“The CASE Act established that the CCB would be an entirely voluntary process for both sides of a small copyright claims dispute. This has drawn the ire of law professors who feel that the opt-out provisions only make it more difficult for claimants to hold infringers accountable.”
Last week, the U.S. Copyright Office issued a pair of final rules to establish various procedures governing proceedings at the Copyright Claims Board (CCB), a small copyright claims tribunal within the Copyright Office. The CCB was implemented as part of the Copyright Alternative in Small-Claims Enforcement (CASE) Act enacted under a larger omnibus bill on COVID-19 issues in December 2020. The rules establish procedures for designating service agents for receiving notices of initiated proceedings at the CCB, as well as opt-out procedures for libraries, archives and any claimants who are notified of class action litigation filed in U.S. district court covering their own copyright claim.
Partial Final Rule Allows Single Service Agent to be Designated for 50 Trade Names
On Tuesday, March 8, the Copyright Office issued what it called a partial final rule for designating an agent to receive service on behalf of corporations, partnerships and unincorporated associations. Under an earlier notice of proposed rulemaking (NPRM), the agency had drafted provisions enabling service agents to be designated for up to five different trade names, with such designations being indexed in a designated service agent directory (DSAD) similar to the agent directory under the Digital Millennium Copyright Act (DMCA). Unlike the DMCA’s director, where agent designations must be renewed periodically, the DSAD under the CASE Act would list designated agents indefinitely, although entities could change their designated agent on the DSAD.
The Copyright Office incorporated several changes to the NPRM following public comments, several of which are meant to ease the complexity upon respondents in handling the initiation of CCB proceedings. One major change is allowing service agents to be designated for up to 50 trade names of related entities. Comments submitted to the Office requested this change in part because the range of activities covered by CCB actions is much broader than DMCA-covered activities, leading to an expectation that CCB service agents will need to be designated for a larger number of entities.
Further, the Office changed the requirement that separate designated agent submissions must be made by related entities designating the same service agent, allowing for a single submission to the agency’s DSAD. In doing so, the agency also changed the language of the final rule to provide that a single service agent can be designated for multiple “affiliated” entities, as the previous term “related” was deemed too ambiguous. While there will be constraints in how these changes are to be incorporated by the electronic DSAD system being built by the Office, which is already at an advanced stage of development, service agent designation submissions will be able to list up to 50 trade names of affiliated entities.
In order to maintain the accuracy of the DSAD, the Copyright Office is requiring that service agent designations be changed “promptly” if a new agent must be designated for an entity. While the Office recognized that instantaneous changes are not likely to occur, the agency warned that service effected on agents designated as service agents in the DSAD as of the time of service is likely to be deemed as proper service. The Office saw no reason to require renewals of service agent designations after regular periods, as is the case for DMCA service agents, nor did it adjust the NPRM’s proposed $6 fee for submitting service agent designations or amending previous designations. Finally, the Office noted that further rules on initiating CCB proceedings and effecting service are yet to be forthcoming.
Preemptive Opt-Outs Available for Libraries and Archives Qualifying Under Section 108
Then on Wednesday, March 9, the Copyright Office issued another final rule governing the process for library and archive respondents, as well as claimants covered by class action suits, to voluntarily opt-out of CCB proceedings. The CASE Act established that the CCB would be an entirely voluntary process for both sides of a small copyright claims dispute. This has drawn the ire of law professors who feel that the opt-out provisions only make it more difficult for claimants to hold infringers accountable. Under the CASE Act, the Register of Copyrights is directed to establish regulations allowing libraries and archives to preemptively opt-out of CCB proceedings initiated against them if those entities qualify as libraries or archives under 17 U.S.C. § 108, which extinguishes copyright liability against those entities for certain unauthorized reproductions.
To qualify for the preemptive opt-out, qualifying entities must submit a self-certification to the Copyright Office that it meets the requirements of Section 108. The agency did not choose to adopt an adversarial process for third parties to challenge such self-certifications, although claimants can assert that a purported library or archive does not meet the Section 108 requirements in individual proceedings. Libraries and archives that successfully meet the Section 108 requirements will be included on a publicly available opt-out list, but if a federal court in separate proceedings finds that the entity does not qualify for the Section 108 limitation on exclusive rights, such a ruling must be reported to the Office. Agency regulations also provide that the listing of an entity on the preemption list does not constitute a legal conclusion by the Copyright Office that the entity qualifies for the Section 108 limitations.
Many public comments were filed regarding the lack of provisions in the Copyright Office’s initial NPRM that would have extended preemptive opt-out procedures to employees of libraries and archives. The Office had noted at the time of the NPRM that, under agency law, actors were still liable for actions taken under apparent authority or within the scope of their employment unless an applicable statute provides otherwise, and no such provision extending preemptive opt-outs to library and archive employees existed in the CASE Act.
While the Copyright Office noted that protections for employee acts are only mentioned a few times throughout Section 108, the agency’s final rule extends the preemptive opt-out to actions taken by library and archive employees within the scope of their employment. In those cases, employees of entities qualifying for the preemptive opt-out would also opt-out of CCB proceedings without the filing of a separate proceeding-specific opt-out request. The Office found that such a provision is not contrary to agency law and that such provisions would prevent CCB claimants from frustrating CASE Act goals that the CCB operate as an efficient and voluntary forum. Without such a provision, the Office noted that entities preemptively opting out may be compelled to appear in CCB proceedings maintained against their employees, and costs for copyright owners could be increased if their copyright claims are split in separate proceedings before both the CCB and a U.S. district court.
Class Action Notice Triggers 14-Day Period to Either Opt-Out or Maintain CCB Action
Finally, last Wednesday’s rule establishes procedures governing opt-outs by CCB claimants who receive notice that the transaction underlying their small copyright claim has become the subject of class action litigation filed in U.S. district court. The Copyright Office received no public comments on these provisions, so the final rule adopted did not differ from the NPRM version issued last September. CCB claimants receiving notice of membership in a class action suit will have 14 days to either opt out of the CCB proceedings and maintain their membership in the class action, or to opt out of the class action suit to maintain the CCB claim. If a timely election is not made by a CCB claimant, the final rule gives the Office the ability to dismiss proceedings without prejudice or vacate CCB determinations if a class action suit has reached a determination on the merits.
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