Petrella v. MGM
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On May 19, 2014, in Petrella v. MGM, the U.S. Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the allowed three-year window from a particular act of infringement — even though the owner brought suit several decades after she inherited her father’s copyright in a screenplay that was later made into 1980 boxing film, “Raging Bull.”
Laches is an equitable defense that bars a plaintiff’s unreasonably delayed claims. In Petrella, the daughter and heir of screenwriter Frank Petrella sued MGM in 2009, alleging that the “Raging Bull” film constituted an unauthorized exploitation of Petrella’s derivative rights.
Although Petrella was asserting her rights nearly 30 years after MGM released the film, she sought damages only for acts of infringement occurring within the three-year statute of limitations set forth in the Copyright Act, i.e., from 2006 to the filing of her complaint.
Nonetheless, the Central District of California, and subsequently the Ninth Circuit, held that Petrella’s claim was barred by laches. Both courts agreed that Petrella’s delay was unreasonable, and that the delay prejudiced the defendants, both from a commercial and evidentiary standpoint.
At oral arguments in January, the Justices actively debated Congress’ intended purpose for the three-year statute of limitations provision, and whether Congress’ purpose was distinct from the underlying policy objectives of laches. Furthermore, the Court considered, if laches and the statute of limitations can in fact coexist, should laches bar the plaintiff from obtaining injunctive relief, damages or both?
The Court’s decision to reverse the lower courts’ rulings resolved a circuit split at the appellate level, where in copyright cases, some courts had applied the laches defense and others had not. The Court held that the lower courts had erred in “failing to recognize that the copyright statute of limitations, §507(b), itself takes account of delay.”
The Copyright Act provides both equitable and legal remedies for infringement: an injunction “on such terms as [a court] may deem reasonable to prevent or restrain infringement of a copyright,” §502(a); and, at the copyright owner’s election, either (1) the “owner’s actual damages and any additional profits of the infringer,” 504(a)(1), which Petrella sought in the case, or (2) specified statutory damages, §504(c).
The Act’s statute of limitations (§507(b)) provides: “No civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.” A claim ordinarily accrues when an infringing act occurs.
However, under the separate-accrual rule that attends the copyright statute of limitations, when a defendant has committed successive violations, each infringing act starts a new limitations period.
The Petrella opinion emphasizes that the Court has “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.”
Rather, the Court stated that laches is a “gap-filling, not legislation-overriding” measure that is appropriate only when there is not an explicit statute of limitations.
- May 19, 2014 – U.S. Supreme Court hands down decision
- Jan. 21, 2014 – U.S. Supreme Court hears oral argument
- Oct. 1, 2013 – U.S. Supreme Court grants Petrella’s petition for a writ of certiorari
- April 30, 2013 – Petrella files petition for a writ of certiorari
- Aug. 29, 2012 – U.S. Court of Appeals for the Ninth Circuit issues decision
- Feb. 1, 2012 – U.S. Court of Appeals for the Ninth Circuit hears oral argument
- U.S. Supreme Court decision
- U.S. Supreme Court oral argument
- Petrella’s petition to U.S. Supreme Court
- U.S. Court of Appeals for the Ninth Circuit decision
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