Rule2022-10466
Copyright Claims Board: Active Proceedings and Evidence
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Published
May 17, 2022
Effective
June 16, 2022
Issuing agencies
Library of CongressCopyright Office, Library of Congress
Abstract
The U.S. Copyright Office is issuing a final rule establishing procedures governing active proceedings before the Copyright Claims Board and post-determination procedures. The final rule provides requirements regarding procedural practice, scheduling, conferences, discovery, written testimony, hearings, settlement, default and failure to prosecute, records, post-determination procedures, conduct of parties and limits on the number of claims that can be brought. The final rule also describes the procedures for "smaller claims" and solicits public comments on these regulations.
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[Federal Register Volume 87, Number 95 (Tuesday, May 17, 2022)]
[Rules and Regulations]
[Pages 30060-30092]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-10466]
[[Page 30059]]
Vol. 87
Tuesday,
No. 95
May 17, 2022
Part III
Library of Congress
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U.S. Copyright Office
37 CFR Parts 201, 220, et al.
Copyright Claims Board: Active Proceedings and Evidence; Final Rule
Federal Register / Vol. 87 , No. 95 / Tuesday, May 17, 2022 / Rules
and Regulations
[[Page 30060]]
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LIBRARY OF CONGRESS
U.S. Copyright Office
37 CFR Parts 201, 220, 222, 224, 225, 226, 227, 228, 229, 230, 231,
232, and 233
[Docket No. 2021-8]
Copyright Claims Board: Active Proceedings and Evidence
AGENCY: U.S. Copyright Office, Library of Congress.
ACTION: Final rule; request for comments.
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SUMMARY: The U.S. Copyright Office is issuing a final rule establishing
procedures governing active proceedings before the Copyright Claims
Board and post-determination procedures. The final rule provides
requirements regarding procedural practice, scheduling, conferences,
discovery, written testimony, hearings, settlement, default and failure
to prosecute, records, post-determination procedures, conduct of
parties and limits on the number of claims that can be brought. The
final rule also describes the procedures for ``smaller claims'' and
solicits public comments on these regulations.
DATES: Effective June 16, 2022. Written comments must be received no
later than 11:59 p.m. Eastern Time on November 14, 2022.
ADDRESSES: For reasons of Government efficiency, the Copyright Office
is using the <a href="http://regulations.gov">regulations.gov</a> system for the submission and posting of
public comments in this proceeding. All comments are therefore to be
submitted electronically through <a href="http://regulations.gov">regulations.gov</a>. Specific instructions
for submitting comments are available on the Copyright Office's website
at <a href="https://www.copyright.gov/rulemaking/case-act-implementation/active-proceedings/">https://www.copyright.gov/rulemaking/case-act-implementation/active-proceedings/</a> proceedings/. If electronic submission of comments is not feasible due
to lack of access to a computer or the internet, please contact the
Copyright Office using the contact information below for special
instructions.
FOR FURTHER INFORMATION CONTACT: Megan Efthimiadis, Assistant to the
General Counsel, by email at <a href="/cdn-cgi/l/email-protection#1f727a796b5f7c706f666d7678776b31787069"><span class="__cf_email__" data-cfemail="caa7afacbe8aa9a5bab3b8a3ada2bee4ada5bc">[email 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 (``Office'') to establish
the Copyright Claims Board (``CCB''), an alternative forum to Federal
court in which parties may seek resolution of copyright disputes that
have a total monetary value of $30,000 or less.\2\ The CCB is designed
to be accessible to pro se parties without formal legal training and
others with little exposure to copyright law.\3\ The Office published a
notification of inquiry (``NOI'') asking for public comments on the
CCB's operations and procedures.\4\ A subsequent notice of proposed
rulemaking (``NPRM'') proposed regulations to govern active proceedings
before the CCB and post-determination review, including on the CCB's
management of parties (i.e., joinder, dismissal, default, failure to
prosecute, party conduct, and numerical limits on cases that parties
may bring); management of proceedings (i.e., scheduling orders,
amending pleadings, claim consolidation, settlement, hearings,
``smaller'' claims, and records); evidence and discovery (i.e., written
testimony, protective orders, interrogatories, requests for admission,
document production, discovery disputes, and sanctions); and post-
determination rehearing and the Register's review.\5\
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\1\ Public Law 116-260, sec. 212, 134 Stat. 1182, 2176 (2020).
\2\ See, e.g., H.R. Rep. No. 116-252, at 18-20 (2019); S. Rep.
No. 116-105, at 7-8 (2019). Note, the CASE Act legislative history
cited is for H.R. 2426 and S. 1273, the CASE Act of 2019, a bill
nearly identical to the CASE Act of 2020. See H.R. 2426, 116th Cong.
(2019); S. 1273, 116th Cong. (2019). In developing the CASE Act,
Congress drew on model legislation in the Office's 2013 policy
report, Copyright Small Claims (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''). Congress also incorporated the Office's report and
supporting materials into the statute's legislative history. H.R.
Rep. No. 116-252, at 19; S. Rep. No. 116-105, at 2.
\3\ See, e.g., H.R. Rep. No. 116-252, at 18-20; S. Rep. No. 116-
105, at 7-8.
\4\ 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>.
\5\ 86 FR 69890 (Dec. 8, 2021). The Office has also published
separate notices and final rules implementing other aspects of the
CASE Act. 86 FR 21990 (Apr. 26, 2021) (proposing regulations for
expedited copyright registrations of works at issue in CCB
proceedings, and a Freedom of Information Act (``FOIA'')-conforming
amendment); 86 FR 49273 (Sept. 2, 2021) (proposing regulations for
libraries and archives to opt out of CCB proceedings, and for
parties to opt out of related class actions); 86 FR 53897 (Sept. 29,
2021) (proposing regulations regarding initial stages of CCB
proceedings); 86 FR 74394 (Dec. 30, 2021) (proposing regulations
regarding party representation by law students and representation of
business entities); 86 FR 46119 (Aug. 18, 2021) (final rule
concerning expedited registration and technical update to FOIA
regulations); 87 FR 12861 (Mar. 8, 2022) (partial final rule
establishing regulations for designating agents for service of
process); 87 FR 13171 (Mar. 9, 2022) (final rule establishing
regulations concerning library and archives opt-outs and class
actions); 87 FR 16989 (Mar. 25, 2022) (final rule establishing
regulations for initiating proceedings and related procedures).
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This final rule marks the completion of all regulations required
for the CCB to begin operations, but the Office expects to exercise its
regulatory authority to promulgate additional CASE Act regulations
going forward as it deems necessary. As noted in its CASE Act NOI, the
Office has deferred exercising its regulatory authority on certain
topics until a later date.\6\ For topics that the Office has already
addressed by regulation, it will be monitoring how those regulations
are functioning as the CCB starts hearing claims, including, for
example: Whether the limitations on proceedings should be adjusted;
whether the discovery regulations strike the right balance between
allowing necessary access to information and being too burdensome; and
whether hearing attendance limitations should be eased. Further, as
with its other services,\7\ the Office will periodically review and
potentially adjust any CASE Act-related fees. Additionally, the CASE
Act requires the Office to conduct a future study on the CCB's
operations,\8\ which will likely prompt additional discussions
regarding both regulatory and legislative changes. Finally, as further
discussed below, the Office is soliciting additional public comments on
its final regulations governing ``smaller claims.''
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\6\ 86 FR 16156, 16165.
\7\ See, e.g., 85 FR 9374 (Feb. 19, 2020) (final rule
establishing adjusted fees for services).
\8\ Public Law 116-260, sec. 212(d), 134 Stat. at 2199-2200.
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The Copyright Alliance et al. urged the Office to ``consider
adopting the CASE Act implementing regulations on an interim basis at
this stage'' and postpone issuing final rules, or plan to publish
another notice of inquiry seeking public comment on the efficacy of the
rules after a year.\9\ While the Office declines to follow this
suggestion, it understands the desire to provide additional feedback on
whether the regulations are functioning as intended. The Office
therefore encourages the public to provide any feedback regarding the
CASE Act's regulations and operations at any time via the Office's ex
parte meeting process,\10\ so that the Office has the opportunity to
promptly address any unforeseen issues.
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\9\ Copyright Alliance et al. Initial Comments at 9.
\10\ Guidelines for ex parte meetings are available at <a href="https://www.copyright.gov/about/small-claims/related-rulemakings.html">https://www.copyright.gov/about/small-claims/related-rulemakings.html</a>.
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[[Page 30061]]
II. Discussion of Final Rule
A. Overview
The CASE Act's legislative history states that the Office should
establish a process that is ``accessible especially for pro se parties
and those with little prior formal exposure to copyright laws.'' \11\
Congress acknowledged that ``federal court is effectively inaccessible
to copyright owners seeking redress for claims of relatively low
economic value, especially individual creators of limited resources,''
\12\ and sought to ensure ``that copyright interests without high
expected damages have some mode of enforceability.'' \13\ The Office
anticipates that many CCB parties will appear pro se (i.e., without an
attorney). In establishing the procedures to govern CCB proceedings,
the Office is always guided by the CASE Act's goal to improve access to
justice in copyright disputes by providing a simpler, yet fair
alternative to Federal litigation.
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\11\ H.R. Rep. No. 116-252, at 17; see also S. Rep. No. 116-105,
at 9-10.
\12\ H.R. Rep. No. 116-252, at 19 (quoting Copyright Small
Claims at 8).
\13\ Id.
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In response to the NPRM, the Office received comments that
articulated specific suggestions on CCB practices and procedures.\14\
Commenters urged the Office to strike a proper balance between two
vital goals: Minimizing the complexities of Federal litigation practice
that can deter parties from bringing and defending copyright claims,
while establishing procedural safeguards so that each participant can
fairly develop and prosecute or defend its case.\15\ Some commenters
voiced concerns that the proposed regulations might be both too complex
in certain respects \16\ and too vague in others,\17\ either of which
could create problems, particularly for pro se parties. As a result,
the proposed regulations could put pro se parties at a disadvantage in
proceedings against more sophisticated parties or representatives. The
Office carefully reviewed the proposed rules with these comments in
mind. As a result, the Office has made amendments to simplify the
regulatory language while ensuring that sufficient procedural
safeguards are in place to protect all parties.\18\
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\14\ Comments in response to the NPRM are available at <a href="https://www.regulations.gov/document/COLC-2021-0007-0001/comment">https://www.regulations.gov/document/COLC-2021-0007-0001/comment</a>. References
to comments responding to the NPRM are by party name (abbreviated
where appropriate), followed by ``Initial NPRM Comments'' or ``Reply
NPRM Comments,'' as appropriate.
\15\ <a href="http://Amazon.com">Amazon.com</a>, Inc. (``Amazon'') Initial NPRM Comments at 2;
Engine Initial NPRM Comments at 2.
\16\ Authors Guild Initial NPRM Comments at 1-2; Anonymous I
Initial NPRM Comments at 1; Anonymous II Initial NPRM Comments at 1;
Copyright Alliance et al. Initial NPRM Comments at 8; H Smith
Initial NPRM Comments; Engine Initial NPRM Comments at 5; Motion
Picture Assoc., Inc. (``MPA'') & Recording Industry Assoc. of Am.,
Inc. (``RIAA'') Initial NPRM Comments at 2-3; Music Creators of N.
Am. Reply NPRM Comments at 3; Science Fiction & Fantasy Writers of
Am., Inc. (``SFWA'') Reply NPRM Comments at 2.
\17\ Engine Initial NPRM Comments at 2, 5-6, 7-8; Public
Knowledge Initial NPRM Comments at 3; Southlaw Ent. Initial NPRM
Comments; Verizon Initial NPRM Comments at 1-2; SFWA Reply NPRM
Comments at 2-5.
\18\ See Authors Guild Initial NPRM Comments at 2.
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Some commenters cautioned that the Office should minimize
complexity not only in the regulatory language but also in the
substance of the rules. The Copyright Alliance et al. contended that
``the primary problem is not that the language used in the regulations
is complex, but rather that the procedures set forth in the regulations
are extremely complex.'' \19\ Similarly, the MPA and RIAA jointly
commented that ``[c]omplex rules and procedures, and extensive
discovery, are simply not necessary or appropriate for the type of
cases that will be litigated in CCB, where the universe of relevant
documents and information will typically be quite limited.'' \20\ Some
individuals expressed concern that the complexity of the proposed
regulations is contrary to the intended purpose of the CCB \21\ and may
foreclose their ability to utilize it.\22\ These commenters urged the
Office to simplify the process so that it is more accessible to
individuals.\23\ The Authors Guild ``emphasize[d] the importance of
keeping the CCB process simple and easily navigable for individual
creators who often make a living juggling several jobs and lack the
knowledge or resources to manage the demands of a complicated legal
process,'' and feared that the ``proposed rule's complexity and the use
of legalese undermines the very purpose of the CCB and will deter pro
se parties from using the CCB.'' \24\
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\19\ Copyright Alliance et al. Reply NPRM Comments at 7.
\20\ MPA & RIAA Initial NPRM Comments at 3.
\21\ H. Smith Initial NPRM Comments at 1; Anonymous I Initial
NPRM Comments at 1.
\22\ H. Smith Initial NPRM Comments at 1; Anonymous I Initial
NPRM Comments at 1; Anonymous II Initial NPRM Comments at 1.
\23\ H. Smith Initial NPRM Comments at 1; Anonymous I Initial
NPRM Comments at 1; Anonymous II Initial NPRM Comments at 1.
\24\ Authors Guild Initial NPRM Comments at 1.
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The Office has addressed these concerns in the final rule, where
possible. Some proposed procedures were simplified or eliminated, and
the Office has revised the proposed rules in several respects to reduce
the parties' procedural and knowledge burdens, as discussed below.
However, CASE Act proceedings will still require sufficient information
and evidence sharing to ensure just determinations. Proof in copyright
cases is typically fact-dependent.\25\ Because the proceedings must be
fundamentally fair to both claimants and respondents, all parties must
have a reasonable opportunity to develop and submit the facts bearing
on their claims and defenses. To provide a fair opportunity for
presentation of the evidence, the procedures must allow for some degree
of complexity in those situations where complexity is inherent in the
factual context. Commenters also raised concerns about procedural
complexities outside of the discovery process.\26\ The Office has
sought to further streamline and simplify procedural requirements
throughout the proceedings where appropriate, while seeking to ensure
that the procedures will be fair to all parties and address the various
situations that may occur.
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\25\ See, e.g., Three Boys Music Corp. v. Bolton, 212 F.3d 477,
481 (9th Cir. 2000) (``Absent direct evidence of copying, proof of
infringement involves fact-based showings that the defendant had
`access' to the plaintiff's work and that the two works are
`substantially similar.' '') (quoting Smith v. Jackson, 84 F.3d
1213, 1218 (9th Cir. 1996)); Peter Pan Fabrics, Inc. v. Martin
Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (``The test for
infringement of a copyright is of necessity vague. . . . Decisions
must . . . inevitably be ad hoc.'').
\26\ E.g., Authors Guild Initial NPRM Comments at 3 (commenting
that allowing third-party intervention ``could add an additional
level of complication that a pro se party likely will not have the
legal knowledge or wherewithal to address in a response''); id. at 4
(noting the Office should ``consider simplifying these rules
[related to sanctions]''); Copyright Alliance et al. Initial NPRM
Comments at 9 (encouraging the Office to ``focus on ways to scale
back on the requirements''); MPA & RIAA Initial NPRM Comments at 4-5
(``The NPRM's proposed rules for smaller claims are much too complex
and allow much too much discovery''; proposing a smaller-claims
system with ``no discovery or motion practice permitted'').
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While most claims heard by the CCB will likely be fairly
straightforward, the Office also must anticipate less straightforward
claims and has promulgated regulations to accommodate both types. Even
commenters asking for simpler rules recognized that certain
circumstances would require more detailed regulations.\27\
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\27\ E.g., Copyright Alliance et al. Initial NPRM Comments at 19
(proposing new requirement that parties certify, after a proceeding
is over, their return or disposal of any discovery material received
from other parties); id. at 20 (urging the Office to add a provision
giving parties an opportunity to object before CCB removes
confidentiality designation from any material); id. at 23 (proposing
that the Office add a procedure allowing parties to seek leave to
submit additional testimony or evidence after a hearing on the
merits); Copyright Alliance et al. Reply NPRM Comments at 8 (``We .
. . strongly urge the Office to simplify the procedures proposed in
the NPRM''); SFWA Reply NPRM Comments at 2 (commenting that ``many
writers and other creators will almost certainly be bewildered by
the CCB's rules and procedures''); id. at 6 (proposing that
standardized interrogatories and document requests should be
tailored ``for different media, formats, and kinds of publication.
For example, publication has different meanings for different
media.'').
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[[Page 30062]]
In addition to the regulations themselves, the Office intends to
take many steps to help parties manage the process with or without
legal counsel. A CCB Handbook, which will be available on the <a href="http://CCB.gov">CCB.gov</a>
website and written in easy-to-understand language, will be a primary
resource for parties navigating all aspects of CCB proceedings. The CCB
Handbook was described in the NPRM and the Office received no comments
critical of the proposal. The Authors Guild urged the Office to
``invest heavily in developing a clear and easy to use handbook,''
which ``should spell out in plain language all the procedures that a
party would need to follow to bring or defend a claim in the CCB, so
that parties to proceedings can refer just to the handbook without
having to look up and understand the regulations.'' \28\ While the
statute and regulations govern CCB proceedings as a legal matter, the
Authors Guild's comment accurately sums up the Office's guiding purpose
in developing a CCB Handbook that can serve as a more convenient guide
for all parties.\29\ The CCB Handbook will be updated, as needed, based
on interested parties' feedback.\30\ And as the regulations note, it
will not override any existing statute or regulation.
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\28\ Authors Guild Initial NPRM Comments at 2; see also
Copyright Alliance et al. Initial NPRM Comments at 9-10 (urging
Office to ``create a handbook for parties that is significantly less
complex than the regulations, easy to understand, and easy to
follow'').
\29\ See also Copyright Alliance et al. Reply NPRM Comments at 7
(anticipating the Handbook ``will be an invaluable tool for pro se
parties'').
\30\ See Authors Guild Initial NPRM Comments at 2 (recommending
that the Handbook be developed with input from stakeholders who
represent potential parties before the CCB).
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Additional information on <a href="http://CCB.gov">CCB.gov</a> will provide details about each
stage of a CCB proceeding. In addition, a user-friendly electronic
filing system (``eCCB'') will simplify filings by walking the parties
through each step of the claim, response, and counterclaim process,
with prompts to help them fully present their positions, and by
providing fillable forms for situations that may arise throughout the
proceeding. Copyright Claims Attorneys and other CCB staff will be
available to further guide parties through any difficulties that they
encounter.
B. Management of Parties
1. Joinder and Intervention
The CASE Act requires dismissal of a claim for the failure to join
a necessary party.\31\ The NPRM proposed a process for parties to bring
the failure to join a necessary party to the CCB's attention and for
non-parties to seek to intervene in the claim.\32\ Except as noted
below, the final rule makes no substantive revisions to what was
proposed.
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\31\ 17 U.S.C. 1506(f)(3)(A).
\32\ 86 FR 69890, 69906 (proposed 37 CFR 222.13(a)-(b)).
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The Authors Guild commented that requests for joinder,
consolidation, and intervention could be too complicated for pro se
parties to address.\33\ It opposed allowing intervention by third
parties and suggested that, if a necessary party seeks to join a
proceeding, ``the CCB should simply schedule a conference to advise the
parties that a third party has requested to join, explain the
consequences of a joinder, and get both parties' consent before
allowing the joinder.'' \34\
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\33\ Authors Guild Initial NPRM Comments at 2-3.
\34\ Id. at 3.
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The Office recognizes that concepts of joinder and necessary
parties, as well as intervention, may be difficult for pro se parties
to understand. The final rule simplifies the procedure for resolving a
request to intervene by having such requests and any response filed via
a simple form on eCCB. The CCB then may hold a conference to discuss
the proposed intervention with the parties to the proceeding and the
party seeking to intervene. If the party requesting intervention is
found to be a ``necessary'' party, the claims will be dismissed if the
parties do not consent to its addition or intervention.
2. Voluntary Withdrawal and Dismissal
Parties may voluntarily dismiss their own claims or counterclaims
without prejudice before a response is filed.\35\ Under the final rule,
a claim or counterclaim cannot be voluntarily dismissed after a
response, but the claimant or counterclaimant may request to withdraw
the claim and the CCB will have discretion, with input from the
parties, to dismiss the claim with or without prejudice. Factors to be
considered by the CCB in exercising its discretion include the point in
the proceedings at which the dismissal is requested and whether
dismissal without prejudice is in the interests of justice.\36\ Several
commenters expressed support for the proposed rule, which provided for
this discretion.\37\ The Authors Guild suggested that ``[t]he proposed
Handbook should explain what `with prejudice' and `without prejudice'
mean in plain English.'' \38\ The Office agrees, and will include such
explanations in the CCB Handbook.
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\35\ 17 U.S.C. 1506(q)(1)-(2).
\36\ 86 FR 69890, 69907 (proposed 37 CFR 222.16(b)). While the
concept of ``the interests of justice'' is subjective and will vary
based upon the circumstances of a particular request to withdraw a
claim, the Office does not understand the term to include withdrawal
of a claim because a claimant wishes to seek higher damages in
Federal court after discovery has been completed in a CCB
proceeding.
\37\ See Sergey Vernyuk Initial NPRM Comments at 1 (``I agree
with this approach because it avoids harassment where a claimant
files a claim and then dismisses it once a defense is mounted, only
to reassert it later.''); Am. Intell. Prop. L. Assoc. (``AIPLA'')
Initial NPRM Comments at 1-2 (``Post-response voluntary dismissals
should generally be with prejudice, to protect the interests of
respondents and reduce the chance of abuse or gamesmanship. . . .
[But] the CCB should retain discretion to permit voluntary dismissal
without prejudice where it is in the interests of justice.''); SFWA
Reply NPRM Comments at 2 (``SFWA supports the amount of
discretionary judgment accorded to the CCB, particularly with regard
to granting dismissals without prejudice.'').
\38\ Authors Guild Initial NPRM Comments at 3.
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3. Default and Failure To Prosecute
a. Default Determinations
The CASE Act provides that the CCB may enter a default
determination if ``the respondent has failed to appear or has ceased
participating in the proceeding.'' \39\ Under the proposed rule,
respondents that do not respond to CCB deadlines will receive an
opportunity to cure the first two times they miss a deadline without
cause. After the third missed deadline, the CCB may proceed to a
default judgment in its discretion without giving an opportunity to
cure. This rule is designed to prevent respondents from taking
advantage of the CCB proceedings to obtain what would amount to
unlimited extensions of deadlines without seeking permission. Several
commenters ``commend[ed] the Office for developing a default procedure
that balances the interests of the parties.'' \40\ Commenters took
different views about the CCB's discretion to commence default
proceedings without providing the respondent another missed-deadline
warning after a third missed deadline, and whether the CCB could
consider defenses sua sponte on behalf of defaulted respondents, as
discussed below.
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\39\ 17 U.S.C. 1506(u).
\40\ AIPLA Initial NPRM Comments at 2; see also Sergey Vernyuk
Initial NPRM Comments at 1; Engine Initial NPRM Comments at 3; SFWA
Reply NPRM Comments at 2.
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Public Knowledge disapproved of the provision authorizing the CCB
to begin default proceedings at its discretion
[[Page 30063]]
without further warning notices after a respondent misses three
deadlines without good cause.\41\ Copyright Alliance et al. disagreed
with Public Knowledge and approved of the proposed rule, commenting
that the CCB ``has to draw the line at some point and cannot continue
to reward a party that makes a practice of ignoring deadlines with
extension after extension.'' \42\ As the Office explained in the NPRM,
``[t]his provision is aimed at encouraging timely participation and
preventing respondents from repeatedly using the default provisions as
a backdoor extension for deadlines.'' \43\ The final regulation spells
out in greater detail the procedural steps leading up to a default
determination and the steps taken after a request to vacate a default
determination.
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\41\ Public Knowledge Initial NPRM Comments at 3-4; see 86 FR
69890, 69913 (proposed 37 CFR 227.1(d)).
\42\ Copyright Alliance et al. Reply NPRM Comments at 10.
\43\ 86 FR 69890, 69892.
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Public Knowledge also argued that the CCB should not ``allow
default judgments based merely on Claimant testimony,'' which it
contended would be ``without any substantive evidence to support the
claim,'' and with ``no opposing party to refute their testimony.'' \44\
Yet as Copyright Alliance et al. noted in reply, testimony is
evidence.\45\ When a respondent fails to appear after multiple notices,
or ceases to participate by missing multiple deadlines, the statute
states that the CCB ``shall require the claimant to submit relevant
evidence and other information in support of the claimant's claim and
any asserted damages'' and determine whether that evidence supports a
finding of default.\46\ Public Knowledge's position would leave the CCB
powerless to fulfill that statutory authority. The implementing
regulations provide extensive safeguards against defaults and give a
respondent the opportunity to oppose the claimant's testimony upon
default.
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\44\ Public Knowledge Initial NPRM Comments at 4-5.
\45\ Copyright Alliance et al. Reply NPRM Comments at 11 (citing
proposed 37 CFR 227.2, 222.14(b)).
\46\ 17 U.S.C. 1506(u)(1).
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Engine suggested that the Office should ``require the CCB to
consider common defenses (such as noninfringement, innocent
infringement, fair use, and licensure) sua sponte in each case,
including before entering a default judgment and awarding damages.''
\47\ In the default context, that comment is broadly consistent with
the proposed rule that ``the Board shall consider whether the
respondent has a meritorious defense.'' \48\ In contrast, Copyright
Alliance et al. urged the CCB to refrain from invoking any defenses on
behalf of defaulted respondents, stating, ``the Office must recognize a
clear distinction between permitting CCAs [Copyright Claims Attorneys]
to assist parties in properly articulating their own legal arguments
versus allowing the Board or the CCAs to provide legal advice to the
parties or invoke arguments and defenses on their behalf, essentially
becoming advocates for one party.'' \49\ Copyright Alliance et al.
further contended that the CASE Act provision regarding defaults ``does
not include raising a defense that has not been properly raised by a
respondent.'' \50\ However, the statute is not so absolute. Moreover,
Federal courts are permitted to deny judgments in a plaintiff's favor
on default when a meritorious defense is present,\51\ and the
legislative history indicates that the CCB ``has both more statutory
authority and a greater obligation to scrutinize the merits of a
claim'' \52\ when default is sought. ``In cases where the respondent is
absent, the Board is expected to carefully scrutinize the available
evidence . . . and consider applicable affirmative defenses such as
fair use, where warranted by the circumstances of the case.'' \53\
Furthermore, the statute requires that the CCB only issue relief after
a default if the claimant's submissions ``are sufficient to support a
finding in favor of the claimant under applicable law.'' \54\ By
definition, if there is a clear defense to the case on the face of the
submissions, there cannot be evidence sufficient to support a finding
for the claimant. The Office is mindful that the CCB must maintain
impartiality, as Copyright Alliance et al. insists,\55\ but that does
not preclude it from requiring claimants to show that their claims can
withstand relevant defenses present on the face of the claims. AIPLA
proposed that, if the CCB determines that a defaulting respondent has a
meritorious defense, the rules should permit the claimant to submit
evidence relevant to the defense.\56\ The Office has implemented this
suggestion and, under the final rule, before the CCB finds for a
defaulting respondent, it will provide the claimant with a tentative
ruling and an opportunity to address it, including through the
submission of further evidence.
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\47\ Engine Initial NPRM Comments at 4.
\48\ 86 FR 69890, 69913 (proposed 37 CFR 227.3(a)).
\49\ Copyright Alliance et al. Reply NPRM Comments at 9; see
also MPA & RIAA Initial NPRM Comments at 8-9.
\50\ Copyright Alliance et al. Reply NPRM Comments at 9-10
(discussing 17 U.S.C. 1506(u)).
\51\ See, e.g., Gunnells v. Teutul, 392 F. Supp. 3d 451, 453-54
(S.D.N.Y. 2019) (noting that courts should look at whether there is
a ``meritorious defense'' before granting default judgment and
deciding that copyright claims appeared to be outside the statute of
limitations); Pierson v. Gamer World News Entm't, Inc., Case No. CV
18-10137-CJC (KSxx), 2019 WL 8064255, *3-4 (C.D. Cal. Sept. 20,
2019) (denying default judgment and ordering plaintiff to show cause
why copyright infringement claim should not be dismissed based on
the doctrine of fair use).
\52\ H.R. Rep. No. 116-252, at 24.
\53\ Id. at 24-25.
\54\ 17 U.S.C. 1506(u)(1).
\55\ Copyright Alliance et al. Initial NPRM Comments at 14.
\56\ AIPLA Initial NPRM Comments at 2 (discussing proposed 37
CFR 222.7(3)(a)); see 86 FR 69890, 69913.
---------------------------------------------------------------------------
b. Failure To Prosecute
The Copyright Alliance et al. observed that the proposed
regulations allow respondents to cure default after ``multiple missed
deadlines,'' but have no equivalent provision for claimants to cure a
failure to prosecute.\57\ The Office agrees that a similar procedure
should be included for a claimant's failure to prosecute and has added
this to the final rule.
---------------------------------------------------------------------------
\57\ Copyright Alliance et al. Initial NPRM Comments at 16
(discussing proposed 37 CFR 227.1(d), 228.2); see 86 FR 69890,
69913-14.
---------------------------------------------------------------------------
4. Bad-Faith Conduct
Parties and their representatives appearing before the CCB who
engage in bad-faith conduct may be required to pay an award of
reasonable costs and attorney's fees.\58\ Upon repeated bad-faith acts
in CCB proceedings, parties and their representatives may be barred
from participating in further proceedings for a year and have pending
proceedings dismissed.\59\ The proposed rule set forth procedures for
the CCB to address bad faith sua sponte or upon a party's allegations,
providing opportunities for the accused to respond in writing and at a
conference. Commenters supported the proposed regulation on bad-faith
conduct. For instance, ``SFWA strongly supports the [Office's] proposed
rules in section 232.3, which go a considerable way to protecting
writers and legitimate publishers from being preyed upon by
unscrupulous copyright trolls who file meritless claims and
counterclaims falsely asserting that they represent the true owner of
the copyright.'' \60\ Several commenters specifically approved the
provision allowing the CCB to temporarily bar those who repeatedly
[[Page 30064]]
act in bad faith from participating in further proceedings.\61\
---------------------------------------------------------------------------
\58\ 17 U.S.C. 1506(y)(2).
\59\ Id. at 1506(y)(3).
\60\ SFWA Reply NPRM Comments at 2-3; see also Verizon Initial
NPRM Comments at 1 (``We commend the Office for their commitment to
prevent abuse.'').
\61\ Copyright Alliance et al. Initial NPRM Comments at 17-18
(``This is an important mechanism for protecting claimants and
respondents from attorneys whose previous history of bad-faith
conduct might put them in jeopardy.''); Amazon Initial NPRM Comments
at 3 (``Amazon supports the Proposed Rule. In particular, Amazon
believes the Office's suggestion for a historical review of the
accused party's past legal claims is crucial.''); SFWA Reply NPRM
Comments at 3 (``SFWA also agrees with AIPLA on the proposal to bar
attorneys who have engaged in bad-faith conduct from representing
parties before the CCB for the specified time periods.''); see 86 FR
69890, 69916-17 (proposed 37 CFR 232.4).
---------------------------------------------------------------------------
The Copyright Alliance et al. proposed that the definition of
``bad-faith conduct'' should be explicit that it encompasses any action
taken in support of a claim, counterclaim, or defense.\62\ The Office
adopts this suggestion in the final rule. The Office also adopts
Copyright Alliance et al.'s proposal to add the term ``before the CCB''
to the final rule, to make clear that its penalties apply to those who
repeatedly act in bad faith before the CCB, and not necessarily
elsewhere.\63\ The Office also agrees with, and adopts, the Copyright
Alliance et al.'s suggestion to clarify in the final rule that the
penalties for repeated acts of bad faith may include a bar to not only
``initiating proceedings,'' but also ``participating'' in any
capacity.\64\
---------------------------------------------------------------------------
\62\ Copyright Alliance et al. Initial NPRM Comments at 16; see
also SFWA Reply NPRM Comments at 3 (approving Copyright Alliance et
al.'s proposed definition of bad-faith conduct); see, e.g., Engine
Initial NPRM Comments at 8 (``[I]t is important to recognize that a
substantial portion of abusive intellectual property assertion
occurs through demand letters that are sent before any complaint is
filed.'').
\63\ Copyright Alliance et al. Initial NPRM Comments at 18; see
86 FR 69890, 69916 (proposed 37 CFR 232.4(a)).
\64\ Copyright Alliance et al. Initial NPRM Comments at 18; see
86 FR 69890, 69916 (proposed 37 CFR 232.4(d)).
---------------------------------------------------------------------------
The Copyright Alliance et al. also commented that ``the regulations
should clearly articulate what is necessary to constitute a showing of
bad-faith conduct.'' \65\ The Office does not consider the suggestion
practical, as it cannot now anticipate every form in which misconduct
may manifest itself in a CCB proceeding, and the CCB's ability to
respond to such misconduct should be in its discretion.\66\ Instead,
the CCB Handbook will provide illustrative examples of bad-faith
conduct to help participants avoid such conduct.
---------------------------------------------------------------------------
\65\ Copyright Alliance et al. Initial NPRM Comments at 17.
\66\ See generally Verizon Initial NPRM Comments at 1
(anticipating that participants ``will inevitably seek creative ways
to abuse the CCB processes'').
---------------------------------------------------------------------------
The Copyright Alliance et al. urged that ``anyone accused of bad-
faith conduct before the CCB should be notified of such accusation and
given an opportunity to explain and defend their actions before a
finding of bad-faith conduct is officially made and recorded.'' \67\
The proposed rule (and the final regulation) expressly provides an
opportunity for parties and representatives accused of bad-faith
conduct to respond, whether the accusation comes from another party or
the CCB on its own initiative.\68\ Copyright Alliance et al. expressed
concern over whether that opportunity would be available if ``the
proceeding does not mature into an active case before the Board, or the
case has otherwise been dismissed.'' \69\ Whether before, during, or
after an active proceeding, an accusation of bad faith will trigger an
opportunity to respond.\70\
---------------------------------------------------------------------------
\67\ Copyright Alliance et al. Initial NPRM Comments at 17.
\68\ See 86 FR 69890, 69916 (proposed 37 CFR 232.3(b)).
\69\ Copyright Alliance et al. Initial NPRM Comments at 17.
\70\ See 86 FR at 69916 (proposed 37 CFR 232.3(b)-(c)).
---------------------------------------------------------------------------
Amazon approved of the proposed regulation allowing the CCB to
consider prior bad acts when assessing bad faith conduct and proposed
that the rule should go further and mandate such consideration.\71\ The
CCB will have the discretion to consider the relevant indicia of bad
faith as it may arise. The Office does not believe it is appropriate to
determine in advance what it must consider in any particular case.
---------------------------------------------------------------------------
\71\ Amazon Initial NPRM Comments at 3-4 (referring to proposed
37 CFR 232.4(c)); id. at add. at A-38.
---------------------------------------------------------------------------
Verizon suggested that the penalty of barring a party or
representative who has acted in bad faith from initiating claims for a
year, ``while a good start, is not sufficient. Such a rule may send the
wrong message that a party is free to act in bad faith at least once a
year with no consequences.'' \72\ Verizon proposed stronger
``consequences up to and including, a ban on all future participation
at the CCB.'' \73\ The CASE Act prescribes the penalty available for a
bad faith determination.\74\ Moreover, the Office does not agree that
parties are ``free to act in bad faith at least once a year,'' because
other penalties, including the awarding of attorney's fees, are
available to the CCB to impose after even a single act of
misconduct.\75\
---------------------------------------------------------------------------
\72\ Verizon Initial NPRM Comments at 1-2.
\73\ Id. at 2.
\74\ 17 U.S.C. 1506(y)(3).
\75\ Id. at 1506(y)(2).
---------------------------------------------------------------------------
The NPRM included a request for comments on whether the Office
should publish a list of bad-faith actors barred from CCB proceedings,
but the proposed rule did not include such a list ``because the Office
believes that such a list would be unduly harsh, especially for non-
attorneys.'' \76\ Several commenters advocated for this,\77\ but the
Office remains wary of the impact of a public bad-faith list and does
not consider it necessary at this time. The determinations of the CCB
will be available to the public,\78\ and the eCCB will allow for
searches of information about parties and attorneys appearing before
the CCB, including any orders related to bad faith.
---------------------------------------------------------------------------
\76\ 86 FR 69890, 69894.
\77\ AIPLA Initial NPRM Comments at 2; Verizon Initial NPRM
Comments at 2; SFWA Reply NPRM Comments at 3.
\78\ 17 U.S.C. 1503(a)(1)(I), 1506(b).
---------------------------------------------------------------------------
Finally, a few commenters raised specific concerns about the
formatting and timing of filings raising or responding to assertions of
bad faith.\79\ The Office addresses these comments in the final rule as
part of a broader revision of the regulations addressing the procedures
for filing requests before the CCB, discussed below. These revisions
specify the formatting and timing of party submissions to establish
consistency and streamline the proceedings.
---------------------------------------------------------------------------
\79\ See Amazon Initial NPRM Comments at 3 n.8 (``the Office
should clarify'' whether the page limit is for single- or double-
spaced filings); id. at add. at A-24; Authors Guild Initial NPRM
Comments at 4 (recommending extending the timeline to respond).
---------------------------------------------------------------------------
C. Management of Proceedings
1. Limitations on Proceedings
The Office is authorized to limit ``the permitted number of
proceedings each year by the same claimant . . . in the interests of
justice and the administration of the Copyright Claims Board.'' \80\
Congress explained that this power ``functions as both a docket
management tool for the Board and as protection against abusive
conduct.'' \81\ In the NPRM, the Office proposed limiting claimants to
10 proceedings filed in any 12-month period, and to limit private
attorneys or law firms representing claimants to 40 proceedings in any
12-month period.\82\ The Office invited comments ``as to whether these
limitations strike the proper balance between the interests of the
parties and the efficient management of the CCB's work.'' \83\
---------------------------------------------------------------------------
\80\ 17 U.S.C. 1504(g).
\81\ H.R. Rep. No. 116-252, at 31; see 86 FR 69890, 69917
(proposed 37 CFR 233.2(a)) (prescribing rules pertaining to maximum
number of CCB proceedings filed by a party).
\82\ 86 FR 69890, 69917 (proposed 37 CFR 233.2(a)).
\83\ Id. at 69896.
---------------------------------------------------------------------------
[[Page 30065]]
Multiple commenters commended the proposed regulation. Engine
commented, ``[w]e strongly support the Office's attention to trying to
prevent abuse of the CCB process, and appreciate the proposal to cap
the number of CCB proceedings that a party may bring in any twelve-
month period to ten cases. This rule, and the limit on private
attorneys and law firms representing claimants in no more than forty
CCB proceedings in any twelve-month period, are useful ideas to help
curb abuse of the CCB.'' \84\ Verizon also expressed its support,
stating, ``[w]e commend the Office for their commitment to prevent
abuse,'' and cautioning that ``bad actors could circumvent the yearly
case cap [through] multiple corporate structures designed to handle
smaller batches of cases.'' \85\
---------------------------------------------------------------------------
\84\ Engine Initial NPRM Comments at 7.
\85\ Verizon Initial NPRM Comments at 1. The Office notes that
under the final rule, actions taken to circumvent the limit may be
subject to penalties as bad-faith conduct. See 86 FR 69890, 69917
(proposed 37 CFR 233.2(b)).
---------------------------------------------------------------------------
Some commenters supported the imposition of limitations, but
disagreed with certain aspects of the Office's proposed rule. For
example, while SFWA supported limitations on the number of actions each
year, it took the position that it would be unfair to count cases where
a respondent opted out.\86\ The Copyright Alliance et al. also argued
that the limits should only apply to active proceedings.\87\
---------------------------------------------------------------------------
\86\ SFWA Reply NPRM Comments at 3.
\87\ Copyright Alliance et al. Initial NPRM Comments at 10. The
Copyright Alliance et al. also suggested a higher limit should be
applied to ``smaller claims.'' Id. The Office will not set a
separate case filing limit for smaller claims at this time, but will
monitor the CCB's experience with smaller claims to determine if any
future changes are needed.
---------------------------------------------------------------------------
The Office understands why commenters suggested that case limits be
restricted only to active cases, but it finds the suggestion
impractical. While active proceedings require more of the CCB's
resources, every new claim requires the CCB's compliance review. This
compliance review process requires several steps, including possible
communication with the claimant before the claim is approved for
service.\88\
---------------------------------------------------------------------------
\88\ 37 CFR 224.1(c).
---------------------------------------------------------------------------
Further, a limitation on the number of filed claims is more easily
managed. At the time of filing, it is impossible to determine when or
if the case may become active. Some cases may become active several
months after they are filed. A limitation on only active proceedings
would leave claimants and attorneys in limbo during this time regarding
whether they have met their filing limit. By contrast, Copyright Claims
Attorneys, parties, and representatives will be able to readily
determine how many claims a party or attorney has filed in the
preceding year by conducting a search on eCCB.
To address commenters' concern that a claimant's limit may be
exhausted without a single proceeding becoming active, the Office has
raised the number of cases that may be filed by each claimant per year.
The final rule raises the limit to 30 proceedings in a 12-month period.
The Copyright Alliance et al. commented that, because respondents can
opt out, the 10-proceeding limit could ``prevent a claimant that has
never had a single case heard by the Board from bringing additional
cases for the remainder of the year.'' \89\ Raising the limit will not
eliminate that possibility, but it will create many more opportunities
for claims to be resolved on the merits by CCB determinations.
---------------------------------------------------------------------------
\89\ Copyright Alliance et al. Initial NPRM Comments at 10.
---------------------------------------------------------------------------
Some commenters, while supporting the limits on a claimant's
filings, challenged the authority of the Office to limit the number of
cases filed by attorneys, as compared to claimants. The Copyright
Alliance et al. argued that ``the Office lacks the authority to
establish a limitation on the number of cases filed by attorneys.''
\90\ AIPLA commented that the limits on attorneys and law firms are
``inappropriate'' because, among other reasons, they ``would impair
claimants' ability to retain counsel of their choice.'' \91\ AIPLA
proposed that the limit on counsel, if imposed, should be ``applied on
a per-attorney, not per-firm, basis.'' \92\
---------------------------------------------------------------------------
\90\ Id. at 11.
\91\ AIPLA Initial NPRM Comments at 2.
\92\ Id. at 3.
---------------------------------------------------------------------------
Several sections of the CASE Act authorize the Office and the CCB
to limit the number of claims both to avoid abusive conduct and to
ensure the CCB can operate in a timely and efficient manner. For
example, the Act provides the CCB the authority to dismiss claims if
the number or complexity of the claims exceed what ``the Copyright
Claims Board could reasonably administer.'' \93\ In another part of the
Act, the Register is directed to issue regulations that will ``provide
for the efficient administration of the Copyright Claims Board, and for
the ability of the Copyright Claims Board to timely complete
proceedings.'' \94\ The statute expressly contemplates that the
Register will adopt ``mechanisms to prevent harassing or improper use
of the Copyright Claims Board by any party'' \95\ and the CASE Act's
legislative history notes the risk of abuse by vexatious claimants.\96\
In promulgating these rules, the Office has given this topic close
attention.
---------------------------------------------------------------------------
\93\ 17 U.S.C. 1506(f)(3)(C).
\94\ Id. at 1510(a)(1).
\95\ Id.
\96\ See S. Rep. No. 116-105, at 8.
---------------------------------------------------------------------------
The Office believes that these stated goals of the CASE Act are
best served by imposing reasonable limits on the number of proceedings
that both claimants and counsel may bring. These limits will minimize
the potential for abusive behavior--which can occur either by a party
or counsel--and will ensure that the CCB can manage and conduct its
proceedings effectively. Thousands of copyright infringement lawsuits
are filed in Federal court each year, with the 6,209 filed in 2018
setting a new record.\97\ The Office expects that a portion of those
litigation matters will instead be filed as claims in the CCB once it
commences operations, and that copyright owners heretofore dissuaded
from enforcement by the prohibitive costs of litigation will bring
additional claims before the CCB.\98\ Permitting a handful of claimants
or attorneys to monopolize the CCB's resources with multiple filings
would deny others the equitable opportunity to advance claims. Setting
limits promotes the ``efficient administration'' of the CCB,\99\ within
the meaning of the statute, because it will maximize the number of
claimants to whom the CCB can provide services. The Office is not
persuaded otherwise by AIPLA's comment that limitations on counsel
``would impair claimants' ability to retain counsel of their choice.''
\100\ The CCB is an extension, not a contraction, of available
tribunals for certain copyright claims. The right to retain counsel
does not confer a right for that chosen counsel to appear in every
forum. The Office therefore does not believe the limitation impinges on
the right to choose counsel. A claimant set on working with an attorney
or law firm that has reached the annual maximum will be free to bring
the claim instead in a Federal court or
[[Page 30066]]
wait until the attorney can file the case before the CCB at a future
time.\101\
---------------------------------------------------------------------------
\97\ U.S. Courts, Just the Facts: Intellectual Property Cases--
Patent, Copyright, and Trademark (Feb. 13, 2020), <a href="https://www.uscourts.gov/news/2020/02/13/just-facts-intellectual-property-cases-patent-copyright-and-trademark">https://www.uscourts.gov/news/2020/02/13/just-facts-intellectual-property-cases-patent-copyright-and-trademark</a>.
\98\ See Copyright Small Claims at 8-9 (``[T]he number of
infringement actions actually filed in federal court likely
significantly underrepresents the number of cases that copyright
owners would choose to bring if they were able.'').
\99\ 17 U.S.C. 1510(a)(1).
\100\ AIPLA Initial NPRM Comments at 2.
\101\ The statute distinguishes ``an attorney'' who may
represent a party from ``a law student'' who may do so instead. 17
U.S.C. 1506(d). Accordingly, the limitation on parties and attorneys
does not apply to law students, law clinics, or pro bono legal
services organization with a connection to the participating law
student's law school.
---------------------------------------------------------------------------
AIPLA also raised a concern that ``enforcement of such a limit [on
representatives] could unduly prejudice innocent claimants. . . .
[C]laimants who pay the filing fee and file proceedings that count
against their limit should not have their claims dismissed or rejected
because a lawyer or firm exceeded its limit. Rather, the CCB could
require withdrawal or substitution of counsel.'' \102\ The Office
agrees, and articulates a procedure in the final regulation in which,
if an attorney or law firm files a new claim that exceeds its limit,
that attorney or law firm must withdraw. The CCB may then issue a stay
of proceedings for 60 days to allow the claimant to find substitute
counsel or proceed pro se, which may be extended for good cause. The
final rule also provides that a claim that exceeds a claimant's limit
will be dismissed without prejudice.
---------------------------------------------------------------------------
\102\ AIPLA Initial NPRM Comments at 2.
---------------------------------------------------------------------------
AIPLA commented that ``[a] firm with hundreds of attorneys should
not be subject to the same limit as a sole practitioner,'' \103\ and
Copyright Alliance et al. commented that the limit on attorneys and law
firms ``fails to account for the variation in size from one firm to
another (for example, an international law firm employing thousands of
attorneys should be permitted to bring far more than 40 cases
annually).'' \104\ After considering the comments regarding the
proposed limitations, the Office has made adjustments in the final
rule. The Office is increasing the limit on law firms to 80 filed
proceedings in a 12-month period, while maintaining the limit of 40 per
attorney.
---------------------------------------------------------------------------
\103\ Id. at 3.
\104\ Copyright Alliance et al. Initial NPRM Comments at 11.
---------------------------------------------------------------------------
Finally, the Office understands that it may benefit from the
experience of seeing how these limitations on parties, attorneys, and
firms work in practice. Accordingly, the Office will review and revisit
the propriety of all limitations set for the number of filings
permitted by parties, attorneys, and firms as necessary after seeing
the types of filings it receives and considering the CCB's workload.
2. Applicability of Federal Rules of Civil Procedure and Federal Rules
of Evidence
Some commenters criticized the proposed rule as too closely modeled
on the Federal Rules of Civil Procedure and the Federal Rules of
Evidence.\105\ SFWA asserted that ``it is imperative that the proposed
rules grant more flexibility than the Federal Rules of Evidence and the
Federal Rules of Civil Procedure, particularly in light of the number
of non-lawyers who can be expected to represent themselves in CCB
claims.'' \106\ This continues to be a goal of the Office as well. The
Office drafted the CCB's procedures to be considerably more flexible,
accessible, and permissive than in Federal court.\107\ The Office has
reviewed the proposed rules in light of the comments about complexity
and made further changes to tailor them to the needs of CCB parties,
including removing all references to the Federal Rules of Civil
Procedure and the Federal Rules of Evidence apart from stating that the
CCB is not bound by those rules.
---------------------------------------------------------------------------
\105\ MPA & RIAA Initial NPRM Comments at 2-3; Copyright
Alliance et al. Initial NPRM Comments at 8, 9; Authors Guild Initial
NPRM Comments at 2.
\106\ SFWA Reply NPRM Comments at 4.
\107\ See 86 FR 69890, 69890 (noting the Office's decision to
not adopt Rules 19 and 20 of the Federal Rules of Civil Procedure).
---------------------------------------------------------------------------
3. Written Requests and Other Filings
While the CASE Act generally prohibits the ``formal motion
practice'' \108\ that is at the heart of Federal civil procedure,\109\
parties may ``make requests to the Copyright Claims Board to address
case management and discovery issues.'' \110\ Commenters proposed that
the CCB streamline and make the form of such requests more consistent.
The Authors Guild advised against ``unnecessary formatting
requirements, such as page limits, font, and indent sizes,'' and
recommended word limits instead.\111\ Copyright Alliance et al.
suggested that the Office ``focus on consistency,'' setting a single
formatting requirement for all party submissions, with each limited to
either 5, 10, or 15 pages, and with the timelines for submissions
plainly set forth.\112\ In response to these comments, the Office has
revised the regulations governing the formatting and timing of party
submissions.
---------------------------------------------------------------------------
\108\ 17 U.S.C. 1506(m).
\109\ See Fed. R. Civ. P. 6, 11, 12, 25, 50, 56, 59, 60, 62.1.
\110\ 17 U.S.C. 1506(m)(1).
\111\ Authors Guild Initial NPRM Comments at 2.
\112\ Copyright Alliance et al. Initial NPRM Comments at 9; see
also Sergey Vernyuk Initial NPRM Comments at 2 (proposing consistent
formatting requirements for documents prepared for submission to the
CCB).
---------------------------------------------------------------------------
The final rule streamlines written requests by the parties into
three tiers, with the majority falling under the first two tiers, which
simply require use of a fillable form on eCCB subject to a character
limit. All requests in tier one will be subject to a 4,000 character
limit with a 7-day response time, and all party requests in tier two
will be submitted through a 10,000 character limit with a 14-day
response time. Accordingly, participants in eCCB proceedings will not
have to worry about page limits, fonts, formatting, or different
response times for the majority of requests and responses. Tier three
is for more substantial written submissions (for example, party
statements), which will also be uploaded to eCCB. With respect to tier
three submissions, the Office has made changes to standardize the
formatting, page limits, and response times in the final rule, where
possible.
4. Scheduling Order
Under the proposed rule, requests to modify a proceeding's
scheduling order could be made orally or by letter and an objecting
party would have three days to file a response after service of a
letter request. However, the rule was silent about the timing of a
response to an oral request, and Copyright Alliance et al. requested
clarification.\113\ When an oral request is made at a hearing or
conference, any other party may respond orally at that time or request
a reasonable amount of time to submit a written response. In the final
rule, any written submissions related to modification of the scheduling
order will fall into the fillable form tier system.
---------------------------------------------------------------------------
\113\ Copyright Alliance et al. Initial NPRM Comments at 20
(discussing proposed 37 CFR 225.1(b)).
---------------------------------------------------------------------------
5. Amending Claims and Counterclaims
Under the proposed rule, amended claims or counterclaims would be
subject to compliance review by a Copyright Claims Attorney, and
amending a claim after service would be prohibited without leave of the
CCB.\114\ The only comments to address this rule supported it.\115\ In
the final rule, the
[[Page 30067]]
Office is also prohibiting amendments to claims during the opt-out
period. The Office believes that allowing claim amendments during the
opt-out period would require additional compliance review and service,
and cause undue administrative difficulty, delay, and burdens on
respondents.
---------------------------------------------------------------------------
\114\ See 86 FR 69890, 69905 (proposed 37 CFR 222.11).
\115\ Amazon Initial NPRM Comments at 6; SFWA Reply NPRM
Comments at 4. Amazon proposed adding language to the regulation
that would make explicit that a party may seek the CCB's leave for
``amendments after the opt-out period has expired.'' Amazon Initial
NPRM Comments at add. at A-4. The Office sees no need for revision
because that was already the effect of the proposed regulation. See
86 FR 69890, 69905 (proposed 37 CFR 222.11(d)).
---------------------------------------------------------------------------
In the final rule, written submissions related to requests for
leave to amend claims will fall into the fillable form tier system. The
final rule also clarifies that a claim or counterclaim may be freely
amended if it is found to be noncompliant as part of the Board's
compliance review. However, if a request for leave to amend is granted,
then the pleading may only be amended as identified in the request.
6. Consolidation and Severance
The NPRM proposed that proceedings that involve the same parties or
arise out of the same facts and circumstances may be consolidated for
purposes of conducting discovery, submitting evidence, or holding
hearings, but not for purposes of CCB determinations and any damages
award.\116\ Regarding severance, the NPRM noted that in ordinary
circumstances, Copyright Claims Attorneys likely will be able to
identify during their compliance review instances where multiple claims
involving disparate facts and circumstances have been asserted, and can
require that the claimant separate out these unrelated claims.\117\
However, the Office also proposed a rule permitting the CCB to sever
proceedings with respect to some or all parties, claims, and issues
where it becomes evident that a proceeding includes distinct claims
involving disparate facts and circumstances that would be inappropriate
to resolve in a single proceeding.\118\
---------------------------------------------------------------------------
\116\ 86 FR 69890, 69905-06 (proposed 37 CFR 222.12).
\117\ Id. at 69897.
\118\ Id.
---------------------------------------------------------------------------
Commenters expressed concern about these provisions. The Authors
Guild cautioned that pro se parties might not know how to respond to a
request to sever or consolidate proceedings, and urged that claims be
consolidated or severed only by authority of the CCB.\119\ AIPLA and
SFWA expressed concerns about the impact that severance and
consolidation would have on the CASE Act's caps on damages.\120\ In
light of these comments and concerns expressed by commenters cautioning
against perceived complexities in the proposed rules as a whole,\121\
and following a review of the statutory framework regarding
consolidation and severance, the Office has concluded that the proposed
rule is redundant in light of other provisions in the statute.
---------------------------------------------------------------------------
\119\ Authors Guild Initial NPRM Comments at 3.
\120\ AIPLA Initial NPRM Comments at 3; SFWA Reply NPRM Comments
at 4. See 17 U.S.C. 1504(e)(1)(A)(ii) (caps on statutory damages for
infringement claims per work infringed); id. at 1504(e)(1)(D) (cap
on total damages per proceeding).
\121\ See supra note 18.
---------------------------------------------------------------------------
The CASE Act prohibits a claimant from combining more than one
claim in a single proceeding unless all of the claims ``arise out of
the same allegedly infringing activity or continuous course of
infringing activities and do not, in the aggregate, result in the
recovery of such claim or claims for damages that exceed the [CASE
Act's monetary damages] limitations.'' \122\ Hence, a proceeding
initiated by a claimant that includes multiple claims involving
disparate facts and circumstances would not survive compliance review,
and the claimant would be required to file separate proceedings for
each of the claims. Because the statute already provides a mechanism to
address the issues that the proposed rule on severance would have
addressed, the final rule does not include such a provision.
---------------------------------------------------------------------------
\122\ 17 U.S.C. 1504(c)(6).
---------------------------------------------------------------------------
In contrast, the provision permitting consolidation will permit the
CCB to achieve efficiencies in managing multiple proceedings filed by a
claimant against the same respondent when those proceedings arise out
of the same facts and circumstances. In such cases, the CCB may
consolidate matters such as discovery, the submission of evidence, and
hearings, while rendering separate determinations for each proceeding.
Because consolidation only combines certain procedural steps and does
not actually join the claims into a single proceeding, the existing
caps on damages for each proceeding will continue to apply. The Office
is mindful of the concern expressed by the Authors Guild that pro se
parties may not know how to respond to a request to sever or
consolidate proceedings \123\ and, consistent with the Authors Guild's
recommendation, has retained the language reserving the authority to
consolidate proceedings to the CCB.
---------------------------------------------------------------------------
\123\ See Authors Guild Initial NPRM Comments at 3.
---------------------------------------------------------------------------
7. Settlement
Commenters generally supported the proposed rule on settlement
conferences,\124\ while proposing certain procedural and textual
amendments. The NPRM requested comments concerning the role of the
Copyright Claims Officer who presides over a settlement conference,
specifically concerning that Officer's role in a final
determination.\125\ AIPLA commented, ``parties are more likely to
participate in settlement discussions if the Officer presiding over the
settlement conference is not deciding the merits. We believe the
Office's proposed structure, in which the Officer presiding over
settlement discussions is recused from the final decision except to
break a tie, is permitted under the plain language of the statute.''
\126\ Copyright Alliance et al. favored the proposal that the presiding
settlement Officer would serve only as a tiebreaker in the final
determination, adding that the ``Officer should be permitted to review
the record and sit in on hearings, etc., but should not be permitted to
actively participate in the discussions in any manner that might
influence the independence of the remaining two Officers.'' \127\ The
Office agrees, and the final rule incorporates the commenters'
suggestions. The final rule provides for the recusal of the Officer who
presides over a settlement conference unless required as a tiebreaker
in the final determination.
---------------------------------------------------------------------------
\124\ See SFWA Reply NPRM Comments at 5 (``[W]e believe the
proposed rules are sensible and straightforward.''); AIPLA Initial
NPRM Comments at 3 (``We commend the Office's desire to encourage
voluntary settlement.'').
\125\ 86 FR 69890, 69898.
\126\ AIPLA Initial NPRM Comments at 3.
\127\ Copyright Alliance et al. Initial NPRM Comments at 19.
---------------------------------------------------------------------------
The proposed rule provided that the CCB ``shall encourage voluntary
settlement between the parties of any claims or counterclaims,'' \128\
and the Office solicited comments ``on whether the CCB should be able
to order a settlement conference where it sees a possible benefit to
holding a conference even where one or more parties object.'' \129\
SFWA cautioned against ``mandating settlement conferences where there
is extreme animosity or a significant power imbalance between
parties.'' \130\ Verizon urged that the settlement process should ``be
done on a fully voluntary and mutually agreeable basis,'' and ``urge[d]
the Office to exercise caution regarding the notion of `encouraging'
settlements to ensure the CCB process is not converted from an
adjudicatory body into a settlement collection process.'' \131\ The
legislative history is explicit that the CASE Act ``reflects an intent
to encourage compromise and settlement'' and is
[[Page 30068]]
``designed to promote compromise.'' \132\ Indeed, AIPLA specifically
``commend[ed] the Office's desire to encourage voluntary settlement.''
\133\ Nevertheless, mindful of commenters' concerns, the Office is
modifying the rule's text to state that the CCB shall ``facilitate,''
and not ``encourage,'' settlement. This is consistent with the
statutory text, under which facilitating settlement is one of the
Copyright Claims Officers' express functions.\134\
---------------------------------------------------------------------------
\128\ 86 FR 69890, 69907 (proposed 37 CFR 222.17(a)).
\129\ Id. at 69898.
\130\ SFWA Reply NPRM Comments at 5.
\131\ Verizon Initial NPRM Comments at 2.
\132\ H.R. Rep. No. 116-252, at 24.
\133\ AIPLA Initial NPRM Comments at 3.
\134\ 17 U.S.C. 1503(a)(1)(F), 1506(r)(1)(A); see also id. at
1502(b)(3)(A)(iii) (requiring that one Copyright Claims Officer
shall have experience in alternative dispute resolution).
---------------------------------------------------------------------------
Under the proposed rule, before parties participate in a settlement
conference, they are required to email their position statements to the
presiding Copyright Claims Officer and, if the parties agree, the
parties shall ``serve'' their statements on the other participating
parties.\135\ Upon a suggestion by the Authors Guild,\136\ the Office
changes the language of the provision from ``serve'' to ``send,'' to
clarify that formal service is not required when the parties exchange
settlement statements.
---------------------------------------------------------------------------
\135\ 86 FR 69890, 69907-08 (proposed 37 CFR 222.17(d)).
\136\ Authors Guild Initial NPRM Comments at 3.
---------------------------------------------------------------------------
8. Records and Publication
The CCB's final determinations will be made available on a
publicly-accessible website, and the statute directs the Office to
establish regulations related to the publication of other records and
information.\137\ As stated in the NPRM, the ``proposed rule seeks to
balance public access with the confidentiality interests of the
parties.'' \138\
---------------------------------------------------------------------------
\137\ 17 U.S.C. 1506(t)(3).
\138\ 86 FR 69899.
---------------------------------------------------------------------------
The NPRM also noted that the CCB will generally create hearing
transcripts through ``standard speech to text transcript technology
that is available with the CCB's videoconferencing system,'' and
invited comments on ``whether such informal raw transcripts, which may
contain various errors, should be added to the official record.'' \139\
The Copyright Alliance et al. commented ``that hearing transcripts
should not be made public as a part of the official record.'' \140\
Sergey Vernyuk favored making the transcripts available to promote
transparency.\141\ At this time, the Office does not believe that
publishing the uncorrected transcripts is advisable, given the
potential for errors, although the parties will have the ability to
request and pay for an official reporter. The Office may reevaluate
this position over time based on further experience and review of the
transcripts.
---------------------------------------------------------------------------
\139\ Id.
\140\ Copyright Alliance et al. Initial NPRM Comments at 22.
\141\ Sergey Vernyuk Initial NPRM Comments at 1.
---------------------------------------------------------------------------
The final rule limits attendance at hearings to the parties and
their representatives, except with leave of the CCB.\142\ While Sergey
Vernyuk proposed making hearings open to the public by default and
``seal[ed]'' only with leave,\143\ the Office is concerned that the
virtual nature of CCB proceedings may pose technological or security
concerns if they are fully open to the public. The Office will consider
reevaluating the issue in the future.
---------------------------------------------------------------------------
\142\ 86 FR 69890, 69915 (proposed 37 CFR 229.1(c)).
\143\ Sergey Vernyuk Initial NPRM Comments at 1.
---------------------------------------------------------------------------
D. Discovery and Evidence
In the NPRM, the Office proposed a discovery process intended to be
a streamlined, easy-to-use system that offered standardized discovery
requests. Several commenters supported the Office's proposed system of
standardized discovery. For example, AIPLA wrote that it ``believes
that the proposed approach to written discovery is sound and supports
the establishment of standard interrogatories and document requests. .
. . These procedures will go a long way towards making discovery
manageable for pro se claimants and respondents.'' \144\ Amazon, the
Authors Guild, and SFWA all submitted similar comments supporting the
Office's proposed use of limited, standardized discovery.\145\ Engine
added that the ``CCB-issued interrogatories and document requests . . .
go some way towards addressing our concerns about the early disclosure
of relevant evidence and combatting discovery abuse.'' \146\
---------------------------------------------------------------------------
\144\ AIPLA Initial NPRM Comments at 4.
\145\ Amazon commented, ``[t]he Office's proposed mechanisms,
including standardized discovery requests and limitations on the
production of electronically stored information (`ESI'), will
promote an efficient and inexpensive discovery process in CCB
proceedings. . . . Amazon strongly supports the use of CCB-issued
interrogatories and document requests, and limited requests for
admissions.'' Amazon Initial NPRM Comments at 4 (footnote omitted).
The Authors Guild, ``applaud[ed] the use of standard forms for
discovery requests'' and ``strongly agree[d] with the use of
standard interrogatories and standard document requests.'' Authors
Guild Initial NPRM Comments at 4. SFWA ``strongly approve[d] of
standardized interrogatories and RFPs.'' SFWA Reply NPRM Comments at
6.
\146\ Engine Initial NPRM Comments at 5.
---------------------------------------------------------------------------
Some commenters considered the scope of discovery too broad under
the proposed regulations. MPA and RIAA commented that, if the CASE Act
is ``implemented without significant cabining, the discovery rules for
CCB would result in significant burdens for litigants to propound,
respond to, and dispute discovery, overwhelming the amount in dispute,
undermining the effectiveness of the system, and leading both potential
claimants and respondents to opt out.'' \147\ Copyright Alliance et al.
stated that ``the discovery process should be limited by requiring that
all discovery requests, including requests for production of documents,
be: (i) Narrowly targeted; (ii) highly likely to result in the
production of evidence that is directly relevant to the claims and
defenses; and (iii) serve the goal of efficient resolution of the case
in light of the nature of the claims and defenses and the amount in
dispute.'' \148\
---------------------------------------------------------------------------
\147\ MPA & RIAA Initial NPRM Comments at 5.
\148\ Copyright Alliance et al. Initial NPRM Comments at 15.
---------------------------------------------------------------------------
The Office has carefully reviewed its proposed regulations with
these comments in mind. It has made changes to the regulations
regarding interrogatories and document requests to ensure that the
scope of allowed discovery is not overly extensive. The Office believes
that the final rule provides for a discovery process that is properly
tailored to assist in resolving claims before the CCB, and is
substantially narrower than what the Federal rules allow. In addition,
on a case-by-case basis, parties will need to show good cause to
conduct additional discovery. Moreover, a party concerned that the
scope of discovery is too broad may raise the issue during the pre-
discovery conference held in each case, identifying any of the standard
requests that may be overly burdensome or not relevant.
When the Office proposed a small-claims system for copyright, it
suggested that ``the parties likely will not have access to extensive
discovery and will instead be limited to presenting the most critical
evidence. Cases will be developed using abbreviated procedures, in
shorter time frames, in order to simplify and speed the process.''
\149\ The Office believes that the proposed regulations serve this
vision. It has endeavored to establish a process that, while
streamlined, is also just.\150\ Commenters generally recognized this
important balance, and as stated above,
[[Page 30069]]
supported the idea of standardized discovery.\151\
---------------------------------------------------------------------------
\149\ Copyright Small Claims at 103.
\150\ As the Office previously stated, ``[a]ny system to
adjudicate small claims must grapple with the nature and amount of
discovery to be permitted. . . . [T]he broad availability of
discovery and related frustration of discovery-related disputes are
significant factors in the timing and expense of federal litigation.
At the same time, it is difficult to resolve a dispute fairly
without access to relevant information.'' Id. at 124.
\151\ See, e.g., Engine Initial NPRM Comments at 6 (``efforts to
streamline the discovery process . . . [should] not come at the
expense of parties gaining access to the information they need to
make their case'').
---------------------------------------------------------------------------
Standardized discovery has the key benefit of reducing the burden
on parties to develop their own discovery requests, particularly for
those parties appearing pro se. At the same time, it must be broad
enough to capture common issues that will arise in the majority of
proceedings. But that does not mean that all such requests are
appropriate for every claim, and additional limitations on the scope of
discovery may be called for in some circumstances. Where this is the
case, a party should bring this to the CCB's attention in a conference.
The Authors Guild requested that the CCB notify parties that they
have a duty to update information they provide in response to
interrogatories and to disclose responsive documents no longer in their
possession.\152\ As currently drafted, the regulation both imposes a
duty to update and obligates parties ``to preserve all material
documents.'' \153\ These duties will be addressed in the CCB Handbook
and in the parties' pre- and post-discovery conferences.
---------------------------------------------------------------------------
\152\ Authors Guild Initial NPRM Comments at 4 (discussing
proposed 37 CFR 225.2(f) & 225.4(f)(4)).
\153\ 86 FR 69890, 69912 (proposed 37 CFR 225.4(f)(5)).
---------------------------------------------------------------------------
The Authors Guild also suggested that the CCB ``should give
reminders for deadlines.'' \154\ The Office considers the request
impracticable for discovery-related deadlines that will be triggered by
exchanges between the parties outside of eCCB, but is working to have
eCCB send out email reminders related to certain deadlines that require
a filing.
---------------------------------------------------------------------------
\154\ Authors Guild Initial NPRM Comments at 3.
---------------------------------------------------------------------------
AIPLA noted that it ``supports the requirement that parties meet
and confer regarding [discovery] disputes, before raising the issue
with the CCB,'' but warned that the requirement should not become a
means for parties ``to avoid disputes by failing to meet and confer.''
\155\ A party's failure to confer will not prevent the CCB from
addressing discovery disputes when needed. The final rule provides that
parties whose reasonable efforts to confer are frustrated can explain
the steps taken to resolve the dispute before seeking CCB assistance
when requesting a conference.
---------------------------------------------------------------------------
\155\ AIPLA Initial NPRM Comments at 4 (discussing proposed 37
CFR 225.5(a)); see 86 FR 69890, 69912.
---------------------------------------------------------------------------
The proposed rule required parties to certify discovery responses,
and the final rule clarifies the scope of certification. The producing
party must certify that interrogatory responses are accurate and
truthful, and that documents produced are genuine and unaltered, to the
best of that party's knowledge. The Authors Guild asked the Office to
provide the specific wording of the required certification in the CCB
Handbook and on CCB forms.\156\ The Office agrees, and plans on
providing certification language in the CCB Handbook. The Office also
intends to create forms for responding to standard interrogatories, and
expects to include the certification.
---------------------------------------------------------------------------
\156\ Authors Guild Initial NPRM Comments at 4.
---------------------------------------------------------------------------
Amazon supported the certification requirement and suggested
further requiring parties to certify that they have reviewed the CCB's
standard protective order, and that any materials they designate as
confidential fit the protective order's definition of ``confidential.''
\157\ To keep the required certification easy to use and understand by
all parties, the Office is not inclined to make it more complicated or
include a reference to protective orders that will only be present in
certain cases.\158\ However, the Office notes that protective order
violations may constitute bad-faith conduct.
---------------------------------------------------------------------------
\157\ Amazon Initial NPRM Comments at 4, add. at A-15.
\158\ See 86 FR 69890, 69908 (proposed 37 CFR 222.18(a)) (noting
that protective orders only apply ``[a]t the request of any
party'').
---------------------------------------------------------------------------
As noted above, in response to the comments received, the Office
has conducted a complete review of all of the discovery regulations to
ensure they are narrowly tailored and to make them more understandable
to the general public. Specific changes that have been adopted are
discussed below. Guidance will also be available to the parties through
the Copyright Claims Attorneys, and the CCB Handbook will have detailed
easy-to-understand instructions about the discovery process.
1. Protective Orders
The Office is incorporating commenters' amendments to the proposed
rule on protective orders. Amazon proposed that the categories of
discovery material subject to designation as ``confidential'' should
include advertising plans not previously disclosed to the public.\159\
Amazon also proposed a regulatory revision specifying that parties
``must'' (rather than ``are expected to'') attempt to resolve disputes
over confidentiality designations before bringing such disputes to the
CCB.\160\ The Office understands the benefits of having parties first
discuss these issues directly before engaging with the CCB. At the same
time, the Office is sensitive to the expertise imbalance that could
occur when, for example, one party is represented and one party is pro
se. The Copyright Alliance et al. urged that the proposed rule, which
allowed the CCB to unilaterally de-designate materials labeled
``confidential,'' should provide the affected party a chance to object
beforehand.\161\ The final rule makes each of these requested
amendments, and the CCB will be tasked with ensuring that the
protective order procedures are not misused when one party is pro se.
---------------------------------------------------------------------------
\159\ Amazon Initial NPRM Comments at 4 n.19, add. at A-12.
\160\ Id. at add. at A-13.
\161\ Copyright Alliance et al. Initial NPRM Comments at 20.
---------------------------------------------------------------------------
2. Interrogatories
As noted above, commenters generally favored the CCB's use of
standard form interrogatories.\162\ SFWA proposed that the
interrogatories ``should be standardized for different media, formats,
and kinds of publication.'' \163\ The Office does not believe that
multiple versions of standardized interrogatory requests are required
at this time, but will consider the adoption of different versions in
the future. Under the final rule, parties that require media-specific
discovery may request it under the process for additional discovery.
---------------------------------------------------------------------------
\162\ See AIPLA Initial NPRM Comments at 4; Amazon Initial NPRM
Comments at 4; Authors Guild Initial NPRM Comments at 4; Engine
Initial NPRM Comments at 5; SFWA Reply NPRM Comments at 6.
\163\ SFWA Reply NPRM Comments at 6.
---------------------------------------------------------------------------
Engine raised a concern that the language in the standard
interrogatories, as summarized in the proposed regulation, might be
``difficult enough to parse[ ] for attorneys'' and ``unclear for pro se
parties who are encountering the discovery process for the first
time.'' \164\ The Office has reviewed the proposed rule and made some
simplifying revisions. Further, the Office notes that the rule
describes the interrogatory categories, but does not include their
final text. The actual interrogatory forms will adopt easy-to-
understand language, and the Office intends to provide instructional
materials, e.g., through the CCB Handbook, to guide the parties.
---------------------------------------------------------------------------
\164\ Engine Initial NPRM Comments at 5.
---------------------------------------------------------------------------
Engine also commented that section 512(f) misrepresentation claims
are likely to require more and different interrogatories than a
standard CCB misrepresentation discovery would provide, and, in
particular, ``[t]he CCB-
[[Page 30070]]
issued interrogatories for [section] 512(f) cases, as they are
currently phrased, are unlikely to capture the full range of evidence
that a claimant would need to prove subjective bad faith.'' \165\ It
proposed ``eliminating the good cause requirement for an initial number
of additional discovery requests in [section] 512(f) claims.'' \166\
The Office does not agree that this exception to the standard discovery
rules is necessary. If a party asserting or responding to a section
512(f) claim believes that it needs additional information that is not
captured by the standard misrepresentation interrogatories, it may make
a request to propound further interrogatories under the provisions
pertaining to additional discovery.
---------------------------------------------------------------------------
\165\ Id. at 6-7.
\166\ Id. at 7.
---------------------------------------------------------------------------
Sergey Vernyuk requested a definition or further explanation of
which documents count as ``material.'' \167\ A ``material'' document is
one that could be used to prove or disprove a fact that is in dispute
in a proceeding and may have influence on the outcome of the
proceeding. As the universe of ``material'' documents is unlimited,
rather than put forward any sort of list in the regulations, the Office
intends to provide guidance to pro se parties and provide examples in
the CCB Handbook.
---------------------------------------------------------------------------
\167\ Sergey Vernyuk Initial NPRM Comments at 2.
---------------------------------------------------------------------------
Finally, SFWA also proposed that the Office make the
interrogatories ``available for comment separately so that individual
creator groups can fine tune them for maximum clarity.'' \168\ The
Office appreciates the interest and will welcome feedback once the
forms are final and publicly available, but finds that an additional
round of public comment would be impractical as the CCB is due to
commence operations shortly.
---------------------------------------------------------------------------
\168\ SFWA Reply NPRM Comments at 6.
---------------------------------------------------------------------------
3. Requests for Admission
The CASE Act specifically refers to ``written requests for
admission, as provided in regulations established by the Register of
Copyrights.'' \169\ This is a standard form of discovery in Federal
civil litigation.\170\ The NPRM proposed limiting parties to ten
requests for admission, with compound requests barred.\171\ Some
commenters, however, strongly advocated for eliminating them from CCB
proceedings entirely.\172\
---------------------------------------------------------------------------
\169\ 17 U.S.C. 1506(n).
\170\ See Fed. R. Civ. P. 36.
\171\ 86 FR 69890, 69911 (proposed 37 CFR 225.3(a)-(b)).
\172\ See Authors Guild Initial NPRM Comments at 4; Copyright
Alliance et al. Initial NPRM Comments at 15; MPA & RIAA Initial NPRM
Comments at 6-7.
---------------------------------------------------------------------------
MPA and RIAA commented that requests for admission (``RFAs'') are
``prone to use of tendentious language by both the propounder of the
RFA as well as the responding party, resulting in semantic battles
between sophisticated attorneys that are unlikely to advance the
adjudication of a copyright small-claims matter. . . . Drafting and
responding to RFAs would consume significant time, and likely for
little benefit.'' \173\ The MPA and RIAA also voiced ``serious doubts
that many pro se litigants, either claimants or respondents, would be
able to engage in meaningful exchange of RFAs and responses--or engage
in motion practice to resolve potential disputes about them.'' \174\
The Authors Guild opined that requests for admission ``could prove to
be a trap for pro se parties litigating against sophisticated
parties.'' \175\ Likewise, Copyright Alliance et al. opposed the use of
requests for admission on grounds of the complexity and burden.\176\
---------------------------------------------------------------------------
\173\ MPA & RIAA Initial NPRM Comments at 6.
\174\ Id. at 6-7.
\175\ Authors Guild Initial NPRM Comments at 4.
\176\ Copyright Alliance et al. Initial NPRM Comments at 15.
---------------------------------------------------------------------------
Some commenters did not object to the use of requests for admission
in CCB discovery, and one strongly supported including them on a
limited basis. Sergey Vernyuk agreed with the Office's decision not to
provide standard forms, leaving the content of the requests up to the
parties.\177\ AIPLA considered the Office's proposed ten-request limit
``reasonable,'' \178\ and Amazon ``strongly support[ed] . . . limited
requests for admission.'' \179\
---------------------------------------------------------------------------
\177\ Sergey Vernyuk Initial NPRM Comments at 1 (citing 86 FR
69890, 69900).
\178\ AIPLA Initial NPRM Comments at 4.
\179\ Amazon Initial NPRM Comments at 4.
---------------------------------------------------------------------------
The Office finds the comments requesting the elimination of
requests for admission persuasive and believes that the elimination
from the ordinary case would significantly streamline discovery without
substantially affecting parties' ability to develop the facts. The
final rule classifies requests for admission as a form of additional
discovery that the CCB may allow ``on a limited basis'' and ``for good
cause shown.'' \180\ They will not be available as ``of right,'' and
requesting parties must provide the specific RFAs they seek to propound
and show good cause for each. These restrictions are consistent with
suggestions by the commenters who opposed the use of RFAs.\181\
---------------------------------------------------------------------------
\180\ 17 U.S.C. 1506(n)(1).
\181\ See MPA & RIAA Initial NPRM Comments at 7; Copyright
Alliance et al. Initial NPRM Comments at 15.
---------------------------------------------------------------------------
4. Production of Documents
Some commenters, including some who approved of the CCB-issued
standardized discovery requests,\182\ contended that specific document
requests described in the proposed rule are too broad. The NPRM
proposed requiring parties responding to infringement claims or
counterclaims to produce ``documents related to'' revenues, profits,
and deductible expenses ``directly related to the sale or use of the
allegedly infringing material.'' \183\ To ``safeguard against overbroad
and potentially irrelevant discovery related to this type of financial
information,'' Amazon suggested that infringement respondents instead
should be required to produce only ``documents sufficient to show''
those matters, arguing that the NPRM version of the request ``may
result in unintended and burdensome discovery.'' \184\ The Office
agrees that this is a reasonable limitation and the final rule reflects
the change.
---------------------------------------------------------------------------
\182\ See Amazon Initial NPRM Comments at 4 (supporting
standardized interrogatories and document requests).
\183\ 86 FR 69890, 69911 (proposed 37 CFR 225.4(c)(5)).
\184\ Amazon Initial NPRM Comments at 5, add. at A-22.
---------------------------------------------------------------------------
Some commenters proposed excluding certain categories of documents
from the standardized requests. These proposals have not been adopted
in the final rule. For example, Copyright Alliance et al. commented
that ``a party should not be entitled to discovery related to past
licensing fees assessed by a copyright owner.'' \185\ The Office
believes that a copyright owner's licensing practices, and the
licensing history of the infringed work and similar works, may be
relevant to determining damages. Discovery of such relevant evidence
should not be categorically excluded.
---------------------------------------------------------------------------
\185\ Copyright Alliance et al. Initial NPRM Comments at 15 n.6;
see also MPA & RIAA Initial NPRM Comments at 5 (stating that
discovery ``should not extend to other transactions in which either
party may have engaged, even if they are similar to the case at
bar'').
---------------------------------------------------------------------------
For misrepresentation claims, Amazon recommended that respondents
should be required to produce only ``documents sufficient to show'' the
truth or falsity of representations made in the notification or
counter-notification, rather than all ``[d]ocuments pertaining to''
those matters, which could ``result in
[[Page 30071]]
overbroad, irrelevant, and burdensome discovery.'' \186\ The Office
believes the proposed change could be read to permit a respondent to
produce only exculpatory documents ``sufficient to show'' that its
statements were true, while withholding documents that support the
misrepresentation claim. However, to limit the universe of potentially
responsive documents, the Office revises the rule to ``[d]ocuments
directly pertaining to'' truth or falsity.
---------------------------------------------------------------------------
\186\ Amazon Initial NPRM Comments at 5, add. at A-23; 86 FR
69890, 69911 (proposed 37 CFR 225.4(e)(2)).
---------------------------------------------------------------------------
``[T]o make clear that parties are permitted to withhold privileged
documents,'' Copyright Alliance et al. proposed that the Office should
revise the proposed rule on the standard production of documents by
excluding documents ``privileged or protected from disclosure.'' \187\
The Office is concerned that introducing such legal terminology may
prove counter-productive, especially when dealing with pro se parties,
but the Office recognizes the importance of the attorney-client
privilege. The final rule specifies that confidential communications
between a party and its counsel reflecting or seeking legal advice
related to the merits of the proceeding shall be considered privileged
categorically and need not be produced. Parties seeking to withhold
other types of documents must first seek and receive leave of the CCB.
---------------------------------------------------------------------------
\187\ Copyright Alliance et al. Initial NPRM Comments at 22
(discussing proposed 37 CFR 225.4(a)).
---------------------------------------------------------------------------
MPA and RIAA contended that two provisions in the proposed rule
(requiring production of ``[a]ll documents related to damages'' and
``[a]ll other documents of which the party is reasonably aware that
conflict with the party's claims or defenses'') ``seem to encompass
large volumes of documents that are not directly related to the dispute
itself.'' \188\ While the Office considers both categories of documents
relevant, it also recognizes that other categories in the proposed rule
cover the same subject matter.\189\ Thus, it is removing the broad
category ``[a]ll documents related to damages'' from the final rule and
narrowing the other request by adding the phrase ``in the proceeding''
to the request for documents that conflict with the party's claims or
defenses.
---------------------------------------------------------------------------
\188\ MPA & RIAA Initial NPRM Comments at 6; 86 FR 69890, 69911
(proposed 37 CFR 225.4(a)(2)-(3)).
\189\ See 86 FR 69890, 69911 (proposed 37 CFR 225.4(b)(7),
(c)(5)).
---------------------------------------------------------------------------
Commenters raised concerns about the scope of a party's obligation
to search for responsive documents and electronically stored
information (e.g., email) to produce in discovery, with Amazon stating
that such searches should not be of the documents of any of the party's
agents, employees, representatives, or others acting on the party's
behalf without limitation, but rather those whom the party reasonably
believes would or should have responsive documents.\190\ In the final
rule, the Office has limited the files that must be searched to files
in the party's possession or under their control, to the files of any
of the party's agents, employees, representatives, or others acting on
the party's behalf ``who the party reasonably believes may have
responsive documents.''
---------------------------------------------------------------------------
\190\ Amazon Initial NPRM Comments at 4-5, add. at A-23
(discussing proposed 37 CFR 225.4(f)(1)-(2)), MPA & RIAA Initial
NPRM Comments at 6 (discussing proposed 37 CFR 225.4(f)(2)); see 86
FR at 66911-12 (proposed 37 CFR 225.4(f)(1)-(2)).
---------------------------------------------------------------------------
The Office disagrees with Amazon's suggestion that the rule should
state that ``parties are not required to run custodial email searches
to locate responsive documents.'' \191\ If a party reasonably believes
that responsive documents are in its possession or under its control,
including in emails and computer files, it must conduct a reasonable
search. For that reason, the Office also disagrees with MPA and RIAA's
position that ``[s]earches for responsive documents should be limited
to the responding party itself,'' and should not reach the files of its
``agents, employees, representatives, or others acting on the party's
behalf.'' \192\ If a third party's files are under the party's control,
they are not inaccessible, and the efficient resolution of CCB claims
will require reasonable searches for the limited universe of documents
subject to production. The final rule also establishes an explicit
reasonable investigation standard for discovery responses.
---------------------------------------------------------------------------
\191\ Amazon Initial NPRM Comments at 4-5, add. at A-23.
\192\ MPA & RIAA Initial NPRM Comments at 6 (discussing proposed
37 CFR 225.4(f)(2)); see also 86 FR 69890, 66912 (proposed 37 CFR
225.4(f)(2)).
---------------------------------------------------------------------------
The Copyright Alliance et al. noted that the proposed rule, which
set out a baseline expectation for manual searches of electronically
stored information ``that are easily accomplished by a layperson,''
\193\ appeared to prohibit parties from conducting more extensive
searches.\194\ The Office never intended its rule to prohibit parties
who want to conduct such searches from doing so. Adopting Copyright
Alliance et al.'s suggestion, the Office revises the rule to provide
that such searches ``need not,'' rather than ``shall not,'' exceed that
baseline. The Copyright Alliance et al. further noted that the proposed
rule treats document productions that ``include large amounts of
irrelevant or duplicative material,'' \195\ commonly referred to as
``document dumps,'' \196\ as acts of ``per se `bad faith.' '' \197\
Copyright Alliance et al. suggested that the CCB should retain the
discretion to make determinations of bad faith ``in light of all
relevant context.'' \198\ The Office agrees, and the final rule
modifies the proposed regulation by providing that such voluminous
productions ``may,'' rather than ``shall,'' constitute bad-faith
conduct.
---------------------------------------------------------------------------
\193\ 86 FR at 66912 (proposed 37 CFR 225.4(f)(2)(i)).
\194\ Copyright Alliance et al. Initial NPRM Comments at 21-22.
\195\ 86 FR 69890, 66912 (proposed 37 CFR 225.4(f)(3)).
\196\ See id. at 66901.
\197\ Copyright Alliance et al. Initial NPRM Comments at 16.
\198\ Id.
---------------------------------------------------------------------------
5. Depositions
Depositions will not be permitted in CCB proceedings. Testimony is
primarily submitted in written form and oral testimony is presented
only at a hearing conducted before the CCB.\199\ Commenters asked the
Office to make the prohibition of depositions explicit \200\ and the
final rule does so.
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\199\ 17 U.S.C. 1506(o)(2), (p).
\200\ MPA & RIAA Initial NPRM Comments at 7; Copyright Alliance
et al. Initial NPRM Comments at 15; cf. Amazon Initial NPRM Comments
at 5-6, add. at A-15 (noting that ``depositions are generally not
permitted in small claims courts around the country and are a costly
discovery tool'' and requesting that the Office clarify that they
only are permitted ``upon a showing of good cause'').
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6. Expert Disclosure
The statute provides that ``in exceptional cases,'' the CCB may
permit ``expert witness testimony . . . for good cause shown.'' \201\
The proposed rule adds that ``[t]he use of expert witnesses in
proceedings before the Board is highly disfavored and requests shall be
rarely granted'' and provides that the CCB will grant a request ``only
in exceptional circumstances and upon a showing that the case cannot
fairly proceed without the use of the expert.'' \202\ Some commenters
proposed requiring parties to disclose any intent to use an expert
witness at an early stage in the proceeding, whether in the claim or
before the response.\203\ If adopted, the proposal would let parties
weigh the costs of retaining rebuttal experts at a
[[Page 30072]]
stage when opting out or voluntarily dismissing would still be viable
alternatives. However, the Office considers the proposed requirement
impractical. The CCB will rarely, if ever, allow expert testimony. In
all likelihood, parties will rarely request it, considering the typical
costs of experts compared to the maximum damages recoverable.\204\
Moreover, a party often will not know if it needs an expert until it
sees the other side's evidence. Accordingly, although expert testimony
will rarely be allowed, the intention to request it need not be
disclosed at the beginning of CCB proceedings.
---------------------------------------------------------------------------
\201\ 17 U.S.C. 1506(o)(2).
\202\ 86 FR 69890, 69909 (proposed 37 CFR 225.1(e)).
\203\ MPA & RIAA Initial NPRM Comments at 7-8; Copyright
Alliance et al. Initial NPRM Comments at 21.
\204\ See generally Fharmacy Records v. Nassar, 729 F. Supp. 2d
865, 874, 879 (E.D. Mich. 2010) (awarding defendant costs of $10,325
for expert musicologist and $18,142.57 for computer forensics expert
in copyright case), aff'd, 465 F. App'x 448 (6th Cir. 2012).
---------------------------------------------------------------------------
7. Written Testimony
Commenters requested that the CCB provide parties with
``instructions about how to draft written testimony and what should be
included.'' \205\ The Office intends to provide such guidance in the
CCB Handbook, and takes note of the specific topics that commenters
suggested for inclusion.
---------------------------------------------------------------------------
\205\ Copyright Alliance et al. Initial NPRM Comments at 22; see
also Authors Guild Initial NPRM Comments at 3 (``The proposed
Handbook should explain exactly what should be provided in the
written testimony, including documentary evidence and witness and
party statements, in addition to providing lists of topics, sample
documents, and forms.'').
---------------------------------------------------------------------------
The Office is making two changes to the proposed regulations on
written testimony to make the process more accessible to pro se
parties. First, parties are provided 15 additional days (45 total) to
file response testimony and 7 additional days (21 total) to file reply
testimony.\206\ Second, the Office is streamlining the proposed
regulations by omitting certain provisions regarding witness
sponsorship of documentary evidence,\207\ as these are overly
burdensome and other regulatory provisions suffice to ensure
authentication.\208\ The Office will also be creating forms that will
make the submission of materials with party statements easier.
---------------------------------------------------------------------------
\206\ See 86 FR 69890, 69906 (proposed 37 CFR 222.14(a)).
\207\ See id. (proposed 37 CFR 222.14(b)(1)(ii), (b)(2)(iv)).
\208\ See id. at 69909 (proposed 37 CFR 225.1(a)(1)).
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E. Hearings
Noting that the statute appears to require virtual hearings,
although permitting ``alternative arrangements'' for submission of
physical or other nontestimonial evidence that cannot be presented
virtually,\209\ the Office solicited comments on whether the statute
can be read to allow an in-person hearing when all parties request it
and can attend.\210\ Two commenters opined that the statute does not
appear to permit such hearings, beyond the limited situations it
specifically describes.\211\ Another commenter ``agree[d] with the
Office's proposal that in-person hearings be permitted if requested by
all parties,'' but did not cite any statutory authority for this
position.\212\ The final rule provides for virtual proceedings, except
as expressly described in the statute. Recognizing that the CCB is a
new tribunal which has not yet held a hearing, the Office does not take
a position at this time regarding whether, in exceptional
circumstances, additional in-person proceedings may be permissible.
---------------------------------------------------------------------------
\209\ 17 U.S.C. 1506(c)(2).
\210\ 86 FR 69890, 69902-03.
\211\ Copyright Alliance et al. Initial NPRM Comments at 22;
SFWA Reply NPRM Comments at 6.
\212\ AIPLA Initial NPRM Comments at 4.
---------------------------------------------------------------------------
The proposed rule stated that ``[c]onferences may be held by one or
more Officers.'' \213\ At the same time, the Office solicited comments
in the NPRM on whether it is authorized to have Copyright Claims
Attorneys conduct non-substantive hearings to streamline the
proceedings.\214\ Two comments addressed the point. AIPLA commented
that it believes such a procedure is permissible, and added, ``[a]ll
parties should retain the right to have any given conference held by an
Officer.'' \215\ The Copyright Alliance et al. commented ``that there
should be a presumption that those conferences will be held by
Officers, however Copyright Claims Attorneys should be permitted to
hold those conferences if deemed necessary to ensure that proceedings
are `streamlined.' '' \216\
---------------------------------------------------------------------------
\213\ 86 FR 69890, 69905 (proposed 37 CFR 222.10(b)(2), (b)(8),
(c)).
\214\ Id. at 69896.
\215\ AIPLA Initial NPRM Comments at 3.
\216\ Copyright Alliance et al. Initial NPRM Comments at 18.
---------------------------------------------------------------------------
The Office makes no changes to the final rule with respect to this
subject. It concludes that the statute clearly describes the duties of
the Copyright Claims Officers and those of the Copyright Claims
Attorneys.\217\ Among other duties, Officers shall: (1) Determine the
claims and defenses asserted by the parties; (2) rule on ``scheduling,
discovery, evidentiary, and other matters''; (3) conduct hearings and
conferences; and (4) make damage awards.\218\ At the same time, the
CASE Act authorizes the Attorneys ``[t]o provide assistance to the
Copyright Claims Officers in the administration of the duties of those
Officers under'' the statute and ``[t]o provide assistance to members
of the public with respect to the procedures and requirements of the
[CCB].'' \219\ The Office is of the view that 17 U.S.C. 1503(a)(2)(A)
and (B) provide flexibility as to how the Attorneys may assist the
Officers and communicate with the public, including parties, regarding
the ``procedures and requirements'' of the CCB. For example, the
Attorneys may communicate with the parties regarding administrative,
scheduling, or logistical matters, allowing such nonsubstantive matters
to be resolved more quickly. If the Attorney's communication with the
parties reveals an unresolved substantive issue or dispute, the issue
will be referred to an Officer and a conference may be scheduled.
---------------------------------------------------------------------------
\217\ 17 U.S.C. 1503(a)(1), (a)(2).
\218\ Id. at 1503(a)(1)(A), (C), (E), (G)(i).
\219\ Id. at 1503(a)(2)(A)-(B).
---------------------------------------------------------------------------
The proposed regulation would have barred post-hearing submissions
of additional testimony or evidence ``unless at the Board's specific
request.'' \220\ The Copyright Alliance et al. proposed allowing such
submissions with leave of the CCB.\221\ The Office agrees and adopts
the proposed amendment.
---------------------------------------------------------------------------
\220\ 86 FR 69890, 69907 (proposed 37 CFR 222.15(f)).
\221\ Copyright Alliance et al. Initial NPRM Comments at 23.
---------------------------------------------------------------------------
The Authors Guild argued against requiring pro se parties to
conduct direct or cross examinations of testifying witnesses and
suggested that the CCB conduct the questioning of witnesses
instead.\222\ The Office notes that no parties are required to ask
questions of witnesses, but it does not think parties should be denied
this option just because they appear pro se. As described earlier, the
Office envisions that any questioning of witnesses during hearings will
be significantly less formal than in Federal court proceedings. Pro se
parties will not be expected to master, or indeed have any familiarity
with, evidentiary rules concerning the questioning of witnesses.
Officers also will take an active role in managing hearings and will
have the ability to ask their own questions of witnesses to ensure that
testimony is fully developed.
---------------------------------------------------------------------------
\222\ Authors Guild Initial NPRM Comments at 3.
---------------------------------------------------------------------------
The Copyright Alliance et al. criticized the proposed rule's
references to direct examination, cross-examination, redirect
examination, and witness impeachment as inappropriately reliant on
Federal
[[Page 30073]]
procedures and too procedurally complex for pro se parties.\223\ The
Office is modifying the final rule to clarify that CCB hearings will
not mirror Federal courtroom practices and procedures. For example,
questioning during hearings will be significantly less formal and
regimented than Federal hearings and trials. The CCB Handbook will also
greatly help CCB participants through the process. In addition, unlike
in Federal court, Copyright Claims Officers will guide participants
through the process of a hearing, including how to submit witness
testimony. The final rule therefore provides, using less legal jargon,
that parties may ask questions of witnesses, and eliminates the
provision on formal objections to evidence during a hearing. Due to the
CCB proceeding's nature and the likelihood that there may be pro se
participants on one or both sides, the Office does not believe that
such a process is necessary and might be disruptive to proceedings or
allow represented participants to take advantage of pro se
participants.
---------------------------------------------------------------------------
\223\ Copyright Alliance et al. Initial NPRM Comments at 8.
---------------------------------------------------------------------------
AIPLA commented, ``[a]bsent justification, parties should not be
permitted in CCB proceedings to rely on documents in their case-in-
chief that they failed to produce during discovery. Even if not
produced in discovery, such documents should be permitted in rebuttal,
consistent with federal district court practice.'' \224\ The comment is
generally consistent with the proposed rule.\225\ However, to
streamline the procedures, minimize legalese, and accommodate parties
who may not be familiar with formal rules of evidence, the Office is
modifying the final rule to provide in more direct terms that exhibits
not submitted in written testimony may not be used at a hearing without
leave of the CCB.
---------------------------------------------------------------------------
\224\ AIPLA Initial NPRM Comments at 4.
\225\ See 86 FR 69890, 69909 (proposed rule 37 CFR 222.19(e))
(``Exhibits not submitted as part of written testimony may be shown
to a witness on cross-examination or redirect examination only for
the purposes of impeachment or rehabilitation. Copies of such
exhibits must be distributed to the Board and other parties before
being shown, unless the Board directs otherwise.'').
---------------------------------------------------------------------------
F. Post-Determination Review
The proposed rule included procedures related to the two levels of
review of final CCB determinations described in the statute:
Reconsideration by the CCB and review by the Register of
Copyrights.\226\ The Office received no comments related to requests
for reconsideration, and implements those regulations in the form
proposed in the NPRM.
---------------------------------------------------------------------------
\226\ Id. at 69915 (proposed 37 CFR pts. 230, 231); see 17
U.S.C. 1506(w)-(x).
---------------------------------------------------------------------------
The statute provides that a party may request review by the
Register of Copyrights if the CCB denies that party's request for
reconsideration.\227\ It does not expressly state whether the non-
requesting party, if it loses the reconsideration request, may request
the Register's review.\228\ The NPRM did not provide a process for the
non-requesting party to seek the Register's review after
reconsideration. The Office invited comment on this issue.\229\
---------------------------------------------------------------------------
\227\ 17 U.S.C. 1506(x).
\228\ Id.; see also 86 FR 69890, 69903.
\229\ 86 FR 69890, 69903.
---------------------------------------------------------------------------
Two commenters responded.\230\ AIPLA approved of not allowing such
review, stating, ``[o]ne purpose of the Act is to provide a simple and
speedy process. . . . [P]ost-determination proceedings should be kept
to a minimum. The best way to give effect to the statute as written,
while keeping post-determination proceedings to a minimum, is to
restrict the Register's review to a party losing a request for
reconsideration.'' \231\ On the other hand, Sergey Vernyuk questioned
the fairness in denying the ability to seek the Register's review to a
party who initially received a favorable determination only to have it
reversed on reconsideration.\232\ He proposed that a non-requesting
party that loses on reconsideration could seek reconsideration itself,
``and if that second reconsideration request is denied . . . then at
that point both parties had sought reconsideration and can thus seek
the Register's review.'' \233\
---------------------------------------------------------------------------
\230\ Sergey Vernyuk Initial NPRM Comments at 2; AIPLA Initial
NPRM Comments at 5.
\231\ AIPLA Initial NPRM Comments at 5.
\232\ Sergey Vernyuk Initial NPRM Comments at 2.
\233\ Id.
---------------------------------------------------------------------------
The Office agrees that it would be unfair if a party who had
initially prevailed, but subsequently finds itself on the losing side
after a request for reconsideration, had no recourse. Under the
statute, the CCB's determination after granting reconsideration
constitutes an ``amended final determination.'' \234\ The Office
concludes that the party that opposed the initial request for
reconsideration may request reconsideration or amendment by the CCB of
the amended final determination.\235\ If that party is unsuccessful
before the CCB, it may then request review by the Register.
---------------------------------------------------------------------------
\234\ 17 U.S.C. 1506(w).
\235\ Cf. id. at 1506(x) (providing that when the Register
reviews a final determination and remands it to the CCB for
reconsideration ``and for issuance of an amended final
determination. Such amended final determination shall not be subject
to further consideration or review'' by the CCB or the Register).
---------------------------------------------------------------------------
AIPLA further commented that ``the proposed filing fee of $300 is
appropriate for Register review. The amount is both affordable and high
enough to discourage prolonging proceedings.'' \236\ There were no
contrary comments. The Office is maintaining the proposed fee.
---------------------------------------------------------------------------
\236\ AIPLA Initial NPRM Comments at 5.
---------------------------------------------------------------------------
G. Additional Considerations
1. Data Collection
Engine recommended that the Office collect and make available data
sets, in a transparent and anonymized fashion, including statistics on
the number of cases filed, defaulting respondents, opt-outs, waivers of
service of process, ``how often defaulting respondents later try to
correct their default and either opt-out or participate,'' and ``the
type and amount of damages awards made.'' \237\ Engine asserted that
collecting data could assist the Office in developing procedures that
are fair to all parties and that prevent abuse, including enabling the
Office to identify which, if any, categories of respondents may be
misusing the default process.\238\ As one of the four overarching goals
in Copyright Office's recently released Strategic Plan 2022-2026, the
Office intends to ``enhance the development and use of data as an
evidentiary foundation for policymaking and to improve measurements of
organizational performance, and will make more data easily accessible
to both internal and external audiences.'' \239\ Consistent with this
goal, the CCB will be tracking data relevant to its operations
internally and, while the scope of that data collection is still
undetermined, the Office will ultimately issue a public report on the
CCB that will likely include data related to its operations.
---------------------------------------------------------------------------
\237\ Engine Initial NPRM Comments at 8.
\238\ Id. at 5.
\239\ U.S. Copyright Office, Strategic Plan 2022-2026, 9 (Jan.
2022), <a href="https://www.copyright.gov/reports/strategic-plan/USCO-strategic2022-2026.pdf">https://www.copyright.gov/reports/strategic-plan/USCO-strategic2022-2026.pdf</a>.
---------------------------------------------------------------------------
2. Other Issues
The Copyright Alliance et al. pointed out that the proposed
regulation inconsistently referred to ``attorneys'' as either included
in, or distinct from, ``parties.'' \240\ The Office has clarified
references in the final rule, made other modest revisions for the
purpose of
[[Page 30074]]
clarity, and corrected typographical errors.
---------------------------------------------------------------------------
\240\ Copyright Alliance et al. Initial NPRM Comments at 18.
Under the CASE Act, ``party'' is defined to mean both a party and a
party's attorney, as applicable. .'' 17 U.S.C. 1501(3).
---------------------------------------------------------------------------
H. Smaller Claims
The CASE Act provides that the Register shall establish regulations
to provide for the determination of ``smaller claims,'' i.e., claims in
which total damages sought do not exceed $5,000.\241\ Such smaller
claims must be determined by not fewer than one Copyright Claims
Officer.\242\ The Office issued proposed rules governing smaller claims
in its NPRM, including provisions limiting discovery to ``standard
interrogatories, requests for admission, and the standard production of
document requests provided by the CCB,'' prohibiting expert testimony,
and prohibiting hearings.\243\ The Office also asked for comments
addressing whether the proposed rule struck ``a proper balance between
streamlining the [CCB's] process while providing the procedural
protections available to other claims before the CCB.'' \244\
---------------------------------------------------------------------------
\241\ 17 U.S.C. 1506(z).
\242\ Id.
\243\ 86 FR 69890, 69898-99, 69912-13 (Dec. 8, 2021).
\244\ Id. at 69898-99.
---------------------------------------------------------------------------
SFWA supported the proposed rule.\245\ MPA and RIAA and the
Copyright Alliance et al. advocated for further streamlined procedures,
especially for eliminating standard discovery in smaller claims
proceedings.\246\ MPA and RIAA stated that ``permitting even the
standard types of discovery in these `smaller' cases is too much; the
costs involved with propounding, responding to, and potentially
disputing discovery matters through motion practice, would quickly
exceed the maximum $5,000 in dispute.'' \247\ The Copyright Alliance et
al. suggested that ``[e]liminating discovery would make the [smaller]
claims process much more attractive to claimants seeking damages awards
of less than $5,000 and to respondents who would be much more amenable
to participating in the small claims process (and not opting out) if
there was no discovery.'' \248\ The Copyright Alliance et al., however,
would allow for discovery in smaller claims proceedings ``upon a
showing of good cause or where the CCB [O]fficers need to ask questions
to complete the record and make a determination,'' though it would
limit this discovery to ``only a few specific items that are relevant,
probative, and likely to impact the outcome of the case.'' \249\
---------------------------------------------------------------------------
\245\ SFWA Reply NPRM Comments at 5.
\246\ MPA & RIAA Initial NPRM Comments at 3-5; Copyright
Alliance et al. Initial NPRM Comments at 12-13.
\247\ MPA & RIAA Initial NPRM Comments at 4.
\248\ Copyright Alliance et al. Initial NPRM Comments at 12.
\249\ Id. at 12.
---------------------------------------------------------------------------
On review, the Office agrees that a more expedited and less formal
process is appropriate for smaller claims. The final rule streamlines
the smaller claims process by using written submissions and informal
conferences to minimize party burdens and by allowing the presiding
Officer to take a more active role in case management. Discovery will
be significantly limited, if allowed at all. The extent of any
discovery will typically be addressed at an initial conference, which
will take the place of the pre-discovery conference held in non-smaller
claims proceedings. The smaller claims proceeding will also allow for a
party position statement, a merits conference to discuss the evidence
and the issues presented, a tentative finding of facts by the presiding
Officer, the opportunity for parties to respond to those findings, and
a final determination. Additional details about these steps are
provided below.
The initial conference will allow a presiding Officer to discuss
the claims and defenses with the parties and to determine whether any
discovery beyond the evidence appended to the claim and response should
be required. Consistent with the Copyright Alliance et al.'s
suggestion,\250\ any request for the production of information or
documents that the presiding Officer may approve will be narrowly
tailored to the issues raised in the proceeding and highly likely to
lead to production of relevant evidence. In addition, the presiding
Officer will ensure that such request will not result in an undue
burden on any party. Parties will provide the requested evidence to
each other, along with any additional evidence they intend to use to
support their claims and defenses.
---------------------------------------------------------------------------
\250\ See id. (stating that discovery, when permitted, ``should
be limited to only a few specific items that are relevant,
probative, and likely to impact the outcome of the case'').
---------------------------------------------------------------------------
After the exchange of evidence between the parties, each party
shall file the evidence it wishes the presiding Officer to consider and
may submit a written statement outlining its position, as well as
statements from witnesses. These written statements are the only
submissions allowed--no responsive statements will be permitted.
Further, parties may not submit expert testimony for consideration. The
presiding Officer will then hold a merits conference, at which the
parties and the Officer will fully discuss the claims, counterclaims,
defenses, and evidence. Each party will have an opportunity to respond
to the evidence and any other submissions provided by the other party.
The Officer may also hear from and question any witnesses present at
the conference. After this, the Officer will issue preliminary findings
of fact to which each party will have an opportunity to respond. The
Officer will have the discretion to hold another conference, if
necessary. After considering any responses to the preliminary findings
of fact, the Officer will issue a final determination.
In addition to these important changes, the final rule clarifies
procedures related to the timing of the smaller claims election,
requesting a smaller claims proceeding, and the content of the initial
and second notice in a smaller claims proceeding. The Copyright
Alliance et al. sought clarification about the consequences of a
smaller claims respondent filing a counterclaim for damages above the
smaller claims limit.\251\ Under the final rule, a counterclaim for
damages above the smaller claims limit is not permitted. A respondent
who is not content with a counterclaim limited to $5,000 may decline to
use the smaller claims track and either use the standard proceeding by
bringing a separate claim against the original claimant or bring the
claim to Federal court.
---------------------------------------------------------------------------
\251\ Id. at 20.
---------------------------------------------------------------------------
Further, the rule makes clear that a claimant may change its
election from proceeding as a smaller claim proceeding to a standard
proceeding (or from a standard proceeding to a smaller claim
proceeding) before service of the initial notice. If the claimant makes
such an election, it must request an updated initial notice before
serving the notice on a respondent.\252\
---------------------------------------------------------------------------
\252\ The Copyright Alliance et al. stated that ``section
1506(q) of the Copyright Act gives the claimant the ability to
change its mind, dismiss the claim without prejudice, and refile the
claim under the procedures for standard small claims if it decides
that discovery is necessary.'' Id. at 12. The Office disagrees with
any suggestion that 17 U.S.C. 1506(q) provides an independent basis
for a claimant to voluntarily dismiss a claim after a respondent
files a response. Section 1506(q) only allows a claimant to
voluntarily dismiss a claim before a respondent files a response.
See 17 U.S.C. 1506(q). Section 222.17(c) of the regulations governs
voluntary dismissal of claims after a response is filed and only
allows for voluntary dismissal without prejudice when either the CCB
determines that such dismissal would be in the interests of justice
or if the parties agree in writing.
---------------------------------------------------------------------------
Finally, the final rule clarifies that when a claimant elects a
smaller claims proceeding, the initial notice and second notice to the
respondent will differ in some respects from the notices issued with
standard claims. Smaller claims notices will indicate that the
[[Page 30075]]
claim is a smaller claim and provide a brief explanation of the
procedural differences between smaller claims and standard claims.
While the Office intended to provide such information under its
authority to ``[i]nclude any additional information'' in the initial or
second notices,\253\ it makes sense to make this requirement explicit
in its regulations.
---------------------------------------------------------------------------
\253\ 37 CFR 222.3(a)(16), 222.4(a)(16).
---------------------------------------------------------------------------
The Office believes that its updated, streamlined procedure for
smaller claims substantially addresses commenters' concerns, will
provide a clear alternative to both the CCB's standard proceeding and
to Federal litigation, and will ultimately incentivize claimants to use
the CCB's smaller claims procedures where appropriate. While this
updated rule is a logical outgrowth of the NOI, NPRM, and public
comments, the Office is offering the public the opportunity to submit
additional comments on the smaller claims final regulations so it can
determine whether they strike the proper balance between streamlining
the smaller claims process and providing sufficient procedural
protections to all parties.
List of Subjects
37 CFR Part 201
Copyright, General provisions.
37 CFR Part 220
Claims, Copyright, General.
37 CFR Parts 222, 224, and 225 Through 233
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, to read as follows:
Subchapter A--Copyright Office and Procedures
PART 201--GENERAL PROVISIONS
0
1. The general authority citation for part 201 continues to read as
follows:
Authority: 17 U.S.C. 702.
* * * * *
0
2. In Sec. 201.3, in table 4 to paragraph (g), add paragraph (g)(3) to
read as follows:
Sec. 201.3 Fees for registration, recordation, and related services,
special services, and services performed by the Licensing Section and
the Copyright Claims Board.
* * * * *
(g) * * *
Table 4 to Paragraph (g)
------------------------------------------------------------------------
Copyright claims board fees Fees ($)
------------------------------------------------------------------------
* * * * *
(3) Filing fee for review of a final CCB determination by the 300
Register....................................................
------------------------------------------------------------------------
Subchapter B--Copyright Claims Board and Procedures
0
3. Revise part 220 to read as follows:
PART 220--
GENERAL PROVISIONS
Sec.
220.1 Definitions.
220.2 Authority and functions.
220.3 Copyright Claims Board Handbook.
220.4 Timing.
220.5 Requests, responses, and written submissions.
Authority: 17 U.S.C. 702, 1510.
Sec. 220.1 Definitions.
For purposes of this subchapter:
(a) Active proceeding denotes a claim in which the claimant has
filed proof of service and the respondent has not, within the sixty day
opt-out period, submitted an opt-out notice to the Copyright Claims
Board (Board).
(b) Authorized representative means a person, other than legal
counsel, who is authorized under this subchapter to represent a party
before the Board.
(c) Bad-faith conduct occurs when a party pursues a claim,
counterclaim, or defense for a harassing or other improper purpose, or
without a reasonable basis in law or fact. Such conduct includes any
actions taken in support of a claim, counterclaim, or defense and may
occur at any point during a proceeding before the Board, including
before a proceeding becomes an active proceeding.
(d) Default determination is a final determination issued as part
of the default procedures set forth in 17 U.S.C. 1506(u) when the
respondent does not participate in those procedures.
(e) Final determination is a decision that concludes an active
proceeding before the Board and is binding only on the participating
parties. A final determination generally assesses the merits of the
claims in the proceeding, except when issued to dismiss a claimant's
claims for failure to prosecute.
(f) 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.
(g) Second notice means the notice of a proceeding sent by the
Board as described in 17 U.S.C. 1506(h).
(h) Standard interrogatories are written questions provided by the
Board that a party in an active proceeding must answer as part of
discovery.
(i) Standard requests for the production of documents are written
requests provided by the Board requiring a party to provide documents,
other information, or tangible evidence as part of discovery in an
active proceeding.
Sec. 220.2 Authority and functions.
The Copyright Claims Board (Board) is an alternative forum to
Federal court in which parties may voluntarily seek to resolve certain
copyright-related claims regarding any category of copyrighted work, as
provided in chapter 15 of title 17 of the United States Code. The
Board's proceedings are governed by title 17 of the United States Code
and the regulations in this subchapter.
Sec. 220.3 Copyright Claims Board Handbook.
The Copyright Claims Board may issue a handbook explaining the
Board's practices and procedures. The handbook may be viewed on,
downloaded from, or printed from the Board's website. The handbook will
not override any existing statute or regulation.
Sec. 220.4 Timing.
When the start or end date for calculating any deadline set forth
in this subchapter falls on a weekend or a Federal holiday, the start
or end date shall be extended to the next Federal workday. Any document
subject to a deadline must be either submitted to the Board's
electronic filing system (eCCB) by 11:59 p.m. Eastern Time on the date
of the deadline or dispatched by the date of the deadline.
Sec. 220.5 Requests, responses, and written submissions.
(a) Requests and responses submitted through fillable form. Unless
this subchapter provides otherwise or the Board orders otherwise,
documents listed under this subsection shall be submitted through a
fillable form on eCCB and shall comply with the following requirements:
(1) Tier one requests and responses. Requests and responses to
requests which are identified under this subsection shall be filed
through the fillable form on eCCB and be limited to 4,000 characters.
Any party may submit a response to a request identified in this
subsection within seven days of the filing of the request. The Board
may deny such a request before the time to
[[Page 30076]]
submit a response expires, but the Board will not grant a request
before the time to submit a response expires, unless the request is
consented to by all parties. There shall be no replies from a party
that submits a request, absent leave of the Board. Tier one requests
and responses shall include:
(i) Requests to amend a scheduling order and responses to such
requests under Sec. 222.11(d)(2) of this subchapter;
(ii) Requests for a general conference or discovery conference
(those not involving a dispute) and responses to such requests under
Sec. 222.11(c), Sec. 225.1(c), or Sec. 226.4(g) of this subchapter;
(iii) Statements as to damages under Sec. 222.15(b)(3) of this
subchapter;
(iv) Requests for a hearing under Sec. 222.16(c) of this
subchapter;
(v) Requests to withdraw claims or counterclaims under Sec. 222.17
of this subchapter;
(vi) Requests for a settlement conference and responses to such
requests under Sec. 222.18(b)(2) of this subchapter;
(vii) Requests to stay proceedings for settlement discussions or
requests to extend the stay of proceedings for settlement discussions,
and responses to such requests, under Sec. 222.18(f) of this
subchapter;
(viii) Joint requests for a dismissal under Sec. 222.18(g) of this
subchapter;
(ix) Requests for the standard protective order under Sec.
222.19(a) of this subchapter;
(x) Requests to remove a confidentiality designation and responses
to such requests under Sec. 222.19(a)(5) of this subchapter;
(xi) Requests for a custom protective order under Sec. 222.19(b)
of this subchapter;
(xii) Requests to use not previously submitted evidence at a
hearing and responses to such requests under Sec. 222.20(d) of this
subchapter;
(xiii) Requests to modify the discovery schedule and responses to
such requests under Sec. 225.1(b) of this subchapter;
(xiv) Requests to withhold additional documents as privileged and
responses to such requests under Sec. 225.3(g) of this subchapter;
(xv) Requests to issue a notice regarding a missed deadline or
requirement and responses to such requests under Sec. 227.1(a) or
Sec. 228.2(a) of this subchapter;
(xvi) Responses to a Board-issued notice regarding a missed
deadline in the default context under Sec. 227.1(c) of this
subchapter;
(xvii) Responses to a Board-issued notice regarding a missed
deadline in the failure to prosecute context under Sec. 228.2(c)(2) of
this subchapter;
(xviii) Requests to designate an official reporter for a hearing
and responses to such requests under Sec. 229.1(d) of this subchapter;
(xix) Requests to withdraw representation under Sec. 232.5 of this
subchapter; and
(xx) Requests not otherwise covered under Sec. 220.5(d).
(2) Tier two requests and responses. Requests and responses to
requests which are identified under this subsection shall be filed
through the fillable form on eCCB and be limited to 10,000 characters,
not including any permitted attachments. Any party may file a response
within 14 days of the filing of the request or the order to show cause.
The Board may deny a request before the time to submit a response
expires, but the Board will not grant a request before the time to
submit a response expires, unless the request is consented to by all
parties. There shall be no replies from a party that submits a request,
absent leave of the Board. Tier two requests and responses shall
include:
(i) Requests to amend pleadings and responses to such requests
under Sec. 222.12(d)(2) of this subchapter;
(ii) Requests to consolidate and responses to such requests under
Sec. 222.13(c) of this subchapter;
(iii) Requests to intervene by a third party and responses to such
requests under Sec. 222.14(c) of this subchapter;
(iv) Requests to dismiss for unsuitability and responses to such
requests under Sec. 224.2(c) of this subchapter;
(v) Requests for additional discovery under Sec. 225.4(a)(4) of
this subchapter. Such requests must enter each specific additional
discovery request (e.g., the specific interrogatories, document
requests or requests for admission sought) within the fillable form;
(vi) Responses to requests for additional discovery under Sec.
225.4(a)(4) of this subchapter;
(vii) Requests to serve requests for admission and responses to
requests to serve requests for admission under Sec. 225.4(c) of this
subchapter;
(viii) Requests to be able to present an expert witness and
responses to such requests under Sec. 225.4(b)(2) of this subchapter;
(ix) Requests for a conference to resolve a discovery dispute under
Sec. 225.5(b) of this subchapter. Such requests must attach any
inadequate interrogatory responses or inadequate request for admission
responses and may attach communications related to the discovery
dispute or documents specifically discussed in the request related to
the inadequacy of the document production;
(x) Responses to requests for a conference to resolve a discovery
dispute under Sec. 225.5(b) of this subchapter. Such responses may
attach communications related to the discovery dispute or produced
documents specifically pertinent to the dispute;
(xi) Requests for sanctions and responses to such requests under
Sec. 225.5(e)(1) of this subchapter;
(xii) Requests for a third-party to attend a hearing and responses
to such requests under Sec. 229.1(c) of this subchapter;
(xiii) Responses to an order to show cause regarding bad-faith
conduct under Sec. 232.3(b)(1) of this subchapter;
(xiv) Requests for a conference related to alleged bad-faith
conduct and responses to such requests under Sec. 232.3(b)(2) of this
subchapter;
(xv) Responses to an order to show cause regarding a pattern of
bad-faith conduct under Sec. 232.4(b)(1) of this subchapter; and
(xvi) Requests for a conference related to a pattern of alleged
bad-faith conduct and responses to such requests under Sec.
232.4(b)(2) of this subchapter.
(b) Tier three: Uploaded written submissions. (1) Unless the Board
orders otherwise, written submissions not identified as tier one or
tier two requests and responses under this section shall be uploaded to
eCCB (with the exception of settlement statements under Sec. 222.18(d)
of this subchapter), shall comply with the applicable page limitations
and response times set forth in this subchapter for such documents, and
shall--
(i) Include a title;
(ii) Include a caption;
(iii) Be typewritten;
(iv) Be double-spaced, except for headings, footnotes, or block
quotations, which may be single-spaced;
(v) Be in 12-point type or larger; and
(vi) Include the typed or handwritten signature of the party
submitting the document.
(2) Documents considered tier three submissions shall include:
(i) Direct party statements and response party statements under
Sec. 222.15(b)(3) of this subchapter;
(ii) Reply party statements under Sec. 222.15(c)(3) of this
subchapter;
(iii) Settlement position statements under Sec. 222.18(d) of this
subchapter;
(iv) Requests to reconsider determinations to dismiss for
unsuitability and responses to such requests under Sec. 224.2(b)(2) of
this subchapter;
[[Page 30077]]
(v) Smaller claims position statements under Sec. 226.4(d)(2)(ii)
of this subchapter;
(vi) Responses to smaller claims Board-proposed findings of fact
under Sec. 226.4(e)(1);
(vii) Claimant written direct party statement in support of default
under Sec. 227.2(a) of this subchapter;
(viii) Claimant response to Board determination after default that
evidence is insufficient to find for claimant under Sec. 227.3(a)(2)
of this subchapter;
(ix) Response to notice of proposed default determination under
Sec. 227.4(a) of this subchapter;
(x) Requests to vacate a default determination and responses to
such requests under Sec. 227.5(c) of this subchapter;
(xi) Request to vacate a dismissal for failure to prosecute and
responses to such requests under Sec. 228.2(e) of this subchapter;
(xii) Requests for reconsideration under Sec. 230.2 of this
subchapter;
(xiii) Responses to requests for reconsideration under Sec. 230.3
of this subchapter;
(xiv) Requests for review by the Register of Copyrights under Sec.
231.2 of this subchapter; and
(xv) Responses to requests for review by the Register of Copyrights
under Sec. 231.3 of this subchapter.
(c) Replies. Other than written testimony submitted pursuant to
Sec. 222.15 of this subchapter, replies to any responses to requests
or written submissions shall not be permitted, unless otherwise
provided for in this subchapter or permitted by the Board.
(d) Other requests and responses. Any requests to the Board not
specified in this part can be submitted by filing a request not
otherwise covered under paragraph (a)(1) of this section. Depending on
the nature of the request, the Board shall advise the parties whether
the request is permitted and, if so, if and by when the response must
be filed.
PART 222--PROCEEDINGS
0
4. The authority citation for part 222 continues to read as follows:
Authority: 17 U.S.C. 702, 1510.
0
5. Add Sec. 222.1 to read as follows:
Sec. 222.1 Applicability of the Federal Rules of Civil Procedure and
Federal Rules of Evidence.
The rules of procedure and evidence governing proceedings before
the Copyright Claims Board (Board) are set forth in this subchapter.
The Board is not bound by the Federal Rules of Civil Procedure or the
Federal Rules of Evidence.
0
6. In Sec. 222.3:
0
a. In paragraph (a)(15), remove ``and'';
0
b. Redesignate paragraph (a)(16) as paragraph (a)(17); and
0
c. Add a new paragraph (a)(16).
The adition reads as follows:
Sec. 222.3 Initial notice.
(a) * * *
(16) In the case of a proceeding in which the claimant has
requested under Sec. 222.2(c)(1) that the proceeding be conducted as a
smaller claim under 37 CFR part 226, include a statement that the
proceeding shall be conducted as a smaller claim and a brief
explanation of the differences between smaller claims proceedings and
other proceedings before the Board; and
* * * * *
0
7. Amend Sec. 222.4 as follows:
0
a. In paragraph (a)(15), remove ``and'';
0
b. Redesignate paragraph (a)(16) as paragraph (a)(17); and
0
c. Add a new paragraph (a)(16).
The addition reads as follows:
Sec. 222.4 Second notice.
(a) * * *
(16) In the case of a proceeding in which the claimant has
requested under Sec. 222.2(c)(1) that the proceeding be conducted as a
smaller claim under 37 CFR part 226, include a statement that the
proceeding shall be conducted as a smaller claim and a brief
explanation of the differences between smaller claims proceedings and
other proceedings before the Board; and
* * * * *
0
8. Amend Sec. 222.8 by revising paragraph (f) to read as follows:
Sec. 222.8 Response.
* * * * *
(f) Failure to file response. A failure to file a response within
the required timeframe may constitute a default 17 U.S.C. 1506(u), and
the Board may begin proceedings in accordance with part 227 of this
subchapter.
0
9. Amend Sec. 222.10 by revising paragraph (d) to read as follows:
Sec. 222.8 Response to counterclaim.
* * * * *
(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 under part 227 of this subchapter.
0
10. Add Sec. Sec. 222.11 through 222.20 to read as follows:
Sec.
* * * * *
222.11 Scheduling order.
222.12 Amending pleadings.
222.13 Consolidation.
222.14 Additional parties.
222.15 Written testimony on the merits.
222.16 Hearings.
222.17 Withdrawal of claims; dismissal.
222.18 Settlement.
222.19 Protective orders; personally identifiable information.
222.20 Evidence.
Sec. 222.11 Scheduling order.
(a) Timing. Upon receipt of the second payment of the filing fee
set forth in Sec. 201.3(g) of this subchapter and after completion of
the 14-day period specified in the Board's order pursuant to Sec.
222.7, the Board shall issue an initial scheduling order through eCCB,
subject to Sec. 222.7(b)(1).
(b) Content of initial scheduling order. The scheduling order shall
include the dates or deadlines for:
(1) Filing of a response to the claim by the respondent;
(2) A pre-discovery conference with a Copyright Claims Officer
(Officer) to discuss case management, including discovery, and the
possibility of resolving the claims and any counterclaims through
settlement;
(3) Service of responses to standard interrogatories;
(4) Service of documents in response to standard requests for the
production of documents;
(5) Requests for leave to seek additional discovery;
(6) Close of discovery;
(7) A post-discovery conference with an Officer to discuss further
case management, including the possibility of resolving the claims and
any counterclaims through settlement; and
(8) Filing of each party's written testimony and responses,
pursuant to Sec. 222.15.
(c) Conferences. In addition to those identified in paragraph (b)
of this section, the Board may hold additional conferences, at its own
election or at the request of any party. Requests for a conference and
any responses thereto shall follow the procedures set forth in Sec.
220.5(a)(1) of this subchapter. All conferences shall be held
virtually.
(d) Amended scheduling order. The Board may amend the initial
scheduling order--
(1) Upon the clearance of a counterclaim by a Copyright Claims
Attorney pursuant to Sec. 224.1(c)(1) of this subchapter, to add a
deadline for the service of a response by a claimant to a counterclaim
and to amend other previously scheduled dates in the prior scheduling
order;
[[Page 30078]]
(2) Upon request of one or more of the parties to an active
proceeding submitted through eCCB. Requests to amend the scheduling
order and any responses thereto shall follow the procedures set forth
in Sec. 220.5(a)(1) of this subchapter;
(3) As necessary to adjust the schedule for conferences or hearings
or the staying of the proceeding;
(4) As necessary to facilitate settlement pursuant to Sec. 222.18;
or
(5) Upon its own initiative in the interests of maintaining orderly
administration of the Board's docket.
Sec. 222.12 Amending pleadings.
(a) Amendments before service. A claimant who has been notified
pursuant to Sec. 224.1(c)(2) of this subchapter that a claim does not
comply with the applicable statutory and regulatory requirements may
freely amend any part of the claim as part of an amended claim filed
under 17 U.S.C. 1506(f)(1)(B). A claimant who has been notified
pursuant to Sec. 224.1(c)(1) of this subchapter that a claim has been
found to comply with the applicable statutory and regulatory
requirements may freely amend the claim once as a matter of course
prior to service. Any claim that is amended shall be submitted for
compliance review under Sec. 224.1(a) of this subchapter.
(b) Amendments during the opt-out period. A claimant may not amend
a claim during the opt-out period for any respondent.
(c) Amendment of counterclaim before response. A counterclaimant
may freely amend its counterclaim once as a matter of course prior to
filing of the response to the counterclaim. The filing of any amended
counterclaim shall suspend the time for responding to the counterclaim
and the counterclaim shall be submitted for compliance review under
Sec. 224.1(a) of this subchapter. A counterclaimant who has been
notified pursuant to Sec. 224.1(c)(2) of this subchapter that a
counterclaim does not comply with the applicable statutory and
regulatory requirements may amend any part of the counterclaim as part
of an amended counterclaim filed under 17 U.S.C. 1506(f)(2). The
counterclaim respondent shall file a response to the amended
counterclaim within 30 days following compliance review approval of the
amended counterclaim.
(d) All other amendments. In all other cases, a party may amend its
pleading only with the Board's leave. If the Board grants leave, any
amendment shall be submitted for a compliance review under Sec.
224.1(a) of this subchapter.
(1) Time to respond. Unless the Board orders otherwise or as
otherwise covered by this subchapter, any required response to an
amended pleading must be made within the time remaining to respond to
the original pleading or within 30 days after the Board's notification
that the amended pleading is compliant, whichever is later.
(2) Procedure for request for leave to amend. The party seeking
leave to amend must submit a request to the Board setting forth the
reasons why an amended pleading is appropriate. Requests for leave to
amend and any responses thereto shall follow the procedures set forth
in Sec. 220.5(a)(2) of this subchapter.
(3) Standard for granting leave to amend. In determining whether to
grant leave to amend a pleading, the Board shall grant leave if justice
so requires after considering whether any other party will be
prejudiced if the amendment is permitted (including the impact the
amendment might have on a respondent's right to opt out of the
proceeding), whether the proceedings will be unduly delayed if the
amendment is permitted, and whether the basis for the amendment
reasonably should have been known to the amending party before the
pleading was served or during the time period specified in paragraph
(a) of this section, along with any other relevant considerations. If
leave is granted, it shall only be granted regarding the specific
amendments described in the request.
Sec. 222.13 Consolidation.
(a) Consolidation. If a claimant has multiple active proceedings
against the same respondent or that arise out of the same facts and
circumstances, the Board may consolidate the proceedings for purposes
of conducting discovery, submitting evidence to the Board, or holding
hearings. Consolidated proceedings shall remain separate for purposes
of Board determinations and any damages awards.
(b) Timing. The Board may consolidate proceedings at any time upon
its own authority or following consideration of a request by any party,
with reasonable notice and opportunity to be heard provided to all
affected parties.
(c) Procedure. The party seeking consolidation must submit a
request to the Board setting forth the reasons for the request,
requesting a conference with the Board and the parties from each
affected case, and providing the Board with the docket numbers for each
affected proceeding. Requests for consolidation and any responses
thereto shall follow the procedures set forth in Sec. 220.5(a)(2) of
this subchapter.
(d) Standard for granting request. In determining whether to grant
a request to consolidate, the Board shall balance the need for and
benefits of consolidation with the timeliness of the request and
whether any undue prejudice has resulted from the delay in making the
request.
Sec. 222.14 Additional parties.
(a) When applicable. A necessary party is a person or entity whose
absence would prevent the Board from according complete relief among
existing parties, or who claims an interest related to the subject of
the proceeding such that reaching a determination in the proceeding may
impair or impede that person's or entity's ability to protect that
interest as a practical matter, or in whose absence an existing party
would be subject to a substantial risk of incurring double, multiple,
or inconsistent obligations because of that interest.
(b) Failure to join a necessary party. At any time, any party who
believes in good faith that a necessary party has not been joined, and
therefore the case is unsuitable for Board proceedings, may file a
request according to the procedures set forth in Sec. Sec. 220.5(a)(2)
and 224.2(c) of this subchapter. Any party opposing the request may
file a response according to the procedures set forth in Sec. Sec.
220.5(a)(2) and 224.2(c). If the Board determines that a necessary
party has not been joined, it shall dismiss the proceeding without
prejudice as unsuitable for CCB proceedings pursuant to Sec. 224.2.
(c) Intervention of a necessary party. At any time, a third party
seeking to intervene on the ground(s)s that it is a necessary party may
file a request setting forth the reasons for the request and requesting
a conference with the Board. Requests to intervene and any responses
thereto shall follow the procedures set forth in Sec. 220.5(a)(2) of
this subchapter. After evaluating the parties' submissions, the Board
may hold a conference between the parties to the proceeding and the
intervening party to address the request.
(d) Board determination. (1) If the Board determines that the
intervening party is not a necessary party, it shall deny the request
and resume the proceeding, unless all parties agree that the party
should be joined.
(2) If the Board determines that the intervening party is a
necessary party, it shall--
(i) Permit the intervening party to join the proceeding, if no
party indicated
[[Page 30079]]
that it opposed the request to intervene; or
(ii) Dismiss the proceeding without prejudice, if any party
indicated that it opposed the request to intervene.
Sec. 222.15 Written testimony on the merits.
(a) Timing. After the close of discovery and by the times specified
within the scheduling order, any party asserting a claim or
counterclaim shall file written direct testimony in support of that
claim or counterclaim. Any party responding to a claim or counterclaim
shall file written response testimony within 45 days following the date
of service of written direct testimony. Any party who asserted a claim
or counterclaim may file written reply testimony within 21 days
following the date of service of written response testimony. All
written testimony shall be uploaded to eCCB.
(b) Direct and response testimony. Written direct and response
testimony shall consist of documentary evidence and a party statement,
and may include witness statements.
(1) Documentary evidence. (i) Documentary evidence must be
accompanied by a statement that lists each submitted document and
provides a brief description of each document and how it bears on a
claim or counterclaim; and
(ii) Direct or response documentary evidence shall only include
documents that were served on opposing parties pursuant to the
scheduling order, absent leave from the Board, which shall be granted
only for good cause.
(2) Witness statements. A witness statement must--
(i) Be sworn under penalty of perjury by the witness;
(ii) Be detailed as to the substance of the witness's knowledge and
must be organized into numbered paragraphs; and
(iii) Contain only factual information based on the witness's
personal knowledge and may not contain legal argument.
(3) Party statement. A party statement--
(i) Shall set forth the party's position as to the key facts and
damages, as well as any position as to the law;
(ii) Need not have a table of contents or authorities;
(iii) Shall be limited to 12 pages, other than any optional table
of contents or authorities, and shall meet the requirements set forth
in Sec. 220.5(b) of this subchapter;
(iv) For a claimant or counterclaimant seeking damages for
copyright infringement, shall include a statement as to whether the
party is electing to seek statutory damages or actual damages and any
profits. Alternatively, at any stage of the proceedings, either before
or after the submission of written testimony, a claimant or
counterclaimant may submit a statement following the procedures set
forth in Sec. 220.5(a)(1) of this subchapter indicating the election
of the form of damages. This election may be changed at any time up
until final determination by the Board; and
(v) For a respondent or counterclaim respondent, may include a
statement as to whether, if found liable on a claim or counterclaim,
the party would voluntarily agree to an order to cease or mitigate any
unlawful activity. Such an election must be made, or changed if made
earlier, no later than the filing of the respondent's or counterclaim
respondent's party statement, or at a hearing if one is ordered by the
Board. Such an election may be considered in appropriate cases by the
Board in determining an amount of damages, if any, pursuant to 17
U.S.C. 1504. Such a statement will not be considered by the Board in
any way in making its determination as to liability, and shall be
considered only as to damages.
(c) Reply testimony. Written reply testimony must be limited to
addressing or rebutting specific evidence set forth in written response
testimony. Written reply testimony may consist of documentary evidence,
witness statements, and a party statement as set forth in this
paragraph (c).
(1) Documentary evidence. In addition to the requirements of
paragraph (b)(1) of this section, documentary evidence presented by a
party as part of written reply testimony must be limited to documentary
evidence required to contradict or rebut specific evidence that was
presented in an opposing party's written response testimony and shall
not include any documentary evidence previously presented as part of
the submitting party's direct testimony.
(2) Witness statements. In addition to the requirements of
paragraph (b)(2) of this section, a reply witness statement must be
limited to facts not previously included in that witness's prior
statement, and must be limited to facts that contradict or rebut
specific evidence that was presented in an opposing party's written
response testimony.
(3) Party statement. A party statement in reply must be limited to
rebutting or addressing an opposing party's written response testimony
and may not include any discussion of the facts, the law, or damages
that was included in that party's direct party statement. A reply party
statement shall meet the requirements set forth in Sec. 220.5(b) of
this subchapter and must be limited to seven pages.
(d) Certification. All written testimony submitted to the Board
must include a certification by the party submitting such testimony
that it is accurate and truthful.
(e) Request for hearing. Any party may include in a party statement
a request for a hearing on the merits before the Board, consistent with
Sec. 222.16.
(f) No additional filing. Following filing of any written reply
testimony, no further written testimony or evidence may be submitted to
the Board, unless at the specific request of the Board or with the
Board's leave, or as appropriate at a hearing on the merits ordered by
the Board.
Sec. 222.16 Hearings.
(a) Timing. In any action, the Board may hold a hearing following
submission of each party's written direct, response, and reply
testimony if it determines that such a hearing is appropriate or
advisable. The Board may decide to hold a hearing on its own initiative
or after consideration of a request for a hearing from any party.
(b) Virtual hearings. All hearings shall be held virtually and may
be recorded as deemed necessary by the Board.
(c) Requesting a hearing. A request for a hearing on the merits of
a case may be included in a party statement, pursuant to Sec.
222.15(e), but may also be submitted following the procedures set forth
in Sec. 220.5(a)(1) of this subchapter no later than 7 days after the
date by which reply testimony may be submitted under Sec. 222.15(a).
The Board, in its sole discretion, shall choose whether to hold a
hearing, and may elect to hold a hearing absent a request from a party.
(d) Content of request. Any request in a party statement for a
hearing on the merits of a case shall consist of a short statement
providing the reasons why the party believes the request should be
granted.
(e) Scheduling order. When the Board determines that a hearing on
the merits of a case is appropriate, it will issue an amended
scheduling order setting forth the date of the hearing and deadlines
for any additional evidence requested by the Board or for a pre-hearing
conference, if applicable.
(f) Close of evidence. Following a hearing on the merits of a case,
no additional written testimony or evidence may be submitted to the
Board unless at the Board's specific request or with leave of the Board
for good cause shown.
[[Page 30080]]
Sec. 222.17 Withdrawal of claims; dismissal.
(a) General. A party may request to withdraw its own claim or
counterclaim by filing a written request with the Board seeking
withdrawal, and therefore dismissal. Such written request shall consist
of a brief statement seeking dismissal and shall follow the procedures
set forth in Sec. 220.5(a)(1) of this subchapter.
(b) Withdrawal before a response. If the written request is
received before a response to the claim or counterclaim is filed with
the Board, the Board shall dismiss the claim or counterclaim without
prejudice, unless all parties agree in a written stipulation filed with
the Board that the claim or counterclaim shall be dismissed with
prejudice.
(c) Withdrawal after a response. If the written request is received
after a response to the claim or counterclaim is filed with the Board,
the Board shall issue a final determination dismissing the claim or
counterclaim with prejudice, unless the Board determines in the
interests of justice that such dismissal shall be without prejudice or
all parties agree in a written stipulation filed with the Board that
the claim or counterclaim shall be dismissed without prejudice.
(d) Effect of dismissal. Dismissal of a claim or counterclaim under
this section will not affect remaining claims or counterclaims in the
proceeding.
Sec. 222.18 Settlement.
(a) General. The Board shall facilitate voluntary settlement
between the parties of any claims or counterclaims. The appropriateness
of a settlement conference, at a minimum, shall be raised by the Board
at the pre-discovery and post-discovery conferences set forth in Sec.
222.11(b).
(b) Requesting a settlement conference--(1) Timing. At any point in
an active proceeding, some or all of the parties may jointly request a
conference with an Officer to facilitate settlement discussions.
(2) Form and content of request. The request can be made orally at
any Board conference or it can be made in writing. If made in writing,
the request shall consist of a brief statement requesting a settlement
conference and indicating which parties join in the request. Parties
may also include a request to stay the proceedings while settlement
discussions are ongoing. Granting a request for a stay shall be at the
Board's discretion. Requests for a settlement conference and any
responses thereto shall follow the procedures set forth in Sec.
220.5(a)(1) of this subchapter.
(c) Scheduling settlement conference. If the request for a
settlement conference, and any request for a stay, is jointly made
among the parties, or if no party files a response within seven days of
the date of service of the request, the Board shall schedule a
settlement conference with all parties subject to the request. If one
or more parties files a response, upon consideration of the objections
and whether any claims or counterclaims may be resolved with only the
consenting parties in attendance, the Board may schedule a conference
with some or all parties.
(d) Settlement proceedings. Three days prior to a settlement
conference, each party participating in the conference shall submit a
position statement to the presiding Officer by email and, when there is
agreement among the parties, send such statement to the other
participating parties outside of eCCB. The position statement shall not
exceed five pages, and shall attach no more than 20 pages of exhibits,
absent leave of the presiding Officer, although leave shall not be
necessary should the page limit be exceeded due to an exhibit being a
necessary agreement or contract. Settlement statements shall meet the
requirements set forth in Sec. 220.5(b) of this subchapter, but shall
not be filed on eCCB. The statement must set forth:
(1) A brief overview of the facts and contentions;
(2) The relief sought, including the amount of damages, if any;
(3) Whether or to what extent the alleged wrongful conduct is
currently taking place; and
(4) Any prior attempts at resolution, including any offers or
counteroffers made to the other party.
(e) Recusal of presiding Officer. The Officer presiding over the
settlement conference shall not participate in rendering a
determination in the proceeding, unless the other Officers cannot reach
a consensus as to the determination. The presiding Officer may review
the record and attend any hearing that is held but shall not actively
participate in the hearing or any substantive discussion among the
Officers concerning the proceeding or the determination, except that
such discussions may be allowed once it is known that the other
Officers cannot reach a consensus as to the determination.
(f) Stay of proceeding. To provide the parties with an opportunity
to pursue settlement and negotiate any resulting settlement agreement,
the Board in its discretion may stay the proceeding for a period of 30
days concurrently with an order scheduling a settlement conference, at
the time of or following the settlement conference, or at the request
of the parties. The parties may request an extension of the stay in
good faith to facilitate ongoing settlement discussions. Requests to
stay or extend a stay of the proceeding and any responses thereto shall
follow the procedures set forth in Sec. 220.5(a)(1) of this
subchapter. If a settlement has not been reached at the time the stay,
or any extension thereof, has expired, the Board shall issue an amended
scheduling order to govern the remainder of the proceeding.
(g) Settlement agreement. If some or all parties reach a
settlement, such parties may submit to the Board a joint request to
dismiss some or all of the claims and counterclaims. The parties may
include a request that the Board adopt some or all of the terms of the
settlement in its final determination. Joint requests for dismissal
shall follow the procedures set forth in Sec. 220.5(a)(1) of this
subchapter.
(h) Effect of settlement agreement. Upon receipt of a joint request
to dismiss claims due to settlement, the Board shall dismiss the claims
or counterclaims contemplated by the agreement with prejudice, unless
the parties have included in their request that the claims or
counterclaims shall be dismissed without prejudice. If the parties have
requested that the Board adopt some or all of the terms of the
settlement in its final determination, the Board may issue a final
determination incorporating such terms unless the Board finds them
clearly unconscionable.
Sec. 222.19 Protective orders; personally identifiable information.
(a) Standard protective order. At the request of any party, the
Board's standard protective order, as described in this section, shall
govern all discovery material exchanged during the proceeding to
protect against improper use or disclosure. Requests for a standard
protective order shall follow the procedures set forth in Sec.
220.5(a)(1) of this subchapter.
(1) Standard of use. Discovery material received from another party
may be used only in connection with the proceeding, and all copies must
be returned or disposed of within 30 days of a determination or
dismissal, or within 30 days of the exhaustion of the time for any
review or appeal of the Board's final determination, whichever is
later.
(2) Confidentiality. Discovery material may be designated as
``confidential'' only if the party reasonably and in good faith
believes that it consists of:
[[Page 30081]]
(i) Bona fide confidential financial information previously not
disclosed to the public;
(ii) Bona fide confidential and non-obvious business plans, product
development information, or advertising or marketing plans previously
not disclosed to the public;
(iii) Any information of a truly personal or intimate nature
regarding any individual not known by the public; or
(iv) Any other category of information that the Board grants leave
to designate as ``confidential.''
(3) Case-by-case basis. Parties must make confidentiality
determinations on a document-by-document basis and shall not designate
as ``confidential'' all discovery material produced in bulk.
(4) Submitting confidential information. Confidential discovery
materials, or references to or discussions of confidential discovery
materials in other documents, may be submitted to the Board by either
filing them under seal or redacting the confidential document. If filed
under seal, the confidential document must be accompanied by a redacted
copy that may be included in the public record.
(5) Determination of confidentiality by the Board. After notice and
an opportunity for the designating party to respond, the Board in its
discretion may remove a confidentiality designation from any material
on its own initiative or upon consideration of a request from a party.
Parties must attempt to resolve disputes over confidentiality
designations before bringing such disputes to the Board. Requests to
remove a confidentiality designation and any responses thereto shall
follow the procedures set forth in Sec. 220.5(a)(1) of this
subchapter.
(b) Custom protective orders. Custom protective orders negotiated
by the parties are disfavored. The parties may request that the Board
enter a custom protective order that has been negotiated by the parties
and that may provide for additional protections for highly sensitive
materials. Such a request must be accompanied by a stipulation between
the parties that explains the need for such a custom protective order
and shall follow the procedures set forth in Sec. 220.5(a)(1) of this
subchapter. The custom protective order must be attached as an exhibit
to the request. The Board may in its discretion decide whether to grant
the parties' request for a custom protective order.
(c) Personally identifiable information. Regardless of whether
discovery material has been designated as ``confidential,'' parties
must redact social security numbers, taxpayer identification numbers,
birth dates, health information protected by law, the names of any
individuals known to be minors, and financial account numbers from any
public filings.
(d) Violations of protective order. Violations of a protective
order may constitute bad-faith conduct pursuant to Sec. 232.3 of this
subchapter.
Sec. 222.20 Evidence.
(a) Admissibility. All evidence that is relevant and not unduly
repetitious or privileged shall be admissible. Evidence which has
authentication or credibility issues will have its weight discounted
accordingly. The Board reserves the right to discount evidence or not
admit evidence with serious credibility issues entirely, or to request
clarification from a party.
(b) Examination of witnesses. All witnesses testifying at a hearing
before the Board shall be required to take an oath or affirmation
before testifying. At a hearing, any member of the Board may administer
oaths and affirmations, ask questions of any witness, and each party
shall have the opportunity to ask questions of each witness and the
other parties. The Board shall manage the conduct of the hearing and
may limit the number of witnesses or scope of questioning.
(c) Exhibits in hearing--(1) Submission. Unless they are
specifically excluded by the Board's own initiative or due to the
Board's ruling on an objection raised by a party, all documents
submitted by the parties through their statements submitted under Sec.
222.15 shall be deemed admitted and marked as exhibits in the same
order as presented through the documentary evidence a party submitted
with the party statement. To the extent additional documents are
allowed by the Board at a hearing on the merits, such evidence may also
be presented as exhibits to all parties and marked by the presenting
party starting with the next number after the exhibits attached to the
party's document statement.
(2) Summary exhibits. The contents of voluminous documentary
evidence which cannot be conveniently examined at the hearing may be
presented in the form of a chart, summary, or calculation. Absent leave
of the Board, evidence supporting the summary exhibit must have been
produced to the other parties in discovery and admitted as exhibits,
and the summary exhibit must be disclosed to the other parties in the
proceeding at least seven days before the hearing.
(d) New exhibits for use in cross-examination or redirect
examination. Exhibits not submitted as part of written testimony may
not be used at a hearing without leave of the Board. Leave to use such
exhibits may be requested before or during the hearing. Requests to use
an exhibit not submitted as part of written testimony and any responses
thereto shall follow the procedures set forth in Sec. 220.5(a)(1) of
this subchapter.
PART 224--REVIEW OF CLAIMS BY OFFICERS AND ATTORNEYS
0
11. The authority citation for part 224 continues to read as follows:
Authority: 17 U.S.C. 702, 1510.
0
12. Amend Sec. 224.2 by revising paragraphs (b) and (c) to read as
follows:
Sec. 224.2 Dismissal for unsuitability.
* * * * *
(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 of unsuitability. If the
proceeding is active, the respondent or counterclaim respondent may
file a response within 30 days following filing of the claimant's
request. A request or response made under this paragraph shall not
exceed 7 pages and shall meet the requirements set forth in Sec.
220.5(b) of this subchapter.
(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 that shall not exceed five pages providing the basis for such
belief. An opposing party may file a response within 14 days setting
forth the basis for such opposition to the request. A request or
response made under this paragraph shall meet the requirements set
forth in Sec. 220.5(a)(2) of this subchapter.
[[Page 30082]]
0
13. Part 225 is added to read as follows:
PART 225--DISCOVERY
Sec.
225.1 General practices.
225.2 Standard interrogatories.
225.3 Standard requests for the production of documents.
225.4 Additional discovery.
225.5 Disputes and sanctions.
Authority: 17 U.S.C. 702, 1510.
Sec. 225.1 General practices.
(a) Standard discovery practice. Except as otherwise provided in
this section, discovery in proceedings before the Copyright Claims
Board (Board) shall be limited to the methods set forth in this part
and shall use the standard forms provided on the Board's website.
Discovery responses and documents shall be served on the other parties
in accordance with Sec. 222.5(e) of this subchapter and shall not be
filed with the Board unless as part of written testimony or as needed
in support of other filings.
(1) Certifications. All discovery material exchanged among the
parties must include a certification by the party submitting such
material.
(i) For responses to interrogatories or any requests for admission
permitted by the Board, the certification shall affirm that the
responses are accurate and truthful to the best of the submitting
party's knowledge.
(ii) For the production of documents, the certification shall
affirm that the produced documents are genuine and unaltered to the
best of the producing party's knowledge.
(2) Form of requests to Board. Requests to the Board related to
discovery may be raised to the Board during a conference or by written
request, as set forth in this section.
(3) Reasonable investigation. Parties shall make a reasonable
investigation under the circumstances to adequately respond to
discovery requests.
(b) Timing of discovery. The exchange of discovery material shall
take place at the times and within the deadlines specified by the
scheduling order. The Board may modify the discovery deadlines set
forth in the scheduling order at the request of any party upon a
showing of good cause or on its own initiative. Such requests may be
made orally during a conference with the Board or by written request.
Written requests for modification of a discovery deadline and any
responses thereto shall follow the procedures set forth in Sec.
220.5(a)(1) of this subchapter.
(c) Conferences. The Board shall hold a pre-discovery conference
and a post-discovery conference, as set forth in Sec. 222.11(b) of
this subchapter. The Board may hold additional conferences to manage
discovery and resolve any disputes, at its own election or at the
request of any party. Requests for a discovery conference not involving
a dispute and any responses thereto shall follow the procedures set
forth in Sec. 220.5(a)(1) of this subchapter. Requests for a discovery
conference involving a dispute and any responses thereto shall follow
the procedures set forth in Sec. 220.5(a)(2). Such conferences may be
held by one or more Copyright Claims Officers. Conferences shall be
held virtually.
(d) Documents. As used in this part, the term ``document'' shall
refer to any tangible piece of information--including writings,
drawings, graphs, charts, photographs, sound recordings, images, and
other data or data compilations--stored in any medium from which
information can be obtained either directly or, if necessary, after
translation by the responding party into a reasonably usable form,
whether in written or electronic form, an object, or otherwise. The
Board shall read this definition broadly so that there is a
comprehensive production of materials by each side needed to fairly
decide matters before the Board, so long as that production can be
easily accomplished by a layperson.
Sec. 225.2 Standard interrogatories.
(a) General. Parties in an active proceeding shall use the set of
standard interrogatories provided on the Board's website. Standard
interrogatories shall consist of information pertaining to:
(1) The identity of witnesses whom the parties plan to use in the
proceeding, including contact information for the witnesses, if known,
and a brief description of the subject matter on which they may
testify;
(2) The identity of any other individuals who may have material
information related to the claims or defenses, including contact
information for the individuals, if known;
(3) Any agreement or other relationship between the parties
relevant to the claim;
(4) Any harm suffered or damages sought; and
(5) Any materially responsive documents that the party is aware
exist or once existed, but are not in the possession of that party.
(b) For a party asserting infringement. In addition to paragraph
(a) of this section, the standard interrogatories for a party asserting
an infringement claim or responding to a claim for non-infringement
shall consist of information pertaining to:
(1) The allegedly infringed work's copyright registration, to the
extent such information differs from or adds to information provided in
the claim;
(2) For works requiring copyright formalities, the extent the
allegedly infringed work complied with such copyright formalities;
(3) The party's ownership of the copyright in the allegedly
infringed work;
(4) Publication of the allegedly infringed work;
(5) The creation date and creation process for the allegedly
infringed work, including whether the work is a joint or derivative
work or was created through employment or subject to an agreement;
(6) Where the allegedly infringed work is a derivative work, the
preexisting elements in the work, including ownership of those
preexisting elements, and rights to use those preexisting elements;
(7) A description of how the party believes the alleged infringer
gained access to the allegedly infringed work;
(8) The basis for the party's belief that the opposing party's
activities constitute infringement of the allegedly infringed work;
(9) The discovery of the opposing party's alleged infringement by
the party;
(10) A description of any harm suffered and, to the extent known, a
calculation of the damages requested by the party as a result of the
alleged infringement; and
(11) Any attempts by the party to cause the infringement to be
ceased or mitigated prior to bringing the claim.
(c) For a party asserting non-infringement. In addition to the
information in paragraph (a) of this section, the standard
interrogatories for a party responding to an infringement claim or
asserting a claim for non-infringement shall consist of information
pertaining to:
(1) The party's ownership of the copyright in the allegedly
infringing material;
(2) The dissemination history of the allegedly infringing material;
(3) The creation date and creation process for the allegedly
infringing material, including whether any allegedly infringing work is
a joint or derivative work or was created through employment or subject
to an agreement;
(4) Where the allegedly infringing material is a derivative work,
the preexisting elements in the work, including ownership of those
preexisting elements, and rights to use those preexisting elements;
[[Page 30083]]
(5) Any information indicating that the party alleging infringement
does not own a copyright in the allegedly infringed work;
(6) All defenses to infringement asserted by the party and a
detailed basis for those defenses. Defenses listed in timely answers
and timely updated answers to the standard interrogatories shall be
considered by the Board and will not require an amendment of the
response to an infringement claim or an amendment of a claim for non-
infringement;
(7) The basis for any other reasons the party believes that its
actions do not constitute infringement;
(8) Any continued use or dissemination of the allegedly infringing
material; and
(9) For a party responding to infringement claims or counterclaims,
the revenues and profits the party has received that are directly
related to the sale or use of the allegedly infringing material, as
well as the deductible expenses directly related to that sale or use,
and any elements of profit for that sale or use that the party believes
are attributable to factors other than the copyrighted work.
(d) For a party asserting misrepresentation. In addition to the
information in paragraph (a) of this section, the standard
interrogatories for a party asserting a claim of misrepresentation
under 17 U.S.C. 512(f) shall consist of information pertaining to:
(1) The notification or counter notification that allegedly
contained a misrepresentation;
(2) The identity of the internet service provider to which the
notification or counter notification was sent;
(3) Identification and a description of any communications with the
internet service provider, the parties, or others related to the
notification or counter notification at issue;
(4) The basis for the party's belief that the notification or
counter notification included a misrepresentation; and
(5) The harm, including a description and calculation of damages,
caused by the alleged misrepresentation.
(e) For a party responding to misrepresentation claims. In addition
to the information in paragraph (a) of this section, the standard
interrogatories for a party responding to a claim of misrepresentation
under 17 U.S.C. 512(f) shall consist of information pertaining to:
(1) All defenses asserted to the misrepresentation claim and the
basis for those assertions. Defenses listed in timely answers and
timely updated answers to the standard interrogatories shall be
considered by the Board and will not require an amendment of the
response;
(2) The basis for any other reasons the party believes that its
statement did not constitute a misrepresentation; and
(3) Identification and a description of any communications with the
internet service provider, the parties, or others related to the
notification or counter notification at issue.
(f) Duty to update. A party has an obligation to update its
interrogatory responses and serve updated responses on the other
parties as soon as practicable after the discovery of new or updated
information.
Sec. 225.3 Standard requests for the production of documents.
(a) General. Parties in an active proceeding shall use the relevant
set of standard requests for the production of documents provided on
the Board's website. Standard requests for the production of documents
shall include copies of:
(1) All documents the party is likely to use in support of its
claims or defenses;
(2) All other documents of which the party is reasonably aware that
conflict with the party's claims or defenses in the proceeding;
(3) All documents referred to in, or that were used in preparing,
any of the party's responses to standard interrogatories; and
(b) For a party asserting infringement. In addition to the
information in paragraph (a) of this section, the standard requests for
the production of documents for a party asserting an infringement claim
or responding to a claim for non-infringement shall include copies of:
(1) The work claimed to be infringed, its copyright registration,
and all correspondence with the Copyright Office regarding that
registration;
(2) The allegedly infringing material, if reasonably available;
(3) Where the allegedly infringed work is a derivative work,
documents showing the preexisting works used and related to ownership
of and rights to use those preexisting elements;
(4) Documents related to the allegedly infringing material,
including communications about the allegedly infringing material;
(5) Documents showing or negating the ownership or rights of the
party claiming infringement in the works at issue, including agreements
showing the ownership or transfer or rights in the works;
(6) Documents sufficient to show the damages suffered by the party
as a result of the alleged infringement; and
(7) Documents showing attempts by the party to cause the cessation
or mitigation of infringement prior to bringing the claim.
(c) For a party asserting non-infringement. In addition to the
information in paragraph (a) of this section, the standard requests for
the production of documents for a party responding to an infringement
claim or asserting a claim for non-infringement shall include copies
of:
(1) The allegedly infringing material;
(2) Documents related to the allegedly infringed work, including
communications regarding the allegedly infringed work;
(3) Documents related to the creation of the allegedly infringing
material, including documents showing or negating rights to use the
allegedly infringing material; an
[…truncated; see source link]Indexed from Federal Register on May 17, 2022.
This is legal information, not legal advice. Laws vary by jurisdiction and change frequently. Always verify current law with official sources and consult a licensed attorney in your jurisdiction for advice on your specific situation.