Last week, we published a blog post titled 15 Things You Need to Know About the Copyright Office’s New Small Claims Court that received a huge response. We heard from many readers interested in learning about the new small claims tribunal, called the Copyright Claims Board (CCB), who found this blog very helpful and asked for more information. So, we decided that we’d do additional posts about various aspects of the CCB process while trying not to be repetitive. So, if you don’t see something included in the top ten list below, or in future blogs, it may have been covered in a previous blog. In this post, we’ll cover the filing of claims.
Below are the top ten things you need to know about filing a claim with the CCB.
1. There are two filing fees that are different amounts and are paid at different times.
The total fee to file a case with the CCB is $100, which is significantly less than the fee to file a case in federal court. The $100 filing fee is split into two separate payments. The first payment—which is for $40—is paid at the time the case is filed. The second payment—which is for $60—is paid only if the person who is being sued (referred to as the “respondent”) has not opted out after the 60-day opt-out period ends. If the respondent has not opted out, the CCB will issue an order asking the person who brings the claim before the CCB (referred to as the “claimant”) to pay the second filing fee of $60. The claimant must pay the second filing fee within 14 days of the CCB order.
2. Three types of claims can be brought before the CCB.
The CCB can hear three types of claims by copyright owners and users: (1) a copyright owner can bring an infringement claim; (2) a user of a copyrighted work can bring a claim for declarations of non-infringement when a copyright owner has alleged that they are infringing and either the copyright owner has threatened to take action to enforce their rights (such as in a cease-and-desist letter) or has sent a takedown notice pursuant to section 512 of the Digital Millennium Copyright Act’s (DMCA); and (3) a copyright owner or user of a copyrighted work who believes a DMCA takedown notice or counternotice that was sent to them contains a misrepresentation can file a section 512(f) misrepresentation claim.
Claims that do not fall within the three categories listed cannot be heard by the CCB. So, for example, ownership disputes, termination claims, and trademark claims cannot be heard by the CCB.
The CCB can also hear counterclaims that might be raised in response to claims brought by the claimant, as long as the counterclaims (1) fall within the three categories above and arise out of the same transaction or occurrence that is the subject of the claim, or (2) arise under an agreement pertaining to the same transaction or occurrence that is the subject of the claim of infringement, if the agreement could affect the relief awarded.
3. Certain groups cannot be sued before the CCB.
The CCB cannot hear claims against the following parties (with some exceptions):
- a federal or state governmental entity;
- a foreign resident. (But note that the CCB can hear a counterclaim against a foreign resident when that foreign resident has first brought a CCB claim themselves);
- an online service provider (OSP) that is referring, linking, or storing alleged infringing material on behalf of a user (as those terms are defined in the DMCA, found in 17 USC 512(b)(c) and (d)) unless the OSP has been notified of the infringement through a properly submitted takedown notice under the DMCA but fails to expeditiously remove or disable access to the material identified in the notice; and
- a library or archive that has preemptively opted out of all CCB proceedings (but note that if a claimant believes that a library or archive was included on the opt out list improperly (i.e., the library or archives does not truly qualify for the exceptions under section 108 of the Copyright Act), the claimant can challenge the fact that the library or archive is on that list.
4. Users of copyrighted works can also bring claims before the CCB.
People tend to think of the CCB solely as a forum for copyright owners to bring copyright infringement claims. While most of the claims brought before the CCB will likely be infringement claims brought by copyright owners, the CCB is not for the exclusive use of copyright owners. Users of copyrighted works may also bring claims. As noted above, there are two types of claims users can bring. When a copyright owner has alleged that a user is infringing their work and either the copyright owner has threatened to take action to enforce their rights or has sent a DMCA takedown notice, the user can file a claim for a declaration of non-infringement requesting that the CCB issue a declaration stating that the activity they are engaged in does not infringe the copyright owner’s exclusive rights. The other type of claim that a user can bring occurs when they believe there is is a misrepresentation in a DMCA takedown notice that they’ve received. Paragraph (f) of section 512 of the Copyright Act provides that where a party who sends a DMCA notice or counternotice knowingly misrepresents that material or activity is infringing, or that material or activity was removed or disabled by mistake or misidentification, the person making the misrepresentation may be liable to the other party. Thus, when a user believes there is a misrepresentation in a DMCA notice, they can file claims under section 512(f) of the DMCA for misrepresentations contained in that notice.
5. There are limitations on the number of claims that can be brought in a year.
A claimant can bring up to 30 cases within a 12-month period. Similarly, law firms and attorneys are limited to filing no more than 80 and 40 cases, respectively, in a 12-month period.
6. Multiple claims may be filed together.
If a claimant has more than one claim, those claims can be filed together in the same proceeding as long as the claims arise out of the same allegedly infringing activity and the total damages recovered by the claimant for all the claims would not exceed the amount of damages allowable before the CCB.
7. Copyright owners can file claims with the CCB even when they do not know the identity of the infringer.
Online infringers often use pseudonyms or take other steps to conceal their identities in an effort to make it difficult for copyright owners to pursue them for their infringing activities.
In these instances, a claimant may not know the real name of an alleged infringer. If the infringement occurs online, section 512(h) of the DMCA provides that a copyright owner can learn the identity of an alleged infringer through a federal court issued subpoena sent to a service provider. The process works as follows:
The claimant must submit a subpoena request to a clerk in a U.S. district court. The subpoena request must include:
- a copy of a DMCA takedown notice to the service provider requesting that the provider remove or disable access to the infringing content;
- a proposed subpoena; and
- a sworn declaration that the identity of the alleged infringer will only be used for the purpose of enforcing the claimant’s copyright.
The clerk will review the subpoena request, and if the notice and draft subpoena are in proper form and the declaration is executed correctly, the clerk will issue the subpoena and send it to the claimant.
Once the claimant receives the issued subpoena, the claimant then sends the subpoena to the service provider. The claimant should also send the DMCA takedown notice to the service provider at this time if they haven’t already done so. After it receives the subpoena, the service provider is then required by law to disclose the identity of the alleged infringer to the claimant. The CCB will be providing more information about the subpoena process on the CCB website in the future.
8. Filing a CCB claim should prevent a service provider from re-posting infringing material.
Under section 512(g) of the DMCA, if an alleged infringer responds to a takedown notice sent by the copyright owner by filing a counternotice with the service provider, the DMCA calls for the service provider to re-post the alleged infringing material within 10-14 business days—unless the copyright owner notifies the service provider that they have “filed an action seeking a court order to restrain the [user] from engaging in infringing activity” before the 14-day period expires. Filing a claim with the CCB qualifies as “filing an action” under section 512(g) and has the same effect as filing in federal court for purposes of the 10-day window for filing an action after a counternotification is sent. As a result, copyright owners now have two ways to prevent infringing material that has been taken down by a service provider from being re-posted: they can file in federal court or with the CCB.
9. Before filing an infringement claim with the CCB the allegedly infringed work must be registered with the Copyright Office or a registration must be pending with the Office.
To bring an infringement claim (or counterclaim) before the CCB, the copyrighted work that is the focus of that claim must be registered with the Copyright Office or the registration application must be pending with the Copyright Office. In some cases, the copyright owner of the work will have already registered the work well before bringing the infringement claim or counterclaim. But for copyright owners who have not yet submitted a registration application for the work, they can submit a registration application to the Copyright Office immediately before filing their claim with the CCB.
10. A Copyright Claims Attorney must approve the claim.
After the claimant files their claim with the CCB, a Copyright Claims Attorney examines the claim to make sure it meets all of the requirements of the CCB. The Copyright Claims Attorneys will review the claim to ensure that it meets the requirements of the law and the requirements established by the Copyright Office’s regulations. The goal of the compliance review is to make sure that the claimant has stated a claim that is allowed to be heard by the CCB, and that the claim as stated provides enough information so that the respondent understands the claim against them and can make an informed decision as to whether to participate in the proceeding or opt out. If the claim complies with all of the necessary requirements, the claimant will be notified and instructed to serve notice on the respondent.
If a claim does not meet the necessary requirements, the claimant has 30 days to amend the claim so that it does comply. If the claimant fails to amend a non-compliant claim within the 30-day period, the claim will be dismissed without prejudice. If the claimant amends the claim within the allotted time but the claim still does not comply, the claimant is given another 30 days to further amend it. If the twice-amended claim still does not comply, the claim will be rejected, and the proceeding will be dismissed without prejudice.
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