§ 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.
[87 FR 30082, May 17, 2022; 87 FR 36061, June 15, 2022; 87 FR 77521, Dec. 19, 2022; 88 FR 48381, July 27, 2023]