No. 12-1315
` In the Supreme Court of the United States
`
`
`
`
`PAULA PETRELLA, PETITIONER
`
` v.
`METRO-GOLDWYN-MAYER, INC., ET AL.
`
`
`ON WRIT OF CERTIORARI
`
`TO THE UNITED STATES COURT OF APPEALS
`
`FOR THE NINTH CIRCUIT
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`SUPPORTING PETITIONER
`
`
`
`
`
`
`
`
`
`
`
`
`
`DONALD B. VERRILLI, JR.
`
`Solicitor General
`Counsel of Record
` STUART F. DELERY
`
`
`
`Assistant Attorney General
` MALCOLM L. STEWART
`
`
`
`Deputy Solicitor General
` NICOLE A. SAHARSKY
`
`
`
`Assistant to the Solicitor
`General
` SCOTT R. MCINTOSH
`
`
` DARA S. SMITH
`
`
` Attorneys
`
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`
`
`
`
`

`
`
`
`QUESTION PRESENTED
`
`
`Whether and under what circumstances laches may
`
`bar relief on a claim of copyright
` infringement
`brought within the three-year limitations period set
`out in 17 U.S.C. 507(b).
`
`
`(I)
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`
`
`
`Page
` Interest of the United States ........................................................ 1
`
`Statement ......................................................................................... 2
`Summary of argument ................................................................... 7
`
`Argument:
`
`When a copyright infringement claim is brought
`
`within the limitations period in 17 U.S.C. 507(b),
`
`laches may limit equitable but not legal relief....................... 9
`
`
`A. Under the Copyright Act’s statute of limitations,
`
` 
`a plaintiff’s suit is timely with respect to all acts
`
`of infringement that occurred within the three-
`year period before suit was filed, even if the suit
`was filed more than three years after the defen-
`
`dant’s overall course of infringing conduct began........ 10
`
`
`B. The court of appeals erred in applying a pre-
`
`sumption that, because respondents’ allegedly
`infringing conduct began more than three years
`
`before petitioner’s suit was filed, petitioner’s
`
`claims are barred by laches ............................................. 15
`
`C. A claim for copyright infringement brought
`within three years of the allegedly infringing
`
`act, and seeking both legal and equitable relief,
`is not subject to dismissal based on laches .................... 20
`Conclusion ...................................................................................... 30
`
`Appendix — Statutory provisions ............................................ 1a
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`
` Cases:
`
`A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
`
` 960 F.2d 1020 (Fed. Cir. 1992)............................................ 25
`
`
`
` Alsop v. Riker, 155 U.S. 448 (1894)................................. 22, 26
`
`
`
` Astoria Fed. Sav. & Loan Ass’n v. Solimino,
`
`
` 501 U.S. 104 (1991) ............................................................... 25
`
`
` Badger v. Badger, 69 U.S. (2 Wall.) 87 (1865)...................... 21
`
`
`
`
`
`
`(III)
`
`
`

`
`IV
`
`
`
`Page
`
`
`
`Cases—Continued:
`Bay Area Laundry & Dry Cleaning Pension Trust
`
`
`Fund v. Ferbar Corp. of Cal., 522 U.S. 192 (1997)...........11
`
`
`
`
`Bouchat v. Baltimore Ravens Ltd. P’ship,
`
`619 F.3d 301 (4th Cir. 2010) ................................................12
`
`
`
`Bowman v. Wathen, 42 U.S. (1 How.) 189 (1843) ...............21
`
`
`
`
`
`Bridgeport Music, Inc. v. Rhyme Syndicate Music,
`
`376 F.3d 615 (6th Cir. 2004) ................................................13
`
`
`
`Callaghan v. Myers, 128 U.S. 617 (1888) .............................23
`
`
`
`
`Chesapeake & Del. Canal Co. v. United States,
`
`
` 250 U.S. 123 (1919) ...............................................................23
`
`
`Chirco v. Crosswinds Cmtys., Inc., 474 F.3d 227
`
`
`
`(6th Cir.), cert. denied, 551 U.S. 1131 (2007) .............. 16, 27
`
`
`Costello v. United States, 365 U.S. 265 (1961).....................21
`
`
`
`County of Oneida, N.Y. v. Oneida Indian Nation,
`
`
`470 U.S. 226 (1985) ......................................................... 23, 27
`
`
`D.O. Haynes & Co. v. Druggists’ Circular, 32 F.2d
`
`
`
`
`215 (2d Cir. 1929) ..................................................................23
`
`
`
`eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388
`
`
`
`(2006) ......................................................................................29
`
`Edwin L. Wiegand Co. v. Harold E. Trent Co.,
`
`
`122 F.2d 920 (3rd Cir. 1941), cert. denied,
`
`
`316 U.S. 667 (1942) ...............................................................23
`
`
`Environmental Def. Fund, Inc. v. Alexander,
`
`
`614 F.2d 474 (5th Cir.), cert. denied, 449 U.S. 919
`
`
`
`(1980) ................................................................................ 22, 27
`
`Gabelli v. SEC, 133 S. Ct. 1216 (2013) ..................................11
`
`
`
`
`Galliher v. Cadwell, 145 U.S. 368 (1892) ..............................22
`
`
`
`Godden v. Kimmell, 99 U.S. 201 (1879).......................... 22, 26
`
`
`
`
`Grand Canyon Trust v. Tucson Elec. Power Co., 391
`
`
`
`F.3d 979 (9th Cir. 2004) .........................................................5
`
`
`
`Guaranty Trust Co. v. United States, 304 U.S. 126
`
`
`
`(1938) ......................................................................................23
`
`
`
`
`

`
`V
`
`
`Cases—Continued:
`Page
`
`Haas v. Leo Feist, Inc., 234 F. 105 (S.D.N.Y. 1916)........... 24
`
`
`
`
`Holmberg v. Armbrecht, 327 U.S. 392 (1946) ................ 18, 23
`
`
`
`Hoste v. Radio Corp. of Am., 654 F.2d 11 (6th Cir.
`
`
`
`
`1981) ....................................................................................... 16
`
`
`Ivani Contracting Corp. v. City of N.Y., 103 F.3d 257
`
`
`
`
`(2d Cir.), cert. denied, 520 U.S. 1211 (1997)................ 21, 27
`
`
`
`Johnson v. Railway Express Agency, Inc.,
`
`421 U.S. 454 (1975) ............................................................... 10
`
`
`
`Klehr v. A.O. Smith Corp., 521 U.S. 179 (1997)............. 13, 14
`
`
`
`Lane & Bodley Co. v. Locke, 150 U.S. 193 (1893) ............... 21
`
`
`
`
`Lyons P’ship, L.P. v. Morris Costumes, Inc.,
`
`243 F.3d 789 (4th Cir. 2001) ................................................ 27
`
`
`
`Mackall v. Casilear, 137 U.S. 556 (1890) ....................... 21, 26
`
`
`
`
`Makedwde Publ’g Co. v. Johnson, 37 F.3d 180
`
`
`(5th Cir. 1994).................................................................. 13, 16
`
`
`
`Maksym v. Loesch, 937 F.2d 1237 (7th Cir. 1991) .............. 27
`
`
`
`
`
`Merck & Co. v. Reynolds, 559 U.S. 633 (2010) .................... 23
`
`
`
`Miller v. Glenn Miller Prods., Inc., 454 F.3d 975
`
`
`(9th Cir. 2006).................................................................... 6, 15
`
`
`
`National R.R. Passenger Corp. v. Morgan,
`
`536 U.S. 101 (2002) ............................................................... 13
`
`
`
`New Era Publ’ns Int’l, ApS v. Henry Holt & Co.,
`
`
`873 F.2d 576 (2d Cir. 1989), cert. denied,
`
`
`493 U.S. 1094 (1990) ............................................................. 27
`
`
`
`New York City v. Pine, 185 U.S. 93 (1902) .......................... 21
`
`
`
`Order of R.R. Telegraphers v. Railway Express
`
`
`Agency, Inc., 321 U.S. 342 (1944) ....................................... 10
`
`
`
`Patterson v. Hewitt, 195 U.S. 309 (1904)........................ 22, 26
`
`
`
`Peter Letterese & Assocs., Inc. v. World Inst.
`
`
`of Scientology Enters., Int’l, 533 F.3d 1287
`
`
`(11th Cir. 2008)................................................................ 13, 28
`
`
`
`Rawlings v. Ray, 312 U.S. 96 (1941)..................................... 11
`
`
`
`
`
`
`

`
`VI
`
`
`Page
`
`
`Cases—Continued:
`Roley v. New World Pictures, Ltd., 19 F.3d 479
`
`
`
`(9th Cir. 1994).................................................................. 13, 16
`
`
`Russell v. Todd, 309 U.S. 280 (1940)................... 17, 21, 22, 27
`
`
`
`Sheldon v. Metro-Goldwyn Pictures Corp.,
`
`
`
`309 U.S. 390 (1940) ...............................................................19
`
`
`Stewart v. Abend, 495 U.S. 207 (1990) ....................................4
`
`
`
`Stone v. Williams, 970 F.2d 1043 (2d Cir. 1992),
`
`
`cert. denied, 508 U.S. 906 (1993)................................... 12, 13
`
`
`
`Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983)................13
`
`
`
`
`
`United States v. Beebe, 127 U.S. 338 (1888).........................23
`
`
`
`United States v. Mack, 295 U.S. 480 (1935)................... 26, 28
`
`
`
`United States v. Verdier, 164 U.S. 213 (1896) .....................23
`
`
`
`Werner Co. v. Encyclopaedia Britannica Co.,
`
`
`134 F. 831 (3d Cir. 1905) ......................................................23
`
`
`
`West Publ’g Co. v. Edward Thompson Co., 169 F. 833
`
`(C.C.E.D.N.Y. 1909).............................................................23
`
`
`
`Whitney v. Fox, 166 U.S. 637 (1897) .....................................22
`
`
`
`
`William A. Graham Co. v. Haughey, 568 F.3d 425
`
`
`(3d Cir.), cert. denied, 558 U.S. 991 (2009).................. 12, 13
`
`
`
`Zenith Radio Corp. v. Hazeltine Research, Inc.,
`
`401 U.S. 321 (1971) ...............................................................13
`
`
`
`
`Statutes:
`
`
`Act of Sep. 7, 1957, Pub. L. No. 85-313, § 1,
`
`
`71 Stat. 653 (17 U.S.C. 115(b) (1958)) ...............................11
`
`
`
`Act of Oct. 19, 1976, Pub. L. No. 94-553, sec. 101,
`
`
`
`
`
`§ 507(b), 90 Stat. 2586 .........................................................11
`
`
`
`
`Copyright Act, 17 U.S.C. 101 et seq ........................................2
`
`17 U.S.C. 102(a) ...................................................................2
`
`17 U.S.C. 106 ........................................................................2
`
`17 U.S.C. 201(a) ...................................................................2
`
`
`
`
`
`
`

`
`VII
`
`
`Page
`
`Statutes—Continued:
`17 U.S.C. 201(d)................................................................... 2
`
`
`17 U.S.C. 302(a) ............................................................. 2, 14
`
`
`
`17 U.S.C. 304(a) ............................................................. 2, 14
`
`
`
`17 U.S.C. 501(a) ................................................................. 12
`
`
`
`17 U.S.C. 501(b)................................................................. 12
`
`
`
`17 U.S.C. 502(a) ............................................................. 2, 28
`
`
`17 U.S.C. 502-505 ................................................................ 2
`
`17 U.S.C. 503 ................................................................ 28, 4a
`
`
`17 U.S.C. 504(a)(1) .............................................................. 3
`
`
`
`17 U.S.C. 504(b)..................................................... 19, 20, 29
`
`17 U.S.C. 504(c) ................................................................... 3
`
`17 U.S.C. 507(b)........................................................ passim
`
`
`17 U.S.C. 701 ........................................................................ 1
`
`
`Lanham Act, 15 U.S.C. 1115(b)(9)......................................... 25
`
`Patent Act, 35 U.S.C. 286 ....................................................... 25
`
`
`
`
`
`
`
`Miscellaneous:
`
`Black’s Law Dictionary (9th ed. 2009)........................... 10, 24
`
`
`
`William Wirt Blume & B.J. George, Jr., Limitations
`
`and the Federal Courts, 49 Mich. L. Rev. 937 (1951) ...... 22
`
`
`
`
`
`William Q. de Funiak, Handbook of Modern Equity
`
`
`
`
`(2d ed. 1956)........................................................................... 18
`
`
`
`1 Dan B. Dobbs, Dobbs Law of Remedies: Damages,
`
`Equity, Restitution (2d ed. 1993)................................. 15, 27
`
`
`
`
`
`
`
`H. Rep. No. 2419, 84th Cong., 2d Sess. (1956)............... 11, 25
`
`
`3 Melville B. Nimmer & David Nimmer,
`
`Nimmer on Copyright (2012) ............................................. 13
`
`
`
`6 William F. Patry, Patry on Copyright (2013)....... 12, 24, 27
`
`
`
`
`
`
`S. Rep. No. 1014, 85th Cong., 1st Sess.
`
`
`
`(1957) .................................................................... 11, 15, 25, 26
`
`
`
`
`
`
`

`
`VIII
`
`Miscellaneous—Continued:
`11A Charles Alan Wright et al., Federal Practice and
`Procedure (3d ed. 2013) ....................................................... 18
`
`
`
`Page
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`In the Supreme Court of the United States
`
`
`
`
`No. 12-1315
`
`PAULA PETRELLA, PETITIONER
`
`
` v.
`METRO-GOLDWYN-MAYER, INC., ET AL.
`
`
`ON WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`SUPPORTING PETITIONER
`
`
`
`
`
`
`
`
`INTEREST OF THE UNITED STATES
`
`This case presents the question whether and under
`what circumstances laches may bar relief on a claim of
`copyright infringement brought within the three-year
`limitations period set out in 17 U.S.C. 507(b). The
`United States has significant responsibilities related
`to, and derives important benefits from, the registra-
`tion of creative works under the national copyright
`system. The United States Copyright Office is re-
`sponsible for administering the registration of crea-
`tive works and for advising Congress, federal agen-
`cies, the courts, and the general public on copyright
`law and policy. See 17 U.S.C. 701. Rules governing
`the availability of remedies for copyright violations
`have important implications for the operation of the
`copyright system. This case also implicates questions
`
`
`
`
`
`(1)
`
`

`
`2
`
`
`
`
`of concern to other federal agencies charged with
`administering federal
`laws governing
`intellectual
`property, such as the United States Patent and
`Trademark Office. The United States therefore has a
`
`
`substantial interest in the Court’s resolution of this
`case.
`
`STATEMENT
`1. The Copyright Act, 17 U.S.C. 101 et seq., grants
`
`
`copyright protection to original works of authorship
`fixed in a tangible medium of expression. 17 U.S.C.
`
`102(a). Under the Act, copyright in a work “vests
`initially in the author or authors of the work,” but the
`author or authors may transfer whole or partial own-
`ership to a third party. 17 U.S.C. 201(a) and (d). The
`Act confers on a copyright owner certain exclusive
`statutory rights, including the rights to reproduce and
`
`distribute the work and to prepare derivative works.
`17 U.S.C. 106.
`
`The length of copyright protection depends on
`when the work was created. Copyrighted works cre-
`ated on or after January 1, 1978, generally are pro-
`tected from the date of creation until seventy years
`after the author’s death. 17 U.S.C. 302(a). Copy-
`righted works created before that date—such as the
`works at issue in this case—were protected for an
`initial period of twenty-eight years, which could be
`extended for a renewal period of up to sixty-seven
`
`years. 17 U.S.C. 304(a).
`The Copyright Act provides a variety of civil reme-
`dies for infringement. See 17 U.S.C. 502-505. A court
`may issue an injunction, “on such terms as it may
`
`deem reasonable,” to prevent or restrain infringement
`of a copyright. 17 U.S.C. 502(a). At the election of the
`copyright owner, the court also may award either
`
`
`
`
`

`
`3
`
`
`
`
`(1) “the copyright owner’s actual damages and any
`additional profits of
`the
`infringer,” 17 U.S.C.
`504(a)(1), or (2) statutory damages within a defined
`range, 17 U.S.C. 504(c). The Act provides that “[n]o
`civil action shall be maintained under the provisions of
`this title unless it is commenced within three years
`after the claim accrued.” 17 U.S.C. 507(b).
`2. This copyright infringement case concerns the
`1980 film Raging Bull. The film was based on the life
`of boxer Jake LaMotta. Pet. App. 3a. After he retired
`from boxing, LaMotta worked with longtime friend
`Frank Petrella to tell the story of his career. Ibid.
`Their collaboration resulted in three copyrighted
`works: a screenplay registered in 1963 to Frank Pet-
`
`rella as sole author, which stated that it was written
`“in collaboration with” LaMotta; a book registered in
`1970 to co-authors Frank Petrella, LaMotta, and Jo-
`
`seph Carter; and a screenplay registered in 1973 to
`Frank Petrella as the sole author. Ibid. The parties
`dispute which of these works was created first. Id. at
`3a, 37a.
`In 1976, Frank Petrella and LaMotta executed a
`written agreement that assigned their rights in the
`book and the two screenplays, including renewal
`
`rights, to Chartoff-Winkler Productions, Inc. Pet.
`App. 3a-4a. In 1978, respondent United Artists Cor-
`poration—a subsidiary of respondent Metro-Goldwyn-
`Mayer, Inc.—acquired the motion picture rights to the
`story from Chartoff-Winkler. Id. at 4a.
`In 1980,
`United Artists registered a copyright in the film Rag-
`ing Bull. Ibid.
`
`In 1981, during the original 28-year term of the
`copyrights for the book and screenplays, Frank Pet-
`rella died. Pet. App. 4a. Under this Court’s decision
`
`
`
`
`
`
`
`

`
`4
`
`
`in Stewart v. Abend, 495 U.S. 207 (1990), when the
`author of a pre-1978 work transfers his renewal rights
`
`to a third party but dies before renewal, the renewal
`rights revert to his heirs, and the owner of any deriva-
`tive work may not exploit that work without authori-
`zation from the heirs or their successors. Id. at 219-
`220, 227-228.
`Petitioner is Frank Petrella’s daughter. Pet. App.
`4a. She asserts that she is now the sole owner of
`Frank Petrella’s interest in the works. Id. at 31a. In
`
`
`1990, petitioner consulted an attorney about her
`
`rights in the works and in 1991, the attorney filed a
`
`renewal application for the 1963 screenplay on her
`behalf. Id. at 4a-5a. Because petitioner did not timely
`renew the copyrights in the 1970 book and the 1973
`screenplay, the infringement claims in this case are
`predicated only on the 1963 screenplay. Id. at 32a,
`34a.
`In 1998, petitioner’s attorney contacted respond-
`ents and advised them that petitioner had obtained
`the copyright to the 1963 screenplay and that their
`exploitation of derivative works, including Raging
`Bull, was infringing that copyright. Over a period of
`two years, the parties exchanged letters, in which
`respondents denied the validity of the infringement
`claim and petitioner repeatedly threatened to take
`legal action. Petitioner did not take any legal action
`at that time. Pet. App. 5a.
`3. In 2009, petitioner filed this copyright infringe-
`
`ment suit against respondents in federal district court.
`Pet. App. 5a, 28a n.1. Petitioner’s complaint sought
`damages and various forms of equitable relief. J.A.
`34-35. Respondents moved for summary judgment on
`several grounds, including that petitioner’s claims
`
`
`
`
`
`
`
`

`
`5
`
`
`were barred by the equitable doctrine of laches. Pet.
`App. 7a.
`The district court granted summary judgment to
`
`respondents on the ground that laches bars petition-
`er’s claims. Pet. App. 28a-48a. The court stated that
`laches bars a copyright infringement claim if the de-
`fendants show “lack of diligence by the plaintiff” and
`
` 
`“prejudice to the defendant.” Id. at 42a (quoting
`Grand Canyon Trust v. Tucson Elec. Power Co., 391
`F.3d 979, 987 (9th Cir. 2004)). The court first deter-
`mined that petitioner had unreasonably delayed in
`bringing this lawsuit because she “had knowledge of
`the legal theories she is asserting in this action in 1990
`or 1991” but had “refrained from filing suit at that
`time because the [f]ilm was not yet profitable.” Id. at
`
`42a-44a.
`The district court further concluded that respond-
`ents had established “expectations-based prejudice”
`because “they have made significant investments in
`exploiting the film,” and allowing petitioner’s suit to
`proceed would “potentially” allow her “to reap the
`benefit of these expenditures.” Pet. App. 44a-45a
`(internal quotation marks omitted). The court con-
`cluded that respondents had also established “eviden-
`tiary prejudice” because Frank Petrella and Joseph
`Carter had died and LaMotta was elderly and no
`longer recognized petitioner. Id. at 45a-46a.
`
`4. The court of appeals affirmed. Pet. App. 1a-27a.
`
`In the court’s view, laches bars a plaintiff’s copyright
` 
`claim if the defendant shows that “(1) the plaintiff
`
`
`delayed in initiating the lawsuit; (2) the delay was
`unreasonable; and (3) the delay resulted in prejudice.”
`Id. at 8a. The court stated, at the outset of its analy-
`
`sis, that “[i]f any part of the alleged wrongful conduct
`
`
`
`
`
`
`
`

`
`6
`
`
`
`
`occurred outside of the limitations period, courts pre-
`sume that the plaintiff’s claims are barred by laches.”
` 
`Ibid. (quoting Miller v. Glenn Miller Prods., Inc., 454
`F.3d 975, 997 (9th Cir. 2006)).
` The court of appeals concluded that petitioner had
`
`unreasonably delayed in bringing suit because peti-
`tioner had been aware of her potential claims in 1991
`but had not filed suit until 2009, and the “evidence
`suggests the true cause of [the] delay was that the
`film hadn’t made money during this time period.” Pet.
`App. 9a-11a (internal quotation marks omitted). The
`court then concluded that respondents had demon-
`
`strated “expectations-based prejudice” because they
`had spent $8.5 million distributing and promoting
`Raging Bull since 1991, id. at 12a-13a, and they had
`entered into numerous agreements to license and
`broadcast the film, id. at 14a. Petitioner had argued
`
`
`that respondents “would not have done anything dif-
`ferent, or been in any better position, had the suit
`been filed sooner.” Id. at 15a. The court determined,
`
`
`however, that respondents were not required to make
`such a showing in order to invoke laches to bar peti-
`tioner’s claims. Ibid. Because it concluded that re-
`spondents had established “expectations-based preju-
`dice,” the court did not consider whether they had also
`shown “evidentiary prejudice.” Id. at 12a.
`Judge William Fletcher concurred. Pet. App. 23a-
`27a. While acknowledging that the court’s outcome
`was consistent with circuit precedent, Judge Fletcher
`
`contended that the circuit’s law should be revised
`because it “is the most hostile to copyright owners of
`all the circuits.” Id. at 23a (W. Fletcher, J., concur-
`
`ring).
`
`
`
`

`
`7
`
`SUMMARY OF ARGUMENT
`A. The Copyright Act’s limitations provision re-
`quires that any civil suit under the Act be filed “within
`three years after the claim accrued.” 17 U.S.C.
`507(b). Under the established construction of that
`
`provision, each new act of infringement gives rise to a
`distinct “claim,” which “accrue[s]” at the time the
`infringing act occurs, even when multiple acts of in-
`fringement involve the same copyrighted work. The
`consequence of that provision is that, when a defend-
`ant has engaged (or is alleged to have engaged) in a
`prolonged course of infringing conduct, the copyright
`holder’s suit may be timely with respect to more re-
`cent acts of infringement, but not with respect to prior
`acts in the same series. Consistent with that under-
`standing, neither of the courts below suggested that
`petitioner’s suit was barred by Section 507(b).
`B. Although petitioner seeks to recover only for
`acts of infringement that occurred within the three-
`year period before her suit was commenced, her fac-
`tual and legal theory logically suggests that respond-
`ents had engaged in infringing conduct long before
`
`that date. In affirming the district court’s grant of
`summary judgment for respondents, the court of ap-
`peals relied in part on a presumption that an in-
`fringement suit is barred by laches if any part of the
`defendant’s wrongful acts occurred outside the limita-
`tions period. Even apart from the question whether
`laches can ever bar an infringement suit like petition-
`
`er’s, that approach is seriously flawed.
`Laches is an affirmative defense on which the de-
`
`fendant bears the burden of proof. Treating a suit
`that is timely under Section 507(b) as presumptively
`barred by laches fails to give due weight to the bal-
`
`
`
`
`
`

`
`8
`
`
`ance struck by Congress in Section 507(b) itself. That
`is particularly true because each act of infringement
`gives rise to a new “claim” triggering a new three-
`year window for filing suit, so that claims for more
`recent infringing conduct may be timely even though
`claims for earlier acts are barred. The court of ap-
`peals’ approach, by contrast, treats the initial infring-
`ing act as the presumptive triggering event for the
`three-year period within which suit must be filed.
`The court of appeals assumed that the likelihood of
`
`prejudice to the defendant increases as the plaintiff’s
` 
`delay in filing suit grows longer. Under Section
`507(b), however, a plaintiff’s delay will often inure to
` 
`the defendant’s benefit, by enabling it to retain the
`profits earned through any infringing acts that oc-
`curred outside the limitations period. The mere fact
`that a defendant makes substantial investments in a
`work does not establish that it would have been better
`
`off if the plaintiff had filed suit earlier. The court of
`
`appeals also failed to appreciate the flexibility of the
`Copyright Act’s remedial provisions, and the extent to
`which a plaintiff’s delay may be considered in fashion-
` 
`ing appropriate relief.
`C. A Copyright Act infringement suit that is timely
`under Section 507(b), and seeks both legal and equita-
`ble relief, cannot be dismissed altogether on the
`ground of laches. The doctrine of laches was initially
`applied in proceedings in equity, which traditionally
`were not subject to statutes of limitations. Although
`present-day equitable actions are often governed by
`statutory limitations provisions, courts have continued
`to apply laches in such actions as an additional safe-
`guard against dilatory behavior and consequent prej-
`udice to the defendant. But while compliance with the
`
`
`
`
`
`
`
`

`
`9
`
`
`governing statute of limitations does not preclude the
`application of laches to claims for equitable relief, the
`Court has disapproved its application to bar claims at
`law.
`The Copyright Act’s limitations provision does not
`directly address the possible use of laches as a ground
`for dismissing timely infringement suits. The natural
`inference from that congressional silence, which the
`pertinent legislative history reinforces, is that Con-
`gress intended Section 507(b) to be applied in accord-
`ance with the background principles that have tradi-
`
`tionally governed in this area. Because petitioner’s
`complaint sought both legal and equitable relief, the
`court of appeals erred in invoking laches as a ground
`for terminating the suit altogether. If petitioner ulti-
`
`mately prevails on the merits of her infringement
`claims, however, her delay in suing may be taken into
`account in determining the nature and extent of any
`equitable relief that might be awarded.
`ARGUMENT
`
`
`
`WHEN A COPYRIGHT INFRINGEMENT CLAIM IS
`BROUGHT WITHIN THE LIMITATIONS PERIOD IN
`17 U.S.C. 507(b), LACHES MAY LIMIT EQUITABLE BUT
`
`NOT LEGAL RELIEF
`
`Petitioner’s suit was timely under the applicable
`three-year statute of limitations, see 17 U.S.C. 507(b),
`and her complaint sought both legal and equitable
`remedies. The court of appeals nevertheless affirmed
`the district court’s grant of summary judgment for
`respondents based on laches, thus preventing adjudi-
`cation of petitioner’s claims on the merits and fore-
`closing the possibility of any form of relief. That hold-
`ing was erroneous.
`
`
`
`
`
`

`
`10
`
`
`If petitioner ultimately prevails on the merits of
`her infringement claims, her delay in filing suit can
`properly be taken into account in fashioning appropri-
`ate equitable relief. Laches has traditionally been
`inapplicable, however, to claims for legal relief, and
`
` nothing in the text or history of the Copyright Act
`suggests that Congress intended to deviate from that
`understanding here. Principles of laches therefore
`
`
`provide no sound basis for terminating petitioner’s
`suit altogether. The judgment of the court of appeals
`should be reversed.
`A. Under The Copyright Act’s Statute Of Limitations, A
`Plaintiff’s Suit Is Timely With Respect To All Acts Of
`
` 
`Infringement That Occurred Within The Three-Year
`Period Before Suit Was Filed, Even If The Suit Was
`Filed More Than Three Years After The Defendant’s
`Overall Course Of Infringing Conduct Began
`
`
` 1. A statute of limitations is a law that bars claims
`that are filed after a specified period of time. E.g.,
`Black’s Law Dictionary 1546 (9th ed. 2009). Such
`provisions serve “to promote justice by preventing
`surprises through the revival of claims that have been
`allowed to slumber until evidence has been lost, mem-
`ories have faded, and witnesses have disappeared.”
`Order of R.R. Telegraphers v. Railway Express Agen-
`cy, Inc., 321 U.S. 342, 348-349 (1944). The length of a
`limitations period generally “reflects a value judg-
`ment concerning the point at which the interests in
`favor of protecting valid claims are outweighed by the
`
`interests in prohibiting the prosecution of stale ones.”
`Johnson v. Railway Express Agency, Inc., 421 U.S.
`454, 463-464 (1975).
`Prior to 1957, federal copyright law did not include
`a statute of limitations for civil suits. As a result,
`
`
`
`
`
`
`
`
`
`
`

`
`11
`
`
` federal courts applied analogous state statutes of
`
`limitations to assess the timeliness of copyright in-
`
` fringement claims. See S. Rep. No. 1014, 85th Cong.,
`1st Sess. 1-2 (1957) (Senate Report). In 1957, Con-
`gress established a three-year limitations period for
`
`all civil actions arising under the Act. See Act of Sept.
`7, 1957, Pub. L. No. 85-313, § 1, 71 Stat. 653
`(17 U.S.C. 115(b) (1958)). This limitations period was
`designed to bring uniformity and certainty to federal
`
`copyright claims and to prevent forum shopping.
`Senate Report 2; see H. Rep. No. 2419, 84th Cong., 2d
`Sess. 2 (1956) (House Report).
`
`The three-year statute of limitations was carried
`forward without material change in the 1976 revision
`of the Copyright Act. See Act of Oct. 19, 1976, Pub. L.
`No. 94-553, sec. 101, § 507(b), 90 Stat. 2586. The Cop-
`yright Act now provides: “No civil action shall be
`
`maintained under the provisions of this title unless it
`is commenced within three years after the claim ac-
`crued.” 17 U.S.C. 507(b).
`2. Application of the statute of limitations to copy-
`right infringement claims requires an understanding
`of when such a claim accrues. A claim generally ac-
`crues when the plaintiff has a “complete and present
`cause of action.” Bay Area Laundry & Dry Cleaning
`Pension Trust Fund v. Ferbar Corp. of Cal., 522 U.S.
`
`
`192, 201 (1997) (quoting Rawlings v. Ray, 312 U.S. 96,
`
`98 (1941)). The limitations period therefore generally
`begins to run at the point when “the plaintiff can file
`suit and obtain relief.” Ibid.; see also, e.g., Gabelli v.
`
`SEC, 133 S. Ct. 1216, 1220-1221 (2013).
`The Copyright Act states that “[a]nyone who vio-
`lates any of the exclusive rights of the copyright own-
`
`er” under the Act “is an infringer of the copyright,”
`
`
`
`

`
`12
`
`
`
`
`and that the copyright owner may “institute an action
`for any infringement of that particular right commit-
` ted while he or she is the owner of it.” 17 U.S.C.
`
`501(a) and (b). For purposes of Section 507(b), a
`“claim” therefore generally “accrue[s]” when the
`defendant commits an act of infringement.1
`
`In a copyright infringement lawsuit, a plaintiff may
`have several distinct claims based on the defendant’s
`continuing course of conduct, even if all of the acts of
`infringement involve the same copyrighted work. In
`this context, “[e]ach act of infringement is a distinct
`harm giving rise to an independent claim for relief.”
`
` Stone v. Williams, 970 F.2d 1043, 1049-1050 (2d Cir.
`1992), cert. denied, 508 U.S. 906 (1993). Under that
`“separate accrual” rule, when a defendant commits a
`
`series of infringing acts, a separate claim accrues with
`each act of infringement, rather than one continuing
`claim accruing from the initial infringing act. 6 Wil-
`liam F. Patry, Patry on Copyright § 20:23, at 20-44
`(2013).2
`
`
`
`
`
`
` 1 Nine courts of appeals allow for a “discovery rule” for copy-
`right infringement claims, under which the cause of action accrues
`
`when the plaintiff discovered, or with due diligence should have
`discovered, the infringement that forms the basis for her claim.
`
`See William A. Graham Co. v. Haughey, 568 F.3d 425, 433 (3d
`
`Cir.) (citing cases), cert. denied, 558 U.S. 991 (2009); see also
`6 William F. Patry, Patry on Copyright § 20:18, at 20-28 (2013)
`
`
`
`(“The overwhel