In 2011, the United States Congress requested that the national Copyright Office report on the challenges facing copyright owners in resolving small copyright claim disputes through the current federal system.
At present, copyright disputes are governed by federal law and adjudicated in federal district courts. Litigants typically benefit from proceedings which are held before highly-skilled judges, accustomed to interpreting and applying federal law, including the Copyright Act. Unfortunately, many copyright owners lack the time, money and patience to bring federal lawsuit and view the federal court as inaccessible when seeking damages of a relatively modest nature.
In response to these concerns, the Copyright Office conducted an examination into whether Congress should consider alternative processes to facilitate a more efficient resolution of small claims. The Copyright Office recently published its Report on 30 September 2013.
The Report makes the following recommendations:
- Congress should form a centralised tribunal within the Copyright Office, tasked with administering proceedings by way of online and teleconferencing facilities. This would remove the need for litigants to appear in person.
- The tribunal would employ three adjudicators: two highly skilled in copyright matters and the third experienced in alternative dispute resolution.
- Proceedings before the tribunal would be a voluntary alternative to federal court, focussing on small infringement cases valued at less than US$ 30,000 in terms of damages.
- Copyright owners would be required to register their works, or have filed an application to register their works, prior to initiating proceedings before the tribunal. US law currently requires that copyright owners register their works with the Copyright Office before bringing an infringement lawsuit. In its Report, the Copyright Office recommends that the tribunal still require registration of a copyright work; however, registration need only be obtained up to the date on which the tribunal issues its decision.
- If a respondent is notified of a claim before the tribunal, he or she must opt-out of the process or consent to it in writing. The tribunal will have the ability to make determinations in respect of damages as well as declaratory judgments relating to the infringement or non-infringement of a copyright work. A respondent would have access to all available defences arising under the Copyright Act or other relevant law, including fair use.
- Streamlined proceedings are envisioned, with limited options for discovery. Submissions would be made by parties in writing and hearings would be conducted via teleconference (or similar).
- Tribunal decisions would be binding only with respect to the parties involved and the issues concerned. Determinations would have no precedential effect. However, any perceived errors in the decision-making process would be eligible for review and could be challenged at a federal level for fraud, misconduct etc. If necessary, orders made by the tribunal may be brought before a federal court to guarantee enforcement.
With some commentators believing that the tribunal “may have a bigger impact than the Digital Millennium Copyright Act”2, the published Report represents an important development in the move to implement law changes affecting low-to-mid income level copyright work owners in the United States.
As in the United States, New Zealand does not currently allow for copyright (or other intellectual property rights) owners to bring proceedings before a specialist “small claims” court. The New Zealand Disputes Tribunal is often thought of as a more cost-effective solution for petitioning court action; however, the Disputes Tribunal specifically excludes disputes concerning intellectual property (Section 11, Disputes Tribunals Act 1988).
As for our Copyright Tribunal, it only hears disputes regarding licensing schemes and infringing file sharing under the Copyright Act 1994. Recently, the Ministry of Business, Innovation and Employment (“MBIE”) and the Intellectual Property Office of New Zealand (IPONZ) have proposed specific guidelines for copyright enforcement, working alongside New Zealand Customs. However, these guidelines are yet to be formally adopted. For now, as in the United States, complaints must generally be filed in the High Court – a system that can prove inaccessible for the average rights holder representing itself.
Similarly, Australia has not implemented a “small claims” copyright process. However, an independent Copyright Tribunal has been established under the Copyright Act 1968 and is authorised to decide on issues concerning licensing and royalties.
Talk to our experts for assistance in arriving at the most practical and commercially viable solution for resolving any IP dispute, both in New Zealand and overseas.
2 Art Neill, Proposed Copyright Small Claims Court May Have A Bigger Impact Than The DMCA, 7 December 2012, www.techdirt.com.