[Federal Register Volume 77, Number 164 (Thursday, August 23, 2012)]
[Notices]
[Pages 51068-51071]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-20802]
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LIBRARY OF CONGRESS
Copyright Office
[Docket No. 2011-10]
Remedies for Small Copyright Claims: Additional Comments
AGENCY: Copyright Office, Library of Congress.
ACTION: Notice of inquiry.
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SUMMARY: This is the second request for public comment pertaining to a
study undertaken by the U.S. Copyright Office at the request of
Congress on the topic of adjudicating small copyright claims. The study
will assess whether and, if so, how the current legal system hinders or
prevents copyright owners from pursuing claims that have a relatively
small economic value and will discuss, with appropriate
recommendations, potential changes in administrative, regulatory, and
statutory authority. At this time, the Office seeks additional comments
on some of the possible alternatives. The Copyright Office also
announces two public meetings following the comment period, to be held
during November 2012 in New York and Los Angeles, respectively.
DATES: Comments are due September 26, 2012.
ADDRESSES: All comments and reply comments shall be submitted
electronically. A comment page containing a comment form is posted on
the Office Web site at http://www.copyright.gov/docs/smallclaims. The
Web site interface requires commenting parties to complete a form
specifying name and organization, as applicable, and to upload comments
as an attachment via a browser button. To meet accessibility standards,
commenting parties must upload comments in a single file not to exceed
six megabytes (MB) in one of the following formats: the Adobe Portable
Document File (PDF) format that contains searchable, accessible text
(not an image); Microsoft Word; WordPerfect; Rich Text Format (RTF); or
ASCII text file format (not a scanned document). The form and face of
the comments must include both the name of the submitter and
organization. The Office will post the comments publicly on the
Office's Web site exactly as they are received, along with names and
organizations. If electronic submission of comments is not feasible,
please contact the Office at 202-707-8350 for special instructions.
Public Meetings: The public meeting in New York will be held in the
Jerome Greene Annex of Columbia Law School, 410 West 117th Street, New
York, New York 10027, on November 15, 2012 from 9:30 a.m. to 5:30 p.m.
and on November 16, 2012 from 9:30 a.m. to 3:30 p.m. The public meeting
in Los Angeles will be held in Room 1314 of the UCLA School of Law, 405
Hilgard Avenue, Los Angeles, California 90095, on November 26, 2012
from 9:30 a.m. to 5:30 p.m. and on November 27, 2012 from 9:30 a.m. to
3:30 p.m. The agendas and the process for submitting requests to
participate in or observe one of these meetings will be published on
the Copyright Office Web site no later than October 15, 2012.
FOR FURTHER INFORMATION CONTACT: Jacqueline Charlesworth, Senior
Counsel, Office of the Register, by email at [email protected] or
by telephone at 202-707-8350; or Catherine Rowland, Counsel, Office of
Policy and International Affairs, by email at [email protected] or by
telephone at 202-707-8350.
SUPPLEMENTARY INFORMATION:
I. Background
At the request of Congress, the Copyright Office is conducting a
study to assess whether and, if so, how the current legal system
hinders or prevents copyright owners from pursuing copyright
infringement claims that have a relatively small economic value
(``small copyright claims'' or ``small claims''), and to recommend
potential changes in administrative, regulatory, and statutory
authority to improve the adjudication of such claims. The Office
published a general Notice of Inquiry in the fall of 2011 and received
numerous comments regarding the current environment in which small
copyright claims are (or are not) pursued and
[[Page 51069]]
possible alternatives to address concerns about the current system. See
the original Notice of Inquiry, 76 FR 66758 (Oct. 27, 2011), and
comments received in response thereto, which are posted on the
Copyright Office Web site, at http://www.copyright.gov/docs/smallclaims/comments/. The Copyright Office also notes the roundtable
discussion on small claims sponsored by George Washington University
Law School (``GW'') on May 10, 2012. The GW discussion covered topics
ranging from constitutional considerations to the definition of a
``small claim'' to potential features of a streamlined adjudicatory
process, and included the participation of both the Copyright Office
and the Patent and Trademark Office. See http://www.uspto.gov/blog/director/entry/uspto_co_sponsors_ip_small.
At this time, the Copyright Office seeks further input concerning
how a copyright small claims system might be structured and function.
Accordingly, the Office seeks responses on the specific subjects below
(some of which were identified by the Office in its earlier Notice),
including from parties who did not previously address those subjects,
or those who wish to amplify or clarify their earlier comments or
respond to the comments of others. (The Office has studied and will
take into consideration the comments already received, so there is no
need to restate previously submitted material.) A party choosing to
respond to this Notice of Inquiry need not address every subject below,
but the Office requests that responding parties clearly identify and
separately address each subject for which a response is submitted.
Subjects of Inquiry
Assuming a system for small copyright claims is created:
1. Nature of tribunal/process. Provide a general description of the
small claims system you believe would work best. Should it be a
streamlined process within the existing Article III court structure, or
an alternative process administered by the Copyright Office, the
Copyright Royalty Judges, and/or some other type of tribunal? If an
alternative process, should it include a right of review by an Article
III court? Should the process be adjudicatory in nature, or instead
consist of, or include, arbitration or mediation, or be some
combination of these? (See below for more specific questions on review/
appeals and the potential role of arbitration and/or mediation.)
2. Voluntary versus mandatory participation. Explain whether the
small claims process would best be structured as a voluntary or
mandatory system. Should a prospective plaintiff with a claim that
meets the small claims criteria retain the option of choosing the
existing federal district court process instead? Should a defendant be
permitted to opt out of the small claims forum in favor of federal
district court? If one or both parties' participation in the small
claims process is voluntary, what incentives--such as damages
limitations, attorneys' fees awards, or other features--might be
instituted to encourage voluntary participation by plaintiffs and/or
defendants?
3. Arbitration. Explain what role, if any, arbitration might play
in the small claims process. Should matters be decided through some
sort of specialized arbitration? Would such arbitration be binding? If
so, how would the arbitrator's award be enforced and under what
circumstances, if any, could it be set aside (and how might the Federal
Arbitration Act, 9 U.S.C. 1 et seq., apply)? How would arbitrators be
trained and selected? Are there any existing arbitration models that
might be especially useful as a model for arbitrating small copyright
claims?
4. Mediation. Explain what role, if any, mediation might play in
the small claims system. Should parties be required to participate in
mediation before proceeding with a more formal process? Would it be
useful to offer a copyright-focused voluntary mediation service? How
would mediators be trained and selected?
5. Settlement. Please comment on how the small claims process might
be structured to encourage voluntary settlements in lieu of litigated
proceedings. Should a plaintiff be required to make a settlement offer
to a prospective defendant before proceeding with a claim? Should the
defendant be required to respond?
6. Location of tribunal(s). Could the small claims tribunal be
centrally located, or should there be regional venues? If centrally
located, where should it be? If in multiple locations, what should
those be?
7. Qualifications and selection of adjudicators. Who should the
adjudicators be? If the small claims system is a streamlined process
within the Article III court structure, is there a role for magistrate
judges or staff attorneys? If it is an alternative process, what
qualifications should the adjudicators have, and how should they be
selected?
8. Eligible works. Are some types of copyrighted works more
amenable to, or in need of, a small claims system than others? Should
the small claims process be limited to certain classes of works, for
example, photographs and illustrations, or should it be available for
all types of copyrighted works?
9. Permissible claims. Discuss the types of claims that could or
should be eligible for the small claims process. For example, should
the process be limited solely to claims of infringement, or should it
be possible to bring a related claim arising out of the same dispute,
such as a Lanham Act claim? What about an infringement claim that is
tied to a contractual issue, as in the case where the defendant is
alleged to have infringed by exceeding the terms of a license? Should
issues of copyright ownership be amenable to decision through the small
claims process? What about a user's claim that a takedown notice
contained a material misrepresentation in violation of the Digital
Millennium Copyright Act (``DMCA''), 17 U.S.C. 512(f)?
10. Permissible claim amount. Assuming there would be a cap on the
amount of damages that could be sought by a plaintiff or
counterclaimant in the small claims process, what should that amount
be? What is the rationale for the cap proposed? Should there be any
independent analysis of the damages claim by the tribunal? Should it be
permissible for a copyright owner to pursue multiple claims in the same
proceeding provided that, either individually or, alternatively, in the
aggregate, they do not exceed the cap? What if, during the course of
the proceeding, additional infringements are discovered such that the
plaintiff's potential damages exceed the cap? What if a defendant
asserts a counterclaim that exceeds the cap?
11. Permissible defenses and counterclaims. Discuss what
limitations, if any, there should be on the types of defenses and
counterclaims that could be decided through the small claims process.
For example, could a defense of fair use or independent creation be
adjudicated through the process? What about defenses or counterclaims
arising under the DMCA, such as an assertion that the plaintiff's claim
is subject to one of the safe harbor provisions of 17 U.S.C. 512(a)
through (d), or that a takedown notice violated 17 U.S.C. 512(f)? To
the extent such defenses or counterclaims were not subject to
adjudication through the small claims process and would require removal
of the action to federal district court, would this provide defendants
with a means to ``opt out'' of the small claims system in a substantial
number of cases?
12. Registration. Should registration of the allegedly infringed
work be required in order to initiate a claim through the small claims
process or,
[[Page 51070]]
alternatively, should proof of filing of an application for
registration suffice? Should the process permit claims to be brought
for unregistered works? Should the registration status of a work affect
the availability of statutory damages or recovery of attorneys' fees,
assuming such remedies are available through the small claims process?
13. Filing fee. Discuss the merits of requiring a filing fee to
pursue a claim through the small claims process and the amount, if any,
that would be appropriate. Should the filing fee vary with the size of
the claim? Are there existing standards that might be informative?
14. Initiation of proceeding. Explain what would be required to
initiate a proceeding. Should some sort of attestation and/or a prima
facie showing of infringement be required of a copyright owner with the
initial filing? Should a copyright owner need to establish a prima
facie case of infringement before the defendant is required to appear
and, if so, how would it be determined that this requirement had been
met? By what means would the defendant be served or otherwise notified
of the action? Should a defendant that is sued in federal district
court for copyright infringement be permitted to transfer the matter to
the small claims tribunal if the plaintiff's alleged damages are within
the small claims damages cap? Should a party who has been put on notice
of an alleged infringement be able to initiate an action by seeking a
declaratory judgment of no infringement?
15. Representation. Describe the role of attorneys or other
representatives, if any, in a small claims copyright system. Should
individual copyright owners be permitted to be represented by an
attorney and/or a non-attorney advocate, in addition to appearing pro
se? Should corporations and other business entities be permitted to
appear through employees instead of attorneys?
16. Conduct of proceedings. Describe how the small claims
proceeding would work. Could the process be conducted by paper
submission, without the requirement of personal appearances? Should the
tribunal have the option to hold teleconferences or videoconferences in
lieu of personal appearances? Should non-party witnesses be permitted
to participate and, if so, by what means? Should expert witnesses be
permitted? Should the tribunal have any sort of subpoena power? Should
there be an established time frame for adjudication of the matter?
17. Discovery, motion practice and evidence. Explain what types of
discovery, if any, should be permitted in the small claims system. For
example, should depositions (either oral or by written question),
requests for production of documents, interrogatories and/or requests
for admission be permitted and, if so, to what extent? Should motion
practice be allowed and, if so, to what extent? What types of testimony
and/or evidence should be accepted (e.g., written, oral, documentary,
etc.), and what standards of admissibility, if any, should apply?
18. Damages. Describe the damages that would be available through
the small claims system. Should damages be limited to actual damages,
or could statutory damages also be awarded? If statutory damages were
available, should they adhere to the existing statutory damages
framework of 17 U.S.C. 504(c) (subject to any cap applicable in the
small claims system), or could an alternative approach be adopted, such
as a fixed amount to be awarded in the case of a finding of
infringement?
19. Equitable relief. Describe the equitable relief, if any, that
should be available through the small claims system. Should the small
claims tribunal be able to grant declaratory relief, issue an
injunction to halt the infringing use of a work, impose license terms
(such as for the continued distribution of a derivative work) and/or
award other forms of equitable relief?
20. Attorneys' fees and costs. Explain how attorneys' fees and
costs might be handled within the small claims system. Should a
prevailing plaintiff and/or defendant be entitled to recover its
attorneys' fees and costs? If so, should such fees and costs be awarded
according to the standards that have evolved under 17 U.S.C. 505,
should they be awarded as a matter of course, or should other criteria
apply? Should there be a limit on the amount of attorneys' fees that
could be sought and/or awarded in the small claims system?
21. Record of proceedings. Describe the record of proceedings that
should be kept by the tribunal. Should decisions of the tribunal be
rendered in writing? Should they include factual findings, legal
explanation and/or other analysis? Should the records be publicly
available?
22. Effect of adjudication. Explain the nature and effect of a
small claims adjudication. Should a decision of the small claims
tribunal constitute a final and enforceable judgment (subject to any
further review or appeal)? Should it be published and/or carry any
precedential weight? Should it have any res judicata or collateral
estoppel effect, or should it be limited to the specific activities at
issue and parties in question?
23. Enforceability of judgment. With respect to monetary judgments
and any equitable or other relief awarded by the small claims tribunal,
through what means would such remedies be enforceable? Should there be
any special procedures for enforcement? Are there existing judicial or
nonjudicial resources that might be useful in this regard?
24. Review/appeals. Should there be a right of review or appeal
and, if so, under what circumstances, and by or to what body or court?
What would be the appropriate standard of review (e.g., de novo,
clearly erroneous, abuse of discretion, etc.)? Aside from any
applicable filing fee, should there be any conditions for seeking
review (such as posting of a bond)? Should a prevailing party in a
review or appeal process be entitled to recover its attorneys' fees or
costs?
25. Group claims. Should multiple copyright owners or a trade
association or other entity acting on behalf of copyright owners be
permitted to pursue multiple infringement claims against a single
defendant, or multiple defendants, in a single proceeding? Should there
be specialized rules of standing or procedures to permit this within
the small claims system?
26. Frivolous claims. How might the small claims system deter
frivolous and unwarranted filings? What measures--such as the awarding
of attorneys' fees or other financial sanctions, or the barring of
copyright owners that have repeatedly pursued frivolous claims from
further use of the small claims process--might be taken to discourage
the assertion of bad faith or harassing infringement claims, defenses
and counterclaims?
27. Constitutional issues. Comment on whether a small claims system
might implicate any one or more of the following constitutional
concerns--or any other constitutional issue--and, if so, how the
particular concern might be addressed:
a. Separation of powers questions arising from the creation of
specialized tribunals outside of the Article III framework, including
how a right of review by an Article III court might impact the
analysis;
b. The Seventh Amendment right to have a copyright infringement
case tried to a jury, as confirmed in Feltner v. Columbia Pictures
Television, Inc., 523 U.S. 340 (1998);
c. Constitutional requirements for a court's assertion of personal
jurisdiction, in particular when
[[Page 51071]]
adjudicating claims of a defendant located in another state; and/or
d. Due process considerations arising from abbreviated procedures
that impose limitations on briefing, discovery, testimony, evidence,
appellate review, etc.
28. State court alternative. As an alternative to creating a small
claims system at a federal level, should the statutory mandate of
exclusive federal jurisdiction for copyright claims be altered to allow
small copyright claims to be pursued through existing state court
systems, including traditional state small claims courts? What benefits
or problems might flow from such a change?
29. Empirical data. Commenting parties are invited to cite and
submit further empirical data (in addition to the anecdotal and survey
information already cited or submitted to the Copyright Office in
connection with this proceeding) bearing upon:
a. Whether copyright owners are or are not pursuing small
infringement claims through the existing federal court process, and the
factors that influence copyright owners' decisions in that regard,
including the value of claims pursued or forgone;
b. The overall cost to a plaintiff and/or a defendant to litigate a
copyright infringement action to conclusion in federal court, including
costs and attorneys' fees, discovery expenditures, expert witness fees
and other expenses (with reference to the stage of proceedings at which
the matter was concluded);
c. The frequency with which courts award costs and/or attorneys'
fees to prevailing parties pursuant to 17 U.S.C. 505, and the amount of
such awards in relation to the underlying claim or recovery; and/or
d. The frequency with which litigants decline to accept an outcome
in state small claims court and seek de novo review (with or without a
jury trial) or file an appeal in a different court.
30. Funding considerations. Aside from filing fees, by what means
might a small claims system be partially or wholly self-supporting?
Should winning and/or losing parties be required to defray the
administrative costs of the tribunal's consideration of their matter,
in all or in part? If so, by what means? If the system consists of or
includes arbitration or mediation, should parties bear the cost of
these alternatives?
31. Evaluation of small claims system. Should the small claims
system be evaluated for efficacy and, if so, how? Should it be subject
to periodic review or adjustment? Should it be launched initially as a
pilot program or on a limited basis?
32. Other issues. Are there any additional pertinent issues not
identified above that the Copyright Office should consider in
conducting its study?
Dated: August 20, 2012.
Maria A. Pallante,
Register of Copyrights.
[FR Doc. 2012-20802 Filed 8-22-12; 8:45 am]
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