Laches, Statutes Of Limitations And Raging Bull: The Supreme Court Re-Emphasizes The Pitfalls Of Delay In Copyright Cases

In Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. __ (2014), the United States Supreme Court addressed the role that the equitable defense of laches – i.e., a plaintiff's unreasonable and prejudicial delay in commencing suit – plays in relation to a claim of copyright infringement filed within the Copyright Act's three-year statute of limitations period. There is no doubt that Petrella puts to rest a split amongst the Circuits by clarifying that laches cannot bar a claim for legal relief for infringement occurring within the three-year statutory window. Yet, Petrella should not be seen as a knock-out punch to the use of laches in copyright actions. To the contrary, Petrella re-emphasizes the important role that laches plays in connection with the equitable remedies available under the Copyright Act, and provides copyright defendants – and plaintiffs – with guidance as to whether, and to what extent, a plaintiff's delay in filing suit may limit the availability of those equitable remedies. Additionally, Petrella's discussion of a copyright plaintiff's evidentiary burden and comments about the Copyright Act's registration requirements raise interesting questions about the impact that a delay in filing suit may have on a plaintiff's ability to prove infringement. Laches, it seems, "don't go down for nobody."1

Petrella involved a claim of copyright infringement brought against Metro-Goldwyn-Mayer, Inc. and certain related entities (collectively, "MGM") by the daughter of Frank Petrella, who authored two screenplays (a "1963 Screenplay" and "1973 Screenplay," respectively) and a book based on the life of boxing champion Jake LaMotta. Id. at 7-8. In 1976, Frank Petrella and Lamotta assigned their rights in the three works, including the renewal rights, to Chartoff-Winkler Productions, Inc. Id. at 7. The motion picture rights to the three copyrighted works were subsequently acquired by United Artists Corporation, a subsidiary of MGM. Id. In 1980, MGM released, and registered a copyright in, the motion picture Raging Bull, directed by Martin Scorcese and starring Robert DeNiro. Id. Frank Petrella died in 1981 – during the initial terms of the three copyrighted works. Id.

In 1990, the United States Supreme Court issued its decision in Stewart v. Abend, 495 U.S. 207 (1990). In Stewart, the Supreme Court confirmed that the assignment of renewal rights by an author before the time for renewal arrives cannot defeat the right of the author's statutory successors to the renewal rights if the author dies before the right to renewal accrues. Id. at 219-20. In other words, if the author dies before the right to renewal accrues, then the author's statutory successor is entitled to renew the copyright free and clear from any assignment previously made by the author. Id. In such a case, the owner of a derivative work does not retain the right to exploit that work when the death of the author causes the renewal rights in the preexisting work to revert to the statutory successors. Id. at 220-21.

In 1991, following the Supreme Court's decision in Stewart, Frank Petrella's daughter and statutory successor renewed the copyright in the...