United States: Supreme Court Finds Laches Does Not Bar Copyright Infringement Claim: "Petrella v. Metro-Goldwyn-Mayer, Inc."

Last Updated: May 22 2014
Article by Craig B. Whitney

The doctrine of laches cannot be invoked as a bar to a plaintiff's claim for damages brought within the Copyright Act's three-year statute of limitations period, according to the United States Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer, Inc. The Court, in a 6-3 decision, held that Congress prescribed a specified period in which a copyright holder can recover damages for infringement and, "[t]o the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period . . . courts are not at liberty to jettison Congress' judgment on the timeliness of suit." A laches defense is still viable, however, to bar equitable relief "in extraordinary circumstances" and as a factor at the remedial stage. As a result of this decision, copyright holders who previously refrained from pursuing an infringement action could be invigorated to bring suit, and businesses should be mindful that relying on a copyright holder's prior inaction will not bar a future copyright infringement suit, regardless of how much time or money was invested into the allegedly infringing activity. In addition, the Court's decision raises questions regarding the applicability of a laches defense to other laws with statutory limitations periods—including patent law.


Paula Petrella is the daughter and sole remaining heir to Frank Petrella, an author of the screenplay on which the movie Raging Bull was allegedly based. In 1967, Frank Petrella assigned his copyright, including renewal rights, in the 1963 screenplay to Chartoff-Winkler Productions, Inc. A subsidiary of Metro-Goldwyn-Mayer, Inc. ("MGM") ultimately acquired the motion picture rights to the screenplay prior to the release of Raging Bull in 1980. Frank Petrella died in 1981—shortly after the movie's release—and, under copyright law, the renewal rights that MGM acquired reverted to Frank Petrella's heirs upon his death. In other words, when the initial copyright term for the screenplay expired in 1991 (because pre-1978 works are protected for an initial term of 28 years that can be renewed for up to 67 years), Paula Petrella could—and did—renew the copyright and become the sole owner of the copyright in that work, notwithstanding any past assignments.

In 2009, nearly 30 years after Frank Petrella's death and the release of Raging Bull and nearly 18 years after Paula Petrella renewed the copyright in the screenplay, Petrella filed suit in California for copyright infringement based on MGM's continued exploitation of the movie based on Frank Petrella's work. The statute of limitations for copyright infringement is three years, and, accordingly, Petrella sought damages for infringement for only the three years prior to the filing of the complaint, as well as injunctive relief barring future use of the work. The district court dismissed Petrella's claims on the basis of laches, given the delay in filing suit, even though the action was not barred by the applicable statute of limitations. The Ninth Circuit agreed and held that such a delay is justification in and of itself for dismissing the suit at the outset of the case.


In a 6-3 decision, the Supreme Court held that laches cannot bar legal relief where there is an applicable statute of limitations enacted by Congress. In reaching this decision, the Court focused on the time limitations that Congress chose to include in the Copyright Act and the role of the doctrine of laches. In particular, "Congress provided two controlling time prescriptions: the copyright term, which endures for decades, and may pass from one generation to another; and § 507(b)'s limitations period, which allows plaintiffs during that lengthy term to gain retrospective relief running only three years back from the date the complaint was filed." Because Congress has already fixed the applicable time limitations under copyright law, laches is inapplicable to bar an otherwise timely action. "[L]aches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation."

The Court recognized in Petrella that it had never in its history applied laches "to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period." The Court was unequivocal that, for claims seeking legal relief, laches is not an available defense in the face of an applicable statute of limitations. The doctrine of laches is "essentially gap-filling, not legislation-overriding. . . . Inviting individual judges to set a time limit other than the one Congress prescribed . . . would tug against the uniformity Congress sought to achieve when it enacted § 507(b)."

The Court explained, however, that laches may still have some limited application in copyright cases. While noting that actions in law and in equity merged in 1938, the Court nevertheless held that "in extraordinary circumstances . . . the consequences of a delay in commencing suit may be of sufficient magnitude to warrant, at the very outset of the litigation, curtailment of the relief equitably awardable." But the Court reiterated that a copyright holder's "right to prospective injunctive relief should, in most cases, remain unaltered." In addition to the equitable relief of an injunction, the Court regarded the Copyright Act's allowance of a copyright owner to recover an infringer's profits as equitable in nature as well. Accordingly, a court can take into account a plaintiff's delay in filing suit in assessing profits, as well as in determining appropriate injunctive relief.

Further, the Court explicitly stated that the doctrine of estoppel may still bar a copyright owner's claims completely—eliminating all potential remedies—when a copyright owner engages in intentionally misleading representations concerning his abstention from suit and the alleged infringer detrimentally relies on the copyright owner's deception.

Justice Breyer wrote a dissenting opinion, joined by Chief Justice Roberts and Justice Kennedy. The dissent explained that laches is an equitable doctrine that helps courts "avoid unfairness that might arise were legal rules to apply strictly to every case no matter how unusual the circumstances," and such a doctrine should be available in copyright cases "[i]n those few and unusual cases where a plaintiff unreasonably delays in bringing suit and consequently causes inequitable harm to the defendant."


Petrella removed a defense to copyright infringement that some previously thought available. Businesses should now be mindful that a copyright holder's decision not to bring an action for infringement for an extended period of time will not preclude her from bringing one later—even after extensive investment was made by the accused infringer—provided that there is a separate infringing act occurring within the three-year limitations period. Where there is a question or dispute regarding whether a business's activities amount to copyright infringement, it may be in that business's interest to seek a declaratory judgment of non-infringement prior to investing money and resources into that activity.

The Supreme Court specifically found that "there is nothing untoward about [a copyright holder] waiting to see whether an infringer's exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it." Thus, the argument that the copyright holder unfairly waited in the weeds while the accused infringer spent years developing its allegedly infringing work is foreclosed—at least with respect to monetary damages, other than disgorgement of profits. And even with regard to injunctive relief, an unreasonable delay will bar such relief only in extraordinary circumstances. Thus, businesses would be wise to resolve any uncertainty early.

Finally, the Petrella decision raises questions about the applicability of laches to other laws that contain limitations periods enacted by Congress. In particular, the Patent Act contains a six-year limitation on damages, but the Federal Circuit has previously held that laches can bar damages incurred during that period. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F. 2d 1020, 1029-1031 (Fed. Cir. 1992) (en banc). The Petrella decision cites that case in a footnote but notes that the Supreme Court has not had occasion to review the Federal Circuit's position. Given the discussion in Petrella, the continued viability of a laches defense to patent damages is likely to be raised by patentees.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Craig B. Whitney
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions