One Decision in One Year: The Copyright Claims Board’s Inaugural Work & Its Statutory Past

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This June marked one year of operations for the Copyright Claims Board (Board).[2] The Board serves copyright holders who seek to bring small claims actions against those who they believe are infringing their copyright protections.[3] The Board is governed by the United States Copyright Office, but received its authorization from Congress after the passage of the Copyright Alternative in Small Claims Enforcement Act (CASE Act) in 2020.[4] The statutory origins of the Board reflect a congressional desire to create a user-friendly alternative dispute process for copyright holders; however, a review of the Board’s docket and decision history suggest that the public misunderstands the Board’s role.[5] As a result, this blog seeks to reintroduce the Board as an alternative adjudicator as well as highlight significant milestones from the Boards first year to provide future users insight on what to expect.[6]

Prior to the CASE Act, copyright holders needed to initiate suit in federal court, but for many copyright holders, the small damage reward relative to the large financial burden of obtaining such a reward has barred them from taking action in court.[7] Congress aimed to reduce barriers for copyright holders by creating the Board, which includes entirely remote proceedings, a voluntary classification, an online interface that guides pro se parties on the dispute process step-by-step, and expedition of the review process by only handling certain copyright issues.[8] The statute authorizes a claimant to bring one or a combination of the following three actions: (1) a copyright infringement claim, (2) a request for declaration of noninfringement, and (3) a claim of misrepresentation when filing a Digital Millennium Copyright Act notice.[9] In addition, the statute caps claimants’ monetary damages to $30,000 for total damages.[10]

Surprisingly, in its first year, the Board only decided one case on the merits.[11] The Board decided one other case by granting the parties’ request for dismissal.[12] Likewise, the majority of claims submitted to the Board did not go before the tribunal, for reasons such as the claim did not meet one of the statutory requirements or a party voluntarily closed the dispute.[13] As a result, the Board’s sole final decision from its first year was Oppenheimer v. Prutton.[14]

In early 2023, Oppenheimer asserted that Prutton impermissibly displayed his copyrighted image of a California courthouse on his website.[15] In light of this, Oppenheimer sent Prutton a letter in 2019 asking for removal of the image from the website, which Prutton says he complied with.[16] Oppenheimer initially filed suit in the Northern District of California prior to the Board commencing operations.[17] The district court referred the claim to the Board in accordance with 17 U.S.C. § 1509(b).[18]

In the proceeding, Prutton argued that his use of the photograph constituted fair use and alleged Oppenheimer came into the dispute with unclean hands.[19] Prutton’s fair use argument depended on the tribunal determining that there was no effect on a commercial market from his infringing activities because Oppenheimer had never actually licensed or sold copies of the disputed image.[20] The tribunal rejected this argument by finding that a market for the photograph existed due to previous licensing activities by Oppenheimer.[21] Prutton’s additional unclean hands defense alleged that Oppenheimer’s unreasonableness during settlement negotiations, and his frequent history of copyright litigation amounted to the unfair and fraudulent behavior needed to satisfy the rarely used defense.[22] The tribunal quickly disregarded the argument that the amount of litigation brought by a copyright holder amounts to unfair or fraudulent behavior because it would “take away the right of copyright owners to sue for actual infringement.”[23] Likewise, the tribunal found that Prutton did not offer evidence to suggest Oppenheimer acted beyond the scope of an ordinary copyright holder enforcing their legal rights against an infringer.[24] Ultimately siding with Oppenheimer, the Board determined that $1,000 in damages was sufficient to rectify the harm from the infringement.[25]

Revisiting the Oppenheimer decision and the Board’s statutory requirements sheds light on what future parties may expect from the tribunal so they can utilize the procedures to their advantage.[26] Notably, the outcome in Oppenheimer, and its likely forecast of similarly rigorous decisions to come, assuaged the concerns of Board skeptics who had objected that the tribunal could allow unreasonable damages and create unjustified windfalls for copyright litigators.[27] Moreover, law schools with intellectual property clinics and IP focused non-profits have an opportunity to help qualified claimants bring successful actions by taking the time to understand the Board’s procedures and statutory requirements.[28] These sources of advocacy are also poised to serve as conduits for feedback for the Board based on their experiences with the Board and actual copyright holders, allowing for future self-correction.[29]

References: [1] Nick Youngson, Copyright Infringement (photograph) in Picpedia.org (last visited Oct 30, 2023) (CC BY-SA 3.0). [2] See Holland Gormley, The Copyright Claims Board Celebrates Its First Year, Libr. of Cong. Blogs (June 26, 2023), https://blogs.loc.gov/copyright/2023/06/the-copyright-claims-board-celebrates-its-first-year/ (acknowledging one year mark for Board). [3]See id. (providing background). [4]See Copyright Services: Small Claims/Copyright Claims Board/ Case Act, Cornell Univ. Libr. (last visited Oct. 29, 2023), https://guides.library.cornell.edu/c.php?g=999376&p=9555454 (describing controlling government branch). [5]See Jonathan Bailey, One Year of the Copyright Claims Board, Plagiarism Today (June 20, 2023), https://www.plagiarismtoday.com/2023/06/20/one-year-of-the-copyright-claims-board/ (highlighting weaknesses of Board). [6]See Gormley, supra note 2 (providing educational materials for public). [7]See Reflections on the First Year of Operation of the Copyright Claims Board, Crowell: Insights (June 30, 2023), https://www.crowell.com/en/insights/client-alerts/reflections-on-the-first-year-of-operation-of-the-copyright-claims-board#:~:text=Conclusion,copyright%20owners%20of%20all%20sizes (reflecting Congressional goals for Board). [8]See Frequently Asked Questions, Copyright Claims Board, https://ccb.gov/faq/ (last visited Sept. 17, 2023) (outlining procedures for Board disputes). [9] See id. (explaining types of permissible claims). [10] See id. (explaining damages caps for claims). [11]See Reflections on the First Year of Operation of the Copyright Claims Board, supra note 6 (contextualizing Board decision). [12] See Rachel Fertig et al., What We’ve Learned from Ten Months of Copyright Claims Board Proceedings: Eight Things for Companies to Consider, DLA Piper: Insights (Apr. 25, 2023), https://www.dlapiper.com/en/insights/publications/intellectual-property-and-technology-news/2023/what-weve-learned-from-ten-months-of-copyright-claims-board-proceedings (examining Board decisions). [13]See Oppenheimer v. Prutton, 22-CCB-0045, at 1 (C.C.B. Feb. 28, 2023) (introducing decision from tribunal). [14]See id; Bailey, supra note 5 (explaining reasons for few final decisions). [15]See Oppenheimer, 22-CCB-0045, at 2 (highlighting importance of Board). [16] See id. (offering procedural context). [17] See id. at 1. [18] See id. [19]See id. at 3 (explaining respondent defenses against claims). [20]See id. at 3-4 (analyzing respondent defenses). [21]See id. at 3 (describing Board rejection of fair use defense). [22]See id. at 5 (providing basis for unclean hands defense). [23]See id. at 5 (detailing Board rejection of unclean hands defense). [24] See id. at 6 (furthering justification for claimant success). [25]See id. (offering analysis regarding claimant damages award). [26]See Fertig, supra note 12 (listing advantageous uses of Board procedures). [27]See Rachel Kim, Lessons Creators Can Learn From the First CCB Decision, Copyright Alliance (Mar. 14, 2023), https://copyrightalliance.org/lessons-creators-first-ccb-decision/ (illustrating significance of final decision). [28] See Gormley, supra note 2 (offering suggestions for better utilizing Board). [29] See id. (considering ways for collaboration between public and Board).