The laches defense cannot defeat a copyright infringement claim timely filed within the three-year limitation period of the Copyright Act, according to the holding of the Supreme Court in Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12-1315 (5/19/2014).
The case concerns the Martin Scorsese film, Raging Bull, about the life of boxer Jake LaMotta, and the 1963 screenplay by Frank Petrella, on which the film allegedly was based. Petrella’s daughter, heir to renewal rights in the copyright for the screenplay, brought an infringement action against MGM, seeking relief only for acts of infringement alleged to have occurred within the three-year period prior to the filing date of the lawsuit. The U.S. District Court for the Central District of California held on summary judgment, that Petrella unreasonably delayed, from 1991 when she obtained renewal of the copyright for the 1963 screenplay, until 2009 when she brought suit, and as a result, her copyright claim was completely barred. The Ninth Circuit affirmed.
In an opinion written by Justice Ginsburg, the Supreme Court held that the Copyright Act’s three-year limitation period is a congressionally mandated time proscription that the courts are not empowered to overrule – “in [the] face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief.” Slip Op., p. 13. (Justice Ginsburg noted that the Lanham Trademark Act contains no statute of limitations, and, expressly recognizes the laches defense; she further noted, without expressing an opinion, that the Patent Act does contain a six-year limitations period, but has been interpreted by the Federal Circuit also to recognize laches as a defense to a claim within the statutory period.).
Petrella did not hold laches to be completely inapplicable to a copyright infringement claim. Such defense appropriately may be taken into account at the remedial stage, in determining injunctive relief and/or profits.
The decision also appears to put to rest two other issues. First, the separate-accrual rule indeed does apply to the Copyright Act’s limitations provision; that is, each infringing act (each reproduction or distribution of an infringing work) starts a new limitations period. Slip Op., p. 5. This was the “widely recognized” interpretation (id.), but now seems beyond question. Second, the Copyright Act’s provision for recovery of profits is an equitable remedy. Id., p. 2, n.1. Whether this ultimately will have much significance, in light of Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 118 S. Ct. 1279, 140 L. Ed. 2d 438 (1998) (holding that under the Seventh Amendment, a party is entitled to a jury trial on the Copyright Act’s equitable remedy of statutory damages) remains to be seen.