17 U.S.C. § 1504 — Nature of proceedings

Page 240 TITLE 17—COPYRIGHTS § 1504 cer or Copyright Claims Attorney, as the case may be, has reason to believe that he or she has a conflict of interest. (f) EX PARTE COMMUNICATIONS.—Except as may otherwise be permitted by applicable law, any party to a proceeding before the Copyright Claims Board shall refrain from ex parte com- munications with the Copyright Claims Officers and the Register of Copyrights concerning the substance of any active or pending proceeding before the Copyright Claims Board. (g) JUDICIAL REVIEW.—Actions of the Copy- right Claims Officers and Register of Copyrights under this chapter in connection with the ren- dering of any determination are subject to judi- cial review as provided under section 1508(c) and not under chapter 7 of title 5. (Added Pub. L. 116–260, div. Q, title II, § 212(b), Dec. 27, 2020, 134 Stat. 2179.) § 1504. Nature of proceedings (a) VOLUNTARY PARTICIPATION.—Participation in a Copyright Claims Board proceeding shall be on a voluntary basis in accordance with this chapter, and the right of any party to instead pursue a claim, counterclaim, or defense in a district court of the United States, any other court, or any other forum, and to seek a jury trial, shall be preserved. The rights, remedies, and limitations under this section may not be waived except in accordance with this chapter. (b) STATUTE OF LIMITATIONS.— (1) IN GENERAL.—A proceeding may not be maintained before the Copyright Claims Board unless the proceeding is commenced, in ac- cordance with section 1506(e), before the Copy- right Claims Board not later than 3 years after the claim accrued. (2) TOLLING.—Subject to section 1507(a), a proceeding commenced before the Copyright Claims Board shall toll the time permitted under section 507(b) for the commencement of an action on the same claim in a district court of the United States during the period in which the proceeding is pending. (c) PERMISSIBLE CLAIMS, COUNTERCLAIMS, AND DEFENSES.—The Copyright Claims Board may render determinations with respect to the fol- lowing claims, counterclaims, and defenses, sub- ject to such further limitations and require- ments, including with respect to particular classes of works, as may be set forth in regula- tions established by the Register of Copyrights: (1) A claim for infringement of an exclusive right in a copyrighted work provided under section 106 by the legal or beneficial owner of the exclusive right at the time of the infringe- ment for which the claimant seeks damages, if any, within the limitations set forth in sub- section (e)(1). (2) A claim for a declaration of noninfringe- ment of an exclusive right in a copyrighted work provided under section 106, consistent with section 2201 of title 28. (3) A claim under section 512(f) for misrepre- sentation in connection with a notification of claimed infringement or a counter notifica- tion seeking to replace removed or disabled material, except that any remedies relating to such a claim in a proceeding before the Copy- right Claims Board shall be limited to those available under this chapter. (4) A counterclaim that is asserted solely against the claimant in a proceeding— (A) pursuant to which the counterclaimant seeks damages, if any, within the limita- tions set forth in subsection (e)(1); and (B) that— (i) arises under section 106 or section 512(f) and out of the same transaction or occurrence that is the subject of a claim of infringement brought under paragraph (1), a claim of noninfringement brought under paragraph (2), or a claim of misrepresenta- tion brought under paragraph (3); or (ii) arises under an agreement pertaining to the same transaction or occurrence that is the subject of a claim of infringement brought under paragraph (1), if the agree- ment could affect the relief awarded to the claimant. (5) A legal or equitable defense under this title or otherwise available under law, in re- sponse to a claim or counterclaim asserted under this subsection. (6) A single claim or multiple claims per- mitted under paragraph (1), (2), or (3) by 1 or more claimants against 1 or more respondents, but only if all claims asserted in any 1 pro- ceeding arise out of the same allegedly in- fringing activity or continuous course of in- fringing activities and do not, in the aggre- gate, result in the recovery of such claim or claims for damages that exceed the limita- tions under subsection (e)(1). (d) EXCLUDED CLAIMS.—The following claims and counterclaims are not subject to determina- tion by the Copyright Claims Board: (1) A claim or counterclaim that is not a permissible claim or counterclaim under sub- section (c). (2) A claim or counterclaim that has been fi- nally adjudicated by a court of competent ju- risdiction or that is pending before a court of competent jurisdiction, unless that court has granted a stay to permit that claim or coun- terclaim to proceed before the Copyright Claims Board. (3) A claim or counterclaim by or against a Federal or State governmental entity. (4) A claim or counterclaim asserted against a person or entity residing outside of the United States, except in a case in which the person or entity initiated the proceeding be- fore the Copyright Claims Board and is subject to counterclaims under this chapter. (e) PERMISSIBLE REMEDIES.— (1) MONETARY RECOVERY.— (A) ACTUAL DAMAGES, PROFITS, AND STATU- TORY DAMAGES FOR INFRINGEMENT.—With re- spect to a claim or counterclaim for in- fringement of copyright, and subject to the limitation on total monetary recovery under subparagraph (D), the Copyright Claims Board may award either of the following: (i) Actual damages and profits deter- mined in accordance with section 504(b), with that award taking into consideration, in appropriate cases, whether the infring- ing party has agreed to cease or mitigate Page 241 TITLE 17—COPYRIGHTS § 1505 the infringing activity under paragraph (2). (ii) Statutory damages, which shall be determined in accordance with section 504(c), subject to the following conditions: (I) With respect to works timely reg- istered under section 412, so that the works are eligible for an award of statu- tory damages in accordance with that section, the statutory damages may not exceed $15,000 for each work infringed. (II) With respect to works not timely registered under section 412, but eligible for an award of statutory damages under this section, statutory damages may not exceed $7,500 per work infringed, or a total of $15,000 in any 1 proceeding. (III) The Copyright Claims Board may not make any finding that, or consider whether, the infringement was com- mitted willfully in making an award of statutory damages. (IV) The Copyright Claims Board may consider, as an additional factor in awarding statutory damages, whether the infringer has agreed to cease or miti- gate the infringing activity under para- graph (2). (B) ELECTION OF DAMAGES.—With respect to a claim or counterclaim of infringement, at any time before final determination is ren- dered, and notwithstanding the schedule es- tablished by the Copyright Claims Board under section 1506(k), the claimant or counterclaimant shall elect— (i) to recover actual damages and profits or statutory damages under subparagraph (A); or (ii) not to recover damages. (C) DAMAGES FOR OTHER CLAIMS.—Damages for claims and counterclaims other than in- fringement claims, such as those brought under section 512(f), shall be subject to the limitation under subparagraph (D). (D) LIMITATION ON TOTAL MONETARY RECOV- ERY.—Notwithstanding any other provision of law, a party that pursues any 1 or more claims or counterclaims in any single pro- ceeding before the Copyright Claims Board may not seek or recover in that proceeding a total monetary recovery that exceeds the sum of $30,000, exclusive of any attorneys’ fees and costs that may be awarded under section 1506(y)(2). (2) AGREEMENT TO CEASE CERTAIN ACTIVITY.— In a determination of the Copyright Claims Board, the Board shall include a requirement to cease conduct if, in the proceeding relating to the determination— (A) a party agrees— (i) to cease activity that is found to be infringing, including removing or disabling access to, or destroying, infringing mate- rials; or (ii) to cease sending a takedown notice or counter notice under section 512 to the other party regarding the conduct at issue before the Board if that notice or counter notice was found to be a knowing material misrepresentation under section 512(f); and (B) the agreement described in subpara- graph (A) is reflected in the record for the proceeding. (3) ATTORNEYS’ FEES AND COSTS.—Notwith- standing any other provision of law, except in the case of bad faith conduct as provided in section 1506(y)(2), the parties to proceedings before the Copyright Claims Board shall bear their own attorneys’ fees and costs. (f) JOINT AND SEVERAL LIABILITY.—Parties to a proceeding before the Copyright Claims Board may be found jointly and severally liable if all such parties and relevant claims or counter- claims arise from the same activity or activi- ties. (g) PERMISSIBLE NUMBER OF CASES.—The Reg- ister of Copyrights may establish regulations re- lating to the permitted number of proceedings each year by the same claimant under this chap- ter, in the interests of justice and the adminis- tration of the Copyright Claims Board. (Added Pub. L. 116–260, div. Q, title II, § 212(b), Dec. 27, 2020, 134 Stat. 2181.) § 1505. Registration requirement (a) APPLICATION OR CERTIFICATE.—A claim or counterclaim alleging infringement of an exclu- sive right in a copyrighted work may not be as- serted before the Copyright Claims Board un- less— (1) the legal or beneficial owner of the copy- right has first delivered a completed applica- tion, a deposit, and the required fee for reg- istration of the copyright to the Copyright Of- fice; and (2) a registration certificate has either been issued or has not been refused. (b) CERTIFICATE OF REGISTRATION.—Notwith- standing any other provision of law, a claimant or counterclaimant in a proceeding before the Copyright Claims Board shall be eligible to re- cover actual damages and profits or statutory damages under this chapter for infringement of a work if the requirements of subsection (a) have been met, except that— (1) the Copyright Claims Board may not render a determination in the proceeding until— (A) a registration certificate with respect to the work has been issued by the Copy- right Office, submitted to the Copyright Claims Board, and made available to the other parties to the proceeding; and (B) the other parties to the proceeding have been provided an opportunity to ad- dress the registration certificate; (2) if the proceeding may not proceed further because a registration certificate for the work is pending, the proceeding shall be held in abeyance pending submission of the certificate to the Copyright Claims Board, except that, if the proceeding is held in abeyance for more than 1 year, the Copyright Claims Board may, upon providing written notice to the parties to the proceeding, and 30 days to the parties to respond to the notice, dismiss the proceeding without prejudice; and (3) if the Copyright Claims Board receives notice that registration with respect to the