leave for a reply.
(d) Determination by Board. Following receipt of the request and
any response, the Board may schedule a conference to address the
discovery dispute in its discretion. One or more Officers may
participate in the conference. During or following the conference, the
Board shall issue an order resolving the discovery dispute and, in the
event of a decision in favor of the aggrieved party, setting a deadline
for compliance.
(e) Failure to comply with order. If a party fails to timely comply
with the Board's discovery order, the party seeking discovery may send
a notice to the noncompliant party giving the noncompliant party 10
days to comply. If the noncompliant party fails to comply within 10
days of receipt of the notice, the aggrieved party may file a request
for sanctions with the Board.
(f) Sanctions--(1) Form of request for sanctions. A request for
sanctions shall be no more than 10 double-spaced pages, not including
the attachments referred to in this paragraph (f)(1), in 12-point font
or larger, for both body text and footnotes, with at least one-inch
margins on the top, bottom, left, and right of each page and shall
attach the relevant discovery responses already provided by the
opposing party, except for disputes pertaining to production of
document requests, which shall attach a list of documents produced in
response to the requests.
(2) Form of response to request for sanctions. Within 14 days of
the date of service of the request for sanctions, the opposing party
may file a response to the request. The response shall be no more than
10 double-spaced pages in 12-point font or larger, for both body text
and footnotes, with at least one-inch margins on the top, bottom, left,
and right of each page. No reply papers will be accepted absent leave
of the Board.
(3) Standard for granting request. Following receipt of a request
for sanctions and any response from the opposing party, the Board may
hold a conference to address the request for sanctions. In the Board's
sole discretion and upon good cause shown, sanctions may be imposed if
the opposing party is found to be noncompliant with the Board's
discovery order.
(4) Relief. Sanctions imposed for noncompliance with a discovery
order of the Board may include an adverse inference with respect to the
disputed facts directly related to the discovery in question against
the noncompliant party.
(5) Implications for award of attorneys' fees and costs. The Board
may consider the assessment of discovery sanctions when considering the
awarding of attorneys' fees and costs during a final determination.
0
8. Part 226 is added to read as follows:
PART 226--SMALLER CLAIMS
Sec.
226.1 General.
226.2 Requesting a smaller claims proceeding.
226.3 Nature of a smaller claims proceeding.
Authority: 17 U.S.C. 702, 1510.
Sec. 226.1 General.
When total monetary relief sought in a claim does not exceed $5,000
(exclusive of attorneys' fees and costs), the claim may be adjudicated
under the procedures set forth in this part.
Sec. 226.2 Requesting a smaller claims proceeding.
A claimant may request consideration of a claim under the smaller
claim procedures in this part at the time of filing a claim. The
claimant may also amend its filing at any time prior to service of the
claim to modify its selection concerning smaller claim procedures. If
the initial notice has already been issued, the claimant shall request
reissuance of the initial notice with the smaller claim proceeding
notice. Once the claimant chooses whether to proceed via a smaller
claims proceeding or via the standard proceeding in 37 CFR parts 222
and 225, it may not amend its choice without consent of the other
parties and leave of the Board.
[[Page 69913]]
Sec. 226.3 Nature of a smaller claims proceeding.
(a) Proceeding before a Copyright Claims Officer. A smaller claims
proceeding shall be heard by one Officer. One of the three Officers
shall hear smaller claims proceedings on a rotating basis at the
Copyright Claims Board's discretion.
(b) Limited discovery. Discovery between the parties is limited to
the standard discovery set forth in 37 CFR 225.2 through 225.4. Parties
may not submit additional discovery requests, and the assigned Officer
will not consider such requests.
(c) No expert testimony. Parties may not submit expert testimony
for consideration. Any expert testimony submitted shall be disregarded
by the assigned Officer.
(d) Determination on written testimony. The Officer will issue a
determination based on the written testimony submitted pursuant to 37
CFR 222.14. No hearing will be held prior to a determination.
0
9. Part 227 is added to read as follows:
PART 227--DEFAULT
Sec.
227.1 Failure by respondent to appear or participate in proceeding.
227.2 Submission of evidence by claimant in support of default
determination.
227.3 Notice of proposed default determination.
227.4 Opportunity for respondent to submit evidence.
227.5 Issuance of determination.
Authority: 17 U.S.C. 702, 1510.
Sec. 227.1 Failure by respondent to appear or participate in
proceeding.
(a) General. For purposes of this section, the term ``respondent''
shall include counterclaim respondents. If a respondent fails to file a
response or fails, without justifiable cause, to meet any filing
deadline or other requirement set forth in the scheduling order or
other order, upon notice of a party or by its own initiative, the
Copyright Claims Board (``Board'') may issue a notice to the respondent
following the missed deadline or requirement.
(b) Contents of notice--(1) First notice. A notice issued under
this section shall inform the respondent that failure to participate in
the proceeding may result in the Board entering a default determination
against the respondent, including dismissal of any counterclaims
asserted by the respondent, and shall explain the legal effects of a
default determination. The notice shall provide the respondent with 30
days from the date of the notice to cure the missed deadline or
requirement. The notice shall be issued to the respondent by mail and
all known email addresses.
(2) Second notice. If the respondent has failed to respond 15 days
after the notice of the pendency of the default determination, the
Board shall send a second notice to the respondent according to the
procedures set forth in paragraph (b)(1) of this section. Such notice
shall attach the first notice and shall remind the respondent that it
must cure the missed deadline or requirement within 30 days from the
date of the first notice.
(c) Response to notice. If the respondent cures the missed deadline
or requirement within the time specified by the notice, the proceeding
shall resume and the Board shall issue a revised scheduling order, if
necessary. If the respondent fails to timely cure but submits a
response that indicates an intent to re-engage with the proceeding, the
Board shall consider the response and either provide the respondent
with additional time to meet the deadline or proceed with the default
determination process. If the respondent fails to cure the missed
deadline or requirement within the time specified by the notice and
does not otherwise respond to the notice, the Board shall require the
claimant to submit evidence in support of a default determination, as
set forth in Sec. 227.2.
(d) Multiple missed deadlines. A respondent may cure a missed
deadline according to the procedure set forth in this section twice
without default being issued. If the respondent misses a third deadline
in the scheduling order without good cause, the Board may, in its
discretion, proceed directly to requiring submission of evidence to
proceed with a default determination as set forth in Sec. 227.2.
Sec. 227.2 Submission of evidence by claimant in support of default
determination.
(a) General. If a respondent fails to appear or ceases to
participate in the proceeding and the Board elects to proceed to a
default determination, the Board shall require the claimant to submit
written direct testimony, as set forth in Sec. 227.1.
(b) Additional evidence. Following submission of the claimant's
written testimony in support of a default determination, the Board
shall consider the claimant's submissions and may request any
additional evidence from the claimant within the claimant's possession.
Sec. 227.3 Notice of proposed default determination.
(a) Consideration of evidence. Following submission of evidence by
the claimant, as set forth in Sec. 227.2, the Board shall review such
evidence and shall determine whether it is sufficient to support a
finding in favor of the claimant under applicable law. As part of its
review, the Board shall consider whether the respondent has a
meritorious defense. If the Board finds the evidence sufficient to
support a finding in favor of the claimant, it shall determine the
appropriate relief and damages, if any, to be awarded.
(1) If the Board determines that the evidence is sufficient to
support a finding in favor of the claimant, the Board shall prepare a
proposed default determination.
(2) If the Board determines that the evidence is insufficient to
support a finding in favor of the claimant, the Board shall dismiss the
proceeding without prejudice.
(b) Proposed default determination. The proposed default
determination shall include a finding in favor of the claimant and the
damages awarded, if any. The proposed default determination shall also
include dismissal of any counterclaims asserted by the respondent.
(c) Notice to respondent. The Board shall provide written notice to
the respondent of the pendency of the default determination and the
legal significance of the default determination, including any
liability for damages, if applicable, as set forth in 17 U.S.C.
1506(u)(2). The notice shall be accompanied by the proposed default
determination and shall provide the respondent 30 days, beginning on
the date of the notice, to submit any evidence or other information in
opposition to the proposed default determination.
Sec. 227.4 Opportunity for respondent to submit evidence.
(a) Response to notice by respondent. The respondent may submit in
writing any evidence or information in opposition to the proposed
default determination. The Board shall consider the submission and may
request that the respondent submit additional information, including in
the form of written response testimony, as set forth in 37 CFR 222.14,
by a deadline set by the Board. If the respondent fails to timely
submit evidence but submits a response that indicates an intent to re-
engage with the proceeding, the Board shall consider the response and
either provide the respondent with additional
[[Page 69914]]
time to submit evidence or proceed with issuing the default
determination.
(b) Response to respondent's submissions. If the respondent
provides any evidence or other information in response to the notice of
the pending default determination, the other parties to the proceeding
shall be provided an opportunity to address such submissions by a
deadline set by the Board.
(c) Hearings. The Board may hold a hearing at its discretion.
Sec. 227.5 Issuance of determination.
(a) Determination after respondent submits evidence. If the
respondent provides evidence or information as set forth in Sec.
227.4, the Board shall consider all submissions. The Board then shall
maintain or amend its proposed default determination. The resulting
determination shall not be a default determination and instead shall be
a final determination. The respondent may not challenge such
determination under 17 U.S.C. 1508(c)(1)(C) and may only request
reconsideration pursuant to 17 U.S.C. 1506(w) and the procedures set
forth in part 230 of this subchapter.
(b) Determination after respondent fails to respond to notice. If
the respondent fails to respond to the notice of pending default
determination, the Board shall issue the proposed default determination
as a final determination. The respondent may only challenge such
determination to the extent permitted under 17 U.S.C. 1508(c) or the
procedures set forth in paragraph (c) of this section.
(c) Vacating a default determination. If additional proceedings
have not been initiated under 17 U.S.C. 1508(c), the respondent may
request in writing that the default determination be vacated and
provide the reasons why the decision should be vacated. The respondent
and claimant shall follow the general procedures for a request for
reconsideration as set forth in part 230 of this subchapter. The Board
may vacate the default determination in the interests of justice.
0
10. Part 228 is added to read as follows:
PART 228--CLAIMANT'S FAILURE TO PROCEED
Sec.
228.1 Claimant or counterclaimant's failure to complete service.
228.2 Claimant or counterclaimant's failure to prosecute.
Authority: 17 U.S.C. 702, 1510.
Sec. 228.1 Claimant or counterclaimant's failure to complete service.
(a) Failure to serve a respondent who is not a necessary party. If
a claimant fails to timely complete service on a respondent who is not
a necessary party, pursuant to 37 CFR 222.13, the Copyright Claims
Board (``Board'') shall dismiss that respondent from the proceeding
without prejudice. The proceeding shall continue against any remaining
respondents.
(b) Failure to serve a respondent who is a necessary party. If a
claimant fails to timely complete service on a respondent who is a
necessary party, pursuant to 37 CFR 222.13, the Board shall dismiss the
proceeding without prejudice.
(c) Complete failure to serve respondents. For a claim to proceed,
a claimant must complete service on at least one respondent. If a
claimant does not timely file any proof of service, the Board shall
dismiss the proceeding without prejudice.
Sec. 228.2 Claimant or counterclaimant's failure to prosecute.
(a) General. If a claimant or counterclaimant fails to proceed in
an active proceeding without justifiable cause, as demonstrated by a
failure to meet any filing deadline or requirement set forth in the
scheduling order or other order, upon request of a party or on its own
initiative, the Board shall issue a notice following the missed
deadline or requirement.
(b) Contents of notice. (1) A notice issued under paragraph (a) of
this section shall inform the claimant that failure to proceed in the
proceeding may result in the Board issuing a determination dismissing
the claimant's claims, including an award of attorneys' fees and costs
where appropriate, and shall explain the legal effects of such a
determination. The notice shall provide the claimant with 30 days,
beginning on the date of the notice, to respond to the notice and meet
the missed deadline or requirement. The notice shall be issued to the
claimant by mail and all known email addresses.
(2) If the claimant has failed to respond 15 days after the notice
of the failure to proceed, the Board shall send a second notice to the
claimant according to the procedures set forth in paragraph (b)(1) of
this section. Such notice shall attach the first notice and shall
remind the claimant that it must respond and meet the missed deadline
or requirement within 30 days from the date of the first notice.
(c) Response to notice. (1) If the claimant cures the missed
deadline or requirement within the time specified by the notice, the
proceeding shall resume and the Board shall issue a revised scheduling
order, if necessary.
(2) If the claimant fails to cure the missed deadline or
requirement within the time specified by the notice but submits a
response that indicates an intent to re-engage with the proceeding, the
Board shall consider the response and either provide the claimant with
additional time to cure the missed deadline or requirement or issue a
determination dismissing the claimant's claims.
(3) If the claimant fails to cure the missed deadline or
requirement within the time specified by the notice and does not
otherwise respond to the notice, the Board shall issue a determination
dismissing the claimant's claims.
(d) Determination dismissing claims. A determination dismissing the
claimant's claims for failure to proceed in the active proceeding shall
be with prejudice and shall include an award of attorneys' fees and
costs pursuant to 37 CFR 232.3, if appropriate. The claimant may only
challenge such determination to the extent permitted under 17 U.S.C.
1508(c) or the procedures set forth in paragraph (e) of this section.
(e) Vacating a determination dismissing claims. If additional
proceedings have not been initiated under 17 U.S.C. 1508(c), the
claimant may request in writing that the determination be vacated and
provide the reasons supporting the request. The claimant and respondent
shall follow the general procedures for a request for reconsideration
as set forth in part 230 of this subchapter. The Board may vacate the
determination of dismissal in the interests of justice.
0
11. Part 229 is added to read as follows:
PART 229--RECORDS AND PUBLICATION
Sec.
229.1 Access to records and proceedings.
229.2 Record certification.
Authority: 17 U.S.C. 702, 1510.
Sec. 229.1 Access to records and proceedings.
(a) Official written record. Submissions by parties to a proceeding
and documents issued by the Copyright Claims Board (``Board'') shall
constitute the official written record.
(b) Access to record. Any member of the public may inspect the
official written record through the electronic filing system, except
any materials that have been marked confidential pursuant to 37 CFR
222.18.
[[Page 69915]]
(c) Attendance at hearing. Attendance at a Board hearing, including
virtual hearings, is limited to the parties to the proceeding and their
representatives, except with leave of the Board. A request for
attendance may be made in writing.
(d) Hearing transcript. The Board may cause a transcript of a
hearing to be made by using an official reporter or any technology that
is available to the Board. At the request of any party, the Board may
designate an official reporter to attend and transcribe a hearing or to
prepare a transcript from a recording of a hearing. The requesting
party or parties shall pay the reporter directly for the cost of
creating an official transcript.
Sec. 229.2 Record certification.
Upon a written request to the Records Research and Certification
Section of the U.S. Copyright Office pursuant to 37 CFR 201.2, and
payment of the appropriate fee pursuant to 37 CFR 201.3, the Board will
certify the official record of a proceeding.
0
12. Part 230 is added to read as follows:
PART 230--REQUESTS FOR RECONSIDERATION
Sec.
230.1 General.
230.2 Request for reconsideration.
230.3 Response to request.
230.4 No new evidence.
230.5 Determination.
Authority: 17 U.S.C. 702, 1510.
Sec. 230.1 General.
This part prescribes rules pertaining to procedures for
reconsideration of a final determination issued by the Copyright Claims
Board (``Board''). A party may request reconsideration according to the
procedures in this part if the party identifies a clear error of law or
fact material to the outcome or a technical mistake. A party may also
request reconsideration to vacate a default determination.
Sec. 230.2 Request for reconsideration.
Upon receiving a final determination from the Board, any party may
request that the Board reconsider its determination. Such a request
must be filed within 30 days of the determination and shall be no more
than 12 doubled-spaced pages in 12-point font or larger, for both body
text and footnotes, with at least one-inch margins on the top, bottom,
left, and right of each page. The request must identify a clear error
of law or fact that was material to the outcome or a technical mistake.
The request shall not merely repeat any oral or written argument made
to the Board as part of the proceeding but shall be specific as to the
purported error or technical mistake that is the subject of the
request.
Sec. 230.3 Response to request.
A party opposing a request for a reconsideration may file a
response to the request within 21 days of the date of service of the
request. Such response shall be no more than 12 double-spaced pages in
12-point font or larger, for both body text and footnotes, with at
least one-inch margins on the top, bottom, left, and right of each
page. No reply shall be filed by the party seeking reconsideration
absent leave of the Board.
Sec. 230.4 No new evidence.
Evidence that was not previously submitted to the Board as part of
written testimony or at a hearing or in response to a specific request
for evidence from the Board shall not be submitted as part of a request
for reconsideration or a response to a request, except where the party
demonstrates, through clear and convincing evidence, that the evidence
was not available to that party in the exercise of reasonable diligence
prior to the submission of written testimony or prior to the hearing.
Sec. 230.5 Determination.
After the filing of response papers or after the time for a party
opposing the request for reconsideration to file a response has
elapsed, the Board shall consider the request and any response and
shall either deny the request for reconsideration or issue an amended
final determination. The Board will base its decision on the party's
written submissions.
0
13. Part 231 is added to read as follows:
PART 231--REGISTER'S REVIEW
Sec.
231.1 General.
231.2 Request for Register's review.
231.3 Response to request.
231.4 No new evidence.
231.5 Standard of review.
231.6 Determination.
Authority: 17 U.S.C. 702, 1510.
Sec. 231.1 General.
This part prescribes rules pertaining to procedures for review by
the Register of Copyrights of a final determination by the Copyright
Claims Board (``Board''). A party whose request for reconsideration has
been denied under 37 CFR 230.5 may seek review of the final
determination by the Register of Copyrights not later than 30 days
after a request for reconsideration has been denied in whole or in
part.
Sec. 231.2 Request for Register's review.
A party may not file for review of the Board's final determination
by the Register of Copyrights unless it has first filed, and had
denied, a request for reconsideration. Where the Board has denied a
request for reconsideration, the party who requested reconsideration
may request review of the final determination by the Register of
Copyrights. Such a request must be filed within 30 days of the denial
of a request for reconsideration and shall be no more than 15 doubled-
spaced pages in 12-point font or larger, for both body text and
footnotes, with at least one-inch margins on the top, bottom, left, and
right of each page. The request must include the reasons the party
believes there was an abuse of discretion in denying the request for
reconsideration. The request must be accompanied by the filing fee set
forth in 37 CFR 201.3(g).
Sec. 231.3 Response to request.
A party opposing the request for review may file a response to the
request for review within 21 days of the date of service of the
request. Such response shall be no more than 15 double-spaced pages in
12-point font or larger, for both body text and footnotes, with at
least one-inch margins on the top, bottom, left, and right of each
page. The request must include the reasons the party believes there was
no abuse of discretion in denying the request for reconsideration. No
reply filings shall be permitted.
Sec. 231.4 No new evidence.
Evidence that was not previously submitted to the Board as part of
written testimony or at a hearing or in response to a specific request
for evidence from the Board shall not be submitted as part of a request
for review or a response to a request for review.
Sec. 231.5 Standard of review.
The Register's review shall be limited to consideration of whether
the Board abused its discretion in denying reconsideration of the
determination.
Sec. 231.6 Determination.
After the filing of response papers or after the time for a party
opposing the request for review to file a response has elapsed, the
Register shall consider the request and any response and shall either
deny the request for review or remand the proceeding to the Board for
reconsideration of issues specified in the remand and for issuance of
an amended final determination. The Register will base such a decision
on the party's written submissions.
[[Page 69916]]
0
14. Part 232 is added to read as follows:
PART 232--CONDUCT OF PARTIES
Sec.
232.1 General.
232.2 Representations to the Board.
232.3 Bad-faith conduct.
232.4 Bar on initiating claims.
232.5 Attorney and representative conduct.
Authority: 17 U.S.C. 702, 1510.
Sec. 232.1 General.
All parties and any attorneys or other representatives shall act
with the utmost respect for others and shall behave ethically and
truthfully in connection with all submissions and appearances before
the Copyright Claims Board (``Board'').
Sec. 232.2 Representations to the Board.
By submitting materials or advocating positions before the Board, a
party, including any attorneys representing a party, certifies that to
the best of the party's knowledge, information, and belief, formed
after a reasonable inquiry under the circumstances:
(a) It is not being presented for any improper purpose;
(b) Any legal contentions are made in good faith based on the
party's reasonable understanding of existing law;
(c) Any factual contentions have evidentiary support or, if
specifically so identified, will likely have evidentiary support after
a reasonable opportunity for further investigation or discovery; and
(d) Any denials of factual contentions have evidentiary support or,
if specifically so identified, are reasonably based on belief or a lack
of information.
Sec. 232.3 Bad-faith conduct.
(a) General. The Board shall award costs and attorneys' fees as
part of a determination where it is established that a party or its
representative engaged in bad-faith conduct, unless such an award would
be inconsistent with the interests of justice.
(b) Allegations of bad-faith conduct--(1) On the Board's
initiative. On its own, and prior to a final determination, the Board
may order a party or its representative to show cause why certain
conduct does not constitute bad-faith conduct. Within seven days, the
party or representative accused of bad-faith conduct shall file a
letter response to this order, which shall be not more than three
pages.
(2) On a party's initiative. A party that in good faith believes
that another party or its representative has engaged in bad-faith
conduct, may file a letter describing the alleged bad-faith conduct,
attaching any relevant exhibits, and requesting a conference with the
Board. Within seven days of the date of service of the letter, the
accused party or representative may file a response to this letter. Any
letters described within this paragraph (b)(2) shall be no longer than
three pages. No reply letters shall be permitted, unless the Board
grants leave for a reply.
(c) Establishing bad-faith conduct. After an accused party's or
representative's response letter has been filed under paragraph (b) of
this section, or the time to file such a letter has passed, the Board
shall either make a determination that no bad-faith conduct occurred or
schedule a conference concerning the allegations.
(d) Determining the award. In determining whether to award
attorneys' fees and costs due to bad-faith conduct, and the amount of
any such award, the Board shall consider the letters submitted by the
parties, any arguments on the issue, and the accused party's or
representative's behavior in other proceedings. Any award of attorneys'
fees or costs shall be included in the final determination. Such an
award shall be limited to an amount of not more than $5,000, unless--
(1) The adversely affected party appeared pro se in the proceeding,
in which case the award shall be limited to costs in an amount of not
more than $2,500; or
(2) Extraordinary circumstances are present, such as a demonstrated
pattern or practice of bad-faith conduct, in which case the Board may
award costs and attorneys' fees in excess of the limitations in this
section.
Sec. 232.4 Bar on initiating claims.
(a) General. A party or a party representative that has been found
to have engaged in bad-faith conduct on more than one occasion within a
12-month period shall be subject to the penalties set forth in
paragraph (d) of this section.
(b) Allegations of multiple instances of bad-faith conduct--(1) On
the Board's initiative. On its own, and at any point during a
proceeding, the Board may order a party or its representative to show
cause why certain conduct engaged in on more than one occasion within a
12-month period does not constitute bad-faith conduct. Within seven
days, such accused party or representative shall file a letter response
to this order, which shall be not more than three pages in length.
(2) On a party's initiative. A party that in good faith believes
that another party or its representative to the proceeding has engaged
in bad-faith conduct before the Board on more than one occasion within
a 12-month period, may file a letter with the Board at any point after
a proceeding has been initiated. Such letter shall describe the alleged
instances of bad-faith conduct, include the case numbers for any other
instances of bad-faith conduct if known, attach any relevant exhibits,
and request a conference with the Board. Such a letter filed by a
respondent before the time to opt out of the proceeding has expired
shall not operate as a waiver of that respondent's right to opt out of
the proceeding. Within seven days of the date of service of the letter,
the accused party or representative may file a response to this letter.
Any letters described within this section shall be not more than three
pages in length. No reply letters shall be permitted unless the Board
grants leave.
(c) Establishing bad-faith conduct. After an accused party's or
representative's response letter has been filed under paragraph (b) of
this section, the Board shall either make a determination that the
party or representative has not engaged in bad-faith conduct before the
Board on more than one occasion within a 12-month period, or shall
schedule a conference concerning the allegations. An award of
attorneys' fees or costs against the accused party or its
representative, pursuant to Sec. 232.3, within the prior 12 months
shall establish an instance of bad-faith conduct within the requisite
time period. The Board may consider other evidence of bad-faith conduct
by the accused party or representative that did not result in an award
of attorneys' fees or costs pursuant to Sec. 232.3, including but not
limited to claims that were reviewed by a Copyright Claims Attorney and
found to be noncompliant or where proceedings were initiated but the
respondent opted out.
(d) Penalties. In determining whether to bar a party from
initiating claims or a representative from initiating claims on a
party's behalf, the Board shall consider the letters submitted by the
parties, any arguments on the issue, and the accused party's or
representative's behavior in other proceedings. The Board shall issue
its determination in writing. If the Board determines that the accused
party or representative has engaged in bad-faith conduct on more than
one occasion within a 12-month period, such determination shall
include:
(1) A provision that the accused party be barred from initiating a
claim, or in the case of a representative, barred from initiating
claims for parties, before the
[[Page 69917]]
Board for a period of 12 months beginning on the date on which the
Board makes such a finding;
(2) In the case of bad-faith conduct by a party, dismissal without
prejudice of any proceeding commenced by that party or by the
representative on behalf of a party that is still pending before the
Board at the time the finding is made, except that active proceedings
shall be dismissed only if the respondent provides written consent to
the dismissal; and
(3) In the case of a representative, a provision that the
representative be barred from representing any party before the Board
for a period of 12 months beginning on the date on which the Board
makes such a finding. In deciding whether the representative shall be
barred from representing other parties in already pending proceedings,
the Board may take into account the hardship to the parties represented
by the sanctioned representative. If a representative is barred from
further representing a party in a pending claim, the Board will
consider requests from that party asking the Board to amend the
scheduling order or issue a stay of the pending action to allow that
party to find other representation. Whether to issue amend the
scheduling order or issue a stay shall be at the Board's discretion.
Sec. 232.5 Attorney and representative conduct.
(a) Notices of appearance. If a party elects to be represented by
an attorney or other representative in a proceeding, such attorney or
representative must file a notice of appearance that provides the name
of the case, the representative's bar number in a State in which the
representative has been admitted to practice (if applicable), the case
number (if assigned), the person on whose behalf the appearance is
made, and the representative's mailing address, email address, and
telephone number. Similar notice must also be given for any withdrawal
of appearance.
(b) Bar admissions. An attorney must be a member in good standing
of the bar of the highest court of a State, the District of Columbia,
or any territory or commonwealth of the United States. A law student
representative must qualify under regulations governing law student
representation of a party ([to be proposed at 37 CFR part 234]). An
attorney or representative must file with the Board a written statement
under penalty of perjury that the attorney or representative is
currently qualified and is authorized to represent the party on whose
behalf the attorney or representative appears.
(c) Disbarred attorneys. Any attorney or representative who has
been disbarred by any Federal court, a court of any State, the District
of Columbia, or any territory or commonwealth of the United States
shall not be allowed to represent a party before the Board. If an
attorney in any proceeding active or pending before the Board is
disbarred after a notice of appearance has been made, the attorney must
report the disbarment to the Board and withdraw representation from any
proceeding.
(d) Duties toward the Board and the parties. An attorney or
representative has a duty of candor and impartiality toward the Board,
and a duty of fairness toward opposing parties and counsel. In
assessing whether an attorney or representative has breached its
duties, the Board shall consider the rules of professional conduct of
the District of Columbia and the State in which the attorney practices.
(e) Penalties for violation. Any attorney or representative found
to be in violation of any of the rules of conduct as set forth in this
section, or who is otherwise found to be behaving unethically or
inappropriately before the Board, may be barred from representing
parties in proceedings before the Board for a period of twelve months.
0
15. Part 233 is added to read as follows:
PART 233--LIMITATION ON CASES
Sec.
233.1 General.
233.2 Limitation on proceedings.
233.3 Temporary limitations.
Authority: 17 U.S.C. 702, 1510.
Sec. 233.1 General.
This part prescribes rules pertaining to the management of the
Copyright Claims Board's (``Board's'') docket and prevention of abuse
of the Board's proceedings.
Sec. 233.2 Limitation on proceedings.
(a) Maximum number of proceedings filed by a party. A party,
including a corporate party's parents, subsidiaries, and affiliates,
shall file no more than 10 Copyright Claims Board proceedings in any
12-month period. A private attorney or law firm shall represent a
claimant in no more than 40 Copyright Claims Board proceedings in any
12-month period. A proceeding shall count toward this limitation as
soon as it is filed, regardless of how the proceeding is resolved,
whether it is found to be noncompliant or unsuitable, voluntarily
dismissed, or fails to become active due to a respondent's opt-out.
Amendments to a claim and counterclaims filed in response to a claim
shall not count toward this limit.
(b) Circumvention of limit. It shall be considered bad-faith
conduct under 37 CFR 232.3 for a party to take any action for the sole
purpose of avoiding the limitation on the number of proceedings that
may be filed as set forth in this section.
(c) Maximum total number of proceedings before the Board. There
shall not be a maximum total number of proceedings that may be filed
before the Board.
Sec. 233.3 Temporary limitations.
(a) Moratorium on new claims. When the Board has determined that
the number of pending cases before it has overwhelmed the capacity of
the Board, the Board may impose a temporary stay on the filing of
claims or on the number of claims that may be filed by a party or
representative. The Board shall publish an announcement of that
determination on its website, stating the effective date of the stay,
and the duration of the stay, not to exceed six months.
(b) Exception to moratorium. If a claimant's statute of limitations
under 17 U.S.C. 1504(b) is about to expire during the stay under
paragraph (a) of this section, the claimant may file a claim on or
before the statutory deadline accompanied by a declaration under
penalty of perjury stating that the statute of limitations will expire
during the stay and setting forth facts in support of that conclusion.
If the Board determines that the statute of limitations likely will
expire during the stay based on the facts set forth in the declaration,
the Board shall hold the claim in abeyance and conduct a compliance
review following the end of the stay.
Dated: November 24, 2021.
Kevin R. Amer,
Acting General Counsel and Associate Register of Copyrights.
[FR Doc. 2021-26058 Filed 12-7-21; 8:45 am]
BILLING CODE 1410-30-P