Petrella v. Metro-Goldwyn-Mayer, Inc.
2014 U.S. LEXIS 3311, 572 U.S. 663, 188 L. Ed. 2d 979 (2014)
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Rule of Law:
The equitable defense of laches cannot bar a claim for damages in a copyright infringement action that is brought within the three-year statute of limitations prescribed by the Copyright Act, 17 U.S.C. § 507(b). However, a plaintiff's unreasonable delay may be considered by a court at the remedies stage when fashioning equitable relief, such as an injunction or an accounting of profits.
Facts:
- Frank Petrella co-authored and registered a copyright for a screenplay in 1963 based on the life of boxer Jake LaMotta.
- In 1976, Frank Petrella assigned his rights in the work, including renewal rights, to a production company.
- In 1978, Metro-Goldwyn-Mayer, Inc. (MGM) acquired the motion picture rights to the screenplay and released the film 'Raging Bull' in 1980.
- Frank Petrella died in 1981, and under the Copyright Act, his renewal rights reverted to his heirs, separate from his original assignment.
- His daughter, Paula Petrella, renewed the copyright to the 1963 screenplay in 1991, becoming its sole owner.
- In 1998, Petrella's attorney informed MGM that she owned the renewed copyright and that MGM's continued exploitation of 'Raging Bull' constituted infringement.
- Between 1998 and 2000, counsel for both parties exchanged letters in which MGM denied infringement and Petrella threatened legal action.
- MGM continued to market and distribute the film in various formats for years after being notified of Petrella's claim.
Procedural Posture:
- On January 6, 2009, Paula Petrella filed a copyright infringement suit against MGM in the U.S. District Court for the Central District of California.
- Petrella's complaint sought damages and injunctive relief only for acts of infringement occurring on or after January 6, 2006, in compliance with the three-year statute of limitations.
- MGM moved for summary judgment, asserting that the doctrine of laches barred the entire suit due to Petrella's 18-year delay in filing since her copyright renewal.
- The District Court granted summary judgment in favor of MGM, ruling that laches completely barred Petrella's complaint.
- Petrella, as the appellant, appealed the decision to the U.S. Court of Appeals for the Ninth Circuit, with MGM as the appellee.
- The Ninth Circuit affirmed the trial court's dismissal, holding that its precedent allowed laches to bar a copyright claim even when brought within the statutory limitations period.
- The U.S. Supreme Court granted certiorari to resolve a conflict among the circuit courts on the issue.
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Issue:
Does the equitable defense of laches bar a claim for copyright infringement damages brought within the three-year statutory limitations period provided by the Copyright Act?
Opinions:
Majority - Justice Ginsburg
No. The equitable defense of laches cannot defeat a copyright infringement claim for damages that is brought within the three-year limitations period mandated by Congress. When Congress enacts a statute of limitations, it establishes a legislative judgment on the timeliness of a suit that courts are not at liberty to override with a judge-made equitable doctrine. The Copyright Act's three-year look-back period itself accounts for delay; a plaintiff forfeits damages for any infringement that occurred more than three years before the complaint was filed, which is the statutory consequence for delay. The separate-accrual rule further establishes that each new infringing act starts a new limitations period, and a delay in suing for past acts does not bar a timely suit for new ones. While laches cannot bar the suit itself, a plaintiff's delay can be taken into account by the court at the remedial stage when considering equitable relief, such as injunctions or the calculation of profits.
Dissenting - Justice Breyer
Yes. The equitable defense of laches should be available in extraordinary cases to bar a copyright claim, even if brought within the three-year statute of limitations, to prevent inequity. The Copyright Act's rolling statute of limitations allows a plaintiff to wait for decades while a defendant invests significant resources into a work, and then sue only when the work becomes profitable, which is profoundly unfair. The statute's silence on laches does not demonstrate congressional intent to eliminate this longstanding equitable defense, which exists to correct the law where its strict application would be unjust. The majority's holding creates an imbalance, preserving equitable doctrines that help plaintiffs (like tolling) while eliminating one that can protect defendants from prejudicial delay and 'lie-in-wait' litigation tactics.
Analysis:
This decision solidifies the supremacy of a congressionally mandated statute of limitations over the judicially created defense of laches in the context of copyright law. The ruling resolves a circuit split and significantly curtails the ability of courts, particularly in the Ninth Circuit, to dismiss copyright infringement claims for damages on timeliness grounds if filed within the statutory three-year window. It empowers copyright holders by allowing them to wait to sue until litigation is financially viable without forfeiting their right to damages for recent infringements. However, by preserving judicial discretion to consider delay at the remedies stage, the Court balances this empowerment with a mechanism to prevent defendants from facing grossly inequitable outcomes, especially regarding forward-looking injunctions.
