Tuesday, May 20, 2014
Laches No Defense to Copyright Infringment, Supreme Court Rules in ‘Raging Bull’ Case
By KENNETH OFGANG, Staff Writer
The equitable defense of laches will not bar an action for copyright infringement that is filed within the statutory limitations period, the U.S. Supreme Court ruled yesterday.
In a 6-3 decision, the court reversed the Ninth U.S. Circuit Court of Appeals and revived a copyright suit against the owners of “Raging Bull” the 1980 film biography of boxer Jake LaMotta. Robert De Niro won the “Best Actor” Oscar for his portrayal of LaMotta, and the film appears on most critics’ lists of the best movies of all time.
This undated handout file photo shows Robert De Niro as Jake La Motta in a boxing scene from Martin Scorsese’s film “Raging Bull.”
Yesterday’s ruling allows Paula Petrella to press her action that the repeated exploitation of the film violates rights she inherited from her father. Between 1963 and 1973, according to copyright registrations, Frank Petrella authored, or co-authored with LaMotta, two screenplays and a book based on the boxer’s life, and his daughter claims those writings form the basis for the film.
Her suit is based solely on the 1963 screenplay, as the copyrights for the two later works were not renewed and expired after 28 years. The earlier screenplay’s copyright, of which Paula Petrella is the sole owner, was renewed for 67 years.
Frank Petrella died in 1981. His daughter sued for copyright infringement in 2009, 11 years after her attorney sent a demand letter to MGM, which owned the film, asserting that she owned the copyright.
Statute of Limitations
The Copyright Act contains a three-year statute of limitations, running anew from each infringement. But U.S. District Judge George H. Wu of the Central District of California, and the Ninth Circuit, both held that the equitable doctrine of laches barred the suit, even as to infringements occurring within the limitations period.
The lower courts cited the length of the delay in suing, the fact that Petrella was long aware of her rights before suing, and the prejudice to the defendants, who had invested millions of dollars in the film.
The high court, however, said Congress intended the statute of limitations to preclude reliance on the equitable defense, permitting Petrella to sue for damages resulting from infringement of the copyright since three years preceding the date she sued, as well as for injunctive relief.
Whatever Petrella did, or didn’t do, to assert her rights prior to Jan. 6, 2006 is irrelevant, Justice Ruth Bader Ginsburg wrote, because the statute of limitations bars all relief for infringements prior to that date. The court, she said, has long held “to the position that, in face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief,” and none of the cases cited by the defendants held otherwise.
The jurist wrote:
“If the rule were, as MGM urges, ‘sue soon, or forever hold your peace,’ copyright owners would have to mount a federal case fast to stop seemingly innocuous infringements, lest those infringements eventually grow in magnitude. Section 507(b)’s three-year limitations period, however, coupled to the separate-accrual rule…avoids such litigation profusion. It allows a copyright owner to defer suit until she can estimate whether litigation is worth the candle. She will miss out on damages for periods prior to the three-year look-back, but her right to prospective injunctive relief should, in most cases, remain unaltered.”
The justice acknowledged that, in some cases, laches may be invoked to limit the scope of equitable relief with respect to a timely cause of action. But the facts of Petrella’s case are not so extreme as to require the court to impose such a limitation at this stage, she said.
Justices Antonin Scalia, Clarence Thomas, Samuel A. Alito Jr., Sonia Sotomayor and Elena Kagan joined the majority opinion.
Justice Stephen G. Breyer dissented in the case, joined by Chief Justice John G. Roberts Jr. and Justice Anthony M. Kennedy.
Breyer said the plaintiff’s 18-year delay in suing after she renewed the copyright in 1991 had to be considered as a matter of equity. “During those 18 years,” he wrote, “M.G.M. spent millions of dollars developing different editions of, and marketing, the film.”
Breyer quoted from 1916 U.S. District Court decision by Judge Learned Hand, who said it was unfair for a plaintiff “to stand inactive while the proposed infringer spends large sums in its exploitation, and to intervene only when his speculation has proved a success.”
The doctrine of laches, Breyer wrote, permits “a fair result” in “those few and unusual cases where a plaintiff unreasonably delays in bringing suit and consequently causes inequitable harm to the defendant.”
The case is Petrella v. Metro-Goldwyn-Mayer, 12-1315.
Copyright 2014, Metropolitan News Company