[Federal Register Volume 77, Number 164 (Thursday, August 23, 2012)]
[Notices]
[Pages 51068-51071]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-20802]


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LIBRARY OF CONGRESS

Copyright Office

[Docket No. 2011-10]


Remedies for Small Copyright Claims: Additional Comments

AGENCY: Copyright Office, Library of Congress.

ACTION: Notice of inquiry.

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SUMMARY: This is the second request for public comment pertaining to a 
study undertaken by the U.S. Copyright Office at the request of 
Congress on the topic of adjudicating small copyright claims. The study 
will assess whether and, if so, how the current legal system hinders or 
prevents copyright owners from pursuing claims that have a relatively 
small economic value and will discuss, with appropriate 
recommendations, potential changes in administrative, regulatory, and 
statutory authority. At this time, the Office seeks additional comments 
on some of the possible alternatives. The Copyright Office also 
announces two public meetings following the comment period, to be held 
during November 2012 in New York and Los Angeles, respectively.

DATES: Comments are due September 26, 2012.

ADDRESSES: All comments and reply comments shall be submitted 
electronically. A comment page containing a comment form is posted on 
the Office Web site at http://www.copyright.gov/docs/smallclaims. The 
Web site interface requires commenting parties to complete a form 
specifying name and organization, as applicable, and to upload comments 
as an attachment via a browser button. To meet accessibility standards, 
commenting parties must upload comments in a single file not to exceed 
six megabytes (MB) in one of the following formats: the Adobe Portable 
Document File (PDF) format that contains searchable, accessible text 
(not an image); Microsoft Word; WordPerfect; Rich Text Format (RTF); or 
ASCII text file format (not a scanned document). The form and face of 
the comments must include both the name of the submitter and 
organization. The Office will post the comments publicly on the 
Office's Web site exactly as they are received, along with names and 
organizations. If electronic submission of comments is not feasible, 
please contact the Office at 202-707-8350 for special instructions.
    Public Meetings: The public meeting in New York will be held in the 
Jerome Greene Annex of Columbia Law School, 410 West 117th Street, New 
York, New York 10027, on November 15, 2012 from 9:30 a.m. to 5:30 p.m. 
and on November 16, 2012 from 9:30 a.m. to 3:30 p.m. The public meeting 
in Los Angeles will be held in Room 1314 of the UCLA School of Law, 405 
Hilgard Avenue, Los Angeles, California 90095, on November 26, 2012 
from 9:30 a.m. to 5:30 p.m. and on November 27, 2012 from 9:30 a.m. to 
3:30 p.m. The agendas and the process for submitting requests to 
participate in or observe one of these meetings will be published on 
the Copyright Office Web site no later than October 15, 2012.

FOR FURTHER INFORMATION CONTACT: Jacqueline Charlesworth, Senior 
Counsel, Office of the Register, by email at jcharlesworth@loc.gov or 
by telephone at 202-707-8350; or Catherine Rowland, Counsel, Office of 
Policy and International Affairs, by email at crowland@loc.gov or by 
telephone at 202-707-8350.

SUPPLEMENTARY INFORMATION:

I. Background

    At the request of Congress, the Copyright Office is conducting a 
study to assess whether and, if so, how the current legal system 
hinders or prevents copyright owners from pursuing copyright 
infringement claims that have a relatively small economic value 
(``small copyright claims'' or ``small claims''), and to recommend 
potential changes in administrative, regulatory, and statutory 
authority to improve the adjudication of such claims. The Office 
published a general Notice of Inquiry in the fall of 2011 and received 
numerous comments regarding the current environment in which small 
copyright claims are (or are not) pursued and

[[Page 51069]]

possible alternatives to address concerns about the current system. See 
the original Notice of Inquiry, 76 FR 66758 (Oct. 27, 2011), and 
comments received in response thereto, which are posted on the 
Copyright Office Web site, at http://www.copyright.gov/docs/smallclaims/comments/. The Copyright Office also notes the roundtable 
discussion on small claims sponsored by George Washington University 
Law School (``GW'') on May 10, 2012. The GW discussion covered topics 
ranging from constitutional considerations to the definition of a 
``small claim'' to potential features of a streamlined adjudicatory 
process, and included the participation of both the Copyright Office 
and the Patent and Trademark Office. See http://www.uspto.gov/blog/director/entry/uspto_co_sponsors_ip_small.
    At this time, the Copyright Office seeks further input concerning 
how a copyright small claims system might be structured and function. 
Accordingly, the Office seeks responses on the specific subjects below 
(some of which were identified by the Office in its earlier Notice), 
including from parties who did not previously address those subjects, 
or those who wish to amplify or clarify their earlier comments or 
respond to the comments of others. (The Office has studied and will 
take into consideration the comments already received, so there is no 
need to restate previously submitted material.) A party choosing to 
respond to this Notice of Inquiry need not address every subject below, 
but the Office requests that responding parties clearly identify and 
separately address each subject for which a response is submitted.

Subjects of Inquiry

    Assuming a system for small copyright claims is created:
    1. Nature of tribunal/process. Provide a general description of the 
small claims system you believe would work best. Should it be a 
streamlined process within the existing Article III court structure, or 
an alternative process administered by the Copyright Office, the 
Copyright Royalty Judges, and/or some other type of tribunal? If an 
alternative process, should it include a right of review by an Article 
III court? Should the process be adjudicatory in nature, or instead 
consist of, or include, arbitration or mediation, or be some 
combination of these? (See below for more specific questions on review/
appeals and the potential role of arbitration and/or mediation.)
    2. Voluntary versus mandatory participation. Explain whether the 
small claims process would best be structured as a voluntary or 
mandatory system. Should a prospective plaintiff with a claim that 
meets the small claims criteria retain the option of choosing the 
existing federal district court process instead? Should a defendant be 
permitted to opt out of the small claims forum in favor of federal 
district court? If one or both parties' participation in the small 
claims process is voluntary, what incentives--such as damages 
limitations, attorneys' fees awards, or other features--might be 
instituted to encourage voluntary participation by plaintiffs and/or 
defendants?
    3. Arbitration. Explain what role, if any, arbitration might play 
in the small claims process. Should matters be decided through some 
sort of specialized arbitration? Would such arbitration be binding? If 
so, how would the arbitrator's award be enforced and under what 
circumstances, if any, could it be set aside (and how might the Federal 
Arbitration Act, 9 U.S.C. 1 et seq., apply)? How would arbitrators be 
trained and selected? Are there any existing arbitration models that 
might be especially useful as a model for arbitrating small copyright 
claims?
    4. Mediation. Explain what role, if any, mediation might play in 
the small claims system. Should parties be required to participate in 
mediation before proceeding with a more formal process? Would it be 
useful to offer a copyright-focused voluntary mediation service? How 
would mediators be trained and selected?
    5. Settlement. Please comment on how the small claims process might 
be structured to encourage voluntary settlements in lieu of litigated 
proceedings. Should a plaintiff be required to make a settlement offer 
to a prospective defendant before proceeding with a claim? Should the 
defendant be required to respond?
    6. Location of tribunal(s). Could the small claims tribunal be 
centrally located, or should there be regional venues? If centrally 
located, where should it be? If in multiple locations, what should 
those be?
    7. Qualifications and selection of adjudicators. Who should the 
adjudicators be? If the small claims system is a streamlined process 
within the Article III court structure, is there a role for magistrate 
judges or staff attorneys? If it is an alternative process, what 
qualifications should the adjudicators have, and how should they be 
selected?
    8. Eligible works. Are some types of copyrighted works more 
amenable to, or in need of, a small claims system than others? Should 
the small claims process be limited to certain classes of works, for 
example, photographs and illustrations, or should it be available for 
all types of copyrighted works?
    9. Permissible claims. Discuss the types of claims that could or 
should be eligible for the small claims process. For example, should 
the process be limited solely to claims of infringement, or should it 
be possible to bring a related claim arising out of the same dispute, 
such as a Lanham Act claim? What about an infringement claim that is 
tied to a contractual issue, as in the case where the defendant is 
alleged to have infringed by exceeding the terms of a license? Should 
issues of copyright ownership be amenable to decision through the small 
claims process? What about a user's claim that a takedown notice 
contained a material misrepresentation in violation of the Digital 
Millennium Copyright Act (``DMCA''), 17 U.S.C. 512(f)?
    10. Permissible claim amount. Assuming there would be a cap on the 
amount of damages that could be sought by a plaintiff or 
counterclaimant in the small claims process, what should that amount 
be? What is the rationale for the cap proposed? Should there be any 
independent analysis of the damages claim by the tribunal? Should it be 
permissible for a copyright owner to pursue multiple claims in the same 
proceeding provided that, either individually or, alternatively, in the 
aggregate, they do not exceed the cap? What if, during the course of 
the proceeding, additional infringements are discovered such that the 
plaintiff's potential damages exceed the cap? What if a defendant 
asserts a counterclaim that exceeds the cap?
    11. Permissible defenses and counterclaims. Discuss what 
limitations, if any, there should be on the types of defenses and 
counterclaims that could be decided through the small claims process. 
For example, could a defense of fair use or independent creation be 
adjudicated through the process? What about defenses or counterclaims 
arising under the DMCA, such as an assertion that the plaintiff's claim 
is subject to one of the safe harbor provisions of 17 U.S.C. 512(a) 
through (d), or that a takedown notice violated 17 U.S.C. 512(f)? To 
the extent such defenses or counterclaims were not subject to 
adjudication through the small claims process and would require removal 
of the action to federal district court, would this provide defendants 
with a means to ``opt out'' of the small claims system in a substantial 
number of cases?
    12. Registration. Should registration of the allegedly infringed 
work be required in order to initiate a claim through the small claims 
process or,

[[Page 51070]]

alternatively, should proof of filing of an application for 
registration suffice? Should the process permit claims to be brought 
for unregistered works? Should the registration status of a work affect 
the availability of statutory damages or recovery of attorneys' fees, 
assuming such remedies are available through the small claims process?
    13. Filing fee. Discuss the merits of requiring a filing fee to 
pursue a claim through the small claims process and the amount, if any, 
that would be appropriate. Should the filing fee vary with the size of 
the claim? Are there existing standards that might be informative?
    14. Initiation of proceeding. Explain what would be required to 
initiate a proceeding. Should some sort of attestation and/or a prima 
facie showing of infringement be required of a copyright owner with the 
initial filing? Should a copyright owner need to establish a prima 
facie case of infringement before the defendant is required to appear 
and, if so, how would it be determined that this requirement had been 
met? By what means would the defendant be served or otherwise notified 
of the action? Should a defendant that is sued in federal district 
court for copyright infringement be permitted to transfer the matter to 
the small claims tribunal if the plaintiff's alleged damages are within 
the small claims damages cap? Should a party who has been put on notice 
of an alleged infringement be able to initiate an action by seeking a 
declaratory judgment of no infringement?
    15. Representation. Describe the role of attorneys or other 
representatives, if any, in a small claims copyright system. Should 
individual copyright owners be permitted to be represented by an 
attorney and/or a non-attorney advocate, in addition to appearing pro 
se? Should corporations and other business entities be permitted to 
appear through employees instead of attorneys?
    16. Conduct of proceedings. Describe how the small claims 
proceeding would work. Could the process be conducted by paper 
submission, without the requirement of personal appearances? Should the 
tribunal have the option to hold teleconferences or videoconferences in 
lieu of personal appearances? Should non-party witnesses be permitted 
to participate and, if so, by what means? Should expert witnesses be 
permitted? Should the tribunal have any sort of subpoena power? Should 
there be an established time frame for adjudication of the matter?
    17. Discovery, motion practice and evidence. Explain what types of 
discovery, if any, should be permitted in the small claims system. For 
example, should depositions (either oral or by written question), 
requests for production of documents, interrogatories and/or requests 
for admission be permitted and, if so, to what extent? Should motion 
practice be allowed and, if so, to what extent? What types of testimony 
and/or evidence should be accepted (e.g., written, oral, documentary, 
etc.), and what standards of admissibility, if any, should apply?
    18. Damages. Describe the damages that would be available through 
the small claims system. Should damages be limited to actual damages, 
or could statutory damages also be awarded? If statutory damages were 
available, should they adhere to the existing statutory damages 
framework of 17 U.S.C. 504(c) (subject to any cap applicable in the 
small claims system), or could an alternative approach be adopted, such 
as a fixed amount to be awarded in the case of a finding of 
infringement?
    19. Equitable relief. Describe the equitable relief, if any, that 
should be available through the small claims system. Should the small 
claims tribunal be able to grant declaratory relief, issue an 
injunction to halt the infringing use of a work, impose license terms 
(such as for the continued distribution of a derivative work) and/or 
award other forms of equitable relief?
    20. Attorneys' fees and costs. Explain how attorneys' fees and 
costs might be handled within the small claims system. Should a 
prevailing plaintiff and/or defendant be entitled to recover its 
attorneys' fees and costs? If so, should such fees and costs be awarded 
according to the standards that have evolved under 17 U.S.C. 505, 
should they be awarded as a matter of course, or should other criteria 
apply? Should there be a limit on the amount of attorneys' fees that 
could be sought and/or awarded in the small claims system?
    21. Record of proceedings. Describe the record of proceedings that 
should be kept by the tribunal. Should decisions of the tribunal be 
rendered in writing? Should they include factual findings, legal 
explanation and/or other analysis? Should the records be publicly 
available?
    22. Effect of adjudication. Explain the nature and effect of a 
small claims adjudication. Should a decision of the small claims 
tribunal constitute a final and enforceable judgment (subject to any 
further review or appeal)? Should it be published and/or carry any 
precedential weight? Should it have any res judicata or collateral 
estoppel effect, or should it be limited to the specific activities at 
issue and parties in question?
    23. Enforceability of judgment. With respect to monetary judgments 
and any equitable or other relief awarded by the small claims tribunal, 
through what means would such remedies be enforceable? Should there be 
any special procedures for enforcement? Are there existing judicial or 
nonjudicial resources that might be useful in this regard?
    24. Review/appeals. Should there be a right of review or appeal 
and, if so, under what circumstances, and by or to what body or court? 
What would be the appropriate standard of review (e.g., de novo, 
clearly erroneous, abuse of discretion, etc.)? Aside from any 
applicable filing fee, should there be any conditions for seeking 
review (such as posting of a bond)? Should a prevailing party in a 
review or appeal process be entitled to recover its attorneys' fees or 
costs?
    25. Group claims. Should multiple copyright owners or a trade 
association or other entity acting on behalf of copyright owners be 
permitted to pursue multiple infringement claims against a single 
defendant, or multiple defendants, in a single proceeding? Should there 
be specialized rules of standing or procedures to permit this within 
the small claims system?
    26. Frivolous claims. How might the small claims system deter 
frivolous and unwarranted filings? What measures--such as the awarding 
of attorneys' fees or other financial sanctions, or the barring of 
copyright owners that have repeatedly pursued frivolous claims from 
further use of the small claims process--might be taken to discourage 
the assertion of bad faith or harassing infringement claims, defenses 
and counterclaims?
    27. Constitutional issues. Comment on whether a small claims system 
might implicate any one or more of the following constitutional 
concerns--or any other constitutional issue--and, if so, how the 
particular concern might be addressed:
    a. Separation of powers questions arising from the creation of 
specialized tribunals outside of the Article III framework, including 
how a right of review by an Article III court might impact the 
analysis;
    b. The Seventh Amendment right to have a copyright infringement 
case tried to a jury, as confirmed in Feltner v. Columbia Pictures 
Television, Inc., 523 U.S. 340 (1998);
    c. Constitutional requirements for a court's assertion of personal 
jurisdiction, in particular when

[[Page 51071]]

adjudicating claims of a defendant located in another state; and/or
    d. Due process considerations arising from abbreviated procedures 
that impose limitations on briefing, discovery, testimony, evidence, 
appellate review, etc.
    28. State court alternative. As an alternative to creating a small 
claims system at a federal level, should the statutory mandate of 
exclusive federal jurisdiction for copyright claims be altered to allow 
small copyright claims to be pursued through existing state court 
systems, including traditional state small claims courts? What benefits 
or problems might flow from such a change?
    29. Empirical data. Commenting parties are invited to cite and 
submit further empirical data (in addition to the anecdotal and survey 
information already cited or submitted to the Copyright Office in 
connection with this proceeding) bearing upon:
    a. Whether copyright owners are or are not pursuing small 
infringement claims through the existing federal court process, and the 
factors that influence copyright owners' decisions in that regard, 
including the value of claims pursued or forgone;
    b. The overall cost to a plaintiff and/or a defendant to litigate a 
copyright infringement action to conclusion in federal court, including 
costs and attorneys' fees, discovery expenditures, expert witness fees 
and other expenses (with reference to the stage of proceedings at which 
the matter was concluded);
    c. The frequency with which courts award costs and/or attorneys' 
fees to prevailing parties pursuant to 17 U.S.C. 505, and the amount of 
such awards in relation to the underlying claim or recovery; and/or
    d. The frequency with which litigants decline to accept an outcome 
in state small claims court and seek de novo review (with or without a 
jury trial) or file an appeal in a different court.
    30. Funding considerations. Aside from filing fees, by what means 
might a small claims system be partially or wholly self-supporting? 
Should winning and/or losing parties be required to defray the 
administrative costs of the tribunal's consideration of their matter, 
in all or in part? If so, by what means? If the system consists of or 
includes arbitration or mediation, should parties bear the cost of 
these alternatives?
    31. Evaluation of small claims system. Should the small claims 
system be evaluated for efficacy and, if so, how? Should it be subject 
to periodic review or adjustment? Should it be launched initially as a 
pilot program or on a limited basis?
    32. Other issues. Are there any additional pertinent issues not 
identified above that the Copyright Office should consider in 
conducting its study?

    Dated: August 20, 2012.
Maria A. Pallante,
Register of Copyrights.
[FR Doc. 2012-20802 Filed 8-22-12; 8:45 am]
BILLING CODE 1410-30-P