copyright

Petrella v. Metro-Goldwyn-Mayer, Inc.

Issues: 

Can the laches defense be raised to bar all remedies for copyright claims filed within the three-year statute of limitations prescribed by Congress?

Frank Petrella was the screenwriter behind the critically acclaimed 1980 film Raging Bull. In 1978, United Artists Corporation, a subsidiary of Respondent Metro-Goldwyn-Mayer Studios (“MGM”), acquired the rights to the screenplay. When Frank Petrella died in 1981, the renewal rights passed to his heirs. His daughter, Petitioner Paula Petrella (“Petrella”), renewed the copyright in 1991. Over the next two decades, Petrella and MGM engaged in a series of communications, during which Petrella accused MGM of infringing her copyright. Petrella filed suit in 2009; pursuant to the three-year statute of limitations of the Copyright Act, the suit only involved claims arising from 2006 on. The Ninth Circuit Court of Appeals upheld the district court’s decision to bar Petrella’s copyright claims according to the non-statutory doctrine of laches, an equitable defense that bars claims filed too late. The Supreme Court’s ruling in this case will impact not only how quickly plaintiffs must bring copyright claims, but also the extent to which equitable defenses may apply to an area regulated by Congress. 

Questions as Framed for the Court by the Parties: 

Whether the non statutory 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)?

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Facts

Jake LaMotta, a retired professional boxer, and his long-time friend Frank Petrella collaborated on a book and two screenplays about LaMotta’s life and boxing career.  See Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946, 949 (9th Cir.

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Kirtsaeng v. John Wiley & Sons, Inc. (11-697)

The Respondent, John Wiley & Sons, Inc. (“Wiley”), brought a claim against the Petitioner, Supap Kirtsaeng d/b/a Bluechristine99 (“Kirtsaeng”), for violation of the Copyright Act, 17 U.S.C. §§ 101–810. While attending school in the U.S., Kirtsaeng imported and sold foreign-made textbooks from Thailand manufactured by Wiley's Asian subsidiary. Wiley alleges that Kirtsaeng violated § 602(a)(1) of the Act, which prohibits the importation of foreign-made works or goods without the copyright owner's authority. Kirtsaeng claims that, according to the first-sale doctrine codified in § 109(a), he was permitted to resell Wiley’s textbooks in the U.S. without the Respondent’s permission because the doctrine states that a copyright owner loses exclusive rights after the first sale of the work. Therefore, the issue in the case centers on the interpretation of § 602(a)(1) and § 109(a). The outcome of this case will clarify the applicability of the Copyright Act to foreign-made products. The Supreme Court’s decision will affect not only the availability of foreign-made works and goods in the U.S., but also the availability of such products abroad. If Wiley prevails, public, non-profit entities like museums, libraries, and charitable organizations will be heavily burdened because they will have to take extensive steps to procure the necessary licensing rights for goods that they import and distribute.

Questions as Framed for the Court by the Parties: 

This case presents the issue that recently divided the Court, 4–4, in Costco Wholesale Corp. v. Omega, S.A., 562 U. S. ____ (2010). Under § 602(a)(1) of the Copyright Act, it is impermissible to import a work “without the authority of the owner” of the copyright. But the first-sale doctrine, codified at § 109(a), allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of the copy without the copyright owner’s permission.

The question presented is how these provisions apply to a copy that was made and legally acquired abroad and then imported into the United States. Can such a foreign-made product never be resold within the U.S. without the copyright owner’s permission, as the Second Circuit held in this case? Can such a foreign-made product sometimes be resold in this country without permission, but only after the owner approves an earlier sale here, as the Ninth Circuit held in Costco? Or can such a product always be resold without permission within the United States, so long as the copyright owner authorized the first sale abroad, as the Third Circuit has indicated?

Issue

Whether the first-sale doctrine codified in 17 U.S.C. § 109(a) applies to copyrighted works manufactured and purchased abroad and then resold in the United States without the copyright owner’s permission.

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Acknowledgments: 

The authors would like to thank former Supreme Court Reporter of Decisions Frank Wagner for his assistance in editing this preview.

Additional Resources: 

Kirk Sigmon, The Cornell Daily SunTextbooks Too Expensive? How the Supreme Court Might Make it Worse (Sept. 7, 2012)

Caroline Flax, The Cornell Daily SunAlumnus Appeals Copyright Verdict to Supreme Court (Apr. 18, 2012)

MSNBCSupreme Court Takes Another Look at Gray Market Resales (Apr. 17, 2012)

Fox News, High Court Steps Into Copyright Case (Apr. 16, 2012)

Wex: Copyright

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