By Scott Hervey
In the one corner, Paula Petrella, the daughter of Frank Petrella, co-author of the 1963 Raging Bull screenplays and book. In the other corner, MGM, the owner of the copyright in the critically acclaimed motion picture Raging Bull, based on the life of boxing champion Jake LaMotta. At issue, a 2009 copyright infringement suit against MGM in which Petrella alleged that MGM violated and continued to violate her copyright in the 1963 screenplay by using, producing, and distributing the Raging Bull motion picture. MGM, landed two very solid blows in both the District Court of the Central District of California and at the 9th Circuit; MGM was able to have Petrella’s case dismissed on the equitable doctrine of laches. However, the Supreme Court decided that Petrella could go another round.
After retiring from boxing, Jake LaMotta worked with Frank Petrella to tell his life story. Their efforts resulted in two screenplays, one registered in 1963, the other in 1973, and a book, registered in 1970. In 1976, Frank Petrella and LaMotta assigned their rights in the three works, including renewal rights, to Chartoff-Winkler Productions, Inc. Two years later, an MGM subsidiary, United Artists, acquired the motion picture rights to the book and both screenplays. In 1980, MGM released the film Raging Bull.
A year after the release of the film, Frank Petrella died. Works registered under the pre-1978 regime (such as the 1963 screenplay) enjoyed an initial 28-year period of protection followed by a renewal period of up to 67 years. Congress provided that the author’s heirs inherit the renewal rights. Since Frank’s death occurred during the initial terms of the copyrights in the screenplays and book, his renewal rights reverted to his daughter, who could renew the copyrights unburdened by Frank’s assignment of the renewal right to Chartoff-Winkler. Paula Petrella renewed the copyright in the 1963 screenplay in 1991. (The copyrights in the other screenplay and book were not timely renewed.) In 1998, Petrella’s attorney informed MGM that Petrella was the owner of the copyright in the 1963 screenplay and that MGM’s exploitation of any derivative work, including the Raging Bull motion picture, infringed her copyright. For two years, Petrella and MGM took jabs at each other by exchanging letters in which MGM denied the validity of the infringement claims and Petrella repeatedly threatened to take legal action.
On January 6, 2009, Petrella filed a copyright infringement suit in which she alleged that MGM violated and continued to violate her copyright in the 1963 screenplay by distributing the Raging Bull motion picture. Petrella sought relief only for acts of infringement occurring on or after January 6, 2006. MGM moved for summary judgment on, among other grounds, the equitable doctrine of laches. MGM argued that Petrella’s delay of 18-years from the time she renewed the copyright until the time she sued, was unreasonable and prejudicial. The District Court agreed and granted MGM’s motion, stating “[i]f any part of the alleged wrongful conduct occurred outside of the limitations period, courts presume that the plaintiff ’s claims are barred by laches.” Since Petrella became aware of her potential claims more than three years before she filed suit, her claims were barred under the doctrine of laches. Petrella appealed to the Ninth Circuit which affirmed the District Court’s decision. The Supreme Court granted certiorari.
At issue before the supreme Court was whether the doctrine of laches may bar claims for infringement when the infringing activity is one in a series of continuing similar acts and the copyright owner was aware of such acts well prior to the three-year limitation term. MGM contended that the doctrine of laches is an independent affirmative defense, discrete and separate from the statute of limitations. As such, MGM argued, the doctrine of laches could apply to a claim brought within the statute of limitations period. MGM argued that laches must be available as a defense to prevent a copyright owner from waiting to see what the outcome of an alleged infringer’s activities will be. MGM made issue of the fact that Petrella conceded that she waited to file the complaint because the film was deeply in debt and would probably never recoup.
The Supreme Court was not convinced. The Court noted that copyright owners are not required to challenge each and every actionable infringement, and there is nothing wrong with waiting to see what effect the infringer’s work has on the copyrighted work. “Even if an infringement is harmful, the harm may be too small to justify the cost of litigation” the Court stated. Further, under the separate accrual rule, each time a defendant commits an act of infringement, a separate cause of action arises with its own limitation period. If the Court adopted MGM’s position, copyright owners would have to file a federal lawsuit for each and every act of infringement, regardless how innocuous they may seem. The Act’s three-year limitations period and the separate-accrual rule, avoids these this unwanted result; a copyright owner may defer suit until she can estimate whether litigation is worth the effort.
The Supreme Court noted that when a defendant has engaged in a series of independent acts of copyright infringement, if the copyright holder brings suit it will be timely under the Act’s three year statute of limitations with respect to acts of infringement that occurred within the three-year window, but untimely with respect to prior acts of the same or similar kind. Only by disregarding the Copyright Act’s statute of limitations provision and the separate-accrual rule the Supreme Court determined could the Court of Appeals presume that infringing acts occurring before January 6, 2006 bar all relief. The Court determined that “Congress’ time provisions secured to authors a copyright term of long duration, and a right to sue for infringement occurring no more than three years back from the time of suit. That regime leaves “little place” for a doctrine that would further limit the timeliness of a copyright owner’s suit.”