Petrella v. Metro-Goldwyn-Mayer, Inc.

Petrella v. MGM is a United States Supreme Court copyright decision in which the Court held, 6-3, that the equitable defense of laches is not available to copyright defendants in claims for damages.

Background

After retiring from the boxing ring, Jake LaMotta collaborated with his friend Frank Petrella to write a story about his career. That collaboration resulted in three copyrighted works:

• screenplay, written in 1963,
• screenplay, written in 1973, and
• the book Raging Bull: My Story, published in 1970.

In 1976, LaMotta and Petrella assigned the copyrights in their works, including renewal rights, to Chartoff-Winkler Productions, Inc., which assigned them in 1978 to United Artists Corporation, which later became a subsidiary of Metro-Goldwyn-Mayer. In 1980, as a result, MGM released (and registered copyright in) the film Raging Bull, which achieved popular and critical success.

Petrella died in 1981, during the initial terms in the three original works. Because of the ruling in Stewart v. Abend,^[1] the renewal rights reverted to his heirs. In 1991, Petrella's daughter Paula sought to renew the copyrights, but was only able to timely file with respect to the 1963 screenplay. In 1998, her attorney informed MGM of that status, and advised that exploitation of any derivative work, including the film, infringed on that copyright.

After several years of negotiations and litigation threats, Petrella commenced a copyright infringement claim against MGM in the United States District Court for the Central District of California, seeking monetary and injunctive relief, but only with respect to the immediately preceding three years as provided by 17 U.S.C. § 507(b). MGM moved for summary judgment, arguing that, under the equitable doctrine of laches, Petrella’s 18-year delay in filing suit, was unreasonable and prejudicial to MGM. The District Court granted MGM’s motion, holding that laches barred Petrella’s complaint. The judgment was later affirmed by the United States Court of Appeals for the Ninth Circuit, citing its previous jurisprudence in the matter.^[2][3]

Because of conflicting opinions in the various Circuit courts on the subject, the Supreme Court granted certiorari in order to resolve the matter.

Decision

The Ninth Circuit's ruling was reversed and remanded. In a 6-3 ruling, Ginsburg J. declared that laches cannot be invoked as a bar to pursuing a claim for damages brought within §507(b)’s three-year window. However, in extraordinary circumstances, laches may, at the very outset of litigation, curtail the relief equitably awarded.

Laches has a restricted scope in law, because:

• Its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation. In the present case, §507(b)’s three-year window provides for such a limitation. In addition, the Court has cautioned against invoking laches to bar legal relief.^[4]
• The Court has never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.
• While equitable tolling (which lengthens the time for commencing a civil action in appropriate circumstances) applies when there is a statute of limitations, laches originally served as a guide when no statute of limitations controlled the claim, and it cannot be described as a rule of statutory interpretation.
• §507(b) allows a copyright owner to defer suit until she can estimate whether litigation is worth the candle. She will miss out on damages for periods prior to the three-year look-back, but her right to prospective injunctive relief should, in most cases, remain unaltered.
• Although MGM pointed out the danger that evidence needed or useful to defend against liability will be lost during a copyright owner’s inaction, Congress must have been aware that the passage of time and the author’s death could cause a loss or dilution of evidence. Congress chose, nonetheless, to give the author’s family "a second chance to obtain fair remuneration."^[5]
• When a copyright owner engages in intentionally misleading representations concerning his abstention from suit, and the alleged infringer detrimentally relies on the copyright owner’s deception, the doctrine of estoppel may bar the copyright owner’s claims completely, eliminating all potential remedies.

In dissent, Breyer J stated that laches was available as a remedy because, when Congress enacted a uniform statute of limitations for copyright claims in 1957, it did not indicate that it also sought to bar the operation of laches. "The Copyright Act is silent on the subject. And silence is consistent, not inconsistent, with the application of equitable doctrines."

Reactions

Petrella effectively means that artists and heirs need to be vigilant as to how their copyrights are being exploited, while film studios and other developers of derivative works will need to be diligent in examining the title to copyrighted material.^[6]

MGM settled with Petrella in 2015.^[7]

References

External links

• SCOTUS blog coverage of the decision (filings, briefs, decisions, etc.)
• full text of opinion: PDF at Supreme Court, HTML at Cornell