US Supreme Court Holds Laches Not A Complete Bar To Copyright Infringement Claim

The United States Supreme Court issued its decision today in the case of Petrella v. MGM, in which it held (by a 6-3 decision) that the doctrine of laches is not a complete bar to a claim for copyright infringement.

After retiring from boxing, Jake LaMotta worked with his friend Frank Petrella to tell the story of LaMotta’s career. Their venture resulted in two screenplays and a book. The Supreme Court case concerned a screenplay registered in 1963.

MGM ultimately acquired the motion picture rights to the book and both screenplays. In 1980, MGM released the film Raging Bull. Petrella died in 1981 and his renewal rights reverted to his heirs; Paula Petrella is Frank’s daughter. Petrella renewed the copyright in the 1963 screenplay in 1991. In 1998, Petrella informed MGM that she owned the copyright to the 1963 screenplay. In 2009, Petrella sued MGM, alleging that the company continued to infringe her copyright in the 1963 screenplay by using, producing, and distributing the film. Petrella sought relief only for acts of infringement occurring after January 2006. MGM moved for summary judgment on the basis of laches. The trial court found that laches barred the entire suit and the 9th Circuit agreed.

The Supreme Court found that the 9th Circuit erred in failing to recognize that the copyright statute of limitations itself took account of delay. The Court held that, in the face of a statute of limitations enacted by Congress, laches could not be invoked to completely bar legal relief. The Court explained that it was not incumbent on copyright owners to challenge each and every actionable infringement. Even if an infringement was harmful, the harm might be too small to justify the cost of litigation. A copyright owner was allowed to defer suit until litigation was worth it.

The statutory scheme of the Copyright Act secured to authors a copyright term of long duration and a right to sue for infringement occurring no more than three years back from the time of suit. The Supreme Court found that the statutory scheme left little place for an equitable doctrine that would further limit the timeliness of a copyright owner’s suit and completely bar relief. The Court explained that in extraordinary circumstances, the consequences of a delay in suing could be of sufficient magnitude to warrant curtailment of the relief equitably awarded, and that a copyright owner’s delay in commencing suit could be taken into account in determining appropriate injunctive relief and assessing profits.

The complete opinion can be found here: http://www.supremecourt.gov/opinions/13pdf/12-1315_ook3.pdf

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