Petrella v. Metro-Goldwyn-Mayer, Inc.

Decision Date19 May 2014
Docket NumberNo. 12–1315.,12–1315.
Parties Paula PETRELLA, Petitioner v. METRO–GOLDWYN–MAYER, INC., et al.
CourtU.S. Supreme Court

Stephanos Bibas, for Petitioner.

Nicole A. Saharsky, for the United States as amicus curiae, by special leave of the Court, supporting the petitioner.

Mark A. Perry, Washington, DC, for Respondents.

Glen L. Kulik, Kulik Gottesman & Siegel LLP, Sherman Oaks, CA, Stephanos Bibas, Counsel of Record, James A. Feldman, Nancy Bregstein Gordon, Philadelphia, PA, for Petitioner.

Jonathan Zavin, Wook Hwang, Loeb & Loeb LLP, New York, NY, David Grossman, Robert J. Catalano, Loeb & Loeb LLP, Los Angeles, CA, Mark A. Perry, Counsel of Record, Theodore B. Olson, G. Brinton Lucas, Lindsay S. See, Gibson, Dunn & Crutcher LLP, Washington, DC, Blaine H. Evanson, Gibson, Dunn & Crutcher LLP, Los Angeles, CA, Counsel for Respondents.

Justice GINSBURG delivered the opinion of the Court.

The Copyright Act provides that "[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued." 17 U.S.C. § 507(b). This case presents the question whether the equitable defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief on a copyright infringement claim brought within § 507(b)'s three-year limitations period. Section 507(b), it is undisputed, bars relief of any kind for conduct occurring prior to the three-year limitations period. To the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period, however, courts are not at liberty to jettison Congress' judgment on the timeliness of suit. Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window. As to equitable relief, in extraordinary circumstances, laches may bar at the very threshold the particular relief requested by the plaintiff. And 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." § 504(b).1

Petitioner Paula Petrella, in her suit for copyright infringement, sought no relief for conduct occurring outside § 507(b)'s three-year limitations period. Nevertheless, the courts below held that laches barred her suit in its entirety, without regard to the currency of the conduct of which Petrella complains. That position, we hold, is contrary to § 507(b) and this Court's precedent on the province of laches.


The Copyright Act (Act), 17 U.S.C. § 101 et seq., grants copyright protection to original works of authorship. § 102(a). Four aspects of copyright law bear explanation at the outset.

First, the length of a copyright term. Under the Act, a copyright "vests initially in the author or authors of the work," who may transfer ownership to a third party. § 201. The Act confers on a copyright owner certain exclusive rights, including the rights to reproduce and distribute the work and to develop and market derivative works. § 106. Copyrighted works published before 1978—as was the work at issue—are protected for an initial period of 28 years, which may be—and in this case was—extended for a renewal period of up to 67 years. § 304(a). From and after January 1, 1978, works are generally protected from the date of creation until 70 years after the author's death. § 302(a).

Second, copyright inheritance. For works copyrighted under the pre–1978 regime in which an initial period of protection may be followed by a renewal period, Congress provided that the author's heirs inherit the renewal rights. See § 304(a)(1)(C)(ii)(iv). We held in Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990), that if an author who has assigned her rights away "dies before the renewal period, then the assignee may continue to use the original work [to produce a derivative work] only if the author's successor transfers the renewal rights to the assignee." Id., at 221, 110 S.Ct. 1750.2

Third, remedies. The Act provides a variety of civil remedies for infringement, both equitable and legal. See §§ 502–505, described supra, at 2, n. 1. A court may issue an injunction "on such terms as it may deem reasonable to prevent or restrain infringement of a copyright." § 502(a). At the election of the copyright owner, a court may also award either (1) "the copyright owner's actual damages and any additional profits of the infringer," § 504(a)(1), which petitioner seeks in the instant case, or (2) statutory damages within a defined range, § 504(c).

Fourth, and most significant here, the statute of limitations. Until 1957, federal copyright law did not include a statute of limitations for civil suits. Federal courts therefore used analogous state statutes of limitations to determine the timeliness of infringement claims. See S.Rep. No. 1014, 85th Cong., 1st Sess., 2 (1957) (hereinafter Senate Report). And they sometimes invoked laches to abridge the state-law prescription. As explained in Teamsters & Employers Welfare Trust of Ill. v. Gorman Bros. Ready Mix, 283 F.3d 877, 881 (C.A.7 2002) : "When Congress fails to enact a statute of limitations, a [federal] court that borrows a state statute of limitations but permits it to be abridged by the doctrine of laches is not invading congressional prerogatives. It is merely filling a legislative hole." (internal citation omitted). In 1957, Congress addressed the matter and filled the hole; it prescribed a three-year look-back limitations period for all civil claims arising under the Copyright Act. See Act of Sept. 7, 1957, Pub.L. 85–313, 71 Stat. 633, 17 U.S.C. § 115(b) (1958 ed.). The provision, as already noted, reads: "No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued." § 507(b).3

The federal limitations prescription governing copyright suits serves two purposes: (1) to render uniform and certain the time within which copyright claims could be pursued; and (2) to prevent the forum shopping invited by disparate state limitations periods, which ranged from one to eight years. Senate Report 2; see H.R.Rep. No. 2419, 84th Cong., 2d Sess., 2 (1956). To comprehend how the Copyright Act's limitations period works, one must understand when a copyright infringement claim accrues.

A claim ordinarily accrues "when [a] plaintiff has a complete and present cause of action." Bay Area Laundry and Dry Cleaning Pension Trust Fund v. Ferbar Corp. of Cal., 522 U.S. 192, 201, 118 S.Ct. 542, 139 L.Ed.2d 553 (1997) (internal quotation marks omitted). In other words, the limitations period generally begins to run at the point when "the plaintiff can file suit and obtain relief." Ibid. A copyright claim thus arises or "accrue[s]" when an infringing act occurs.4

It is widely recognized that the separate-accrual rule attends the copyright statute of limitations.5 Under that rule, when a defendant commits successive violations, the statute of limitations runs separately from each violation. Each time an infringing work is reproduced or distributed, the infringer commits a new wrong. Each wrong gives rise to a discrete "claim" that "accrue[s]" at the time the wrong occurs.6 In short, each infringing act starts a new limitations period. See Stone v. Williams, 970 F.2d 1043, 1049 (C.A.2 1992) ("Each act of infringement is a distinct harm giving rise to an independent claim for relief.").

Under the Act's three-year provision, an infringement is actionable within three years, and only three years, of its occurrence. And the infringer is insulated from liability for earlier infringements of the same work. See 3 M. Nimmer & D. Nimmer, Copyright § 12.05[B][1][b], p. 12–150.4 (2013) ("If infringement occurred within three years prior to filing, the action will not be barred even if prior infringements by the same party as to the same work are barred because they occurred more than three years previously.").

Thus, when a defendant has engaged (or is alleged to have engaged) in a series of discrete infringing acts, the copyright holder's suit ordinarily will be timely under § 507(b) with respect to more recent acts of infringement (i.e., acts within the three-year window), but untimely with respect to prior acts of the same or similar kind.7

In sum, Congress provided two controlling time prescriptions: the copyright term, which endures for decades, and may pass from one generation to another; and § 507(b)'s limitations period, which allows plaintiffs during that lengthy term to gain retrospective relief running only three years back from the date the complaint was filed.


The allegedly infringing work in this case is the critically acclaimed motion picture Raging Bull, based on the life of boxing champion Jake LaMotta. After retiring from the ring, LaMotta worked with his longtime friend, Frank Petrella, to tell the story of the boxer's career. Their venture resulted in three copyrighted works: two screenplays, one registered in 1963, the other in 1973, and a book, registered in 1970. This case centers on the screenplay registered in 1963. The registration identified Frank Petrella as sole author, but also stated that the screenplay was written "in collaboration with" LaMotta. App. 164.

In 1976, Frank Petrella and LaMotta assigned their rights in the three works, including renewal rights, to Chartoff–Winkler Productions, Inc. Two years later, respondent United Artists Corporation, a subsidiary of respondent Metro–Goldwyn–Mayer, Inc. (collectively, MGM), acquired the motion picture rights to the book and both screenplays, rights stated by the parties to be "exclusiv[e] and forever, including all periods of copyright and renewals and extensions thereof." Id., at 49. In 1980, MGM released, and registered a copyright in, the film Raging Bull, directed by Martin Scorcese and starring Robert De Niro,...

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