If you own a copyright — in a cat video, say — and someone rips it off — perhaps by posting it on his Kraaasy Kaaats website and claiming it as his own — how long can you and your heirs wait to sue for damages?
Under a new Supreme Court ruling, you can take your sweet time. Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12-1315 (U.S. May 19, 2014).
You — your heirs, actually — can even hold off, in theory, until just before the copyright expires, 70 years after your death.
But no matter when you bring an action, you can collect for only the preceding three years under the statute of limitations in the Copyright Act, 17 U.S.C. 507(b).
The case involved copyright in a 1963 screenplay that told the story of boxer Jake LaMotta's life. In 1976, the co-authors of the screenplay, LaMotta and his friend Frank Petrella, assigned their copyright in the screenplay, which later ended up with Metro-Goldwyn-Mayer, Inc. In 1980, MGM released "Raging Bull", which starred Robert DeNiro (at right), who won a Best Actor Academy Award for the role. MGM has since continued to market the movie.
But Congress conferred "renewal rights", which reverted to the authors or their heirs despite the fact that the original copyright belonged to someone else, usually by virtue of an assignment.
Paula Petrella obtained the copyright in the 1963 screenplay. In 1998, her lawyer told MGM that its sales of "Raging Bull" videos infringed her copyright. But she waited until 2009 to sue.
The district court dismissed the case under the equitable docrine of laches. The Ninth Circuit affirmed.
A 6-3 Supreme Court reversed. Laches cannot override Congress's judgment to allow suits to collect damages for a three year "look-back" period, the majority held.
The Court went on to rule that laches may limit a copyright owner's right to equitable relief other than an injunction and may bar a claim for a permanent injunction.
Justice Ginsburg wrote for the Court. Justice Breyer filed a dissent. Chief Justice Roberts and Justice Kennedy joined him
Will the ruling in Petrella carry over to other kinds of intellectual property cases — ones involving patent or trademark infringement, say? That will likely depend on the wording of the limitations provisions in the patent and trademark statutes.
The Copyright Act's statute of limitations for civil actions, in 17 U.S.C. 507(b), provides that "[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued."
The trademark statute, the Lanham Act, has now limitations provision, but it "expressly provides for defensive use of 'equitable principles, including laches.'" Petrella, slip op. at 13 n.15 (citing 15 U.S.C. 115(b)(d)).
The patent-law limitations period, in 35 U.S.C. 286, says that, "[e]xcept as provided for by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action." The Petrella majority noted that "the Federal Circuit has held that laches can bar damages incurred prior to the commencement of suit, but not injunctive relief." Id. The Court went on to note that it has "not had occasion to review the Federal Circuit's position.
Blawgletter will bet that Petrella does control the laches-within-the-limitations-period for patent infringement cases. We even predict that the Federal Circuit will so hold, before the Court does have occasion to review that court's position post-Petrella.
We watched "Raging Bull" for the first time tonight. In view of all the blood that the boxers spilled, especially LaMotta, we felt grateful that the director Martin Scorsese chose to go with black-and-white. We also admired De Niro's ability to go from a shrink-wrapt, abs-o'-steel menace in the ring to a tubby, sotty, and pitiful Miami night club owner who specializes in insults and dumb jokes for his patrons.
But did it have some intensity. That movie still has legs.
Photo credit: RoidRanger/Shutterstock