U.S. Copyright Office Offers Public Comment Period on the CASE Act

The public has until April 26, 2021 to comment on the United States Copyright Office’s Proposed Rulemaking implementing the Copyright Alternative in Small-Claims Enforcement (CASE) Act. The Act was passed as part of the Consolidated Appropriations Act of 2021 on December 27, 2020 and requires the Office to create a Copyright Claims Board. The Board will be an administrative tribunal before which parties may voluntarily use simplified proceedings to resolve claims related to copyright infringement and abuse of the notice and takedown provisions of the Digital Millennium Copyright Act (DMCA), provided that damages do not exceed US $30,000 in the aggregate. The Office published a first Notice of Proposed Rulemaking on March 25, 2021, which will likely be the first of several as the Office promulgates regulations governing Board proceedings and develops a practice guide. The Office has identified several topics of particular interest for this first round of comments, which we summarize below. We encourage affected stakeholders to review the Notice and to be aware of this ongoing process, which we are monitoring carefully.

The specific topics on which the Office is specifically requesting comment, which are explained in greater detail in the Notice of Proposed Rulemaking, include the following:

Fees: Official fees for Board services, including filing claims, requesting review by the Register of Copyrights and registering service agents

Limitations on the Number Claims: Limitations on the number of claims that may be brought by a single party and which proceedings should count towards that limit

Misconduct: Means of deterring and reporting bad faith or fraudulent conduct before the Board, such as frivolous claims filings

Review of Board Decisions: The procedure and substance for requests for review of Board decisions by the Register of Copyrights

Instituting Board Proceedings and Serving Papers

• Claimants’ Initial Notice: The form and content of the initial notice served by claimants on respondents, informing the respondents that a claim that has been reviewed and accepted by the Board and of their right to opt out of the mechanism or otherwise lose the right to have the matter decided in a federal court
• The Board’s Second Notice: The form and content of a second notice served by the Board on respondents, informing them of the pending proceeding, including similar information to that in the initial notice and otherwise reassuring respondents that it is in fact an official proceeding of the federal government
• Designated Agents for Service: How entities and their affiliates may designate agents for service of Board notices and the facilities the Office should maintain for doing so
• Service of Other Papers: The form and facilities for serving papers in Board proceedings once they have been instituted
• Domestic Agents for Non-United States Parties: Whether non-United States parties should be required to maintain a domestic agent for service of papers in Board proceedings

Opt-Out Provisions

• Opt-Out Notices: The form and content of respondents’ notices opting out of Board proceedings
• Opt-Out Registers: Whether the Office should maintain a public registry of parties that have opted out or would opt out of a Board proceeding, including libraries and archives statutorily entitled to a blanket opt-out
• Library and Archive Opt-Outs: How libraries and archives, either as separate entities or within larger institutions, should qualify and remain qualified for statutory blanket opt-outs from Board proceedings
• Class-Action Dismissal: How the Office should accommodate dismissal of claims superseded by class actions or opting out of class actions to pursue pending Board claims

Practice and Procedures

• Discovery: The form, scope and extent of discovery that should be permitted in claims before the Board
• Protective Orders: The form and substance of protective orders and other procedures for the handling of confidential information
• Default Judgment and Damages: The burden of proof and procedure for awarding damages in instances of default
• Failure to Prosecute and Attorneys’ Fees: Evaluation of claimants’ response to notices of default for failure to prosecute and the procedure for awarding respondents’ costs and attorneys’ fees
• Smaller Claims: Procedures for streamlining “smaller claims” involving claims of no more than US $5,000 in damages
• Dispute Resolution: The extent to which procedure should be simplified by regulation or discretion should be reserved to Board Officers in order to facilitate dispute resolution
• Evidence: Rules of evidence that should be applicable to documents and testimony in Board proceedings

Access to Records: The facilities for maintaining, publishing and certifying Board records and decisions

The Office intends to additionally and subsequently solicit comments on expedited copyright registration required by the statute to better accommodate pre-registration claims filing. The Office does not currently intend to exercise its statutory authority to limit claims based on classes of works.

Please feel free to reach out with any questions or comments about the CASE Act. If any of the above topics are of interest and you would like more information, or if you are interested in submitting public comments prior to the April 26 deadline, we would be delighted to hear from you. Otherwise, we look forward to sharing additional updates from the U.S. Copyright Office, as well as to keeping you apprised of other intellectual property developments.

For further information regarding the content of this article, or to discuss this or other intellectual property matters, please contact any of the following Winterfeldt IP Group team members:

Brian Winterfeldt, brian@winterfeldt.law, +1 202 903 4422

David Rome, david@winterfeldt.law, +1 202 759 5833

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