A “Raging Bull” Won't Quit: The Doctrine of Delay and Copyright Infringement

A “Raging Bull” Won't Quit: The Doctrine of Delay and Copyright Infringement

Rules define sport. In boxing, a fighter who is knocked down has a ten-second count to stand up and continue the match. If they fail, they are declared “knocked out” and their opponent wins. Rules also define law - except that in the world of law, the fighter can be declared “knocked out” before they even step into the ring.

And that's exactly what happened in Paula Petrella v Metro-Goldwyn-Mayer Inc, 695 F.3d 946 (2012). On October 1, 2013, the U.S. Supreme Court announced it would hear an appeal.

After boxer Jake LaMotta retired, he collaborated with author Frank Petrella to write a book and two screenplays about his life. In 1976, the rights to the book and both screenplays were assigned “exclusively and forever, including all periods of copyright and renewals and extensions thereof” to Chartoff Winkler Productions Inc., who subsequently assigned them to Metro-Goldwyn-Mayer Inc. (“MGM”). These works allegedly formed the basis for the critically-acclaimed film Raging Bull.

In 1981, Mr. Petrella died, and his “exclusive and forever” assignment became not quite “exclusive and forever” any longer. Before the U.S. Copyright Act was amended in 1976 to extend protection for the life of the author plus fifty years (later increased even further in 1998), the period of copyright protection for Mr. Petrella was a 28-year original term followed by a second 28-year renewal term. But in 1990, the U.S. Supreme Court decided in Stewart v Abend, 495 US 207 (1990), that an assignment by an author of his or her renewal rights made before the original copyright expires is valid against the world, if the author is alive at the commencement of the renewal period. If the author dies before the commencement of the renewal period, the rights revert back to the author’s heirs, notwithstanding any agreement to assign the renewal rights to a third party.

Because Mr. Petrella died before the commencement of the renewal period for his 1963 screenplay, his rights reverted back to his daughter Paula in 1991, who then had a cause of action against MGM for copyright infringement. However, Ms. Petrella did not sue MGM until 2009, eighteen years after she became aware of her right to do so.

The US district court (C.D. Cal.) viewed her delay as unreasonable and granted summary judgment for the defendants based on the equitable doctrine of laches, whatever the merits of Ms. Petrella's claims (the district court’s decision is available at appendix B of the plaintiff’s petition for a writ of certiorari). The Ninth Circuit affirmed (albeit reluctantly in a concurring judgment by Circuit Judge Fletcher).

The point is that Ms. Petrella's suit, albeit eighteen years after she became aware of it, was still within the statutory limitation period found in the U.S. Copyright Act. The three-year limitation period for civil actions accrues separately for each act of infringement, essentially creating a “rolling” limitation period for a series of continuing subsequent infringements. While Ms. Petrella filed her lawsuit in 2009, her claim only covered infringements that had occurred in or after 2006.

Applying the doctrine of laches to override a statutory limitation period may create uncertainty where none should exist. The three-year limitation period provides a hard-line rule for plaintiffs and defendants to rely on. Barring any consideration of the merits of a plaintiff’s claim despite her complying with the letter of the statute seems an unjustifiable boon for defendants. Courts elsewhere would agree. In the recent Canadian case of Tajdin v Aga Khan, (2012) FCA 12, Gauthier J.A. had difficulty seeing how the doctrine of laches could apply in light of a statutory limitation period, and other U.S. circuits do not recognize laches as a defence at all.

Meanwhile, in Fisher v Brooker [2009] UKHL 41 (“Fisher”), the House of Lords allowed a claim of co-authorship where a plaintiff had waited for thirty-eight years before suing.  It affirmed an award to the plaintiff of a percentage of the copyright in the disputed work. The court found that the defendants, far from being prejudiced by the delay, had financially benefited from it by not being liable for back royalties.  Similarly, Ms. Petrella’s delay has benefited MGM because the company has enjoyed twenty-six years of profits that Ms. Petrella is statute-barred from claiming.

In contrast to Fisher, a recent decision of the Ninth Circuit Court of Appeals has ruled that claims of co-authorship are statute-barred three years after “plain and express repudiation of co-ownership [has been] communicated to the claimant.”

The U.S. Supreme Court will therefore have to decide whether plaintiffs who “sleep on their rights” allow defendants to dream easily, unaffected by long-standing copyright claims.

Fraser Turnbull is a JD Candidate at Osgoode Hall Law School and is enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.