Raging Battle Over Copyright
The IP bar is hanging on a dispute over the rights to a classic movie.
The two friends assigned all of their copyrights in the three works to Chartoff-Winkler Productions in 1976. United Artists, a wholly owned subsidiary of MGM, acquired the motion picture rights in 1978 and, in 1980, United Artists released Raging Bull, based on LaMotta's life and starring De Niro. Petrella was credited as a producer.
Petrella, who acted under the name Peter Savage, died in 1981. Under a 1990 Supreme Court decision, his renewal rights in the three works reverted to his heirs because he died during the original 28-year terms of his copyrights. In 1991, his widow, daughter and son renewed the copyright on the 1963 screenplay. Paula Petrella became the sole owner of all rights to that screenplay after her mother died and her brother assigned his rights to her.
During 1998, 1999 and 2000, Petrella's lawyer and MGM's counsel exchanged a series of letters in which Petrella contested MGM's right to continue to reproduce and distribute the film, according to her court petition. MGM claimed the film was unlikely to ever be profitable, states Bibas' petition, although it did produce a 25th anniversary edition in 2005.
In 2009, Petrella sued MGM, United Artists and related subsidiaries in federal district court for infringement, unjust enrichment and an accounting. Because of the three-year statute of limitations in federal copyright law, she could only seek damages related to the 1963 screenplay for acts of infringement occurring in or after 2006. The district court, relying on a 2001 Ninth Circuit decision, granted summary judgment to MGM on the defense of laches.
The district court did not reach the merits of whether the 1963 screenplay was substantially similar to the film but noted there was a legitimate disagreement between the parties on that issue. A three-judge panel of the Ninth Circuit affirmed, rejecting Petrella's reasons for the delay in filing suit from the time of the 1990 Supreme Court decision until 2009. Those reasons, the court said, were her brother's disability and her mother's illness, which required her to move from Los Angeles to New York to care for them; her mother's fear of retaliation from the defendants; and their inability to afford the lawsuit.
"More importantly, the evidence suggests the true cause of [petitioner's] delay was, as she admits, that 'the film hadn't made money' during this time period," the appellate panel wrote. (A disputed fact, say Petrella's lawyers.)
Although he concurred in the decision, Fletcher wrote, "Our circuit has taken a wrong turn in its formulation and application of laches in copyright cases."
In Petrella's petition asking the justices to take her case, her counsel, Bibas, argues that three circuits hold that, as a matter of law, laches cannot entirely bar such suits. Two others erect strong presumptions against laches, limiting the defense to exceptional cases. Only the Ninth Circuit, he contends, presumes that laches is available to bar continuing-infringement cases such as Petrella's.
"The circuit conflict is entrenched, acknowledged, vitally important, and squarely presented," he wrote.
Bibas' main argument is that laches is an equitable doctrine that courts may not use to override Congress' explicit statute of limitations. "Laches requires case-specific balancing of the reasons for a delay and the prejudice caused by it, which is at odds with the statute of limitations' predictable bright-line rule," the petition says.
Perry, MGM's counsel, contends that Bibas has "conjured up" a circuit split on the issue.
"Petitioner cites no case from this Court, and respondents are aware of none, that holds that the mere existence of a federal statute of limitations deprives federal courts of their centuries-old equitable power, and obligation, to determine whether laches bars a stale claim," Perry wrote in his brief opposing review.