Waiting Too Long to Bring Copyright Infringement Suit – Laches No Bar Claim If Any Infringement Within Three Years

The Supreme Court, in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), (available here), held that the defense of laches was not available to preclude adjudication of copyright infringement action brought within 17 U.S.C.S. § 507(b)’s 3-year limitations period for civil action under Copyright Act (17 U.S.C.S. § 101 et seq.).

The allegedly infringing work is the motion picture Raging Bull.  In 1976, the original authors assigned the screenplay, which was later acquired by United Artists, a subsidiary of Metro-Goldwyn-Mayer, Inc. (“MGM”).  In 1980, MGM released, and registered a copyright in, Raging Bull.  Petrella acquired the renewal rights to the screenplay as an heir to the author.  The renewal rights reverted to the heirs, who could renew the copyrights unburdened by any assignment previously made by the author.  In 1991, Petrella renewed the copyright.  Seven after the renewal, Petrella in 1998 advised MGM that Raging Bull violated her copyright.  Some nine years later, on January 6, 2009, Petrella filed an infringement suit limited to acts occurring on or after January 6, 2006.  MGM moved for summary judgment that Petrella’s 18 year delay in filing suit was unreasonable and prejudicial to MGM.  The District Court granted MGM’s motion holding that laches barred Petrella’s suit.  The Ninth Circuit affirmed.  The Supreme Court reversed.

The Supreme Court found that in the face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief.  Petrella sought no relief for conduct occurring outside § 507(b)’s three-year limitations period. The Court also found that there is nothing untoward about a copyright owner delaying suit and waiting to see whether an infringer’s exploitation undercuts the value of the copyrighted work, has no effect on the original work or even complements it.  In addressing MGM’s arguments, and in distinguishing between laches and estoppel, the Court stated that when a copyright owner engages in intentionally misleading representations concerning his abstention from suit, and the alleged infringer detrimentally relies on the copyright owner’s deception, the doctrine of estoppel may bar the copyright owner’s claims completely, eliminating all potential remedies.  However, the courts below did not address the estoppel plea.

This present case was not extraordinary where the consequences of a delay in commencing suit maybe of sufficient magnitude to warrant, at the very outset of the litigation, curtailment of the relief equitably awardable.  The Court found that Petrella notified MGM of her copyright claim before MGM invested millions of dollars in creating a new edition of Raging Bull.  And the relief sought, disgorgement of unjust gains and an injunction against future infringement, would not result in “total destruction” of the film or anything close to it.

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