“If you lose at the CCB, you can’t get a second bite at the apple and file your claim in federal court. If you lose, you lose forever.”
The Copyright Claims Board (CCB), established by the CASE Act passed in December 2020, is now up and running and taking cases. The CCB is an alternative to federal court. Just like patents, copyrights are bound by federal law. Previously, a copyright owner would have to take their case to federal district court to in order to seek damages or relief. But the CCB allows a claimant to bring a copyright suit before a tribunal at the Copyright Office instead.
Impact on Everyday Artists and Creators
Litigating a copyright case in federal court is an expensive, tedious process. Discovery and motion practice engenders high legal fees, making it very difficult for copyright owners (like your local potter, painter or poet) to bring an infringement case in federal court. Copyright owners – unlike trademark or patent owners – oftentimes are not businesses or companies but everyday artists who are creating just for their love of the craft. And that love cannot pay for attorneys. Take it from me – we don’t accept love. So, the simplified procedures at the CCB make it much more friendly for pro se petitioners to seek relief.
Claims Before the CCB
The CCB accepts three types of claims:
- Copyright infringement. Infringement occurs when a copyrighted work is reproduced, distributed, publicly performed or displayed, or made into a derivative work without the permission of the copyright owner, with no qualifying exception like fair use.
- Claims seeking a declaration of noninfringement.This is relief not for the owner of the copyright, but the party being accused or potentially accused of infringement. Say for example, a party gets a cease-and-desist letter threatening a copyright lawsuit, but that party doesn’t believe they’ve done anything wrong. They can ask the CCB for a declaration that is a determination that the accused party has no engaged in wrongdoing.
- Claims regarding misrepresentations when filing a “takedown” notice or a counter-notice under the Digital Millennium Copyright Act (DMCA). The DMCA allows for a “notice and takedown” procedure for removing infringing content from the internet in which a copyright owner sends a “takedown” notice to an online service provider. For example, a copyright owner can ask Comcast (an internet service provider) to take down a url that actually belongs to them. So, this third type of relief occurs when the alleged infringer feels that the DMCA claim included misrepresentations and can supposedly invalidate the takedown request.
Monetary Caps at CCB
At the CCB, all monetary damages are capped no matter the amount of actual damages the copyright owner suffered. In the CCB, you can seek either actual damages or statutory damages, but all of monetary damages are capped at $30,000 in each proceeding regardless. For example, you bring a case for infringement, you can be seeking both monetary damages for infringement at the same time you’re also attorney’s fees. All that is part of a single case that’s capped at $30,000.
If you’re seeking statutory damages, the cap for statutory damages is capped at $15,000 per work. So that’s $30,000 cap per case, and a $15,000 cap per work if you’re seeking statutory damages. If you’re seeking actual damages, looks like you can seek up to the $30,000 cap for a proceeding.
Damages for Registered versus Unregistered Works
The $15,000 statutory damages cap and the $30,000 total claim cap are for registered works. For unregistered works, the cap is much lower – it’s $7,500 per claim and $15,000 per proceeding.
Just as a reminder, copyright protection extends to creative works whether they are registered at the copyright office or not. Unregistered creative works are protected by copyright under common law. So, you can still presumably assert unregistered works. But, this is one of the benefits of registering – you get higher statutory damages at the CCB.
Contrast this with seeking statutory damages in federal court. Statutory damages in front of the federal court only extends to registered copyrights. If you have an unregistered work and you’re suing in federal court, you must seek actual damages, meaning you have to gather evidence and go through discovery, which greatly enhance the cost of bringing a copyright suit. On top of this, you still have to register your work in order to bring that suit for actual damages in federal court. That’s a key difference between federal court and the CCB – the CCB takes cases for unregistered works at the time you bring the case. However, the CCB does require that you have at least submitted an application at the Copyright Office at the time you bring your claim.
Reasons to Register Your Copyright
While you can seek statutory damages at the CCB for both registered and unregistered copyrights, your registered copyrights have a higher monetary cap, whether its actual or statutory damages you’re seeking. In federal court, you can seek statutory damages for registered works only. These are all reasons why you should register your copyright ASAP.
Small digression – another reason to register copyright is that a registered IP right expedites a takedown notice. Whether you’re trying to do a DMCA takedown or you’re informing an online marketplace (e.g., eBay or Amazon) to takedown something that you see that infringes your IP – you really do need to present a registered IP right. This goes for trademarks as well. If you see someone infringing your trademark on an online marketplace like Alibaba or Amazon – the platform will ask you for “proof of IP ownership.” You need to present a registered trademark in this instance. Trying to enforce common law rights in this notice and takedown context really doesn’t work.
Bringing a CCB Claim
When you bring your claim at the CCB, you will need to identify the category of the work of authorship (e.g., literary or dramatic work, musical work, architectural work, etc.) involved in your dispute
On top of monetary damages, you can get an agreement to stop infringing activities. This is not an injunctive order like those you get at a real court, which comes with an enforcement mechanism. The CCB can order you to get along. But it can’t enforce it.
Smaller Claims and Attorneys’ Fees
The CCB is a small claims court that has an even smaller claims court embedded therein. For these smaller claims, damages, exclusive of attorneys’ fees, are capped at $5,000. If you go this route, your claim will be decided by a single Copyright Claims Officer instead of a three- person tribunal.
Regarding attorney’s fees at the CCB, you’re not likely to get them except in cases of bad faith or dishonest conduct. The loser pays the attorneys’ fees whether that loser was represented by an attorney or not. So, either claimant or respondent can be paying for attorneys’ fees. Attorneys’ fees are capped at $5,000. But for the losers who are not represented by an attorney and still being ordered to pay attorneys’ fees, that pro se loser only has to pay $2,500.
Other Key Features
- Statute of Limitations. The same statute of limitations applies for bringing a CCB as that for bringing a copyright case in a federal suit. The Copyright Act sets the statute of limitations at three years from the time of the activities involved in the claim – that’s three years from discovering infringement. You can’t present evidence of infringement that goes back longer than three years.
- Opting Out. Participation in CCB is completely voluntary for both claimants and respondents. Claimants can either choose to go to the CCB or to federal court. But not both obviously – you have to pick one. If you’re a respondent or a defendant, you can opt out of the CCB within a 60-day window after receiving a notice that the CCB claim has been filed.This is not my favorite feature about the CCB because if you’re a small pro se claimant and you file a CCB claim and the respondent knows you don’t have the means to pursue a federal court case, the respondent can just opt out of CCB and the claimant is effectively out of options. CCB is supposed to help the small guy right? Seems like the opt-out feature negates the benefits for small pro se claimants.
- Counterclaims. If you’re bringing a counterclaim it must be related to the original claim, obviously, just like all countersuits.
- Limits on Claims. There is a limit on the number of claims that any party can file in a single year and for the life of me I could not find what the limit is – it’s a secret. Do you know? Please comment.
- Legal Determinations Not Decisions. CCB determinations are not decisions. They have no legal precedence and are not binding on any future determinations or federal court proceedings.
- Determinations are Final. If you lose at the CCB, you can’t get a second bite at the apple and file your claim in federal court. If you lose, you lose forever.
A Short Note About Collaborative Works
Collective works or joint works are works resulting from collaborations in which there are more than one author or creator of the copyrighted work. I hear a lot of stories that go something like, “I wrote a white paper with a colleague and now the person is sharing it as if he’s the sole author… do I have a copyright claim?”
Something like a co-authored white paper, is likely considered a joint work in the copyright context. This is a work “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” When you’ve authored this whitepaper together, all your ideas and contributions have merged – you can no longer delineate your co-author contributions from your contribution. Your whitepaper is sort of like your baby; it now has both your genes.
This is in contrast to what’s called a “collective work”. Collective works apply to the case in which you authored a single chapter in a periodical or a textbook. Here, you do have copyright rights over that chapter you authored even though that chapter is part of a greater body of work that is also copyrighted.
But, in the case of joint works, which is the whitepaper case, each author is separately entitled to all the exclusive rights typically afforded to a single copyright owner. That means each author can reproduce or disseminate the work however they want without needing to inform or get consent from the co-authors. So, unless you have a contract with your co-author to the contrary, you’re unfortunately stuck with this joint ownership situation, and you cannot stop your co-author from sharing the work without your consent.
The reason I’m saying this is not to be a big downer. But since the CCB is meant to help individuals without an arsenal of attorneys at their helm, it’s also important to know the limitations of these types of programs so that you don’t over-rely on them. The law unfortunately cannot provide a remedy for all the types of wrongdoing in the world. So, with that in mind, it’s important to remember to always be cautious and wary about who you share your work products and your ideas with. Sometimes that is simply the best way to protect yourself.
Learn more in the latest episode of IP Practice Vlogs.