United States: 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 1963 Screenplay, thereby recapturing the copyright for the renewal term unburdened by her father's previous assignment. Id. at 8. Petrella, however, took no immediate action against MGM to enforce her copyright in the 1963 Screenplay. In 1998, seven years after Petrella reacquired the copyright in the 1963 Screenplay, her attorney notified MGM that Petrella had obtained the copyright and that MGM's continued exploitation of any derivative work – including the motion picture Raging Bull – allegedly infringed on Petrella's copyright. Id. However, once again, Petrella chose to not take any immediate action against MGM because, as she put it, "the film was deeply in debt and in the red and would probably never recoup." Id. at 16.

Thereafter, in 2009 – eighteen years after Petrella recaptured the copyright in the 1963 Screenplay – Petrella filed a copyright infringement action against MGM, alleging that MGM infringed her copyright in the 1963 Screenplay by using, producing and distributing the motion picture Raging Bull, which Petrella alleged to be a derivative of the 1963 Screenplay. Id. at 8. Petrella sought monetary damages and injunctive relief for MGM's acts of alleged infringement occurring within the three-year statute of limitations period prior to the filing of her lawsuit. Id. at 8-9.

MGM moved for summary judgment on various grounds, including the equitable doctrine of laches. As to its laches-based defense, MGM argued that Petrella's eighteen-year delay in filing suit after she reacquired the copyright in the 1963 Screenplay was unreasonable and prejudicial to MGM. The United States District Court for the Central District of California granted summary judgment on MGM's laches defense, concluding that the doctrine of laches barred Petrella's complaint, in its entirety. Id. at 9. The Ninth Circuit Court of Appeals affirmed the District Court's laches-based dismissal, agreeing with the District Court that MGM had established expectations-based prejudice, in that it made a large investment in marketing, advertising, distributing and otherwise promoting the film, including a 25th Anniversary Edition of Raging Bull that was released in 2005, believing that it had complete ownership and control of the film. Id.

The United States Supreme Court granted certiorari to resolve a conflict among the Circuits on the applicability of the laches defense to claims of copyright infringement brought within the three-year statute of limitations set forth in 17 U.S.C. § 507(b). Id. at 10. Examining the Copyright Act, the Court found that the three year statute of limitations applicable to copyright claims "itself takes account of delay" because, under § 507(b) and the Copyright Act's separate-accrual rule, a "successful plaintiff can gain retrospective relief only three years back from the time of suit." Id. at 11. The Supreme Court concluded that courts are not at liberty to "jettison Congress' judgment on the timeliness of suit" and, therefore, laches "cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window." Id. at 1.

Although Petrella clearly establishes that laches cannot be invoked to knock-out a claim for legal relief for infringement that occurs within the Copyright Act's three-year statute of limitations period, it does not stop there. Rather, the Supreme Court goes on to re-emphasize that a plaintiff's unreasonable and prejudicial delay in commencing suit – the cornerstone of a laches-based defense – still packs a considerable punch in determining the types, and contours, of equitable relief appropriately awardable under the Copyright Act. Of course, the availability of equitable relief is of particular significance to the parties in an infringement action, as two of the Copyright Act's more potent remedies – injunctive relief and an accounting of the defendant's profits – are inherently equitable remedies.

Petrella acknowledges the importance of laches in evaluating claims for equitable relief at both: (1) the outset of the litigation; and (2) the remedial stage when determining the proper relief and assessing an award of profits. The Supreme Court confirmed that, in "extraordinary circumstances," the consequences of the plaintiff's delay in commencing suit may – as a threshold matter – limit the particular type of relief equitably awardable by the Court. Id. at 20. The Court cited Chirco v. Crosswinds Communities, Inc., 474 F. 3d 227 (6th Cir. 2007), as an example of a case where such "extraordinary circumstances" were found to be present. In Chirco, the plaintiff-copyright owner knew that the defendants' housing development infringed its copyrighted architectural designs prior to the defendant starting construction on the development, but took no steps to halt the development for two-and-one-half years, during which more than 168 of the units were built, 140 units sold, and 109 occupied by residents. Id. at 234-36. Although the Sixth Circuit Court of Appeals reversed the District Court's dismissal of the plaintiff's entire lawsuit based on laches, it affirmed the District Court's judgment to the extent that it barred the plaintiff from obtaining an injunction mandating the destruction of the housing project. Id. at 236. The Sixth Circuit found that such relief would be inequitable given that: (1) the defendants knew about the development plans before construction began; and (2) the requested relief would work an unjust hardship on the defendants and innocent parties. Id. Thus, the plaintiff's unreasonable and prejudicial delay deprived the plaintiff of an equitable remedy otherwise available under the Copyright Act.

Similarly, in New Era Publications International v. Henry Hold & Co., 873 F. 2d 576, 577 (2nd Cir. 1989), the licensee of the copyrights to certain works by Church of Scientology founder, L. Ron Hubbard, brought an infringement action against the publisher of a Hubbard biography, alleging that the biography contained extensive reproductions of Hubbard's published and unpublished writings. On appeal, the Second Circuit affirmed the District Court's refusal to permanently enjoin publication of the biography based on the doctrine of laches. Id. at 584. The Second Circuit noted that the defendant had been aware that the biography would be published in the United States since 1986, but, despite filing lawsuits in 1987 to enjoin publication of the biography abroad, failed to compare the defendant's biography with the books published abroad, failed to inquire of the defendant as to the planned date of publication in the United States, and failed to take any steps to enjoin publication of the book until it sought a restraining order in 1988. Id. Moreover, by the time that the plaintiff took action in 1988, twelve-thousand copies of the book had already been printed, packed and shipped, review copies had been sent out, and a second printing had already been scheduled. Id. The Second Circuit found that, had the plaintiff promptly sought an adjudication of its rights, the book might have been changed at minimal cost while there was still an opportunity to do so, but that a "permanent injunction would result in the total destruction of the work since it is not economically feasible to reprint the book after deletion of the infringing material." Id. The court concluded that "[s]uch severe prejudice, coupled with the unconscionable delay already described, mandates denial of an injunction for laches and relegation of [the plaintiff] to its damages remedy." Id. at 585.

In addition to limiting at the outset the type of equitable relief available to a plaintiff, Petrella acknowledged that "a plaintiff's delay can always be brought to bear at the remedial stage, in determining appropriate injunctive relief, and in assessing the 'profits of the infringer...attributable to the infringement.'" Id. at 21. The Petrella Court instructed that, "[s]hould Petrella ultimately prevail on the merits, the District Court, in determining appropriate injunctive relief and assessing profits, may take account of her delay in commencing suit" Id. In considering Petrella's delay, the Court directed the District Court to "closely examine MGM's reliance on Petrella's delay" and consider factors such as: (1) the defendant's knowledge of the plaintiff's claims; (2) the protection that the defendant may have achieved through pursuit of a declaratory judgment action; (3) the extent to which the defendant's investment was protected by the separate-accrual rule; (4) the court's authority to order injunctive relief "on such terms as it may deem reasonable" under Section 502(a); and (5) any other considerations that would justify adjusting injunctive relief or profits. Id. at 21-22.

Apart from confirming the significant role that laches plays in determining the equitable relief available to a plaintiff in a copyright action, Petrella hints at potential evidentiary roadblocks that a copyright plaintiff may encounter as a result of the delay associated with a laches-based defense. Noting that a copyright plaintiff bears the burden of proof, the Petrella Court concluded that any loss of evidence that may result from a plaintiff's delay in filing suit would likely impact the plaintiff's ability to establish infringement. Id. at 18. The Court further opined that the Copyright Act's "registration mechanism" reduces the need for extrinsic evidence because, in order for a plaintiff to be able to sue for infringement, both the registration certificate and deposit copy of the original work must be "on file" with the Copyright Office. Id. Thus, Petrella seems to implicitly endorse the view that a registration certificate – and not merely a pending application – is required to maintain a copyright action, an issue that is currently the subject of a split amongst the Circuits. Additionally, the importance that Petrella places on a plaintiff's deposit of a copy of the original work raises an interesting question; namely, what happens when the plaintiff's delay in filing suit is such that the Copyright Office no longer has a copy of the original work in its archives?2 In such a case, the best evidence rule may very well preclude a plaintiff from prevailing on a copyright claim if the plaintiff cannot supply a copy of the original work. See, e.g., Seiler v. Lucasfilm, Ltd., 808 F.2d 1316 (9th Cir. 1987). This could present an insurmountable hurdle in suits brought by statutory heirs alleging the infringement of unpublished works.

In short, while Petrella clearly limits the role that the equitable defense of laches has vis-à-vis claims for legal relief for copyright infringement occurring within the Copyright Act's three-year statute of limitations period, it by no means absolves a plaintiff from the consequences of unreasonable delay. To the contrary, an unreasonable and prejudicial delay in commencing suit can hit a plaintiff where it matters most – the ability to enjoin infringing conduct, deprive a defendant of profits attributable to its alleged infringement and, indeed, meet its burden of proving infringement. Thus, laches is still a contender that should be considered when evaluating a claim of copyright infringement.


1 Quote attributed to Jake LaMotta character portrayed by Robert DeNiro in "Raging Bull".

2 Under the Copyright Office's retention policies, deposits may be transferred to the Library of Congress, given away to other institutions or discarded, the latter generally after five years. See, Notice of Policy Decision – Policy Statement on Deposit Retention Schedule, 48 Fed. Reg. 12862, March 28, 1983. Full term retention requires a government filing fee of $540 in addition to the normal copyright application fee. See, current fee schedule at www.copyright.gov/docs/fees.html.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Events from this Firm
31 Jan 2019, Other, Los Angeles, United States

Invites you to join us for a private cooking class hosted by Parties that Cook!

31 Jan 2019, Conference, Los Angeles, United States

The Southern California Association of Corporate Counsel's In-House Counsel Conference

6 Feb 2019, Other, Los Angeles, United States

Please join Sheppard Mullin for cocktails & hors d'oeuvres during The Wind Power Finance & Investment Summit 2019

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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