PART 225—DISCOVERY Authority: 17 U.S.C. 702, 1510. Source: 87 FR 30082, May 17, 2022, unless otherwise noted. § 225.1 General practices. (a) Standard discovery practice. (1) Certifications. (i) For responses to interrogatories or any requests for admission permitted by the Board, the certification shall affirm that the responses are accurate and truthful to the best of the submitting party's knowledge. (ii) For the production of documents, the certification shall affirm that the produced documents are genuine and unaltered to the best of the producing party's knowledge. (2) Form of requests to Board. (3) Reasonable investigation. (b) Timing of discovery. (c) Conferences. (d) Documents. [87 FR 30082, May 17, 2022; 87 FR 36061, June 15, 2022] § 225.2 Standard interrogatories. (a) General. active proceeding standard interrogatories Standard interrogatories (1) The identity of witnesses whom the parties plan to use in the proceeding, including contact information for the witnesses, if known, and a brief description of the subject matter on which they may testify; (2) The identity of any other individuals who may have material information related to the claims, counterclaims, or defenses, including contact information for the individuals, if known; (3) Any agreement or other relationship between the parties relevant to the claim or counterclaim; (4) Any harm suffered or damages sought; and (5) Any materially responsive documents that the party is aware exist or once existed, but are not in the possession of that party. (b) For a party asserting infringement. standard interrogatories (1) The allegedly infringed work's copyright registration, to the extent such information differs from or adds to information provided in the claim or counterclaim; (2) For works requiring copyright formalities, the extent the allegedly infringed work complied with such copyright formalities; (3) The party's ownership of the copyright in the allegedly infringed work; (4) Publication of the allegedly infringed work; (5) The creation date and creation process for the allegedly infringed work, including whether the work is a joint or derivative work or was created through employment or subject to an agreement; (6) Where the allegedly infringed work is a derivative work, the preexisting elements in the work, including ownership of those preexisting elements, and rights to use those preexisting elements; (7) A description of how the party believes the alleged infringer gained access to the allegedly infringed work; (8) The basis for the party's belief that the opposing party's activities constitute infringement of the allegedly infringed work; (9) The discovery of the opposing party's alleged infringement by the party; (10) A description of any harm suffered and, to the extent known, a calculation of the damages requested by the party as a result of the alleged infringement; and (11) Any attempts by the party to cause the infringement to be ceased or mitigated prior to bringing the claim or counterclaim. (c) For a party asserting non-infringement. standard interrogatories (1) The party's ownership of the copyright in the allegedly infringing material; (2) The dissemination history of the allegedly infringing material; (3) The creation date and creation process for the allegedly infringing material, including whether any allegedly infringing work is a joint or derivative work or was created through employment or subject to an agreement; (4) Where the allegedly infringing material is a derivative work, the preexisting elements in the work, including ownership of those preexisting elements, and rights to use those preexisting elements; (5) Any information indicating that the party alleging infringement does not own a copyright in the allegedly infringed work; (6) All defenses to infringement asserted by the party and a detailed basis for those defenses. Defenses listed in timely answers and timely updated answers to the standard interrogatories (7) The basis for any other reasons the party believes that its actions do not constitute infringement; (8) Any continued use or dissemination of the allegedly infringing material; and (9) For a party responding to infringement claims or counterclaims, the revenues and profits the party has received that are directly related to the sale or use of the allegedly infringing material, as well as the deductible expenses directly related to that sale or use, and any elements of profit for that sale or use that the party believes are attributable to factors other than the copyrighted work. (d) For a party asserting misrepresentation. standard interrogatories (1) The notification or counter notification that allegedly contained a misrepresentation; (2) The identity of the internet service provider to which the notification or counter notification was sent; (3) Identification and a description of any communications with the internet service provider, the parties, or others related to the notification or counter notification at issue; (4) The basis for the party's belief that the notification or counter notification included a misrepresentation; and (5) The harm, including a description and calculation of damages, caused by the alleged misrepresentation. (e) For a party responding to misrepresentation claims or counterclaims. standard interrogatories (1) All defenses asserted to the misrepresentation claim or counterclaim and the basis for those assertions. Defenses listed in timely answers and timely updated answers to the standard interrogatories (2) The basis for any other reasons the party believes that its statement did not constitute a misrepresentation; and (3) Identification and a description of any communications with the internet service provider, the parties, or others related to the notification or counter notification at issue. (f) For a counterclaimant asserting a counterclaim arising under an agreement. standard interrogatories (1) Identification and a description of the specific terms or provisions of the agreement the counterclaim respondent is alleged to have violated; (2) The basis for the counterclaimant's belief that the agreement was valid; (3) The basis for the counterclaimant's belief that the agreement was violated; (4) The basis for the counterclaimant's belief that the agreement could affect the relief that might be awarded to the claimant; (5) A description of the counterclaimant's performance under the agreement, as relevant to the counterclaim; (6) Identification and a description of any inadequacies in performance under the agreement by the counterclaim respondent; and (7) If the agreement at issue in the counterclaim is oral, a description of the terms and provisions of the agreement. (g) For a counterclaim respondent responding to a counterclaim arising under an agreement. standard interrogatories (1) All defenses asserted to the counterclaim arising under an agreement and the basis for those assertions. Defenses listed in timely answers and timely updated answers to the standard interrogatories (2) The basis for any other reasons the counterclaim respondent believes that it did not violate the agreement or that the agreement was not valid; (3) The basis for any belief by the counterclaim respondent that the agreement does not affect the relief that might be awarded to the claimant; (4) A description of the counterclaim respondent's performance under the agreement, as relevant to the counterclaim; and (5) Identification and a description of any inadequacies in performance under the agreement by the counterclaimant. (h) Duty to update. [87 FR 30082, May 17, 2022, as amended at 87 FR 77521, Dec. 19, 2022; 88 FR 48380, July 27, 2023] § 225.3 Standard requests for the production of documents. (a) General. active proceeding standard requests for the production of documents Standard requests for the production of documents (1) All documents the party is likely to use in support of its claims, counterclaims, or defenses; (2) All other documents of which the party is reasonably aware that conflict with the party's claims, counterclaims, or defenses in the proceeding; and (3) All documents referred to in, or that were used in preparing, any of the party's responses to standard interrogatories. (b) For a party asserting infringement. standard requests for the production of documents (1) The work claimed to be infringed, its copyright registration, and all correspondence with the Copyright Office regarding that registration; (2) The allegedly infringing material, if reasonably available; (3) Where the allegedly infringed work is a derivative work, documents showing the preexisting works used and related to ownership of and rights to use those preexisting elements; (4) Documents related to the allegedly infringing material, including communications about the allegedly infringing material; (5) Documents showing or negating the ownership or rights of the party claiming infringement in the works at issue, including agreements showing the ownership or transfer or rights in the works; (6) Documents sufficient to show the damages suffered by the party as a result of the alleged infringement; and (7) Documents showing attempts by the party to cause the cessation or mitigation of infringement prior to bringing the claim or counterclaim. (c) For a party asserting non-infringement. standard requests for the production of documents (1) The allegedly infringing material; (2) Documents related to the allegedly infringed work, including communications regarding the allegedly infringed work; (3) Documents related to the creation of the allegedly infringing material, including documents showing or negating rights to use the allegedly infringing material; and (4) For a party responding to infringement claims or counterclaims, documents sufficient to show the revenues and profits the party has received directly related to the sale or use of the allegedly infringing material, as well as the deductible expenses directly related to that sale or use, and the elements of profit for that sale or use that the party believes are attributable to factors other than the copyrighted work. (d) For a party asserting misrepresentation. standard requests for the production of documents (1) The notification or counter notification at issue; (2) Communications with the internet service provider concerning the notification or counter notification at issue; (3) Documents directly pertaining to the truth or falsity of any representations made in the notification or counter notification; and (4) Documents sufficient to show the damages suffered by the party as a result of the alleged misrepresentation. (e) For a party responding to misrepresentation claims or counterclaims. standard requests for the production of documents (1) Communications with the internet service provider concerning the notification or counter notification at issue; and (2) Documents directly pertaining to the truth or falsity of any representations made in the notification or counter notification. (f) For a counterclaimant asserting a counterclaim arising under an agreement. standard requests for the production of documents (1) The agreement at issue in the counterclaim arising under an agreement, including any amendments or revisions; (2) Documents related to the agreement at issue, including any amendments or revisions and documents related to the validity of and the parties' performance under the agreement; and (3) Documents relevant to damages arising out of the counterclaim, including documents sufficient to show the damages suffered by the counterclaimant related to violation of the agreement in question. (g) For a counterclaim respondent responding to a counterclaim arising under an agreement. standard requests for the production of documents (1) The agreement at issue in the counterclaim arising under an agreement, including any amendments or revisions; (2) Documents related to the agreement at issue, including any amendments or revisions and documents related to the validity of and the parties' performance under the agreement; and (3) Documents relevant to damages, including documents sufficient to show the lack of damages suffered by the counterclaimant related to the counterclaim respondent's alleged violation of the agreement in question. (h) Document searches and productions General. (2) Electronically stored information. standard requests for the production of documents, (i) ESI searches need not exceed manual searches that are easily accomplished by a layperson; and (ii) Parties need not conduct searches that would reasonably require the assistance of third parties, such as a document vendor that the party would have to hire to assist with or accomplish document collection or storage. (3) Voluminous productions. bad-faith conduct. (4) Duty to update. standard requests for the production of documents (i) Privileged documents. [87 FR 30082, May 17, 2022; 87 FR 36061, June 15, 2022; 87 FR 77521, Dec. 19, 2022; 88 FR 48381, July 27, 2023] § 225.4 Additional discovery. (a) Requests for additional discovery. (1) Allowable discovery. (2) Standard for additional discovery. (3) Consent from parties. (4) Form of request. (i) Specifically indicate the type of additional discovery requested and the information sought, including the specific requests themselves; (ii) Set forth in detail the need for the request; and (iii) Indicate whether the other parties consent or object to the request. (b) Requests for expert witnesses. (1) Standard for permitting expert witnesses. (2) Form of request. (3) Form of expert testimony. (i) Be sworn under penalty of perjury by the expert witness; (ii) Be organized into numbered paragraphs; (iii) Be detailed as to the substance of the expert's opinion and the basis and reasons therefor; (iv) Disclose the facts or data considered by the expert witness in forming the expert witness's opinions; (v) Describe the expert witness's qualifications, including a list of all publications authored and speaking engagements in the previous 10 years; (vi) Include a list of all other cases in which the expert witness testified as an expert at trial or by deposition during the previous four years; and (vii) Include a statement of the compensation to be paid for the study and testimony in the case. (4) Unauthorized expert testimony. (c) Requests for admission. (1) Subject matter. (i) Facts, the application of law to fact, or opinions about either; and (ii) The genuineness of any described documents, a copy of which must be attached to the request for admission. (2) Form of requests for admission. (3) Responses to requests for admission. (4) Failure to respond. (d) Depositions. § 225.5 Disputes and sanctions. (a) Obligation to attempt resolution. (b) Request for conference to resolve dispute. (1) Describe the dispute; (2) State that party's position with respect to the dispute; (3) Explain the attempts made to resolve the dispute without the involvement of the Board; and (4) Attach any inadequate interrogatory responses or inadequate request for admission responses. (c) Determination by Board. (d) Failure to comply with order. (e) Sanctions Form of request for sanctions. (2) Standard for granting request. (3) Relief. (4) Implications for award of attorneys' fees and costs. final determination.