Authors: Margaret A. Esquenet, Danielle Wright Bulger
The Supreme Court granted certiorari in Petrella v. Metro-Goldwyn-Mayer, which could have far reaching implications for the defense of laches in civil copyright claims. 695 F.3d 946 (9th Cir. Cal. 2012). Oral arguments for the case were heard on January 21, 2014.
The Petrella suit stems from a book and two screenplays about retired boxer Jake LaMotta’s life, which ultimately became the basis for the 1980 movie Raging Bull. The book copyright registration listed LaMotta and Frank Petrella as co-authors. The registered 1973 screenplay listed Petrella as the sole author, yet the title page mentioned that the book was written “in collaboration with” LaMotta. Additionally, the copyright registration of the screenplay noted that Raging Bull was a “screenplay form of the book of the same name.” The ownership issues were further complicated in 1976 when Petrella and LaMotta assigned copyrights in the book and “in and to those certain screenplays based on [the book] which were written in 1963 and 1973” to Chartoff-Winkler, who assigned those same rights to United Artists Corporation, a wholly owned subsidiary of Metro-Goldwyn-Mayer Studios, Inc. (hereinafter “MGM”) in 1978.
When Petrella died, his renewal rights in the works passed to his daughter, Paula Petrella. Ms. Petrella filed a copyright renewal application for the screenplay in 1991. In 1998, Ms. Petrella’s attorney contacted the defendants claiming that as heir, she had rights to the work and that all derivative works, including the Raging Bull movie were thus infringing. In subsequent communications ending in 2000, Ms. Petrella repeatedly threatened legal action. No suit commenced, however, until nine years later in 2009─post the release of the 25th Anniversary Edition of the film.
The United States District Court for the Central District of California granted MGM’s motion for summary judgment, holding that Petrella’s claims were barred by the equitable defense of laches. The Ninth Circuit affirmed, finding that the laches defense prevents recovery for a plaintiff “who with full knowledge of the facts, acquiesces in a transaction and sleeps on his rights.” The appeals court confirmed that defendant MGM clearly proved all of the underlying elements of the defense including, “1) the plaintiff delayed in initiating the lawsuit; 2) the delay was unreasonable; and 3) the delay resulted in prejudice.” Ms. Petrella filed a petition for a writ of certiorari with the Supreme Court, which was granted.
The Supreme Court will now decide the question of “[w]hether the non-statutory defense of laches is available without restriction to bar all remedies for civil copyright claims filed within the three-year statute of limitations prescribed by Congress, 17 U.S.C. § 507(b).” In essence, the court will determine whether the laches defense is applicable to claims that are brought within the three-year statute of limitations because an allegedly infringing act occurred during the three year period prior to the suit.
Ms. Petrella argues that laches should not be a defense because a separate claim accrued every time the copyright was infringed, thus each claim was actionable for three years, even if earlier claims would be time-barred. She also asserts that laches is not a bar to injunctive relief or damages, otherwise copyright holders would be deprived of their right to exclude infringers.
MGM asserts that the lower courts did not abuse their discretion in finding that Ms. Petrella slept on her rights and that her claims are thus time-barred. MGM further argues that where the elements of laches are otherwise established, the separation of powers doctrine does not preclude the court from applying the laches defense because Congress intended “that courts retain their equitable powers in adjudicating copyright claims.”
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