PART 222—PROCEEDINGS Authority: 17 U.S.C. 702, 1510. Source: 87 FR 12865, Mar. 8, 2022, unless otherwise noted. § 222.1 Applicability of the Federal Rules of Civil Procedure and Federal Rules of Evidence. The rules of procedure and evidence governing proceedings before the Copyright Claims Board (Board) are set forth in this subchapter. The Board is not bound by the Federal Rules of Civil Procedure or the Federal Rules of Evidence. [87 FR 30077, May 17, 2022] § 222.2 Initiating a proceeding; the claim. (a) Initiating a proceeding. (1) A completed claim form provided by the Board; and (2) The first payment of the filing fee set forth in 37 CFR 201.3(g). (b) Electronic filing requirement. (c) Contents of the claim. (1) Identification of the claim(s) asserted against the respondent(s), which shall consist of at least one of the following: (i) A claim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; (ii) A claim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; or (iii) A claim under 17 U.S.C. 512(f) for misrepresentation in connection with— (A) A notification of claimed infringement; or (B) A counter notification seeking to replace removed or disabled material; (2) The name(s) and mailing address(es) of the claimant(s); (3) For any claimant that is represented by legal counsel or an authorized representative, authorized representative; (4) For any claimant that is not represented by legal counsel or an authorized representative, (5) The name(s) of the respondent(s); (6) The mailing address(es) of the respondent(s), unless the claimant(s) certifies that a respondent's address is unknown at the time to the claimant and that the claimant has a good-faith belief that the statute of limitations for the claim is likely to expire within 30 days from the date that the claim is submitted, and describes the basis for that good-faith belief; (7) For an infringement claim asserted under paragraph (c)(1)(i) of this section— (i) That the claimant is the legal or beneficial owner of rights in a work protected by copyright and, if there are any co-owners, their names; (ii) The following information for each work at issue in the claim: (A) The title of the work; (B) The author(s) of the work; (C) If a copyright registration has issued for the work, the registration number and effective date of registration; (D) If an application for copyright registration has been submitted but a registration has not yet issued, the service request number (SR number) and application date; and (E) The work of authorship category, as set forth in 17 U.S.C. 102, for each work at issue, or, if the claimant is unable to determine the applicable category, a brief description of the nature of the work; and (iii) A description of the facts relating to the alleged infringement, including, to the extent known to the claimant: (A) Which exclusive rights provided under 17 U.S.C. 106 are at issue; (B) When the alleged infringement began; (C) The name(s) of all person(s) or organization(s) alleged to have participated in the infringing activity; (D) The facts leading the claimant to believe the work has been infringed; (E) Whether the alleged infringement has continued through the date the claim was filed, or, if it has not, when the alleged infringement ceased; (F) Where the alleged act(s) of infringement occurred ( e.g., (G) If the claim of infringement is asserted against an online service provider as defined in 17 U.S.C. 512(k)(1)(B) for infringement by reason of the storage of or referral or linking to infringing material that may be subject to the limitations on liability set forth in 17 U.S.C. 512(b), (c), or (d), an affirmance that the claimant has previously notified the service provider of the claimed infringement in accordance with 17 U.S.C. 512(b)(2)(E), (c)(3), or (d)(3), as applicable, and that the service provider failed to remove or disable access to the material expeditiously upon the provision of such notice; (8) For a declaration of noninfringement claim asserted under paragraph (c)(1)(ii) of this section— (i) The name(s) of the person(s) or organization(s) asserting that the claimant has infringed a copyright; (ii) The following information for each work alleged to have been infringed, if that information is known to the claimant: (A) The title; (B) If a copyright registration has issued for the work, the registration number and effective date of registration; (C) If an application for copyright has been submitted, but a registration has not yet issued, the service request number (SR number) and registration application date; and (D) The work of authorship category, as set forth in 17 U.S.C. 102, or, if the claimant is unable to determine which category is applicable, a brief description of the nature of the work; (iii) A brief description of the claimant's activity at issue in the claim, including, to the extent known to the claimant: (A) Any exclusive rights provided under 17 U.S.C. 106 that may be implicated; (B) When the activities at issue began and, if applicable, ended; (C) Whether the activities at issue have continued through the date the claim was filed; (D) The name(s) of all person(s) or organization(s) who participated in the allegedly infringing activity; and (E) Where the activities at issue occurred ( e.g., (iv) A brief statement describing the reasons why the claimant believes that no infringement occurred, including any relevant history or agreements between the parties and whether claimant currently believes any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 are implicated; and (v) A brief statement describing the reasons why the claimant believes that there is an actual controversy concerning the requested declaration; (9) For a misrepresentation claim asserted under paragraph (c)(1)(iii) of this section— (i) The sender of the notification of claimed infringement; (ii) The recipient of the notification of claimed infringement; (iii) The date the notification of claimed infringement was sent, if known; (iv) A description of the notification; (v) If a counter notification was sent in response to the notification— (A) The sender of the counter notification; (B) The recipient of the counter notification; (C) The date the counter notification was sent, if known; and (D) A description of the counter notification; (vi) The words in the notification or counter notification that allegedly constituted a misrepresentation; and (vii) An explanation of the alleged misrepresentation; (10) For infringement claims and misrepresentation claims, a statement describing the harm suffered by the claimant(s) as a result of the alleged activity and the relief sought by the claimant(s). Such statement may, but is not required to, include an estimate of any monetary relief sought; (11) Whether the claimant requests that the proceeding be conducted as a “smaller claim” under 17 U.S.C. 1506(z), and would accept a limitation on total damages of $5,000 if the request is granted; and (12) A certification under penalty of perjury by the claimant, the claimant's legal counsel, or the claimant's authorized representative (d) Additional matter. (1) A copy of the copyright registration certificate for a work that is the subject of the proceeding; (2) A copy of the copyrighted work alleged to be infringed. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted; (3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity; (4) For a misrepresentation claim, a copy of the notification of claimed infringement that is alleged to contain the misrepresentation; (5) For a misrepresentation claim, a copy of the counter notification that is alleged to contain the misrepresentation; (6) For a declaration of noninfringement claim, a copy of the demand letter(s) or other correspondence that created the dispute; and (7) Any other exhibits that play a significant role in setting forth the facts of the claim. (e) Additional information required during claim submission. (1) For any claimant that is represented by legal counsel or an authorized representative, (2) Any further information that the Board may determine should be provided. (f) Respondent address requirement for claim submission. [87 FR 17000, Mar. 25, 2022] § 222.3 Initial notice. (a) Content of initial notice. initial notice (1) Include on the first page a caption that provides the parties' names and includes the docket number assigned by the Board; (2) Be addressed to the respondent; (3) Provide the name(s) and mailing address(es) of the claimant(s); (4) For any claimant that is represented by legal counsel or an authorized representative, authorized representative; (5) For any claimant that is not represented by legal counsel or an authorized representative, (6) Advise the respondent that a legal proceeding that could affect the respondent's legal rights has been commenced by the claimant(s) in the Board against the respondent; (7) Identify the nature of the claims asserted against the respondent, which shall consist of at least one of the following: (i) A claim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; (ii) A claim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; and (iii) A claim under 17 U.S.C. 512(f) for misrepresentation in connection with— (A) A notification of claimed infringement; or (B) A counter notification seeking to replace removed or disabled material; (8) Describe the Board, including that it is a three-member tribunal within the Copyright Office that has been established by law to resolve certain copyright disputes in which the total monetary recovery does not exceed $30,000; (9) State that the respondent has the right to opt out of participating in the proceeding, and that the consequence of opting out is that the proceeding shall be dismissed without prejudice and the claimant shall have to determine whether to file a lawsuit in a Federal district court; (10) State that if the respondent does not opt out within 60 days from the day the respondent received the initial notice, (i) Lose the opportunity to have the dispute decided by the Federal court system, created under Article III of the Constitution of the United States; and (ii) Waive the right to have a trial by jury regarding the dispute; (11) State that the notice is in regard to an official Government proceeding and provide information on how to access the docket of the proceeding in eCCB; (12) Provide information on how to become a registered user of eCCB; (13) State that parties may represent themselves in the proceeding, but note that a party may wish to consult with legal counsel or with a law school clinic, and provide reference to pro bono resources ( i.e., (14) Indicate where other pertinent information concerning proceedings before the Board may be found on the Board's website; (15) Provide direction on how a respondent may opt out of the proceeding, either online or by mail; (16) In the case of a proceeding in which the claimant has requested under § 222.2(c)(1) that the proceeding be conducted as a smaller claim under 37 CFR part 226, include a statement that the proceeding shall be conducted as a smaller claim and a brief explanation of the differences between smaller claims proceedings and other proceedings before the Board; and (17) Include any additional information that the Board may determine should be included. (b) Service of initial notice. initial notice, initial notice initial notice, [87 FR 17000, Mar. 25, 2022, as amended at 87 FR 30077, May 17, 2022] § 222.4 Second notice. (a) Content of second notice. second notice (1) Include on the first page a caption that provides the parties' names and the docket number; (2) Be addressed to the respondent, using the address that appeared in the initial notice second notice; (3) Include the contact information for the claimant(s) and claimant's legal counsel or authorized representative, authorized representative; (4) Advise the respondent that a proceeding that could affect the respondent's legal rights has been commenced by the claimant(s) in the Board against the respondent; (5) Identify the nature of the claims asserted against the respondent, which shall consist of at least one of the following: (i) A claim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; (ii) A claim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; and (iii) A claim under 17 U.S.C. 512(f) for misrepresentation in connection with— (A) A notification of claimed infringement; or (B) A counter notification seeking to replace removed or disabled material; (6) Describe the Board, including that it is a three-member tribunal within the Copyright Office that has been established by law to resolve certain copyright disputes in which the total monetary recovery does not exceed $30,000; (7) State that the respondent has the right to opt out of participating in the proceeding, and that the consequence of opting out is that the proceeding shall be dismissed and the claimant shall have to determine whether to file a lawsuit in a Federal district court; (8) State that if the respondent does not opt out within 60 days from the day the respondent received the initial notice, (i) Lose the opportunity to have the dispute decided by the Federal court system, created under Article III of the Constitution of the United States; and (ii) Waive the right to have a trial by jury regarding the dispute; (9) Provide information on how to access the docket of the proceeding in eCCB and how to become a registered user of that system; (10) State that the notice is in regard to an official Government proceeding and provide information on how to access the docket of the proceeding eCCB; (11) Provide information on how to become a registered user of eCCB; (12) State that parties may represent themselves in the proceeding, but note that a party may wish to consult with legal counsel or with a law school clinic, and provide reference to pro bono resources ( i.e., (13) Indicate where other pertinent information concerning proceedings before the Board may be found on the Board's website; (14) Provide direction on how a respondent may opt out of the proceeding, either online or by mail; (15) Be accompanied by the documents described in § 222.3(b); (16) In the case of a proceeding in which the claimant has requested under § 222.2(c)(1) that the proceeding be conducted as a smaller claim under 37 CFR part 226, include a statement that the proceeding shall be conducted as a smaller claim and a brief explanation of the differences between smaller claims proceedings and other proceedings before the Board; and (17) Include any additional information or documents at the Board's direction. (b) Timing of second notice. second notice [87 FR 17000, Mar. 25, 2022, as amended at 87 FR 30077, May 17, 2022] § 222.5 Service; waiver of service; filing. (a) In general. (b) Service of initial notice, claim, and related documents Timing of service. (2) Service methods. initial notice, initial notice (ii) If a corporation, partnership, or unincorporated association has designated a service agent under 17 U.S.C. 1506(g)(5)(B) and § 222.6, service must be made by certified mail or by any other method that the entity specifies in its designation under § 222.6 that it will accept. (3) Filing of proof of service. initial notice (ii) The claimant's failure to comply with the filing deadline in paragraph (b)(3)(i) of this section may constitute exceptional circumstances justifying an extension of the 60-day period in which a respondent may deliver an opt-out notification to the Board under 17 U.S.C. 1506(i). (c) Waiver of personal service Delivery of request for waiver of service. (i) A completed waiver of personal service form provided on the Board's website; (ii) The documents described in § 222.3, including the initial notice (iii) An envelope, with postage prepaid and addressed to the claimant requesting the waiver or, for a claimant represented by legal counsel or an authorized representative, authorized representative. (2) Content of waiver of service request. (i) Bear the name of the Board; (ii) Include on the first page and waiver page the caption identifying the parties and the docket number; (iii) Be addressed to the respondent; (iv) Contain the date of the request; (v) Notify the respondent that a legal proceeding has been commenced by the claimant(s) before the Board against the respondent; (vi) Advise that the form is not a summons or official notice from the Board; (vii) Request that respondent waive formal service of summons by signing the enclosed waiver; (viii) State that a waiver of personal service shall not constitute a waiver of the right to opt out of the proceeding; (ix) Describe the effect of agreeing or declining to waive service; (x) Include a waiver of personal service form provided by the Board, containing a clear statement that waiving service does not affect the respondent's ability to opt out of the proceeding and that, if signed and returned by the respondent, will include— (A) An affirmation that the respondent is waiving service; (B) An affirmation that the respondent understands that the respondent may opt out of the proceeding within 60 days of receiving the request; (C) The name and mailing address of the respondent; (D) For a respondent that is represented by legal counsel or an authorized representative, authorized representative; (E) For a respondent that is not represented by legal counsel or an authorized representative, (F) The typed, printed, or handwritten signature of the respondent or, if the respondent is represented by legal counsel or an authorized representative, authorized representative. (xi) Not be accompanied by any other substantive communications. (3) Completing waiver of service. (4) Timing of completing waiver. (5) Filing of waiver. (d) Service by the Copyright Claims Board In general. (2) Service of second notice. second notice (A) In the designated service agent directory, if the respondent is a corporation, partnership, or unincorporated association that has designated a service agent; and, if not, (B) By the claimant in the claim or, in a subsequent communication correcting the address. (ii) The Board shall also serve the second notice (3) Service of order regarding second filing fee and electronic filing registration on claimants. (i) On any respondents that have not registered for eCCB in the manner set forth in paragraph (d)(2) of this section; and (ii) On any claimants that have not registered for eCCB by sending such documents— (A) By mail at the address provided for the claimant in the claim and by email at the email address provided for the claimant in the claim; or (B) If the claimant is represented by legal counsel or an authorized representative, authorized representative authorized representative (e) Service of discovery requests, responses, and responsive documents Service of discovery requests, responses, and responsive documents. (i) If a party is represented by legal counsel or an authorized representative, authorized representative authorized representative's (ii) If a party is not represented, service under this paragraph (e)(1) must be made on the party at the email address or mailing address provided by that party in the claim or response. (2) Filing generally prohibited. (f) Waiver of electronic filing and service requirements. authorized representative [87 FR 17000, Mar. 25, 2022, as amended at 87 FR 77520, Dec. 19, 2022] § 222.6 Designated service agents. (a) In general. (b) Designation fee. (c) Trade names and affiliated entities Trade names. i.e., (2) Affiliated entities. e.g., (d) Content of submission In general. (i) The legal name, business address, email address, and telephone number of the corporation, partnership, or unincorporated association; (ii) The state in which the principal place of business of the corporation, partnership, or unincorporated association is located; (iii) For corporations, the state or territory (including the District of Columbia) of incorporation; (iv) Up to 50 additional names, consisting of either the names of affiliated entities or trade names, or both, as described in paragraph (c) of this section; (v) The name, business address (or, if the agent does not have a business address, the address of the residence of such agent), email address, and telephone number of the designated service agent; (vi) The submitter's name, email address, and telephone number; and (vii) The corporation, partnership, or unincorporated association's service method election, as described in paragraph (e) of this section. (2) Certification. (e) Service on designated agents. (1) Service by mail. (2) Service by email. (ii) In cases where the designation states that service may be made by email, the person submitting the designation shall affirm under penalty of perjury that the corporation, partnership, or unincorporated association for which the agent has been designated waives the right to personal service by means other than email and that the person making the designation has been authorized to waive that right on behalf of the corporation, partnership, or unincorporated association and any other affiliated entity for which the filing is made for Board proceedings. (f) Amendments. (g) Public directory In general. (2) Removal from directory. (3) Content of public listing. (4) Designation date. § 222.7 Order regarding second filing fee and electronic filing registration. (a) Issuance of order. (1) The claimant must submit the second payment of the filing fee set forth in 37 CFR 201.3(g) through eCCB; and (2) All claimant(s) and respondent(s) must register for eCCB unless they have been granted a waiver pursuant to § 222.5(f). (b) Receipt of second payment from claimant Confirmation of active proceeding. (2) Notice to respondent. (c) Failure of claimant to submit second payment. [87 FR 17004, Mar. 25, 2022] § 222.8 Response. (a) Filing a response. authorized representative, (b) Content of response. (1) The name and mailing address of the respondent(s) and, for any respondents represented by legal counsel or an authorized representative, authorized representative; (2) The phone number and email address of— (i) The respondent, if the respondent is not represented by legal counsel or an authorized representative; (ii) The legal counsel or other authorized representative authorized representative; (3) A short statement, if applicable, disputing any facts asserted in the claim; (4) For infringement claims brought under 17 U.S.C. 1504(c)(1), a statement describing in detail the dispute regarding the alleged infringement, including reasons why the respondent contends that it has not infringed the claimant's copyright, and any additional defenses, including whether any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 are implicated; (5) For declaration of noninfringement claims brought under 17 U.S.C. 1504(c)(2), a statement describing in detail the dispute regarding the alleged infringement, including reasons why the respondent contends that its copyright has been infringed by claimant, and any additional defenses the respondent may have to the claim; (6) For misrepresentation claims brought under 17 U.S.C. 1504(c)(3), a statement describing in detail the dispute regarding the alleged misrepresentation, including an explanation of why the respondent believes the identified words do not constitute misrepresentation, and any additional defenses the respondent may have to the claim; (7) Any counterclaims pursuant to § 222.9; and (8) A certification under penalty of perjury by the respondent or the respondent's legal counsel or authorized representative (c) Additional matter. (1) A copy of the copyright registration certificate for a work that is the subject of the proceeding; (2) A copy of the allegedly infringed work. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted; (3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity; (4) A copy of the notification of claimed infringement that is alleged to contain the misrepresentation; (5) A copy of the counter notification that is alleged to contain the misrepresentation; and (6) Any other exhibits that play a significant role in setting forth the facts of the response. (d) Additional information required during response submission. (1) For any respondent that is represented by legal counsel or an authorized representative, (2) Any further information that the Board may determine should be provided. (e) Timing of response. (f) Failure to file response. [87 FR 17004, Mar. 25, 2022, as amended at 87 FR 30077, May 17, 2022; 87 FR 36060, June 15, 2022] § 222.9 Counterclaim. (a) Asserting a counterclaim. (1) Arises out of the same transaction or occurrence as the initial claim; or (2) Arises under an agreement pertaining to the same transaction or occurrence that is subject to an initial claim of infringement, if the agreement could affect the relief awarded to the claimant. (b) Electronic filing requirement. (c) Content of counterclaim. (1) The name of the party or parties against whom the counterclaim is asserted; (2) An identification of the counterclaim, which shall consist of at least one of the following: (i) A counterclaim for infringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; (ii) A counterclaim for a declaration of noninfringement of an exclusive right in a copyrighted work provided under 17 U.S.C. 106; (iii) A counterclaim under 17 U.S.C. 512(f) for misrepresentation in connection with— (A) A notification of claimed infringement; or (B) A counter notification seeking to replace removed or disabled material; or (iv) A counterclaim that arises under an agreement pertaining to the same transaction or occurrence that is the subject of a claim of infringement brought under 17 U.S.C. 1504(c)(1), if the agreement could affect the relief awarded to the claimant; (3) For an infringement counterclaim asserted under paragraph (c)(2)(i) of this section— (i) That the counterclaimant is the legal or beneficial owner of rights in a work protected by copyright and, if there are any co-owners, their names; (ii) The following information for each work at issue in the counterclaim: (A) The title of the work; (B) The author(s) of the work; (C) If a copyright registration has issued for the work, the registration number and effective date of registration; (D) If an application for copyright has been submitted but a registration has not yet issued, the service request number (SR number) and registration application date; and (E) The work of authorship category, as set forth in 17 U.S.C. 102, for each work at issue, or, if the counterclaimant is unable to determine the applicable category, a brief description of the nature of the work; (iii) A description of the facts relating to the alleged infringement, including, to the extent known to the counterclaimant: (A) Which exclusive rights provided under 17 U.S.C. 106 are at issue; (B) When the alleged infringement began; (C) The name(s) of all person(s) or organization(s) alleged to have participated in the infringing activity; (D) The facts leading the counterclaimant to believe the work has been infringed; (E) Whether the alleged infringement has continued through the date the counterclaim was filed, or, if it has not, when the alleged infringement ceased; (F) Where the alleged act(s) of infringement occurred; and (G) If the infringement counterclaim is asserted against an online service provider as defined in 17 U.S.C. 512(k)(1)(B) for infringement by reason of the storage of or referral or linking to infringing material that may be subject to the limitations on liability set forth in 17 U.S.C. 512(b), (c), or (d), an affirmance that the counterclaimant has previously notified the service provider of the claimed infringement in accordance with 17 U.S.C. 512(b)(2)(E), (c)(3), or (d)(3), as applicable, and that the service provider failed to remove or disable access to the material expeditiously upon the provision of such notice; (4) For a declaration of noninfringement counterclaim asserted under paragraph (c)(2)(ii) of this section— (i) The name(s) of the person(s) or organization(s) asserting that the counterclaimant has infringed a copyright; (ii) The following information for each work alleged to have been infringed, if that information is known to the counterclaimant: (A) The title; (B) If a copyright registration has issued for the work, the registration number and effective date of registration; (C) If an application for copyright has been submitted, but a registration has not yet issued, the service request number (SR number) and registration application date; and (D) The work of authorship category, as set forth in 17 U.S.C. 102, or, if the counterclaimant is unable to determine which category is applicable, a brief description of the nature of the work; (iii) A brief description of the activity at issue in the counterclaim, including, to the extent known to the counterclaimant: (A) Any exclusive rights provided under 17 U.S.C. 106 that may be implicated; (B) When the activities at issue began and, if applicable, ended; (C) Whether the activities at issue have continued through the date the counterclaim was filed; (D) The name(s) of all person(s) or organization(s) who participated in the allegedly infringing activity; and (E) Where the activities at issue occurred; (iv) A brief statement describing the reasons why the counterclaimant believes that no infringement occurred, including any relevant history or agreements between the parties and whether counterclaimant currently believes any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 are implicated; and (v) A brief statement describing the reasons why the counterclaimant believes that there is an actual controversy concerning the requested declaration; (5) For a misrepresentation counterclaim asserted under paragraph (c)(2)(iii) of this section— (i) The sender of the notification of claimed infringement; (ii) The recipient of the notification of claimed infringement; (iii) The date the notification of claimed infringement was sent, if known; (iv) A description of the notification; (v) If a counter notification was sent in response to the notification— (A) The sender of the counter notification; (B) The recipient of the counter notification; (C) The date the counter notification was sent, if known; and (D) A description of the counter notification; (vi) The words in the notification or counter notification that allegedly constituted a misrepresentation; and (vii) An explanation of the alleged misrepresentation; (6) For a counterclaim arising under an agreement asserted under paragraph (c)(2)(iv) of this section— (i) A description of the agreement that the counterclaim is based upon; (ii) A brief statement describing how the agreement pertains to the same transaction or occurrence that is the subject of the infringement claim against the counterclaimant; and (iii) A brief statement describing how the agreement could affect the relief awarded to the claimant; (7) For infringement counterclaims, misrepresentation counterclaims, and counterclaims arising under an agreement as provided in paragraph (a)(2), a statement describing the harm suffered by the counterclaimant(s) as a result of the alleged activity and the relief sought by the counterclaimant(s). Such statement may, but is not required to, include an estimate of any monetary relief sought; (8) A statement describing the relationship between the initial claim and the counterclaim; and (9) A certification under penalty of perjury by the counterclaimant or the counterclaimant's legal counsel or authorized representative (d) Additional matter. (1) A copy of the copyright registration certificate for a work that is the subject of the proceeding; (2) A copy of the allegedly infringed work. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted; (3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity; (4) A copy of the notification of claimed infringement that is alleged to contain the misrepresentation; (5) A copy of the counter notification that is alleged to contain the misrepresentation; (6) A copy of any agreements related to the counterclaim, including any amendments or revisions; and (7) Any other exhibits that play a significant role in setting forth the facts of the counterclaim. (e) Timing of counterclaim. [87 FR 17004, Mar. 25, 2022, as amended at 87 FR 77520, Dec. 19, 2022; 88 FR 48380, July 27, 2023] § 222.10 Response to counterclaim. (a) Filing a response to a counterclaim. (b) Content of response to a counterclaim. (1) The name, mailing address, phone number, and email address of each counterclaim respondent filing the response; (2) A short statement, if applicable, disputing any facts asserted in the counterclaim; (3) For infringement counterclaims, as set forth in 37 CFR 222.9(c)(2)(i), a statement describing in detail the dispute regarding the alleged infringement, including any defenses as well as any reason why the counterclaim respondent believes there was no infringement of copyright, including any exceptions and limitations as set forth in 17 U.S.C. 107 through 122 that are implicated; (4) For declaration of noninfringement counterclaims, as set forth in 37 CFR 222.9(c)(2)(ii), a statement describing in detail the dispute regarding the alleged infringement, including any defenses as well as reasons why the counterclaim respondent believes there is infringement of copyright; (5) For misrepresentation counterclaims, as set forth in 37 CFR 222.9(c)(2)(iii), a statement describing in detail the dispute regarding the alleged misrepresentation, including any defenses as well as an explanation of why the counterclaim respondent believes the identified words do not constitute misrepresentation; and (6) For counterclaims arising under an agreement, as set forth in 37 CFR 222.9(c)(2)(iv), a statement describing in detail the dispute regarding the contractual counterclaim, including any defenses as well as an explanation of why the counterclaim respondent believes the counterclaimant's position regarding the agreement lacks merit; and (7) A certification under penalty of perjury by the claimant, the claimant's legal counsel, or the claimant's authorized representative (c) Additional matter. (1) A copy of the copyright registration certificate for a work that is the subject of the proceeding; (2) A copy of the allegedly infringed work. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows where the allegedly infringed work has been posted; (3) A copy of the allegedly infringing material. This copy may also be accompanied by additional information, such as a hyperlink or screenshot, that shows any allegedly infringing activity; (4) A copy of the notification of claimed infringement that is alleged to contain the misrepresentation; (5) A copy of the counter notification that is alleged to contain the misrepresentation; (6) A copy of any agreements related to the counterclaim, including any amendments or revisions; and (7) Any other exhibits that play a significant role in setting forth the facts of the counterclaim response. (d) Failure to file counterclaim response. [87 FR 17004, Mar. 25, 2022, as amended at 87 FR 30077, May 17, 2022; 87 FR 36060, June 15, 2022; 87 FR 77520, Dec. 19, 2022; 88 FR 48380, July 27, 2023] § 222.11 Scheduling order. (a) Timing. (b) Content of initial scheduling order. (1) Filing of a response to the claim by the respondent; (2) A pre-discovery conference with a Copyright Claims Officer (Officer) to discuss case management, including discovery, and the possibility of resolving the claims and any counterclaims through settlement; (3) Service of responses to standard interrogatories; (4) Service of documents in response to standard requests for the production of documents; (5) Requests for leave to seek additional discovery; (6) Close of discovery; (7) A post-discovery conference with an Officer to discuss further case management, including the possibility of resolving the claims and any counterclaims through settlement; and (8) Filing of each party's written testimony and responses, pursuant to § 222.15. (c) Conferences. (d) Amended scheduling order. (1) Upon the clearance of a counterclaim by a Copyright Claims Attorney pursuant to § 224.1(c)(1) of this subchapter, to add a deadline for the service of a response by a claimant to a counterclaim and to amend other previously scheduled dates in the prior scheduling order; (2) Upon request of one or more of the parties to an active proceeding (3) As necessary to adjust the schedule for conferences or hearings or the staying of the proceeding; (4) As necessary to facilitate settlement pursuant to § 222.18; or (5) Upon its own initiative in the interests of maintaining orderly administration of the Board's docket. [87 FR 30077, May 17, 2022] § 222.12 Amending pleadings. (a) Amendments before service. (b) Amendments during the opt-out period. (c) Amendment of counterclaim before response. (d) All other amendments. (1) Time to respond. (2) Procedure for request for leave to amend. (3) Standard for granting leave to amend. [87 FR 30077, May 17, 2022] § 222.13 Consolidation. (a) Consolidation. active proceedings (b) Timing. (c) Procedure. (d) Standard for granting request. (e) Smaller claims proceedings. [87 FR 30077, May 17, 2022, as amended at 89 FR 2492, Jan. 16, 2024] § 222.14 Additional parties. (a) When applicable. (b) Failure to join a necessary party. (c) Intervention of a necessary party. (d) Board determination. (2) If the Board determines that the intervening party is a necessary party, it shall— (i) Permit the intervening party to join the proceeding, if no party indicated that it opposed the request to intervene; or (ii) Dismiss the proceeding without prejudice, if any party indicated that it opposed the request to intervene. [87 FR 30077, May 17, 2022; 87 FR 36060, June 15, 2022] § 222.15 Written testimony on the merits. (a) Timing. (b) Direct and response testimony. (1) Documentary evidence. (ii) Except when testimony is submitted pursuant to § 227.2 or § 227.4 of this subchapter, direct or response documentary evidence shall only include documents that were served on opposing parties pursuant to the scheduling order, absent leave from the Board, which shall be granted only for good cause. (2) Witness statements. (i) Be sworn under penalty of perjury by the witness; (ii) Be detailed as to the substance of the witness's knowledge and must be organized into numbered paragraphs; and (iii) Contain only factual information based on the witness's personal knowledge and may not contain legal argument. (3) Party statement. (i) Shall set forth the party's position as to the key facts and damages, as well as any position as to the law; (ii) Need not have a table of contents or authorities; (iii) Shall be limited to 12 pages, other than any optional table of contents or authorities, and shall meet the requirements set forth in § 220.5(b) of this subchapter; (iv) For a claimant or counterclaimant seeking damages for copyright infringement, shall include a statement as to whether the party is electing to seek statutory damages or actual damages and any profits. Alternatively, at any stage of the proceedings, either before or after the submission of written testimony, a claimant or counterclaimant may submit a statement following the procedures set forth in § 220.5(a)(1) of this subchapter indicating the election of the form of damages. This election may be changed at any time up until final determination (v) For a respondent or counterclaim respondent, may include a statement as to whether, if found liable on a claim or counterclaim, the party would voluntarily agree to an order to cease or mitigate any unlawful activity. Such an election must be made, or changed if made earlier, no later than the filing of the respondent's or counterclaim respondent's party statement, or at a hearing if one is ordered by the Board. Such an election may be considered in appropriate cases by the Board in determining an amount of damages, if any, pursuant to 17 U.S.C. 1504. Such a statement will not be considered by the Board in any way in making its determination as to liability, and shall be considered only as to damages. (c) Reply testimony. (1) Documentary evidence. (2) Witness statements. (3) Party statement. (d) Certification. (e) Request for hearing. (f) No additional filing. [87 FR 30077, May 17, 2022, as amended at 87 FR 77520, Dec. 19, 2022] § 222.16 Hearings. (a) Timing. (b) Virtual hearings. (c) Requesting a hearing. (d) Content of request. (e) Scheduling order. (f) Close of evidence. [87 FR 30077, May 17, 2022] § 222.17 Withdrawal of claims; dismissal. (a) General. (b) Withdrawal before a response. (c) Withdrawal after a response. final determination (d) Effect of dismissal. [87 FR 30077, May 17, 2022; 87 FR 36060, June 15, 2022] § 222.18 Settlement. (a) General. (b) Requesting a settlement conference Timing. active proceeding, (2) Form and content of request. (c) Scheduling settlement conference. (d) Settlement proceedings. (1) A brief overview of the facts and contentions; (2) The relief sought, including the amount of damages, if any; (3) Whether or to what extent the alleged wrongful conduct is currently taking place; and (4) Any prior attempts at resolution, including any offers or counteroffers made to the other party. (e) Recusal of presiding Officer. (f) Stay of proceeding. (g) Settlement agreement. final determination. (h) Effect of settlement agreement. final determination, final determination [87 FR 30077, May 17, 2022] § 222.19 Protective orders; personally identifiable information. (a) Standard protective order. (1) Standard of use. final determination, (2) Confidentiality. (i) Bona fide confidential financial information previously not disclosed to the public; (ii) Bona fide confidential and non-obvious business plans, product development information, or advertising or marketing plans previously not disclosed to the public; (iii) Any information of a truly personal or intimate nature regarding any individual not known by the public; or (iv) Any other category of information that the Board grants leave to designate as “confidential.” (3) Case-by-case basis. (4) Submitting confidential information. (5) Determination of confidentiality by the Board. (b) Custom protective orders. (c) Personally identifiable information. (d) Violations of protective order. bad-faith conduct [87 FR 30077, May 17, 2022] § 222.20 Evidence. (a) Admissibility. (b) Examination of witnesses. (c) Exhibits in hearing Submission. (2) Summary exhibits. (d) New exhibits for use in cross-examination or redirect examination. [87 FR 30077, May 17, 2022]