The Copyright Act provides "No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued." 17 U.S.C. § 507(b). If a defendant commits multiple infringements, each successive infringement commences a new limitations period. Under the statutory scheme adopted by Congress, each discrete infringement is actionable within three years of its occurrence.
MGM released the film Raging Bull in 1980, based on a screenplay written by Frank Petrella. His daughter, Paula Petrella, became sole owner of the copyright in 1991 and threatened suit against MGM in 1998. Suit was not filed until January 2009. The District Court held the complaint was barred by laches and the Ninth Circuit affirmed.
The Supreme Court (with three justices dissenting) reversed and held that laches did not bar a claim for monetary or injunctive relief for infringement occurring within three years before suit was filed. “In the face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief.” The Supreme Court has “never applied laches to entirely bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.”
The doctrine of estoppel may bar any remedy if the copyright owner's intentional representations are relied upon to the detriment of the alleged infringer. Here MGM continued to create DVD and Blu-ray versions, distribute and license Raging Bull after MGM was notified of Petrella's claim, so the reliance necessary for estoppel was absent.
The Supreme Court ruled laches “cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window” of the statute of limitations. In extraordinary circumstances, laches may bar equitable relief (injunctive relief or lost profits) at the outset of the case, but no such extraordinary circumstances were apparent in this case. If liability is found, the District Court may take into account the delay in commencing suit when awarding equitable relief; however, the court must closely examine such factors as reliance by MGM on the delay and the availability of declaratory relief.
The Supreme Court concluded the copyright owner is not required to challenge "each and every actionable infringement"; instead, the copyright owner can wait and see if the harm caused justifies litigation. Otherwise, copyright owners would be compelled to bring needless litigation over infringements that might prove trivial or even beneficial to the plaintiff.
The dissenting three justices noted the loss of evidence resulting from the deaths of three potential witnesses. The majority, however, concluded MGM failed to prove prejudice due to loss of evidence. The reversionary rights Congress granted to heirs after the death of the author (see 17 U.S.C. §§ 203, 304) show that Congress anticipated the death of witnesses during the lengthy term of copyright protection. The Copyright Act (1) limits damages to the three years before suit was filed, 17 U.S.C. § 507(b), (2) allows the defendant to offset “identifiable expenses” and profit not “attributable to” the infringed work, id. § 504(b), and (3) imposes registration and deposit requirements for copyright protection. Id § 410 et seq.. The majority concluded these provisions in the copyright statute and the estoppel defense already provide appropriate protection from delay by the plaintiff.