Title 37—Patents, Trademarks, and Copyrights--Volume 1
PART 225—DISCOVERY
§ 225.1   General practices.
(a) Standard discovery practice. Except as otherwise provided in this section, discovery in proceedings before the Copyright Claims Board (Board) shall be limited to the methods set forth in this part and shall use the standard forms provided on the Board's website. Discovery responses and documents shall be served on the other parties in accordance with § 222.5(e) of this subchapter and shall not be filed with the Board unless as part of written testimony or as needed in support of other filings.
(1) Certifications. All discovery material exchanged among the parties must include a certification by the party submitting such material.
(i) For responses to interrogatories or any requests for admission permitted by the Board, the certification shall affirm that the responses are accurate and truthful to the best of the submitting party's knowledge.
(ii) For the production of documents, the certification shall affirm that the produced documents are genuine and unaltered to the best of the producing party's knowledge.
(2) Form of requests to Board. Requests to the Board related to discovery may be raised to the Board during a conference or by written request, as set forth in this part.
(3) Reasonable investigation. Parties shall make a reasonable investigation under the circumstances to adequately respond to discovery requests.
(b) Timing of discovery. The exchange of discovery material shall take place at the times and within the deadlines specified by the scheduling order. The Board may modify the discovery deadlines set forth in the scheduling order at the request of any party upon a showing of good cause or on its own initiative. Such requests may be made orally during a conference with the Board or by written request. Written requests for modification of a discovery deadline and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
(c) Conferences. The Board shall hold a pre-discovery conference and a post-discovery conference, as set forth in § 222.11(b) of this subchapter. The Board may hold additional conferences to manage discovery and resolve any disputes, at its own election or at the request of any party. Requests for a discovery conference not involving a dispute and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter. Requests for a discovery conference involving a dispute and any responses thereto shall follow the procedures set forth in § 220.5(a)(2). Such conferences may be held by one or more Copyright Claims Officers. Conferences shall be held virtually.
(d) Documents. As used in this part, the term “document” shall refer to any tangible piece of information—including writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations—stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form, whether in written or electronic form, an object, or otherwise. The Board shall read this definition broadly so that there is a comprehensive production of materials by each side needed to fairly decide matters before the Board, so long as that production can be easily accomplished by a layperson.
§ 225.2   Standard interrogatories.
(a) General. Parties in an active proceeding shall use the set of standard interrogatories provided on the Board's website. Standard interrogatories shall consist of information pertaining to:
(1) The identity of witnesses whom the parties plan to use in the proceeding, including contact information for the witnesses, if known, and a brief description of the subject matter on which they may testify;
(2) The identity of any other individuals who may have material information related to the claims, counterclaims, or defenses, including contact information for the individuals, if known;
(3) Any agreement or other relationship between the parties relevant to the claim or counterclaim;
(4) Any harm suffered or damages sought; and
(5) Any materially responsive documents that the party is aware exist or once existed, but are not in the possession of that party.
(b) For a party asserting infringement. In addition to paragraph (a) of this section, the standard interrogatories for a party asserting an infringement claim or counterclaim or responding to a claim or counterclaim for non-infringement shall consist of information pertaining to:
(1) The allegedly infringed work's copyright registration, to the extent such information differs from or adds to information provided in the claim or counterclaim;
(2) For works requiring copyright formalities, the extent the allegedly infringed work complied with such copyright formalities;
(3) The party's ownership of the copyright in the allegedly infringed work;
(4) Publication of the allegedly infringed work;
(5) The creation date and creation process for the allegedly infringed work, including whether the work is a joint or derivative work or was created through employment or subject to an agreement;
(6) Where the allegedly infringed work is a derivative work, the preexisting elements in the work, including ownership of those preexisting elements, and rights to use those preexisting elements;
(7) A description of how the party believes the alleged infringer gained access to the allegedly infringed work;
(8) The basis for the party's belief that the opposing party's activities constitute infringement of the allegedly infringed work;
(9) The discovery of the opposing party's alleged infringement by the party;
(10) A description of any harm suffered and, to the extent known, a calculation of the damages requested by the party as a result of the alleged infringement; and
(11) Any attempts by the party to cause the infringement to be ceased or mitigated prior to bringing the claim or counterclaim.
(c) For a party asserting non-infringement. In addition to the information in paragraph (a) of this section, the standard interrogatories for a party responding to an infringement claim or counterclaim or asserting a claim or counterclaim for non-infringement shall consist of information pertaining to:
(1) The party's ownership of the copyright in the allegedly infringing material;
(2) The dissemination history of the allegedly infringing material;
(3) The creation date and creation process for the allegedly infringing material, including whether any allegedly infringing work is a joint or derivative work or was created through employment or subject to an agreement;
(4) Where the allegedly infringing material is a derivative work, the preexisting elements in the work, including ownership of those preexisting elements, and rights to use those preexisting elements;
(5) Any information indicating that the party alleging infringement does not own a copyright in the allegedly infringed work;
(6) All defenses to infringement asserted by the party and a detailed basis for those defenses. Defenses listed in timely answers and timely updated answers to the standard interrogatories shall be considered by the Board and will not require an amendment of the response to an infringement claim or counterclaim or an amendment of a claim or counterclaim for non-infringement;
(7) The basis for any other reasons the party believes that its actions do not constitute infringement;
(8) Any continued use or dissemination of the allegedly infringing material; and
(9) For a party responding to infringement claims or counterclaims, the revenues and profits the party has received that are directly related to the sale or use of the allegedly infringing material, as well as the deductible expenses directly related to that sale or use, and any elements of profit for that sale or use that the party believes are attributable to factors other than the copyrighted work.
(d) For a party asserting misrepresentation. In addition to the information in paragraph (a) of this section, the standard interrogatories for a party asserting a claim or counterclaim of misrepresentation under 17 U.S.C. 512(f) shall consist of information pertaining to:
(1) The notification or counter notification that allegedly contained a misrepresentation;
(2) The identity of the internet service provider to which the notification or counter notification was sent;
(3) Identification and a description of any communications with the internet service provider, the parties, or others related to the notification or counter notification at issue;
(4) The basis for the party's belief that the notification or counter notification included a misrepresentation; and
(5) The harm, including a description and calculation of damages, caused by the alleged misrepresentation.
(e) For a party responding to misrepresentation claims or counterclaims. In addition to the information in paragraph (a) of this section, the standard interrogatories for a party responding to a claim or counterclaim of misrepresentation under 17 U.S.C. 512(f) shall consist of information pertaining to:
(1) All defenses asserted to the misrepresentation claim or counterclaim and the basis for those assertions. Defenses listed in timely answers and timely updated answers to the standard interrogatories shall be considered by the Board and will not require an amendment of the response;
(2) The basis for any other reasons the party believes that its statement did not constitute a misrepresentation; and
(3) Identification and a description of any communications with the internet service provider, the parties, or others related to the notification or counter notification at issue.
(f) For a counterclaimant asserting a counterclaim arising under an agreement. In addition to the information in paragraph (a) of this section, the standard interrogatories for a counterclaimant asserting a counterclaim arising under an agreement shall consist of information pertaining to:
(1) Identification and a description of the specific terms or provisions of the agreement the counterclaim respondent is alleged to have violated;
(2) The basis for the counterclaimant's belief that the agreement was valid;
(3) The basis for the counterclaimant's belief that the agreement was violated;
(4) The basis for the counterclaimant's belief that the agreement could affect the relief that might be awarded to the claimant;
(5) A description of the counterclaimant's performance under the agreement, as relevant to the counterclaim;
(6) Identification and a description of any inadequacies in performance under the agreement by the counterclaim respondent; and
(7) If the agreement at issue in the counterclaim is oral, a description of the terms and provisions of the agreement.
(g) For a counterclaim respondent responding to a counterclaim arising under an agreement. In addition to the information in paragraph (a) of this section, the standard interrogatories for a counterclaim respondent responding to a counterclaim arising under an agreement shall consist of information pertaining to:
(1) All defenses asserted to the counterclaim arising under an agreement and the basis for those assertions. Defenses listed in timely answers and timely updated answers to the standard interrogatories shall be considered by the Board and will not require an amendment of the counterclaim response;
(2) The basis for any other reasons the counterclaim respondent believes that it did not violate the agreement or that the agreement was not valid;
(3) The basis for any belief by the counterclaim respondent that the agreement does not affect the relief that might be awarded to the claimant;
(4) A description of the counterclaim respondent's performance under the agreement, as relevant to the counterclaim; and
(5) Identification and a description of any inadequacies in performance under the agreement by the counterclaimant.
(h) Duty to update. A party has an obligation to update its interrogatory responses and serve updated responses on the other parties as soon as practicable after the discovery of new or updated information.
§ 225.3   Standard requests for the production of documents.
(a) General. Parties in an active proceeding shall use the relevant set of standard requests for the production of documents provided on the Board's website. Standard requests for the production of documents shall include copies of:
(1) All documents the party is likely to use in support of its claims, counterclaims, or defenses;
(2) All other documents of which the party is reasonably aware that conflict with the party's claims, counterclaims, or defenses in the proceeding; and
(3) All documents referred to in, or that were used in preparing, any of the party's responses to standard interrogatories.
(b) For a party asserting infringement. In addition to the information in paragraph (a) of this section, the standard requests for the production of documents for a party asserting an infringement claim or counterclaim or responding to a claim or counterclaim for non-infringement shall include copies of:
(1) The work claimed to be infringed, its copyright registration, and all correspondence with the Copyright Office regarding that registration;
(2) The allegedly infringing material, if reasonably available;
(3) Where the allegedly infringed work is a derivative work, documents showing the preexisting works used and related to ownership of and rights to use those preexisting elements;
(4) Documents related to the allegedly infringing material, including communications about the allegedly infringing material;
(5) Documents showing or negating the ownership or rights of the party claiming infringement in the works at issue, including agreements showing the ownership or transfer or rights in the works;
(6) Documents sufficient to show the damages suffered by the party as a result of the alleged infringement; and
(7) Documents showing attempts by the party to cause the cessation or mitigation of infringement prior to bringing the claim or counterclaim.
(c) For a party asserting non-infringement. In addition to the information in paragraph (a) of this section, the standard requests for the production of documents for a party responding to an infringement claim or counterclaim or asserting a claim or counterclaim for non-infringement shall include copies of:
(1) The allegedly infringing material;
(2) Documents related to the allegedly infringed work, including communications regarding the allegedly infringed work;
(3) Documents related to the creation of the allegedly infringing material, including documents showing or negating rights to use the allegedly infringing material; and
(4) For a party responding to infringement claims or counterclaims, documents sufficient to show the revenues and profits the party has received directly related to the sale or use of the allegedly infringing material, as well as the deductible expenses directly related to that sale or use, and the elements of profit for that sale or use that the party believes are attributable to factors other than the copyrighted work.
(d) For a party asserting misrepresentation. In addition to the information in paragraph (a) of this section, the standard requests for the production of documents for a party asserting a claim or counterclaim of misrepresentation under 17 U.S.C. 512(f) shall include copies of:
(1) The notification or counter notification at issue;
(2) Communications with the internet service provider concerning the notification or counter notification at issue;
(3) Documents directly pertaining to the truth or falsity of any representations made in the notification or counter notification; and
(4) Documents sufficient to show the damages suffered by the party as a result of the alleged misrepresentation.
(e) For a party responding to misrepresentation claims or counterclaims. In addition to the information in paragraph (a) of this section, the standard requests for the production of documents for a party responding to a claim or counterclaim of misrepresentation under 17 U.S.C. 512(f) shall include copies of:
(1) Communications with the internet service provider concerning the notification or counter notification at issue; and
(2) Documents directly pertaining to the truth or falsity of any representations made in the notification or counter notification.
(f) For a counterclaimant asserting a counterclaim arising under an agreement. In addition to the information in paragraph (a) of this section, the standard requests for the production of documents for a party asserting a counterclaim arising under an agreement shall include copies of:
(1) The agreement at issue in the counterclaim arising under an agreement, including any amendments or revisions;
(2) Documents related to the agreement at issue, including any amendments or revisions and documents related to the validity of and the parties' performance under the agreement; and
(3) Documents relevant to damages arising out of the counterclaim, including documents sufficient to show the damages suffered by the counterclaimant related to violation of the agreement in question.
(g) For a counterclaim respondent responding to a counterclaim arising under an agreement. In addition to the information in paragraph (a) of this section, the standard requests for the production of documents for a counterclaim respondent responding to a counterclaim arising under an agreement shall include copies of:
(1) The agreement at issue in the counterclaim arising under an agreement, including any amendments or revisions;
(2) Documents related to the agreement at issue, including any amendments or revisions and documents related to the validity of and the parties' performance under the agreement; and
(3) Documents relevant to damages, including documents sufficient to show the lack of damages suffered by the counterclaimant related to the counterclaim respondent's alleged violation of the agreement in question.
(h) Document searches and productions —(1) General. Each party shall have an obligation to conduct a reasonable search for any responsive documents of any files in its possession or under its control, including the files of any of the party's agents, employees, representatives, or others acting on the party's behalf who the party reasonably believes may have responsive documents.
(2) Electronically stored information. Documents responsive to the standard requests for the production of documents, or any additional requests permitted by the Board, shall include electronically stored information (ESI), including emails and computer files. A reasonable search under the circumstances shall include the ESI of the party and the party's agents, employees, representatives, or others acting on the party's behalf who the party reasonably believes may have responsive documents, except that—
(i) ESI searches need not exceed manual searches that are easily accomplished by a layperson; and
(ii) Parties need not conduct searches that would reasonably require the assistance of third parties, such as a document vendor that the party would have to hire to assist with or accomplish document collection or storage.
(3) Voluminous productions. Responses to document requests that include large amounts of irrelevant or duplicative material are prohibited and may constitute bad-faith conduct.
(4) Duty to update. A party has an obligation to preserve all material documents and to update its production of documents by providing to the other parties any documents it later finds responsive to the Board's standard requests for the production of documents or any other document requests allowed by the Board as soon as practicable after the discovery of such documents.
(i) Privileged documents. Confidential communications with external counsel or in-house counsel reflecting or seeking legal advice related to the merits of the proceeding shall be considered privileged and need not be produced or logged. Parties must seek leave of the Board to withhold additional documents as privileged by filing a request with the Board. Requests to withhold additional documents as privileged and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
§ 225.4   Additional discovery.
(a) Requests for additional discovery. Any party may request additional discovery within the deadlines set forth in the scheduling order.
(1) Allowable discovery. Except for the standard discovery provided in this part, any additional discovery requested must be narrowly tailored to the issues at hand, not covered by the standard discovery set forth in this part, highly likely to lead to the production of information relevant to the core issues of the matter, and not result in an undue burden on the party responding to the request.
(2) Standard for additional discovery. The Board will grant a request for additional discovery upon a showing of good cause. In considering a request for additional discovery, the Board shall balance the needs and circumstances of the case against the burden of additional discovery on any party, along with the amount in dispute and the overall goal of efficient resolution of the proceeding.
(3) Consent from parties. Prior to filing a request for additional discovery, the requesting party should make reasonable efforts to secure the consent of, or a compromise with, the other party regarding the proposed additional discovery request.
(4) Form of request. Requests for additional discovery and any responses thereto shall follow the procedures set forth in § 220.5(a)(2) of this subchapter. Unless otherwise specified in this section, a request for additional discovery must—
(i) Specifically indicate the type of additional discovery requested and the information sought, including the specific requests themselves;
(ii) Set forth in detail the need for the request; and
(iii) Indicate whether the other parties consent or object to the request.
(b) Requests for expert witnesses. An expert witness may be used in a proceeding only with leave of the Board. The use of expert witnesses in proceedings before the Board is highly disfavored and requests shall be rarely granted.
(1) Standard for permitting expert witnesses. The Board shall grant a request by a party to introduce an expert witness only in exceptional circumstances and upon a showing that the case cannot fairly proceed without the use of the expert. In considering a request for an expert witness, the Board shall balance the needs and circumstances of the case, and whether the request is made by one party or jointly among the parties, against the burden that permitting the expert testimony would impose on any other party, the costs to the opposing party of retaining a rebuttal witness, the amount in dispute, and the overall goal of efficient resolution of the proceeding. If the Board grants a request by a party to introduce an expert witness, an opposing party shall have the opportunity to introduce a rebuttal expert witness as a matter of course within an appropriate amount of time set by the Board. The Board will set a schedule for the service of the expert report and any rebuttal report and will adjust the dates in the existing scheduling order as needed.
(2) Form of request. Requests for an expert witness and any responses thereto shall follow the procedures set forth in § 220.5(a)(2) of this subchapter. The request must specifically indicate the topics of the expert's proposed testimony, the name of the proposed expert, and the anticipated cost of retaining the expert, and must set forth the basis and justifications for the request, and indicate whether the other parties consent or object to the request.
(3) Form of expert testimony. Any expert testimony permitted by the Board shall be submitted along with the offering party's written direct or response testimony in the form of an expert statement. An expert statement must—
(i) Be sworn under penalty of perjury by the expert witness;
(ii) Be organized into numbered paragraphs;
(iii) Be detailed as to the substance of the expert's opinion and the basis and reasons therefor;
(iv) Disclose the facts or data considered by the expert witness in forming the expert witness's opinions;
(v) Describe the expert witness's qualifications, including a list of all publications authored and speaking engagements in the previous 10 years;
(vi) Include a list of all other cases in which the expert witness testified as an expert at trial or by deposition during the previous four years; and
(vii) Include a statement of the compensation to be paid for the study and testimony in the case.
(4) Unauthorized expert testimony. Any expert testimony that is introduced in any way without the Board's express permission shall be stricken by the Board and shall not be considered in the Board's determination.
(c) Requests for admission. Requests for admission may be served in a proceeding only with leave of the Board. Requests for admission are disfavored and requests to serve requests for admission may only be granted at the Board's discretion upon a showing of good cause. A request to serve requests for admission, and any responses, shall follow the procedures set forth in paragraph (a) of this section.
(1) Subject matter. Requests for admission may pertain to:
(i) Facts, the application of law to fact, or opinions about either; and
(ii) The genuineness of any described documents, a copy of which must be attached to the request for admission.
(2) Form of requests for admission. Each matter must be separately stated in a request for admission in a numbered paragraph. Compound requests for admission shall not be permitted.
(3) Responses to requests for admission. A response to a request for admission must be served by the time specified by the Board. A matter admitted is conclusively established unless the Board, on request and for good cause shown, permits the admission to be withdrawn or amended. If a matter is not admitted, the answer must specifically deny it or state in detail why the responding party cannot truthfully admit or deny it. A denial must fairly respond to the substance of the matter, and when good faith requires that a party qualify an answer or deny only part of a matter, the answer must specify the part admitted and qualify or deny the rest. The responding party may assert lack of knowledge or information as a reason for failing to admit or deny only if the party states that it has made reasonable investigation and that the information it knows or can readily obtain is insufficient to enable it to admit or deny.
(4) Failure to respond. A matter is not automatically admitted if a party fails to respond to a request for admission within the required timeframe. However, the Board may deem it admitted in the Board's discretion subject to the Board's power to apply adverse inferences to discovery violations under 17 U.S.C. 1506(n)(3) according to the procedures set forth in § 225.5.
(d) Depositions. Depositions shall not be permitted in proceedings before the Board.
§ 225.5   Disputes and sanctions.
(a) Obligation to attempt resolution. Parties shall attempt in good faith to resolve any discovery disputes without the involvement of the Board. A party must confer with an opposing party in an attempt to reach a resolution prior to raising any discovery dispute with the Board.
(b) Request for conference to resolve dispute. If an attempt to resolve a discovery dispute fails, the party seeking discovery may file a request for a conference with the Board. Requests for conference to resolve a discovery dispute and any responses thereto shall follow the procedures set forth in § 220.5(a)(2) of this subchapter. The request may attach communications related to the discovery dispute or documents specifically discussed in the request related to the inadequacy of the document production and shall:
(1) Describe the dispute;
(2) State that party's position with respect to the dispute;
(3) Explain the attempts made to resolve the dispute without the involvement of the Board; and
(4) Attach any inadequate interrogatory responses or inadequate request for admission responses.
(c) Determination by Board. Following receipt of the request and any response, the Board may schedule a conference to address the discovery dispute in its discretion. One or more Officers may participate in the conference. During or following the conference, or, if no conference is held, after the Board reviews the request and any responses, the Board shall issue an order resolving the discovery dispute and, in the event of a decision in favor of the aggrieved party, setting a deadline for compliance.
(d) Failure to comply with order. If a party fails to timely comply with the Board's discovery order, the party seeking discovery may send a notice to the noncompliant party giving the noncompliant party 10 days to comply. If the noncompliant party fails to comply within 10 days of receipt of the notice, the aggrieved party may file a request for sanctions with the Board.
(e) Sanctions —(1) Form of request for sanctions. A request for sanctions and any response thereto shall be uploaded to eCCB and shall meet the requirements set forth in § 220.5(a)(2) of this subchapter. A request for sanctions shall attach the relevant and allegedly inadequate discovery responses already provided by the opposing party, except for disputes pertaining to responses to document requests, and shall set forth the basis for the request.
(2) Standard for granting request. Following receipt of a request for sanctions and any response from the opposing party, the Board may hold a conference to address the request for sanctions. In the Board's sole discretion and upon good cause shown, sanctions may be imposed if the opposing party is found to be noncompliant with the Board's discovery order.
(3) Relief. Sanctions imposed for noncompliance with a discovery order of the Board may include an adverse inference with respect to the disputed facts directly related to the discovery in question against the noncompliant party.
(4) Implications for award of attorneys' fees and costs. The Board may consider the assessment of discovery sanctions when considering the awarding of attorneys' fees and costs during a final determination.