On January 21, the US Supreme Court heard oral arguments to determine whether the equitable defense of laches can bar or limit copyright infringement claims brought within the statute of limitations. The decision—which would resolve a contentious circuit split—is likely to have far-reaching consequences for copyright owners, particularly in the music and entertainment industry where it is not uncommon for copyright holders and heirs to famous works to bring infringement claims long after the initial release of a work.
In Petrella v. Metro-Goldwyn-Mayer Inc., the Supreme Court will determine whether a claim by the heir of the author to the screenplay for the 1980 film classic “Raging Bull” brought more than 45 years after the screenplay was written, and almost thirty years since the theatrical release of the film, can recover for copyright infringement. Although the plaintiff seeks only damages for acts infringement occurring from 2006 onward due to the three year statute of limitations for copyright infringement claims set forth in 17 USC §507(b), the trial court granted summary judgment dismissing the suit based on the laches defense, and the ruling was affirmed by the Ninth Circuit.1 Laches generally requires the party asserting the defense to show that the plaintiff’s unreasonable delay in bringing suit caused it to suffer prejudice. Here, the courts concluded that the plaintiff had unreasonably delayed by not filing suit until 2009 and that the delay had prejudiced defendants in terms of both their commercial expectations and their access to evidence.2
Because copyright infringement claims can accrue separately for each act of infringement—even where prior acts of infringement have occurred before the three year limitations period—a laches defense can be a critical tool for limiting damages or obtaining a dismissal of the claims altogether, depending on the jurisdiction.
However, because of an intense circuit split on the application of laches to infringement claims, the forum for a plaintiff’s copyright infringement claim is incredibly important. Three circuits either forbid any application of the laches defense or limit the remedies to which it can apply.3 Two other circuits sharply disfavor laches and restrict it to exceptional circumstances.4 The Ninth Circuit, however, has adopted a presumption in favor of applying laches to continuing copyright infringements and does not restrict the remedies to which it applies.5
The Supreme Court’s decision in Petrella is of particular importance to the entertainment industry. The popularity of the internet and the newfound accessibility to older works coupled with increased vigilance from copyright owners has resulted in a significant in uptick of lawsuits against musicians and filmmakers, many of which are brought decades after the initial release of a work. Film studios as well as top musicians including the Beastie Boys, Usher, Run DMC, Jay-Z, and Madonna have all recently faced lawsuits claiming one or more of their classic albums infringed third-party copyrights.
The hip-hop industry, in particular, has been the target of numerous lawsuits over the use of music samples in albums released during the hip-hop boom of the late 1980s and early 1990s, a time when “sampling”—the art of incorporating snippets of existing recorded music—into a new song was common practice.6 Although the cost and time associated with obtaining approvals drastically curbed the practice of unlicensed sampling by the mid-nineties, many artists are still paying the price for songs produced in this era.7
The hip hop trio the Beastie Boys, for example, is currently defending claims that its 1986 album Licensed to Ill and 1989 follow-up album Paul’s Boutique used unlicensed samples of Trouble Funk songs ranging from 1 to 6 seconds in length, even though the lawsuit was brought more than twenty years after the albums were released.8 Despite the significant time that had passed since the albums’ debuts, the judge overseeing the case refused to dismiss certain copyright infringement claims, finding that they were not barred by the statute of limitations. In a September 2013 ruling, the court applied the “injury rule”—which provides that a claim accrues at the time of each act of infringement—and limited recovery to acts of infringement occurring after May 12, 2009 based on the Copyright Act’s three-year statute of limitations.9 Thus, even though a defendant may be able to limit a plaintiff’s recovery to the three-year limitations period up to the filing of the complaint, in jurisdictions that disfavor the laches defense or do not allow laches to bar claims brought within the limitations period, defendants can remain on the hook for their works long after they drop from the charts.
Claims brought long after the initial release of an album or film can come at a significant cost to the artists and label or studio backing the work. In Bridgeport Music v. Justin Combs Publishing et al., a copyright infringement verdict concerning the Notorious B.I.G.’s unlicensed sample of an Ohio Players’ song in his song “Ready to Die” forced the defendants to pull the full Ready to Die album from the shelves in 2006, twelve years after its 1994 release.10 The label later re-released the album without the offending sample.
The Supreme Court’s decision in Petrella will therefore have far-reaching effects on the ability of copyright owners to bring belated claims of infringement, particularly in the film and music industries where a laches defense could otherwise limit recovery for “continuing infringement” claims that accrue during the statute of limitations.