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. 

Ninth Circuit: Pre-1923 published foreign works may still be copyrighted, depending on notice

In a decision last week, the Ninth Circuit affirmed a district court's grant of summary judgment in favor of the plaintiff in a copyright case.  The works at issue, sculptures by the famed artist Renior and coauthored by one of his assistants, Richard Guino, were created between 1913 and 1917, and first published in France no later than 1917.  However, because they were not published with a U.S.-type copyright notice before 1978 (when the 1976 Copyright Act became effective).

The Ninth Circuit found this fact significant.  It held that because the works were not published with such a notice until after the effective date of the 1976 Act, they were never subject to U.S. copyright under the 1909 Copyright Act, and therefore could not have fallen into the public domain in the U.S.  As a result, the work fell under 17 U.S.C. § 303(a), which covers works that were created before January 1, 1978, but not previously in the public domain or copyrighted, rather than § 104A, which covers foreign works not in the public domain in their country, but, for one of various reasons, in the public domain in the United States.  Given this, the work was entitled to protection for the life of the author plus 70 years, which in this case is 2043 (70 years after Guino's death in 1973).  Because the work was still under copyright, the court affirmed the district court's summary judgment to the plaintiff.

This holding is particularly interesting because, as the Ninth Circuit noted, "[t]he year 1923 is significant because the 1976 Act . . . and the 1998 Copyright Extension Act operate together to create a bright line rule for which works are now in the public domain:  works published before January 1, 1923 are generally in the public domain."  This rule is even noted in Copyright Office Circular 22.  This holding complicates that issue, confirming that one must be more careful when attempting to determine the copyright status of an unpublished foreign work.

More detail of Societe Civile Succession Richard Guino v. Renoir after the jump.

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