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Rule2022-06264

Copyright Claims Board: Initiating of Proceedings and Related Procedures

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Published

March 25, 2022

Effective

April 25, 2022

Issuing agencies

Library of CongressCopyright Office, Library of Congress

Abstract

The U.S. Copyright Office is amending its regulations to establish procedures governing the initial stages of a Copyright Claims Board proceeding. The regulations provide requirements regarding filing a claim, the Board's compliance review, service, notice of the claim, the respondent's opt-out election, responses, and counterclaims.

Full Text

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<title>Federal Register, Volume 87 Issue 58 (Friday, March 25, 2022)</title>
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[Federal Register Volume 87, Number 58 (Friday, March 25, 2022)]
[Rules and Regulations]
[Pages 16989-17008]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-06264]

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LIBRARY OF CONGRESS

37 CFR Parts 201, 220, 222, 223, and 224

[Docket No. 2021-6]

AGENCY: U.S. Copyright Office, Library of Congress.

ACTION: Final rule.

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SUMMARY: The U.S. Copyright Office is amending its regulations to
establish procedures governing the initial stages of a Copyright Claims
Board proceeding. The regulations provide requirements regarding filing
a claim, the Board's compliance review, service, notice of the claim,
the respondent's opt-out election, responses, and counterclaims.

DATES: Effective April 25, 2022.

FOR FURTHER INFORMATION CONTACT: Megan Efthimiadis, Assistant to the
General Counsel, by email at <a href="/cdn-cgi/l/email-protection#375a525143775458474e455e505f4319505841"><span class="__cf_email__" data-cfemail="244941425064474b545d564d434c500a434b52">[email&#160;protected]</span></a>, or by telephone at
202-707-8350.

SUPPLEMENTARY INFORMATION:

I. Background

The Copyright Alternative in Small-Claims Enforcement (``CASE'')
Act of 2020 \1\ directs the Copyright Office to establish the Copyright
Claims Board (``CCB''), a voluntary forum for parties seeking
resolution of certain copyright disputes that have a total monetary
value of $30,000 or less. The CCB is an alternative forum to federal
court and is designed to be accessible to pro se individuals and
individuals without much formal exposure to copyright.\2\ The Office
published a notification of inquiry (``NOI'') asking for public
comments on the CCB's operations and procedures.\3\
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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).
\3\ 86 FR 16156 (Mar. 26, 2021). Comments received in response
to the March 26, 2021 NOI are available at <a href="https://www.regulations.gov/document/COLC-2021-0001-0001/comment">https://www.regulations.gov/document/COLC-2021-0001-0001/comment</a>.
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Following the NOI, the Office published a notice of proposed
rulemaking (``NPRM''), proposing rules governing the initiation of
proceedings before the CCB and related procedures.\4\ These rules
addressed filing a claim, the CCB's review of the claim to ensure that
it complies with the relevant statutory requirements and regulations
(``compliance review''), service, notice of the claim, the respondent's
ability to opt out, the response, and counterclaims.\5\
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\4\ 86 FR 53897 (Sept. 29, 2021). Comments received in response
to the September 29, 2021 NPRM are available at <a href="https://www.regulations.gov/docket/COLC-2021-0004/comments">https://www.regulations.gov/docket/COLC-2021-0004/comments</a>. References to
these comments are by party name (abbreviated where appropriate),
followed by ``Initial NPRM Comments'' or ``Reply NPRM Comments,'' as
appropriate.
\5\ 86 FR 53897.
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The Office sought public input concerning its proposals for the
initiation of proceedings and related procedures and received 186
responsive comments. The Office addresses these comments along with
changes made to the proposed rule below.

II. Final Rule

A. Fees

1. Fee for Filing a Claim
The CASE Act provides that the sum total of any filing fees,
including the fee to commence a proceeding, may not exceed the cost to
file an action in federal district court (currently $402 \6\) but may
not be less than $100.\7\ In the NPRM, the Office noted that the CASE
Act's Senate Report proposed ``that the Office consider a two-tiered
fee structure, with an initial fee assessed when the claim is filed and
a second fee assessed after the claim becomes active.'' \8\ At that
time, the Office declined to institute a two-tiered fee system, under
the theory that where a ``claimant did not move on to the second tier,
the total filing fees would not reach the statutory floor.'' \9\
Accordingly, a single filing fee of $100 to commence a proceeding was
proposed. However, the Office invited comments on the advisability of a
two-tiered fee system and whether the Office has the authority to
institute such a system under the CASE Act.
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\6\ 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.
\7\ 17 U.S.C. 1510(c).
\8\ 86 FR 53904 (citing S. Rep. No. 116-105, at 4 n.4).
\9\ Id.
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Commenters overwhelmingly supported a two-tiered fee system.\10\
They offered many practical arguments, including that an upfront fee of
$100 may be cost-prohibitive for many claimants, especially when
respondents subsequently opt out of the proceeding, and that a two-
tiered system would increase participation by minimizing the loss to a
claimant where a respondent opts out before a proceeding becomes
active.\11\ Commenters suggested setting the first fee in the range of
$10 to $55, with many suggesting the first fee should be around
$25.\12\ Others did not take a position on a single fee or two-tiered
approach, but suggested reducing the filing fee to less than $100.\13\
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\10\ But cf. Michael Bynum Initial NPRM Comments at 1 (not
mentioning the two-tiered vs. single-tier choice, but stating that
he was ``comfortable'' with a $100 fee and that it was
``reasonable'').
\11\ See, e.g., Copyright Alliance, ACT <radical> App Ass'n, 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 Artists Coalition, Music Creators N. Am., 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.'') Initial NPRM Comments at 8-11; Am.
Intell. Prop. L. Ass'n (``AIPLA'') Initial NPRM Comments at 3; The
Authors Guild Reply NPRM Comments at 1-2; Mark Reback Initial NPRM
Comments at 1; Jay Foster Initial NPRM Comments at 1.
\12\ See, e.g., AIPLA Initial NPRM Comments at 3 ($35-55);
Authors Guild Reply NPRM Comments at 1-2 ($25-35); Ryan Conners
Initial NPRM Comments at 1 ($25); Ricky Jackson Initial NPRM
Comments at 1 ($25); Sylvia Phipps Initial NPRM Comments at 1 ($25);
Anonymous Reply NPRM Comments at 3 ($50); Sydney Krantz Initial NPRM
Comments at 1 ($25); Donna Barr Initial NPRM Comments at 1 ($15);
Ritterbin Photography Initial NPRM Comments at 1 ($25); Lisa Shaftel
Initial NPRM Comments at 5 ($25); Suriya Ahmer Initial NPRM Comments
at 1 ($25); Mark Woodward Reply NPRM Comments at 1 ($20-25); Hans
Rupert Initial NPRM Comments at ($10).
\13\ See, e.g., John Long Initial NPRM Comments at 1; 9TH Eye in
The Quad Productions Initial NPRM Comments at 1; c, z Initial NPRM
Comments at 1; Cherry Wood Initial NPRM Comments at 1; Charlotte
Cotton Initial NPRM Comments at 1; Dan Milham Initial NPRM Comments
at 1; Gareth Hinds Initial NPRM Comments at 1; K Muldoon Initial
NPRM Comments at 1; Bree McCool Photography Initial NPRM Comments at
1; Linda Langford Initial NPRM Comments at 1; Angela Jarman Initial
NPRM Comments at 1.

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[[Page 16990]]

Two comments, reflecting the views of multiple commenters, offered
their analysis of the CASE Act permitting a two-tiered fee. As the
Office noted in the NPRM, the CASE Act expressly refers to two separate
``filing fees,'' including the fee to commence a proceeding and the fee
for the Register's review.\14\ While the Act does not state that these
are the only fees that may be assessed, the Office interpreted 17
U.S.C. 1510(c) as dictating the ``upper and lower limits to the filing
fees it may assess,'' and that the section requires a ``statutory
minimum'' filing fee of $100.\15\ The Copyright Alliance et al.
challenged the Office's reading of 1510(c), stating that that provision
is not ``instructive of how much the Office must actually receive in
fees each time a claimant commences a claim,'' but instead is
``instructing the Register on how to set the fee schedule in the
regulations.'' \16\ AIPLA looked at the statutory text, which states
that the total of all fees ``including,'' but not limited to, the fee
for commencing a proceeding must equal at least $100 to conclude that
``[r]ather than a bottom limit on the initial filing fee, the Act sets
a $100 minimum on the `sum total of such filing fees[.]' '' \17\
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\14\ 86 FR 53904 (citing 17 U.S.C. 1506(e), (x)).
\15\ Id.
\16\ Copyright Alliance et al. Initial NPRM Comments at 9
(emphasis omitted).
\17\ AIPLA Initial NPRM Comments at 3 (citing 17 U.S.C.
1510(c)).
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Upon careful evaluation of the statute and the submitted comments,
the Office is amending the proposed rule to include a two-tiered fee
system, with a first payment of $40 due upon filing and a second
payment of $60 due once a proceeding becomes active. Under the two-
tiered approach adopted in this final rule, the ``sum total'' of all
``filing fees'' will be at least $100 and no more than $402, satisfying
the requirements of section 1510(c).
In adopting a two-tiered fee, the Office is informed in part by the
statutory analysis offered by AIPLA and the Copyright Alliance et al.
as well as its own reading of the statute. The Office believes that the
CASE Act does not establish a minimum initial fee to commence a
proceeding, so long as the sum total of all filing fees set by the
Office meets the statutory requirements, including that the total fees
are not less than $100. It is clear from the statute, and as noted in
the NPRM,\18\ that the $100 minimum applies not to the fee that
accompanies the filing of a claim, but rather to the ``sum total'' of
whatever filing fees are prescribed in regulations established by the
Register. Therefore, while under the statute, the combined total of all
filing fees that may be assessed must be at least $100, the statute
does not require that each claimant pay $100 at the outset before a
proceeding becomes active.
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\18\ 86 FR 53904.
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Additionally, the Office agrees with commenters that a two-tiered
fee system furthers the goals of the CCB, a factor the statute directs
the Office to consider when setting filing fees.\19\ As noted by the
Copyright Alliance et al.,\20\ the CASE Act's Senate Report counsels
that filing fees should not be set so high as to discourage potential
claimants from using the CCB to resolve their disputes, knowing that
when respondents exercise their right to opt out it will result in the
claimants' loss of the filing fees.\21\ The two-tiered fee system
reduces the financial outlay to institute a proceeding. Requiring
payment of a filing fee of $100 when respondents may yet opt out could
cause potential claimants to conclude that bringing a claim before the
CCB is too great a financial risk. A chief objective of the CASE Act is
to provide a forum that is ``accessible especially for pro se parties
and those with little prior formal exposure to copyright laws who
cannot otherwise afford to have their claims and defenses heard in
federal court.'' \22\ This fundamental goal is not served if the fee to
commence a proceeding, which risks being lost if the respondent opts
out, serves as too high a barrier to the filing of genuine claims.
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\19\ 17 U.S.C. 1510(c).
\20\ Copyright Alliance et al. Initial NPRM Comments at 10
(quoting S. Rep. No. 116-105, at 4).
\21\ S. Rep. No. 116-105, at 4.
\22\ H.R. Rep. No. 116-252, at 17.
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The Office has set the amount of the first payment at $40 and the
second payment at $60 for many reasons. First, a $40/$60 split keeps
the overall fee at $100, meaning that the published total filing fee
will, by itself, fulfill the statutory requirement of having total
filing fees be at least $100. Second, Congress suggested that if a two-
tiered system was created, ``the initial filing fee itself should be
smaller than the fee charged later when a proceeding becomes active.''
\23\ Third, in most cases that reach active proceeding status, much
more of the work required by the CCB will occur after the proceeding
becomes active, meaning that it makes sense to have the second fee
higher than the first as opposed to a $50/$50 split. Fourth, while the
Office received many comments asking for a two-tiered system, almost
none of those commenters expressed any issue with the total of the two
tiers equaling $100.\24\ Fifth, as expressed above, the $40 fee fits
squarely within the general range of prices suggested by commenters for
the first payment. And, sixth, the first payment should not be so low
that it does not have a deterrent effect on purely frivolous claims, a
concern expressed in the Office's original study leading to the CASE
Act (recommending a filing fee in order to ``discourage spurious
claims'').\25\
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\23\ S. Rep. No. 116-105, at 4.
\24\ But see The Authors Guild Reply NPRM Comments at 1-2.
\25\ U.S. Copyright Office, Copyright Small Claims 122 & n.849
(2013), <a href="https://www.copyright.gov/docs/smallclaims/usco-smallcopyrightclaims.pdf">https://www.copyright.gov/docs/smallclaims/usco-smallcopyrightclaims.pdf</a> (``Copyright Small Claims'').
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The Office notes that the $40/$60 split represents the Office's
best estimate of proper first and second payments given the information
available. Should the Office determine after the benefit of experience
that a different split makes sense (e.g., if the current first payment
amount does not appear to be sufficiently high to deter frivolous
claims), it will engage in a new rulemaking process at that time.
Implementation of this fee system requires additional regulations
concerning, for example, the timing of the second payment and the
consequences of the failure to make that payment. These regulations are
described in more detail below.
2. Fee for Counterclaims
The Office did not include a fee for filing counterclaims in the
proposed rule based on the lack of express statutory authorization for
counterclaim fees and the fact that federal district courts do not
charge fees for counterclaims, but it invited comments.\26\ The Office
received two comments on this issue. The Copyright Alliance et al.
agreed that there should not be a filing fee for counterclaims since
``the CCB is intended to be an affordable alternative to federal
court'' and federal courts do not charge a fee for bringing
counterclaims.\27\ AIPLA recommended instituting such a fee to defray
the costs of the CCB checking counterclaims to make sure they are
compliant with the rules and to deter the filing of frivolous
counterclaims, noting that other administrative forums, including the
Trademark Trial and Appeal Board, charge fees for counterclaims.\28\
Upon consideration of these comments, the Office has decided not to
include a fee for filing counterclaims in the final rule.
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\26\ 86 FR 53904.
\27\ Copyright Alliance et al. Initial NPRM Comments at 11;
Copyright Alliance et al. Reply NPRM Comments at 10-11.
\28\ AIPLA Initial NPRM Comments at 3.

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[[Page 16991]]

A. Initiating a Claim

The NPRM included proposed regulations on initiating claims before
the CCB.\29\ These regulations contemplated that claims would be
submitted on a fillable form provided on the CCB's electronic filing
system, called ``eCCB.'' The claim form would include certain key
information about the claim, such as the identity of the parties, the
type of claim asserted, the harm experienced, and other relevant
facts.\30\ The Office received comments on the claim initiation
process, discussed below. The Office also has endeavored to standardize
the requirements for claims and counterclaims, where applicable.
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\29\ 86 FR 53898.
\30\ Id.
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1. Pleading Requirements
Commenters were split regarding whether they believed the pleading
requirements for claims in the proposed rule were too burdensome or too
lenient. In suggesting the rule was too lenient, New Media Rights
questioned whether the pleading requirements were sufficient to place
respondents on notice of the details of the claim,\31\ and two
commenters suggested that the Office include a mechanism for
respondents to request additional information before deciding whether
to opt out.\32\ The Science Fiction and Fantasy Writers of America,
Inc. (``SFWA''), suggested that the rule was too burdensome, and that
the pleading requirements in the proposed rule were too complex and
could deter claimants from filing claims, especially without the
assistance of an attorney.\33\
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\31\ New Media Rights Initial NPRM Comments at 4.
\32\ Organization for Transformative Works (``OTW'') Initial
NPRM Comments at 8-9; New Media Rights Initial NPRM Comments at 4-5.
\33\ SFWA Initial NPRM Comments at 2.
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The Office intends the pleading requirements to represent a balance
between claimants' and respondents' needs. The appropriate balance will
ensure that a claim provides sufficient information to allow a
respondent to make a meaningful assessment of whether to opt out or to
proceed before the CCB, while not overly burdening the claimant. Though
claimants are required to provide a fair amount of detail, the Office
plans to make educational materials, such as the CCB Handbook,
available to explain the pleading requirements while minimizing legal
jargon. Furthermore, eCCB has been designed to provide guidance to
claimants concerning what information they are required to provide via
a fillable online form. Copyright Claims Attorneys will also be
available to answer questions and provide guidance. If a Copyright
Claims Attorney determines during the claim's compliance review that it
does not provide sufficient information to place a respondent on
notice, the CCB will order the claimant to provide more detail before
allowing the claim to proceed. Additionally, the Office has included
language in the final rule enabling parties to jointly request an
extension of the opt-out period, as discussed below. Though the CCB
ultimately must approve such requests, an extension may give the
respondent additional time to approach the claimant during the opt-out
period and request more information to determine whether to proceed or
opt out.
Commenters noted that the proposed rule did not include a
requirement that claimants seeking a declaration of noninfringement
plead any facts alleging the existence of a dispute or controversy, as
is required for declaratory judgments.\34\ The Office has added this
requirement to the final rule.
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\34\ Copyright Alliance et al. Initial NPRM Comments at 13
(citing 28 U.S.C. 2201).
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Additionally, two commenters suggested that the requirement that
claimants describe and estimate the ``monetary harm suffered'' \35\ was
too limiting, since some claimants may seek statutory damages, profits,
or no damages at all.\36\ The final rule broadens this language,
requiring that claimants describe the harm they have suffered due to
the alleged activity and the relief they are seeking, which may include
an estimate of such relief. Though the NPRM included this as a
requirement for all three types of claims, the final rule only includes
it as a requirement for infringement and misrepresentation claims,
since damages are not available for noninfringement claims.
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\35\ 86 FR 53906.
\36\ Copyright Alliance et al. Initial NPRM Comments at 13-14;
Motion Picture Ass'n, Recording Indus. Ass'n of Am. & Software and
Info. Ass'n of Am. (``MPA, RIAA & SIIA'') Initial NPRM Comments at
9-10.
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One commenter suggested that claimants be permitted to serve a
settlement demand, akin to an offer of judgment under Rule 68 of the
Federal Rules of Civil Procedure, along with the claim, so that a
respondent would have a choice between opting out, responding and
participating in the proceeding, or settling. The commenter believed
that this could also increase participation in CCB proceedings since
the respondent would be aware of the level of potential liability at
the outset.\37\ The Office is concerned that explicitly incorporating
settlement demands such as these into the early stages of the process
may encourage abusive use of the CCB, and that aggressive claimants
would use such demands to intimidate respondents into a settlement or
that high settlement demands would encourage respondents to opt out.
Additionally, the Office believes that the revisions in the final rule
requiring a claimant to describe the harm they have suffered and
permitting them to include an estimate will better serve the goal of
placing respondents on notice of the level of potential liability from
the outset.
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\37\ James Doherty Initial NPRM Comments.
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Further, commenters suggested that the requirement that the
claimant identify the category of work that the claim pertains to may
be confusing, especially for pro se claimants, and that this
information is not necessary, since the Office can easily determine it
from the work's application or registration.\38\ The Office intends to
provide guidance to claimants in its educational materials as well as
within eCCB for determining the category of the work. Claimants who are
unable to determine which category applies will be given an opportunity
to describe the work in their own words instead. Though the Office may
later be able to access this information in its records, identification
of the category at this stage may provide helpful information to
respondents in understanding the claim that is asserted. Indeed, New
Media Rights believed the overall requirements for the claim, including
the proposed rule's ``standard for describing the nature of the work''
to be ``inadequate'' for the respondent to understand the nature of the
claim.\39\ The Office believes that the final rule requires claims to
include sufficient information for the respondent to be properly
informed before making an opt-out election or when responding to the
claim. The eCCB will give the claimant information as to how to select
the category of the work or to describe it and provide the respondent
with information and helpful context regarding the nature of the claim.
If the work has already been registered, the claim will include the
registration number, so that the respondent also has the ability to
look up the work in the Office's registration database.
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\38\ Copyright Alliance et al. Initial NPRM Comments at 12-13.
\39\ New Media Rights Initial NPRM Comments at 4.
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In response to commenters' observations that some of the technical
pleading requirements may be too stringent, the Office made changes to

[[Page 16992]]

ease the burden on claimants while keeping respondents' interests in
mind. First, the Office has removed the requirement that a claim must
include a caption.\40\ Claimants still must identify all parties as
part of the claim, but the proposed rule could be read to suggest that
a claimant must separately provide a caption, which was not the
Office's intention. Instead, eCCB will generate the caption from the
information provided by the claimant. Second, the proposed rule
required the claimant to identify an address for each respondent in
every instance at the time the claim is filed.\41\ Recognizing that
determining a respondent's address may be challenging and time-
consuming, the Office included a provision that enables claimants who
are running up against the statute of limitations to file their claims
without identifying the respondent's address. Such a claimant must
certify that the statute of limitations is likely to expire within 30
days of the date the claim is filed and provide the basis for such
belief. The claimant will, however, have to provide the respondent's
address before the claim can continue further. Third, in recognition of
the fact that claimants may not know the specific dates when the
infringing activity began or ended, the final rule requires claimants
to identify when the infringement began and, if applicable, ended, but
only to the extent known.
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\40\ 86 FR 53905.
\41\ Id.
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2. Contact Information
In the NPRM, claimants were required to provide their email
addresses and telephone numbers as part of the initial notice. The
exception to this was where the claimant was represented by legal
counsel, in which case the counsel's contact information would appear
instead.\42\ The Office noted that making additional contact
information for the claimant available to the respondent may facilitate
communication, including with respect to settlement, but it may
implicate other concerns as well, including some related to
privacy.\43\
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\42\ Id. at 53907.
\43\ Id. at 53900.
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Commenters were split on this issue. The Copyright Alliance et al.
agreed with the privacy concerns raised by the Office and believed that
making contact information available to a respondent should be optional
rather than mandatory.\44\ Verizon did not think that the Office should
be encouraging parties to communicate about settlement outside the CCB
process.\45\ AIPLA acknowledged the privacy concerns, but thought that
the benefits of facilitating communication between the parties early on
in the process outweighed any harm and noted that comparable forums
require claimants to provide some form of contact information.\46\
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\44\ Copyright Alliance et al. Initial NPRM Comments at 15.
\45\ Verizon Initial NPRM Comments at 3.
\46\ AIPLA Initial NPRM Comments at 1-2.
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The Office considered these comments and determined that claimants
must provide a phone number, email address, and mailing address as part
of the claim and initial notice, and respondents must provide a phone
number, email address, and mailing address as part of the response.
However, if a party is represented by counsel, that party's phone
number and email address will be accessible to the CCB staff but will
not be made available to the opposing party; the party's counsel's
phone number and email address will be made available instead. The
Office believes that making this contact information available will not
only facilitate settlement, but will enable parties to communicate
throughout the proceeding and exchange information through discovery.
The final rule reflects these changes.
3. Bad-Faith Conduct at Claim Initiation Stage
Several commenters requested that the Office adopt regulations to
curb abusive use of the CCB.\47\ These comments were submitted before
the Office published its NPRM on active proceedings, which includes
provisions designed to prevent and address bad-faith conduct and which
should address many of the concerns raised.\48\
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\47\ Amazon Initial NPRM Comments at 3-4; Verizon Initial NPRM
Comments at 1; Computer & Comm's Indus. Ass'n (``CCIA'') Initial
NPRM Comments at 2-3; OTW Initial NPRM Comments at 4-5.
\48\ 86 FR 69890, 69893-94 (Dec. 8, 2021).
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However, some commenters raised specific concerns about abuse at
the claim initiation stage. For example, two commenters pointed out
that the NPRM did not require the copyright owner to certify the
claim.\49\ Instead, the proposed rule required the party submitting the
claim, who may be another claimant or a claimant's authorized
representative, to certify that the information in the claim is
accurate and truthful.\50\ The commenters suggested that copyright
owners themselves be required to certify the claim.\51\ The Office
believes that requiring each copyright owner to submit a separate
certification may be burdensome and unnecessarily complicate the CCB's
streamlined electronic filing process, especially in instances where
there are multiple claimants or where a claimant is represented by
counsel or authorized representative. Instead, the Office modified the
certification rule to require certifying parties to affirm that they
have confirmed the accuracy of the information with the claimant or, in
the case of one claimant certifying a claim, with its co-claimants.
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\49\ Amazon Initial NPRM Comments at 3-4; CCIA Initial NPRM
Comments at 2-3.
\50\ 86 FR 53906.
\51\ Amazon Initial NPRM Comments at 3-4; CCIA Initial NPRM
Comments at 2-3.
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4. Other Comments
Commenters made additional suggestions with respect to claim
initiation, such as adding a reminder in the claim form to check the
libraries and archives opt-out list prior to filing, and providing a
space for claimants to challenge entities they believe to be improperly
included on the list.\52\ The Office agrees that claimants should check
the libraries and archives opt-out list before filing a claim and that
they may challenge an entity's inclusion on the list as part of their
claim. The CCB may include reminders on its fillable claim forms.
However, the Office believes that the more streamlined the claim form
is, the more user-friendly it will be, and therefore will avoid
requiring fields on the claim form that are targeted to less-than-
common circumstances. The Office intends to include reminders to check
the library and archives opt-out list where a claimant is filing a
claim against a library or archives, or an employee thereof, in the
CCB's educational materials, such as the CCB Handbook, along with
instructions for how to challenge an entity's inclusion on the list.
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\52\ Copyright Alliance et al. Initial NPRM Comments at 12.
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Similarly, one comment suggested that the claim form remind
claimants to check the designated service agent list.\53\ The Office
currently intends to include this as a requirement in eCCB's claim form
so that the initial notice may be generated based on the information in
the claim, but the Office does not believe that a revision to the
regulatory language is necessary. The CCB's educational materials will
also provide information to claimants concerning the designated service
agent directory.
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\53\ Id.
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Amazon also included recommendations for additional eCCB

[[Page 16993]]

functionality, such as including optimized search and filtering tools,
in-docket searching, and a docket alert system.\54\ The Office agrees
with these recommendations and notes that eCCB will have some of these
features. Though eCCB may not include every one of these features in
the first instance due to time constraints, the Office will continue to
explore ways to make eCCB as functional and user-friendly as possible.
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\54\ Amazon Initial NPRM Comments at 2-3.
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Commenters noted that the NPRM requests a claimant asserting a
misrepresentation claim to identify the sender and recipient of the
takedown notice and suggested that the claim form make clear that the
sender and recipient fields were not intended to identify the online
service provider.\55\ However, this appears to be a misreading of the
NPRM. The Office intended for the claimant to identify the online
service provider in these fields, as that is relevant information to
describe the misrepresentation claim.
---------------------------------------------------------------------------

\55\ Copyright Alliance et al. Initial NPRM Comments at 14.
---------------------------------------------------------------------------

Commenters also addressed the proposed rule concerning additional
matter that may accompany a claim. Some commenters believed that
documentation in support of the claim should be required, noting that
this would assist respondents in understanding the nature of the
claim.\56\ The Office appreciates these comments but has determined
that additional matter in support of a claim at this stage should
remain optional. This approach avoids imposing an unnecessary burden on
some claimants, particularly where a claim relates to works that are
large, unwieldy, or sensitive. Furthermore, as even infringement claims
can be very different from each other, it would be difficult to
accurately tell a claimant exactly what to attach at the claim stage
without addressing many potential topics. If a claimant does not
provide sufficient information to place the respondent on notice as to
the nature of the claim, a Copyright Claims Attorney will request that
the claimant provide additional detail as part of the CCB's compliance
review process.
---------------------------------------------------------------------------

\56\ Fordham Initial NPRM Comments at 1-2; OTW Initial NPRM
Comments at 7-9.
---------------------------------------------------------------------------

Additionally, the Organization for Transformative Works suggested
that claims be required to prominently state whether the work at issue
is registered, such as in boldface type or otherwise highlighted.\57\
While the claim will state whether the work at issue has been
registered, and the Office understands that the registration status of
a work may be relevant to respondents in determining whether to opt
out, the Office does not think that emphasizing this information in the
way that is suggested will meaningfully benefit a respondent who may
not understand the consequences of registration status. Indeed,
highlighting the fact that a work has not been registered may cause a
respondent who is not familiar with the registration requirements
before the CCB to conclude that the claim is deficient in some way and
that they need not take it seriously. Instead, the Office intends to
explain the consequences of a work's registration status in the CCB's
educational materials, so that potential respondents can weigh this
factor in making an informed decision as to whether to opt out or not.
---------------------------------------------------------------------------

\57\ OTW Initial NPRM Comments at 8.
---------------------------------------------------------------------------

C. Review of the Claim by Copyright Claims Attorneys

1. Compliance Review
As noted in the NPRM, the statute describes the compliance review
process in some detail and the Office proposed regulations to clarify
the scope of the review.\58\ The Office received several comments on
the compliance review process.
---------------------------------------------------------------------------

\58\ 86 FR 53899.
---------------------------------------------------------------------------

Many commenters requested that Copyright Claims Attorneys check the
libraries and archives opt-out list during the compliance review
process to ensure that those entities that have opted out do not
receive service documents from claimants.\59\ Although claimants are
encouraged to check this list before filing, Copyright Claims Attorneys
will also review the library and archives opt-out list as part of their
compliance review. The Office does not believe that this requires a
regulatory change.
---------------------------------------------------------------------------

\59\ Copyright Alliance et al. Initial NPRM Comments at 24; LCA
Initial NPRM Comments 1-2; Am. Ass'n of L. Libraries (``AALL'')
Initial NPRM Comments at 1.
---------------------------------------------------------------------------

The Office also received a comment concerning the compliance review
of pro se claims as compared to those of represented claimants. In the
NPRM, the Office stated that ``[t]he claimant will be asked to be as
detailed as possible, but, as contemplated by Congress, the CCB will
`construe liberally' any information in the claim to satisfy regulatory
requirements during claim review.'' \60\ The Organization for
Transformative Works noted that ``to construe liberally `any
information' goes beyond Congress's intent'' and that the legislative
history cited in the NPRM only instructs that pro se claims are to be
construed liberally. It argued that to construe all claims liberally
``would violate long-standing procedural principles and provide an
unwarranted, unfair advantage to claimants.'' \61\ The Office
acknowledges that the legislative history discussing liberal
construction of claims related to pro se claims \62\ and agrees that
only pro se claims will be construed liberally. Since the proposed
regulatory text says nothing about liberal construction of pleadings,
no change to the regulatory language is needed.
---------------------------------------------------------------------------

\60\ 86 FR 53898 (citing H.R. Rep. No. 116-252 at 22).
\61\ OTW Initial NPRM Comments at 11 (citing H.R. Rep. No. 116-
252, at 22).
\62\ H.R. Rep. No. 116-252, at 22.
---------------------------------------------------------------------------

2. Dismissal for Unsuitability
The Office received comments about whether secondary liability
claims should be permitted before the CCB. Some commenters asserted
that ``secondary liability cases are generally too complicated for CCB
resolution'' and ``should be categorically excluded.'' \63\ The
Copyright Alliance et al. responded that ``[s]ince the law specifically
permits claims of infringement, it would be inappropriate for the
Copyright Office to categorically exclude claims of secondary liability
which as much constitute claims of infringement as do claims of direct
liability.'' \64\ The Office agrees that it is not appropriate to
categorically exclude claims of infringement based upon particular
theories of liability, and there is nothing in the statute that
supports such exclusions. While certain claims involving secondary
liability may be unsuitable, the CCB will determine suitability on a
case-by-case basis. One of the proponents of a categorical ban
suggested, in the alternative, that the Office make clear in the CCB
Handbook that secondary liability cases are generally too complicated
for CCB resolution.\65\ At this point, however, the Office does not
believe it would be appropriate to make sweeping statements about any
claim category's suitability.
---------------------------------------------------------------------------

\63\ Amazon Initial Comments at 7; CCIA Initial Comments at 3.
\64\ Copyright Alliance et al. Reply Comments at 11-12.
\65\ Amazon Initial NPRM Comments at 7.
---------------------------------------------------------------------------

To provide additional clarity, the final rule adds specific
procedures for a party to request dismissal of a claim or counterclaim
for unsuitability. Similar to subject-matter jurisdiction issues in
federal court, a party can submit a request, at any time, that the CCB
find a claim unsuitable to be heard by the CCB, and the opposing party
will have the opportunity to respond. The CCB

[[Page 16994]]

can also raise the issue of unsuitability at any point on its own.

D. Initial and Second Notices

The NPRM set forth procedures governing the initial notice of
proceeding that a claimant must serve on a respondent along with the
claim, as well as the second notice of proceeding that the CCB will
issue to respondents who have not opted out.\66\ Specifically, the
proposed rule mandated that the initial notice describe the CCB, the
nature of CCB proceedings, basic information about the claim(s) and
claimant(s), the respondent's right to opt out, and the consequences of
opting out or proceeding. In addition, the initial notice will explain
how the respondent can find further information about copyright, the
CCB, and how to access eCCB.\67\ Similarly, the proposed rule
instructed that the second notice would mirror the initial notice in
substance and would be sent no later than 20 days after the claimant
files proof of service or a completed waiver of service (unless the
respondent already has opted out).\68\
---------------------------------------------------------------------------

\66\ 86 FR 53899-53900, 53902.
\67\ Id. at 53899-53900.
\68\ Id. at 53902.
---------------------------------------------------------------------------

Commenters emphasized the importance of avoiding overly technical
or formal language in the notices,\69\ and SFWA believed that the
notices should do more to highlight the voluntary nature of the CCB and
the respondent's ability to opt out.\70\ Some commenters suggested
including a list of commonly available defenses in the notice.\71\
Other commenters were split on whether the notice should provide
information on the differences between federal court litigation and CCB
proceedings.\72\ The Copyright Alliance et al. did not think that the
notices should provide information on how to register for eCCB, under
the theory that such information may distract the respondent during the
opt-out period.\73\ Two commenters suggested that the Office publish
the language of the notices for public comment.\74\
---------------------------------------------------------------------------

\69\ SFWA Initial NPRM Comments at 2-3; Amazon Initial NPRM
Comments at 4.
\70\ SFWA Initial NPRM Comments at 2-3.
\71\ AIPLA Initial NPRM Comments at 2.
\72\ Compare Fordham Initial NPRM Comments at 2; OTW Initial
NPRM Comments at 6-7 with Copyright Alliance et al. Reply NPRM
Comments at 13-14.
\73\ Copyright Alliance et al. Initial NPRM Comments at 16-17.
\74\ OTW Initial NPRM Comments at 6-7; SFWA Initial NPRM
Comments at 3.
---------------------------------------------------------------------------

The Office agrees that the notices should use clear and simple
language while still appearing legitimate and having the authority of a
governmental body. As reflected in both the NPRM and the final rule,
the Office intends to have both notices describe the respondent's
ability to opt out. However, the Office believes that the notices
should take an impartial approach, and should neither encourage nor
discourage opt-out elections. The Office also wishes to avoid including
unnecessary detail in the notices, which may discourage some
respondents from reading them in full. Instead, in addition to
providing the key information needed, the notices will refer
respondents to additional sources of information, where they can learn
more about available defenses and the differences between federal court
litigation and CCB proceedings, among other topics. The Office
understands the value of public input concerning the language of the
notices. Once the notices are public, the Office welcomes feedback from
potential CCB participants.
The Copyright Alliance et al. suggested that the proposed rule be
revised to make clear that the claim served with the initial notice
must be the version that was found compliant by the Copyright Claims
Attorney.\75\ Similarly, the Organization for Transformative Works
believed that the regulatory language may create the erroneous
implication that a party other than the CCB may send the second
notice,\76\ while the Copyright Alliance et al. sought to clarify
language in the preamble that incorrectly suggested that a respondent
may file a response before the CCB serves the second notice.\77\ The
Office agrees with these comments, and has revised the final rule in
line with these suggestions.
---------------------------------------------------------------------------

\75\ Copyright Alliance et al. Initial NPRM Comments at 17-18.
\76\ OTW Initial NPRM Comments at 7.
\77\ Copyright Alliance et al. Initial NPRM Comments at 18.
---------------------------------------------------------------------------

In response to suggestions that the Office do more to prevent
abusive use of the CCB before a proceeding becomes active, the Office
has included in the final rule a requirement that a claimant may not
include with the service of the initial notice, claim, and related
materials any additional substantive communications such as settlement
demands, additional descriptions of the claim or the strength of the
claim, or exhibits that were not filed as part of the claim. This rule
is designed to prevent claimants from intimidating a respondent into
participating in the proceeding or settling the claim, including by
attempting to pass off their own materials as the CCB's. However, the
rule should not prevent claimants and respondents from communicating
during the opt-out period or engaging in good-faith settlement
discussions. Such communications must occur separately from service of
the initial notice, claim, and related materials to make clear to the
respondent that they do not carry the CCB's imprimatur.
The Office also has standardized the information in both the
initial notice and the second notice, where appropriate. Further, the
proposed rule contemplated that the claimant would submit a completed
initial notice form simultaneously with the claim form, which a
Copyright Claims Attorney would review as part of compliance review and
issue with an Office seal upon approval.\78\ To make the process more
streamlined and efficient, the CCB rather than the claimant will be
responsible for creating the initial notice, which will be generated
from the compliant claim. The final rule reflects this change.
Similarly, the proposed rule's definition of ``initial notice''
erroneously suggested that initial notices would accompany
counterclaims in addition to claims, as the Copyright Alliance et al.
pointed out,\79\ and the service provisions incorrectly suggested that
counterclaims would be served like claims. These references to
counterclaims have been removed in the final rule.
---------------------------------------------------------------------------

\78\ 86 FR 53898.
\79\ Copyright Alliance et al. Initial NPRM Comments at 12.
---------------------------------------------------------------------------

E. Service

1. Reorganization of Proposed Sec. Sec. 222.5 and 222.6
In the NPRM, Sec. Sec. 222.5 (``Service; designated service
agents'') and 222.6 (``Waiver of service'') addressed service of the
initial notice of proceedings and other documents in CCB proceedings,
including a provision permitting corporations, partnerships, and other
unincorporated associations to designate agents to receive service of
the initial notice and claim. To permit such entities to designate
agents in advance of the day the CCB opens its doors, the provision
regarding designations of service agents and the Office's directory of
service agents has been broken out from this rulemaking and has already
been published as a partial final rule.\80\ The provision regarding
designated service agents has been moved to Sec. 222.6 (``Designated
service agents'') and the provision regarding waiver of service has
been moved into Sec. 222.5, which has been renamed ``Service; waiver
of service; filing.'' Section 222.5 has been reorganized and some of
the text has been revised to restate with

[[Page 16995]]

more clarity what was in the proposed rule.
---------------------------------------------------------------------------

\80\ 87 FR 12861 (Mar. 8, 2022).
---------------------------------------------------------------------------

One such clarification relates to designated service agents.
Various commenters observed that, as required by the statute, when a
corporation, partnership, or unincorporated association has designated
a service agent, a claimant must serve the initial notice and claim
upon that agent. They requested that the regulations clarify that this
is the case.\81\ The Office agrees with that interpretation of the
statute,\82\ and did not believe a regulatory provision was necessary
in light of the statutory language, so such a provision was not in the
NPRM. However, in light of the comments about possible confusion, Sec.
222.5(b)(2)(ii) now provides that when an entity has designated a
service agent, service of the initial notice and claim must be made on
that service agent.
---------------------------------------------------------------------------

\81\ See, e.g., CCIA Initial NPRM Comments at 3; Copyright
Alliance et al. Initial NPRM Comments at 19; MPA, RIAA & SIIA
Initial NPRM Comments at 3-4.
\82\ See 17 U.S.C. 1506(g)(5).
---------------------------------------------------------------------------

2. Service of Order Regarding Second Filing Fee and Electronic Filing
Registration
As discussed below, to accommodate a two-tiered filing fee system,
the final rule includes a new provision for an order, after a
proceeding has become active for all respondents, requiring the
claimant to pay the second fee and requiring all parties who have not
yet registered for eCCB to do so. Section 222.5 has been revised to
address the service of that order. Service of that order upon each
party will depend upon whether that party has already registered for
eCCB. The CCB will serve the order through eCCB for those parties who
are already registered users. For parties who have not yet registered
for eCCB, the order will be served in the same manner as the second
notice--i.e., by mail and, if the CCB has an email address for the
party, by email as well.
3. Revisions Regarding Filings and Service of Documents
The final rule includes a few minor revisions, for purposes of
efficiency and clarity, to the rules regarding service of documents
subsequent to the service of the initial notice. The final rule also
revises how an unrepresented individual can, in exceptional
circumstances, use means other than eCCB for filings and the service of
filings.
As a general rule, parties will need to use eCCB for all filings
and, once a proceeding has become active, a filing on eCCB will
constitute service on all registered eCCB users linked to a case. The
NPRM provided that unrepresented parties could avoid eCCB by certifying
that they were unable to use eCCB or that doing so would cause an undue
hardship. The NPRM then presented several alternative means of service
of filings and documents, subsequent to the service of the initial
notice, in proceedings involving a party not using eCCB. Given how
burdensome this would be on all parties, and to maximize the number of
parties using eCCB while still allowing for accessibility to CCB
proceedings for those who are unable to use it, the final rule states
that those unrepresented individuals who have exceptional circumstances
preventing them from accessing eCCB should contact the CCB, so that
alternate arrangements can be made. Determining the necessary
modifications, if any, on a case-by-case basis will give the CCB the
flexibility to formulate solutions based on the particular challenges
of the parties.\83\
---------------------------------------------------------------------------

\83\ Copyright Office regulations take a similar approach with
respect to the online filing requirement for group registrations of
unpublished works. See 37 CFR 202.4(c)(10) (``In an exceptional
case, the Copyright Office may waive the online filing requirement .
. . or may grant special relief from the deposit requirement . . .
subject to such conditions as the Associate Register and Director of
the Office of Registration Policy and Practice may impose on the
applicant.'').
---------------------------------------------------------------------------

The NPRM would have required that service of the second notice,
which is made by the CCB, be made by certified mail. The final rule has
eliminated the requirement that the second notice be sent by certified
mail, but it is likely that the Office will send such notices using
some form of U.S. Postal Service tracking to confirm that they were
actually delivered.
There was contradictory language in the NPRM regarding service of
requests for discovery and discovery responses. On one hand, the NPRM
provided that ``discovery requests and responses must not be filed
unless they are used in the proceeding, as needed, in relation to
discovery disputes or submissions on the merits.'' \84\ On the other
hand, it included ``[a] discovery document required to be served on a
party'' among the documents that must be served ``in the manner
prescribed in paragraph (d)(3),'' which stated that ``[a] document is
served under this paragraph by sending it to a registered user by
filing it with [eCCB] or sending it by other electronic means.'' \85\
However, it was not the Office's intent to require that discovery
documents be filed with the CCB. The final rule has been clarified to
provide that, unless the parties agree to another method of service,
discovery requests and responses shall be served on other parties by
email if the format and size of the documents makes such service
reasonably possible. When such service is not reasonably possible
(e.g., due to size or format issues), the parties should attempt to
agree to other arrangements. In the absence of an agreement, such
documents that cannot be served by email should be served by mail.
---------------------------------------------------------------------------

\84\ 86 FR 53909.
\85\ Id. at 53908-09.
---------------------------------------------------------------------------

4. Waiver of Personal Service
The CASE Act permits a respondent to waive personal service of
process--i.e., to agree in writing that the claimant need not go
through the formal procedures for service of the claim and initial
notice. A claimant may send a request for a waiver of personal service,
along with the initial notice and the other documents to be served with
that notice, to the respondent by mail or other reasonable means. The
respondent may return the signed waiver to the claimant, which
constitutes acceptance and proof of service.\86\
---------------------------------------------------------------------------

\86\ 17 U.S.C. 1506(g)(6).
---------------------------------------------------------------------------

Engine expressed concern that when sending requests for waivers of
service to respondents, some claimants might use misleading or
intimidating language, similar to concerns expressed by other
commenters relating to service of the initial notice and claim. Engine
suggested that each claimant be required to send to the CCB a copy of
everything that was included in the waiver package that the claimant
sends to a respondent.\87\ Such a requirement would impose
administrative burdens on the CCB staff and go well beyond requirements
for cases in federal court. The Office believes that a more efficient
solution would be to take the same approach that has been taken with
respect to service, and the final rule provides that the request for
waiver of personal service shall be prepared using a form prepared by
the CCB and shall not be accompanied by any other substantive
communications.
---------------------------------------------------------------------------

\87\ See Engine Initial NPRM Comments at 3.
---------------------------------------------------------------------------

The final rule includes additional minor revisions regarding
waivers of service. The NPRM had proposed that a waiver shall contain
the respondent's email address and telephone number. However,
consistent with revisions made to provisions governing the claim, the
initial notice, and the response to the claim, the final rule provides
when a respondent is represented, the waiver returned by a respondent
should include the email address and telephone number not of the
respondent, but rather of the respondent's counsel or

[[Page 16996]]

authorized representative. Similarly, the final rule now provides that
in cases where the respondent is represented, the waiver may be signed
by the respondent's counsel or authorized representative.
In the NPRM, the Office proposed a rule that the proof of service
must be filed within seven days of service, noting that the CCB will
issue the second notice to the respondent no later than twenty days
after receipt of a proof of service filed by the claimant.\88\ The
seven-day deadline was imposed so that the CCB would receive prompt
notice that the initial notice had been served and could issue the
second notice to the respondent within the following twenty days.
Because one purpose of the second notice is to remind the respondent of
its opt-out choice, it is vital that the second notice be served well
before the expiration of the opt-out period, which is 60 days following
service of the initial notice.\89\
---------------------------------------------------------------------------

\88\ 86 FR 53902, 53907.
\89\ See 17 U.S.C. 1506(i).
---------------------------------------------------------------------------

The CASE Act provides only that proof of service of the initial
notice must be filed not later than 90 days after the CCB notifies the
claimant to proceed with service.\90\ That provision continues to serve
as an ultimate deadline for the filing of proof of service. However, to
ensure that the second notice is delivered to the respondent well in
advance of the expiration of the opt-out period, the CCB needs to
receive the proof of service soon after service takes place and well in
advance of the opt-out date. Otherwise, the entire opt-out period could
pass before the CCB is notified that service has been completed and the
second notice would not meaningfully inform the respondent regarding
its opt-out options. In the final rule, the Office has clarified that
the seven-day deadline to advise the CCB regarding service on
respondent applies to the filing of both proof of service and waiver of
service, as applicable. As noted in the regulations, the consequence of
a claimant failing to file its proof of service or waiver of service
within the seven-day deadline is a possible extension of the
respondent's opt-out deadline, depending on the circumstances.
---------------------------------------------------------------------------

\90\ Id. at 1506(g).
---------------------------------------------------------------------------

5. Other Matters
One comment urged that the Office provide claimants with clear,
simple, plain-English instructions for effecting valid service,
including a requirement that claimants search the online database of
service agents and step-by-step instructions on how to serve such
agents.\91\ The Office intends to provide such information and
instruction in other materials made available to the public, including
the CCB Handbook.\92\
---------------------------------------------------------------------------

\91\ MPA, RIAA & SIIA Initial NPRM Comments at 4.
\92\ See 86 FR 69904 (proposed Sec. 220.3).
---------------------------------------------------------------------------

Other commenters expressed concern that the proposed rule for
documents served electronically states, ``service is complete upon
filing or sending, respectively, but is not effective if the filer or
sender learns that it did not reach the person to be served.'' \93\ The
commenters observed that it is unclear what ``learns'' means and the
uncertainty could enable intended recipients to make unsubstantiated
claims that they did not receive documents that had been transmitted to
them.\94\ They proposed that the language be revised to include a
proviso that the intended recipient must timely notify the sender that
the document was not received.\95\ The Office notes that the language
in question is taken almost verbatim from Rule 5(b)(2)(E) of the
Federal Rules of Civil Procedure.\96\ The Federal Rule has no
requirement that the intended recipient must notify the sender that the
document was not received, and it is evident that unless a party was
expecting to receive a particular document at a particular time, the
intended recipient would have no way of knowing that the other party
had attempted, but failed to accomplish, delivery of the document. The
Office sees no reason to depart from the rule that has long worked for
the federal courts.
---------------------------------------------------------------------------

\93\ Copyright Alliance et al. Initial NPRM Comments at 19
(citing 86 FR 53908-09 (proposed Sec. 222.5(d)(3)(ii))).
\94\ See id.
\95\ See id. at 19-20.
\96\ Fed. R. Civ. P. 5(b)(2)(E) (``A paper is served under this
rule by . . . sending it to a registered user by filing it with the
court's electronic-filing system or sending it by other electronic
means that the person consented to in writing--in either of which
events service is complete upon filing or sending, but is not
effective if the filer or sender learns that it did not reach the
person to be served.'').
---------------------------------------------------------------------------

The Office has extended the provision that service is not effective
if the sender learns that it did not reach the party to be served to
cover service by mail as well as email. There does not appear to be any
basis for treating these methods separately because the purpose of the
provision is to recognize that service is not effective when it was not
completed. Further, if the sender of the material has actual notice
that service was not completed, such as if it is returned from the U.S.
Post Office because it was not delivered, the sender should have the
same responsibility to make sure it is correctly served as with service
by email.
Professor Eric Goldman acknowledged that the statutory provisions
and proposed rule ``incorporate[ ] existing service rules that apply to
judicial proceedings,'' but argued that the CCB should go further and
``rigorously scrutinize service'' and should ``validate that the right
defendant was identified and that service was made to that person.''
\97\ While implicitly acknowledging that this was not an issue created
by or peculiar to the CCB (Professor Goldman noted that ``service rules
can be gamed in non-CCB contexts''), he suggested that the CCB should
``invest some resources in identifying--and punishing--service abuse.''
\98\ The Copyright Alliance et al. responded by noting that the
possibility of misidentifying a defendant or a defendant's address ``is
a possibility that also exists in federal court, and it is unreasonable
to expect that the CCB could somehow ensure that the claimant does not
misidentify the respondent or the respondent's address.'' \99\ The
Office agrees that the CCB cannot act as a guarantor that a claimant
has served process on the correct respondent at the correct address,
which is an issue that faces all tribunals regardless of size or
jurisdiction. Moreover, the Office notes that the CCB has additional
notices and safeguards against defaults that potentially reduce the
effects of service abuse or mistake.
---------------------------------------------------------------------------

\97\ Eric Goldman Initial NPRM Comments at 1.
\98\ Eric Goldman Initial NPRM Comments at 1.
\99\ Copyright Alliance et al. Reply NPRM Comments at 15.
---------------------------------------------------------------------------

F. Opt-Out Procedures

The NPRM also set forth the procedures a respondent must follow to
opt out of a proceeding. Under the proposed rule, a respondent may opt
out by using either a paper or electronic form that requires provision
of the docket number for the claim, a verification code, certain
identifying information, and a signed affirmation.\100\ The proposed
rule required that each respondent independently fill out the opt-out
form. It also specified that an opt-out would be effective against
duplicate claims, but not unrelated claims between the same
parties.\101\
---------------------------------------------------------------------------

\100\ 86 FR 53902.
\101\ Id. at 53902-03.
---------------------------------------------------------------------------

Commenters emphasized the importance of making the opt-out process
simple and accessible.\102\ CCIA questioned whether it was necessary to

[[Page 16997]]

require respondents using the electronic opt-out form to include a
verification code when this code was not required for respondents using
the paper form,\103\ while others supported the use of the code as a
security measure.\104\ The Office believes that the verification code
imposes a minimal burden while adding a necessary protective measure to
ensure that only the respondent is able to opt out. The Office also
agrees that electronic and paper opt-out forms should not be treated
differently in this respect and has modified the rule to require the
verification code, which will be provided along with the initial and
second notices, for paper opt-out forms as well. The Office notes that
eCCB is set up to make opting out easy, and its use is highly
encouraged. Respondents will be able to find the appropriate claim on
eCCB, identify themselves, and enter the opt-out code without needing
to register. They will then be sent a confirmation for their records.
---------------------------------------------------------------------------

\102\ Engine Initial NPRM Comments at 4; CCIA Initial NPRM
Comments at 4-5.
\103\ CCIA Initial NPRM Comments at 4-5.
\104\ Copyright Alliance et al. Reply NPRM Comments at 18.
---------------------------------------------------------------------------

The NPRM requested comments on whether the rule should give
respondents the ability to rescind an opt-out.\105\ Commenters
generally opposed such a provision, arguing that the Office lacked
statutory authority to permit the rescission of opt-outs,\106\ that
claimants could use the availability of this mechanism to harass
respondents,\107\ that such a mechanism would impose an administrative
burden on the CCB,\108\ and that rescission may go against a claimant's
wishes or raise constitutional concerns where a federal court's
jurisdiction has been invoked.\109\ Commenters suggested that if such a
mechanism was introduced, the decision to rescind an opt-out should be
accompanied by conditions, such as a requiring the claimant's
consent,\110\ the reimbursement of the claimant's filing fee,\111\ or
other financial penalties.\112\
---------------------------------------------------------------------------

\105\ 86 FR 53903.
\106\ Copyright Alliance et al. Initial NPRM Comments at 19-20.
\107\ Verizon Initial NPRM Comments at 3.
\108\ AIPLA Initial NPRM Comments at 2.
\109\ Id.
\110\ Id.
\111\ Fordham Initial NPRM Comments at 3.
\112\ Lisa Corson Initial NPRM Comments at 1.
---------------------------------------------------------------------------

After consideration of these comments, the Office has decided not
to allow the rescission of opt-outs by respondents, which would result
in the unilateral reinitiation of a CCB proceeding. At the same time,
the Office expects that there will be scenarios where, after opting
out, respondents change their minds and determine that they would
prefer to proceed before the CCB. In those circumstances, the
respondent could contact the claimant with an offer to submit the
parties' dispute to the CCB. The claimant would have a choice of
whether to accept the offer. Accordingly, the Office is modifying the
proposed rule to permit the same claim to be refiled following an opt-
out where both parties have consented to the refiling.
In the NPRM, the Office proposed a rule intended to prevent a
claimant from refiling a claim against a respondent who has already
opted out with respect to that claim. Recognizing that such a rule
should apply not only to verbatim repetitions of the previous claim but
also to restatements of the same claim with different language, the
Office proposed a rule that would protect a respondent who has opted
out against a future claim ``covering the same acts and the same
theories of recovery.'' \113\ Commenters raised concerns with the
standard proposed in the NPRM. One comment suggested that the proposed
rule adopted the wrong standard and that the correct standard is found
in the statutory text relating to allowable counterclaims.\114\
However, this rule is intended to address the repeated filing of a
claim against a respondent that has previously opted out, not the scope
of permissible counterclaims, which the statute limits to ensure that
the CCB operates ``efficiently and within the scope of its expertise.''
\115\ Another comment sought clarification as to how the rule would be
applied in particular factual scenarios.\116\ The Office understands
that such examples may be helpful and expects to offer some in the
Handbook. After considering the comments, the language in the final
rule has been modified to make clear that the prohibition on refiled
claims extends not only to identical or verbatim claims previously
filed by the claimant from which the respondent has already opted out,
but also to claims involving the same parties that cover the same acts
and theories of recovery in substance, notwithstanding minor
variations.
---------------------------------------------------------------------------

\113\ 86 FR 53902-03, 53912.
\114\ MPA, RIAA & SIIA Initial NPRM Comments at 8-9 (citing 17
U.S.C. 1504(c)(4)(B)) (The comment suggested a rule focusing on
whether the claim arises out of the same transaction or occurrence
that is the subject matter of the original claim.).
\115\ See Copyright Small Claims at 105.
\116\ SFWA Initial NPRM Comments at 3-4.
---------------------------------------------------------------------------

The Office received divided comments on whether and in what
circumstances a respondent may seek an extension of the opt-out period.
The Organization for Transformative Works suggested that respondents be
permitted to extend the opt-out period when they need additional
information to understand the nature of the claim or more time to seek
the assistance of counsel,\117\ while other commenters disagreed,
arguing that this would result in delays in CCB proceedings, which are
intended to be efficient.\118\ The Office recognizes that there may be
limited situations where a respondent needs more than 60 days to
evaluate a more complex claim or to seek counsel, and the claimant may
prefer that the opt-out period be extended rather than the respondent
immediately opting out. The Office notes, however, that the statute
gives the CCB the authority to extend the opt-out period in exceptional
circumstances and upon written notice to the claimant when the
extension is in the interests of justice.\119\ The Office has made this
explicit in the final rule and has included a provision stating that
requests for an extension of the opt-out period may be made by the
respondent individually or the parties jointly. The CCB Handbook will
encourage respondents to seek the claimant's consent, as joint requests
to extend the opt-out period can be more easily granted.
---------------------------------------------------------------------------

\117\ OTW Initial NPRM Comments at 9, 11.
\118\ Copyright Alliance et al. Reply NPRM Comments at 18-19.
\119\ 17 U.S.C. 1506(i).
---------------------------------------------------------------------------

Commenters also urged the Office to consider publishing a list of
respondents who have opted out, arguing that doing so would be helpful
to potential claimants' decision-making process.\120\ The Office is not
creating such a list at this time, but will consider doing so in the
future without the need for a regulation. The Office notes that this
list would only be helpful if it includes a denominator representing
the total number of claims filed against a particular respondent and
not merely a numerator representing the number of times that the
respondent has opted out. The Office further notes that eCCB will in
any event contain information about claimants and respondents and will
be public and searchable by parties.
---------------------------------------------------------------------------

\120\ Copyright Alliance et al. Initial NPRM Comments at 23;
Amazon Initial NPRM Comments at 6.
---------------------------------------------------------------------------

Additionally, Verizon suggested that the rule make clear that the
opt-outs of respondents who were not properly served be treated as
effective.\121\ The Office agrees and has included such a provision in
the final rule.
---------------------------------------------------------------------------

\121\ Verizon Initial NPRM Comments at 2.
---------------------------------------------------------------------------

The Office has also made additional procedural changes to
streamline the opt-out process. First, the final rule permits a
respondent's representative to complete the opt-out form, provided that
they certify that they were directed and authorized by the respondent
to do

[[Page 16998]]

so. The Office has included this provision to enable represented
respondents to opt out more easily, especially those who cannot
themselves use eCCB but have an attorney who can. The Office does not
believe there is a compelling reason to allow a party to be represented
for other aspects of a CCB proceeding, but not the opt out, and this
rule makes sense for the same reasons that the CCB will allow
authorized representatives for the claimant to prepare and certify the
claim. Respondents will still have to provide their representatives
with the proper opt-out code to enable the representative to opt out on
their behalf. Second, the final rule requires a respondent to include
certain contact information on opt-out forms so that the CCB may send
the respondent or its representative confirmation of the opt-out. When
opting out electronically, the respondent must include an email
address. When opting out using a paper form, the respondent must
provide either an email address or a mailing address. Third, the final
rule makes clear that electronic opt-out forms must be submitted by
11:59 p.m. Eastern Time on the final day of the opt-out period, rather
than at midnight.

G. Order Regarding Second Filing Fee and Electronic Filing Registration

As discussed above, the addition of a two-tiered fee system in the
final rule required additional processes concerning payment of the
second fee. Under the final rule, once a proceeding becomes active
(i.e., all respondents have been served and the time to opt-out for
each respondent has expired without all of them opting out), the CCB
will issue an order to all parties requiring that the claimant pay the
second filing fee within 14 days and that any parties who have not yet
registered for the eCCB do so (unless they are a pro se individual and
have contacted the CCB and the CCB has determined that exceptional
circumstances exist such that the party does not have to use eCCB)
within 14 days. After the claimant pays the second filing fee and the
14-day period elapses, the CCB will issue a scheduling order. If any
party has not yet registered for eCCB by that time, the CCB will serve
that party with the scheduling order outside of eCCB, along with a
notice reminding the party to register for eCCB or contact the CCB if
they are unable to use it. The notice will also state that a failure to
comply may ultimately result in a determination of the party's default
or failure to prosecute. Under the final rule, if a claimant fails to
submit the second payment within the 14-day period, the CCB will issue
a notice to that claimant, reminding them to submit the second payment
within the next 14 days. If the claimant still fails to submit the
second payment, the CCB will dismiss the proceeding without prejudice,
unless doing so would not be in the interests of justice.

H. Response

In the NPRM, the Office proposed procedures for the respondent to
file a response to a claim.\122\ As with the claim, responses generally
must be filed using an electronic fillable form provided through
eCCB.\123\ In the response, the respondent will provide identifying
information and details concerning the dispute, along with a
certification that the information provided in the response is accurate
and truthful to the best of the certifying party's knowledge.\124\
Under the proposed rule, respondents to infringement claims were
permitted to identify relevant defenses, and given the opportunity to
attach documentation related to their response.\125\ However, the
proposed rule did not provide for identification of defenses to claims
of misrepresentation or for declarations of noninfringement.
---------------------------------------------------------------------------

\122\ 86 FR 53909.
\123\ Id. at 53903.
\124\ Id. at 53910.
\125\ Id. at 53903.
---------------------------------------------------------------------------

The Office requested comments concerning whether a list of common
defenses should be provided to respondents and, if so, how such a list
should be provided.\126\ Commenters generally favored including a list
of common defenses,\127\ but they were divided on how and what details
should be provided. Engine favored presenting defenses in the form of a
checklist,\128\ but others believed that this may encourage respondents
to raise frivolous or baseless defenses and favored presenting relevant
defenses in the form of a list without additional detail.\129\ Other
commenters agreed that the Office should present a list of common
defenses for each type of claim, but should make clear that the
applicability of defenses will depend on the facts at issue.\130\
Finally, two commenters agreed that the Office should provide a list of
common defenses, but thought that each defense should be accompanied by
a brief explanation along with links to resources.\131\
---------------------------------------------------------------------------

\126\ Id.
\127\ Copyright Alliance et al. Initial NPRM Comments at 20-21;
Engine Initial NPRM Comments at 4; MPA, RIAA & SIIA Initial NPRM
Comments at 10; Fordham Initial Comments at 3-4. But see Lisa Corson
Initial NPRM Comments at 1.
\128\ Engine Initial NPRM Comments at 4.
\129\ Copyright Alliance et al. Initial NPRM Comments at 20-21;
Copyright Alliance et al. Reply NPRM Comments at 15.
\130\ MPA, RIAA & SIIA Initial NPRM Comments at 10.
\131\ Fordham Initial NPRM Comments at 3-4; Anonymous Reply NPRM
Comments at 4-5;.
---------------------------------------------------------------------------

As a preliminary matter, the Office agrees that respondents for
each type of claim--rather than only infringement claims--should be
permitted an opportunity to present defenses beyond just disputing the
claim, and it has revised the final rule accordingly. Additionally, the
Office intends to include a list of common defenses in the response
form. These defenses generally will take the form of a checklist, but
respondents will be required to provide the basis for each defense they
select as part of the response form. This will minimize the burden on
respondents, who may not have much familiarity with the law, while
discouraging the assertion of meritless defenses. The Office also
intends to include additional information concerning common defenses as
part of the CCB's educational materials and to have links within eCCB
so that respondents can easily access those materials.
Commenters also suggested that the response form alert respondents
to the availability of pro bono assistance from legal clinics and how
to contact them.\132\ The Office intends to include references to pro
bono assistance in the initial notice and throughout the CCB's
educational materials.
---------------------------------------------------------------------------

\132\ Copyright Alliance et al. Initial NPRM Comments at 21.
---------------------------------------------------------------------------

As discussed above, the final rule also requires a respondent to
provide an address, phone number, email address, and, if represented by
counsel or an authorized representative, the address, phone number, and
email address of the counsel or representative. Where a respondent is
represented, the respondent's phone number and email address will not
be made available to the opposing party, but only to CCB staff.
Additionally, as is the case with the claim form, when the response is
completed by someone other than the respondent, the final rule requires
that the certifying party has confirmed the accuracy of the information
with the respondent.

I. Counterclaims and Response to Counterclaims

The CASE Act provides that a respondent in a CCB proceeding may
assert certain related counterclaims against the claimant.\133\ An
allowable counterclaim must either ``arise[ ] under

[[Page 16999]]

section 106 or section 512(f) [of the Copyright Act] and out of the
same transaction or occurrence that is the subject of a claim of
infringement, . . . a claim of noninfringement, . . . or a claim of
misrepresentation,'' \134\ or ``arise [ ] under an agreement pertaining
to the same transaction or occurrence that is the subject of a claim of
infringement . . . if the agreement could affect the relief awarded to
the claimant.'' \135\ Counterclaims must also fall within the same
limits on damages that apply to claims.\136\ Any asserted counterclaim
is subject to the same compliance review applicable to an initial claim
\137\ and is subject to dismissal for unsuitability.\138\
---------------------------------------------------------------------------

\133\ 17 U.S.C. 1504(c).
\134\ Id. at 1504(c)(4)(B)(i).
\135\ Id. at 1504(c)(4)(B)(ii).
\136\ Id. at 1504(c)(4)(A), 1504(e)(1).
\137\ Id. at 1506(f)(2).
\138\ Id. at 1506(f)(3).
---------------------------------------------------------------------------

1. No Opting Out of Counterclaims
Though the CASE Act provides a detailed procedure for respondents
to opt out of using the CCB to resolve claims,\139\ it does not set
forth a corresponding opt-out procedure for counterclaims.\140\ Under
the statute, a claimant can elect to voluntarily dismiss a claim,
respondent, or proceeding by written request at any time ``before a
respondent files a response to the claim,'' \141\ but once a response
with any counterclaim is filed, the statute does not provide a means
for the claimant to withdraw from, or opt out of, having the CCB decide
the counterclaim.
---------------------------------------------------------------------------

\139\ Id. at 1506(i).
\140\ See 86 FR 53904.
\141\ 17 U.S.C. 1506(q)(1).
---------------------------------------------------------------------------

In the NPRM, the Office invited comments on the issue, including
whether allowing a claimant to opt out of having the CCB decide a
counterclaim is permitted under the statute.\142\ As the Office
previously observed, ``[a]s the claimant has already voluntarily
submitted to, and in fact requested, the CCB to take up the general
issue at hand, having an opt-out procedure for counterclaims
potentially could constitute an inefficient use of time and
resources.'' \143\ The Office also noted that, as the CASE Act permits
only counterclaims that both arise from the same transaction or
occurrence as a claim and that implicate copyright or an agreement
affecting the relief to be awarded to the claimant, ``there arguably
should be no surprise when a counterclaim is asserted. For example, a
claimant who brings an action before the CCB seeking a declaration of
noninfringement of a work could reasonably expect a counterclaim for
infringement of that same work.'' \144\
---------------------------------------------------------------------------

\142\ 86 FR 53904.
\143\ Id.
\144\ Id.
---------------------------------------------------------------------------

Commenters were generally in agreement with the proposed rule.
Several commenters opposed any provision that would allow claimants to
opt out of counterclaims raised against them.\145\ Some questioned the
legality of such a provision.\146\ Commenters raised equitable concerns
that ``no party should be able to pursue a claim in CCB while
simultaneously opting out of litigating a counterclaim against it''
\147\ and that once a claimant voluntarily elects to bring a claim,
``they elect to either proceed before the CCB or not to; they do not
get to pick and choose which eligible [counter]claims they would like
to be subject to before the CCB.'' \148\
---------------------------------------------------------------------------

\145\ AIPLA Initial NPRM Comments at 2; Copyright Alliance et
al. Initial NPRM Comments at 21-22.
\146\ AIPLA Initial NPRM Comments at 2; Copyright Alliance et
al. Initial NPRM Comments at 21-22.
\147\ MPA, RIAA & SIIA Initial NPRM Comments at 8.
\148\ Copyright Alliance et al. Initial NPRM Comments at 22.
This comment further suggested that the claim form should
prominently inform claimants ``that by bringing a claim before the
CCB, they voluntarily consent to the process, including any
counterclaims permitted[.]'' Id.
---------------------------------------------------------------------------

Most of the comments that addressed the issue opined that, even if
permissible, ``an opt-out mechanism . . . for claimants who receive a
counterclaim . . . would [not] be sound policy.'' \149\ One commenting
party concurred that a claimant should not be entitled to opt out of a
counterclaim ``unless that original claimant drops its claim, thus
resulting in dismissal of the entire CCB case.'' \150\
---------------------------------------------------------------------------

\149\ AIPLA Initial NPRM Comments at 2.
\150\ MPA, RIAA & SIIA Initial NPRM Comments at 7.
---------------------------------------------------------------------------

Two commenters expressed the opposing view.\151\ An authors'
organization commented that not allowing a claimant to opt-out of
counterclaims would make ``claimants unfairly bear[ ] the burden of
paying the filing fee, initiating the process, and assuming the risk of
being subjected to a counterclaim,'' and give respondents ``a distinct
advantage by being able to force the case through the CCB process.''
\152\ Another anonymous commenter raised similar concerns that this
would impose an unbalanced burden on claimants and that respondents may
``attempt to find a way to abuse free counterclaims.'' \153\
---------------------------------------------------------------------------

\151\ See Anonymous Reply NPRM Comments at 2; SFWA Initial NPRM
Comments at 4.
\152\ SFWA Initial NPRM Comments at 4.
\153\ Anonymous Reply NPRM Comments at 2.
---------------------------------------------------------------------------

The Office agrees with the majority of comments that a claimant
should not be entitled to opt out of a counterclaim. The NPRM expressed
doubt that the CASE Act permits a counterclaim respondent to opt out,
and no commenters made an argument that it does. Moreover, a
respondent's right to opt out of a CCB claim is inherent in the
voluntary nature of the forum, but a claimant before the CCB has
already affirmatively opted in to the proceeding and could reasonably
anticipate a respondent to file a counterclaim. Any claimant, knowing
that the respondent may opt out of the proceeding or make a
counterclaim, can assess those risks before filing the claim. But if a
claimant facing a counterclaim could opt out of that counterclaim while
maintaining their own claim, this would be unfair to respondents. The
Office is persuaded that it would be inequitable and inefficient to
permit a claimant to opt out of a counterclaim, even if such a
regulation were permitted.
2. Other Provisions Related to Counterclaims
The CASE Act does not specify when a counterclaim must be filed.
Under the proposed rule, a counterclaim must be asserted at the same
time the response is filed unless the CCB finds good cause for allowing
a later counterclaim.\154\ The only comments on this topic ``agree[d]
with this approach.'' \155\ The Office finds that this approach will
enable ``an efficient, orderly procedure that provides parties
sufficient notice as to the issues involved in the proceeding.'' \156\
---------------------------------------------------------------------------

\154\ 86 FR 53903.
\155\ Copyright Alliance et al. Initial NPRM Comments at 21.
\156\ 86 FR 53903.
---------------------------------------------------------------------------

The NPRM proposed that ``the information required to assert a
counterclaim should closely mirror the information required to assert a
claim.'' \157\ However, commenters noted a discrepancy between those
requirements--while claimants would have been required to state ``[t]he
facts leading the claimant to believe the work has been infringed,''
counterclaimants would have been required to state ``[t]he nature of
the alleged infringement.'' \158\ The Copyright Alliance et al.
suggested revising the latter provision to be consistent with the
former.\159\ The Office agrees and adopts the suggestion in the
interest of consistency. The Office does not intend that the pleading
standards and requirements for

[[Page 17000]]

claimants and counterclaimants should differ, and accordingly, the
Office has further revised the wording proposed in the NPRM regarding
the content of counterclaims to conform it to the wording regarding the
content of claims.
---------------------------------------------------------------------------

\157\ Id.
\158\ Copyright Alliance et al. Initial NPRM Comments at 21
(citing 86 FR 53903, 53910).
\159\ Id.
---------------------------------------------------------------------------

J. Clarifying Language and Technical Corrections

Commenters provided suggestions on clarifying language and
correcting typographical errors in the NPRM. The Office has adjusted
the final rule accordingly.\160\
---------------------------------------------------------------------------

\160\ See, e.g., Copyright Alliance et al. Initial NPRM Comments
at 14-15, 17, 20-21; New Media Rights Initial NPRM Comments at 5-6;
OTW Initial NPRM Comments at 11; SFWA Initial NPRM Comments at 2;
Sergey Vernyuk Initial NPRM Comments at 1.
---------------------------------------------------------------------------

List of Subjects

37 CFR Part 201

37 CFR Part 220

Claims, Copyright, General.

37 CFR Part 222

Claims, Copyright.

37 CFR Part 223

Claims, Copyright.

37 CFR Part 224

Claims, Copyright.

Final Regulations

For the reasons stated in the preamble, the U.S. Copyright Office
amends chapter II, subchapters A and B, of title 37 Code of Federal
Regulations 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:
0
a. Revise the section heading;
0
b. Redesignate table 1 to paragraph (d) and table 1 to paragraph (e) as
table 2 to paragraph (d) and table 3 to paragraph (e), respectively;
and
0
c. Add paragraph (g).

The revision and addition 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) Copyright Claims Board fees. The Copyright Office has
established the following fees for specific services related to the
Copyright Claims Board:

Table 4 to Paragraph (g)
------------------------------------------------------------------------
Fees
Copyright claims board fees ($)
------------------------------------------------------------------------
(1) Initiate a proceeding before the Copyright Claims Board. .......
(i) First payment.......................................... 40
(ii) Second payment........................................ 60
(2) [Reserved]................................................. .......
------------------------------------------------------------------------

Subchapter B--Copyright Claims Board and Procedures

0
3. Under the authority of 17 U.S.C. 702, 1510, the heading for
subchapter B is revised to read as set forth above.

0
4. Add part 220 to read as follows:

PART 220--GENERAL PROVISIONS

Sec.
220.1 Definitions.
220.2 [Reserved]

Authority: 17 U.S.C. 702, 1510.

Sec. 220.1 Definitions.

For purposes of this subchapter:
(a) An authorized representative is a person, other than legal
counsel, who is authorized under this subchapter to represent a party
before the Copyright Claims Board (Board).
(b) An initial notice means the notice described in 17 U.S.C.
1506(g) that is served on a respondent in a Board proceeding along with
the claim.
(c) A second notice means the notice of a proceeding sent by the
Board as described in 17 U.S.C. 1506(h).

Sec. 220.2 [Reserved]

PART 222--PROCEEDINGS

0
5. The authority citation for part 222 continues to read as follows:

Authority: 17 U.S.C. 702, 1510.

0
6. Add Sec. Sec. 222.2 through 222.5 to read as follows:
Sec.
* * * * *
222.2 Initiating a proceeding; the claim.
222.3 Initial notice.
222.4 Second notice.
222.5 Service; waiver of service; filing.
* * * * *

Sec. 222.2 Initiating a proceeding; the claim.

(a) Initiating a proceeding. A claimant may initiate a proceeding
before the Copyright Claims Board (Board) by submitting the following--
(1) A completed claim form provided by the Board; and
(2) The first payment of the filing fee set forth in 37 CFR
201.3(g).
(b) Electronic filing requirement. Except as provided otherwise in
Sec. 222.5(f), to submit the claim and the first payment of the filing
fee, the claimant must be a registered user of the Board's electronic
filing system (eCCB).
(c) Contents of the claim. The claim shall include:
(1) Identification of the claim(s) asserted against the
respondent(s), which shall consist of at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted
work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive
right in a copyrighted work provided under 17 U.S.C. 106; or
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in
connection with--
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled
material;
(2) The name(s) and mailing address(es) of the claimant(s);
(3) For any claimant that is represented by legal counsel or an
authorized representative, the name(s), mailing address(es), email
address(es), and telephone number(s) of such claimant's legal counsel
or authorized representative;
(4) For any claimant that is not represented by legal counsel or an
authorized representative, the email address and telephone number of
such claimant;
(5) The name(s) of the respondent(s);
(6) The mailing address(es) of the respondent(s), unless the
claimant(s) certifies that a respondent's address is unknown at the
time to the claimant and that the claimant has a good-faith belief that
the statute of limitations for the claim is likely to expire within 30
days from the date that the claim is submitted, and describes the basis
for that good-faith belief;
(7) For an infringement claim asserted under paragraph (c)(1)(i) of
this section--
(i) That the claimant is the legal or beneficial owner of rights in
a work protected by copyright and, if there are any co-owners, their
names;
(ii) The following information for each work at issue in the claim:
(A) The title of the work;
(B) The author(s) of the work;
(C) If a copyright registration has issued for the work, the
registration number and effective date of registration;
(D) If an application for copyright registration has been submitted
but a registration has not yet issued, the service request number (SR
number) and application date; and
(E) The work of authorship category, as set forth in 17 U.S.C. 102,
for each

[[Page 17001]]

work at issue, or, if the claimant is unable to determine the
applicable category, a brief description of the nature of the work; and
(iii) A description of the facts relating to the alleged
infringement, including, to the extent known to the claimant:
(A) Which exclusive rights provided under 17 U.S.C. 106 are at
issue;
(B) When the alleged infringement began;
(C) The name(s) of all person(s) or organization(s) alleged to have
participated in the infringing activity;
(D) The facts leading the claimant to believe the work has been
infringed;
(E) Whether the alleged infringement has continued through the date
the claim was filed, or, if it has not, when the alleged infringement
ceased;
(F) Where the alleged act(s) of infringement occurred (e.g., a
physical or online location); and
(G) If the claim of infringement is asserted against an online
service provider as defined in 17 U.S.C. 512(k)(1)(B) for infringement
by reason of the storage of or referral or linking to infringing
material that may be subject to the limitations on liability set forth
in 17 U.S.C. 512(b), (c), or (d), an affirmance that the claimant has
previously notified the service provider of the claimed infringement in
accordance with 17 U.S.C. 512(b)(2)(E), (c)(3), or (d)(3), as
applicable, and that the service provider failed to remove or disable
access to the material expeditiously upon the provision of such notice;
(8) For a declaration of noninfringement claim asserted under
paragraph (c)(1)(ii) of this section--
(i) The name(s) of the person(s) or organization(s) asserting that
the claimant has infringed a copyright;
(ii) The following information for each work alleged to have been
infringed, if that information is known to the claimant:
(A) The title;
(B) If a copyright registration has issued for the work, the
registration number and effective date of registration;
(C) If an application for copyright has been submitted, but a
registration has not yet issued, the service request number (SR number)
and registration application date; and
(D) The work of authorship category, as set forth in 17 U.S.C. 102,
or, if the claimant is unable to determine which category is
applicable, a brief description of the nature of the work;
(iii) A brief description of the claimant's activity at issue in
the claim, including, to the extent known to the claimant:
(A) Any exclusive rights provided under 17 U.S.C. 106 that may be
implicated;
(B) When the activities at issue began and, if applicable, ended;
(C) Whether the activities at issue have continued through the date
the claim was filed;
(D) The name(s) of all person(s) or organization(s) who
participated in the allegedly infringing activity; and
(E) Where the activities at issue occurred (e.g., a physical or
online location);
(iv) A brief statement describing the reasons why the claimant
believes that no infringement occurred, including any relevant history
or agreements between the parties and whether claimant currently
believes any exceptions and limitations as set forth in 17 U.S.C. 107
through 122 are implicated; and
(v) A brief statement describing the reasons why the claimant
believes that there is an actual controversy concerning the requested
declaration;
(9) For a misrepresentation claim asserted under paragraph
(c)(1)(iii) of this section--
(i) The sender of the notification of claimed infringement;
(ii) The recipient of the notification of claimed infringement;
(iii) The date the notification of claimed infringement was sent,
if known;
(iv) A description of the notification;
(v) If a counter notification was sent in response to the
notification--
(A) The sender of the counter notification;
(B) The recipient of the counter notification;
(C) The date the counter notification was sent, if known; and
(D) A description of the counter notification;
(vi) The words in the notification or counter notification that
allegedly constituted a misrepresentation; and
(vii) An explanation of the alleged misrepresentation;
(10) For infringement claims and misrepresentation claims, a
statement describing the harm suffered by the claimant(s) as a result
of the alleged activity and the relief sought by the claimant(s). Such
statement may, but is not required to, include an estimate of any
monetary relief sought;
(11) Whether the claimant requests that the proceeding be conducted
as a ``smaller claim'' under 17 U.S.C. 1506(z), and would accept a
limitation on total damages of $5,000 if the request is granted; and
(12) A certification under penalty of perjury by the claimant, the
claimant's legal counsel, or the claimant's authorized representative
that the information provided in the claim is accurate and truthful to
the best of the certifying person's knowledge and, if the certifying
person is not the claimant, that the certifying person has confirmed
the accuracy of the information with the claimant. The certification
shall include the typed signature of the certifying person.
(d) Additional matter. The claimant may also include, as
attachments to or files accompanying the claim, any material the
claimant believes plays a significant role in setting forth the facts
of the claim, such as:
(1) A copy of the copyright registration certificate for a work
that is the subject of the proceeding;
(2) A copy of the copyrighted work alleged to be infringed. This
copy may also be accompanied by additional information, such as a
hyperlink or screenshot, that shows where the allegedly infringed work
has been posted;
(3) A copy of the allegedly infringing material. This copy may also
be accompanied by additional information, such as a hyperlink or
screenshot, that shows any allegedly infringing activity;
(4) For a misrepresentation claim, a copy of the notification of
claimed infringement that is alleged to contain the misrepresentation;
(5) For a misrepresentation claim, a copy of the counter
notification that is alleged to contain the misrepresentation;
(6) For a declaration of noninfringement claim, a copy of the
demand letter(s) or other correspondence that created the dispute; and
(7) Any other exhibits that play a significant role in setting
forth the facts of the claim.
(e) Additional information required during claim submission. In
connection with the submission of the claim the claimant shall also
provide--
(1) For any claimant that is represented by legal counsel or an
authorized representative, the email address and telephone number of
that claimant. Such information shall not be part of the claim; and
(2) Any further information that the Board may determine should be
provided.
(f) Respondent address requirement for claim submission. Any claim
for which a respondent's mailing address has not been provided pursuant
to paragraph (c)(6) of this section shall not be found compliant under
37 CFR 224.1 unless the claimant provides the address of the respondent
to the Board within 60 days of the date the claim was

[[Page 17002]]

filed under paragraph (a) of this section. If the claimant does not
provide a respondent address within that period of time, the Board may
dismiss the claim without prejudice.

Sec. 222.3 Initial notice.

(a) Content of initial notice. The Board shall prepare an initial
notice for the claimant(s) to serve on each respondent that shall--
(1) Include on the first page a caption that provides the parties'
names and includes the docket number assigned by the Board;
(2) Be addressed to the respondent;
(3) Provide the name(s) and mailing address(es) of the claimant(s);
(4) For any claimant that is represented by legal counsel or an
authorized representative, provide the name(s), mailing address(es),
email address(es), and telephone number(s) of such legal counsel or
authorized representative;
(5) For any claimant that is not represented by legal counsel or an
authorized representative, provide the email address and telephone
number of that claimant;
(6) Advise the respondent that a legal proceeding that could affect
the respondent's legal rights has been commenced by the claimant(s) in
the Board against the respondent;
(7) Identify the nature of the claims asserted against the
respondent, which shall consist of at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted
work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive
right in a copyrighted work provided under 17 U.S.C. 106; and
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in
connection with--
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled
material;
(8) Describe the Board, including that it is a three-member
tribunal within the Copyright Office that has been established by law
to resolve certain copyright disputes in which the total monetary
recovery does not exceed $30,000;
(9) State that the respondent has the right to opt out of
participating in the proceeding, and that the consequence of opting out
is that the proceeding shall be dismissed without prejudice and the
claimant shall have to determine whether to file a lawsuit in a Federal
district court;
(10) State that if the respondent does not opt out within 60 days
from the day the respondent received the initial notice, the proceeding
shall go forward and the respondent shall--
(i) Lose the opportunity to have the dispute decided by the Federal
court system, created under Article III of the Constitution of the
United States; and
(ii) Waive the right to have a trial by jury regarding the dispute;
(11) State that the notice is in regard to an official Government
proceeding and provide information on how to access the docket of the
proceeding in eCCB;
(12) Provide information on how to become a registered user of
eCCB;
(13) State that parties may represent themselves in the proceeding,
but note that a party may wish to consult with legal counsel or with a
law school clinic, and provide reference to pro bono resources (i.e.,
legal services provided without charge for those services) which may be
available and are listed on the Board's website;
(14) Indicate where other pertinent information concerning
proceedings before the Board may be found on the Board's website;
(15) Provide direction on how a respondent may opt out of the
proceeding, either online or by mail; and
(16) Include any additional information that the Board may
determine should be included.
(b) Service of initial notice. Following notification from the
Board pursuant to 17 U.S.C. 1506(f)(1)(A) to proceed with service of
the claim, the claimant shall cause the initial notice, the claim, the
opt-out notification form, and any other documents required by the
direction of the Board to be served with the initial notice and the
claim, upon each respondent as prescribed in Sec. 222.5(b) and 17
U.S.C. 1506(g). The copy of the claim that is served shall be of the
claim that was found to be compliant under 37 CFR 224.1, and is, at the
time of service, available on eCCB. The initial notice, the claim, the
opt-out notification form, and any other document required by the Board
shall not be accompanied by any additional substantive communications
or materials, including without limitation settlement demands,
correspondence purporting to describe the claim or the strength of the
claim, or exhibits not filed with the claim, when served by the
claimant(s).

Sec. 222.4 Second notice.

(a) Content of second notice. The second notice to the respondent
shall--
(1) Include on the first page a caption that provides the parties'
names and the docket number;
(2) Be addressed to the respondent, using the address that appeared
in the initial notice or an updated address, if an updated address was
provided to the Board prior to service of the second notice;
(3) Include the contact information for the claimant(s) and
claimant's legal counsel or authorized representative, for any claimant
represented by legal counsel or an authorized representative;
(4) Advise the respondent that a proceeding that could affect the
respondent's legal rights has been commenced by the claimant(s) in the
Board against the respondent;
(5) Identify the nature of the claims asserted against the
respondent, which shall consist of at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted
work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive
right in a copyrighted work provided under 17 U.S.C. 106; and
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in
connection with--
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled
material;
(6) Describe the Board, including that it is a three-member
tribunal within the Copyright Office that has been established by law
to resolve certain copyright disputes in which the total monetary
recovery does not exceed $30,000;
(7) State that the respondent has the right to opt out of
participating in the proceeding, and that the consequence of opting out
is that the proceeding shall be dismissed and the claimant shall have
to determine whether to file a lawsuit in a Federal district court;
(8) State that if the respondent does not opt out within 60 days
from the day the respondent received the initial notice, the
consequences are that the proceeding shall go forward and the
respondent shall--
(i) Lose the opportunity to have the dispute decided by the Federal
court system, created under Article III of the Constitution of the
United States; and
(ii) Waive the right to have a trial by jury regarding the dispute;
(9) Provide information on how to access the docket of the
proceeding in eCCB and how to become a registered user of that system;
(10) State that the notice is in regard to an official Government
proceeding and provide information on how to access the docket of the
proceeding eCCB;
(11) Provide information on how to become a registered user of
eCCB;

[[Page 17003]]

(12) State that parties may represent themselves in the proceeding,
but note that a party may wish to consult with legal counsel or with a
law school clinic, and provide reference to pro bono resources (i.e.,
legal services provided without charge for those services) which may be
available and are listed on the Board's website;
(13) Indicate where other pertinent information concerning
proceedings before the Board may be found on the Board's website;
(14) Provide direction on how a respondent may opt out of the
proceeding, either online or by mail;
(15) Be accompanied by the documents described in Sec. 222.3(b);
and
(16) Include any additional information or documents at the Board's
direction.
(b) Timing of second notice. The Board shall issue the second
notice in the manner prescribed by Sec. 222.5(d)(2) no later than 20
days after the claimant files proof of service or a completed waiver of
service with the Board, unless the respondent has already submitted an
opt-out notification pursuant to 37 CFR 223.1.

Sec. 222.5 Service; waiver of service; filing.

(a) In general. Unless specified otherwise, all filings made by a
party in CCB proceedings must be filed in eCCB. Except as provided
elsewhere in this section, documents are served on a party who is a
registered user of the eCCB and filed with the Board by submitting them
to eCCB. Service is complete upon filing, but is not effective if the
filer learns that it did not reach the person to be served.
(b) Service of initial notice, claim, and related documents--(1)
Timing of service. A claimant may proceed with service of a claim only
after the claim is reviewed by a Copyright Claims Attorney and the
claimant is notified that the claim is compliant under 37 CFR 224.1.
(2) Service methods. (i) Service of the initial notice, the claim,
and other documents required by this part or the Board to be served
with the initial notice and claim shall be made as provided under 17
U.S.C. 1506(g), as supplemented by this section.
(ii) If a corporation, partnership, or unincorporated association
has designated a service agent under 17 U.S.C. 1506(g)(5)(B) and Sec.
222.6, service must be made by certified mail or by any other method
that the entity specifies in its designation under Sec. 222.6 that it
will accept.
(3) Filing of proof of service. (i) No later than the earlier of
seven calendar days after service of the initial notice and all
accompanying documents under paragraph (b) of this section and 90 days
after receiving notification of compliance, a claimant shall file a
completed proof of service form through eCCB. The proof of service form
shall be located on the Board's website.
(ii) The claimant's failure to comply with the filing deadline in
paragraph (b)(3)(i) of this section may constitute exceptional
circumstances justifying an extension of the 60-day period in which a
respondent may deliver an opt-out notification to the Board under 17
U.S.C. 1506(i).
(c) Waiver of personal service--(1) Delivery of request for waiver
of service. A claimant may request that a respondent waive personal
service as provided by 17 U.S.C. 1506(g)(6) by delivering, via first
class mail, the following to the respondent:
(i) A completed waiver of personal service form provided on the
Board's website;
(ii) The documents described in Sec. 222.3, including the initial
notice and the claim; and
(iii) An envelope, with postage prepaid and addressed to the
claimant requesting the waiver or, for a claimant represented by legal
counsel or an authorized representative, to that claimant's legal
counsel or authorized representative.
(2) Content of waiver of service request. The request for waiver of
service shall be prepared using a form provided by the Board that
shall--
(i) Bear the name of the Board;
(ii) Include on the first page and waiver page the caption
identifying the parties and the docket number;
(iii) Be addressed to the respondent;
(iv) Contain the date of the request;
(v) Notify the respondent that a legal proceeding has been
commenced by the claimant(s) before the Board against the respondent;
(vi) Advise that the form is not a summons or official notice from
the Board;
(vii) Request that respondent waive formal service of summons by
signing the enclosed waiver;
(viii) State that a waiver of personal service shall not constitute
a waiver of the right to opt out of the proceeding;
(ix) Describe the effect of agreeing or declining to waive service;
(x) Include a waiver of personal service form provided by the
Board, containing a clear statement that waiving service does not
affect the respondent's ability to opt out of the proceeding and that,
if signed and returned by the respondent, will include--
(A) An affirmation that the respondent is waiving service;
(B) An affirmation that the respondent understands that the
respondent may opt out of the proceeding within 60 days of receiving
the request;
(C) The name and mailing address of the respondent;
(D) For a respondent that is represented by legal counsel or an
authorized representative, the name(s), mailing address(es), email
address(es), and telephone number(s) of such legal counsel or
authorized representative;
(E) For a respondent that is not represented by legal counsel or an
authorized representative, the email address and telephone number of
that respondent; and
(F) The typed, printed, or handwritten signature of the respondent
or, if the respondent is represented by legal counsel or an authorized
representative, the typed, printed, or handwritten signature of the
respondent's legal counsel or authorized representative. If the
signature is handwritten, it shall be accompanied by a typed or printed
name; and
(xi) Not be accompanied by any other substantive communications.
(3) Completing waiver of service. The respondent may complete
waiver of service by returning the signed waiver form in the postage
prepaid envelope to claimant by mail or, if the claimant also provides
an email address to which the waiver of personal service form may be
returned, by means of an email to which a copy of the signed form is
attached. Waiving service does not affect a respondent's ability to opt
out of a proceeding.
(4) Timing of completing waiver. The respondent has 30 days from
the date on which the request was sent to return the waiver form.
(5) Filing of waiver. Where the respondent has completed the waiver
form, the claimant must submit the completed waiver form to the Board
no later than the earlier of seven calendar days after the date the
claimant received the signed waiver form from the respondent or 90 days
after receiving notification of compliance.
(d) Service by the Copyright Claims Board--(1) In general. Except
as otherwise provided in this paragraph (d), the Board shall serve one
copy of all orders, notices, decisions, rulings on motions, and similar
documents issued by the Board upon each party through eCCB.
(2) Service of second notice. (i) The Board shall serve the second
notice required under 17 U.S.C. 1506(h) and Sec. 222.4, along with the
documents described in Sec. 222.3(b), by sending them by mail to the
respondent at the address provided--

[[Page 17004]]

(A) In the designated service agent directory, if the respondent is
a corporation, partnership, or unincorporated association that has
designated a service agent; and, if not,
(B) By the claimant in the claim or, in a subsequent communication
correcting the address.
(ii) The Board shall also serve the second notice by email if an
email address for the respondent has been provided in the designated
service agent directory or by the claimant.
(3) Service of order regarding second filing fee and electronic
filing registration on claimants. The Board shall serve the orders set
forth in Sec. 222.7--
(i) On any respondents that have not registered for eCCB in the
manner set forth in paragraph (d)(2) of this section; and
(ii) On any claimants that have not registered for eCCB by sending
such documents--
(A) By mail at the address provided for the claimant in the claim
and by email at the email address provided for the claimant in the
claim; or
(B) If the claimant is represented by legal counsel or an
authorized representative, by mail at the address provided for such
counsel or authorized representative in the claim and by email at the
email address provided for such legal counsel or authorized
representative in the claim.
(e) Service of discovery requests, responses, and responsive
documents--(1) Service of discovery requests, responses, and responsive
documents. Except as provided in paragraph (f) of this section, unless
the parties agree in writing to other arrangements, discovery requests
and responses shall be served by email and documents or other evidence
responsive to discovery requests shall be served by email where the
size and format of the documents or evidence make such service
reasonably possible. If such documents or other evidence cannot
reasonably be served by email, the parties shall confer and agree to
other arrangements. Should the parties be unable to agree to other
arrangements, such documents or other evidence shall be served by mail.
Service is complete upon sending, but service is not effective if the
sender learns that it did not reach the party to be served.
(i) If a party is represented by legal counsel or an authorized
representative, service under this paragraph must be made on the legal
counsel or authorized representative at that legal counsel's or
authorized representative's email address, or mailing address provided
in the claim, response, or notice of appearance, unless the Board
orders service on the party.
(ii) If a party is not represented, service under this paragraph
(e)(1) must be made on the party at the email address or mailing
address provided by that party in the claim or response.
(2) Filing generally prohibited. Unless the Board orders otherwise,
discovery requests and responses should not be filed with the Board
unless a party relies on the request or response as part of another
filing in the proceeding.
(f) Waiver of electronic filing and service requirements. In
exceptional circumstances, an individual not represented by legal
counsel or an authorized representative may request that the Board
waive the electronic filing and service requirements set forth in this
subchapter. Whether such a waiver is granted is at the Board's
discretion. If a waiver is granted, the Board shall instruct the
parties as to the filing and service requirements for that proceeding
based on consideration of the circumstances of the proceeding and the
parties.

0
7. Add Sec. Sec. 222.7 through 222.10 to read as follows:

Sec.
* * * * *
222.7 Order regarding second filing fee and electronic filing
registration.
222.8 Response.
222.9 Counterclaim.
222.10 Response to counterclaim.

Sec. 222.7 Order regarding second filing fee and electronic filing
registration.

(a) Issuance of order. Once a proceeding has become active with
respect to all respondents who have been served and have not opted out
within the 60-day period set forth in 17 U.S.C. 1506(i), the Board
shall issue an order to all parties in the proceeding providing that
within 14 days of the order--
(1) The claimant must submit the second payment of the filing fee
set forth in 37 CFR 201.3(g) through eCCB; and
(2) All claimant(s) and respondent(s) must register for eCCB unless
they have been granted a waiver pursuant to Sec. 222.5(f).
(b) Receipt of second payment from claimant--(1) Confirmation of
active proceeding. Upon receipt of the second payment of the filing fee
set forth in 37 CFR 201.3(g) and after completion of the 14-day period
specified in the Board's order, the Board shall issue a scheduling
order through eCCB.
(2) Notice to respondent. If any claimant or respondent has not
registered for eCCB, the scheduling order shall be accompanied by a
notice to those parties that unless they have been granted a waiver
pursuant to Sec. 222.5(f), they must register for eCCB and that a
failure to do so within a time set by the Board may result in default
or failure to prosecute. Such scheduling order and notice shall be
served on the respondent according to the procedures set forth in Sec.
222.5(d)(2).
(c) Failure of claimant to submit second payment. If the
claimant(s) fails to submit the second payment of the filing fee set
forth in 37 CFR 201.3(g) within 14 days from the date of the Board's
order, the Board shall issue another notice to the claimant(s), which
shall provide that the proceeding shall be dismissed without prejudice
unless the claimant(s) submits the second payment of the filing fee
within 14 days. If the claimant(s) fails to submit the second payment
of the filing fee within 14 days of the issuance of that notice, the
Board shall dismiss the proceeding without prejudice, unless the Board
finds that the proceeding should not be dismissed in the interests of
justice.

Sec. 222.8 Response.

(a) Filing a response. Following receipt of the scheduling order in
an active proceeding, each respondent shall file a response through
eCCB using the response form provided by the Board. Except for
respondents who are represented by the same legal counsel or authorized
representative, each respondent shall submit a separate response.
(b) Content of response. The response shall include--
(1) The name and mailing address of the respondent(s) and, for any
respondents represented by legal counsel or an authorized
representative, of such respondent's legal counsel or authorized
representative;
(2) The phone number and email address of--
(i) The respondent, if the respondent is not represented by legal
counsel or an authorized representative; or
(ii) The legal counsel or other authorized representative for the
respondent, if the respondent is represented by legal counsel or an
authorized representative;
(3) A short statement, if applicable, disputing any facts asserted
in the claim;
(4) For infringement claims brought under 17 U.S.C. 1504(c)(1), a
statement describing in detail the dispute regarding the alleged
infringement, including reasons why the respondent contends that it has
not infringed the claimant's copyright, and any additional defenses,
including whether any exceptions and limitations as set forth

[[Page 17005]]

in 17 U.S.C. 107 through 122 are implicated;
(5) For declaration of noninfringement claims brought under 17
U.S.C. 1504(c)(2), a statement describing in detail the dispute
regarding the alleged infringement, including reasons why the
respondent contends that its copyright has been infringed by claimant,
and any additional defenses the respondent may have to the claim;
(6) For misrepresentation claims brought under 17 U.S.C.
1504(c)(3), a statement describing in detail the dispute regarding the
alleged misrepresentation, including an explanation of why the
respondent believes the identified words do not constitute
misrepresentation, and any additional defenses the respondent may have
to the claim;
(7) Any counterclaims pursuant to Sec. 222.9; and
(8) A certification under penalty of perjury by the respondent or
the respondent's legal counsel or authorized representative that the
information provided in the response is accurate and truthful to the
best of the certifying person's knowledge and, if the certifying person
is not the respondent, that the certifying person has confirmed the
accuracy of the information with the respondent. The certification
shall include the typed signature of the certifying person.
(c) Additional matter. The respondent may also include, as
attachments to or files that accompany the response, any material the
respondent believes plays a significant role in setting forth the facts
of the claim, such as:
(1) A copy of the copyright registration certificate for a work
that is the subject of the proceeding;
(2) A copy of the allegedly infringed work. This copy may also be
accompanied by additional information, such as a hyperlink or
screenshot, that shows where the allegedly infringed work has been
posted;
(3) A copy of the allegedly infringing material. This copy may also
be accompanied by additional information, such as a hyperlink or
screenshot, that shows any allegedly infringing activity;
(4) A copy of the notification of claimed infringement that is
alleged to contain the misrepresentation;
(5) A copy of the counter notification that is alleged to contain
the misrepresentation; and
(6) Any other exhibits that play a significant role in setting
forth the facts of the response.
(d) Additional information required during response submission. In
connection with the submission of the response the respondent shall
also provide--
(1) For any respondent that is represented by legal counsel or an
authorized representative, the email address and telephone number of
that respondent. Such information shall not be part of the response;
and
(2) Any further information that the Board may determine should be
provided.
(e) Timing of response. The respondent has 30 days from the
issuance of the scheduling order to submit a response. If the
respondent waived personal service, the respondent will have an
additional 30 days to submit the response.
(f) Failure to file response. A failure to file a response within
the required timeframe may constitute a default under 17 U.S.C.
1506(u).

Sec. 222.9 Counterclaim.

(a) Asserting a counterclaim. Any party can assert a counterclaim
falling under the jurisdiction of the Board that also--
(1) Arises out of the same transaction or occurrence as the initial
claim; or
(2) Arises under an agreement pertaining to the same transaction or
occurrence that is subject to an initial claim of infringement, if the
agreement could affect the relief awarded to the claimant.
(b) Electronic filing requirement. A party may submit a
counterclaim through eCCB using the counterclaim form provided by the
Board.
(c) Content of counterclaim. The counterclaim shall include--
(1) The name of the party or parties against whom the counterclaim
is asserted;
(2) An identification of the counterclaim, which shall consist of
at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted
work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive
right in a copyrighted work provided under 17 U.S.C. 106; or
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in
connection with--
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled
material;
(3) For an infringement counterclaim asserted under paragraph
(c)(2)(i) of this section--
(i) That the counterclaimant is the legal or beneficial owner of
rights in a work protected by copyright and, if there are any co-
owners, their names;
(ii) The following information for each work at issue in the
counterclaim:
(A) The title of the work;
(B) The author(s) of the work;
(C) If a copyright registration has issued for the work, the
registration number and effective date of registration;
(D) If an application for copyright has been submitted but a
registration has not yet issued, the service request number (SR number)
and registration application date; and
(E) The work of authorship category, as set forth in 17 U.S.C. 102,
for each work at issue, or, if the counterclaimant is unable to
determine the applicable category, a brief description of the nature of
the work;
(iii) A description of the facts relating to the alleged
infringement, including, to the extent known to the counterclaimant:
(A) Which exclusive rights provided under 17 U.S.C. 106 are at
issue;
(B) When the alleged infringement began;
(C) The name(s) of all person(s) or organization(s) alleged to have
participated in the infringing activity;
(D) The facts leading the counterclaimant to believe the work has
been infringed;
(E) Whether the alleged infringement has continued through the date
the claim was filed, or, if it has not, when the alleged infringement
ceased;
(F) Where the alleged act(s) of infringement occurred; and
(G) If the claim of infringement is asserted against an online
service provider as defined in 17 U.S.C. 512(k)(1)(B) for infringement
by reason of the storage of or referral or linking to infringing
material that may be subject to the limitations on liability set forth
in 17 U.S.C. 512(b), (c), or (d), an affirmance that the
counterclaimant has previously notified the service provider of the
claimed infringement in accordance with 17 U.S.C. 512(b)(2)(E), (c)(3),
or (d)(3), as applicable, and that the service provider failed to
remove or disable access to the material expeditiously upon the
provision of such notice;
(4) For a declaration of noninfringement counterclaim asserted
under paragraph (c)(2)(ii) of this section--
(i) The name(s) of the person(s) or organization(s) asserting that
the counterclaimant has infringed a copyright;
(ii) The following information for each work alleged to have been
infringed, if that information is known to the counterclaimant:
(A) The title;
(B) If a copyright registration has issued for the work, the
registration

[[Page 17006]]

number and effective date of registration;
(C) If an application for copyright has been submitted, but a
registration has not yet issued, the service request number (SR number)
and registration application date; and
(D) The work of authorship category, as set forth in 17 U.S.C. 102,
or, if the counterclaimant is unable to determine which category is
applicable, a brief description of the nature of the work;
(iii) A brief description of the activity at issue in the claim,
including, to the extent known to the counterclaimant:
(A) Any exclusive rights provided under 17 U.S.C. 106 that may be
implicated;
(B) When the activities at issue began and, if applicable, ended;
(C) Whether the activities at issue have continued through the date
the claim was filed;
(D) The name(s) of all person(s) or organization(s) who
participated in the allegedly infringing activity; and
(E) Where the activities at issue occurred;
(iv) A brief statement describing the reasons why the
counterclaimant believes that no infringement occurred, including any
relevant history or agreements between the parties and whether
counterclaimant currently believes any exceptions and limitations as
set forth in 17 U.S.C. 107 through 122 are implicated; and
(v) A brief statement describing the reasons why the
counterclaimant believes that there is an actual controversy concerning
the requested declaration;
(5) For a misrepresentation counterclaim asserted under paragraph
(c)(2)(iii) of this section--
(i) The sender of the notification of claimed infringement;
(ii) The recipient of the notification of claimed infringement;
(iii) The date the notification of claimed infringement was sent,
if known;
(iv) A description of the notification;
(v) If a counter notification was sent in response to the
notification--
(A) The sender of the counter notification;
(B) The recipient of the counter notification;
(C) The date the counter notification was sent, if known; and
(D) A description of the counter notification;
(vi) The words in the notification or counter notification that
allegedly constituted a misrepresentation; and
(vii) An explanation of the alleged misrepresentation;
(6) For infringement claims and misrepresentation claims, a
statement describing the harm suffered by the claimant(s) as a result
of the alleged activity and the relief sought by the claimant(s). Such
statement may, but is not required to, include an estimate of any
monetary relief sought;
(7) A statement describing the relationship between the initial
claim and the counterclaim; and
(8) A certification under penalty of perjury by the counterclaimant
or the counterclaimant's legal counsel or authorized representative
that the information provided in the counterclaim is accurate and
truthful to the best of the certifying person's knowledge and, if the
certifying person is not the counterclaimant, that the certifying
person has confirmed the accuracy of the information with the
counterclaimant. The certification shall include the typed signature of
the certifying person.
(d) Additional matter. The counterclaimant may also include, as
attachments to or files that accompany the counterclaim, any material
the counterclaimant believes plays a significant role in setting forth
the facts of the claim, such as:
(1) A copy of the copyright registration certificate for a work
that is the subject of the proceeding;
(2) A copy of the allegedly infringed work. This copy may also be
accompanied by additional information, such as a hyperlink or
screenshot, that shows where the allegedly infringed work has been
posted;
(3) A copy of the allegedly infringing material. This copy may also
be accompanied by additional information, such as a hyperlink or
screenshot, that shows any allegedly infringing activity;
(4) A copy of the notification of claimed infringement that is
alleged to contain the misrepresentation;
(5) A copy of the counter notification that is alleged to contain
the misrepresentation; and
(6) Any other exhibits that play a significant role in setting
forth the facts of the counterclaim.
(e) Timing of counterclaim. A counterclaim must be served and filed
with the respondent's response unless the Board, for good cause,
permits a counterclaim to be asserted at a subsequent time.

Sec. 222.10 Response to counterclaim.

(a) Filing a response to a counterclaim. Within 30 days following
the Board's issuance of notification that a counterclaim is compliant
under 37 CFR 224.1, a claimant against whom a counterclaim has been
asserted (counterclaim respondent) shall file a response to the
counterclaim through eCCB using the response form provided by the
Board.
(b) Content of response to a counterclaim. The response to a
counterclaim shall include--
(1) The name, mailing address, phone number, and email address of
each counterclaim respondent filing the response;
(2) A short statement, if applicable, disputing any facts asserted
in the counterclaim;
(3) For counterclaims brought under 17 U.S.C. 1504(c)(1), a
statement describing in detail the dispute regarding the alleged
infringement, including any defenses as well as any reason why the
counterclaim respondent believes there was no infringement of
copyright, including any exceptions and limitations as set forth in 17
U.S.C. 107 through 122 that are implicated;
(4) For counterclaims brought under 17 U.S.C. 1504(c)(2), a
statement describing in detail the dispute regarding the alleged
infringement, including reasons why the counterclaim respondent
believes there is infringement of copyright;
(5) For counterclaims brought under 17 U.S.C. 1504(c)(3), a
statement describing in detail the dispute regarding the alleged
misrepresentation and an explanation of why the counterclaim respondent
believes the identified words do not constitute misrepresentation; and
(6) A certification under penalty of perjury by the claimant, the
claimant's legal counsel, or the claimant's authorized representative
that the information provided in the response to the counterclaim is
accurate and truthful to the best of the certifying person's knowledge
and, if the certifying person is not the counterclaim respondent, that
the certifying person has confirmed the accuracy of the information
with the counterclaim respondent. The certification shall include the
typed signature of the certifying person.
(c) Additional matter. The counterclaim respondent may also
include, as attachments to or files that accompany the counterclaim
response, any material the counterclaim respondent believes play a
significant role in setting forth the facts of the claim, such as:
(1) A copy of the copyright registration certificate for a work
that is the subject of the proceeding;
(2) A copy of the allegedly infringed work. This copy may also be
accompanied by additional information, such as a hyperlink or
screenshot, that

[[Page 17007]]

shows where the allegedly infringed work has been posted;
(3) A copy of the allegedly infringing material. This copy may also
be accompanied by additional information, such as a hyperlink or
screenshot, that shows any allegedly infringing activity;
(4) A copy of the notification of claimed infringement that is
alleged to contain the misrepresentation;
(5) A copy of the counter notification that is alleged to contain
the misrepresentation; and
(6) Any other exhibits that play a significant role in setting
forth the facts of the counterclaim response.
(d) Failure to file counterclaim response. A failure to file a
counterclaim response within the timeframe required by this section may
constitute a default under 17 U.S.C. 1506(u), and the Board may begin
default proceedings.

PART 223--OPT-OUT PROVISIONS

0
8. The authority citation for part 223 continues to read as follows:

Authority: 17 U.S.C. 702, 1510.

0
9. Add Sec. 223.1 to read as follows:

Sec. 223.1 Respondent's opt-out.

(a) Effect of opt-out on particular proceeding. A respondent may
opt out of a proceeding before the Copyright Claims Board (Board)
pursuant to 17 U.S.C. 1506(i) following the procedures set forth in
this section. A respondent's opt-out shall result in the dismissal of
the claim without prejudice.
(b) Content of opt-out notification. The respondent's opt-out
notification shall include--
(1) The docket number assigned by the Board and contained in either
the initial notice served by the claimant or the second notice;
(2) The respondent's name;
(3) The respondent's mailing address;
(4) An affirmation that the respondent shall not appear before the
Board with respect to the claim served by the claimant;
(5) A certification under penalty of perjury that the individual
completing the notification is the respondent identified in the claim
served by the claimant or is the legal counsel or authorized
representative of the respondent identified in the claim and has been
directed and authorized by the respondent to opt out of the particular
proceeding; and
(6) The typed, printed, or handwritten signature of the respondent
or its legal counsel or authorized representative, and, if the
signature is handwritten, a typed or printed name.
(c) Process of opting out. Upon being served with a notice and
claim, a respondent may complete the opt-out process by--
(1) Completing and submitting the Board's online opt-out
notification form available through the Board's electronic filing
system (eCCB) as identified in the initial notice and second notice and
providing an email address for confirmation; or
(2) Completing and submitting the paper opt-out notification form
included with the initial notice and second notice, providing a mailing
address or email address to receive confirmation, and delivering it to
the Board, either by--
(i) First-class mail, or other class of mail that is at least as
expeditious, postage prepaid; or
(ii) A third party commercial carrier, that guarantees delivery no
later than two days from the day of deposit with the service.
(3) An online or paper opt-out notification is not complete unless
the confirmation code, provided with both the initial notice and second
notice, is included in the submission.
(d) Effect of improper service. If a respondent is improperly
served under 37 CFR 222.5 and completes the opt-out process described
in paragraph (c) of this section, a respondent's timely opt-out will
still be effective and result in the dismissal of the claim without
prejudice.
(e) Timing of opt out. The respondent has 60 days from the date of
service or waiver of service to provide notice of its opt-out election.
When the last day of that period falls on a weekend or a Federal
holiday, the ending date shall be extended to the next Federal work
day.
(1) When opting out via the online form under paragraph (c)(1) of
this section, the respondent's opt-out notification must be submitted
by 11:59 p.m. Eastern Time on the last day of the opt-out period.
(2) When opting out under paragraph (c)(2) of this section, the
respondent's opt-out notification must be postmarked, dispatched by a
commercial carrier, courier, or messenger, or hand-delivered to the
Office no later than the 60-day deadline.
(f) Extension of opt-out period. The Board may extend the 60-day
period to opt out in exceptional circumstances and in the interests of
justice and upon written notice to the claimant. Either a respondent
individually or the parties jointly may contact the Board through a
Copyright Claims Attorney to request an extension of the opt-out
period.
(g) Multiple respondents. In claims involving multiple respondents,
each respondent who elects to opt out must separately complete the opt-
out process.
(h) Confirmation of opt-out. When a respondent has completed the
opt-out process, the Board shall notify all parties to the proceeding.
(i) Effect of opt out on refiled claims. If the claimant attempts
to refile a claim against the same respondent(s), covering in substance
the same acts and the same theories of recovery after the respondent's
initial opt-out notification, the Board shall apply the prior opt-out
election and dismiss the claim unless the claimant can demonstrate that
the respondent affirmatively has agreed to resubmission of the parties'
dispute to the Board for resolution.
(j) Effect of opt-out on unrelated claims. The respondent's opt-out
for a particular claim shall not be construed as an opt-out for claims
involving different acts or different theories of recovery.

0
10. Add part 224 to read as follows:

PART 224--REVIEW OF CLAIMS BY OFFICERS AND ATTORNEYS

Sec.
224.1 Compliance review.
224.2 Dismissal for unsuitability.

Authority: 17 U.S.C. 702, 1510.

Sec. 224.1 Compliance review.

(a) Compliance review by Copyright Claims Attorney. Upon the filing
of a claim or counterclaim with the Copyright Claims Board (Board), a
Copyright Claims Attorney shall review the claim for compliance with 17
U.S.C. chapter 15 and this subchapter, as provided in this section.
(b) Substance of compliance review. The Copyright Claims Attorney
shall review the claim or counterclaim for compliance with all legal
and formal requirements for a claim or counterclaim before the Board,
including:
(1) The provisions set forth under this subchapter;
(2) The requirements set forth in 17 U.S.C. 1504(c), (d), and
(e)(1); and
(3) Whether the allegations in the claim or the counterclaim
clearly do not state a claim upon which relief can be granted.
(c) Issuing finding. Upon completing a compliance review, the
Copyright Claims Attorney shall notify the party that submitted the
document in accordance with 37 CFR 222.5 and 17 U.S.C. 1506(f) by--
(1) Informing the claimant or counterclaimant that the claim or
counterclaim has been found to comply

[[Page 17008]]

with the applicable statutory and regulatory requirements and
instructing the claimant to proceed with service under 37 CFR 222.5 and
17 U.S.C. 1506(g); or
(2) Informing the claimant or counterclaimant that the claim or
counterclaim, respectively, does not comply with the applicable
statutory and regulatory requirements and identifying the noncompliant
issue(s) according to the procedure set forth in 17 U.S.C. 1506(f).
(d) Dismissal without prejudice. If the original claim and an
amended claim were previously reviewed by the Copyright Claims Attorney
and were found not to comply with the applicable statutory and
regulatory requirements, and if the Copyright Claims Attorney
concludes, following the submission of a second amended claim, that the
claim still does not comply with the applicable statutory and
regulatory requirements, the claim shall be referred to a Copyright
Claims Officer who shall confirm whether the second amended claim
complies with the applicable statutory and regulatory requirements. If
the Copyright Claims Officer concurs with the conclusion of the
Copyright Claims Attorney, the proceeding shall be dismissed without
prejudice.
(e) Clearance is not endorsement. The finding that a claim or
counterclaim complies with the applicable statutory and regulatory
requirements does not constitute a determination as to the validity of
the allegations asserted or other statements made in the claim or
counterclaim.
(f) No factual investigations. For the purpose of the compliance
review, the Copyright Claims Attorney shall accept the facts stated in
the claim or counterclaim materials, unless they are clearly
contradicted by information provided elsewhere in the materials or in
the Board's records. The Copyright Claims Attorney shall not conduct an
investigation or make findings of fact; however, the Copyright Claims
Attorney may take administrative notice of facts or matters that are
well known to the general public, and may use that knowledge during
review of the claim or counterclaim.

Sec. 224.2 Dismissal for unsuitability.

(a) Review by Copyright Claims Attorney. During the compliance
review under Sec. 224.1, the Copyright Claims Attorney shall review
the claim or counterclaim for unsuitability on grounds set forth in 17
U.S.C. 1506(f)(3). If the Copyright Claims Attorney concludes that the
claim should be dismissed for unsuitability, the Copyright Claims
Attorney shall recommend to the Board that the Board dismiss the claim
and shall set forth the basis for that conclusion.
(b) Dismissal by the Board for unsuitability. (1) If, upon
recommendation by a Copyright Claims Attorney as set forth in paragraph
(a) of this section or at any other time in the proceeding upon the
request of a party or on its own initiative, the Board determines that
a claim or counterclaim should be dismissed for unsuitability under 17
U.S.C. 1506(f)(3), the Board shall issue an order stating its intention
to dismiss the claim without prejudice.
(2) Within 30 days following issuance of an order under paragraph
(b) of this section, the claimant or counterclaimant may request that
the Board reconsider its determination. The respondent or counterclaim
respondent may file a response within 30 days following service of the
claimant's request.
(3) Following the expiration of the time for the respondent or
counterclaim respondent to submit a response, the Board shall render
its final decision whether to dismiss the claim for unsuitability.
(c) Request by a party to dismiss a claim or counterclaim for
unsuitability. At any time, any party who believes that a claim or
counterclaim is unsuitable for determination by the Board may file a
request providing the basis for such belief. An opposing party may file
a response within 14 days of the date of service of the request,
setting forth the basis for such opposition to the request. There will
be no reply papers related to a request to dismiss for unsuitability
unless ordered by the Board in its discretion.

Dated: March 16, 2022.
Shira Perlmutter,
Register of Copyrights and Director of the U.S. Copyright Office.
Approved by:
Carla D. Hayden,
Librarian of Congress.
[FR Doc. 2022-06264 Filed 3-24-22; 8:45 am]
BILLING CODE 1410-30-P

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