On Tuesday, January 21, the Supreme Court heard oral arguments in Petrella v. Metro Goldwyn Mayer, a case involving an individual copyright owner suing a movie studio for copyright infringement of the screenplay for the 1980 movie Raging Bull. Stephanos Bibas (University of Pennsylvania Supreme Court Clinic) argued for Petrella; Nicole A. Saharsky (Assistant to the U.S. Solicitor General) argued for the U.S. Government, and Mark A. Perry (Gibson, Dunn & Crutcher) argued for MGM. The arguments and the justices’ questions focused on the history and applicability of equitable doctrines in general and the applicability of the equitable doctrine of laches in the context of copyright law in particular.
In 1963 and 1973, Frank Petrella wrote and registered two screenplays on the life of boxer Jake LaMotta. Petrella assigned the rights to Chartoff-Winkler Productions in 1976 whom in turn sold the rights to make a movie to MGM in 1978. In 1980, MGM registered the movie with the U.S. Copyright Office. Petrella died in 1981 and his renewal rights passed to his only heir, daughter Paula Petrella. In 1998, Petrella's attorney contacted MGM, asserting that Petrella had obtained the rights to the 1963 screenplay and that the exploitation of any derivative work, including Raging Bull, was an infringement of these exclusive rights.
In 2009, Petrella sued MGM for copyright infringement. The Central District of California (in an unpublished opinion) and the Ninth Circuit concluded that Petrella’s suit was barred because she took too long to sue. Petrella petitioned the Supreme Court to resolve the issue of “whether the nonstatutory 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).”
Some Legal Concepts
The doctrine of laches — sleeping on one’s rights — is one of several equitable defenses such as estoppel and unclean hands. The policy underlying the doctrine of laches is that waiting too long to bring suit might cause evidentiary prejudice as well as prejudice to the defendant who relies on the validity of his rights. Depending on the circuit, laches may allow a defendant to preclude a copyright infringement suit or limit the amount of damages a plaintiff can recover. The Fourth Circuit forbids any application of laches. The Eleventh Circuit recognizes laches as a bar to damages in exceptional cases, but never as a bar to prospective relief. The Second Circuit’s rule is the reverse. The Sixth Circuit generally does not accept laches as a bar to damages or injunctive relief, but allows it in exceptional cases for other remedies not explicitly authorized by the Copyright Act. The Ninth Circuit does not restrict laches or the remedies to which it can apply.
The statute of limitations is the maximum amount of time that an injured party has to bring suit. It generally starts running on the date of the injury and is determined by statute. For copyright cases, Title 17 Section 507(b) provides that any civil suit pursuant to the Copyright Act must commence “within three years after the claim accrued.” Each act of infringement triggers a new three-year period for a plaintiff to bring suit.
The Oral Arguments
Petitioners’ main argument is that Congress intended to exclude the defense of laches by including a three-year statute of limitations in the Copyright Act. Petitioners also claim that the Court has repeatedly held that laches cannot shorten the statute of limitations. Justice Scalia observed that even if the Court were to decide that the laches defense did apply, the statute of limitations would not be frustrated. Justice Alito added that the Copyright Act did not expressly exclude the laches defense. Justice Breyer asked petitioners to clarify why laches does not apply but other equitable doctrines, such as tolling, do. Justice Kagan observed that with a copyright term of life of the author plus seventy years, it would make sense to allow copyright owners the possibility to wait twenty years to sue.
Assistant to the U.S. Solicitor General also addressed the Court. The Government explained that laches should only be available in extraordinary circumstances and only to limit remedies, but not to bar a suit. Justice Kennedy asked why this distinction should apply when another equitable doctrine, estoppel, would preclude a suit. Justice Ginsburg referred to the applicability of laches in the context of patents, where the defense bars monetary relief but allows for injunctive relief.
Respondents’ main argument for affirmance is that equitable doctrines, such as laches and tolling, are read into every statute with a statute of limitations. Respondents also highlighted the investment that MGM made in making the movie and the evidentiary prejudice that Petrella’s delay caused as key witnesses passed away during this time. Justice Sotomayor observed that the Court has applied laches only where there was no statute of limitations and inquired as to why MGM had not obtained a declaratory judgment from the time it began to hear Petrella’s complaints in 1998. Justice Scalia pointed out that the Court has never held that equitable defenses do not apply but showed reservation on the possibility that laches can shorten the statute of limitations. Chief Justice Roberts asked whether laches would bar future suits.
During rebuttal, petitioners concluded that allowing laches to apply would create uncertainty as copyright owners would not know when it is appropriate to sue.
The Supreme Court will likely issue a decision later this year.