The Supreme Court will be hearing oral arguments on Tuesday, January 21, 2014 in the case of Petrella v. Metro Goldwyn Mayer, over whether the doctrine of laches bars infringement claims over the rights to the film Raging Bull.
This case, which was previously decided by the 9th Circuit, involves alleged copyright infringement of two screenplays and one book that became the basis of the 1980 movie Raging Bull.
The issue in this case is “whether the nonstatutory defense of laches is available without restriction to bar all remedies for civil copyright infringement claims filed within the three-year statute of limitations prescribed by Congress” under 17 U.S.C. §507(b). The appellate courts have been split on this topic, but the 9th Circuit “has adopted a presumption in favor of applying laches to continuing copyright infringements” such as this.
Jake LaMotta was a boxer that retired from the sport and enlisted the help of his good friend, Frank Petrella, to write a book and two screenplays about his life. All of these works were registered with the U.S. Copyright Office. Petrella is listed as the sole author of the 1963 screenplay and the 1973 screenplay. Peter Savage, a pseudonym of Petrella, is designated as the author of the 1970 book, with LaMotta and Joseph Carter named as co-authors.
In 1976, these copyrights were assigned to Chartoff-Winkler Productions, Inc. The assignment agreement stated that the works had not been copied or adapted and the authors reserved certain rights. In 1978, Chartoff-Winkler sold the rights to United Artists Corp.
When Frank Petrella died, his daughter, Paula, inherited his renewal rights and filed a renewal application for the 1963 screenplay. Beginning in 1991, she exchanged letters with MGM for the next two years accusing the company of copyright infringement and threatening to sue. However, a lawsuit was not filed until 2009, many years after she acquired rights.
Paula Petrella filed suit asserting copyright infringement, unjust enrichment and accounting. In response, MGM asserted a laches defense because according to statute, the action must have been filed within three years.
The District Court granted summary judgment on the copyright infringement claim stating that whether the plaintiff’s conduct constituted laches was an issue of fact. There was some discussion over whether a clearly erroneous or abuse of discretion standard should be applied. The 9th Circuit affirmed the ruling in favor of MGM and explained that regardless of which standard was applied, the laches ruling must stand. Both courts denied the defendant’s motions for sanctions and attorney’s fees.
For a laches defense, the defendant must prove that “the plaintiff delayed in initiating the lawsuit, the delay was unreasonable and the delay resulted in prejudice.” The court explained that Petrella was aware of the potential lawsuit in 1991 when she filed the renewal of the copyright registration. The court discussed two instances of delay under these circumstances and found both to be unreasonable. Plaintiff claimed that one of the periods of delay was due to her brother’s disability, her mother’s illness and the family’s inability to fund a lawsuit. However, she did not provide any evidence other than her own testimony related to these statements. The court even stated that it suspected the delay was due to the fact that the film wasn’t making money during those time periods. The court also determined that expectations-based prejudice was present which occurs when “a defendant ‘took actions or suffered consequences that it would not have had the plaintiff brought suit promptly.’” MGM was able to provide evidence that it had spent large sums of money promoting and distributing the film. In recent years alone it had spent over $8.5 million in the US and distributed 25th Anniversary and Blu-ray editions.
Because all of the plaintiff’s claims were barred by the laches defense, neither court discussed the actual merits of the claims. It remains to be seen how the U.S. Supreme Court will interpret this issue which has been hotly contested throughout the federal courts.
For more information:
- Copyright Act, 17 U.S.C. §507(b)
- Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946 (9th Cir. 2012).