U.S. Supreme Ct. Asked to Consider Laches Issue in <i>Raging Bull</i> Case

Judge William Fletcher, who offered the comment about the Ninth Circuit's hostility toward copyright owners in his Petrella concurrence, noted a “severe circuit split” over whether laches is a defense to copyright actions. “As the cert petition reflects, courts are definitely going different ways on this question,” says David Nimmer, of counsel to Irell & Manella and co-author with his late father Melville of Nimmer on Copyright, the leading reference treatise in the field.

Peter Petrella and lifelong friend Jake LaMotta grew up poor in the Bronx, NY, during the Depression. Petrella served five years in prison for a crime his daughter claims he did not commit, but while there he educated himself and won his freedom. When LaMotta turned to boxing as a career, Petrella took up business and writing. “While he was developing Raging Bull , he also wrote, directed, produced and acted in his own films, one of which he headlined with Jane Russell,” Paula Petrella said. “They all also featured Jake in one way or another.”

Petrella wrote three works based on LaMotta's experiences. In 1963, after the boxer's retirement from the ring, Petrella wrote a screenplay titled The Raging Bull , which he registered with the U.S. Copyright Office as sole author and claimant. In 1970, he wrote a book and registered it with the copyright office, which listed LaMotta as claimant and Petrella and Joseph Carter as authors. And in 1973, Petrella wrote a second screenplay, which he registered as sole author and claimant.

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, Stewart v. Abend, 495 U.S. 207, 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. Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir. 2001).

In Petrella, 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, Circuit Judge 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 Supreme Court 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,” Bibas 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.

MGM's counsel Perry 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.

He adds that, when a claimant waits 18 years to file suit “and this unreasonable delay inflicts actual economic and evidentiary prejudice on the defendants, a district court has ample discretion to bar the claim under the doctrine of laches, as the Ninth Circuit correctly concluded.”

CSEL filed an amicus brief supporting Petrella's petition. It argues that the decision is symptomatic of the Ninth Circuit's broader hostility to copyright plaintiffs and cites doctrines and case law that the circuit has distorted or failed to follow.

Steven Lowe of Los Angeles' Lowe & Associates, one of the group's founders, has compiled data on literary copyright infringement cases in the Ninth Circuit. He reported in a 2010 Los Angeles Lawyer article that studios or networks won all 29 cases decided between 1990 and 2010. “We've also looked at the Second Circuit,” he said. “They're pretty much running neck and neck with the Ninth.”

The laches question is not an easy one, according to Irell & Manella's Nimmer. “Usually, I can read a copyright case and say the plaintiff obviously wins, or the defendant obviously wins. I can see both sides on this one.”

UPDATE: On Oct. 1, the U.S. Supreme Court agreed to hear the case, according to Reuters. The case is'Petrella v. MGM, No. 12-1315.

Marcia Coyle is Chief Washington Correspondent for The National Law Journal, an ALM affiliate publication of Entertainment Law & Finance.

Frank “Peter” Petrella helped world middleweight champion Jake LaMotta teach actor Robert De Niro how to box for the Academy Award-winning film Raging Bull . Now Petrella's daughter is taking those fight lessons into a different arena ' the U.S. Supreme Court. In Petrella v. Metro-Goldwyn-Mayer Inc., 12-1315, Paula Petrella asks the justices to give her the chance to prove that MGM infringed the copyright on her late father's screenplay which, she contends, formed the basis for Raging Bull, considered one of the best films ever made.

At the same time, a new organization of lawyers ' the California Society of Entertainment Lawyers (CSEL) ' representing artists, writers and other creators, is urging the High Court to use her case to repudiate the U.S. Court of Appeals for the Ninth Circuit, noting that a judge on that federal appeals court has called it “the most hostile to copyright owners of all the circuits.” Petrella v. Metro-Goldwyn-Mayer Inc., 695 F.3d 946 (9th Cir. 2012). The organization's founder said that no plaintiff has won a literary copyright infringement case against film studios or networks in the Ninth Circuit in two decades.

The legal question in the Petrella petition for writ of certiorari presents a bread-and-butter concern for artists who spend years trying to assert their rights to their works and to the companies defending against their claims. Key to the case is the doctrine of laches, which bars a plaintiff from recovery if he or she waited too long to sue without a good reason. The idea is that it's unreasonable to expect a party to defend against a stale lawsuit. Petrella's lawyer, Stephanos Bibas of the University of Pennsylvania Law School's Supreme Court Clinic, argues the laches defense is not available in copyright infringement claims. MGM's counsel, Mark Perry of Gibson, Dunn & Crutcher insists that is so especially when a plaintiff, like Petrella, waited 18 years to assert her rights.

Judge William Fletcher, who offered the comment about the Ninth Circuit's hostility toward copyright owners in his Petrella concurrence, noted a “severe circuit split” over whether laches is a defense to copyright actions. “As the cert petition reflects, courts are definitely going different ways on this question,” says David Nimmer, of counsel to Irell & Manella and co-author with his late father Melville of Nimmer on Copyright, the leading reference treatise in the field.

Peter Petrella and lifelong friend Jake LaMotta grew up poor in the Bronx, NY, during the Depression. Petrella served five years in prison for a crime his daughter claims he did not commit, but while there he educated himself and won his freedom. When LaMotta turned to boxing as a career, Petrella took up business and writing. “While he was developing Raging Bull , he also wrote, directed, produced and acted in his own films, one of which he headlined with Jane Russell,” Paula Petrella said. “They all also featured Jake in one way or another.”

Petrella wrote three works based on LaMotta's experiences. In 1963, after the boxer's retirement from the ring, Petrella wrote a screenplay titled The Raging Bull , which he registered with the U.S. Copyright Office as sole author and claimant. In 1970, he wrote a book and registered it with the copyright office, which listed LaMotta as claimant and Petrella and Joseph Carter as authors. And in 1973, Petrella wrote a second screenplay, which he registered as sole author and claimant.

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, Stewart v. Abend, 495 U.S. 207, 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. Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir. 2001).

In Petrella, 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, Circuit Judge 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 Supreme Court 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,” Bibas 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.

MGM's counsel Perry 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.

He adds that, when a claimant waits 18 years to file suit “and this unreasonable delay inflicts actual economic and evidentiary prejudice on the defendants, a district court has ample discretion to bar the claim under the doctrine of laches, as the Ninth Circuit correctly concluded.”

CSEL filed an amicus brief supporting Petrella's petition. It argues that the decision is symptomatic of the Ninth Circuit's broader hostility to copyright plaintiffs and cites doctrines and case law that the circuit has distorted or failed to follow.

Steven Lowe of Los Angeles' Lowe & Associates, one of the group's founders, has compiled data on literary copyright infringement cases in the Ninth Circuit. He reported in a 2010 Los Angeles Lawyer article that studios or networks won all 29 cases decided between 1990 and 2010. “We've also looked at the Second Circuit,” he said. “They're pretty much running neck and neck with the Ninth.”

The laches question is not an easy one, according to Irell & Manella's Nimmer. “Usually, I can read a copyright case and say the plaintiff obviously wins, or the defendant obviously wins. I can see both sides on this one.”

UPDATE: On Oct. 1, the U.S. Supreme Court agreed to hear the case, according to Reuters. The case is'Petrella v. MGM, No. 12-1315.

Marcia Coyle is Chief Washington Correspondent for The National Law Journal, an ALM affiliate publication of Entertainment Law & Finance.