MVS Filewrapper® Blog: Copyright 3-year Statute of Limitations Trumps Laches Defense

PETRELLA v. METRO-GOLDWYN-MAYER, INC.

 

Frank Petrella wrote two screenplays and one book based on the life of boxing champion Jake LaMotta.  One of the screenplays, registered in 1963, identifies Patrella as the sole author, written in collaboration with LaMotta.  LaMotta and Patrella assigned their rights in the screenplay, including renewal rights, to Chartoff-Winkler Productions, Inc. in 1976, who in turn sold the motion picture rights to Metro-Goldwyn-Mayer, Inc. (MGM).  MGM released the motion picture portrayal of Jake LaMotta in 1980:  Raging Bull, staring Robert DeNiro and directed by Martin Scorcese. 

 

Patrella died in 1981, during the original term of the copyright in the screenplay.  Under the Supreme Court's decisions in Stewart v. Abend and Miller Music Corp. v. Charles N. Daniels, Inc., the right to renewal of the copyright reverted to Patrella's heirs, unencumbered by any of the assignments previously made by Patrella.  Patrella's daughter filed a renewal of the copyright in the screenplay in 1991.  In 1998, Patrella's daughter notified MGM that she owned the copyright in the screenplay, and any further exploitation of any derivative work, including Raging Bull, infringed that copyright.  A copyright infringement suit was not filed, however, until 2009.

 

Section 507(b) of the Copyright Act establishes a three-year limitation on claims seeking relieve for copyright infringement.  The 2009 complaint sought monetary and injunctive relief for violation of the copyright in the 1963 screenplay by using, producing, and distributing Raging Bull.  However, the complaint only sought such relief for acts occurring on or after January 6, 2006—three years prior to filing the suit.  MGM moved for summary judgment based on the doctrine of laches, asserting that even though the three-year limitations period set out in the statute had not run out, the claim was still barred under the equitable principle of laches— the 18 year delay between obtaining the copyright and filing suit was unreasonable and prejudicial.  The district court granted the motion, which was affirmed by the Ninth Circuit Court of Appeals.     

 

On ultimate appeal, the Supreme Court held that a copyright infringement suit seeking relief solely for conduct occurring within the limitations period cannot be precluded by a claim of laches, so long as the claim for damages is brought within the three-year window.  The Court highlighted that laches is an equitable defense, applicable to claims for which the legislature has not provided a limitation period.  Although laches may not preclude an infringement claim made within the limitations period, the Court made clear that other doctrines such as estoppel may limit the relief awarded.   

 

The full opinion is available here. 

Eleventh Circuit: Laches presumed not to apply in copyright case filed during limitations period

In a decision last week, the Eleventh Circuit affirmed in part and vacated in part a district court decision granting summary judgment in a copyright infringement action.  The central disagreement between the parties was over the scope of copyright protection in a book about sales techniques.  The district court granted the defendant's motion for summary judgment, finding fair use and laches precluded recovery.  

The Eleventh Circuit affirmed in the district court's decision as to whether instructional courses constituted derivative works.  However, the court vacated and remanded in part the district court's application of the fair use doctrine and laches.  Regarding laches, the court held, as a matter of first impression in the circuit, that laches may be raised as a defense in a copyright infringement action, even when the statute of limitations has not yet run.  However the court stated there is a "strong presumption" against laches when a claim is filed within the limitations period, only applying in "the most extraordinary circumstances."

Regarding fair use, the court criticized the district court's use of a so-called fifth fair use factor, specifically the consent of the copyright owner.  The court stated analyzing consent in the context of fair use was "incorrect, both in terms of logic and precedent," because "the existence of actual consent negates the necessity of conducting a fair use analysis in the first place."  Ultimately, there were sufficient questions of fact for one of the plaintiff's four claims to survive summary judgment, and the court remanded that claim for further consideration.

More on Peter Letterese & Assocs., Inc. v. World Institute of Scientology Enters. after the jump.

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Ninth Circuit: Heirs of "Pink Panther" coauthor do not retain interest in copyright in the films

In a decision last week, the Ninth Circuit affirmed the district court's grant of summary judgment in a copyright case, holding that a coauthor of a story treatment is not necessarily a coauthor of a motion picture produced based on that treatment, and the factors applied to determine coauthorship led to the conclusion that the coauthor of the treatment was not a coauthor of the motion picture. 

In this case, that meant the heirs of one coauthor of the treatment that formed the basis for the film "The Pink Panther" could not assert an interest in the copyright in the motion picture.  Likewise, renewal of the copyright in the motion picture had no effect on the copyright of the treatment, as its copyright is separate and distinct under the law.  Accordingly, the court affirmed the district court's grant of summary judgment.

More on Richlin v. Metro-Goldwyn-Mayer Pictures, Inc. after the jump.

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Fourth Circuit affirms refusal of copyright registration: insufficient creativity

The Fourth Circuit yesterday affirmed the denial of copyright registration to an individual who had adapted United States Census maps for use on his website.  The only changes to the maps were the addition of colors, changing the typeface of the state abbreviations, and a change in layout for some of the state indications.  The court affirmed the Copyright Office's determination that the adapted maps were not copyrightable.  They were derivative works of the U.S. Census maps, and therefore only the added or changed portions were subject to copyright protection.  However, the modifications were entirely "uncopyrightable elements such as a change of layout, format, size, spacing, or coloring," and so the refusal to register was affirmed.

More details of Darden v. Peters after the jump.

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Ninth Circuit defines differences between derivative and collective works

Yesterday, the Ninth Circuit decided a copyright case dealing with the differences between derivative and collective works.  The defendant took photographs which were licensed to it individually by the plaintiff and, after the term of its license had expired, modified the photographs and integrated them into "collage" advertisements.

The court held that these advertisements were derivative works rather than collective works, and as a result use of the plaintiff's photographs in them constituted infringement of the copyright in the photographs.  This was important in this case, because the copyright owner registered the works after several earlier acts of infringement of the photos, but before these advertisements were created.  As a result, the copyright owner could seek statutory damages and, potentially, attorney fees for the copyright infringement for the collage advertisements.  This case is therefore a reminder of the benefits of early copyright registration in order to keep all potential remedies for infringement available if an author's work is copied.

More details of the case after the jump. 

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