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Availability (or Lack Thereof) of a Laches Defense to a Copyright Infringement Action Under 17 U.S.C. §507(B)

AlertPetrella v. Metro-Goldwyn-Mayer, Inc.
05.23.2014
By Colin W. Turner

Issue: Whether the equitable defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief for a copyright infringement claim brought within the three-year limitations period of 17 U.S.C. §507(b).

Case History: Frank Petrella was the writer of the screenplay for the award-winning film "Raging Bull" starring Robert De Niro as boxing champion Jake LaMotta. Petrella obtained a copyright registration for the screenplay in 1963. In 1976, he assigned his rights in the screenplay to Chartoff-Winkler Productions, Inc. Shortly therafter, a subsidiary of Metro-Goldwyn- Mayer, Inc. acquired the motion picture rights which were "stated by the parties to be 'exclusive and forever, including all periods of copyright and renewals and extensions thereof.'"

When Petrella died in 1981, his renewal rights reverted to his heirs "who could renew the copyrights unburdened by any assignment previously made by the author," as an "assignee may continue to use the [originally assigned work] only if the author's successor transfers the renewal rights to the assignee."

Petrella's daughter renewed the copyright in the screenplay in 1991. Despite making numerous threats of legal action against MGM over the years beginning in 1998, Petrella's daughter did not file suit against MGM for copyright infringement of the screenplay until January 6, 2009.

17 U.S.C. §507(b) provides a three-year statute of limitations period within which a claim for copyright infringement must be filed. It "bars relief of any kind for [allegedly infringing activity] occurring prior to the three-year limitations period." A claim "accrues" as soon as an act of infringement takes place. When an infringer "commits successive violations, the statute of limitations runs separately from each violation." In other words, each subsequent act of infringement starts a brand new
limitations period, and "the infringer is insulated from liability for earlier infringements of the same work."

Petrella's daughter acknowledged in her suit that, due to the three year statute of limitations of §507(b), she could not be awarded relief for any acts of infringement that occurred prior to January 6, 2006. However, MGM moved for summary judgment, asserting the doctrine of laches. MGM argued that Petrella should be completely barred from any recovery for her 18-year delay (1991 to 2009), as such a delay was "unreasonable and prejudicial." The District Court granted the motion
and the 9th Circuit affirmed.

Supreme Court Holding: In a 6-3 decision, the Court ruled that "[l]aches…cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window." However, "laches may bar at the very threshold the particular relief requested by the plaintiff" in "extraordinary circumstances." The extent of any delay in a plaintiff bringing suit "can always be brought to bear at the remedial stage, in determining appropriate injunctive relief, and in assessing 'the profits of
the infringer…attributable to the infringement.'"

The statute of limitations found in 17 U.S.C. §507(b) takes account of any delay in bringing suit and provides that there can be no recovery for infringement before the three-year window. The only way to reach the result the 9th Circuit reached was for it to disregard "that feature of the statute, and the separate-accrual rule attending §507(b)." Morever, "laches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which
the Legislature has provided no fixed time limitation."

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