Petrella v. Metro-Goldwyn-Mayer, Inc.
134 S. Ct. 1962
| SCOTUS | 2014Background
- Pre-1978 copyright at issue with 28-year term plus 67-year renewal; renewal rights descend to the author’s heirs when the author dies.
- Petrella renewed the 1963 screenplay in 1991, becoming sole owner of that renewal right; the 1963 work is the basis for the infringement claim.
- MGM allegedly infringed via the film Raging Bull; infringement claims focus on acts after January 6, 2006.
- Petrella filed suit January 6, 2009, seeking damages and injunctions only for conduct within the three-year window under §507(b).
- District and Ninth Circuit courts held laches barred the entire suit, including timely claims, based on delay and prejudice.
- Court held laches cannot bar damages within the §507(b) three-year window; extraordinary equitable relief may be limited, but not barred outright.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether laches bars damages within §507(b)’s window | Petrella argues laches cannot bar damages within three-year window | MGM argues laches should bar all relief | Laches cannot bar damages within the three-year window |
| Whether laches can bar equitable relief at the outset | Delay may be offset by other equitable factors | Laches can bar equitable relief in extraordinary cases | In extraordinary circumstances, laches may bar at the outset of relief, but not here |
| Relation of laches to statutory limitations and separate-accrual | §507(b) governs timing; separate accrual requires timely action for each act | Laches can override statutory timing | §507(b) and separate-accrual govern timing; laches cannot override damages window |
| Role of estoppel as alternative to laches | Estoppel could block claims where misrepresentation occurred | Estoppel is not a substitute for laches here | Estoppel and laches are distinct; estoppel not invoked to bar here |
| Policy of Congress in §507(b) and uniformity | Uniform limitations should not be overruled by laches | Laches serves equity in extraordinary cases | Court preserves §507(b)’s uniform limitations; laches not to bar within window; extraordinary relief possible in limited circumstances |
Key Cases Cited
- Stewart v. Abend, 495 U.S. 207 (1990) (inheritance of renewal rights upon author’s death; control over renewal transfers)
- Holmberg v. Armbrecht, 327 U.S. 392 (1946) (statutes of limitations not controlling in equitable relief; caution against broad laches use)
- Bay Area Laundry & Dry Cleaning Pension Trust Fund v. Ferbar Corp. of Cal., 522 U.S. 192 (1997) (laches available in certain federal actions to fill gaps where statute exists)
- New Era Publications Int’l v. Henry Holt & Co., 873 F.2d 576 (2d Cir. 1989) (exceptional equitable restraint; destruction relief not warranted)
- Chirco v. Crosswinds Communities, Inc., 474 F.3d 227 (6th Cir. 2007) (extraordinary circumstances; potential relief tailoring rather than total denial)
- Peter Letterese & Assocs., Inc. v. World Inst. of Scientology Enterprises, Int’l, 533 F.3d 1287 (11th Cir. 2008) (laches can bar copyright claims for damages in some circuits)
- Morgan v. United States, 536 U.S. 101 (2002) (separate accrual; continuing violations doctrine context)
- Holmberg Merck & Co. v. Reynolds, 559 U.S. 633 (2010) (discussed in context of tolling and limitations; equitable defenses)