Copyright Claims Board: Initiation of Proceedings and Related Procedures

CourtCopyright Office,Library Of Congress
Citation86 FR 53897
Record Number2021-20303
Publication Date29 September 2021
53897
Federal Register / Vol. 86, No. 186 / Wednesday, September 29, 2021 / Proposed Rules
1
Public Law 116–260, sec. 212, 134 Stat. 1182,
2176 (2020).
2
See, e.g., H.R. Rep. No. 116–252, at 18–20
(2019); S. Rep. No. 116–105, at 7–8 (2019). Note, the
CASE Act legislative history cited is for H.R. 2426
and S. 1273, the CASE Act of 2019, a bill nearly
identical to the CASE Act of 2020. See H.R. 2426,
116th Cong. (2019); S. 1273, 116th Cong. (2019). In
developing the CASE Act, Congress drew on model
legislation in the Office’s 2013 policy report,
Copyright Small Claims, https://www.copyright.gov/
docs/smallclaims/usco-smallcopyrightclaims.pdf.
Congress also incorporated the Office’s report and
supporting materials into the statute’s legislative
history. H.R. Rep. No. 116–252, at 19; S. Rep. No.
116–105, at 2.
3
H.R. Rep. No. 116–252, at 17; S. Rep. No. 116–
105, at 2–3, 9.
4
17 U.S.C. 1504(c)(1)–(3). The CCB cannot issue
injunctive relief, but can require that an infringing
party cease or mitigate its infringing activity in the
event such party agrees and the agreement is
reflected in the proceeding’s record. Id. at
1504(e)(2)(A)(i), (e)(2)(B). This provision also
applies to parties making knowing material
misrepresentations under section 512(f). Id. at
1504(e)(2)(A)(ii).
5
See id. at 1504(a); H.R. Rep. No. 116–252, at 17,
21; S. Rep. No. 116–105, at 3, 11.
6
H.R. Rep. No. 116–252, at 21–22, 33; S. Rep. No.
116–105, at 14.
7
86 FR 16156 (Mar. 26, 2021). Comments
received in response to the March 26, 2021 NOI are
available at https://www.regulations.gov/document/
COLC-2021-0001-0001/comment. References to
these comments are by party name (abbreviated
where appropriate), followed by ‘‘Initial NOI
Comments’’ or ‘‘Reply NOI Comments,’’ as
appropriate.
8
Public Law 116–260, sec. 212(d), 134 Stat. at
2199.
9
17 U.S.C. 1506(a)(1).
Proposed Amendments to the
Regulations
Accordingly, 26 CFR part 300 is
proposed to be amended as follows:
PART 300—USER FEES
Paragraph 1.The authority citation for
part 300 continues to read as follows:
Authority: 31 U.S.C. 9701.
§ 300.0 [Amended]
Par. 2. Section 300.0 is amended by
removing paragraph (b)(9) and
redesignating paragraphs (b)(10) through
(12) as paragraphs (b)(9) through (11).
Par. 3. Section 300.4 is amended by
revising paragraphs (b) and (d) to read
as follows:
§ 300.4 Enrolled agent special enrollment
examination fee.
* * * * *
(b) Fee. The fee for taking the enrolled
agent special enrollment examination is
$99 per part, which is the cost to the
government for overseeing the
development and administration of the
examination and is in addition to the
fees charged by the administrator of the
examination.
* * * * *
(d) Applicability date. This section
applies to registrations for the enrolled
agent special enrollment examination
that occur on or after [DATE 30 DAYS
AFTER PUBLICATION OF THE FINAL
RULE IN THE Federal Register].
§ 300.9 [Removed]
Par. 4. Section 300.9 is removed.
§§ 300.10 through 300.12 [Redesignated as
§§ 300.09 through 300.11]
Par. 5. Redesignate §§ 300.10 through
300.12 as §§ 300.09 through 300.11.
Douglas W. O’Donnell,
Deputy Commissioner for Services and
Enforcement.
[FR Doc. 2021–21242 Filed 9–27–21; 4:15 pm]
BILLING CODE 4830–01–P
LIBRARY OF CONGRESS
Copyright Office
37 CFR Parts 201, 220, 222, 223, and
224
[Docket No. 2021–6]
Copyright Claims Board: Initiation of
Proceedings and Related Procedures
AGENCY
: U.S. Copyright Office, Library
of Congress.
ACTION
: Notice of proposed rulemaking.
SUMMARY
: The U.S. Copyright Office is
issuing a notice of proposed rulemaking
to establish procedures governing the
initial stages of a proceeding before the
Copyright Claims Board. The proposed
rule provides requirements regarding
the filing of a claim, the Board’s
compliance review of the claim, service,
issuance of notice of the claim, the
respondent’s opt-out election,
responses, and counterclaims. The
Office intends to initiate subsequent
rulemakings regarding additional
procedures.
DATES
: Initial written comments must be
received no later than 11:59 p.m.
Eastern Time on October 29, 2021.
Written reply comments must be
received no later than 11:59 p.m.
Eastern Time on November 15, 2021.
ADDRESSES
: For reasons of government
efficiency, the Copyright Office is using
the regulations.gov system for the
submission and posting of public
comments in this proceeding. All
comments are therefore to be submitted
electronically through regulations.gov.
Specific instructions for submitting
comments are available on the
Copyright Office website at http://
copyright.gov/rulemaking/case-act-
implementation/initiating-proceedings/.
If electronic submission of comments is
not feasible due to lack of access to a
computer and/or the internet, please
contact the Office using the contact
information below for special
instructions.
FOR FURTHER INFORMATION CONTACT
:
Kevin R. Amer, Acting General Counsel
and Associate Register of Copyrights, by
email at kamer@copyright.gov, or
Whitney Levandusky, Supervisory
Attorney-Advisor, by email at wlev@
copyright.gov. Both can be reached by
telephone at 202–707–8350.
SUPPLEMENTARY INFORMATION
:
I. Background
On December 27, 2020, the President
signed into law the Copyright
Alternative in Small-Claims
Enforcement (‘‘CASE’’) Act of 2020.
1
The CASE Act directs the Copyright
Office to establish the Copyright Claims
Board (‘‘CCB’’ or ‘‘Board’’), a voluntary,
alternative forum to federal court for
parties to seek resolution of copyright
disputes that have a low economic value
(‘‘small copyright claims’’).
2
The CCB’s
creation does not displace or limit a
party’s ability to bring small copyright
claims in federal court, but rather
provides a more accessible alternative
forum to decide those claims.
3
The CCB
has authority to hear copyright
infringement claims, claims seeking a
declaration of noninfringement, and
misrepresentation claims under section
512(f) of title 17.
4
Participation in the
CCB is voluntary for all parties,
5
and all
determinations are non-precedential.
6
On March 26, 2021, the Copyright Office
published a notification of inquiry
(‘‘NOI’’) inviting public comment on
various aspects of the CCB’s operations,
which the Office noted would be
established through a series of
rulemakings.
7
Congress directed that the
CCB begin operations by December 27,
2021, though the Register may for good
cause extend that deadline by not more
than 180 days.
8
The CASE Act directs the Register of
Copyrights to establish the regulations
by which the CCB will conduct its
proceedings, subject to the provisions of
chapter 15 and relevant principles of
law under title 17.
9
In this notice, the
Office proposes procedures related to
the filing of a claim, the CCB’s
subsequent review of the claim to
ensure that it complies with statutory
requirements and the Office’s
regulations (referred to in this
rulemaking as the CCB’s ‘‘compliance
review’’), service, issuance of notice of
the claim, the respondent’s opt-out
election, responses, and counterclaims.
The Office will issue proposed rules
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10
Id. at 1506(e).
11
H.R. Rep. No. 116–252, at 17; see also S. Rep.
No. 116–105, at 9–10.
12
Sen. Dick Durbin, Sen. John Kennedy & Rep.
Hakeem Jeffries Initial NOI Comments at 1 (stating
that CCB forms should be ‘‘user-friendly, with
simplified forms and guidance provided in such a
way that parties will not feel compelled to hire an
attorney to understand and assist them with the
process’’) (emphasis omitted); Am. Bar Ass’n Intell.
Prop. L. Sec. (‘‘ABA–IPL’’) Reply NOI Comments at
2; Patreon Initial NOI Comments at 2.
13
Am. Intell. Prop. L. Ass’n (‘‘AIPLA’’) Initial
NOI Comments at 2; Copyright Alliance, Am.
Photographic Artists, Am. Soc’y for Collective
Rights Licensing, Am. Soc’y of Media
Photographers, The Authors Guild, CreativeFuture,
Digital Media Licensing Ass’n, Graphic Artists
Guild, Indep. Book Pubs. Ass’n, Music Creators N.
Am., Nat’l Music Council of the United States, Nat’l
Press Photographers Ass’n, N. Am. Nature
Photography Ass’n, Prof. Photographers of Am.,
Recording Academy, Screen Actors Guild-Am. Fed.
of Television and Radio Artists, Soc’y of Composers
& Lyricists, Songwriters Guild of Am. & Songwriters
of N. Am. (‘‘Copyright Alliance, et al.’’) Initial NOI
Comments at 10; Engine Initial NOI Comments at
3; Niskanen Center Initial NOI Comments at 2.
14
Copyright Alliance, et al. Initial NOI Comments
at 11; Coalition of Visual Artists Initial NOI
Comments at 5–8; ABA–IPL Reply NOI Comments
at 2.
15
The Office has modeled the procedures
governing issuance of the initial notice on those
pertaining to issuance of a summons under Rule 4
of the Federal Rules of Civil Procedure. See H.R.
Rep. No. 116–252 at 22.
16
Id.
17
Google Initial NOI Comments at 1 (referring to
Federal Rule of Civil Procedure 12).
18
H.R. Rep. No. 116–252, at 23.
19
17 U.S.C. 1506(y).
20
See, e.g., Ben Vient Initial NOI Comments at 2;
Copyright Alliance, et al. Initial NOI Comments at
13; Univ. of Mich. Library Initial NOI Comments at
1.
21
17 U.S.C. 1506(f)(1).
22
H.R. Rep. No. 116–252, at 22.
23
17 U.S.C. 1506(f)(1)(A).
24
Id. at 1506(f)(1)(B).
related to later stages of a proceeding in
subsequent rulemakings.
A. Initiating a Claim
To initiate a proceeding before the
CCB, a claimant shall, ‘‘subject to such
additional requirements as may be
prescribed in regulations established by
the Register of Copyrights,’’ file a claim
that ‘‘(1) includes a statement of
material facts in support of the claim;
(2) is certified under [17 U.S.C.
1506(y)(1)]; and (3) is accompanied by
a filing fee in such amount as may be
prescribed in regulations established by
the Register of Copyrights.’’
10
The
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
Parties provided comments on several
matters relating to the contents of a
claim. Commenters emphasized the
need for plain language,
12
suggested that
the forms should be available, at a
minimum, in English and Spanish,
13
and encouraged the use of fillable
forms.
14
The Office agrees with these
suggestions, and intends to use plain-
language fillable forms throughout
various stages of CCB proceedings,
including for the filing of a claim.
The Office proposes that to initiate a
proceeding, a claimant must: First,
complete a claim form provided by the
CCB; second, complete an initial notice
form, also provided by the CCB; and,
finally, submit the completed forms and
required filing fee through the Board’s
electronic filing and document
management system. A claimant who is
unable to use the electronic filing and
document management system may
initiate a proceeding by using printed
forms and alternative submission
instructions. In addition to the statutory
requirements to submit the claim and
filing fee to the CCB, the Office is
proposing that the claimant be required
to submit a completed initial notice
form with the claim form. This proposal
allows a Copyright Claims Attorney to
review the initial notice and address
any issues during compliance review,
and issue the signed notice under
Copyright Office seal upon approving
the claim.
15
The proposed rule sets forth the
required information for the claim form.
It generally requires the claimant to
identify the parties, the claim asserted
under section 1504(c), and the harms
experienced as a result of the dispute
subject to the proceeding. Then, the
claimant must identify certain facts
relevant to the claim and provide a
statement describing the dispute in
more detail. The claimant will be asked
to be as detailed as possible, but, as
contemplated by Congress, the CCB will
‘‘construe liberally’’ any information in
the claim to satisfy regulatory
requirements during claim review.
16
The Office received one substantive
comment arguing that the claim should
require more than is required by notice
pleading as set forth in the Federal
Rules of Civil Procedure.
17
Such a
heightened pleading standard, however,
would go against congressional intent.
The legislative history explains that
‘‘many of the terms and processes used
in the [CASE] Act are drawn from
preexisting, related state and federal
statutory language, the Federal Rules of
Civil Procedure, and established case
law,’’ and emphasizes that the CCB is
intended to be ‘‘an efficient, effective,
and voluntary alternative’’ to
litigation.
18
As a general rule, therefore,
practice before the CCB should be less
complex than practice in the federal
courts, and certainly not more complex.
Further, to the extent there are
statements in the claim that clearly do
not state facts upon which relief can be
granted, the CCB anticipates that the
compliance review process typically
will resolve such issues. Finally, the
claimant must certify that the
information provided in the claim form
is ‘‘accura[te] and truthful[ ]’’
19
to the
best of the certifying party’s knowledge.
The proposed rule also allows
optional documentation to be attached
to the claim form, including copies of
the works involved. While some
commenters suggested that additional
documentation should be a requirement
for filing a claim and serving notice,
20
the Office believes that requiring such
information at the initial claim stage
would discourage claimants from
initiating a proceeding and would be
more burdensome than the requirements
for litigation in the federal courts.
Documentary evidence will be a focus of
the standard requests for production
that the Office will propose in a future
rulemaking addressing discovery.
The proposed rule does not address
matters relating to the layout or
presentation of questions on the form, as
the Office seeks to preserve the
flexibility to adjust those items as
circumstances warrant. The Office
intends to make proposed forms
available in advance of the CCB’s
commencement of operations.
B. Review of the Claim by Officers and
Attorneys
1. Compliance Review
After the claimant files a claim, the
claim ‘‘shall be reviewed by a Copyright
Claims Attorney to ensure that the claim
complies with [chapter 15] and
applicable regulations.’’
21
If the
claimant is proceeding ‘‘pro se,’’ i.e.,
they are not represented by an attorney,
the claim and assertions are to be
‘‘construed liberally in favor of
adjudicating applicable claims and
defenses.’’
22
If the claim is found to comply with
the statute and regulations, the CCB
shall notify the claimant and provide
instructions to proceed with service of
the claim.
23
If the claim is found not to
comply, the CCB is required to provide
the claimant with a notice of deficiency
and an opportunity to file an amended
claim within 30 days after receiving the
notice.
24
The amended claim is then
reviewed, and the claimant is either
notified of the sufficiency of the claim
or directed to file an additional
amended complaint in that 30-day
period. This second amended complaint
is reviewed a final time, with the CCB
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25
Id. at 1506(f)(2).
26
Fed. R. Civ. P. 12(b)(6).
27
U.S. Copyright Office, Compendium of U.S.
Copyright Office Practices, Third Edition sec.
602.4(C) (3d ed. 2021).
28
Elec. Frontier Found. (‘‘EFF’’) Initial NOI
Comments at 2.
29
17 U.S.C. 1506(f)(3).
30
Id.
31
See, e.g., EFF Initial NOI Comments at 3.
32
17 U.S.C. 1506(g).
33
Id.
34
Id. at 1506(g)(1).
35
H.R. Rep. No. 116–252, at 22; see also 17 U.S.C.
1506(g)(1).
36
17 U.S.C. 1506(g)(1).
37
86 FR at 16159.
38
Admin. Off. of the U.S. Cts., Summons in a
Civil Action (June 2012), https://www.uscourts.gov/
sites/default/files/ao440.pdf (form AO 440); Clerk
for the Circuit Court of Cook County, Summons
(Dec. 2020), http://www.cookcountyclerkofcourt.
org/Forms/pdf_files/CCG0001.pdf (form CCG 0001
A) (as of Sept. 14, 2021, Cook County Clerk of Court
website was inaccessible); New Jersey Courts, Small
Claims Summons and Return of Service (Sept.
2018), https://njcourts.gov/forms/10534_appendix_
xi_a2.pdf.
39
86 FR at 16159.
40
Id.
41
Copyright Alliance, et al. Initial NOI Comments
at 11. However, the same comment observed that
the notice ‘‘should provide only the essential
information about the process because providing
too much information could overwhelm the
Respondent.’’ Id. at 12. Another commenter
suggested that the notice include the ‘‘legal name
of the Plaintiff, a physical address, and a telephone
number by which a live person can be called by the
Continued
either clearing the claim for service or,
upon confirmation of noncompliance by
a Copyright Claims Officer, dismissing
the claim without prejudice. The CCB
shall also dismiss without prejudice any
proceeding in which the claimant fails
to file an amended complaint within the
30-day window. Counterclaims are
subject to the same compliance
review.
25
The statute describes the compliance
review process in some detail. Here, the
Office proposes a limited number of
regulations to clarify the scope of
review. The proposed rule provides that
a Copyright Claims Attorney shall
review a claim to determine whether the
allegations ‘‘clearly do not state a claim
upon which relief can be granted.’’ This
standard echoes the standard set forth in
the Federal Rules of Civil Procedure,
26
but is meant to be less exacting than that
governing a motion to dismiss. The
Office believes that this approach is in
the best interest of all parties: The
claimant has the opportunity to state its
case; the respondent has a better
understanding of the allegations
involved in the claim and will be in a
stronger position to consider
participation; and the CCB will avoid
the administrative burden associated
with hearing overbroad or clearly
implausible claims. The Office is also
proposing to incorporate an
examination standard from the
Compendium of U.S. Copyright Office
Practices, which stipulates that while
the Office does not conduct factual
investigations, it may take
administrative notice of facts generally
known as established and may use that
knowledge during compliance review.
27
Finally, as suggested by one
commenter,
28
the proposed rule clarifies
that the CCB’s clearance of a claim for
notice is not an endorsement of the facts
and statements asserted in the claim.
2. Dismissal for Unsuitability
Under the statute, the CCB must
dismiss a claim or counterclaim without
prejudice if it ‘‘concludes that the claim
or counterclaim is unsuitable for
determination . . . including on
account of any of the following . . .
[t]he failure to join a necessary party;
. . . [t]he lack of an essential witness,
evidence, or expert testimony; [or] [t]he
determination of a relevant issue of law
or fact that could exceed either the
number of proceedings the [CCB] could
reasonably administer or the subject
matter competence of the [CCB].’’
29
The
issue of unsuitability may be taken up
by the Board at any time during the
proceedings, whether during
compliance review or thereafter.
30
The Office did receive suggestions as
to particular claims that should be
considered unsuitable.
31
At this time,
however, the proposed regulation
addresses only the procedural matter of
how the issue of unsuitability will be
addressed. The Office proposes that the
issue of unsuitability may be raised by
the Board or by any party to the
proceeding. Upon consideration of the
matter, the Board may issue an order
dismissing the claim without prejudice,
after which the claimant has an
opportunity to request reconsideration
and the respondent has an opportunity
to respond. In proposing this approach,
the Office seeks to strike an appropriate
balance between maximizing parties’
opportunity to be heard and preserving
the Board’s authority to dismiss claims
that it determines to be unsuitable for
determination.
C. Service of Initial Notice
Once the claimant receives
notification that the claim is compliant,
the claimant must, not later than ninety
days from receiving notification, file
with the CCB proof of service on the
respondent in order to proceed with the
claim.
32
To effectuate service, the
claimant ‘‘shall cause notice of the
proceeding and a copy of the claim to
be served on the respondent’’
33
as
prescribed by the statute and
regulations.
1. Content of Initial Notice
To ensure that respondents are
provided with proper notice of the
claims asserted against them, the statute
details elements that must be included
in the initial notice accompanying the
claim. In addition, the Office is required
to create a prescribed initial notice form
and is vested with regulatory authority
to specify further requirements to be
included in the notice.
At a minimum, the initial notice must
describe the CCB and the nature of a
CCB proceeding, so that pro se parties
understand the process.
34
The initial
notice must include ‘‘a clear and
prominent explanation of the
respondent’s right to opt out of the
proceeding and the rights the
respondent waives if [they] do [ ] not.’’
35
In particular, it must include a
prominent statement that by not opting
out of a CCB proceeding within sixty
days of receiving the notice, the
respondent ‘‘loses the opportunity to
have the dispute decided by a court
created under article III of the
Constitution of the United States’’ and
‘‘waives the right to a jury trial
regarding the dispute.’’
36
In the NOI, the Office requested
comment on ‘‘additional regulatory
requirements to help ensure that the
initial notice conveys a clear
explanation of the CCB, deadlines
associated with the pending claim, the
ability and method for the respondent to
opt out of the proceeding, and the
benefits and consequences of
participating or declining to do so.’’
37
The Office provided examples of
various approaches by federal and state
courts,
38
and invited parties to provide
specific language to be included on the
form or sample forms.
39
The Office
asked whether the notice should
include a docket number and links to
the CCB’s website for relevant public
information, and encouraged parties to
suggest additional educational
information ‘‘while being mindful that
the notice must remain easy to
understand and avoid overwhelming
respondents.’’
40
In response, commenters suggested a
number of additional features to be
included. Some proposed that the notice
include not only information such as
the respondent’s name, phone number,
address, email address, and other
contact information, but also
information about the claim itself and
background information about the
CCB.
41
Others suggested that the notice
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Respondent during normal business hours to
discuss the claim.’’ Ryan Fountain Initial NOI
Comments at 1.
42
Anthony Davis Jr. & Katherine Luce Initial NOI
Comments at 2.
43
Patreon Initial NOI Comments at 3.
44
Copyright Alliance Initial NOI Comments at 11.
45
See, e.g., AIPLA Initial NOI Comments at 2;
Copyright Alliance, et al. Initial NOI Comments at
18.
46
See, e.g., Public Knowledge, Re:Create, Ctr. for
Democracy & Tech., R St. Inst., Org. for
Transformative Works (‘‘Public Knowledge, et al.’’)
Initial NOI Comments at 14 (‘‘The notice language
needs to describe the opt-out process clearly,
concisely, and in a manner that is comprehensible
to a lay audience.’’); Google Initial NOI Comments
at 1 (‘‘To the extent that the Office intends to give
respondents information on the possible
consequences of opting out, it will be important to
communicate the associated uncertainty in a clear
and disinterested way.’’); Authors Alliance Initial
NOI Comments at 3 (asserting among other things
that ‘‘the notice should also describe situations for
which the tribunal may not be a suitable venue for
dispute resolution’’).
47
Ben Vient Initial NOI Comments at 2.
48
Computer & Comms’s Indus. Assoc. & internet
Assoc. (‘‘CCIA & IA’’) Initial NOI Comments at 3.
49
17 U.S.C. 1506(g)(3).
50
Id. at 1506(g)(9).
51
Id. at 1506(g)(4)–(5).
52
Id. at 1504(d)(3).
53
For a minor or an incompetent individual,
service can be effectuated only by ‘‘complying with
State law for serving a summons or like process on
such an individual in an action brought in the
courts of general jurisdiction of the State where
service is made.’’ Id. at 1506(g)(8); see also id. at
1506(g)(4).
54
See Fed. R. Civ. P. 4(e).
55
17 U.S.C. 1506(g)(4)(A).
56
Id. at 1506(g)(4)(C).
57
Id. at 1506(g)(4)(D).
58
Id. at 1506(g)(5)(A)(i).
include explanations of copyright law,
42
fair use,
43
and other defenses.
44
Multiple commenters argued that the
notice should not include elements of
infringement or defenses, but should
simply state that there are defenses
available and include a link to the
Copyright Office web page with
information about fair use and other
defenses that would be typically
raised.
45
Many agreed that the notice
should address the pros and cons of
opting out, with several noting that the
Board should do so clearly, concisely,
and in a disinterested way.
46
The Office appreciates parties’
comments on this issue and proposes
that the initial notice to the respondent
be provided in a form that includes the
information required by the statute as
well as additional basic information
about the claim and the parties. The
Office envisions a notice that, as is the
case with summonses issued by federal
courts, is clear and concise and is easy
to understand. The Office also envisions
that the notice will bear the Office’s
seal, the CCB’s logo, and other indicia
to identify it as an official document
issued by the federal government.
The Office received a number of
suggestions related to substantive claim
information that should be attached to
the notice, including evidence of
infringement
47
and a picture of the
allegedly infringing work.
48
The Office
believes that for efficiency and clarity,
substantive information should be
included in or attached to the claim,
which sets forth the facts at issue, rather
than the notice, which sets forth the
procedural implications of the claim.
The initial notice is similar to a
summons, and with a few exceptions
(such as the caption, docket number,
and names and addresses of the parties),
every notice issued by the Board will be
identical. And, for the reasons stated
above, the Office has included
documentary evidence as an optional
attachment to the claim rather than a
requirement.
The proposed rule prescribes that
claimants use an initial notice form
provided by the Board, with most of the
content prepared by the Board for use in
all initial notices. Claimants will fill in
certain information, such as the names,
addresses, and contact information for
the claimant and the respondent. The
rule does not require that the claimant
provide a telephone number or email
address in the initial notice. Although
the Office recognizes the benefits of
providing means through which the
parties may communicate to discuss the
merits of a claim and to discuss
settlement, the Office also recognizes
that such information might implicate
privacy or other interests. The Office
invites comments on this proposed
approach.
In addition to basic information about
the parties, the notice form would
require the claimant to identify the
nature of the claims being asserted—i.e.,
whether the claim is for copyright
infringement, a declaration of
noninfringement, or misrepresentation
in connection with a notification or a
counter notification served on an online
service provider under section 512 of
title 17.
The notice would also include the
information required by 17 U.S.C. 1506,
including a brief description of the CCB
and its proceedings, a statement
advising the respondent of the right to
opt out of the proceeding, how to opt
out, and the consequences of doing so
(including the statements required by 17
U.S.C. 1506(g)(1)(A) and (B)). It is the
Office’s intention that the latter
statement be concise, clear, and
objective.
The notice will also direct the
respondent (as well as the claimant) to
further information that will be made
available on the Office or CCB websites
pertaining to copyright law, including
exclusive rights, infringement, and
exceptions and limitations, as well as
further information on CCB
proceedings. Information will be
provided on how to access the Board’s
electronic filing and document
management system, which will also
give respondents a means to confirm
that the notice relates to a genuine legal
proceeding.
2. Service of Process and Designated
Agents
Under the statute, any individual who
is not a party to the proceeding and is
older than 18 years of age may effectuate
service,
49
and both service and waiver
of service may only occur within the
United States.
50
Choosing how to
effectuate service, however, depends on
the nature of the respondent. The statute
includes separate rules of service for
individuals and corporations,
partnerships, and unincorporated
associations, including those
organizations using designated service
agents.
51
No claims can be brought ‘‘by
or against a Federal or State
governmental entity.’’
52
Service on an individual
53
may be
effectuated by using procedures
analogous to those in the Federal Rules
of Civil Procedure.
54
Service can be
accomplished by ‘‘complying with State
law for serving a summons in an action
brought in courts of general jurisdiction
in the State where service is made.’’
55
Service can also be accomplished by
‘‘leaving a copy of the notice and claim
at the individual’s dwelling or usual
place of abode with someone of suitable
age and discretion who resides there.’’
56
Finally, service on an individual can be
accomplished by ‘‘delivering a copy of
the notice and claim to an agent
designated by the respondent to receive
service of process or, if not so
designated, an agent authorized by
appointment or by law to receive service
of process.’’
57
Like individuals, corporations,
partnerships, or unincorporated
associations can be served ‘‘by
complying with State law for serving a
summons in an action brought in courts
of general jurisdiction in the State
where service is made.’’
58
These
organizations can also be served by
delivering the notice and claim to ‘‘an
officer, a managing or general agent, or
any other agent authorized by
appointment or by law to receive service
of process in an action brought in courts
of general jurisdiction in the State
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Id. at 1506(g)(5)(A)(ii). If the service agent is
‘‘one authorized by statute and the statute so
requires,’’ the claimant must also mail a copy of the
notice and claim to the respondent. Id.
60
Id. at 1506(g)(5)(B).
61
Id.
62
86 FR at 16160.
63
17 U.S.C. 1506(j).
64
Amazon Initial NOI Comments at 3; CCIA & IA
Initial NOI Comments at 3; Google Initial NOI
Comments at 1.
65
Amazon Initial NOI Comments at 3; Google
Initial NOI Comments at 1–2.
66
Motion Picture Ass’n, Recording Indus. Ass’n
of Am. & Software and Info. Ass’n of Am. (‘‘MPA,
RIAA & SIIA’’) Initial NOI Comments at 5; Verizon
Initial NOI Comments at 4.
67
Copyright Alliance, et al. Initial NOI Comments
at 15–16.
68
81 FR 75695, 75698 (Nov. 1, 2016).
69
17 U.S.C. 512(c)(2) (‘‘The limitations on
liability established in this subsection apply . . .
only if the service provider has designated an agent
to receive notification of claimed infringement . . .
and by providing [the following information] to the
Copyright Office . . . .’’).
70
Id. at 1506(g)(5)(B) (‘‘A corporation,
partnership, or unincorporated association . . .
may elect to designate a service agent to receive
notice of a claim against it.’’).
71
Id. at 1506(g)(6).
72
Id. at 1506(g)(6)(A)–(B).
73
Id. at 1506(g)(7)(A).
74
Engine Initial NOI Comments at 4.
where service is made.’’
59
Under the
statute, such corporations, partnerships,
or unincorporated associations may
elect to receive CCB claim notices via a
designated service agent. The Office is
required to establish regulations
governing this designated service agent
option and to ‘‘maintain a current
directory of service agents that is
available to the public for inspection,
including through the internet.’’
60
The
Office may charge these organizations a
fee to maintain the designated service
agent directory.
61
In the NOI, the Office requested
comments specifically related to the
designated service agent directory. The
Office encouraged commenting parties
to review the Office’s designated agent
directory for online service providers,
created pursuant to the Digital
Millennium Copyright Act (‘‘DMCA’’),
and to discuss to what extent the Office
should use the DMCA database as a
model.
62
The Office also invited
comments on how the system should
indicate corporate parent-subsidiary
relationships, and on fees. In addition,
the Office noted its general authority to
establish additional regulations
governing service throughout a CCB
proceeding,
63
and requested comment
on any issues that should be considered
related to that authority.
The Office received a number of
comments regarding the ability of a
corporate parent to act as a designated
agent on behalf of a subsidiary. The
majority of commenters who addressed
the issue encouraged the designation of
one agent for the corporate parent and
all subsidiary firms.
64
Commenters also
recommended that service agents be
able to choose their method of service,
65
and some argued that after an eligible
entity has designated a service agent,
the only effective means of service that
should be allowed is through the
identified service agent in the
database.
66
The Office appreciates these
comments and finds them to be
generally consistent with the statutory
text. The proposed rule allows a
submitter to provide the same
designated agent information for
multiple companies, partnerships, or
unincorporated associations, but a
separate submission would be required
for each entity. A designated agent
submission is required to include
identifying information for the business,
including contact information, principal
place of business, and for corporations,
the state of incorporation, any
associated state file or registration
number, and all other states in which
the corporation is registered to do
business. Organizations may also list up
to five alternate names under which
they are doing business, i.e., trade
names. The names provided will be
used for indexing the designation, and
the business contact information will
not be on public view.
The submission must also include
contact information for the service agent
and the designating entity’s consent to
service by mail. An entity submitting a
designation may also elect to accept
service by email in addition to mail. In
such cases, the email address of the
designated service agent will be
included in the public directory.
Although some parties suggested that
the Office should require periodic
renewal of the designated agent
listing,
67
the Office has not included
such a requirement in the proposed
rule. It is true that, in the context of the
designated agent databases for online
service providers under the DMCA, the
Office implemented a renewal
requirement to ‘‘encourage effective
compliance with the requirements of [17
U.S.C.] 512(c)(2).’’
68
That provision
reflects the statutory requirement that a
service provider must designate an
agent with the Copyright Office to be
eligible for statutory safe harbor
provisions.
69
Here, designating a service
agent is not a statutory requirement for
service on a corporation, partnership, or
unincorporated association, but an
administrative convenience.
70
In
addition, the claimant may effectuate
service by alternative means. While the
Office accepts the possibility that
corporations, partnerships, or
unincorporated associations may not
keep current their designations, service
on the agent who is designated in the
directory shall be valid unless the
designating entity cancels or amends the
designation. The Office believes that
this should offer sufficient incentive to
parties to keep their designations
current.
Finally, the proposed rule provides
that if the CCB determines that a
designation does not qualify, or if it has
reason to believe the submitter does not
have authority to make the designation,
CCB staff will notify the submitter that
the designation will be removed. The
submitter will then have ten days to
respond. If the submitter does not
respond, or the CCB determines that the
response is insufficient, the entry will
be removed from the directory.
The proposed rule also provides
requirements for service of materials
filed after the initial notice and claim.
The proposed rule has a general
requirement for service through the
CCB’s electronic filing management
system or by other means of electronic
service, and establishes such service
methods as the default. Unrepresented
parties, however, may be excused from
electronic service and instead receive
service by mail or in-person delivery.
The same structure is proposed for filing
documents beyond the initial notice and
claim: parties who are excused from
using the electronic filing and document
management system may file documents
by email, mail, hand delivery, or courier
delivery.
D. Waiver of Service
As an alternative to serving notice of
the claim on a respondent, the statute
allows the claimant to request waiver of
service. The claimant must send the
request for waiver of service to the
respondent ‘‘by first class mail or by
other reasonable means,’’ and return of
the acceptance of waiver must be at no
cost to the respondent.
71
The claimant’s
waiver request must be in writing,
include a notice of the proceeding and
a copy of the claim, state the date the
request was sent, and provide the
respondent thirty days to respond.
72
The personal service waiver, if accepted
by respondent, does not constitute a
waiver of the respondent’s right to opt
out of the proceeding.
73
The Office received one comment
specifically addressing waiver,
expressing concern regarding the use of
‘‘intimidating or misleading
language.’’
74
The Office intends to
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17 U.S.C. 1506(h).
76
Id. at 1506(h)(1).
77
86 FR at 16159.
78
17 U.S.C. 1506(h).
79
Authors Alliance Initial NOI Comments at 4;
Niskanen Ctr. Initial NOI Comments at 4.
80
AIPLA Initial NOI Comments at 3. Copyright
Alliance, et al. Initial NOI Comments at 14.
81
17 U.S.C. 1506(aa)(1), 1507(b)(2)(A).
82
Id. at 1506(i).
83
Id.
84
86 FR at 16161.
85
See, e.g., Copyright Alliance, et al. Initial NOI
Comments at 17–18; EFF Initial NOI Comments at
2–3; Engine Initial NOI Comments at 5–6; Internet
Archive Initial NOI Comments at 1–2; MPA, RIAA
& SIIA Initial NOI Comments at 8; Public
Knowledge, et al. Initial NOI Comments at 14.
86
Engine Initial NOI Comments at 5; Niskanen
Ctr. Initial NOI Comments at 4.
87
Public Knowledge, et al. Initial NOI Comments
at 13–14.
88
Copyright Alliance, et al. Initial NOI Comments
at 12.
require a standard form provided by the
CCB for requesting waiver of service.
The form will provide the basic
information regarding the proceeding,
clarify that the form is not a formal
service of summons and does not waive
the respondent’s right to opt out of the
proceeding, and describe the effect of
agreeing or declining to waive service.
The claimant can request waiver by
mailing the request, claim, initial notice,
and envelope with postage prepaid to
the respondent. The respondent will
have thirty days from the date the
request is sent to waive service, and
may return the signed waiver form by
mail or by email, if the claimant
includes an email address in the
request. If the respondent accepts
waiver of service, and further does not
opt out, respondent will have an
additional thirty days to file a response
beyond the time for response typically
set by the CCB. If the respondent does
not waive service, the claimant must
complete service with sufficient time to
file the proof of service with the CCB.
E. Second Notice
In addition to the notice served by the
claimant on the respondent, the CCB is
required to issue a second notice to the
respondent if the respondent has not
already opted out or filed a response.
The statute requires that the Register
promulgate regulations ‘‘providing for a
written notification to be sent by, or on
behalf of, the Copyright Claims Board to
notify the respondent of a pending
proceeding.’’
75
Similar to the claimant’s
initial notice, this notice must ‘‘include
information concerning the
respondent’s right to opt out of the
proceeding, the consequences of opting
out and not opting out, and a prominent
statement that, by not opting out within
60 days after the date of service . . . the
respondent loses the opportunity to
have the dispute decided by a court
created under article III of the
Constitution of the United States’’ and
‘‘waives the right to a jury trial
regarding the dispute.’’
76
This second
notice supplements the initial notice
served by the claimant and is intended
to facilitate understanding of the official
nature of the documents and
proceeding, encourage a respondent to
review the materials, and overall,
increase the likelihood that a
respondent engages with the asserted
claim and knowingly elects to proceed
or opt out of the CCB proceeding.
In the NOI, the Office sought
comment on the second notice,
including ‘‘its content and how to
ensure that recipients understand that it
is an official Federal Government
notification.’’
77
The Office also
requested input on the method of
service—specifically, whether the
second notice should be sent ‘‘by or on
behalf of’’ the CCB, whether the second
notice should be posted to the online
filing system or delivered by mail or
email, and how delivery should be
documented.
78
Commenters suggested that the
second notice should be substantially
the same as the first, with a prominent
warning that this is the second and final
notice with an explanation of the impact
of not opting out.
79
Parties also
recommended that the CCB issue the
second notice via U.S. mail.
80
The
Office agrees with these comments and
proposes that the second notice closely
mirror the initial notice, specifically
with regard to the description of the
CCB, the consequences of opting out,
the process of opting out, and accessing
legal assistance. The Office proposes to
issue the second notice by mail, but also
to deliver a second copy via email to the
designated service agent of a respondent
that is a corporation, partnership, or
unincorporated association that has
indicated in the designated service
agent directory that it will accept email
service.
The Office has also proposed that the
second notice be issued no later than
twenty days after the claimant files
proof of service or waiver of service.
The CCB will not issue a second notice
if the respondent has opted out. The
Office anticipates that the respondent
will have at least thirty days between
the receipt of the second notice and the
end of the opt-out period, given that the
claimant has seven days to file proof
after effectuating service or obtaining
waiver, and the Office will issue the
second notice no more than twenty days
after that. Delays in the claimant’s filing
of proof of service or waiver may
constitute good cause for extending the
opt-out or response period.
F. Opt-Out Procedures
Once the respondent receives notice
of the claim, the respondent has sixty
days to opt out of the proceeding before
the CCB, although the CCB can extend
that period in the interests of justice,
such as for a delay in the receipt of a
second notice due to a claimant’s failure
to file proof of service in a timely
manner.
81
If a respondent does not
timely opt out, the proceeding will
become active and the respondent will
be bound by the CCB’s determination.
82
If the respondent does opt out, the
proceeding will be dismissed without
prejudice.
83
The Office solicited general input
regarding opt-out, in particular, the form
and process of a written opt-out
notice.
84
Commenters were consistent
that the opt-out process should be quick
and easy to exercise, and that
respondents should be provided both
online and mail options for opting out.
85
Parties proposed different approaches
for the online opt-out process.
Suggestions included the creation of a
QR code,
86
a button on the CCB home
page,
87
and providing a verification key
code for security.
88
The Office
appreciates parties’ comments on this
issue and proposes an opt-out
notification form that asks for the docket
number of the claim, identifying
information regarding the respondent,
and a signed affirmation that the person
affirming is the respondent identified in
the claim (or a representative of that
respondent) and that the respondent
will not be participating in the CCB
proceeding. This notification can be
submitted either online using a form on
the CCB’s website or through the mail,
or via hand delivery or commercial
courier. The Office has included the
suggestion that an online opt-out be
accompanied by a verification code
provided in the initial notice and
second notices, and will continue to
consider the remaining suggestions
regarding online opt-out as it develops
its form, website, and online filing
system. The CCB will include in the
initial and second notice instructions
for completing opt-out election online,
as well as by using a paper opt-out form.
The proposed rule clarifies various
issues related to the scope and effect of
opting out. In particular, the rule
requires that each respondent to a
proceeding independently opt out, and
that an opt-out will be effective against
duplicate claims but not unrelated
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86 FR at 16161.
90
For example, a claimant could file a federal
lawsuit after the respondent opts out of a CCB
claim. The statute contemplates that the parties
could agree to a CCB proceeding in lieu of further
litigation. See 17 U.S.C. 1504(d)(2).
91
86 FR at 16161.
92
17 U.S.C. 1504(c)(5).
93
Id. at 1506(g)(7)(B).
94
Id. at 1506(i). A proceeding is deemed active
when ‘‘proof of service has been filed by the
claimant and the respondent does not submit an
opt-out notice to the [CCB] within [the] 60-day
period.’’ Id.
95
Id. at 1506(k).
96
Fed. R. Civ. P. 12(h).
97
H.R. Rep. No. 116–252, at 22.
98
17 U.S.C. 1504(c)(4)(B)(i).
99
Id. at 1504(c)(4)(B)(ii).
100
Id. at 1506(f)(2).
101
Id. at 1506(f)(3).
102
Fed. R. Civ. P. 13(a).
claims. The Office recognized that
‘‘Congress did not establish a blanket
opt-out for any entities other than
libraries and archives,’’
89
and yet the
Office also recognizes that the result of
an opt-out is a dismissal without
prejudice, leaving a claimant open to
file substantially the same claim again.
The proposed rule is crafted in light of
the Office’s inability to impose a blanket
opt-out, but still seeks to avoid
subjecting a respondent to refiled
claims.
Not included in this proposed rule is
a specific mechanism for a respondent
to revoke an opt-out for a particular
claim. The Office recognizes that there
may be situations where respondents
may wish to change their minds and opt
in to a proceeding that was previously
filed with the CCB and dismissed due
to a prior opt-out election.
90
The Office
welcomes comment on whether the
regulatory text should include a
provision permitting a respondent to
give the CCB notice of an intention to
participate after an initial opt-out, and,
if so, any suggestions for regulatory
language to govern this process.
The Office also solicited comments
regarding whether it should create a
publicly accessible list of entities or
individuals who have opted out of
particular proceedings.
91
At present,
given the limited time before the
anticipated commencement of CCB
operations and the need to focus on
establishing the core proceedings of the
CCB, the proposed rule does not provide
for a public list of prior opt outs. The
Office may, however, revisit this issue
in the future.
G. Response
A respondent who decides not to opt
out of the proceeding must file a
response to the claim with the CCB. The
response may include ‘‘legal or
equitable defense[s] under this title or
otherwise available under law’’
92
in
response to the claim. A respondent
who timely waives service has an
additional thirty days to file a response
in addition to any deadlines set forth by
the CCB.
93
The statute is otherwise
silent as to the timing of a response
filing, and a proceeding is considered
active prior to the filing of any
response.
94
Given that a scheduling
order must be sent out ‘‘upon
confirmation that a proceeding has
become an active proceeding’’
95
i.e.,
upon the filing of proof of service and
the passing of the opt-out window—the
Office understands this requirement to
mean that any response timeline is to be
set forth after the proceeding becomes
active and should be included in the
scheduling order. Accordingly, the
scheduling order issued by the CCB
‘‘upon confirmation that a proceeding
has become an active proceeding’’ will
include a thirty-day deadline from the
date of the scheduling order for filing
the response. If the respondent has
waived service, thereby availing itself of
an extra thirty days to respond to the
claim, the order will require that the
response be filed within sixty days of
the date of the scheduling order.
The Office proposes that to respond to
a claim, the respondent must complete
the appropriate form provided by the
CCB and submit the completed form
through the Board’s electronic filing and
document management system. If a
respondent is unable to use the
electronic filing and document
management system, it may submit a
response by following alternative
submission instructions provided in the
form or by the CCB. In addition to
identifying information and
certification, the form will ask for short
statements from the respondent
disputing the facts of the claim and
describing the dispute or the reasons
claimant’s claim has no merit from its
point of view. As discussed below, the
respondent will be able to raise
counterclaims. For infringement claims,
the form will allow the respondent to
identify relevant defenses. In contrast to
the Federal Rules of Civil Procedure,
96
however, the proposed regulation does
not provide that a defense that is not
asserted in a response is waived by the
respondent. At this early stage of the
proceeding, such a rigid application of
pleading requirements would impose an
unjustifiable burden on respondents,
especially those who are representing
themselves. A subsequent rulemaking
will address the appropriate stage at
which defenses must be raised.
The proposed rule also allows
optional documentation to be attached
to the response form, including copies
of the works involved in the claim. In
requesting this information, the Office is
seeking to provide respondents with the
opportunity to meaningfully respond
during the initial stage of the
proceeding.
For the response, the Office is
particularly interested in comments on
an appropriate presentation of possible
defenses available to the respondent,
any instructional or educational
material that would assist the
respondent in constructing its response,
and any other suggestions that would
enhance the respondent’s ability to be
meaningfully heard and the claimant to
be on notice of defenses.
97
With respect
to defenses, the Office seeks comment
on whether providing a list of defenses
(or a link to lists of defenses) that are
commonly pleaded in copyright
infringement suits would be productive
at this, or any, stage in the case, and
how to ensure that a respondent
understands the defenses available and
only asserts those that are applicable.
H. Counterclaims
The CCB may also hear counterclaims
that either ‘‘arise[ ] under section 106 or
section 512(f) and out of the same
transaction or occurrence that is the
subject of a claim of infringement, . . .
a claim of noninfringement, . . . or a
claim of misrepresentation,’’
98
or
‘‘arise[ ] under an agreement pertaining
to the same transaction or occurrence
that is the subject of a claim of
infringement . . . if the agreement
could affect the relief awarded to the
claimant.’’
99
Any asserted counterclaim
is subject to the same compliance
review applicable to an initial claim
100
and is subject to dismissal for
unsuitability.
101
The Office proposes that the
information required to assert a
counterclaim should closely mirror the
information required to assert a claim. A
counterclaim must be filed at the time
of the response, unless the Board, for
good cause, permits it to be asserted
later in the proceeding. This approach
resembles the general requirement of
asserting a compulsory counterclaim in
federal court.
102
In proposing this
approach, the Office is seeking to
maintain an efficient, orderly procedure
that provides parties sufficient notice as
to the issues involved in the proceeding.
The requirements for responding to a
counterclaim largely mirror the
requirements for responding to a claim,
including that a failure to file a response
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17 U.S.C. 1506(f)(2) (stating that when the
Copyright Claims Attorney finds a counterclaim to
be compliant, ‘‘the counterclaimant and such other
parties shall be so notified’’).
104
Id. at 1504(c)(4).
105
Id. at 708.
106
Id. at 1501(1).
107
Id. at 1506(e)(3).
108
Id. at 1510(c).
109
The statutory fee for filing suit in a federal
district court is $350, 28 U.S.C. 1914(a), and an
additional fee of $52 is charged as an administrative
fee by the Judicial Conference of the United States.
Id.
110
17 U.S.C. 1506(e).
111
Id. at 1506(x).
112
Id. at 1501(c).
113
H.R. Rep. No. 116–252, at 17; S. Rep. No. 116–
105, at 9–10.
114
S. Rep. No. 116–105, at 4 n.4.
115
17 U.S.C. 1506(e)(3).
116
Id. at 1506(i) (‘‘If proof of service has been
filed by the claimant and the respondent does not
submit an opt-out notice to the Copyright Claims
Board within that 60-day period, the proceeding
shall be deemed an active proceeding.’’).
117
See, e.g., Maryland Courts, District Court of
Maryland Cost Schedule DCA–109, (rev. 2018),
https://www.courts.state.md.us/sites/default/files/
import/district/forms/acct/dca109.pdf (assessing
$18.00 for a small claims cross claim); Superior
Court of California, Statewide Civil Fee Schedule
(2014), https://www.courts.ca.gov/documents/
filingfees.pdf (assessing fees for the answer or other
first paper filed by a party other than plaintiff).
118
17 U.S.C. 1506(g)(5)(B).
119
86 FR 16160.
120
37 CFR 201.3(c)(23).
121
Booz Allen Hamilton, 2017 Fee Study Report
26 (2017), https://www.copyright.gov/rulemaking/
feestudy2018/fee_study_report.pdf.
will constitute default. The triggering
event for responding to a counterclaim,
however, is the notification by a
Copyright Claims Attorney that the
counterclaim is compliant,
103
rather
than the issuance of a scheduling order.
When a respondent files a counterclaim,
a Copyright Claims Attorney must
conduct the same compliance review
that occurs after the filing of an initial
claim. If the counterclaim is found to be
compliant, the Board will provide
notification of compliance, which will
begin the counterclaim respondent’s
thirty-day period to respond. The Board
then will issue a new scheduling order
updating the prior due dates as
appropriate.
The proposed rule does not provide a
mechanism for the respondent to the
counterclaim to opt out of the
proceeding. The Office encourages
comment on this issue, including as to
whether such a process is permitted
under the statute. The Office notes that
Congress did not set forth a procedure
for opting out of a counterclaim, in
contrast to the detailed procedure set
forth for the respondent’s initial ability
to opt out. It also is noteworthy that
Congress has limited allowable
counterclaims to those arising from the
same transaction or occurrence, and has
further limited such claims to those
implicating copyright or an agreement
affecting the relief to be awarded to the
claimant.
104
Accordingly, there arguably
should be no surprise for the claimant
when a counterclaim is asserted. For
example, a claimant who brings an
action before the CCB seeking a
declaration of noninfringement of a
work could reasonably expect a
counterclaim for infringement of that
same work. As the claimant has already
voluntarily submitted to, and in fact
requested, the CCB to take up the
general issue at hand, having an opt-out
procedure for counterclaims potentially
could constitute an inefficient use of
time and resources.
I. Fees
The Register has general authority to
set fees for Copyright Office services,
105
and is specifically directed to set certain
fees related to CCB proceedings.
106
Here, the Office sets forth proposed fees
relating to the CCB rules included in
this notice. The Office will propose
additional fees in subsequent
rulemakings for the services addressed
in those proceedings.
1. Fee for Filing a Claim
To commence a proceeding before the
CCB, a claim must be accompanied ‘‘by
a filing fee in such amount as may be
prescribed in regulations established by
the Register of Copyrights.’’
107
The
Office is given upper and lower limits
to the filing fees it may assess: ‘‘the sum
total of’’ filing fees must not be less than
$100 or exceed the ‘‘cost of filing an
action in a district court of the United
States,’’
108
currently $402.
109
The
Office understands the ‘‘sum total of’’
filing fees to consist of the two filing
fees indicated in the statute: The filing
fee for the initial claim
110
and the filing
fee to request review of a final
determination by the Register.
111
The
amount of fees must ‘‘further the goals
of the Copyright Claims Board.’’
112
The Office proposes an initial claim
filing fee of $100 in the interest of
facilitating access to the CCB. Given
Congress’s goal of ensuring that the CCB
be accessible to the widest constituency
possible,
113
the Office believes it is
appropriate to keep the fee at the
statutory minimum.
The Senate Report proposed in a
footnote that the Office consider a two-
tiered fee structure, with an initial fee
assessed when the claim is filed and a
second fee assessed after the claim
becomes active.
114
After consideration,
the Office has not included such a
framework in the proposed rule. First, it
is not clear that the Office has the
statutory authority to split fees in this
way. While the statute expressly
provides for a fee to initiate a claim,
115
it does not require a separate fee for a
proceeding to become active.
116
Furthermore, if the Office were to
establish a system in which it charged
less than $100 for the first tier, and the
claimant did not move on to the second
tier, the total filing fees would not reach
the statutory floor. The Office invites
comment on these issues.
For similar reasons, the Office does
not currently propose a fee for a
counterclaim. In contrast to the
statutory provisions relating to a claim,
the CASE Act contains no express
authorization for the Office to charge
fees for a counterclaim. The Office also
notes that fees for counterclaims are not
required in federal district court,
although some state courts do assess
such fees.
117
The Office welcomes
comment on this matter as well.
2. Fee for Designated Service Agents
As part of its authority to maintain a
directory of service agents, the Office
‘‘may require . . . corporations,
partnerships, and unincorporated
associations designating . . . service
agents to pay a fee to cover the costs of
maintaining the directory.’’
118
As
discussed in the NOI,
119
the designated
service agent directory will be similar in
nature to the Office’s existing DMCA
designated agent directory. The fee for
adding an entry to the DMCA
designated agent directory is $6.
120
This
amount was selected, despite an
estimated $52 operating cost, in part
due to the elastic nature of demand for
the DMCA directory.
121
The Office
anticipates that the demand for the CCB
designated service agent directory will
be similarly elastic, if not more, given
that participation in the designated
service agent directory is not a statutory
requirement. The proposed rule
accordingly sets a $6 fee for designation
of a service agent for CCB purposes. The
Office believes that setting the fee at this
low level will encourage participation
by corporations, partnerships, and
unincorporated associations, which in
turn will produce a robust database that
benefits claimants and respondents
alike.
List of Subjects
37 CFR Part 201
Copyright, General provisions.
37 CFR Part 220
Claims, Copyright, General.
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37 CFR Part 222
Claims, Copyright.
37 CFR Part 223
Claims, Copyright.
37 CFR Part 224
Claims, Copyright.
Proposed Regulations
For the reasons stated in the
preamble, the U.S. Copyright Office
proposes to amend Chapter II,
Subchapters A and B, of title 37 Code
of Federal Regulations to read as
follows:
Subchapter A—Copyright Office and
Procedures
PART 201—GENERAL PROVISIONS
1. The authority citation for part 201
continues to read as follows:
Authority: 17 U.S.C. 702.
2. In § 201.3, revise the section
heading and add paragraph (g) to read
as follows:
§ 201.3. Fees for registration, recordation,
and related services, special services, and
services performed by the Licensing
Section and the Copyright Claims Board.
* * * * *
(g) Copyright Claims Board fees. The
Copyright Office has established the
following fees for specific services
related to the Copyright Claims Board:
T
ABLE
4
TO
P
ARAGRAPH
(g)
Copyright claims board fees Fees
($)
(1) Filing a claim before the Copyright Claims Board ......................................................................................................................... 100
(2) Designation of a service agent by a corporation, partnership, or unincorporated association under 17 U.S.C. 1506(g)(5)(B),
or amendment of designation .......................................................................................................................................................... 6
(3) [Reserved] ...................................................................................................................................................................................... ........................
Subchapter B—Copyright Claims Board and
Procedures
3. Add part 220 to read as follows:
PART 220—GENERAL PROVISIONS
Sec.
220.1 Definitions.
Authority: 17 U.S.C. 702, 1510.
§ 220.1. Definitions.
For purposes of this subchapter:
An initial notice means the notice of
a proceeding that accompanies a claim
or counterclaim in a Copyright Claims
Board proceeding as described in 17
U.S.C. 1506(g).
A second notice means the notice of
a proceeding sent by the Copyright
Claims Board as described in 17 U.S.C.
1506(h).
4. Add part 222 read as follows:
PART 222—PROCEEDINGS
Sec.
222.1 [Reserved]
222.2 Initiating a proceeding; the claim.
222.3 Content of initial notice to
respondent.
222.4 Second notice by or on behalf of the
Board.
222.5 Service; designated service agents.
222.6 Waiver of service.
222.7 Response.
222.8 Counterclaim.
222.9 Response to counterclaim.
Authority: 17 U.S.C. 702, 1510.
§ 222.1 [Reserved]
§ 222.2 Initiating a proceeding; the claim.
(a) Initiating a proceeding. A claimant
may initiate a proceeding before the
Copyright Claims Board by submitting
the following information through the
electronic filing system—
(1) A claim, using a form provided on
the Copyright Claims Board’s website;
(2) A completed initial notice, using
the form provided on the Copyright
Claims Board’s website; and
(3) The filing fee set forth in 37 CFR
201.3.
(b) Electronic filing requirement.
Except as provided, otherwise in this
paragraph, to submit the claim and
filing fee, the claimant must be a
registered user of the Board’s electronic
filing system. A claimant who is unable
to use the electronic filing system and
submits the certification provided for in
37 CFR 222.5(e)(2)(ii) may initiate a
proceeding by using printed forms and
alternate submission instructions
provided by the Copyright Claims
Board.
(c) Contents of the claim. The claim
shall include:
(1) A caption, providing the name(s)
of the claimant(s) and respondent(s);
(2) Identification of the claims
asserted against the respondent(s),
which shall consist of at least one of the
following:
(i) A claim for infringement of an
exclusive right in a copyrighted work
provided under 17 U.S.C. 106;
(ii) A claim for a declaration of
noninfringement of an exclusive right in
a copyrighted work provided under 17
U.S.C. 106; or,
(iii) A claim under 17 U.S.C. 512(f) for
misrepresentation in connection with—
(A) A notification of claimed
infringement; or
(B) A counter notification seeking to
replace removed or disabled material;
(3) The name(s) and address(es) of the
claimant(s);
(4) The name(s) and address(es) of the
respondent(s);
(5) For a claim asserted under
paragraph (b)(2)(i) of this section—
(i) Whether the claimant is the legal
or beneficial owner of rights in a work
protected by copyright and, if there are
any co-owners, their names;
(ii) The following information for
each work at issue in the claim:
(A) The title of the work;
(B) The author(s) of the work;
(C) If a copyright registration has
issued for the work, the registration
number and effective date of
registration;
(D) If an application for copyright
registration has been submitted but a
registration has not yet issued, the
service request number (SR number)
and application date; and
(E) The work of authorship’s category,
as set forth in 17 U.S.C. 102 for each
work at issue, or, if the claimant is
unable to determine the applicable
category, a brief description of the
nature of the work.
(iii) A statement describing the facts
relating to the alleged infringement,
including, to the extent known:
(A) Which exclusive rights as set forth
in 17 U.S.C. 106 are at issue;
(B) The beginning date of the alleged
infringement;
(C) The name(s) of the person(s) or
organization(s) alleged to have infringed
the work;
(D) The facts leading the claimant to
believe the work has been infringed;
(E) Whether the alleged infringement
has continued up to the date the claim
was filed, or, if it has not, the date the
alleged infringement ceased;
(F) Where the alleged act(s) of
infringement occurred; and
(G) If the claim of infringement is
asserted against an online service
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provider as defined in 17 U.S.C.
512(k)(1)(B) for infringement by reason
of the storage of or referral or linking to
infringing material that may be subject
to the limitations on liability set forth in
subsection 17 U.S.C. 512(b), (c), or (d),
an affirmance that the claimant has
previously notified the service provider
of the claimed infringement in
accordance with 17 U.S.C. 512(b)(2)(E),
(c)(3), or (d)(3), as applicable, and that
the service provider failed to remove or
disable access to the material
expeditiously upon the provision of
such notice;
(6) For a claim asserted under
paragraph (b)(2)(ii) of this section—
(i) The name of the party who is
asserting that the claimant has infringed
a copyright;
(ii) The following information for
each work alleged to have been
infringed, to the extent known to the
claimant:
(A) The title;
(B) If a copyright registration has
issued for the work, the registration
number and effective date of
registration;
(C) If an application for copyright has
been submitted, but a registration has
not yet issued, the service request
number (SR number) and registration
application date; and
(D) The work’s category, as set forth
17 U.S.C. 102, or, if the claimant is
unable to determine which category is
applicable, a brief description of the
nature of the work;
(iii) A brief description of the activity
at issue in the claim, including:
(A) Any exclusive rights as set forth
in 17 U.S.C. 106 that may be implicated;
(B) The beginning and ending dates of
the activities at issue;
(C) Whether the activities at issue
have continued to the date the claim
was filed;
(D) The name(s) of the person(s)
involved in the activities at issue; and
(E) Where the activities at issue
occurred;
(iv) A brief statement describing the
reasons why the claimant believes that
no infringement occurred, including any
relevant history or agreements between
the parties and whether any exceptions
and limitations as set forth in 17 U.S.C.
107 through 122 are implicated;
(7) For a claim asserted under
paragraph (b)(2)(iii) under this section—
(i) The sender of the notification of
claimed infringement;
(ii) The recipient of the notification of
claimed infringement;
(iii) The date the notification of
claimed infringement was sent;
(iv) If a counter notification was sent
in response to the notification—
(A) The sender of the counter
notification;
(B) The recipient of the counter
notification;
(C) The date the counter notification
was sent; and
(D) A description of the counter
notification;
(v) The words in the notification or
counter notification that allegedly
constituted a misrepresentation;
(vi) An explanation of why the
identified words allegedly constituted a
misrepresentation; and
(vii) An explanation of how the
alleged misrepresentation caused harm
to the claimant(s);
(8) A statement describing and
estimating the monetary harm suffered
by the claimant(s) as a result of the
alleged activity. For claims of
infringement, this statement may
address the copyright owner’s actual
damages and the profits received by
respondent(s) that are attributable to the
alleged infringement;
(9) Whether the claimant requests that
the proceeding be conducted as a
‘‘smaller claim’’ under 17 U.S.C. 1506(z)
and 37 CFR part 226, and would accept
a limitation on total damages of $5,000
if the request is granted; and
(10) A certification under penalty of
perjury that the information provided in
the claim is accurate and truthful to the
best of the certifying party’s knowledge.
The certification shall include the
typed, printed, or handwritten signature
of the claimant(s), and if the signature
is handwritten it shall be accompanied
by a typed or printed name.
(d) Additional matter. The claimant
may also include, as attachments to or
files accompanying the claim:
(1) A copy of the certificate of
copyright registration for a work that is
the subject of the proceeding;
(2) A copy of the allegedly infringed
work. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows where
the allegedly infringed work has been
posted;
(3) A copy of the allegedly infringing
material. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows any
allegedly infringing activity;
(4) A copy of the notification of
claimed infringement that is alleged to
contain the misrepresentation;
(5) A copy of the counter notification
that is alleged to contain the
misrepresentation; and
(6) Any other exhibits that play a
significant role in setting forth the facts
of the claim.
§ 222.3 Content of initial notice to
respondent.
(a) Content of initial notice. The
initial notice to the respondent shall be
prepared using a form made available by
the Copyright Claims Board that shall—
(1) Include on the first page a caption
that identifies the parties and includes
the docket number assigned by the
Board;
(2) Be addressed to the respondent;
(3) Identify the claimant and provide
a mailing address and other contact
information for the claimant or, if the
claimant is represented by counsel, the
claimant’s counsel;
(4) Advise the respondent that a legal
proceeding has been commenced by the
claimant(s) in the Board against the
respondent;
(5) Identify the nature of the claims
asserted against the respondent, which
shall consist of at least one of the
following:
(i) A claim for infringement of an
exclusive right in a copyrighted work
provided under 17 U.S.C. 106;
(ii) A claim for a declaration of
noninfringement of an exclusive right in
a copyrighted work provided under 17
U.S.C. 106 ; and
(iii) A claim under 17 U.S.C. 512(f) for
misrepresentation in connection with a
notification of claimed infringement or
a counter notification seeking to replace
removed or disabled material;
(6) Describe the Board, including that
it is a three-member tribunal within the
Copyright Office that has been
established by law to resolve certain
copyright disputes in which the total
monetary recovery does not exceed
$30,000;
(7) State that the respondent has the
right to opt out of participating in the
proceeding, and that the consequence of
opting out is that the proceeding will be
dismissed without prejudice and the
claimant will have to determine
whether to file a lawsuit in a federal
district court;
(8) State that if the respondent does
not opt out within 60 days from the day
the respondent received the initial
notice, the consequences are that the
proceeding will go forward and the
respondent will—
(i) Lose the opportunity have the
dispute decided by the federal court
system, created under Article III of the
Constitution of the United States; and
(ii) Waive the right to have a trial by
jury regarding the dispute;
(9) State that the notice is in regard to
an official government proceeding and
provide information on how to access
the docket of the proceeding in the
Board’s electronic filing system;
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(10) Provide information on how to
become a registered user of the Board’s
electronic filing system;
(11) State that parties may represent
themselves in the proceeding, but note
that a party may wish to consult with
an attorney or with a law school clinic,
and provide reference to pro bono (free)
resources which may be available and
are listed on the Board’s website;
(12) Include the name, address, email
address, and telephone number of the
claimant(s) or, if a claimant is
represented by counsel, of the
claimant’s counsel;
(13) Indicate where other pertinent
information concerning proceedings
before the Board may be found on the
Board’s website;
(14) Provide direction on how a
respondent may opt out of the
proceeding, either online or by mail;
and
(15) Include any additional
information that the Board may
determine should be included.
(b) Following notification from the
Board pursuant to section 17 U.S.C.
1506(f)(1)(A) to proceed with service of
the claim, the respondent shall cause
the initial notice, the claim, the paper
opt-out notification form, and any other
documents required by the direction of
the Board to be served with the initial
notice and the claim, upon each
respondent as prescribed in 37 CFR
222.5(a) and 17 U.S.C. 1506(g). The
copy of the claim that is served shall be
the copy that is, at the time of service,
available on the Board’s electronic filing
system.
§ 222.4 Second Notice by or on behalf of
the Board.
(a) Content of second notice. The
second notice to the respondent shall:
(1) Include on the first page a caption
identifying the parties and the docket
number;
(2) Be addressed to the respondent,
using the address that appeared in the
initial notice;
(3) Include the claimant identification
and contact information from the initial
notice;
(4) Advise the respondent that a legal
proceeding has been commenced by the
claimant(s) in the Copyright Claims
Board against the respondent;
(5) Identify the nature of the claims
asserted against the respondent, which
shall consist of at least one of the
following:
(i) A claim for infringement of an
exclusive right in a copyrighted work
provided under 17 U.S.C. 106;
(ii) A claim for a declaration of
noninfringement of an exclusive right in
a copyrighted work provided under 17
U.S.C. 106; and
(iii) A claim under 17 U.S.C. 512(f) for
misrepresentation in connection with—
(A) A notification of claimed
infringement; or
(B) A counter notification seeking to
replace removed or disabled material.
(6) State that the respondent has the
right to opt out of participating in the
proceeding, and that the consequence of
opting out is that the proceeding will be
dismissed without prejudice and the
claimant will have to determine
whether to file a lawsuit in a federal
district court;
(7) State that if the respondent does
not opt out within 60 days from the day
the respondent received the initial
notice, the consequences are that the
proceeding will go forward and the
respondent will—
(i) Lose the opportunity have the
dispute decided by the federal court
system, created under Article III of the
Constitution of the United States; and
(ii) Waive the right to have a trial by
jury regarding the dispute;
(8) Provide information on how to
access the docket of the proceeding in
the Board’s electronic filing system;
(9) Provide information on how to
become a registered user of the Board’s
electronic filing system;
(10) State that parties may represent
themselves in the proceeding, but note
that a party may wish to consult with
an attorney or with a law school clinic,
and provide reference to pro bono (free)
resources which may be available and
are listed on the Board’s website;
(11) Include the name, address, email
address, and telephone number of the
claimant(s) or, if a claimant is
represented by counsel, of the
claimant’s counsel;
(12) Indicate where other pertinent
information concerning proceedings
before the Board may be found on the
Board’s website;
(13) Provide direction on how a
respondent may opt out of the
proceeding, either by online or by mail;
and
(14) Include any additional
information that the Board may
determine should be included.
(b) Timing of second notice. The
Board shall issue the second notice in
the manner prescribed by 37 CFR 222.5
no later than 20 days after the claimant
files proof of service or a completed
waiver of service with the Board unless
the respondent has already submitted an
opt-out notification pursuant to 37 CFR
223.1.
§ 222.5 Service; designated service
agents.
(a) Service of initial notice, claim, and
related documents—(1) Timing of
service. A claimant or counterclaimant
may proceed with service of a claim or
counterclaim only after the claim or
counterclaim is reviewed by a Copyright
Claims Officer and found to comply
with this part and 17 U.S.C. chapter 15.
(2) Service methods. Service of the
initial notice, the claim, and other
documents required by this part or the
Copyright Claims Board to be served
with the initial notice and claim shall be
made as provided under 17 U.S.C.
1506(g), as supplemented by this
section. If service is made upon a
service agent designated under 17
U.S.C. 1506(g)(5)(B), service shall be
made by certified mail or by any other
method that the entity that has
designated the service agent has stated,
in its designation under § 222.5(b)(7),
that it will accept.
(3) Filing of proof of service. (i) No
later than seven calendar days after
service of the initial notice and all
accompanying documents under
paragraph (a)(2) of this section, a
claimant shall file a completed proof of
service form through the Board’s
electronic filing system. The proof of
service form shall be located on the
Board’s website.
(ii) The claimant’s failure to comply
with the filing deadline in paragraph
(a)(1) of this section may constitute
exceptional circumstances justifying an
extension of the 60-day period in which
a respondent may deliver an opt-out
notification to the Board under 17
U.S.C. 1506(i).
(b) Designated service agents. (1) A
corporation, partnership, or
unincorporated association that is
entitled under 17 U.S.C. 1506(g)(5)(B) to
designate a service agent to receive
notice of a claim shall submit the
designation electronically through the
Copyright Claims Board’s designated
service agent directory, which shall be
available on the Board’s website.
(2) A service agent designation shall
be accompanied by the fee set forth in
37 CFR 201.3.
(3) Each corporation, partnership, or
unincorporated association that submits
a service agent designation may include
up to five trade names that function as
alternate business names (i.e., ‘‘doing
business as’’ or ‘‘d/b/a’’ names) under
which a registered corporation,
partnership, or unincorporated
association is doing business. Related or
affiliated corporations, partnerships, or
unincorporated associations that are
separate legal entities (e.g., parent and
subsidiary companies) must file
separate service agent designations,
although a submitter may designate the
same service agent for multiple
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corporations, partnerships, or
unincorporated associations.
(4) To complete the designation, the
person submitting the designation will
be required to make a certification,
under penalty of perjury, that the
submitter is authorized by law to make
the designation on behalf of the
corporation, partnership, or
unincorporated association.
(5) The designated service agent
submission shall include:
(i) The legal name, business address,
email, and telephone number of the
corporation, partnership, or
unincorporated association;
(ii) The principal place of business of
the corporation, partnership, or
unincorporated association;
(iii) For corporations, the state of
incorporation, any associated state file
or registration number, and all other
states in which the corporation is
registered to do business;
(iv) Up to five trade names of the
corporation, partnership, or
unincorporated association, as
described by paragraph (b)(3) of this
section;
(v) The name, business address (or, if
the agent does not have a business
address, the address of the residence of),
email, and telephone number of the
designated service agent;
(vi) The submitter’s name, email, and
telephone number; and
(vii) The corporation, partnership, or
unincorporated association’s service
method election, as described in
paragraph (b)(7) of this section.
(6) The designation shall be indexed
under the names of each corporation,
partnership, or unincorporated
association for which an agent has been
designated and shall be made available
on the Board’s website. The business
address, email, and telephone number
of the corporation, partnership, or
unincorporated association provided
under paragraph (b)(5)(i) of this section
will not be made publicly available on
the designated service agent directory
website, but such information will be
made available to Board staff.
(7)(i) A corporation, partnership, or
unincorporated association that
designates a service agent shall, as a
condition of designating a service agent,
consent to receive service upon the
agent by means of certified mail. It may
also indicate in its designation that it
consents to receive service by email.
(ii) If a corporation, partnership, or
unincorporated association indicates
that it consents to receive service by
email, the designated service agent’s
email address will be displayed on the
designated service agent directory.
(iii) In cases where the designation
states that service may be made by
email, the person submitting the
designation shall affirm under penalty
of perjury that the corporation,
partnership, or unincorporated
association for which the agent has been
designated waives the right to personal
service by means other than email and
that the person making the designation
has the authority to waive that right on
behalf of the corporation, partnership,
or unincorporated association.
(iv) The corporation, partnership, or
unincorporated association’s service
agent’s place of business or, if there is
no place of business, the address of the
service agent’s residence, must be
located within the United States.
(8) A corporation, partnership, or
unincorporated association may amend
a designation of a service agent by
following directions on the Board’s
website.
(i) Such amendment shall be
accompanied by the fee set forth in 37
CFR 201.3.
(ii) The requirements found in
paragraph (b) of this section shall apply
to the service agent designation
amendment.
(9) After a corporation, partnership, or
unincorporated association submits a
service agent designation, such
designation will be made available on
the public designated service agent
directory after payment has been
remitted and the Board has reviewed the
submission to determine whether the
submission qualifies for the designated
agent provision. The review may
include confirmation that the
submission was authorized.
If the Board determines that a
submitted service agent designation
does not qualify under this section or if
it has reason to believe that the
submitter was not authorized by law to
make the designation on behalf of the
corporation, partnership, or
unincorporated association, it will
notify the submitter that it intends not
to add the record to the directory, or
that it intends to remove (or not
approve) the record from the directory
and will provide the submitter ten
calendar days to respond. If the
submitter fails to respond, or if, after
reviewing the response, the Board
determines that the submission does not
qualify for the designated service agent
directory, the entity will not be added
to, or will be removed from, the
directory.
(c) Waiver of personal service. Waiver
of personal service may be completed by
following the procedures in 37 CFR
222.6.
(d) Service of other documents. All
documents other than those identified
in paragraph (a) of this section must be
served in accordance with this
paragraph.
(1) Service by the Copyright Claims
Board.
(i) Except as provided in paragraph
(d)(1)(ii) of this section, the Board shall
serve one copy of all orders, notices,
decisions, rulings on motions, and
similar documents issued by the Board
upon each party in accordance with
paragraph (d)(3) of this section.
(ii)(A) The Board shall serve the
second notice required under 17 U.S.C.
1506(h), along with a copy of the paper
opt-out notification form, by sending
them via certified mail to the
respondent at the address provided—
(1) In the designated service agent
directory, if the respondent is a
corporation, partnership, or
unincorporated association that has
designated a service agent; and
otherwise
(2) By the claimant in the claim.
(B) The Board shall also serve the
second notice by email if an email
address for the respondent has been
provided in the designated service agent
directory or by the claimant.
(2) Service by a party. Unless these
regulations or the Board provides
otherwise, each party to a proceeding
shall serve on every other party each of
the following documents in the manner
prescribed in paragraph (d)(3) of this
section:
(i) Any document filed by the
respondent other than an opt-out
notification;
(ii) Any document filed by the
claimant following the service of the
initial notice and the claim;
(iii) A discovery document required to
be served on a party;
(iv) A party submission filed with the
Board pursuant to 17 U.S.C. 1506(m);
(v) A written notice of appearance or
any similar document; and
(vi) Any other document permitted to
be filed by the Board.
(3) Service of other documents: How
made.—(i) Service on whom.
(A) If a party is represented by an
attorney or authorized representative,
service under this rule must be made on
the attorney or authorized
representative unless the Board orders
service on the party.
(B) If a party is not represented,
service under this rule must be made on
the party.
(ii) Service in general. (A) A
document is served under this
paragraph by sending it to a registered
user by filing it with the Board’s
electronic filing system or sending it by
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other electronic means that the person
to be served consented to in writing. For
these service methods, service is
complete upon filing or sending,
respectively, but is not effective if the
filer or sender learns that it did not
reach the person to be served.
(B) A party who is not represented by
counsel and who submits a certification
pursuant to 37 CFR 222.5(e)(2)(ii) and
serves that certification upon the other
parties by one of the methods set forth
in paragraphs (d)(1), (2), or (3) of this
section may be excused from serving
documents and receiving service of
documents electronically by the means
set forth in paragraph (d)(3)(ii)(A) of this
section. Service of a document by or
upon such a person shall be
accomplished by—
(1) Mailing it to the person’s last
known address, in which event service
is complete upon mailing it to the
person;
(2) Emailing it to the person, if the
person has consented to receive service
by email;
(3) Handing it to the person;
(4) Leaving it at the person’s office
with a clerk or other person in charge
or in a conspicuous place in the office;
(5) Leaving it at the person’s dwelling
or usual place of abode with someone of
suitable age and discretion who resides
there.
(e) Filing—(1) Required filings and
certificate of service. Other than service
of the initial notice and claim, any
document that is required to be served—
together with a certificate of service in
cases where a certificate of service is
required—must be filed with the Board
within a reasonable time after service,
but no later than thirty days after service
was completed. Notwithstanding the
above, unless the Board orders
otherwise, discovery requests and
responses must not be filed unless they
are used in the proceeding, as needed,
in relation to discovery disputes or
submissions on the merits.
(2) How filing is made—in general. (i)
A document is filed by submitting it
electronically to the Board’s electronic
filing system.
(ii) A party who is not represented by
counsel may be excused from the
requirements set forth in 37 CFR
222.5(e)(1) by submitting a statement to
the Board certifying under penalty of
perjury that the party is unable to use
the Board’s electronic filing system or
that doing so would cause an undue
hardship. The party must submit this
statement on a form obtained from the
Board. A party who submits such a
statement may, file a document by—
(A) Email, to an email address as
directed by the Board;
(B) Mail, by placing it in an envelope
addressed to Copyright Claims Board,
Library of Congress, James Madison
Memorial Building, 101 Independence
Avenue SE, Washington, DC 20559–
6000 or P.O. Box 71380, Washington,
DC 20024–1380, with postage prepaid,
and depositing it with the United States
Postal Service or major commercial
carrier, such as UPS or FedEx, for
delivery;
(C) Hand delivery by a private party
between the hours of 8:30 a.m. and 5:00
p.m. to the Copyright Office Public
Information Office, Room LM–401 in
the James Madison Memorial Building
of the Library of Congress, in an
envelope addressed as follows:
Copyright Claims Board, U.S. Copyright
Office, Library of Congress, James
Madison Memorial Building, 101
Independence Avenue SE, Washington,
DC 20559; or,
(D) Hand delivery by a commercial
courier (excluding FedEx, UPS, and
similar courier services); the envelope
must be delivered to the Congressional
Courier Acceptance Site (CCAS) located
at Second and D Street NE, Washington,
DC, addressed as follows: Copyright
Claims Board, Library of Congress,
James Madison Memorial Building, 101
Independence Avenue SE, Washington,
DC 20559–6000.
(3) Certificate of service. (i) Except as
provided in paragraph (e)(2) of this
section, every document filed with the
Board and required to be served upon
all parties must be accompanied by a
certificate of service signed by (or on
behalf of) the party making the service.
(ii) For any filing that occurs after the
filing of a response, no certificate of
service is required when a document is
served by filing it with the Copyright
Claims Board’s electronic filing system.
§ 222.6 Waiver of service.
(a) Content of waiver of service
request. The request for waiver of
service form shall:
(1) Bear the name of the Copyright
Claims Board;
(2) Include on the first page and
waiver page the caption identifying the
parties and the docket number;
(3) Be addressed to the respondent;
(4) Contain the date of the request;
(5) Notify the respondent that a legal
proceeding has been commenced by the
claimant(s) in the Board against the
Respondent;
(6) Advise that the form is not a
summons or official notice from the
Board;
(7) Request that respondent waive
formal service of summons by signing
the enclosed waiver;
(8) State that a waiver of personal
service shall not constitute a waiver of
the right to opt out of the proceeding.
(9) Describe the effect of agreeing or
declining to waive service;
(10) Include a waiver of personal
service provided by the Board for
respondent to sign that includes:
(i) An affirmation that the respondent
is waiving service;
(ii) An affirmation that waiving
service does affect respondent’s ability
to opt out of the proceeding;
(iii) An affirmation that respondent
understands the requirement to opt out
within 60 days of receiving the request;
(iv) The name, address, email address,
and telephone number of the
respondent; and
(v) The typed, printed, or handwritten
signature of the respondent, and if the
signature is handwritten it shall be
accompanied by a typed or printed
name.
(b) Delivery of request for waiver of
service. A claimant may request that a
respondent waive personal service as
provided by 17 U.S.C. 1506(g)(6) by
delivering, via first class mail, the
following to the respondent:
(1) A completed waiver of personal
service form provided on the Board’s
website;
(2) The documents described in 37
CFR 222.3, including the initial notice
and the claim; and
(3) An envelope, with postage prepaid
and addressed to the claimant.
(c) Completing waiver of service. The
respondent may complete waiver of
service by returning the signed waiver
form in the postage prepaid envelope to
claimant by mail or, if the claimant also
provides an email address to which the
waiver of personal service form may be
returned, by means of an email to which
a copy of the signed form is attached.
Waiving service does affect respondent’s
ability to opt out of proceedings.
(d) Timing of completing waiver. The
respondent has 30 days from the date on
which the request was sent to return the
waiver form.
§ 222.7 Response.
(a) Filing a response. A respondent
who does not opt out within 60 days
after receiving the initial notice shall
begin participation before the Board by
submitting a response through the
electronic filing system using the
response form provided by the Board,
and serving the response form in the
manner set forth in 37 CFR 222.5(d).
Except as provided in this paragraph, to
submit the response, the respondent
must be a registered user of the
electronic filing system. A respondent
who is unable to use the electronic
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filing system and submits the
certification provided for in 37 CFR
222.5(e)(2)(ii) may file a response by
using printed forms and alternate
submission instructions provided by the
Board.
(b) Content of response. The response
shall include:
(1) A caption identifying the parties
and the docket number assigned by the
Board;
(2) The name, address, phone number,
and email of each respondent filing the
response;
(3) A short statement, if applicable,
disputing any facts asserted in the
claim;
(4) For claims brought under 17
U.S.C. 1504(c)(1), a statement describing
in detail the dispute regarding the
alleged infringement, including any
defenses as well as any reason why the
Respondent believes there was no
copyright infringement, including
whether any exceptions and limitations
as set forth in 17 U.S.C. 107 through 122
that are implicated;
(5) For claims brought under 17
U.S.C. 1504(c)(2), a statement describing
in detail the dispute regarding the
alleged infringement, including reasons
why the respondent believes there was
copyright infringement;
(6) For claims brought under 17
U.S.C. 1504(c)(3), a statement describing
in detail the dispute regarding the
alleged misrepresentation and an
explanation of why the respondent
believes the identified words do not
constitute misrepresentation;
(7) Any counterclaims; and
(8) A certification under penalty of
perjury that the information provided in
the response is accurate and truthful to
the best of the certifying party’s
knowledge. The certification shall
include the typed, printed, or
handwritten signature of the
respondent(s), and if the signature is
handwritten it shall be accompanied by
a typed or printed name.
(c) Additional matter. The respondent
may also include, as attachments to or
files that accompany the Response:
(1) A copy of the certificate of
copyright registration for a work that is
the subject of the proceeding;
(2) A copy of the allegedly infringed
work. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows where
the allegedly infringed work has been
posted;
(3) A copy of the allegedly infringing
material. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows any
allegedly infringing activity;
(4) A copy of the notification of
claimed infringement that is alleged to
contain the misrepresentation;
(5) A copy of the counter notification
that is alleged to contain the
misrepresentation; and
(6) Any other exhibits that play a
significant role in setting forth the facts
of the response.
(d) Timing of response. The
respondent has 30 days from the
issuance of the scheduling order to
submit a response. If the respondent
waived service, the respondent has an
additional 30 days to submit the
response.
(e) Failure to file response. A failure
to file a response within the required
timeframe will constitute a default
under 17 U.S.C. 1506(u), and the Board
will begin proceedings in accordance
with 37 CFR 227.
§ 222.8 Counterclaim.
(a) Asserting a counterclaim. Any
party can assert a counterclaim falling
under the jurisdiction of the Board
that—
(1) Arises out of the same transaction
or occurrence as the initial claim; or
(2) Arises under an agreement
pertaining to the same transaction or
occurrence that is subject to an initial
claim of infringement, if the agreement
could affect the relief awarded to the
claimant.
(b) Electronic filing requirement. A
party may submit a counterclaim
through the electronic filing system
using the response form or counterclaim
form provided by the Board, and serving
the counterclaim as provided in § 222.5.
Except as otherwise provided in this
paragraph, to submit the counterclaim,
the respondent must be a registered user
of the electronic filing system. A
respondent who is unable to use the
electronic filing system and submits the
certification provided for in 37 CFR
222.5(e)(2)(ii) may submit a
counterclaim by using printed forms
and alternate submission instructions
provided by the Board.
(c) Content of counterclaim. The
counterclaim shall include:
(1) The name of the party against
whom the counterclaim is asserted;
(2) An identification of the
counterclaim, which shall consist of at
least one of the following:
(i) A claim for infringement of an
exclusive right in a copyrighted work
provided under 17 U.S.C. 106;
(ii) A claim for a declaration of
noninfringement of an exclusive right in
a copyrighted work provided under 17
U.S.C. 106; and
(iii) A claim under 17 U.S.C. 512(f) for
misrepresentation in connection with—
(A) A notification of claimed
infringement; or
(B) A counter notification seeking to
replace removed or disabled material.
(3) For a counterclaim asserted under
paragraph (b)(2)(i) of this section—
(i) Whether the counterclaimant is the
legal or beneficial owner of rights in a
work protected by copyright and, if
there are any co-owners, their names;
(ii) The following information for
each work at issue in the claim:
(A) The title of the work;
(B) The author(s) of the work;
(C) If a copyright registration has
issued for the work, the registration
number and effective date of
registration;
(D) If an application for copyright has
been submitted but a registration has
not yet issued, the service request
number (SR number) and registration
application date; and
(E) The work’s category, as set forth in
17 U.S.C. 102, or, if the counterclaimant
is unable to determine which category is
applicable, a brief description of the
nature of the work;
(iii) A statement describing the facts
relating to the alleged infringement,
including, to the extent known:
(A) Which exclusive rights as set forth
in 17 U.S.C 106 are at issue;
(B) The beginning date of the alleged
infringement;
(C) The name(s) of the person(s) or
organization(s) alleged to have infringed
the work;
(D) The nature of the alleged
infringement;
(E) Whether the alleged infringement
has continued up to the date the claim
was filed, or, if it has not, the date the
alleged infringement ceased;
(F) Where the alleged act(s) of
infringement occurred; and
(G) If the claim of infringement is
asserted against an online service
provider as defined in 17 U.S.C.
512(k)(1)(B) for infringement by reason
of the storage of or referral or linking to
infringing material that may be subject
to the limitations on liability set forth in
subsection 17 U.S.C. 512(b), (c), or (d),
an affirmance that the counterclaimant
has previously notified the service
provider of the claimed infringement in
accordance with 17 U.S.C. 512(b)(2)(E),
(c)(3), or (d)(3), as applicable, and that
the service provider failed to remove or
disable access to the material
expeditiously upon the provision of
such notice;
(4) For a counterclaim asserted under
paragraph (b)(2)(ii) of this section—
(i) The name of the party who is
asserting that the counterclaimant has
infringed a copyright;
(ii) The following information for
each work alleged to have been
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infringed, if that information is known
to the counterclaimant:
(A) The title;
(B) If a copyright registration has
issued for the work, the registration
number and effective date of
registration;
(C) If an application for copyright has
been submitted, but a registration has
not yet issued, the service request
number (SR number) and registration
application date; and
(D) The work’s category, as set forth
17 U.S.C. 102, or, if the counterclaimant
is unable to determine which category is
applicable, a brief description of the
nature of the work;
(iii) A brief description of the activity
at issue in the claim, including:
(A) Any exclusive rights as set forth
in 17 U.S.C. 106 that may be implicated;
(B) The beginning and ending dates of
the activities at issue;
(C) Whether the activities at issue
have continued to the date the claim
was filed;
(D) The name(s) of the person(s)
involved in the activities at issue; and
(E) Where the activities at issue
occurred;
(iv) A brief statement describing the
reasons why the counterclaimant
believes that no infringement occurred,
including any relevant history or
agreements between the parties and
whether any exceptions and limitations
as set forth in 17 U.S.C. 107 through 122
are implicated;
(5) For a counterclaim asserted under
paragraph (b)(2)(iii) of this section—
(i) The sender of the notification of
claimed infringement;
(ii) The recipient of the notification of
claimed infringement;
(iii) The date the notification of
claimed infringement was sent;
(iv) If a counter notification was sent
in response to the notification—
(A) The sender of the counter
notification;
(B) The recipient of the counter
notification;
(C) The date the counter notification
was sent; and
(D) A description of the counter
notification;
(v) The words in the notification or
counter notification that allegedly
constituted a misrepresentation;
(vi) An explanation of why the
identified words allegedly constituted a
misrepresentation; and
(vii) An explanation of how the
alleged misrepresentation caused harm
to the counterclaimant(s);
(6) A statement describing the harm
suffered by the counterclaimant(s) as a
result of the alleged activity. For claims
of infringement, this statement may
include a description of the profits
attributable to the alleged infringement
received by the counterclaimant(s)
against whom the counterclaim is
asserted.
(7) A statement describing the
relationship between the initial claim
and the counterclaim; and
(8) A certification under penalty of
perjury that the information provided in
the counterclaim is accurate and
truthful to the best of the certifying
party’s knowledge. The certification
shall include the typed, printed, or
handwritten signature of the
counterclaimant(s), and if the signature
is handwritten it shall be accompanied
by a typed or printed name.
(d) Additional matter. The
counterclaimant may also include, as
attachments to or files that accompany
the counterclaim:
(1) A copy of the certificate of
copyright registration for a work that is
the subject of the proceeding;
(2) A copy of the allegedly infringed
work. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows where
the allegedly infringed work has been
posted;
(3) A copy of the allegedly infringing
material. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows any
allegedly infringing activity;
(4) A copy of the notification of
claimed infringement that is alleged to
contain the misrepresentation;
(5) A copy of the counter notification
that is alleged to contain the
misrepresentation; and
(6) Any other exhibits that play a
significant role in setting forth the facts
of the counterclaim.
(e) Timing of counterclaim. A
counterclaim must be served and filed
at the time of the response unless the
Board, for good cause, permits a
counterclaim to be asserted at a
subsequent time.
§ 222.9 Response to counterclaim.
(a) Filing a response to a
counterclaim. Within 30 days following
the Board’s issuance of notification that
a counterclaim is compliant in
accordance with 37 CFR part 224, a
claimant against whom a counterclaim
has been asserted (‘‘counterclaim
respondent’’) shall serve a response to
the counterclaim in the manner set forth
in 37 CFR 222.5(d) and shall file the
response to the counterclaim with the
Board in the manner set forth in 37 CFR
222.5(e).
(b) Content of response to a
counterclaim. The response to a
counterclaim shall include:
(1) A caption identifying the parties
and the docket number;
(2) The name, address, phone number,
and email address of each counterclaim
respondent filing the response;
(3) A short statement, if applicable,
disputing any facts asserted in the
counterclaim;
(4) For counterclaims brought under
17 U.S.C. 1504(c)(1), a statement
describing in detail the dispute
regarding the alleged infringement,
including any defenses as well as any
reason why the counterclaim
respondent believes there was no
infringement of copyright, including
any exceptions and limitations as set
forth in 17 U.S.C. 107 through 122 that
are implicated;
(5) For counterclaims brought under
17 U.S.C. 1504(c)(2), a statement
describing in detail the dispute
regarding the alleged infringement,
including reasons why the counterclaim
respondent believes there is
infringement of copyright;
(6) For counterclaims brought under
17 U.S.C. 1504(c)(3), a statement
describing in detail the dispute
regarding the alleged misrepresentation
and an explanation of why the
counterclaim respondent believes the
identified words do not constitute
misrepresentation; and
(7) A certification under penalty of
perjury that the information provided in
the response to the counterclaim is
accurate and truthful to the best of the
certifying party’s knowledge. The
certification shall include the typed,
printed, or handwritten signature of the
Counterclaim Respondent(s), and if the
signature is handwritten it shall be
accompanied by a typed or printed
name.
(c) Additional matter. The
counterclaim respondent may also
include, as attachments to or files that
accompany the counterclaim response:
(1) A copy of the certificate of
copyright registration for a work that is
the subject of the proceeding;
(2) A copy of the allegedly infringed
work. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows where
the allegedly infringed work has been
posted;
(3) A copy of the allegedly infringing
material. This copy may also be
accompanied by additional information,
such as a hyperlink, that shows any
allegedly infringing activity;
(4) A copy of the notification of
claimed infringement that is alleged to
contain the misrepresentation;
(5) A copy of the counter notification
that is alleged to contain the
misrepresentation; and
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(6) Any other exhibits that play a
significant role in setting forth the facts
of the counterclaim response.
(d) Failure to file counterclaim
response. A failure to file a
counterclaim response within the
required timeframe will constitute a
default under 17 U.S.C. 1506(u), and the
Board will begin proceedings in
accordance with 37 CFR 227.
PART 223—OPT-OUT PROVISIONS
5. The authority citation for part 223
continues to read as follows:
Authority: 17 U.S.C. 702, 1510.
6. Revise § 223.1 to read as follows:
§ 223.1 Respondent’s opt-out.
(a) Effect of opt-out on particular
proceeding. A respondent may opt out
of a proceeding before the Board
pursuant to 17 U.S.C. 1506(i) following
the procedures set forth in this
regulation. A respondent’s opt out will
result in the dismissal of the claim
without prejudice.
(b) Content of opt-out notification.
The respondent’s opt-out notification
shall include:
(1) The docket number assigned by
the Board and contained in either the
initial notice served by the claimant or
the second notice;
(i) The respondent’s name;
(ii) The respondent’s address;
(2) The respondent’s affirmation that
the respondent will not appear before
the Board with respect to the claim
served by the claimant;
(3) A certification under penalty of
perjury that the individual completing
the notification is the respondent
identified in the claim served by the
claimant; and
(4) The typed, printed, or handwritten
signature of the respondent, and if the
signature is handwritten, it shall be
accompanied by a typed or printed
name.
(c) Process of opting out. Upon being
properly served with a notice and claim,
a respondent may complete the opt-out
process by—
(1) Completing and submitting the
online opt-out notification form
identified in the initial notice and
second notice and made available on the
Board’s website. An online opt-out is
not complete unless a confirmation code
provided with the initial notice or
second notice is included in the
submission; or,
(2) Completing the paper opt-out
notification form included with the
initial notice and second notice and
delivering it to the Board, by one of the
methods described in 37 CFR
222.5(e)(ii)(A) through (D).
(d) Timing of opt-out. The respondent
has 60 days from the date of service or
waiver of service to provide notice of its
opt-out election. When the last day of
that period falls on a weekend or a
Federal holiday, the ending date shall
be extended to the next Federal work
day.
(1) When opting out via the online
form under paragraph (c)(1) of this
section, the respondent’s opt out
notification must be completed by
midnight Eastern Time on the last day
of the opt out period.
(2) When opting out under paragraph
(c)(2) of this section, the respondent’s
opt out notification must be
postmarked, dispatched by a
commercial carrier, courier, or
messenger, or hand delivered to the
Office no later than the 60 day deadline.
(e) One opt-out per respondent. In
claims involving multiple respondents,
each respondent who elects to opt out
must separately complete the opt-out
process.
(f) Confirmation of opt-out. When a
respondent has completed the opt-out
process, the Board will notify all parties
to the proceeding.
(g) Effect of opt-out on refiled claims.
If the claimant attempts to refile a claim
against the same respondent(s), covering
the same acts and the same theories of
recovery after the respondent’s initial
opt-out notification, the Board will
apply the prior opt-out election and
dismiss the claim.
(h) Effect of opt-out on unrelated
claims. The respondent’s opt-out for a
particular claim will not be construed as
an opt-out for claims involving different
acts or different theories of recovery.
7. Add part 224 to read as follows:
PART 224—REVIEW OF CLAIMS BY
OFFICERS AND ATTORNEYS
Sec.
224.1 Compliance review.
224.2 Dismissal for unsuitability.
Authority: 17 U.S.C. 702, 1510.
§ 224.1 Compliance review.
(a) Compliance review by Copyright
Claims Attorney. Upon the filing of a
claim or counterclaim with the Board, a
Copyright Claims Attorney shall review
the claim for compliance as provided in
this section.
(b) Substance of compliance review.
The Copyright Claims Attorney shall
review the claim or counterclaim for
compliance with all legal and formal
requirements for a claim or
counterclaim before the Board,
including:
(1) The provisions set forth under this
subchapter;
(2) The requirements set forth in 17
U.S.C. 1504(c), (d), and (e)(1); and
(3) Whether the allegations in the
claim or the counterclaim clearly do not
state a claim upon which relief can be
granted.
(c) Issuing finding. Upon completing
a compliance review, the Copyright
Claims Attorney will notify the party
that submitted the document in
accordance with 37 CFR 222.5 and 17
U.S.C. 1506(f) by—
(1) Informing the claimant or
counterclaimant that the claim or
counterclaim has been found to comply
with the applicable statutory and
regulatory requirements and instructing
the claimant to proceed with service
under 37 CFR 222.5 and 17 U.S.C.
1506(e); or
(2) Informing the claimant or
counterclaimant that the claim or
counterclaim, respectively, does not
comply with the applicable statutory
and regulatory requirements and
identifying the noncompliant issue(s)
according to the procedure set forth in
17 U.S.C. 1506(f).
(d) Clearance is not endorsement. The
finding that a claim or counterclaim
complies with the applicable statutory
and regulatory requirements does not
constitute a determination as to the
validity or of the allegations asserted or
other statements made in the claim or
counterclaim.
(e) No factual investigations. For the
purpose of the compliance review, the
Copyright Claims Attorney shall accept
the facts stated in the claim or
counterclaim materials, unless they are
contradicted by information provided
elsewhere in the materials or in the
Board’s records. The Copyright Claims
Attorney will not conduct an
investigation or make findings of fact;
however, the Copyright Claims Attorney
may take administrative notice of facts
or matters that are well known to the
general public, and may use that
knowledge during review of the claim or
counterclaim.
§ 224.2 Dismissal for unsuitability.
(a) Review by Copyright Claims
Attorney. During the review of the claim
under 37 CFR 224.1, the Copyright
Claims Attorney shall review the claim
or counterclaim for unsuitability on
grounds set forth in 17 U.S.C. 1506(f)(3).
If the Copyright Claims Attorney
concludes that the claim should be
dismissed for unsuitability, the
Copyright Claims Attorney shall
recommend to the Copyright Claims
Board that the Board dismiss the claim
and shall set forth the basis for that
conclusion.
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53913
Federal Register / Vol. 86, No. 186 / Wednesday, September 29, 2021 / Proposed Rules
(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 suggestion of a
party or on its own initiative, the Board
determines that a claim or counterclaim
should be dismissed for unsuitability
under 17 U.S.C. 1506(f)(3), the Board
shall issue an order stating its intention
to dismiss the claim without prejudice.
(2) Within 30 days following issuance
of an order under paragraph (b) of this
section, the claimant or counterclaimant
may request that the Board reconsider
its determination. The respondent or
counterclaim respondent may file a
response within 30 days following
service of the claimant’s request.
(3) Following the expiration of the
time for the respondent or counterclaim
respondent to submit a response, the
Board shall render its final decision
whether to dismiss the claim for
unsuitability.
Dated: September 15, 2021.
Kevin R. Amer,
Acting General Counsel and Associate
Register of Copyrights.
[FR Doc. 2021–20303 Filed 9–28–21; 8:45 am]
BILLING CODE 1410–30–P
DEPARTMENT OF VETERANS
AFFAIRS
38 CFR Part 13
RIN 2900–AR11
Fiduciary Bond
AGENCY
: Department of Veterans Affairs.
ACTION
: Proposed rule.
SUMMARY
: The Department of Veterans
Affairs (VA) proposes to amend its
regulations that govern fiduciary
activities. More specifically, the
proposed amendments would revise
specific procedures to exempt a VA-
appointed fiduciary who is also serving
as a court-appointed fiduciary from
posting multiple bonds and to also
exempt a VA-appointed fiduciary that is
also a State agency with existing, State-
mandated liability insurance or a
blanket bond from having to obtain an
additional bond payable to the Secretary
of Veterans Affairs.
DATES
: Comments must be received by
VA on or before November 29, 2021.
ADDRESSES
: Comments may be
submitted through
www.Regulations.gov. Comments
should indicate that they are submitted
in response to RIN 2900–AR11—
Fiduciary Bond. Comments received
will be available at www.regulations.gov
for public viewing, inspection or copies.
FOR FURTHER INFORMATION CONTACT
:
David Klusman, Lead Program Analyst,
Pension and Fiduciary Service (21PF),
Veterans Benefits Administration,
Department of Veterans Affairs, 810
Vermont Ave. NW, Washington, DC
20420; (202) 632–8863. (This is not a
toll-free number).
SUPPLEMENTARY INFORMATION
: VA
administers a fiduciary program for
beneficiaries who, as a result of injury,
disease, the infirmities of advanced age,
or being less than 18 years of age,
cannot manage their own VA benefits.
Under this program, VA oversees these
vulnerable beneficiaries, and appoints
and oversees fiduciaries who manage
these beneficiaries’ benefits. VA’s
current statutory authority for this
program is in 38 U.S.C. chapters 55 and
61.
VA is authorized to issue payments to
and supervise fiduciaries acting on
behalf of beneficiaries under 38 U.S.C.
5502. In 2004, Congress amended 38
U.S.C. chapters 55 and 61 to add new
provisions which, among other things,
authorize VA to conduct specific
investigations regarding the fitness of
individuals to serve as fiduciaries and
reissue certain benefits misused by
fiduciaries. In relevant part, the law
provides that any certification of a
person as a fiduciary shall be made on
the basis of ‘‘the furnishing of any bond
that may be required by the Secretary.’’
38 U.S.C. 5507(a)(3). On its face, this
statutory language provides VA with
authority to decide whether to require a
bond.
Under certain circumstances, if a
fiduciary misuses benefits, the law
requires that the Secretary pay the
beneficiary an amount equal to the
amount of benefits that were misused.
38 U.S.C. 6107. In 2018, VA amended
its fiduciary program regulations to
implement current law. Fiduciary
Activities, 83 FR 32716 (July 13, 2018).
As stated above, in some cases,
fiduciaries are required to obtain a
surety bond in order to protect the
beneficiaries’ benefits. However, there is
conflicting information in VA
regulations pertaining to bond
requirements for fiduciaries.
Specifically, 38 CFR 14.709 provides
that VA’s general policy is to require a
surety bond that follows State laws and
court rules from a court-appointed
individual fiduciary. Further, the
regulation indicates approved
alternative methods to a corporate
surety bond and authorizes the
acceptance of a lesser degree of
protection of funds under certain
circumstances. However, 38 CFR
13.230, which was promulgated in 2018
when VA amended its fiduciary
program regulations, requires that any
bond furnished by a fiduciary ‘‘[c]ontain
a statement that the bond is payable to
the Secretary of Veterans Affairs.’’ 38
CFR 13.230(d)(3)(ii). VA’s final rule that
amended 38 CFR part 13 went into
effect on August 13, 2018. 83 FR 32716.
When it was promulgated, VA explicitly
stated that ‘‘[w]e intend to issue uniform
rules for all VA-appointed fiduciaries,
such as allowable fees, surety bond
requirements and appropriate
investments, to include fiduciaries who
also serve as court-appointed guardians
for beneficiaries.’’ Id. at 32727. The rule
noted that ‘‘VA’s fiduciary regulations
will result in a gradual discontinuance
of the current practice of recognizing a
court-appointed guardian or fiduciary
for purposes of receiving VA benefits on
behalf of a VA beneficiary’’ and that,
‘‘VA will establish a national standard
for appointing and overseeing
fiduciaries.’’ Id. at 32735. VA noted in
the final rule that, ‘‘[b]ased on our
experience in administering the
program, the risks of not requiring all
fiduciaries, with the [general] exception
of spouses, to furnish a surety bond
significantly outweigh any burden on a
prospective fiduciary.’’ Id. at 32727. VA
set forth a number of factors that weigh
in favor of requiring a bond: (1) It serves
as a screening tool for VA to use in
confirming qualification for
appointment—in other words, if a
fiduciary cannot obtain a bond because
the bonding company considers the risk
of fund exploitation too high, VA will
not appoint the prospective fiduciary;
(2) it is consistent with VA’s oversight
obligations, which include deterring
fiduciary misuse of benefits; and (3) it
puts a fiduciary on notice that he or she
is liable to a third party for any payment
on the bond. Id. With the 2018
amendment, VA also promulgated
additional bond requirements under
§ 13.230(d) in order to protect a
beneficiary’s interests if a fiduciary
misuses funds, including a requirement
that the bond be payable to the
Secretary. More recently, in January
2021, Congress enacted Public Law 116–
315, which amended 38 U.S.C. 6107(b),
to require VA to reissue misused funds
to all beneficiaries, regardless of
whether VA negligence was involved.
Under current § 13.410(c), VA must
attempt to recoup any misused benefits,
either from the surety company or, if no
bond is in place, from the fiduciary
directly. VA then must reissue any
recouped benefits to the beneficiary’s
fiduciary successor to the extent they
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