[Federal Register Volume 88, Number 143 (Thursday, July 27, 2023)]
[Rules and Regulations]
[Pages 48380-48381]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-15940]


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LIBRARY OF CONGRESS

Copyright Office

37 CFR Parts 222 and 235

[Docket No. 2023-4]


Copyright Claims Board: Agreement-Based Counterclaims

AGENCY: U.S. Copyright Office, Library of Congress.

ACTION: Final rule.

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SUMMARY: Pursuant to the Copyright Alternative in Small-Claims 
Enforcement Act, the U.S. Copyright Office is adopting as final a May 
3, 2023, proposed rule governing the filing of agreement-based 
counterclaims and related discovery requirements in Copyright Claims 
Board proceedings.

DATES: Effective August 28, 2023.

FOR FURTHER INFORMATION CONTACT: Rhea Efthimiadis, Assistant to the 
General Counsel, by email at [email protected] or telephone at (202) 
707-8350.

SUPPLEMENTARY INFORMATION: The Copyright Alternative in Small-Claims 
Enforcement Act of 2020 (the ``CASE Act'') \1\ directed the Copyright 
Office to establish the Copyright Claims Board (the ``CCB''), an 
alternative and voluntary forum for parties seeking to resolve certain 
copyright-related disputes that have a total monetary value of $30,000 
or less. After receiving and considering comments from the public, the 
Office published final rules addressing various aspects of CCB 
proceedings.\2\ On June 16, 2022, the CCB began receiving claims.
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    \1\ Public Law 116-260, sec. 212, 134 Stat. 1182, 2176 (2020).
    \2\ 87 FR 20707 (Apr. 8, 2022) (law student representation final 
rule); 87 FR 12861 (Mar. 8, 2022) (initial proceedings partial final 
rule); 87 FR 16989 (Mar. 25, 2022) (initial proceedings final rule); 
87 FR 24056 (Apr. 22, 2022) (initial proceedings correction); 87 FR 
30060 (May 17, 2022) (active proceedings final rule); 87 FR 36060 
(June 15, 2022) (active proceedings correction). The Office sought 
public comments prior to the adoption of these final rules. See, 
e.g., 86 FR 74394 (Dec. 30, 2021); 86 FR 53897 (Sept. 29, 2021); 86 
FR 69890 (Dec. 8, 2021).
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    On May 3, 2023, the Office published a notice of proposed 
rulemaking (``NPRM'') seeking public comment on a proposed rule 
addressing the filing of agreement-based counterclaims and related 
discovery requirements in the CCB.\3\ The proposed regulations set out 
the requirements for the content of such counterclaims and any 
responses to them.\4\ The Office also proposed standard interrogatories 
and standard requests for the production of documents for use in 
connection with such counterclaims.\5\
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    \3\ 88 FR 27845 (May 3, 2023).
    \4\ 88 FR 27845, 27846-47.
    \5\ 88 FR 27845, 27846-48.
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    The Office received one comment that addressed the proposed 
rulemaking, but did not recommend any changes to the proposed 
regulatory text.\6\ The Copyright Alliance's comment stated that ``[a]t 
this time, we have no substantive objections to the Office's proposal 
to add regulations specifically governing agreement-based 
counterclaims,'' \7\ but requested ``the opportunity to comment further 
on the rules established in this notice of proposed rulemaking as well 
as the other regulations governing the CCB once there is more 
qualitative and quantitative data to consider.'' \8\ The Copyright 
Alliance ``reiterate[d] the importance of ensuring that the rules and 
regulations do not become so cumbersome and complex such that they make 
the CCB inaccessible to pro se litigants, who comprise a significant 
portion of the system's users, and whom the statute was designed to 
accommodate.'' \9\
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    \6\ See Copyright Alliance Comments. The Office received a 
second comment, which addressed songwriter-related royalty claims 
that are outside of the scope of this rulemaking. See Timothy 
Gilmore Comments at 1.
    \7\ Copyright Alliance Comments at 1.
    \8\ Copyright Alliance Comments at 1-2.
    \9\ Copyright Alliance Comments at 2.
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    The Office appreciates these comments and will take them under 
advisement. Because the Office did not receive any comments 
recommending changes to the proposed rule, it adopts the rule as final.

List of Subjects in 37 CFR Parts 222, 225

    Claims, Copyright.

Final Regulations

    For the reasons stated in the preamble, the U.S. Copyright Office 
amends 37 CFR parts 222 and 225 as follows:

PART 222--PROCEEDINGS

0
1. The authority citation for part 222 continues to read as follows:

    Authority: 17 U.S.C. 702, 1510.


0
2. Amend Sec.  222.9 as follows:
0
a. Redesignate paragraphs (c)(6) through (8) as paragraphs (c)(7) 
through (9), respectively.
0
b. Add paragraph (c)(6) as follows:


Sec.  222.9  Counterclaim.

* * * * *
    (c) * * *
    (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;
* * * * *

0
3. Amend Sec.  222.10 as follows:
0
a. Redesignate paragraph (b)(6) as paragraph (b)(7).
0
b. Add paragraph (b)(6) as follows:


Sec.  222.10  Response to counterclaim.

* * * * *
    (b) * * *
    (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
* * * * *

PART 225--DISCOVERY

0
4. The authority citation for part 225 continues to read as follows:

    Authority: 17 U.S.C. 702, 1510.


0
5. Amend Sec.  225.2 as follows:
0
a. Redesignate paragraph (f) as paragraph (h).
0
b. Add paragraphs (f) and (g) as follows:


Sec.  225.2  Standard interrogatories.

* * * * *
    (f) For a counterclaimant asserting a counterclaim arising under an 
agreement. In addition to the information in paragraph (a) of this 
section, the standard interrogatories for

[[Page 48381]]

a counterclaimant asserting a counterclaim arising under an agreement 
shall consist of information pertaining to:
    (1) Identification and a description of the specific terms or 
provisions of the agreement the counterclaim respondent is alleged to 
have violated;
    (2) The basis for the counterclaimant's belief that the agreement 
was valid;
    (3) The basis for the counterclaimant's belief that the agreement 
was violated;
    (4) The basis for the counterclaimant's belief that the agreement 
could affect the relief that might be awarded to the claimant;
    (5) A description of the counterclaimant's performance under the 
agreement, as relevant to the counterclaim;
    (6) Identification and a description of any inadequacies in 
performance under the agreement by the counterclaim respondent; and
    (7) If the agreement at issue in the counterclaim is oral, a 
description of the terms and provisions of the agreement.
    (g) For a counterclaim respondent responding to a counterclaim 
arising under an agreement. In addition to the information in paragraph 
(a) of this section, the standard interrogatories for a counterclaim 
respondent responding to a counterclaim arising under an agreement 
shall consist of information pertaining to:
    (1) All defenses asserted to the counterclaim arising under an 
agreement and the basis for those assertions. Defenses listed in timely 
answers and timely updated answers to the standard interrogatories 
shall be considered by the Board and will not require an amendment of 
the counterclaim response;
    (2) The basis for any other reasons the counterclaim respondent 
believes that it did not violate the agreement or that the agreement 
was not valid;
    (3) The basis for any belief by the counterclaim respondent that 
the agreement does not affect the relief that might be awarded to the 
claimant;
    (4) A description of the counterclaim respondent's performance 
under the agreement, as relevant to the counterclaim; and
    (5) Identification and a description of any inadequacies in 
performance under the agreement by the counterclaimant.
* * * * *

0
6. Amend Sec.  225.3 as follows:
0
a. Redesignate paragraphs (f) and (g) as paragraph (h) and (i), 
respectively.
0
b. Add paragraphs (f) and (g), as follows:


Sec.  225.3  Standard requests for the production of documents.

* * * * *
    (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.
* * * * *

    Dated: July 19, 2023.
Shira Perlmutter,
Register of Copyrights and Director of the U.S. Copyright Office.

    Approved by:
Carla D. Hayden,
Librarian of Congress.
[FR Doc. 2023-15940 Filed 7-26-23; 8:45 am]
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