Ninth Circuit Report

• Publication year: 2014
• Author: Anne-Marie Dao

Ninth Circuit Report

Anne-Marie Dao

Miclean Gleason LLP

The 2013 Winter Issue of the Ninth Circuit Report featured a discussion of the Petrella v. Metro-Goldwyn-Mayer, Inc. (the "Raging Bull") case. Since then, the Supreme Court heard oral arguments and remanded the case, reversing the Ninth Circuit decision.

BACKGROUND1

Jake LaMotta, a retired boxer, and his friend Frank Peter Petrella collaborated on a book and two screenplays (collectively "the works"), which allegedly became the basis for the movie Raging Bull, starring Robert De Niro.² The works were registered with the U.S. Copyright Office in 1963 (screenplay), 1970 (screenplay), and 1973 (book).³ On November 19, 1976, Jake LaMotta and Frank Petrella assigned "all of their respective copyright rights in the book" and screenplay (reserving certain rights to themselves) to Chartoff-Winkler Productions, Inc.⁴ Approximately two years after the original assignment, United Artists Corporation (a wholly owned subsidiary of Metro-Goldwyn-Mayer Studios, Inc.) acquired the motion picture rights to Raging Bull and registered a copyright in the film around September 1980.⁵

Frank Petrella passed away in 1981, and his renewal rights passed to his heirs.⁶ In 1991, Frank Petrella's daughter, Paula Petrella, had a renewal application filed on her behalf for the 1963 screenplay.⁷ Seven years after that, in 1998, Paula Petrella's attorney contacted the Defendants in this case claiming that Raging Bull is an exploitation of a derivative work, and thus an infringement on her exclusive copyright rights.⁸ Ms. Petrella and the Defendants exchanged letters for two years, with the final letter being dated April 5, 2000.⁹ Nine years later, Ms. Petrella initiated the lawsuit that has since made its way to the Supreme Court.¹⁰ The Defendants moved for summary judgment on September 25, 2009, and oral arguments were heard on October 22, 2009.¹¹ The district court granted the Defendants' Motion for Summary Judgment on February 03, 2010 based on their defense of laches.¹²

SUPREME COURT OPINION

The Supreme Court granted certiorari to address the issue of utilizing "...the equitable defense of laches to copyright infringement claims brought within the three-year look-back period prescribed by Congress."¹³ On January 21, 2014 the Supreme Court heard oral arguments and on May 19, 2014, the Court issued an opinion authored by Justice Ginsburg. Justices Scalia, Thomas, Alito, Sotomayor, and Kagan joined in Justice Ginsburg's opinion, while Justice Breyer filed a dissenting opinion which was joined by Chief Justice Roberts and Justice Kennedy.¹⁴ Indeed, because "the courts below held that laches barred [Ms. Petrella's] suit in its entirety, without regard to the currency of the conduct of which Petrella complains. That position... is contrary to § 507(b) and [the Supreme Court's] precedent on the province of laches."¹⁵

The Court's decision began with a discussion of four tenants of copyright law: first, the length of the copyright term (28 years with a renewal period of up to 67 years); ¹⁶ second, the ability of the author's heirs to inherit renewal rights;¹⁷ third, the equitable and legal civil remedies for infringement provided by the Act;¹⁸ and "most significant here, the statute of limitations."¹⁹ The Court expounded upon this at length in the Opinion, and summarized as such: "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...