The doctrine of laches cannot be invoked as a bar to a plaintiff's claim for damages brought within the Copyright Act’s three-year statute of limitations period, according to the United States Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. The Court, in a 6-3 decision, held that Congress prescribed a specified period in which a copyright holder can recover damages for infringement and, “[t]o the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period . . . courts are not at liberty to jettison Congress’ judgment on the timeliness of suit.” A laches defense is still viable, however, to bar equitable relief “in extraordinary circumstances” and as a factor at the remedial stage. As a result of this decision, copyright holders who previously refrained from pursuing an infringement action could be invigorated to bring suit, and businesses should be mindful that relying on a copyright holder’s prior inaction will not bar a future copyright infringement suit, regardless of how much time or money was invested into the allegedly infringing activity. In addition, the Court’s decision raises questions regarding the applicability of a laches defense to other laws with statutory limitations periods—including patent law.
Paula Petrella is the daughter and sole remaining heir to Frank Petrella, an author of the screenplay on which the movie Raging Bull was allegedly based. In 1967, Frank Petrella assigned his copyright, including renewal rights, in the 1963 screenplay to Chartoff-Winkler Productions, Inc. A subsidiary of Metro-Goldwyn-Mayer, Inc. (“MGM”) ultimately acquired the motion picture rights to the screenplay prior to the release of Raging Bull in 1980. Frank Petrella died in 1981—shortly after the movie’s release—and, under copyright law, the renewal rights that MGM acquired reverted to Frank Petrella’s heirs upon his death. In other words, when the initial copyright term for the screenplay expired in 1991 (because pre-1978 works are protected for an initial term of 28 years that can be renewed for up to 67 years), Paula Petrella could—and did—renew the copyright and become the sole owner of the copyright in that work, notwithstanding any past assignments.
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