WASHINGTON (CN) – The daughter of the screenwriter behind the classic film “Raging Bull” may have a copyright case against the studio, the Supreme Court ruled Monday.
Boxer Jake LaMotta had worked decades ago with his longtime friend Frank Petrella to co-author two screenplays and the book “Raging Bull: My Story.” The 1970 book appeared under the pseudonym Peter Savage. Petrella died in 1981, a year after Martin Scorsese adapted the material into a now acclaimed and beloved film.
In 1991, the writer’s daughter, Paula Petrella, renewed the rights to the 1963 screenplay, but not the second screenplay or the book for herself. Another seven years went by before her attorney contacted Metro-Goldwyn-Mayer to assert her rights over the film as a derivative work.
The parties exchanged letters for two years, and Petrella finally sued MGM and its subsidiaries in 2009, claiming that the copyright had reverted to her after her father’s death.
Finding that Petrella could have filed her complaints many years before she did so, U.S. District Judge George Wu in Los Angeles found the claims barred by the doctrine of laches, which penalizes inexcusable delays in filing suit.
A Pasadena-based panel of the 9th Circuit unanimously affirmed in August 2012, but the Supreme Court reversed, 6-3, on Monday, deeming that position contrary to Section 507(b) of the Copyright Act.
The relevant statute of limitations holds that, “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,” Justice Ruth Bader Ginsburg wrote for the majority (parentheses in original).
There is also precedent “against invoking laches to bar legal relief,” the 26-page decision states.
“The expansive role for laches MGM envisions careens away from understandings, past and present, of the essentially gap-filling, not legislation-overriding, office of laches,” Ginsburg wrote. “Nothing in this court’s precedent suggests a doctrine of such sweep. Quite the contrary, we have never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period. Inviting individual judges to set a time limit other than the one Congress prescribed, we note, would tug against the uniformity Congress sought to achieve when it enacted §507(b).”
The court also contrasted laches with equitable tolling, which can lengthen the time for commencing a civil action in appropriate circumstances.
While that rule is tied to the limit, laches “originally served as a guide when no statute of limitations controlled the claim; it can scarcely be described as a rule for interpreting a statutory prescription.”
“That is so here, because the statute, §507(b), makes the starting trigger an infringing act committed three years back from the commencement of suit, while laches, as conceived by the Ninth Circuit and advanced by MGM, makes the presumptive trigger the defendant’s initial infringing act,” Ginsburg added (emphasis in original).
Petrella did not forfeit her claim by waiting until the film “Raging Bull” made money, the court found.
“There is nothing untoward about waiting to see whether an infringer’s exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it,” Ginsburg wrote. “Fan sites prompted by a book or film, for example, may benefit the copyright owner. Even if an infringement is harmful, the harm may be too small to justify the cost of litigation.
“If the rule were, as MGM urges, ‘sue soon, or forever hold your peace,’ copyright owners would have to mount a federal case fast to stop seemingly innocuous infringements, lest those infringements eventually grow in magnitude. Section 507(b)’s three-year limitations period, however, coupled to the separate-accrual rule avoids such litigation profusion. It allows a copyright owner to defer suit until she can estimate whether litigation is worth the candle. She will miss out on damages for periods prior to the three-year look-back, but her right to prospective injunctive relief should, in most cases, remain unaltered.”
Ginsburg also highlighted that “Petrella notified MGM of her copyright claims before MGM invested millions of dollars in creating a new edition of Raging Bull.”
“And the equitable relief Petrella seeks – e.g., disgorgement of unjust gains and an injunction against future infringement – would not result in ‘total destruction’ of the film, or anything close to it,” the decision concludes. “MGM released Raging Bull more than three decades ago and has marketed it continuously since then. Allowing Petrella’s suit to go forward will put at risk only a fraction of the income MGM has earned during that period and will work no unjust hardship on innocent third parties, such as consumers who have purchased copies of Raging Bull. The circumstances here may or may not (we need not decide) warrant limiting relief at the remedial stage, but they are not sufficiently extraordinary to justify threshold dismissal.”
Chief Justice John Roberts and Justice Anthony Kennedy joined the dissent that Justice Stephen Breyer wrote.
It opens with a reference to a 1916 decision in New York by famed Judge Learned Hand, who found it inequitable for a copyright owner to “stand inactive while the proposed infringer spends large sums of money in its exploitation, and to intervene only when his speculation has proved a success.”
“The petitioner claims the MGM film ‘Raging Bull’ violated a copyright originally owned by her father, which she inherited and then renewed in 1991,” Breyer wrote. “She waited 18 years after renewing the copyright, until 2009, to bring suit. During those 18 years, MGM spent millions of dollars developing different editions of, and marketing, the film. MGM also entered into numerous licensing agreements, some of which allowed television networks to broadcast the film through 2015. Meanwhile, three key witness died or became unavailable, making it more difficult for MGM to prove that it did not infringe the petitioner’s copyright (either because the 1963 screenplay was in fact derived from a different book, the rights to which MGM owned under a nonchallenged license, or because MGM held a license to the screenplay under a 1976 agreement that it signed with Jake LaMotta, who coauthored the screenplay with the petitioner’s father. Consequently, I believe the Court of Appeals acted lawfully in dismissing the suit due to laches.
Long delays do not automatically prove inequity, but depending upon the circumstances, they raise that possibility.”
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