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 The Central District of California (in an unpublished opinion) and the Ninth Circuit concluded that Petrella’s suit was barred because she took too long to sue.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.