Supreme Court Action: Copyright and Delay in Filing Suit for Infringement

The Supreme Court issued one opinion this morning.  The case is Petrella v. Metro-Goldwin-Mayer, Inc. (12-1315).  It involves copyright as it applies to pre-1978 works.  Frank Petrella and Jake LaMotta wrote and copyrighted a screenplay in 1963 detailing Jake LaMotta’s life as a boxer.  They assigned the rights to MGM which made a movie, Raging Bull, based on it in 1980.  The applicable provisions of the Copyright Act specify the initial copyright term is 28 years with a renewal period of 67 years.  The Act further specifies that if a copyright holder dies during the initial term that the renewal rights pass to the heirs and that the assignee (MGM) can only continue to use the copyrighted work if the heirs transfer the renewal rights to the assignee.  There is a rolling three year statute of limitations on actions for infringements meaning any suit for infringement can only cover acts occurring in the past three years prior to filing.

Frank Petrella died before the 28 year term ended.  Paula Petrella is Frank Petrella’s heir.  She renewed the copyright on the screenplay in 1991.  In 1998 she informed MGM that their continued exploitation of the screenplay infringed on her rights.  She finally filed an infringement suit on January 6, 2009 for infringements occurring since January 6, 2006.  MGM filed a motion to dismiss using the defense of laches, essentially arguing that the suit was prejudicial to MGM by being brought some 18 years after she could have sued.  The District Court dismissed the case and the Ninth Circuit affirmed.

The Supreme Court reversed.  The Court stated that the doctrine of laches as applied by the federal courts was only used when there was no real statute of limitations.  The statute was clear that there was a three year limitations period on suits.  MGM argued that Petrella only sued when she determined the movie was finally making money.  The Court responded that nothing in the statute compels a copyright holder to sue at a particular time.  The relief, in any event, is limited to activities occurring after January 6, 2006 and not before.

There was a further discussion as to whether equitable estoppel might apply in place of laches.  That requires several determinations as to applicability, such as whether the copyright holder intentionally misled MGM.  Otherwise, the suit was brought within the confines of the Act.  Justice Ginsburg delivered the opinion of the Court and was joined by Justices Scalia, Thomas, Alito, Sotomayor, and Kagan.  Justice Breyer filed a dissenting opinion and was joined by Chief Justice Roberts and Justice Kennedy.  — Mark

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