throbber
No. _________
`================================================================
`
`In The
`Supreme Court of the United States
`
`---------------------------------  ---------------------------------
`
`PAULA PETRELLA,
`
`Petitioner,
`
`v.
`
`METRO-GOLDWYN-MAYER, INC., ET AL.,
`
`Respondents.
`
`---------------------------------  ---------------------------------
`
`On Petition For A Writ Of Certiorari
`To The U.S. Court Of Appeals
`For The Ninth Circuit
`
`---------------------------------  ---------------------------------
`
`PETITION FOR A WRIT OF CERTIORARI
`
`---------------------------------  ---------------------------------
`
`GLEN L. KULIK
`KULIK GOTTESMAN &
` SIEGEL LLP
`15303 Ventura Boulevard
`Suite 1400
`Sherman Oaks, CA 91403
`(310) 557-9200
`gkulik@kgslaw.com
`
`STEPHANOS BIBAS
` Counsel of Record
`JAMES A. FELDMAN
`NANCY BREGSTEIN GORDON
`UNIVERSITY OF PENNSYLVANIA
` LAW SCHOOL
` SUPREME COURT CLINIC
`3501 Sansom Street
`Philadelphia, PA 19104
`(215) 746-2297
`sbibas@law.upenn.edu
`
`Counsel for Petitioner
` Paula Petrella
`================================================================
`COCKLE LAW BRIEF PRINTING CO. (800) 225-6964
`OR CALL COLLECT (402) 342-2831
`
`

`
`i
`
`QUESTION PRESENTED
`
`
`The Copyright Act expressly prescribes a three-
`
`year statute of limitations for civil copyright claims.
`17 U.S.C. § 507(b). The three-year period accrues
`separately for each act of infringement, even if it is
`one of a continuing series of acts of infringement.
`
`The federal courts of appeals have divided 3-2-1
`
`over whether the nonstatutory defense of laches can
`bar a civil copyright suit brought within the express
`three-year statute of limitations. Three circuits forbid
`any application of laches or restrict the remedies to
`which it can apply. Two other circuits strongly dis-
`favor laches and restrict it to exceptional circum-
`stances. The Ninth Circuit not only does not restrict
`laches or the remedies to which it can apply, but has
`also adopted a presumption in favor of applying
`laches to continuing copyright infringements.
`
`
`
`The question presented is:
`
` Whether the nonstatutory defense of laches is
`available without restriction to bar all remedies for
`civil copyright claims filed within the three-year
`statute of limitations prescribed by Congress, 17
`U.S.C. § 507(b).
`
`

`
`ii
`
`PARTIES TO THE PROCEEDING
`
`
`Petitioner is Paula Petrella. Petitioner was
`
`plaintiff-appellant below.
`
`Respondents are Metro-Goldwyn-Mayer, Inc.;
`
`Metro-Goldwyn-Mayer Studios, Inc.; Metro-Goldwyn-
`Mayer Home Entertainment, LLC; Metro-Goldwyn-
`Mayer Home Entertainment Distribution Corp.;
`United Artists Corp.; and 20th Century Fox Home
`Entertainment, LLC. All respondents were defendants-
`appellees below.
`
`

`
`iii
`
`TABLE OF CONTENTS
`
`Page
`Question Presented .............................................
`i
`Parties to the Proceeding ....................................
`ii
`Table of Contents .................................................
`iii
`Table of Authorities .............................................
`v
`Petition for a Writ of Certiorari...........................
`1
`Opinions Below ....................................................
`1
`Jurisdictional Statement .....................................
`1
`Constitutional and Statutory Provisions In-
`1
`volved ................................................................
`3
`Statement of the Case .........................................
`5
` A. Statutory Background ...............................
`7
` B. Factual and Procedural History ................
`Reasons for Granting the Writ ............................ 13
`
`I. The Circuits Are Deeply Divided Over
`Whether and When Laches Should Bar
`Copyright Claims Brought Within the
`Statute of Limitations ............................... 15
`A. Three Circuits Have Held That Laches
`Cannot Bar Some or All Forms of Re-
`lief for Timely Copyright Claims ......... 16
`B. Two Circuits Have Severely Restricted
`and Disfavored Laches as a Defense
`to Copyright Claims ............................ 19
`
`

`
`iv
`
`TABLE OF CONTENTS – Continued
`
`Page
`C. The Ninth Circuit Stands Alone in Al-
`lowing, and in Some Cases Presuming,
`the Defense of Laches in Copyright
`Cases Without Restriction .................... 22
`D. The Circuit Conflict Is Entrenched,
`Acknowledged, and Ripe for This
`Court’s Review ..................................... 24
` II. Applying Laches to Bar a Copyright
`Action Filed Within the Statutory Limi-
`tations Period Violates the Separation of
`Powers and Undermines the Copyright
`Act’s Purposes ............................................ 26
` III. The Circuit Split Encourages Forum
`Shopping, Which Is at Odds with Copy-
`right Law’s Emphasis on Nationwide
`Uniformity ................................................. 29
` IV. This Case Is a Clean Vehicle ..................... 32
`Conclusion............................................................ 34
`
`Appendices
` Panel Opinion, 695 F.3d 946 (9th Cir. 2012) ......... 1a
` District Court Opinion Granting Summary
`Judgment (C.D. Cal. Feb. 3, 2010) ....................... 28a
` Order Denying Rehearing En Banc (9th Cir.
`Jan. 30, 2013) ........................................................ 49a
`
`

`
`v
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Ashley v. Boyle’s Famous Corned Beef Co., 66
`F.3d 164 (8th Cir. 1995) .......................................... 22
`Associated Press v. Meltwater U.S. Holdings,
`Inc., No. 12-1087, 2013 WL 1153979 (S.D.N.Y.
`Mar. 21, 2013) ......................................................... 19
`Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
`489 U.S. 141 (1989) ................................................... 5
`Chirco v. Crosswinds Cmties., Inc., 474 F.3d
`227 (6th Cir. 2007) .......................... 19, 20, 21, 24, 31
`Cmty. for Creative Non-Violence v. Reid, 490
`U.S. 730 (1989) ........................................................ 30
`County of Oneida v. Oneida Indian Nation, 470
`U.S. 226 (1985) ........................................................ 27
`Cross v. Allen, 141 U.S. 528 (1891) ............................ 27
`Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th
`Cir. 2001) ......................................... 11, 12, 23, 24, 25
`Edward B. Marks Music Corp. v. Wonnell, 61
`F. Supp. 722 (S.D.N.Y. 1945) .................................. 18
`Eldred v. Ashcroft, 537 U.S. 186 (2003) ..................... 27
`EMI Entm’t World, Inc. v. Karen Records, Inc.,
`603 F. Supp. 2d 759 (S.D.N.Y. 2009) ...................... 18
`Evergreen Safety Council v. RSA Network, Inc.,
`697 F.3d 1221 (9th Cir. 2012) ................................. 23
`Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) ............ 30
`Holmberg v. Armbrecht, 327 U.S. 392 (1946) ............ 27
`
`

`
`vi
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Ikelionwu v. United States, 150 F.3d 233 (2d
`Cir. 1998) ................................................................. 17
`Ivani Contracting Corp. v. City of New York,
`103 F.3d 257 (2d Cir. 1997) ............................... 17, 18
`Jacobsen v. Deseret Book Co., 287 F.3d 936
`(10th Cir. 2002) ................................................. 21, 24
`Lego A/S v. Best-Lock Constr. Toys, Inc., 874
`F. Supp. 2d 75 (D. Conn. 2012) ............................... 18
`Looney Ricks Kiss Architects, Inc. v. Bryan, No.
`07-572, 2010 WL 5393859 (W.D. La. Dec. 22,
`2010) ........................................................................ 19
`Lyons P’ship v. Morris Costumes, Inc., 243 F.3d
`789 (4th Cir. 2001) .......................................... passim
`Mazer v. Stein, 347 U.S. 201 (1954) ........................... 28
`Miller v. Glen Miller Prods., Inc, 454 F.3d 975
`(9th Cir. 2006) ................................................... 12, 23
`New Era Publ’ns Int’l v. Henry Holt & Co., 873
`F.2d 576 (2d Cir.), reh’g denied, 884 F.2d 659
`(2d Cir. 1989) ..................................................... 18, 30
`Order of R.R. Telegraphers v. Ry. Express
`Agency, 321 U.S. 342 (1944) ................................... 29
`Peter Letterese & Assocs., Inc. v. World Inst. of
`Scientology Enters., Int’l, 533 F.3d 1287 (11th
`Cir.), reh’g denied, 307 F. App’x 438 (11th Cir.
`2008) ................................................ 17, 18, 24, 29, 30
`Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d
`946 (9th Cir. 2012) .......................................... passim
`
`

`
`vii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Rouse v. Walter & Assocs., 513 F. Supp. 2d 1041
`(S.D. Iowa 2007) ...................................................... 22
`Russell v. Todd, 309 U.S. 280 (1940) .......................... 27
`Sony Corp. of Am. v. Universal City Studios,
`Inc., 464 U.S. 417 (1984) ..................................... 5, 27
`Stewart v. Abend, 495 U.S. 207 (1990) ........... 5, 8, 9, 27
`Tenn. Valley Auth. v. Hill, 437 U.S. 153 (1978) ......... 26
`Thompson v. Hubbard, 131 U.S. 123 (1889) .............. 27
`United States v. Mack, 295 U.S. 480 (1935) ............... 27
`United States v. Rodriguez-Aguirre, 264 F.3d
`1195 (10th Cir. 2001) ......................................... 21, 24
`Washingtonian Co. v. Pearson, 306 U.S. 30
`(1939) ....................................................................... 28
`Wechsberg v. United States, 54 Fed. Cl. 158
`(2002) ....................................................................... 19
`Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834) ........... 27
`Ziegelheim v. Flohr, 119 F. Supp. 324 (E.D.N.Y.
`1954) ........................................................................ 18
`Zitz v. Pereira, 119 F. Supp. 2d 133 (E.D.N.Y.
`1999) .................................................................. 18, 22
`
`
`CONSTITUTIONAL PROVISION
`U.S. CONST., art. I, § 8, cl. 8 ...................................... 1, 5
`
`
`
`
`

`
`viii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`STATUTES
`28 U.S.C. § 1254(1) ....................................................... 1
`28 U.S.C. § 1400(a) ..................................................... 31
`Act of Sept. 7, 1957, Pub. L. No. 85-313, 71
`Stat. 633 (codified at 17 U.S.C. § 507(b)) ........... 6, 28
`Copyright Act of 1790, ch. 15, 1 Stat. 124 ................... 5
`Copyright Act of 1909, ch. 320, 35 Stat. 1075 ..... 27, 28
`Copyright Act of 1976, Pub. L. No. 94-553, 90
`Stat. 2541 ........................................................ passim
` 17 U.S.C. § 106 .......................................................... 2
` 17 U.S.C. § 107 .......................................................... 2
` 17 U.S.C. § 122 .......................................................... 2
` 17 U.S.C. § 201(d) ..................................................... 5
` 17 U.S.C. § 502 .................................................... 6, 20
` 17 U.S.C. § 503 .................................................... 6, 20
` 17 U.S.C. § 504 .................................................... 6, 20
` 17 U.S.C. § 505 .......................................................... 6
` 17 U.S.C. § 507(b) ................................................. 2, 3
`Equal Pay Act of 1963, 29 U.S.C. § 206(d) ................. 22
`Lanham Trademark Act of 1946, 15 U.S.C.
`§§ 1051-1141n .................................................... 23, 29
`Title VII of the Civil Rights Act of 1964, 42
`U.S.C. § 2000(e), et seq. ........................................... 22
`
`
`
`
`

`
`ix
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`OTHER AUTHORITIES
`The 53rd Academy Awards (1981) Nominees and
`Winners, THE OSCARS, http://www.oscars.org/
`awards/academyawards/legacy/ceremony/53rd-
`winners.html ............................................................. 8
`ADMIN. OFFICE OF THE U.S. COURTS, JUDICIAL
`BUSINESS OF THE UNITED STATES COURTS
`(2011) ....................................................................... 31
`Citizen Kane Stands the Test of Time, AM. FILM
`INST., http://www.afi.com/100years/movies10.
`aspx ............................................................................ 8
`THE FEDERALIST NO. 43 (James Madison)
`(Benjamin F. Wright ed., 1961) ............................... 30
`H.R. REP. NO. 85-150 (1957) ....................................... 28
`H.R. REP. NO. 94-1476 (1976), reprinted in
`1976 U.S.C.C.A.N. 5659 .................................... 21, 30
`3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER
`ON COPYRIGHT § 12.05 (Matthew Bender &
`Co. 2012) (on Lexis) ............................................. 6, 25
`6 WILLIAM F. PATRY, PATRY ON COPYRIGHT (West
`Mar. 2013) (on Westlaw)
` § 20:23........................................................................ 7
` § 20:25.............................................. 23, 25, 26, 29, 33
`S. REP. NO. 85-1014 (1957), reprinted in 1957
`U.S.C.C.A.N. 1961 ........................................... passim
`
`
`
`
`

`
`x
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`S. REP. NO. 94-473 (1975) ........................................... 28
`14D CHARLES ALAN WRIGHT ET AL., FEDERAL
`PRACTICE AND PROCEDURE § 3819 (3d ed.
`2008) ........................................................................ 31
`
`

`
`1
`
`PETITION FOR A WRIT OF CERTIORARI
`Paula Petrella respectfully petitions for a writ of
`
`certiorari to review the judgment of the U.S. Court of
`Appeals for the Ninth Circuit.
`
`---------------------------------  ---------------------------------
`
`OPINIONS BELOW
`The Ninth Circuit’s opinion is reported at 695
`
`F.3d 946 and reprinted at App. 1a-27a. The opinion of
`the U.S. District Court for the Central District of
`California is unreported but reprinted at App. 28a-
`48a. The Ninth Circuit’s order denying rehearing en
`banc is unreported but reprinted at App. 49a-50a.
`
`---------------------------------  ---------------------------------
`
`JURISDICTIONAL STATEMENT
`The Ninth Circuit filed its opinion on August 29,
`
`2012, and denied rehearing en banc on January 30,
`2013. This Court has jurisdiction under 28 U.S.C.
`§ 1254(1).
`
`---------------------------------  ---------------------------------
`
`CONSTITUTIONAL AND STATUTORY
`PROVISIONS INVOLVED
`The U.S. Constitution’s Copyright and Patent
`
`Clause, art. I, § 8, cl. 8, provides, in relevant part:
`
`
`
`The Congress shall have Power . . .
`
`. . .
`
`

`
`2
`
`To promote the Progress of Science and use-
`ful Arts, by securing for limited Times to Au-
`thors and Inventors the exclusive Right to
`their respective Writings and Discoveries;
`. . . .
`
`17 U.S.C. § 106 provides, in relevant part:
`
`Subject to sections 107 through 122, the
`owner of copyright under this title has the
`exclusive rights to do and to authorize any of
`the following:
`
`(1) to reproduce the copyrighted work in
`copies or phonorecords;
`
`(2) to prepare derivative works based upon
`the copyrighted work;
`
`(3) to distribute copies or phonorecords of
`the copyrighted work to the public by
`sale or other transfer of ownership, or by
`rental, lease, or lending;
`
`. . . .
`
`17 U.S.C. § 507(b) provides:
`
`Civil Actions. – No civil action shall be
`maintained under the provisions of this title
`unless it is commenced within three years af-
`ter the claim accrued.
`
`---------------------------------  ---------------------------------
`
`
`
`
`
`
`
`
`
`

`
`3
`
`STATEMENT OF THE CASE
`Under the Copyright Act, an express three-year
`
`statute of limitations restricts civil claims. 17 U.S.C.
`§ 507(b). This limitations period accrues separately
`for each act of infringement, even if prior acts of
`infringement began before the three-year period.
`Congress passed the Act to bring uniformity to copy-
`right law, in response to the varying time periods
`courts had previously been applying in different
`jurisdictions.
`
`In 1991, petitioner Paula Petrella renewed the
`
`copyright to her father’s 1963 screenplay, The Raging
`Bull, which formed the basis for the critically ac-
`claimed film Raging Bull. Respondents continued to
`market the film, so, after intermittent correspondence
`between the two sides’ lawyers, Ms. Petrella sued for
`copyright
`infringement
`in 2009. The three-year
`limitations period barred her from recovering damag-
`es for acts of infringement before 2006, but did not
`bar recovery of damages and injunctive relief for acts
`of infringement that occurred in 2006 or later. Never-
`theless, the district court granted summary judgment
`for respondents, holding that the nonstatutory de-
`fense of laches entirely barred Ms. Petrella’s suit. The
`Ninth Circuit affirmed, based on binding circuit
`precedent, and denied rehearing en banc.
`
`The federal courts of appeals are deeply divided
`
`over whether, and in what circumstances, the equita-
`ble defense of laches can bar civil copyright claims
`brought within the statute of limitations. Three
`
`

`
`4
`
`circuits hold that the defense never bars a claim or is
`never available to bar certain types of relief. Two
`circuits hold that it is strongly disfavored and restrict
`its application to rare cases. Only the Ninth Circuit
`applies laches without restriction, and in fact pre-
`sumes it in some cases. Leading commentators, as
`well as the courts of appeals themselves, expressly
`acknowledge the circuit conflict, which has been
`widening for more than a decade.
`
`Both the Ninth Circuit’s embrace of laches and
`
`its presumption in favor of laches are wrong. Under
`our system of separation of powers, courts may not
`use non-statutory time limits to constrict express
`limitations periods enacted by Congress. Laches
`requires a variable, fact-specific balancing of the
`equities, whereas the statute prescribes a predictable
`bright-line rule. The Ninth Circuit’s rule not only is
`legally erroneous but also threatens to breed forum
`shopping – the very evil Congress sought to prevent
`when it enacted a uniform statute of limitations.
`
`This case presents a clean vehicle in which the
`
`issue of laches was dispositive and was pressed and
`passed upon below. As the concurrence below and the
`leading copyright treatises recognize, the courts of
`appeals are deeply divided over this area of law and
`require this Court’s intervention. Only this Court can
`prevent forum shopping and bring uniformity to this
`important issue of federal copyright law.
`
`
`
`
`
`

`
`5
`
`A. Statutory Background
`
`1. “One of the fundamental purposes behind the
`Patent and Copyright Clauses of the Constitution
`was to promote national uniformity in the realm of
`intellectual property.” Bonito Boats, Inc. v. Thunder
`Craft Boats, Inc., 489 U.S. 141, 162 (1989) (citing THE
`FEDERALIST NO. 43, at 309 (James Madison) (Benja-
`min F. Wright ed., 1961)). Under the Constitution, “it
`is Congress that has been assigned the task of defin-
`ing the scope of the limited monopoly that should be
`granted to authors . . . .” Sony Corp. of Am. v. Univer-
`sal City Studios, Inc., 464 U.S. 417, 429 (1984). Since
`the Copyright Act of 1790, ch. 15, 1 Stat. 124, Con-
`gress has used this power to provide for a uniform
`body of copyright law governing registration, rights,
`and enforcement throughout the United States.
`
`2. The author of a copyrighted work can trans-
`
`fer ownership of the copyright to another party, either
`in whole or in part, 17 U.S.C. § 201(d), but transfers
`are subject to certain limitations. If the author trans-
`fers the right to renew a copyright to another party
`but dies before the end of the original copyright term,
`the renewal rights revert back to the author’s heirs.
`Stewart v. Abend, 495 U.S. 207, 220-21 (1990).
`
`3. Congress has specifically outlined not only
`
`the rights of copyright holders, but also the remedies
`available to them in infringement suits. Congress has
`authorized courts to award damages and profits, issue
`injunctions, order the impounding and disposition of
`
`

`
`6
`
`infringing articles, and award costs and attorney’s
`fees. 17 U.S.C. §§ 502-505.
`
`4. Before 1957, federal copyright law provided
`
`no statute of limitations for civil claims, so courts
`borrowed state limitations periods. Those periods
`varied; California, for instance, had adopted a short
`statute of limitations to protect its movie industry. In
`response to this state of affairs, Congress thought it
`“highly desirable to provide a uniform [limitations]
`period throughout the United States” that would
`deter “forum shopping” for copyright claims. S. REP.
`NO. 85-1014, at 2
`(1957), reprinted
`in 1957
`U.S.C.C.A.N. 1961, 1962. Thus, in 1957, Congress
`enacted a three-year statute of limitations for civil
`copyright claims. Act of Sept. 7, 1957, Pub. L. No. 85-
`313, 71 Stat. 633 (reenacted without alteration in the
`Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat.
`2586, and codified at 17 U.S.C. § 507(b)).
`
`Under the “separate accrual rule,” this three-year
`
`period accrues separately for each act of infringe-
`ment, even if the violation is one of a continuing
`series of acts of infringement. “If infringement oc-
`curred within three years prior to filing, the action
`will not be barred even if prior infringements by the
`same party as to the same work are barred because
`they occurred more than three years previously.” 3
`MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON
`COPYRIGHT § 12.05[B][1][b] (Matthew Bender & Co.
`2012) (on Lexis, which incorrectly lists volume as 1)
`(collecting cases). No court has required a copyright
`action seeking relief for an infringement within the
`
`

`
`7
`
`past three years to be brought within three years of
`the initial act of infringement. 6 WILLIAM F. PATRY,
`PATRY ON COPYRIGHT § 20:23 (West Mar. 2013) (on
`Westlaw).
`
`
`B. Factual and Procedural History
`
`1. Frank “Peter” Petrella, petitioner’s father,
`authored three literary works based on the life of his
`longtime friend, boxing champion Jake LaMotta. In
`1963, after Mr. LaMotta had retired from the ring,
`Mr. Petrella wrote a screenplay (the 1963 Screen-
`play), entitled The Raging Bull, based on Mr.
`LaMotta’s experiences. App. 3a, 30a-31a. Mr. Petrella
`registered the 1963 Screenplay with the U.S. Copy-
`right Office, listing himself as the claimant and sole
`author. Id. He also authored and copyrighted another
`screenplay (the 1973 Screenplay), which he registered
`in 1973 as claimant and sole author. Id. And he wrote
`a book, which was registered with the Copyright
`Office in 1970, listing Mr. LaMotta as claimant and
`Messrs. Petrella (under the pen name Peter Savage),
`LaMotta, and Joseph Carter as authors. See id.
`
`In 1976, Messrs. Petrella and LaMotta assigned
`
`all of their copyrights in the book and the two screen-
`plays to Chartoff-Winkler Productions. App. 30a-31a.
`Two years later, respondent United Artists, a wholly
`owned subsidiary of respondent Metro-Goldwyn-
`Mayer, Inc. (MGM), acquired the motion picture
`rights to these three works from Chartoff-Winkler.
`App. 31a. In 1980, United Artists released Raging
`
`

`
`8
`
`Bull, a movie based on Mr. LaMotta’s life, which was
`directed by Martin Scorsese and starred Robert De
`Niro as Mr. LaMotta. To prepare Mr. De Niro for the
`role, Messrs. Petrella and LaMotta trained Mr. De
`Niro in boxing, and Mr. Petrella was credited as a
`producer of the film. See First Am. Compl. ¶¶ 22-23.
`
`2. Raging Bull received considerable critical
`
`acclaim. It was nominated for eight Academy Awards
`and won two, including a Best Actor award for Robert
`De Niro. See The 53rd Academy Awards (1981) Nom-
`inees and Winners, The Oscars, http://www.oscars.org/
`awards/academyawards/legacy/ceremony/53rd-winners.
`html (last visited Apr. 25, 2013). Since then, movie
`critics have consistently described it as a cinematic
`masterpiece, and a poll of 1500 film artists, critics,
`and historians rated it as the fourth-best film of all
`time. See Citizen Kane Stands the Test of Time, AM.
`FILM INST., http://www.afi.com/100years/movies10.aspx
`(last visited Apr. 25, 2013). Raging Bull has also
`enjoyed popular success: MGM continues to market
`and sell the film, including in a recent 25th Anniver-
`sary Edition. App. 13a.
`
`3. Mr. Petrella was unable to appreciate the
`
`long-term impact of his work, as he passed away in
`1981. Because he died during the original twenty-
`eight-year term of his copyrights in the book and
`screenplays, under Stewart v. Abend his renewal
`rights in the three works reverted to his heirs, includ-
`ing his daughter, petitioner Ms. Petrella.
`
`

`
`9
`
`In response to this Court’s decision in Stewart v.
`
`Abend, in 1990, Ms. Petrella contacted an attorney
`for advice about the renewal status of her father’s
`copyrighted works. App. 31a-32a. Her first attorney
`successfully renewed the copyright on the 1963
`Screenplay in 1991, within the statutory period, in
`the name of Mr. Petrella’s heirs, including Ms.
`Petrella. After her mother passed away and her
`brother assigned his rights to her, she became the
`sole owner of all rights, titles, and interests in the
`1963 Screenplay. First Am. Compl. ¶¶ 29-31.
`
`Despite Ms. Petrella’s timely renewal, MGM and
`
`United Artists continued, and continue to this day, to
`reproduce, market, and distribute Raging Bull. First
`Am. Compl. ¶¶ 33-39. In response, Ms. Petrella’s
`second attorney (at the same firm) contacted re-
`spondents in 1998, asserting that she had exclusive
`rights in the 1963 Screenplay and that respondents’
`continuing exploitation of Raging Bull infringed those
`rights. App. 5a. During 1998, 1999, and 2000, counsel
`for Ms. Petrella and respondents exchanged letters
`contesting the legality of continued exploitation of the
`film. Id. Also during this time, MGM was sending Ms.
`Petrella financial records showing the film was
`unprofitable. Petrella Decl. in Opp. to Mot. for Summ.
`J. ¶ 18. In 2001, MGM notified her that it would stop
`sending financial statements because it claimed that
`the film was unlikely ever to become profitable.
`MGM’s financial representations that the film would
`remain unprofitable were later called into question by
`MGM’s production of various special editions of the
`
`

`
`10
`
`film, such as the 25th Anniversary Edition in 2005.
`See First Am. Compl. ¶¶ 36-37; App. 13a.
`
` Ms. Petrella was dissatisfied with her counsel’s
`lack of diligence in investigating these representa-
`tions. She was, however, preoccupied with caring for
`her ailing mother and disabled brother, whose condi-
`tions impelled her to move from Los Angeles to New
`York for more than a year.
`
`4. In 2005, Ms. Petrella returned to Los Ange-
`
`les. Later that year, she learned that her attorneys
`had been laboring under a conflict of interest because
`her counsel’s law firm also represented Robert De
`Niro.1 Over the next two years, Ms. Petrella searched
`for and retained new counsel. See Petrella Decl. in
`Opp. to Mot. for Summ. J. ¶ 19.
`
`In January 2009, Ms. Petrella sued respondents
`
`in the U.S. District Court for the Central District of
`California for copyright infringement, unjust enrich-
`ment, and an accounting. See First Am. Compl. She
`alleged that respondents violated her exclusive rights
`in the 1963 Screenplay by continuing to use, produce,
`
`
`1 Ms. Petrella’s first attorney, as well as another partner at
`
`the same firm, represented Mr. De Niro. Ms. Petrella’s second
`attorney was an associate at the same firm. Counsel could have
`feared that litigation over the film might harm Mr. De Niro’s
`income and image, draw him in as a witness, or otherwise
`antagonize or inconvenience him. While prior counsel’s conflict
`of interest is not discussed in the record below, Ms. Petrella
`stands ready to offer admissible proof of this fact if this Court
`grants certiorari and remands.
`
`

`
`11
`
`and distribute the film Raging Bull, which contained
`protected elements of the 1963 Screenplay. Id. ¶¶ 40-
`50. Her complaint sought, inter alia, monetary dam-
`ages, injunctive relief, attorney’s fees, and costs. Id.
`Prayer for Relief ¶¶ 1-2, 6-8. In light of the three-year
`statutory
`limitations period, damages would be
`available only for acts of infringement occurring in or
`after 2006.
`
`The district court granted respondents’ motion
`
`for summary judgment based solely on the defense of
`laches. App. 46a. Finding that the case was “obviously
`control[led]” by the Ninth Circuit’s earlier decision in
`Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir.
`2001), the court balanced the factors relevant to the
`laches inquiry. App. 42a-46a. It held that Ms. Petrella
`had unreasonably delayed by not filing suit until
`2009. App. 44a. It further held that the delay had
`prejudiced respondents in terms of both their com-
`mercial expectations and their access to evidence. Id.
`at 44a-46a. The court applied the doctrine of laches
`without any qualification and without considering
`any presumption disfavoring laches.
`
`But for the laches ruling, Ms. Petrella’s claims
`
`would have survived summary judgment. App. 38a,
`39a-40a, 42a. On the critical issue of whether the
`1963 Screenplay was substantially similar to the film,
`the court noted that there was a legitimate factual
`disagreement over the similarity of the two works.
`Had laches been inapplicable, the court would have
`left that factual dispute to the trier of fact. App. 40a-
`42a.
`
`

`
`12
`
`5. The court of appeals affirmed the district
`
`court’s grant of summary judgment. App. 2a. The
`court began its analysis by stating that it would
`“presume that the plaintiff ’s claims are barred by
`laches” so long as “any part of the alleged wrongful
`conduct occurred outside of the limitations period.”
`App. 8a (quoting Miller v. Glen Miller Prods., Inc, 454
`F.3d 975, 997 (9th Cir. 2006)) (internal quotation
`marks omitted). Applying that standard, the panel
`found no genuine issues of material fact as to the
`three elements needed to prove laches under Danjaq:
`(1) delay; (2) unreasonableness of the delay; and (3)
`prejudice. Id. Because the court of appeals found
`sufficient prejudice based on respondents’ commercial
`expectations, it did not consider whether they had
`been prejudiced by loss of evidence. App. 12a.
`
`Judge William Fletcher concurred “only because
`
`we are compelled to follow our opinion in Danjaq.”
`App. 23a (citation omitted). He explicitly questioned
`the soundness of the Danjaq line of cases, which
`authorize applying the equitable defense of laches to
`copyright infringement. App. 23a-24a. Laches, he
`noted, is “entirely a judicial creation” that is “in
`tension with Congress’ intent.” App. 24a. He noted “a
`severe circuit split” over whether laches is a defense
`to copyright actions. App. 23a. The Ninth Circuit’s
`approach is “the most hostile to copyright owners of
`all the circuits” and contrasts with the approaches of
`the Second, Fourth, Sixth, and Eleventh Circuits. Id.
`He also noted that the Ninth Circuit had failed to
`distinguish laches from equitable estoppel, which
`
`

`
`13
`
`requires proof that the plaintiff intentionally misrep-
`resented the facts and that the defendant detrimen-
`tally relied on that misrepresentation. App. 25a-27a.
`Judge Fletcher concluded: “Our circuit has taken a
`wrong turn in its formulation and application of
`laches in copyright cases.” App. 27a. In his view, that
`“wrong turn” fails “to provide appropriate protection
`to innocent copyright owners who have brought
`infringement suits within the statute of limitations.”
`Id.
`
`6. The Ninth Circuit denied a timely petition for
`
`rehearing en banc. App. 49a-50a. This petition fol-
`lows.
`
`---------------------------------  ---------------------------------
`
`REASONS FOR GRANTING THE WRIT
`1. The federal courts of appeals are intractably
`
`divided over whether, and in what circumstances,
`laches can bar civil copyright claims filed within the
`statute of limitations. Three circuits do not permit
`laches to shorten the limitations period established
`by statute, either in whole or as to certain types of
`relief sought here. If Ms. Petrella had filed suit in any
`of those courts, her suit would have survived sum-
`mary judgment. Because two other circuits substan-
`tially restrict the application of laches in copyright
`cases, Ms. Petrella’s suit probably would have sur-
`vived summary judgment there as well. By contrast,
`only the Ninth Circuit freely allows laches. Indeed, in
`the decision below, the Ninth Circuit extended its
`
`

`
`14
`
`precedent by adopting a presumption in favor of
`laches
`in continuing-infringement cases and by
`denying rehearing en banc. The circuit conflict is
`openly acknowledged by leading commentators, other
`courts, and Judge Fletcher’s concurrence below. The
`conflict has matured over the past twelve years, is
`entrenched, and is ripe for review by this Court.
`
`2. Laches should not be avai

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