Title 37—Patents, Trademarks, and Copyrights--Volume 1
PART 222—PROCEEDINGS
§ 222.1   Applicability of the Federal Rules of Civil Procedure and Federal Rules of Evidence.
The rules of procedure and evidence governing proceedings before the Copyright Claims Board (Board) are set forth in this subchapter. The Board is not bound by the Federal Rules of Civil Procedure or the Federal Rules of Evidence.
§ 222.2   Initiating a proceeding; the claim.
(a) Initiating a proceeding. A claimant may initiate a proceeding before the Copyright Claims Board (Board) by submitting the following—
(1) A completed claim form provided by the Board; and
(2) The first payment of the filing fee set forth in 37 CFR 201.3(g).
(b) Electronic filing requirement. Except as provided otherwise in § 222.5(f), to submit the claim and the first payment of the filing fee, the claimant must be a registered user of the Board's electronic filing system (eCCB).
(c) Contents of the claim. The claim shall include:
(1) Identification of the claim(s) asserted against the respondent(s), which shall consist of at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; or
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in connection with—
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled material;
(2) The name(s) and mailing address(es) of the claimant(s);
(3) For any claimant that is represented by legal counsel or an authorized representative, the name(s), mailing address(es), email address(es), and telephone number(s) of such claimant's legal counsel or authorized representative;
(4) For any claimant that is not represented by legal counsel or an authorized representative, the email address and telephone number of such claimant;
(5) The name(s) of the respondent(s);
(6) The mailing address(es) of the respondent(s), unless the claimant(s) certifies that a respondent's address is unknown at the time to the claimant and that the claimant has a good-faith belief that the statute of limitations for the claim is likely to expire within 30 days from the date that the claim is submitted, and describes the basis for that good-faith belief;
(7) For an infringement claim asserted under paragraph (c)(1)(i) of this section—
(i) That the claimant is the legal or beneficial owner of rights in a work protected by copyright and, if there are any co-owners, their names;
(ii) The following information for each work at issue in the claim:
(A) The title of the work;
(B) The author(s) of the work;
(C) If a copyright registration has issued for the work, the registration number and effective date of registration;
(D) If an application for copyright registration has been submitted but a registration has not yet issued, the service request number (SR number) and application date; and
(E) The work of authorship category, as set forth in 17 U.S.C. 102, for each work at issue, or, if the claimant is unable to determine the applicable category, a brief description of the nature of the work; and
(iii) A description of the facts relating to the alleged infringement, including, to the extent known to the claimant:
(A) Which exclusive rights provided under 17 U.S.C. 106 are at issue;
(B) When the alleged infringement began;
(C) The name(s) of all person(s) or organization(s) alleged to have participated in the infringing activity;
(D) The facts leading the claimant to believe the work has been infringed;
(E) Whether the alleged infringement has continued through the date the claim was filed, or, if it has not, when the alleged infringement ceased;
(F) Where the alleged act(s) of infringement occurred ( e.g., a physical or online location); and
(G) If the claim of infringement is asserted against an online service provider as defined in 17 U.S.C. 512(k)(1)(B) for infringement by reason of the storage of or referral or linking to infringing material that may be subject to the limitations on liability set forth in 17 U.S.C. 512(b), (c), or (d), an affirmance that the claimant has previously notified the service provider of the claimed infringement in accordance with 17 U.S.C. 512(b)(2)(E), (c)(3), or (d)(3), as applicable, and that the service provider failed to remove or disable access to the material expeditiously upon the provision of such notice;
(8) For a declaration of noninfringement claim asserted under paragraph (c)(1)(ii) of this section—
(i) The name(s) of the person(s) or organization(s) asserting that the claimant has infringed a copyright;
(ii) The following information for each work alleged to have been infringed, if that information is known to the claimant:
(A) The title;
(B) If a copyright registration has issued for the work, the registration number and effective date of registration;
(C) If an application for copyright has been submitted, but a registration has not yet issued, the service request number (SR number) and registration application date; and
(D) The work of authorship category, as set forth in 17 U.S.C. 102, or, if the claimant is unable to determine which category is applicable, a brief description of the nature of the work;
(iii) A brief description of the claimant's activity at issue in the claim, including, to the extent known to the claimant:
(A) Any exclusive rights provided under 17 U.S.C. 106 that may be implicated;
(B) When the activities at issue began and, if applicable, ended;
(C) Whether the activities at issue have continued through the date the claim was filed;
(D) The name(s) of all person(s) or organization(s) who participated in the allegedly infringing activity; and
(E) Where the activities at issue occurred ( e.g., a physical or online location);
(iv) A brief statement describing the reasons why the claimant believes that no infringement occurred, including any relevant history or agreements between the parties and whether claimant currently believes any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 are implicated; and
(v) A brief statement describing the reasons why the claimant believes that there is an actual controversy concerning the requested declaration;
(9) For a misrepresentation claim asserted under paragraph (c)(1)(iii) of this section—
(i) The sender of the notification of claimed infringement;
(ii) The recipient of the notification of claimed infringement;
(iii) The date the notification of claimed infringement was sent, if known;
(iv) A description of the notification;
(v) If a counter notification was sent in response to the notification—
(A) The sender of the counter notification;
(B) The recipient of the counter notification;
(C) The date the counter notification was sent, if known; and
(D) A description of the counter notification;
(vi) The words in the notification or counter notification that allegedly constituted a misrepresentation; and
(vii) An explanation of the alleged misrepresentation;
(10) For infringement claims and misrepresentation claims, a statement describing the harm suffered by the claimant(s) as a result of the alleged activity and the relief sought by the claimant(s). Such statement may, but is not required to, include an estimate of any monetary relief sought;
(11) Whether the claimant requests that the proceeding be conducted as a “smaller claim” under 17 U.S.C. 1506(z), and would accept a limitation on total damages of $5,000 if the request is granted; and
(12) A certification under penalty of perjury by the claimant, the claimant's legal counsel, or the claimant's authorized representative that the information provided in the claim is accurate and truthful to the best of the certifying person's knowledge and, if the certifying person is not the claimant, that the certifying person has confirmed the accuracy of the information with the claimant. The certification shall include the typed signature of the certifying person.
(d) Additional matter. The claimant may also include, as attachments to or files accompanying the claim, any material the claimant believes plays a significant role in setting forth the facts of the claim, such as:
(1) A copy of the copyright registration certificate for a work that is the subject of the proceeding;
(2) A copy of the copyrighted work alleged to be infringed. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted;
(3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity;
(4) For a misrepresentation claim, a copy of the notification of claimed infringement that is alleged to contain the misrepresentation;
(5) For a misrepresentation claim, a copy of the counter notification that is alleged to contain the misrepresentation;
(6) For a declaration of noninfringement claim, a copy of the demand letter(s) or other correspondence that created the dispute; and
(7) Any other exhibits that play a significant role in setting forth the facts of the claim.
(e) Additional information required during claim submission. In connection with the submission of the claim the claimant shall also provide—
(1) For any claimant that is represented by legal counsel or an authorized representative, the email address and telephone number of that claimant. Such information shall not be part of the claim; and
(2) Any further information that the Board may determine should be provided.
(f) Respondent address requirement for claim submission. Any claim for which a respondent's mailing address has not been provided pursuant to paragraph (c)(6) of this section shall not be found compliant under 37 CFR 224.1 unless the claimant provides the address of the respondent to the Board within 60 days of the date the claim was filed under paragraph (a) of this section. If the claimant does not provide a respondent address within that period of time, the Board may dismiss the claim without prejudice.
§ 222.3   Initial notice.
(a) Content of initial notice. The Board shall prepare an initial notice for the claimant(s) to serve on each respondent that shall—
(1) Include on the first page a caption that provides the parties' names and includes the docket number assigned by the Board;
(2) Be addressed to the respondent;
(3) Provide the name(s) and mailing address(es) of the claimant(s);
(4) For any claimant that is represented by legal counsel or an authorized representative, provide the name(s), mailing address(es), email address(es), and telephone number(s) of such legal counsel or authorized representative;
(5) For any claimant that is not represented by legal counsel or an authorized representative, provide the email address and telephone number of that claimant;
(6) Advise the respondent that a legal proceeding that could affect the respondent's legal rights has been commenced by the claimant(s) in the Board against the respondent;
(7) Identify the nature of the claims asserted against the respondent, which shall consist of at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; and
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in connection with—
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled material;
(8) Describe the Board, including that it is a three-member tribunal within the Copyright Office that has been established by law to resolve certain copyright disputes in which the total monetary recovery does not exceed $30,000;
(9) State that the respondent has the right to opt out of participating in the proceeding, and that the consequence of opting out is that the proceeding shall be dismissed without prejudice and the claimant shall have to determine whether to file a lawsuit in a Federal district court;
(10) State that if the respondent does not opt out within 60 days from the day the respondent received the initial notice, the proceeding shall go forward and the respondent shall—
(i) Lose the opportunity to have the dispute decided by the Federal court system, created under Article III of the Constitution of the United States; and
(ii) Waive the right to have a trial by jury regarding the dispute;
(11) State that the notice is in regard to an official Government proceeding and provide information on how to access the docket of the proceeding in eCCB;
(12) Provide information on how to become a registered user of eCCB;
(13) State that parties may represent themselves in the proceeding, but note that a party may wish to consult with legal counsel or with a law school clinic, and provide reference to pro bono resources ( i.e., legal services provided without charge for those services) which may be available and are listed on the Board's website;
(14) Indicate where other pertinent information concerning proceedings before the Board may be found on the Board's website;
(15) Provide direction on how a respondent may opt out of the proceeding, either online or by mail;
(16) In the case of a proceeding in which the claimant has requested under § 222.2(c)(1) that the proceeding be conducted as a smaller claim under 37 CFR part 226, include a statement that the proceeding shall be conducted as a smaller claim and a brief explanation of the differences between smaller claims proceedings and other proceedings before the Board; and
(17) Include any additional information that the Board may determine should be included.
(b) Service of initial notice. Following notification from the Board pursuant to 17 U.S.C. 1506(f)(1)(A) to proceed with service of the claim, the claimant shall cause the initial notice, the claim, the opt-out notification form, and any other documents required by the direction of the Board to be served with the initial notice and the claim, upon each respondent as prescribed in § 222.5(b) and 17 U.S.C. 1506(g). The copy of the claim that is served shall be of the claim that was found to be compliant under 37 CFR 224.1, and is, at the time of service, available on eCCB. The initial notice, the claim, the opt-out notification form, and any other document required by the Board shall not be accompanied by any additional substantive communications or materials, including without limitation settlement demands, correspondence purporting to describe the claim or the strength of the claim, or exhibits not filed with the claim, when served by the claimant(s).
§ 222.4   Second notice.
(a) Content of second notice. The second notice to the respondent shall—
(1) Include on the first page a caption that provides the parties' names and the docket number;
(2) Be addressed to the respondent, using the address that appeared in the initial notice or an updated address, if an updated address was provided to the Board prior to service of the second notice;
(3) Include the contact information for the claimant(s) and claimant's legal counsel or authorized representative, for any claimant represented by legal counsel or an authorized representative;
(4) Advise the respondent that a proceeding that could affect the respondent's legal rights has been commenced by the claimant(s) in the Board against the respondent;
(5) Identify the nature of the claims asserted against the respondent, which shall consist of at least one of the following:
(i) A claim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106;
(ii) A claim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; and
(iii) A claim under 17 U.S.C. 512(f) for misrepresentation in connection with—
(A) A notification of claimed infringement; or
(B) A counter notification seeking to replace removed or disabled material;
(6) Describe the Board, including that it is a three-member tribunal within the Copyright Office that has been established by law to resolve certain copyright disputes in which the total monetary recovery does not exceed $30,000;
(7) State that the respondent has the right to opt out of participating in the proceeding, and that the consequence of opting out is that the proceeding shall be dismissed and the claimant shall have to determine whether to file a lawsuit in a Federal district court;
(8) State that if the respondent does not opt out within 60 days from the day the respondent received the initial notice, the consequences are that the proceeding shall go forward and the respondent shall—
(i) Lose the opportunity to have the dispute decided by the Federal court system, created under Article III of the Constitution of the United States; and
(ii) Waive the right to have a trial by jury regarding the dispute;
(9) Provide information on how to access the docket of the proceeding in eCCB and how to become a registered user of that system;
(10) State that the notice is in regard to an official Government proceeding and provide information on how to access the docket of the proceeding eCCB;
(11) Provide information on how to become a registered user of eCCB;
(12) State that parties may represent themselves in the proceeding, but note that a party may wish to consult with legal counsel or with a law school clinic, and provide reference to pro bono resources ( i.e., legal services provided without charge for those services) which may be available and are listed on the Board's website;
(13) Indicate where other pertinent information concerning proceedings before the Board may be found on the Board's website;
(14) Provide direction on how a respondent may opt out of the proceeding, either online or by mail;
(15) Be accompanied by the documents described in § 222.3(b);
(16) In the case of a proceeding in which the claimant has requested under § 222.2(c)(1) that the proceeding be conducted as a smaller claim under 37 CFR part 226, include a statement that the proceeding shall be conducted as a smaller claim and a brief explanation of the differences between smaller claims proceedings and other proceedings before the Board; and
(17) Include any additional information or documents at the Board's direction.
(b) Timing of second notice. The Board shall issue the second notice in the manner prescribed by § 222.5(d)(2) no later than 20 days after the claimant files proof of service or a completed waiver of service with the Board, unless the respondent has already submitted an opt-out notification pursuant to 37 CFR 223.1.
§ 222.5   Service; waiver of service; filing.
(a) In general. Unless specified otherwise, all filings made by a party in CCB proceedings must be filed in eCCB. Except as provided elsewhere in this section, documents are served on a party who is a registered user of the eCCB and filed with the Board by submitting them to eCCB. Service is complete upon filing, but is not effective if the filer learns that it did not reach the person to be served.
(b) Service of initial notice, claim, and related documents —(1) Timing of service. A claimant may proceed with service of a claim only after the claim is reviewed by a Copyright Claims Attorney and the claimant is notified that the claim is compliant under 37 CFR 224.1.
(2) Service methods. (i) Service of the initial notice, the claim, and other documents required by this part or the Board to be served with the initial notice and claim shall be made as provided under 17 U.S.C. 1506(g), as supplemented by this section.
(ii) If a corporation, partnership, or unincorporated association has designated a service agent under 17 U.S.C. 1506(g)(5)(B) and § 222.6, service must be made by certified mail or by any other method that the entity specifies in its designation under § 222.6 that it will accept.
(3) Filing of proof of service. (i) No later than the earlier of seven calendar days after service of the initial notice and all accompanying documents under paragraph (b) of this section and 90 days after receiving notification of compliance, a claimant shall file a completed proof of service form through eCCB. A claimant shall submit a completed proof of service document, using either the proof of service form available on the Board's website or a substantively similar proof of service document that provides all of the information required by the Board's form.
(ii) The claimant's failure to comply with the filing deadline in paragraph (b)(3)(i) of this section may constitute exceptional circumstances justifying an extension of the 60-day period in which a respondent may deliver an opt-out notification to the Board under 17 U.S.C. 1506(i).
(c) Waiver of personal service —(1) Delivery of request for waiver of service. A claimant may request that a respondent waive personal service as provided by 17 U.S.C. 1506(g)(6) by delivering, via first class mail, the following to the respondent:
(i) A completed waiver of personal service form provided on the Board's website;
(ii) The documents described in § 222.3, including the initial notice and the claim; and
(iii) An envelope, with postage prepaid and addressed to the claimant requesting the waiver or, for a claimant represented by legal counsel or an authorized representative, to that claimant's legal counsel or authorized representative.
(2) Content of waiver of service request. The request for waiver of service shall be prepared using a form provided by the Board that shall—
(i) Bear the name of the Board;
(ii) Include on the first page and waiver page the caption identifying the parties and the docket number;
(iii) Be addressed to the respondent;
(iv) Contain the date of the request;
(v) Notify the respondent that a legal proceeding has been commenced by the claimant(s) before the Board against the respondent;
(vi) Advise that the form is not a summons or official notice from the Board;
(vii) Request that respondent waive formal service of summons by signing the enclosed waiver;
(viii) State that a waiver of personal service shall not constitute a waiver of the right to opt out of the proceeding;
(ix) Describe the effect of agreeing or declining to waive service;
(x) Include a waiver of personal service form provided by the Board, containing a clear statement that waiving service does not affect the respondent's ability to opt out of the proceeding and that, if signed and returned by the respondent, will include—
(A) An affirmation that the respondent is waiving service;
(B) An affirmation that the respondent understands that the respondent may opt out of the proceeding within 60 days of receiving the request;
(C) The name and mailing address of the respondent;
(D) For a respondent that is represented by legal counsel or an authorized representative, the name(s), mailing address(es), email address(es), and telephone number(s) of such legal counsel or authorized representative;
(E) For a respondent that is not represented by legal counsel or an authorized representative, the email address and telephone number of that respondent; and
(F) The typed, printed, or handwritten signature of the respondent or, if the respondent is represented by legal counsel or an authorized representative, the typed, printed, or handwritten signature of the respondent's legal counsel or authorized representative. If the signature is handwritten, it shall be accompanied by a typed or printed name; and
(xi) Not be accompanied by any other substantive communications.
(3) Completing waiver of service. The respondent may complete waiver of service by returning the signed waiver form in the postage prepaid envelope to claimant by mail or, if the claimant also provides an email address to which the waiver of personal service form may be returned, by means of an email to which a copy of the signed form is attached. Waiving service does not affect a respondent's ability to opt out of a proceeding.
(4) Timing of completing waiver. The respondent has 30 days from the date on which the request was sent to return the waiver form.
(5) Filing of waiver. Where the respondent has completed the waiver form, the claimant must submit the completed waiver form to the Board no later than the earlier of seven calendar days after the date the claimant received the signed waiver form from the respondent or 90 days after receiving notification of compliance.
(d) Service by the Copyright Claims Board —(1) In general. Except as otherwise provided in this paragraph (d), the Board shall serve one copy of all orders, notices, decisions, rulings on motions, and similar documents issued by the Board upon each party through eCCB.
(2) Service of second notice. (i) The Board shall serve the second notice required under 17 U.S.C. 1506(h) and § 222.4, along with the documents described in § 222.3(b), by sending them by mail to the respondent at the address provided—
(A) In the designated service agent directory, if the respondent is a corporation, partnership, or unincorporated association that has designated a service agent; and, if not,
(B) By the claimant in the claim or, in a subsequent communication correcting the address.
(ii) The Board shall also serve the second notice by email if an email address for the respondent has been provided in the designated service agent directory or by the claimant.
(3) Service of order regarding second filing fee and electronic filing registration on claimants. The Board shall serve the orders set forth in § 222.7—
(i) On any respondents that have not registered for eCCB in the manner set forth in paragraph (d)(2) of this section; and
(ii) On any claimants that have not registered for eCCB by sending such documents—
(A) By mail at the address provided for the claimant in the claim and by email at the email address provided for the claimant in the claim; or
(B) If the claimant is represented by legal counsel or an authorized representative, by mail at the address provided for such counsel or authorized representative in the claim and by email at the email address provided for such legal counsel or authorized representative in the claim.
(e) Service of discovery requests, responses, and responsive documents —(1) Service of discovery requests, responses, and responsive documents. Except as provided in paragraph (f) of this section, unless the parties agree in writing to other arrangements, discovery requests and responses shall be served by email and documents or other evidence responsive to discovery requests shall be served by email where the size and format of the documents or evidence make such service reasonably possible. If such documents or other evidence cannot reasonably be served by email, the parties shall confer and agree to other arrangements. Should the parties be unable to agree to other arrangements, such documents or other evidence shall be served by mail. Service is complete upon sending, but service is not effective if the sender learns that it did not reach the party to be served.
(i) If a party is represented by legal counsel or an authorized representative, service under this paragraph must be made on the legal counsel or authorized representative at that legal counsel's or authorized representative's email address, or mailing address provided in the claim, response, or notice of appearance, unless the Board orders service on the party.
(ii) If a party is not represented, service under this paragraph (e)(1) must be made on the party at the email address or mailing address provided by that party in the claim or response.
(2) Filing generally prohibited. Unless the Board orders otherwise, discovery requests and responses should not be filed with the Board unless a party relies on the request or response as part of another filing in the proceeding.
(f) Waiver of electronic filing and service requirements. In exceptional circumstances, an individual not represented by legal counsel or an authorized representative may request that the Board waive the electronic filing and service requirements set forth in this subchapter. Whether such a waiver is granted is at the Board's discretion. If a waiver is granted, the Board shall instruct the parties as to the filing and service requirements for that proceeding based on consideration of the circumstances of the proceeding and the parties.
§ 222.6   Designated service agents.
(a) In general. 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 may designate such an agent by submitting the designation electronically through the Board's designated service agent directory, which shall be available on the Board's website.
(b) Designation fee. A service agent designation shall be accompanied by the fee set forth in 37 CFR 201.3.
(c) Trade names and affiliated entities —(1) Trade names. Each corporation, partnership, or unincorporated association that submits a service agent designation may include up to 50 trade names that function as alternate business names ( i.e., “doing business as” or “d/b/a” names) under which such registered corporation, partnership, or unincorporated association is doing business.
(2) Affiliated entities. Affiliated corporations, partnerships, or unincorporated associations that are separate legal entities but are under direct or indirect common control ( e.g., parent and subsidiary companies) of the filing corporation, partnership, or unincorporated association may also be included in the same service agent designation, but only if all of the information required in paragraph (d)(1)(ii), (iii), and (v) through (vii) of this section is the same for the filing corporation, partnership, or unincorporated association and the affiliated corporation, partnership, or unincorporated association. Otherwise, those separate legal entities must file separate service agent designations, although a submitter may designate the same service agent for multiple corporations, partnerships, or unincorporated associations.
(d) Content of submission —(1) In general. The designated service agent submission shall include:
(i) The legal name, business address, email address, and telephone number of the corporation, partnership, or unincorporated association;
(ii) The state in which the principal place of business of the corporation, partnership, or unincorporated association is located;
(iii) For corporations, the state or territory (including the District of Columbia) of incorporation;
(iv) Up to 50 additional names, consisting of either the names of affiliated entities or trade names, or both, as described in paragraph (c) of this section;
(v) The name, business address (or, if the agent does not have a business address, the address of the residence of such agent), email address, and telephone number of the designated service agent;
(vi) The submitter's name, email address, and telephone number; and
(vii) The corporation, partnership, or unincorporated association's service method election, as described in paragraph (e) of this section.
(2) Certification. To complete the designation, the person submitting the designation shall certify, under penalty of perjury, that the submitter is authorized by law to make the designation on behalf of the corporation, partnership, or unincorporated association, including any other affiliated entities for which the filing is made.
(e) Service on designated agents. 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 or priority mail at the identified mailing address. It may also indicate in its designation that it consents to receive service by email at the identified email address.
(1) Service by mail. The corporation, partnership, or unincorporated association shall identify the service agent's place of business or, if there is no place of business, the address of the service agent's residence for purposes of service by mail. The service agent's place of business or address of the service agent's residence must be located within the United States.
(2) Service by email. (i) If a corporation, partnership, or unincorporated association indicates that it consents to receive service by email, the designated service agent's email address shall be displayed on the designated service agent directory.
(ii) 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 been authorized to waive that right on behalf of the corporation, partnership, or unincorporated association and any other affiliated entity for which the filing is made for Board proceedings.
(f) Amendments. A corporation, partnership, or unincorporated association shall have a duty to maintain current information in the directory. A corporation, partnership, or unincorporated association may amend a designation of a service agent by following directions on the Board's website. Such amendment shall be accompanied by the fee set forth in 37 CFR 201.3. The requirements found in paragraph (d) of this section shall apply to the service agent designation amendment. If current information is not timely maintained and, as a result, the identification or address of the service agent in the directory is no longer accurate, the Board may, in its discretion and subject to any reasonable conditions that the Board may decide to impose, determine whether service upon that agent or at that address was effective.
(g) Public directory —(1) In general. After a corporation, partnership, or unincorporated association submits a service agent designation, such designation shall 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.
(2) Removal from directory. 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 shall notify the submitter that it intends not to add the record to the directory, or that it intends to remove the record from the directory, and shall provide the submitter 10 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 shall not be added to, or shall be removed from, the directory.
(3) Content of public listing. 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 email address and telephone number of the corporation, partnership, or unincorporated association provided under paragraph (d)(1)(i) of this section shall not be made publicly available on the designated service agent directory website, but such information shall be made available to Board staff.
(4) Designation date. A designation filed in accordance with this section before April 7, 2022 will become effective on that date.
§ 222.7   Order regarding second filing fee and electronic filing registration.
(a) Issuance of order. Once a proceeding has become active with respect to all respondents who have been served and have not opted out within the 60-day period set forth in 17 U.S.C. 1506(i), the Board shall issue an order to all parties in the proceeding providing that within 14 days of the order—
(1) The claimant must submit the second payment of the filing fee set forth in 37 CFR 201.3(g) through eCCB; and
(2) All claimant(s) and respondent(s) must register for eCCB unless they have been granted a waiver pursuant to § 222.5(f).
(b) Receipt of second payment from claimant —(1) Confirmation of active proceeding. Upon receipt of the second payment of the filing fee set forth in 37 CFR 201.3(g) and after completion of the 14-day period specified in the Board's order, the Board shall issue a scheduling order through eCCB.
(2) Notice to respondent. If any claimant or respondent has not registered for eCCB, the scheduling order shall be accompanied by a notice to those parties that unless they have been granted a waiver pursuant to § 222.5(f), they must register for eCCB and that a failure to do so within a time set by the Board may result in default or failure to prosecute. Such scheduling order and notice shall be served on the respondent according to the procedures set forth in § 222.5(d)(2).
(c) Failure of claimant to submit second payment. If the claimant(s) fails to submit the second payment of the filing fee set forth in 37 CFR 201.3(g) within 14 days from the date of the Board's order, the Board shall issue another notice to the claimant(s), which shall provide that the proceeding shall be dismissed without prejudice unless the claimant(s) submits the second payment of the filing fee within 14 days. If the claimant(s) fails to submit the second payment of the filing fee within 14 days of the issuance of that notice, the Board shall dismiss the proceeding without prejudice, unless the Board finds that the proceeding should not be dismissed in the interests of justice.
§ 222.8   Response.
(a) Filing a response. Following receipt of the scheduling order in an active proceeding, each respondent shall file a response through eCCB using the response form provided by the Board. Except for respondents who are represented by the same legal counsel or authorized representative, each respondent shall submit a separate response.
(b) Content of response. The response shall include—
(1) The name and mailing address of the respondent(s) and, for any respondents represented by legal counsel or an authorized representative, of such respondent's legal counsel or authorized representative;
(2) The phone number and email address of—
(i) The respondent, if the respondent is not represented by legal counsel or an authorized representative; or
(ii) The legal counsel or other authorized representative for the respondent, if the respondent is represented by legal counsel or an authorized representative;
(3) A short statement, if applicable, disputing any facts asserted in the claim;
(4) For infringement claims brought under 17 U.S.C. 1504(c)(1), a statement describing in detail the dispute regarding the alleged infringement, including reasons why the respondent contends that it has not infringed the claimant's copyright, and any additional defenses, including whether any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 are implicated;
(5) For declaration of noninfringement claims brought under 17 U.S.C. 1504(c)(2), a statement describing in detail the dispute regarding the alleged infringement, including reasons why the respondent contends that its copyright has been infringed by claimant, and any additional defenses the respondent may have to the claim;
(6) For misrepresentation claims brought under 17 U.S.C. 1504(c)(3), a statement describing in detail the dispute regarding the alleged misrepresentation, including an explanation of why the respondent believes the identified words do not constitute misrepresentation, and any additional defenses the respondent may have to the claim;
(7) Any counterclaims pursuant to § 222.9; and
(8) A certification under penalty of perjury by the respondent or the respondent's legal counsel or authorized representative that the information provided in the response is accurate and truthful to the best of the certifying person's knowledge and, if the certifying person is not the respondent, that the certifying person has confirmed the accuracy of the information with the respondent. The certification shall include the typed signature of the certifying person.
(c) Additional matter. The respondent may also include, as attachments to or files that accompany the response, any material the respondent believes plays a significant role in setting forth the facts of the claim, such as:
(1) A copy of the copyright registration certificate for a work that is the subject of the proceeding;
(2) A copy of the allegedly infringed work. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted;
(3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity;
(4) A copy of the notification of claimed infringement that is alleged to contain the misrepresentation;
(5) A copy of the counter notification that is alleged to contain the misrepresentation; and
(6) Any other exhibits that play a significant role in setting forth the facts of the response.
(d) Additional information required during response submission. In connection with the submission of the response the respondent shall also provide—
(1) For any respondent that is represented by legal counsel or an authorized representative, the email address and telephone number of that respondent. Such information shall not be part of the response; and
(2) Any further information that the Board may determine should be provided.
(e) Timing of response. The respondent has 30 days from the issuance of the scheduling order to submit a response. If the respondent waived personal service, the respondent will have an additional 30 days to submit the response.
(f) Failure to file response. A failure to file a response within the required timeframe may constitute a default under 17 U.S.C. 1506(u), and the Board may begin proceedings in accordance with part 227 of this subchapter.
§ 222.9   Counterclaim.
(a) Asserting a counterclaim. Any party can assert a counterclaim falling under the jurisdiction of the Board that also—
(1) Arises out of the same transaction or occurrence as the initial claim; or
(2) Arises under an agreement pertaining to the same transaction or occurrence that is subject to an initial claim of infringement, if the agreement could affect the relief awarded to the claimant.
(b) Electronic filing requirement. A party may submit a counterclaim through eCCB using the counterclaim form provided by the Board.
(c) Content of counterclaim. The counterclaim shall include—
(1) The name of the party or parties against whom the counterclaim is asserted;
(2) An identification of the counterclaim, which shall consist of at least one of the following:
(i) A counterclaim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106;
(ii) A counterclaim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106;
(iii) A counterclaim 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; or
(iv) A counterclaim that arises under an agreement pertaining to the same transaction or occurrence that is the subject of a claim of infringement brought under 17 U.S.C. 1504(c)(1), if the agreement could affect the relief awarded to the claimant;
(3) For an infringement counterclaim asserted under paragraph (c)(2)(i) of this section—
(i) That the counterclaimant is the legal or beneficial owner of rights in a work protected by copyright and, if there are any co-owners, their names;
(ii) The following information for each work at issue in the counterclaim:
(A) The title of the work;
(B) The author(s) of the work;
(C) If a copyright registration has issued for the work, the registration number and effective date of registration;
(D) If an application for copyright has been submitted but a registration has not yet issued, the service request number (SR number) and registration application date; and
(E) The work of authorship category, as set forth in 17 U.S.C. 102, for each work at issue, or, if the counterclaimant is unable to determine the applicable category, a brief description of the nature of the work;
(iii) A description of the facts relating to the alleged infringement, including, to the extent known to the counterclaimant:
(A) Which exclusive rights provided under 17 U.S.C. 106 are at issue;
(B) When the alleged infringement began;
(C) The name(s) of all person(s) or organization(s) alleged to have participated in the infringing activity;
(D) The facts leading the counterclaimant to believe the work has been infringed;
(E) Whether the alleged infringement has continued through the date the counterclaim was filed, or, if it has not, when the alleged infringement ceased;
(F) Where the alleged act(s) of infringement occurred; and
(G) If the infringement counterclaim is asserted against an online service provider as defined in 17 U.S.C. 512(k)(1)(B) for infringement by reason of the storage of or referral or linking to infringing material that may be subject to the limitations on liability set forth in 17 U.S.C. 512(b), (c), or (d), an affirmance that the counterclaimant has previously notified the service provider of the claimed infringement in accordance with 17 U.S.C. 512(b)(2)(E), (c)(3), or (d)(3), as applicable, and that the service provider failed to remove or disable access to the material expeditiously upon the provision of such notice;
(4) For a declaration of noninfringement counterclaim asserted under paragraph (c)(2)(ii) of this section—
(i) The name(s) of the person(s) or organization(s) asserting that the counterclaimant has infringed a copyright;
(ii) The following information for each work alleged to have been infringed, if that information is known to the counterclaimant:
(A) The title;
(B) If a copyright registration has issued for the work, the registration number and effective date of registration;
(C) If an application for copyright has been submitted, but a registration has not yet issued, the service request number (SR number) and registration application date; and
(D) The work of authorship category, as set forth in 17 U.S.C. 102, or, if the counterclaimant is unable to determine which category is applicable, a brief description of the nature of the work;
(iii) A brief description of the activity at issue in the counterclaim, including, to the extent known to the counterclaimant:
(A) Any exclusive rights provided under 17 U.S.C. 106 that may be implicated;
(B) When the activities at issue began and, if applicable, ended;
(C) Whether the activities at issue have continued through the date the counterclaim was filed;
(D) The name(s) of all person(s) or organization(s) who participated in the allegedly infringing activity; and
(E) Where the activities at issue occurred;
(iv) A brief statement describing the reasons why the counterclaimant believes that no infringement occurred, including any relevant history or agreements between the parties and whether counterclaimant currently believes any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 are implicated; and
(v) A brief statement describing the reasons why the counterclaimant believes that there is an actual controversy concerning the requested declaration;
(5) For a misrepresentation counterclaim asserted under paragraph (c)(2)(iii) of this section—
(i) The sender of the notification of claimed infringement;
(ii) The recipient of the notification of claimed infringement;
(iii) The date the notification of claimed infringement was sent, if known;
(iv) A description of the notification;
(v) If a counter notification was sent in response to the notification—
(A) The sender of the counter notification;
(B) The recipient of the counter notification;
(C) The date the counter notification was sent, if known; and
(D) A description of the counter notification;
(vi) The words in the notification or counter notification that allegedly constituted a misrepresentation; and
(vii) An explanation of the alleged misrepresentation;
(6) For a counterclaim arising under an agreement asserted under paragraph (c)(2)(iv) of this section—
(i) A description of the agreement that the counterclaim is based upon;
(ii) A brief statement describing how the agreement pertains to the same transaction or occurrence that is the subject of the infringement claim against the counterclaimant; and
(iii) A brief statement describing how the agreement could affect the relief awarded to the claimant;
(7) For infringement counterclaims, misrepresentation counterclaims, and counterclaims arising under an agreement as provided in paragraph (a)(2), a statement describing the harm suffered by the counterclaimant(s) as a result of the alleged activity and the relief sought by the counterclaimant(s). Such statement may, but is not required to, include an estimate of any monetary relief sought;
(8) A statement describing the relationship between the initial claim and the counterclaim; and
(9) A certification under penalty of perjury by the counterclaimant or the counterclaimant's legal counsel or authorized representative that the information provided in the counterclaim is accurate and truthful to the best of the certifying person's knowledge and, if the certifying person is not the counterclaimant, that the certifying person has confirmed the accuracy of the information with the counterclaimant. The certification shall include the typed signature of the certifying person.
(d) Additional matter. The counterclaimant may also include, as attachments to or files that accompany the counterclaim, any material the counterclaimant believes plays a significant role in setting forth the facts of the counterclaim, such as:
(1) A copy of the copyright registration certificate for a work that is the subject of the proceeding;
(2) A copy of the allegedly infringed work. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted;
(3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity;
(4) A copy of the notification of claimed infringement that is alleged to contain the misrepresentation;
(5) A copy of the counter notification that is alleged to contain the misrepresentation;
(6) A copy of any agreements related to the counterclaim, including any amendments or revisions; and
(7) Any other exhibits that play a significant role in setting forth the facts of the counterclaim.
(e) Timing of counterclaim. A counterclaim must be served and filed with the respondent's response unless the Board, for good cause, permits a counterclaim to be asserted at a subsequent time.
§ 222.10   Response to counterclaim.
(a) Filing a response to a counterclaim. Within 30 days following the Board's issuance of notification that a counterclaim is compliant under 37 CFR 224.1, a claimant against whom a counterclaim has been asserted (counterclaim respondent) shall file a response to the counterclaim through eCCB using the response form provided by the Board.
(b) Content of response to a counterclaim. The response to a counterclaim shall include—
(1) The name, mailing address, phone number, and email address of each counterclaim respondent filing the response;
(2) A short statement, if applicable, disputing any facts asserted in the counterclaim;
(3) For infringement counterclaims, as set forth in 37 CFR 222.9(c)(2)(i), a statement describing in detail the dispute regarding the alleged infringement, including any defenses as well as any reason why the counterclaim respondent believes there was no infringement of copyright, including any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 that are implicated;
(4) For declaration of noninfringement counterclaims, as set forth in 37 CFR 222.9(c)(2)(ii), a statement describing in detail the dispute regarding the alleged infringement, including any defenses as well as reasons why the counterclaim respondent believes there is infringement of copyright;
(5) For misrepresentation counterclaims, as set forth in 37 CFR 222.9(c)(2)(iii), a statement describing in detail the dispute regarding the alleged misrepresentation, including any defenses as well as an explanation of why the counterclaim respondent believes the identified words do not constitute misrepresentation; and
(6) For counterclaims arising under an agreement, as set forth in 37 CFR 222.9(c)(2)(iv), a statement describing in detail the dispute regarding the contractual counterclaim, including any defenses as well as an explanation of why the counterclaim respondent believes the counterclaimant's position regarding the agreement lacks merit; and
(7) A certification under penalty of perjury by the claimant, the claimant's legal counsel, or the claimant's authorized representative that the information provided in the response to the counterclaim is accurate and truthful to the best of the certifying person's knowledge and, if the certifying person is not the counterclaim respondent, that the certifying person has confirmed the accuracy of the information with the counterclaim respondent. The certification shall include the typed signature of the certifying person.
(c) Additional matter. The counterclaim respondent may also include, as attachments to or files that accompany the counterclaim response, any material the counterclaim respondent believes play a significant role in setting forth the facts of the claim, such as:
(1) A copy of the copyright registration certificate for a work that is the subject of the proceeding;
(2) A copy of the allegedly infringed work. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted;
(3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity;
(4) A copy of the notification of claimed infringement that is alleged to contain the misrepresentation;
(5) A copy of the counter notification that is alleged to contain the misrepresentation;
(6) A copy of any agreements related to the counterclaim, including any amendments or revisions; and
(7) Any other exhibits that play a significant role in setting forth the facts of the counterclaim response.
(d) Failure to file counterclaim response. A failure to file a counterclaim response within the timeframe required by this section may constitute a default under 17 U.S.C. 1506(u), and the Board may begin default proceedings under part 227 of this subchapter.
§ 222.11   Scheduling order.
(a) Timing. Upon receipt of the second payment of the filing fee set forth in § 201.3(g) of this subchapter and after completion of the 14-day period specified in the Board's order pursuant to § 222.7, the Board shall issue an initial scheduling order through eCCB, subject to § 222.7(b)(1).
(b) Content of initial scheduling order. The scheduling order shall include the dates or deadlines for:
(1) Filing of a response to the claim by the respondent;
(2) A pre-discovery conference with a Copyright Claims Officer (Officer) to discuss case management, including discovery, and the possibility of resolving the claims and any counterclaims through settlement;
(3) Service of responses to standard interrogatories;
(4) Service of documents in response to standard requests for the production of documents;
(5) Requests for leave to seek additional discovery;
(6) Close of discovery;
(7) A post-discovery conference with an Officer to discuss further case management, including the possibility of resolving the claims and any counterclaims through settlement; and
(8) Filing of each party's written testimony and responses, pursuant to § 222.15.
(c) Conferences. In addition to those identified in paragraph (b) of this section, the Board may hold additional conferences, at its own election or at the request of any party. Requests for a conference and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter. All conferences shall be held virtually.
(d) Amended scheduling order. The Board may amend the initial scheduling order—
(1) Upon the clearance of a counterclaim by a Copyright Claims Attorney pursuant to § 224.1(c)(1) of this subchapter, to add a deadline for the service of a response by a claimant to a counterclaim and to amend other previously scheduled dates in the prior scheduling order;
(2) Upon request of one or more of the parties to an active proceeding submitted through eCCB. Requests to amend the scheduling order and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter;
(3) As necessary to adjust the schedule for conferences or hearings or the staying of the proceeding;
(4) As necessary to facilitate settlement pursuant to § 222.18; or
(5) Upon its own initiative in the interests of maintaining orderly administration of the Board's docket.
§ 222.12   Amending pleadings.
(a) Amendments before service. A claimant who has been notified pursuant to § 224.1(c)(2) of this subchapter that a claim does not comply with the applicable statutory and regulatory requirements may freely amend any part of the claim as part of an amended claim filed under 17 U.S.C. 1506(f)(1)(B). A claimant who has been notified pursuant to § 224.1(c)(1) of this subchapter that a claim has been found to comply with the applicable statutory and regulatory requirements may freely amend the claim once as a matter of course prior to service. Any claim that is amended shall be submitted for compliance review under § 224.1(a) of this subchapter.
(b) Amendments during the opt-out period. A claimant may not amend a claim during the opt-out period for any respondent.
(c) Amendment of counterclaim before response. A counterclaimant may freely amend its counterclaim once as a matter of course prior to filing of the response to the counterclaim. The filing of any amended counterclaim shall suspend the time for responding to the counterclaim and the counterclaim shall be submitted for compliance review under § 224.1(a) of this subchapter. A counterclaimant who has been notified pursuant to § 224.1(c)(2) of this subchapter that a counterclaim does not comply with the applicable statutory and regulatory requirements may amend any part of the counterclaim as part of an amended counterclaim filed under 17 U.S.C. 1506(f)(2). The counterclaim respondent shall file a response to the amended counterclaim within 30 days following compliance review approval of the amended counterclaim.
(d) All other amendments. In all other cases, a party may amend its pleading only with the Board's leave. If the Board grants leave, any amendment shall be submitted for a compliance review under § 224.1(a) of this subchapter.
(1) Time to respond. Unless the Board orders otherwise or as otherwise covered by this subchapter, any required response to an amended pleading must be made within the time remaining to respond to the original pleading or within 30 days after the Board's notification that the amended pleading is compliant, whichever is later.
(2) Procedure for request for leave to amend. The party seeking leave to amend must submit a request to the Board setting forth the reasons why an amended pleading is appropriate. Requests for leave to amend and any responses thereto shall follow the procedures set forth in § 220.5(a)(2) of this subchapter.
(3) Standard for granting leave to amend. In determining whether to grant leave to amend a pleading, the Board shall grant leave if justice so requires after considering whether any other party will be prejudiced if the amendment is permitted (including the impact the amendment might have on a respondent's right to opt out of the proceeding), whether the proceedings will be unduly delayed if the amendment is permitted, and whether the basis for the amendment reasonably should have been known to the amending party before the pleading was served or during the time period specified in paragraph (a) of this section, along with any other relevant considerations. If leave is granted, it shall only be granted regarding the specific amendments described in the request.
§ 222.13   Consolidation.
(a) Consolidation. Except as provided in paragraph (e) of this section, if a claimant has multiple active proceedings against the same respondent or multiple active proceedings that arise out of the same facts and circumstances, the Board may consolidate the proceedings for purposes of conducting discovery, submitting evidence to the Board, or holding hearings. Consolidated proceedings shall remain separate for purposes of Board determinations and any damages awards.
(b) Timing. The Board may consolidate proceedings at any time upon its own authority or following consideration of a request by any party, with reasonable notice and opportunity to be heard provided to all affected parties.
(c) Procedure. The party seeking consolidation must submit a request to the Board setting forth the reasons for the request, requesting a conference with the Board and the parties from each affected case, and providing the Board with the docket numbers for each affected proceeding. Requests for consolidation and any responses thereto shall follow the procedures set forth in § 220.5(a)(2) of this subchapter.
(d) Standard for granting request. In determining whether to grant a request to consolidate, the Board shall balance the need for and benefits of consolidation with the timeliness of the request and whether any undue prejudice has resulted from the delay in making the request.
(e) Smaller claims proceedings. Where the Board becomes aware that a standard proceeding and a smaller claims proceeding involve the same or substantially similar parties and arise out of the same transaction or occurrence, one or more Officers may hold a conference to determine whether the parties are willing to voluntarily consolidate the separate proceedings into a single proceeding using either the smaller claims procedures or the standard Board procedures. The Board will consolidate proceedings only where the parties agree, doing so would be in the interests of justice, and the proceedings involve the same or substantially similar parties and arise out of the same transaction or occurrence. If the proceedings involve the same or substantially similar parties and arise out of the same transaction or occurrence, but the parties do not agree to voluntarily consolidate the separate proceedings into a single proceeding, then each proceeding shall be considered separately.
§ 222.14   Additional parties.
(a) When applicable. A necessary party is a person or entity whose absence would prevent the Board from according complete relief among existing parties, or who claims an interest related to the subject of the proceeding such that reaching a determination in the proceeding may impair or impede that person's or entity's ability to protect that interest as a practical matter, or in whose absence an existing party would be subject to a substantial risk of incurring double, multiple, or inconsistent obligations because of that interest.
(b) Failure to join a necessary party. At any time, any party who believes in good faith that a necessary party has not been joined, and therefore the case is unsuitable for Board proceedings, may file a request according to the procedures set forth in §§ 220.5(a)(2) and 224.2(c) of this subchapter. Any party opposing the request may file a response according to the procedures set forth in §§ 220.5(a)(2) and 224.2(c). If the Board determines that a necessary party has not been joined, it shall dismiss the proceeding without prejudice as unsuitable for CCB proceedings pursuant to § 224.2.
(c) Intervention of a necessary party. At any time, a third party seeking to intervene on the ground(s) that it is a necessary party may file a request setting forth the reasons for the request and requesting a conference with the Board. Requests to intervene and any responses thereto shall follow the procedures set forth in § 220.5(a)(2) of this subchapter. After evaluating the parties' submissions, the Board may hold a conference between the parties to the proceeding and the intervening party to address the request.
(d) Board determination. (1) If the Board determines that the intervening party is not a necessary party, it shall deny the request and resume the proceeding, unless all parties agree that the party should be joined.
(2) If the Board determines that the intervening party is a necessary party, it shall—
(i) Permit the intervening party to join the proceeding, if no party indicated that it opposed the request to intervene; or
(ii) Dismiss the proceeding without prejudice, if any party indicated that it opposed the request to intervene.
§ 222.15   Written testimony on the merits.
(a) Timing. After the close of discovery and by the times specified within the scheduling order, any party asserting a claim or counterclaim shall file written direct testimony in support of that claim or counterclaim. Any party responding to a claim or counterclaim shall file written response testimony within 45 days following the date of service of written direct testimony. Any party who asserted a claim or counterclaim may file written reply testimony within 21 days following the date of service of written response testimony. All written testimony shall be uploaded to eCCB.
(b) Direct and response testimony. Written direct and response testimony shall consist of documentary evidence and a party statement, and may include witness statements.
(1) Documentary evidence. (i) Documentary evidence must be accompanied by a statement that lists each submitted document and provides a brief description of each document and how it bears on a claim or counterclaim; and
(ii) Except when testimony is submitted pursuant to § 227.2 or § 227.4 of this subchapter, direct or response documentary evidence shall only include documents that were served on opposing parties pursuant to the scheduling order, absent leave from the Board, which shall be granted only for good cause.
(2) Witness statements. A witness statement must—
(i) Be sworn under penalty of perjury by the witness;
(ii) Be detailed as to the substance of the witness's knowledge and must be organized into numbered paragraphs; and
(iii) Contain only factual information based on the witness's personal knowledge and may not contain legal argument.
(3) Party statement. A party statement—
(i) Shall set forth the party's position as to the key facts and damages, as well as any position as to the law;
(ii) Need not have a table of contents or authorities;
(iii) Shall be limited to 12 pages, other than any optional table of contents or authorities, and shall meet the requirements set forth in § 220.5(b) of this subchapter;
(iv) For a claimant or counterclaimant seeking damages for copyright infringement, shall include a statement as to whether the party is electing to seek statutory damages or actual damages and any profits. Alternatively, at any stage of the proceedings, either before or after the submission of written testimony, a claimant or counterclaimant may submit a statement following the procedures set forth in § 220.5(a)(1) of this subchapter indicating the election of the form of damages. This election may be changed at any time up until final determination by the Board; and
(v) For a respondent or counterclaim respondent, may include a statement as to whether, if found liable on a claim or counterclaim, the party would voluntarily agree to an order to cease or mitigate any unlawful activity. Such an election must be made, or changed if made earlier, no later than the filing of the respondent's or counterclaim respondent's party statement, or at a hearing if one is ordered by the Board. Such an election may be considered in appropriate cases by the Board in determining an amount of damages, if any, pursuant to 17 U.S.C. 1504. Such a statement will not be considered by the Board in any way in making its determination as to liability, and shall be considered only as to damages.
(c) Reply testimony. Written reply testimony must be limited to addressing or rebutting specific evidence set forth in written response testimony. Written reply testimony may consist of documentary evidence, witness statements, and a party statement as set forth in this paragraph (c).
(1) Documentary evidence. In addition to the requirements of paragraph (b)(1) of this section, documentary evidence presented by a party as part of written reply testimony must be limited to documentary evidence required to contradict or rebut specific evidence that was presented in an opposing party's written response testimony and shall not include any documentary evidence previously presented as part of the submitting party's direct testimony.
(2) Witness statements. In addition to the requirements of paragraph (b)(2) of this section, a reply witness statement must be limited to facts not previously included in that witness's prior statement, and must be limited to facts that contradict or rebut specific evidence that was presented in an opposing party's written response testimony.
(3) Party statement. A party statement in reply must be limited to rebutting or addressing an opposing party's written response testimony and may not include any discussion of the facts, the law, or damages that was included in that party's direct party statement. A reply party statement shall meet the requirements set forth in § 220.5(b) of this subchapter and must be limited to seven pages.
(d) Certification. All written testimony submitted to the Board must include a certification by the party submitting such testimony that it is accurate and truthful.
(e) Request for hearing. Any party may include in a party statement a request for a hearing on the merits before the Board, consistent with § 222.16.
(f) No additional filing. Following filing of any written reply testimony, no further written testimony or evidence may be submitted to the Board, unless at the specific request of the Board or with the Board's leave, or as appropriate at a hearing on the merits ordered by the Board.
§ 222.16   Hearings.
(a) Timing. In any action, the Board may hold a hearing following submission of each party's written direct, response, and reply testimony if it determines that such a hearing is appropriate or advisable. The Board may decide to hold a hearing on its own initiative or after consideration of a request for a hearing from any party.
(b) Virtual hearings. All hearings shall be held virtually and may be recorded as deemed necessary by the Board.
(c) Requesting a hearing. A request for a hearing on the merits of a case may be included in a party statement, pursuant to § 222.15(e), but may also be submitted following the procedures set forth in § 220.5(a)(1) of this subchapter no later than 7 days after the date by which reply testimony may be submitted under § 222.15(a). The Board, in its sole discretion, shall choose whether to hold a hearing, and may elect to hold a hearing absent a request from a party.
(d) Content of request. Any request in a party statement for a hearing on the merits of a case shall consist of a short statement providing the reasons why the party believes the request should be granted.
(e) Scheduling order. When the Board determines that a hearing on the merits of a case is appropriate, it will issue an amended scheduling order setting forth the date of the hearing and deadlines for any additional evidence requested by the Board or for a pre-hearing conference, if applicable.
(f) Close of evidence. Following a hearing on the merits of a case, no additional written testimony or evidence may be submitted to the Board unless at the Board's specific request or with leave of the Board for good cause shown.
§ 222.17   Withdrawal of claims; dismissal.
(a) General. A party may request to withdraw its own claim or counterclaim by filing a written request with the Board seeking withdrawal, and therefore dismissal. Such written request shall consist of a brief statement seeking dismissal and shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
(b) Withdrawal before a response. If the written request is received before a response to the claim or counterclaim is filed with the Board, the Board shall dismiss the claim or counterclaim without prejudice, unless all parties agree in a written stipulation filed with the Board that the claim or counterclaim shall be dismissed with prejudice.
(c) Withdrawal after a response. If the written request is received after a response to the claim or counterclaim is filed with the Board, the Board shall issue a final determination dismissing the claim or counterclaim with prejudice, unless the Board determines in the interests of justice that such dismissal shall be without prejudice or all parties agree in a written stipulation filed with the Board that the claim or counterclaim shall be dismissed without prejudice.
(d) Effect of dismissal. Dismissal of a claim or counterclaim under this section will not affect any remaining claims or counterclaims in the proceeding.
§ 222.18   Settlement.
(a) General. The Board shall facilitate voluntary settlement between the parties of any claims or counterclaims. The appropriateness of a settlement conference, at a minimum, shall be raised by the Board at the pre-discovery and post-discovery conferences set forth in § 222.11(b).
(b) Requesting a settlement conference —(1) Timing. At any point in an active proceeding, some or all of the parties may jointly request a conference with an Officer to facilitate settlement discussions.
(2) Form and content of request. The request can be made orally at any Board conference or it can be made in writing. If made in writing, the request shall consist of a brief statement requesting a settlement conference and indicating which parties join in the request. Parties may also include a request to stay the proceedings while settlement discussions are ongoing. Granting a request for a stay shall be at the Board's discretion. Requests for a settlement conference and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
(c) Scheduling settlement conference. If the request for a settlement conference, and any request for a stay, is jointly made among the parties, or if no party files a response within seven days of the date of service of the request, the Board shall schedule a settlement conference with all parties subject to the request. If one or more parties files a response, upon consideration of the objections and whether any claims or counterclaims may be resolved with only the consenting parties in attendance, the Board may schedule a conference with some or all parties.
(d) Settlement proceedings. Three days prior to a settlement conference, each party participating in the conference shall submit a position statement to the presiding Officer by email and, when there is agreement among the parties, send such statement to the other participating parties outside of eCCB. The position statement shall not exceed five pages, and shall attach no more than 20 pages of exhibits, absent leave of the presiding Officer, although leave shall not be necessary should the page limit be exceeded due to an exhibit being a necessary agreement or contract. Settlement statements shall meet the requirements set forth in § 220.5(b) of this subchapter, but shall not be filed on eCCB. The statement must set forth:
(1) A brief overview of the facts and contentions;
(2) The relief sought, including the amount of damages, if any;
(3) Whether or to what extent the alleged wrongful conduct is currently taking place; and
(4) Any prior attempts at resolution, including any offers or counteroffers made to the other party.
(e) Recusal of presiding Officer. The Officer presiding over the settlement conference shall not participate in rendering a determination in the proceeding, unless the other Officers cannot reach a consensus as to the determination. The presiding Officer may review the record and attend any hearing that is held but shall not actively participate in the hearing or any substantive discussion among the Officers concerning the proceeding or the determination, except that such discussions may be allowed once it is known that the other Officers cannot reach a consensus as to the determination.
(f) Stay of proceeding. To provide the parties with an opportunity to pursue settlement and negotiate any resulting settlement agreement, the Board in its discretion may stay the proceeding for a period of 30 days concurrently with an order scheduling a settlement conference, at the time of or following the settlement conference, or at the request of the parties. The parties may request an extension of the stay in good faith to facilitate ongoing settlement discussions. Requests to stay or extend a stay of the proceeding and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter. If a settlement has not been reached at the time the stay, or any extension thereof, has expired, the Board shall issue an amended scheduling order to govern the remainder of the proceeding.
(g) Settlement agreement. If some or all parties reach a settlement, such parties may submit to the Board a joint request to dismiss some or all of the claims and counterclaims. The parties may include a request that the Board adopt some or all of the terms of the settlement in its final determination. Joint requests for dismissal shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
(h) Effect of settlement agreement. Upon receipt of a joint request to dismiss claims due to settlement, the Board shall dismiss the claims or counterclaims contemplated by the agreement with prejudice, unless the parties have included in their request that the claims or counterclaims shall be dismissed without prejudice. If the parties have requested that the Board adopt some or all of the terms of the settlement in its final determination, the Board may issue a final determination incorporating such terms unless the Board finds them clearly unconscionable.
§ 222.19   Protective orders; personally identifiable information.
(a) Standard protective order. At the request of any party, the Board's standard protective order, as described in this section, shall govern all discovery material exchanged during the proceeding to protect against improper use or disclosure. Requests for a standard protective order shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
(1) Standard of use. Discovery material received from another party may be used only in connection with the proceeding, and all copies must be returned or disposed of within 30 days of a determination or dismissal, or within 30 days of the exhaustion of the time for any review or appeal of the Board's final determination, whichever is later.
(2) Confidentiality. Discovery material may be designated as “confidential” only if the party reasonably and in good faith believes that it consists of:
(i) Bona fide confidential financial information previously not disclosed to the public;
(ii) Bona fide confidential and non-obvious business plans, product development information, or advertising or marketing plans previously not disclosed to the public;
(iii) Any information of a truly personal or intimate nature regarding any individual not known by the public; or
(iv) Any other category of information that the Board grants leave to designate as “confidential.”
(3) Case-by-case basis. Parties must make confidentiality determinations on a document-by-document basis and shall not designate as “confidential” all discovery material produced in bulk.
(4) Submitting confidential information. Confidential discovery materials, or references to or discussions of confidential discovery materials in other documents, may be submitted to the Board by either filing them under seal or redacting the confidential document. If filed under seal, the confidential document must be accompanied by a redacted copy that may be included in the public record.
(5) Determination of confidentiality by the Board. After notice and an opportunity for the designating party to respond, the Board in its discretion may remove a confidentiality designation from any material on its own initiative or upon consideration of a request from a party. Parties must attempt to resolve disputes over confidentiality designations before bringing such disputes to the Board. Requests to remove a confidentiality designation and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.
(b) Custom protective orders. Custom protective orders negotiated by the parties are disfavored. The parties may request that the Board enter a custom protective order that has been negotiated by the parties and that may provide for additional protections for highly sensitive materials. Such a request must be accompanied by a stipulation between the parties that explains the need for such a custom protective order and shall follow the procedures set forth in § 220.5(a)(1) of this subchapter. The custom protective order must be attached as an exhibit to the request. The Board may in its discretion decide whether to grant the parties' request for a custom protective order.
(c) Personally identifiable information. Regardless of whether discovery material has been designated as “confidential,” parties must redact social security numbers, taxpayer identification numbers, birth dates, health information protected by law, the names of any individuals known to be minors, and financial account numbers from any public filings.
(d) Violations of protective order. Violations of a protective order may constitute bad-faith conduct pursuant to § 232.3 of this subchapter.
§ 222.20   Evidence.
(a) Admissibility. All evidence that is relevant and not unduly repetitious or privileged shall be admissible. Evidence which has authentication or credibility issues will have its weight discounted accordingly. The Board reserves the right to discount evidence or not admit evidence with serious credibility issues entirely, or to request clarification from a party.
(b) Examination of witnesses. All witnesses testifying at a hearing before the Board shall be required to take an oath or affirmation before testifying. At a hearing, any member of the Board may administer oaths and affirmations, ask questions of any witness, and each party shall have the opportunity to ask questions of each witness and the other parties. The Board shall manage the conduct of the hearing and may limit the number of witnesses or scope of questioning.
(c) Exhibits in hearing —(1) Submission. Unless they are specifically excluded by the Board's own initiative or due to the Board's ruling on an objection raised by a party, all documents submitted by the parties through their statements submitted under § 222.15 shall be deemed admitted and marked as exhibits in the same order as presented through the documentary evidence a party submitted with the party statement. To the extent additional documents are allowed by the Board at a hearing on the merits, such evidence may also be presented as exhibits to all parties and marked by the presenting party starting with the next number after the exhibits attached to the party's document statement.
(2) Summary exhibits. The contents of voluminous documentary evidence which cannot be conveniently examined at the hearing may be presented in the form of a chart, summary, or calculation. Absent leave of the Board, evidence supporting the summary exhibit must have been produced to the other parties in discovery and admitted as exhibits, and the summary exhibit must be disclosed to the other parties in the proceeding at least seven days before the hearing.
(d) New exhibits for use in cross-examination or redirect examination. Exhibits not submitted as part of written testimony may not be used at a hearing without leave of the Board. Leave to use such exhibits may be requested before or during the hearing. Requests to use an exhibit not submitted as part of written testimony and any responses thereto shall follow the procedures set forth in § 220.5(a)(1) of this subchapter.