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Federal Register / Vol. 86, No. 186 / Wednesday, September 29, 2021 / Proposed Rules claims. The Office recognized that Congress did not establish a blanket opt-out for any entities other than libraries and archives, 89 and yet the Office also recognizes that the result of an opt-out is a dismissal without prejudice, leaving a claimant open to file substantially the same claim again.
The proposed rule is crafted in light of the Offices inability to impose a blanket opt-out, but still seeks to avoid subjecting a respondent to refiled claims.
Not included in this proposed rule is a specific mechanism for a respondent to revoke an opt-out for a particular claim. The Office recognizes that there may be situations where respondents may wish to change their minds and opt in to a proceeding that was previously filed with the CCB and dismissed due to a prior opt-out election.90 The Office welcomes comment on whether the regulatory text should include a provision permitting a respondent to give the CCB notice of an intention to participate after an initial opt-out, and, if so, any suggestions for regulatory language to govern this process.
The Office also solicited comments regarding whether it should create a publicly accessible list of entities or individuals who have opted out of particular proceedings.91 At present, given the limited time before the anticipated commencement of CCB
operations and the need to focus on establishing the core proceedings of the CCB, the proposed rule does not provide for a public list of prior opt outs. The Office may, however, revisit this issue in the future.
G. Response
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A respondent who decides not to opt out of the proceeding must file a response to the claim with the CCB. The response may include legal or equitable defenses under this title or otherwise available under law 92 in response to the claim. A respondent who timely waives service has an additional thirty days to file a response in addition to any deadlines set forth by the CCB.93 The statute is otherwise silent as to the timing of a response filing, and a proceeding is considered active prior to the filing of any 89 86

FR at 16161.
example, a claimant could file a federal lawsuit after the respondent opts out of a CCB
claim. The statute contemplates that the parties could agree to a CCB proceeding in lieu of further litigation. See 17 U.S.C. 1504d2.
91 86 FR at 16161.
92 17 U.S.C. 1504c5.
93 Id. at 1506g7B.

response.94 Given that a scheduling order must be sent out upon confirmation that a proceeding has become an active proceeding 95i.e., upon the filing of proof of service and the passing of the opt-out windowthe Office understands this requirement to mean that any response timeline is to be set forth after the proceeding becomes active and should be included in the scheduling order. Accordingly, the scheduling order issued by the CCB
upon confirmation that a proceeding has become an active proceeding will include a thirty-day deadline from the date of the scheduling order for filing the response. If the respondent has waived service, thereby availing itself of an extra thirty days to respond to the claim, the order will require that the response be filed within sixty days of the date of the scheduling order.
The Office proposes that to respond to a claim, the respondent must complete the appropriate form provided by the CCB and submit the completed form through the Boards electronic filing and document management system. If a respondent is unable to use the electronic filing and document management system, it may submit a response by following alternative submission instructions provided in the form or by the CCB. In addition to identifying information and certification, the form will ask for short statements from the respondent disputing the facts of the claim and describing the dispute or the reasons claimants claim has no merit from its point of view. As discussed below, the respondent will be able to raise counterclaims. For infringement claims, the form will allow the respondent to identify relevant defenses. In contrast to the Federal Rules of Civil Procedure,96
however, the proposed regulation does not provide that a defense that is not asserted in a response is waived by the respondent. At this early stage of the proceeding, such a rigid application of pleading requirements would impose an unjustifiable burden on respondents, especially those who are representing themselves. A subsequent rulemaking will address the appropriate stage at which defenses must be raised.
The proposed rule also allows optional documentation to be attached to the response form, including copies of the works involved in the claim. In requesting this information, the Office is
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94 Id. at 1506i. A proceeding is deemed active when proof of service has been filed by the claimant and the respondent does not submit an opt-out notice to the CCB within the 60-day period. Id.
95 Id. at 1506k.
96 Fed. R. Civ. P. 12h.

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seeking to provide respondents with the opportunity to meaningfully respond during the initial stage of the proceeding.
For the response, the Office is particularly interested in comments on an appropriate presentation of possible defenses available to the respondent, any instructional or educational material that would assist the respondent in constructing its response, and any other suggestions that would enhance the respondents ability to be meaningfully heard and the claimant to be on notice of defenses.97 With respect to defenses, the Office seeks comment on whether providing a list of defenses or a link to lists of defenses that are commonly pleaded in copyright infringement suits would be productive at this, or any, stage in the case, and how to ensure that a respondent understands the defenses available and only asserts those that are applicable.
H. Counterclaims The CCB may also hear counterclaims that either arise under section 106 or section 512f and out of the same transaction or occurrence that is the subject of a claim of infringement, . . .
a claim of noninfringement, . . . or a claim of misrepresentation, 98 or arise under an agreement pertaining to the same transaction or occurrence that is the subject of a claim of infringement . . . if the agreement could affect the relief awarded to the claimant. 99 Any asserted counterclaim is subject to the same compliance review applicable to an initial claim 100
and is subject to dismissal for unsuitability.101
The Office proposes that the information required to assert a counterclaim should closely mirror the information required to assert a claim. A
counterclaim must be filed at the time of the response, unless the Board, for good cause, permits it to be asserted later in the proceeding. This approach resembles the general requirement of asserting a compulsory counterclaim in federal court.102 In proposing this approach, the Office is seeking to maintain an efficient, orderly procedure that provides parties sufficient notice as to the issues involved in the proceeding.
The requirements for responding to a counterclaim largely mirror the requirements for responding to a claim, including that a failure to file a response 97 H.R.

Rep. No. 116252, at 22.
U.S.C. 1504c4Bi.
99 Id. at 1504c4Bii.
100 Id. at 1506f2.
101 Id. at 1506f3.
102 Fed. R. Civ. P. 13a.
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