Raging Bull Copyright Owner KO’s Film Studios

The Copyright Act statute of limitations is 3 years.  (17 U.S.C. §507(b)).  The statute of limitation is rolling, in that each new infringement starts a new statute of limitations period running.  The copyright term for works created after 1922 and before January 1, 1978 is 95 years.  Laches is an equitable doctrine that prevents the plaintiff from recovering when the plaintiff has unreasonably delayed in filing suit, resulting in undue hardship to the defendant.  Does laches entirely prevent a copyright owner from claiming copyright infringement when the copyright term has not expired?

No, is the U.S. Supreme Court’s answer to this question.  Paula Petrella, the copyright owner of the 1963 screen play upon which the movie Raging Bull is based, filed suit for copyright infringement against MGM and others.  MGM argued that laches entirely precluded Petrella’s copyright infringement claim against it and the other defendants.  The district court and the Ninth Circuit Court of Appeals agreed with MGM and the other defendants.  The U.S. Supreme Court reversed and remanded.  I agree with the Supreme Court’s decision.  What is the purpose of our lengthy copyright term if the copyright owner can’t enforce the copyright throughout the entire term?

Case Time Line

  • 1963 & 1973 – Frank Peter Petrella and boxer Jake LaMotta create a book and 2 screen plays based on LaMotta’s life.
  • 11/19/1976 – Copyrights assigned by Petrella and LaMotta.
  • 1980 – United Artists released Raging Bull.
  • 1981 – Frank Petrella died.
  • 1991 – Paula Petrella filed a renewal application for the 1963 screen play.
  • 7 year gap.
  • 1998 – Petrella’s attorney informed the defendants of their copyright infringement.
  • 1998 – 2000 Letters exchanged regarding the infringement.
  • 9 year gap.
  • January 9, 2009 – Petrella sued MGM, UA and others for copyright infringement, seeking relief only for the infringing acts occurring on or after January 6, 2006.

Paula Petrella became the copyright owner of the screen plays for Raging Bull in 1991, when she filed a copyright renewal application for the 1963 screen play written by her father, Frank Petrella.  In 1998, Paula Petrella’s attorney informed MGM and the other defendants of their copyright infringement.  In 2009, Petrella sued MGM, UA and the other defendants for copyright infringement.  Petrella waited 18 years from the time she acquired ownership of the copyright to file suit on her copyright infringement claim.  She unquestionably delayed in filing suit.  At the same time, the copyright Petrella owns does not expire until 2058, 44 years from now.

Relevant Copyright Law

Congress provided two controlling time prescriptions: the copyright term, which endures for decades, and may pass from one generation to another; and §507(b)’s limitations period, which allows plaintiffs during that lengthy term to gain retrospective relief running only three years back from the date the complaint was filed.

(Opinion pdf page 10).

The Court noted that the reason laches was applied in copyright cases is that the Copyright Act of 1909 did not include a statute of limitations provision until Congress enacted one in 1957.  Previously, federal courts applied state court statutes of limitation and the equitable doctrine of laches to determine when a copyright owner’s suit should be barred.  Despite the 1957 inclusion of a statute of limitation in the Copyright Act, federal district and circuit courts continued to consider whether laches barred some copyright claims.  A circuit split led the Supreme Court to address issue of laches in copyright cases.

The Copyright Act Adequately Addresses Delays in Filing Suit

The Court ruled that the Copyright Act adequately addresses delays in filing suit, making applying laches unnecessary. 

The Ninth Circuit erred, we hold, in failing to recognize that the copyright statute of limitations, §507(b), itself takes account of delay.  A successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be had for infringement in earlier years. Profits made in those years remain the defendant’s to keep. Brought to bear here, §507(b) directs that MGM’s returns on its investment in Raging Bull in years outside the three-year window (years before 2006) cannot be reached by Petrella.  Only by disregarding that feature of the statute, and the separate-accrual rule (rolling statute of limitations) attending §507(b), could the Court of Appeals presume that infringing acts occurring before January 6, 2006 bar all relief, monetary and injunctive, for infringement occurring on and after that date.

Moreover, if infringement within the three-year look back period is shown, the Act allows the defendant to prove and offset against profits made in that period ‘deductible expenses’ incurred in generating those profits.§504(b). In addition, the defendant may prove and offset ‘elements of profit attributable to factors other than the copyrighted work.’ §504(b). The defendant thus may retain the return on investment shown to be attributable to its own enterprise, as distinct from the value created by the infringed work.

Last, but hardly least, laches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation.  Both before and after the merger of law and equity in 1938, this Court has cautioned against invoking laches to bar legal relief.

(Opinion pdf pages 15-16).

MGM argued that applying laches prevents copyright owners from sitting on their rights, awaiting the outcome of the infringer’s investment.  So what?, said the Court. 

It is hardly incumbent on copyright owners, however, to challenge each and every actionable infringement. And there is nothing untoward about waiting to see whether an infringer’s exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it. Fan sites prompted by a book or film, for example, may benefit the copyright owner.  Even if an infringement is harmful, the harm may be too small to justify the cost of litigation.

(Opinion pdf page 20-21).

Petrella’s Conduct May Limit Her Recovery, But Does Not Completely Bar Her Suit

The Court ruled that Petrella’s conduct in failing to diligently pursue her rights as a copyright owner does not bar her infringement suit, but may be considered in fashioning the remedy.

The equitable relief Petrella seeks—e.g., disgorgement of unjust gains and an injunction against future infringement—would not result in total destruction of the film, or anything close to it.  MGM released Raging Bull more than three decades ago and has marketed it continuously since then. Allowing Petrella’s suit to go forward will put at risk only a fraction of the income MGM has earned during that period and will work no unjust hardship on innocent third parties, such as consumers who have purchased copies of Raging Bull.  The circumstances here may or may not (we need not decide) warrant limiting relief at the remedial stage, but they are not sufficiently extraordinary to justify threshold dismissal.

(Opinion pdf page 25). 

Justice Ginsburg wrote the majority opinion and was joined by Justices Scalia, Thomas, Alito, Sotomayor and Kagan.

Justice Breyer wrote the dissent and was joined by Chief Justice Roberts and Justice Kennedy.

The dissent thinks it is inequitable for the copyright owner to stand by watching, while the infringer spends large sums of money developing the infringing work, then sue for infringement only after the infringing work becomes a success. 

If a defendant reproduces or sells an infringing work on a continuing basis, a plaintiff can sue every 3 years until the copyright term expires—which may be up to 70 years after the author’s death.  If, for example, a work earns no money for 20 years, but then, after development expenses have been incurred, it earns profits for the next 30, a plaintiff can sue in year 21 and at regular 3-year intervals thereafter. Each time the plaintiff will collect the defendant’s profits earned during the prior three years, unless he settles for a lump sum along the way. The defendant will recoup no more than his outlays and any ‘elements of profit attributable to factors other than the copyrighted work.’ §§504(a)(1), (b).  A 20-year delay in bringing suit could easily prove inequitable.

(Opinion pdf page 28). 

Many of the key witnesses may die before the infringement action is brought.  Copyright owners may also use the passage of time to increase the strength of their bargaining positions with the infringers.  In the present case, 3 key witnesses either died or became unavailable during the 18 years Petrella delayed in bringing her copyright infringement action.  The passage of time leads to the loss of evidence.

The safeguards the majority claims are built into the Copyright Act may not prevent inequitable results in every case.  Laches should still be available as a defense in those cases.

Congress did not necessarily intend to preclude laches when it enacted a copyright statute of limitations.

The majority says that ‘inviting individual judges to set a time limit other than the one Congress prescribed’ in the Copyright Act would ‘tug against the uniformity Congress sought to achieve when it enacted§507(b).’  But why does the majority believe that part of what Congress intended to achieve was the elimination of the equitable defense of laches? As the majority recognizes, Congress enacted a uniform statute of limitations for copyright claims in 1957 so that federal courts, in determining timeliness, no longer had to borrow from state law which varied from place to place.  Nothing in the 1957 Act—or anywhere else in the text of the copyright statute—indicates that Congress 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.

(Opinion pdf pages 32-33).

Unless Congress indicates otherwise, courts normally assume that equitable rules continue to operate alongside limitations periods, and that equity applies both to plaintiffs and to defendants.

(Opinion pdf page 34).

The dissent argued that laches should still be available to courts in copyright cases “in those few and unusual cases where a plaintiff unreasonably delays in bringing suit and consequently causes inequitable harm to the defendant.”  (Opinion pdf page 39).

This case is Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12-1315, U.S. Supreme Court.

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