Fifth Circuit Upholds "Discovery Rule" In Affirming Victory For Photographer In Copyright Suit

JurisdictionUnited States,Federal
Law FirmFinnegan, Henderson, Farabow, Garrett & Dunner, LLP
Subject MatterIntellectual Property, Litigation, Mediation & Arbitration, Copyright, Trials & Appeals & Compensation
AuthorMr Patrick Rodgers and Margaret Esquenet
Published date23 May 2023

Under the Copyright Act of 1976, a civil action for copyright infringement must be "commenced within three years after the claim accrued." 17 U.S.C. ' 507(b). But when does a claim accrue? To answer that question, the Fifth Circuit applied what is known as the "discovery rule." That is, the limitations period starts running when a "plaintiff knows or has reason to know of the injury upon which the claim is based." Graper v. Mid-Continent Casualty Co., 756 F.3d 388, 393 (5th Cir. 2014). That rule came under attack in Martinelli v. Hearst Newspapers, LLC, with Hearst asking the Fifth Circuit to jettison the discovery rule and hold that the clock starts when an act of copyright infringement occurs'not when the act is discovered'because, according to Hearst, more recent Supreme Court decisions no longer permit application of the discovery rule. The Fifth Circuit declined the invitation, affirming the application of the discovery rule and refusing to create a circuit split in the process.

The facts here were straightforward and stipulated. In 2015, photographer Antonio Martinelli took seven photographs of an Irish estate named "Lugalla" owned by the Guinness family. Lugalla was eventually listed for sale, and in March 2017, Hearst Newspapers and its affiliates published several online stories about the listing using Martinelli's photographs without authorization. Martinelli discovered these uses on various dates ranging from November 17, 2018 through May 28, 2020, and the parties agreed Martinelli could not have discovered them earlier. Martinelli filed his complaint (later amended to add a defendant) for direct and contributory copyright infringement on October 18, 2021. Hearst conceded that it infringed Martinelli's copyrights and, if Martinelli was successful, agreed to pay $10,000 in damages. This stipulation left just one issue for the court: did Martinelli timely bring his claims under the Copyright Act's statute of limitations.

Applying the Fifth Circuit's discovery rule, the district court held the claims timely because Martinelli sued within three years of discovering the infringement. Hearst appealed, arguing that the Supreme Court's decisions in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) and Rotkiske v. Klemm, 140 S. Ct. 355 (2019) "undermined the reasoning" for applying the discovery rule and asking that rule be jettisoned for one starting the clock when infringement occurs.

The Fifth Circuit refused to depart from its precedent...

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