Petrella v. Metro-Goldwyn-Mayer, Inc. ( 2014 )

(Slip Opinion) OCTOBER TERM, 2013 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
PETRELLA v. METRO-GOLDWYN-MAYER, INC., ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE NINTH CIRCUIT
No. 12–1315. Argued January 21, 2014—Decided May 19, 2014
The Copyright Act (Act) protects copyrighted works published before
1978 for an initial period of 28 years, renewable for a period of up to
67 years. 17 U.S. C. §304(a). The author’s heirs inherit the renewal
rights. See §304(a)(1)(C)(ii)–(iv). When an author who has assigned
her rights away “dies before the renewal period, . . . the assignee may
continue to use the original work only if the author’s successor trans-
fers the renewal rights to the assignee,” Stewart v. Abend, 495 U.S.
207, 221. The Act provides both equitable and legal remedies for in-
fringement: an injunction “on such terms as [a court] may deem rea-
sonable to prevent or restrain infringement of a copyright,” §502(a);
and, at the copyright owner’s election, either (1) the “owner’s actual
damages and any additional profits of the infringer,” §504(a)(1),
which petitioner seeks in this case, or (2) specified statutory damag-
es, §504(c). The Act’s statute of limitations provides: “No civil action
shall be maintained under the [Act] unless it is commenced within
three years after the claim accrued.” §507(b). A claim ordinarily ac-
crues when an infringing act occurs. Under the separate-accrual rule
that attends the copyright statute of limitations, when a defendant
has committed successive violations, each infringing act starts a new
limitations period. However, under §507(b), each infringement is ac-
tionable only within three years of its occurrence.
Here, the allegedly infringing work is the motion picture Raging
Bull, based on the life of boxing champion Jake LaMotta, who, with
Frank Petrella, told his story in, inter alia, a screenplay copyrighted
in 1963. In 1976, the pair assigned their rights and renewal rights,
which were later acquired by respondent United Artists Corporation,
a subsidiary of respondent Metro-Goldwyn-Mayer, Inc. (collectively,
MGM). In 1980, MGM released, and registered a copyright in, the
2 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Syllabus
film Raging Bull, and it continues to market the film today. Frank
Petrella died during the initial copyright term, so renewal rights re-
verted to his heirs. Plaintiff below, petitioner here, Paula Petrella
(Petrella), his daughter, renewed the 1963 copyright in 1991, becom-
ing its sole owner. Seven years later, she advised MGM that its ex-
ploitation of Raging Bull violated her copyright and threatened suit.
Some nine years later, on January 6, 2009, she filed an infringement
suit, seeking monetary and injunctive relief limited to acts of in-
fringement occurring on or after January 6, 2006. Invoking the equi-
table doctrine of laches, MGM moved for summary judgment. Pet-
rella’s 18-year delay in filing suit, MGM argued, was unreasonable
and prejudicial to MGM. The District Court granted MGM’s motion,
holding that laches barred Petrella’s complaint. The Ninth Circuit
affirmed.
Held:
1. Laches cannot be invoked as a bar to Petrella’s pursuit of a claim
for damages brought within §507(b)’s three-year window. Pp. 11–19.
(a) By permitting a successful plaintiff to gain retrospective relief
only three years back from the time of suit, the copyright statute of
limitations itself takes account of delay. Brought to bear here,
§507(b) directs that Petrella cannot reach MGM’s returns on its in-
vestment in Raging Bull in years before 2006. Moreover, if infringe-
ment within the three-year window is shown, a defendant may offset
against profits made in that period expenses incurred in generating
those profits. See §504(b). In addition, a defendant may retain the
return on investment shown to be attributable to its own enterprise,
as distinct from the value created by the infringed work. See ibid.
Both before and after the merger of law and equity in 1938, this
Court has cautioned against invoking laches to bar legal relief. See,
e.g., Holmberg v. Armbrecht, 327 U.S. 392, 395, 396. Pp. 11–14.
(b) MGM’s principal arguments regarding the contemporary
scope of the laches defense are unavailing. Pp. 14–19.
(1) MGM urges that, because laches is listed in Federal Rule of
Civil Procedure 8(c) as an affirmative defense discrete from a statute
of limitations defense, the plea should be “available . . . in every civil
action” to bar all forms of relief. Such an expansive role careens
away from understandings, past and present, of the essentially gap-
filling, not legislation-overriding, office of laches. This Court has
never applied laches to bar in their entirety claims for discrete
wrongs occurring within a federally prescribed limitations period.
Inviting individual judges to set a time limit other than the one Con-
gress prescribed would tug against the uniformity Congress sought to
achieve in enacting §507(b). Pp. 14–15.
(2) MGM contends that laches, like equitable tolling, should be
Cite as: 572 U. S. ____ (2014) 3
Syllabus
“read into every federal statute of limitation,” Holmberg, 327 U.S., at
397. However, tolling lengthens the time for commencing a civil ac-
tion where there is a statute of limitations and is, in effect, a rule of
interpretation tied to that statutory limit. See, e.g., Young v. United
States, 535 U.S. 43, 49–50. In contrast, laches, which originally
served as a guide when no statute of limitations controlled, can
scarcely be described as a rule for interpreting a statutory prescrip-
tion. Pp. 15–16.
(3) MGM insists that the laches defense must be available to
prevent a copyright owner from sitting still, doing nothing, waiting to
see what the outcome of an alleged infringer’s investment will be. It
is hardly incumbent on copyright owners, however, to challenge each
and every actionable infringement. And there is nothing untoward
about waiting to see whether an infringer’s exploitation undercuts
the value of the copyrighted work, has no effect on that work, or even
complements it. Section 507(b)’s limitations period, coupled to the
separate-accrual rule, allows a copyright owner to defer suit until she
can estimate whether litigation is worth the candle. Pp. 16–17.
(4) MGM is concerned that evidence needed or useful to defend
against liability will be lost during a copyright owner’s inaction. But
Congress must have been aware that the passage of time and the au-
thor’s death could cause evidentiary issues when it provided for re-
versionary renewal rights that an author’s heirs can exercise long af-
ter a work was written and copyrighted. Moreover, because a
copyright plaintiff bears the burden of proving infringement, any
hindrance caused by evidence unavailability is as likely to affect
plaintiffs as defendants. The need for extrinsic evidence is also re-
duced by the registration mechanism, under which both the certifi-
cate and the original work must be on file with the Copyright Office
before a copyright owner can sue for infringement. Pp. 17–18.
(5) Finally, when a copyright owner engages in intentionally
misleading representations concerning his abstention from suit, and
the alleged infringer detrimentally relies on such deception, the doc-
trine of estoppel may bar the copyright owner’s claims completely,
eliminating all potential remedies. The gravamen of estoppel, a de-
fense long recognized as available in actions at law, is wrongdoing,
overt misleading, and consequent loss. Estoppel does not undermine
the statute of limitations, for it rests on misleading, whether engaged
in early on, or later in time. P. 19.
2. While laches cannot be invoked to preclude adjudication of a
claim for damages brought within the Act’s three-year window, in ex-
traordinary circumstances, laches may, at the very outset of the liti-
gation, curtail the relief equitably awarded. For example, where
owners of a copyrighted architectural design, although aware of an
4 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Syllabus
allegedly infringing housing project, delayed suit until the project
was substantially constructed and partially occupied, an order man-
dating destruction of the project would not be tolerable. See Chirco v.
Crosswinds Communities, Inc., 474 F.3d 227, 236. Nor, in the face of
an unexplained delay in commencing suit, would it be equitable to
order “total destruction” of a book already printed, packed, and
shipped. See New Era Publications Int’l v. Henry Holt & Co., 873
F.2d 576, 584–585. No such extraordinary circumstance is present
here. Petrella notified MGM of her copyright claims before MGM in-
vested millions of dollars in creating a new edition of Raging Bull,
and the equitable relief she seeks—e.g., disgorgement of unjust gains
and an injunction against future infringement—would not result in
anything like “total destruction” of the film. Allowing Petrella’s suit
to go forward will put at risk only a fraction of the income MGM has
earned during the more than three decades Raging Bull has been
marketed and will work no unjust hardship on innocent third parties.
Should Petrella ultimately prevail on the merits, the District Court,
in determining appropriate injunctive relief and assessing profits,
may take account of Petrella’s delay in commencing suit. In doing so,
however, the court must closely examine MGM’s alleged reliance on
Petrella’s delay, taking account of MGM’s early knowledge of her
claims, the protection MGM might have achieved through a declara-
tory judgment action, the extent to which MGM’s investment was
protected by the separate-accrual rule, the court’s authority to order
injunctive relief “on such terms as it may deem reasonable,” §502(a),
and any other relevant considerations. Pp. 19–22.
695 F.3d 946, reversed and remanded.
GINSBURG, J., delivered the opinion of the Court, in which SCALIA,
THOMAS, ALITO, SOTOMAYOR, and KAGAN, JJ., joined. BREYER, J., filed a
dissenting opinion, in which ROBERTS, C. J., and KENNEDY, J., joined.
Cite as: 572 U. S. ____ (2014) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
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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
[May 19, 2014]
JUSTICE GINSBURG delivered the opinion of the Court.
The Copyright Act provides that “[n]o civil action shall
be maintained under the [Act] unless it is commenced
within three years after the claim accrued.” 17 U.S. C.
§507(b). This case presents the question whether the
equitable defense of laches (unreasonable, prejudicial
delay in commencing suit) may bar relief on a copyright
infringement claim brought within §507(b)’s three-year
limitations period. Section 507(b), it is undisputed, bars
relief of any kind for conduct occurring prior to the three-
year limitations period. To the extent that an infringe-
ment suit seeks relief solely for conduct occurring within
the limitations period, however, courts are not at liberty to
jettison Congress’ judgment on the timeliness of suit.
Laches, we hold, cannot be invoked to preclude adjudica-
tion of a claim for damages brought within the three-year
window. As to equitable relief, in extraordinary circum-
stances, laches may bar at the very threshold the particu-
lar relief requested by the plaintiff. And a plaintiff ’s delay
can always be brought to bear at the remedial stage, in
determining appropriate injunctive relief, and in assessing
2 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
the “profits of the infringer . . . attributable to the in-
fringement.” §504(b).1
Petitioner Paula Petrella, in her suit for copyright in-
fringement, sought no relief for conduct occurring outside
§507(b)’s three-year limitations period. Nevertheless, the
courts below held that laches barred her suit in its en-
tirety, without regard to the currency of the conduct of
which Petrella complains. That position, we hold, is con-
trary to §507(b) and this Court’s precedent on the province
of laches.
I
The Copyright Act (Act), 17 U.S. C. §101 et seq., grants
copyright protection to original works of authorship.
§102(a). Four aspects of copyright law bear explanation at
the outset.
First, the length of a copyright term. Under the Act, a
copyright “vests initially in the author or authors of the
work,” who may transfer ownership to a third party. §201.
The Act confers on a copyright owner certain exclusive
rights, including the rights to reproduce and distribute the
work and to develop and market derivative works. §106.
Copyrighted works published before 1978—as was the
work at issue—are protected for an initial period of 28
years, which may be—and in this case was—extended for
a renewal period of up to 67 years. §304(a). From and
after January 1, 1978, works are generally protected from
the date of creation until 70 years after the author’s death.
——————
1 As infringement remedies, the Copyright Act provides for injunc-
tions, §502, impoundment and disposition of infringing articles, §503,
damages and profits, §504, costs and attorney’s fees, §505. Like other
restitutional remedies, recovery of profits “is not easily characterized as
legal or equitable,” for it is an “amalgamation of rights and remedies
drawn from both systems.” Restatement (Third) of Restitution and
Unjust Enrichment §4, Comment b, p. 28 (2010). Given the “protean
character” of the profits-recovery remedy, see id., Comment c, at 30, we
regard as appropriate its treatment as “equitable” in this case.
Cite as: 572 U. S. ____ (2014) 3
Opinion of the Court
§302(a).
Second, copyright inheritance. For works copyrighted
under the pre-1978 regime in which an initial period of
protection may be followed by a renewal period, Congress
provided that the author’s heirs inherit the renewal rights.
See §304(a)(1)(C)(ii)–(iv). We held in Stewart v. Abend,
495 U.S. 207 (1990), that if an author who has assigned
her rights away “dies before the renewal period, then the
assignee may continue to use the original work [to produce
a derivative work] only if the author’s successor transfers
the renewal rights to the assignee.” Id., at 221.2
Third, remedies. The Act provides a variety of civil
remedies for infringement, both equitable and legal. See
§§502–505, described supra, at 2, n. 1. A court may issue
an injunction “on such terms as it may deem reasonable to
prevent or restrain infringement of a copyright.” §502(a).
At the election of the copyright owner, a court may also
award either (1) “the copyright owner’s actual damages
and any additional profits of the infringer,” §504(a)(1),
which petitioner seeks in the instant case, or (2) statutory
damages within a defined range, §504(c).
Fourth, and most significant here, the statute of limita-
tions. Until 1957, federal copyright law did not include a
statute of limitations for civil suits. Federal courts there-
fore used analogous state statutes of limitations to deter-
mine the timeliness of infringement claims. See S. Rep.
No. 1014, 85th Cong., 1st Sess., 2 (1957) (hereinafter
Senate Report). And they sometimes invoked laches to
abridge the state-law prescription. As explained in Team-
sters & Employers Welfare Trust of Ill. v. Gorman Bros.
Ready Mix, 283 F.3d 877, 881 (CA7 2002): “When Con-
gress fails to enact a statute of limitations, a [federal]
——————
2 For post-1978 works, heirs still have an opportunity to recapture
rights of the author. See 3 M. Nimmer & D. Nimmer, Copyright
§11.01[A], p. 11–4 (2013) (hereinafter Nimmer).
4 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
court that borrows a state statute of limitations but per-
mits it to be abridged by the doctrine of laches is not in-
vading congressional prerogatives. It is merely filling a
legislative hole.” (internal citation omitted). In 1957,
Congress addressed the matter and filled the hole; it
prescribed a three-year look-back limitations period for all
civil claims arising under the Copyright Act. See Act of
Sept. 7, 1957, Pub. L. 85–313, 71 Stat. 633, 17 U.S. C.
§115(b) (1958 ed.). The provision, as already noted, reads:
“No civil action shall be maintained under the provisions
of this title unless it is commenced within three years
after the claim accrued.” §507(b).3
The federal limitations prescription governing copyright
suits serves two purposes: (1) to render uniform and cer-
tain the time within which copyright claims could be
pursued; and (2) to prevent the forum shopping invited by
disparate state limitations periods, which ranged from one
to eight years. Senate Report 2; see H. R. Rep. No. 2419,
84th Cong., 2d Sess., 2 (1956). To comprehend how the
Copyright Act’s limitations period works, one must under-
stand when a copyright infringement claim accrues.
A claim ordinarily accrues “when [a] plaintiff has a
complete and present cause of action.” Bay Area Laundry
and Dry Cleaning Pension Trust Fund v. Ferbar Corp. of
Cal., 522 U.S. 192, 201 (1997) (internal quotation marks
omitted). In other words, the limitations period generally
begins to run at the point when “the plaintiff can file suit
and obtain relief.” Ibid. A copyright claim thus arises or
“accrue[s]” when an infringing act occurs.4
——————
3 The Copyright Act was pervasively revised in 1976, but the three-
year look-back statute of limitations has remained materially un-
changed. See Act of Oct. 19, 1976, §101, 90 Stat. 2586.
4 Although we have not passed on the question, nine Courts of Ap-
peals have adopted, as an alternative to the incident of injury rule, a
“discovery rule,” which starts the limitations period when “the plaintiff
discovers, or with due diligence should have discovered, the injury that
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Opinion of the Court
It is widely recognized that the separate-accrual rule
attends the copyright statute of limitations.5 Under that
rule, when a defendant commits successive violations, the
statute of limitations runs separately from each violation.
Each time an infringing work is reproduced or distributed,
the infringer commits a new wrong. Each wrong gives rise
to a discrete “claim” that “accrue[s]” at the time the wrong
occurs.6 In short, each infringing act starts a new limita-
tions period. See Stone v. Williams, 970 F.2d 1043, 1049
(CA2 1992) (“Each act of infringement is a distinct harm
giving rise to an independent claim for relief.”).
Under the Act’s three-year provision, an infringement is
actionable within three years, and only three years, of its
occurrence. And the infringer is insulated from liability
for earlier infringements of the same work. See 3 M.
Nimmer & D. Nimmer, Copyright §12.05[B][1][b], p. 12–
150.4 (2013) (“If infringement occurred within three years
prior to filing, the action will not be barred even if prior
——————
forms the basis for the claim.” William A. Graham Co. v. Haughey, 568
F.3d 425, 433 (CA3 2009) (internal quotation marks omitted). See also
6 W. Patry, Copyright §20:19, p. 20–28 (2013) (hereinafter Patry) (“The
overwhelming majority of courts use discovery accrual in copyright
cases.”).
5 See generally id., §20:23, at 20–44; 3 Nimmer §12.05[B][1][b], at 12–
150.2 to 12–150.4. See also, e.g., William A. Graham Co., 568 F.3d, at
433; Peter Letterese & Assoc., Inc. v. World Inst. of Scientology Enter-
prises, Int’l, 533 F.3d 1287, 1320, n. 39 (CA11 2008); Bridgeport Music,
Inc. v. Rhyme Syndicate Music, 376 F.3d 615, 621 (CA6 2004); Mak-
edwde Publishing Co. v. Johnson, 37 F.3d 180, 182 (CA5 1994); Roley
v. New World Pictures, Ltd., 19 F.3d 479, 481 (CA9 1994).
6 Separately accruing harm should not be confused with harm from
past violations that are continuing. Compare Klehr v. A. O. Smith
Corp., 521 U.S. 179, 190 (1997) (for separately accruing harm, each
new act must cause “harm [to the plaintiff] over and above the harm
that the earlier acts caused”), with Havens Realty Corp. v. Coleman,
455 U.S. 363, 380–381 (1982) (“[W]here a plaintiff . . . challenges . . . an
unlawful practice that continues into the limitations period, the com-
plaint is timely when it is filed within [the limitations period, measured
from] the last asserted occurrence of that practice.” (footnote omitted)).
6 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
infringements by the same party as to the same work are
barred because they occurred more than three years pre-
viously.”). Thus, when a defendant has engaged (or is
alleged to have engaged) in a series of discrete infringing
acts, the copyright holder’s suit ordinarily will be timely
under §507(b) with respect to more recent acts of in-
fringement (i.e., acts within the three-year window), but
untimely with respect to prior acts of the same or similar
kind.7
In sum, Congress provided two controlling time pre-
scriptions: 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 gain retrospective relief running only
——————
7Acase arising outside of the copyright context is illustrative. In Bay
Area Laundry and Dry Cleaning Pension Trust Fund v. Ferbar Corp. of
Cal., 522 U.S. 192 (1997), an employer was delinquent in making a
series of scheduled payments to an underfunded pension plan. See id.,
at 198–199. The trustees filed suit just over six years after the first
missed payment, barely outside of the applicable six-year statute of
limitations. See id., at 198. Because the first missed payment in the
series fell outside the statute of limitations, the employer argued that
the subsequent missed payments were also time barred. See id., at
206. We rejected that argument. The remaining claims were timely,
we held, because “each missed payment create[d] a separate cause of
action with its own six-year limitations period.” Ibid. Cf. Klehr, 521
U. S., at 190 (for civil Racketeer Influenced and Corrupt Organizations
Act claims, plaintiff may recover for acts occurring within the limita-
tions period, but may not use an “independent, new predicate act as a
bootstrap to recover for injuries caused by other earlier predicate acts
that took place outside the limitations period”); National Railroad
Passenger Corporation v. Morgan, 536 U.S. 101, 114–121 (2002)
(distinguishing discrete acts, each independently actionable, from
conduct “cumulative [in] effect,” e.g., hostile environment claims pur-
sued under Title VII of the Civil Rights Act of 1964, 42 U.S. C. §2000e
et seq.; “in direct contrast to discrete acts, a single [instance of hostility]
may not be actionable on its own”). But cf. post, at 10–11 (ignoring the
distinction Morgan took care to draw between discrete acts inde-
pendently actionable and conduct cumulative in effect).
Cite as: 572 U. S. ____ (2014) 7
Opinion of the Court
three years back from the date the complaint was filed.
II
A
The allegedly infringing work in this case is the criti-
cally acclaimed motion picture Raging Bull, based on the life
of boxing champion Jake LaMotta. After retiring from the
ring, LaMotta worked with his longtime friend, Frank
Petrella, to tell the story of the boxer’s career. Their
venture resulted in three copyrighted works: two screen-
plays, one registered in 1963, the other in 1973, and a
book, registered in 1970. This case centers on the screen-
play registered in 1963. The registration identified Frank
Petrella as sole author, but also stated that the screenplay
was written “in collaboration with” LaMotta. App. 164.
In 1976, Frank Petrella and LaMotta assigned their
rights in the three works, including renewal rights, to
Chartoff-Winkler Productions, Inc. Two years later, re-
spondent United Artists Corporation, a subsidiary of respond-
ent Metro-Goldwyn-Mayer, Inc. (collectively, MGM), ac-
quired the motion picture rights to the book and both
screenplays, rights stated by the parties to be “exclusiv[e]
and forever, including all periods of copyright and renew-
als and extensions thereof.” Id., at 49. In 1980, MGM
released, and registered a copyright in, the film Raging
Bull, directed by Martin Scorsese and starring Robert De
Niro, who won a Best Actor Academy Award for his por-
trayal of LaMotta. MGM continues to market the film,
and has converted it into formats unimagined in 1980,
including DVD and Blu-ray.
Frank Petrella died in 1981, during the initial terms of
the copyrights in the screenplays and book. As this
Court’s decision in Stewart confirmed, Frank Petrella’s
renewal rights reverted to his heirs, who could renew the
copyrights unburdened by any assignment previously
made by the author. See 495 U.S., at 220–221 (relying on
8 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
Court’s earlier decision in Miller Music Corp. v. Charles N.
Daniels, Inc., 362 U.S. 373 (1960)).
Plaintiff below, petitioner here, Paula Petrella (Petrella)
is Frank Petrella’s daughter. Learning of this Court’s
decision in Stewart, Petrella engaged an attorney who, in
1991, renewed the copyright in the 1963 screenplay.
Because the copyrights in the 1973 screenplay and the
1970 book were not timely renewed, the infringement
claims in this case rest exclusively on the screenplay
registered in 1963. Petrella is now sole owner of the copy-
right in that work.8
In 1998, seven years after filing for renewal of the copy-
right in the 1963 screenplay, Petrella’s attorney informed
MGM that Petrella had obtained the copyright to that
screenplay. Exploitation of any derivative work, including
Raging Bull, the attorney asserted, infringed on the copy-
right now vested in Petrella. During the next two years,
counsel for Petrella and MGM exchanged letters in which
MGM denied the validity of the infringement claims, and
Petrella repeatedly threatened to take legal action.
B
Some nine years later, on January 6, 2009, Petrella filed
a copyright infringement suit in the United States District
Court for the Central District of California. She alleged
that MGM violated and continued to violate her copyright
in the 1963 screenplay by using, producing, and distrib-
uting Raging Bull, a work she described as derivative of
the 1963 screenplay. Petrella’s complaint sought mone-
tary and injunctive relief. Because the statute of limita-
tions for copyright claims requires commencement of suit
“within three years after the claim accrued,” §507(b),
——————
8 Petrella’s
attorney filed the renewal application on behalf of Frank
Petrella’s heirs. When Petrella’s mother died and her brother assigned
his rights to her, Petrella became the sole owner of all rights in the
1963 screenplay.
Cite as: 572 U. S. ____ (2014) 9
Opinion of the Court
Petrella sought relief only for acts of infringement occur-
ring on or after January 6, 2006. No relief, she recognizes,
can be awarded for infringing acts prior to that date.
MGM moved for summary judgment on several grounds,
among them, the equitable doctrine of laches. Petrella’s
18-year delay, from the 1991 renewal of the copyright on
which she relied, until 2009, when she commenced suit,
MGM maintained, was unreasonable and prejudicial to
MGM. See Memorandum of Points and Authorities in
Support of Defendants’ Motion for Summary Judgment in
No. CV 09–0072 (CD Cal.).
The District Court granted MGM’s motion. See App. to
Pet. for Cert. 28a–48a. As to the merits of the infringe-
ment claims, the court found, disputed issues of material
fact precluded summary adjudication. See id., at 34a–42a.
Even so, the court held, laches barred Petrella’s complaint.
Id., at 42a–48a. Petrella had unreasonably delayed suit
by not filing until 2009, the court concluded, and further
determined that MGM was prejudiced by the delay. Id., at
42a–46a. In particular, the court stated, MGM had shown
“expectations-based prejudice,” because the company had
“made significant investments in exploiting the film”; in
addition, the court accepted that MGM would encounter
“evidentiary prejudice,” because Frank Petrella had died
and LaMotta, then aged 88, appeared to have sustained a
loss of memory. Id., at 44a–46a.9
The U. S. Court of Appeals for the Ninth Circuit af-
firmed the laches-based dismissal. 695 F.3d 946 (2012).
Under Ninth Circuit precedent, the Court of Appeals first
observed, “[i]f any part of the alleged wrongful conduct
occurred outside of the limitations period, courts presume
——————
9 LaMotta,the court noted, “ha[d] suffered myriad blows to his head
as a fighter years ago,” and “no longer recognize[d Petrella], even
though he ha[d] known her for forty years.” App. to Pet. for Cert.
45a–46a.
10 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
that the plaintiff ’s claims are barred by laches.” Id., at
951 (internal quotation marks omitted). The presumption
was applicable here, the court indicated, because “[t]he
statute of limitations for copyright claims in civil cases is
three years,” ibid. (citing §507(b)), and Petrella was aware
of her potential claims many years earlier (as was MGM),
id., at 952. “[T]he true cause of Petrella’s delay,” the court
suggested, “was, as [Petrella] admits, that ‘the film hadn’t
made money’ [in years she deferred suit].” Id., at 953.10
Agreeing with the District Court, the Ninth Circuit de-
termined that MGM had established expectations-based
prejudice: the company had made a large investment in
Raging Bull, believing it had complete ownership and
control of the film. Id., at 953–954.11
Judge Fletcher concurred only because Circuit prece-
dent obliged him to do so. Id., at 958. Laches in copyright
cases, he observed, is “entirely a judicial creation,” one
notably “in tension with Congress’ [provision of a three-
year limitations period].” Ibid.
We granted certiorari to resolve a conflict among the
Circuits on the application of the equitable defense of
laches to copyright infringement claims brought within
the three-year look-back period prescribed by Congress.12
——————
10 In her declaration, Petrella stated that MGM told her in 2001 that
the film was in “a huge deficit financially,” “would never show a profit,”
and, for that reason, “MGM would not continue to send [financial]
statements [to her].” App. 234.
11 The Court of Appeals did not consider whether MGM had also
shown evidentiary prejudice. 695 F.3d 946, 953 (CA9 2012).
12 See Lyons Partnership L. P. v. Morris Costumes, Inc., 243 F.3d 789,
798 (CA4 2001) (laches defense unavailable in copyright infringement
cases, regardless of remedy sought); Peter Letterese, 533 F.3d, at 1320
(“[T]here is a strong presumption [in copyright cases] that a plaintiff’s
suit is timely if it is filed before the statute of limitations has run. Only
in the most extraordinary circumstances will laches be recognized as a
defense.”); Chirco v. Crosswinds Communities, Inc., 474 F.3d 227, 233
(CA6 2007) (in copyright litigation, laches applies only to “the most
Cite as: 572 U. S. ____ (2014) 11
Opinion of the Court
570 U. S. ___ (2013).
III
We consider first whether, as the Ninth Circuit held,
laches may be invoked as a bar to Petrella’s pursuit of
legal remedies under 17 U.S. C. §504(b). The Ninth
Circuit erred, we hold, in failing to recognize that the
copyright statute of limitations, §507(b), itself takes ac-
count of delay. As earlier observed, see supra, at 5–6, a
successful plaintiff can gain retrospective relief only three
years back from the time of suit. No recovery may be had
for infringement in earlier years. Profits made in those
years remain the defendant’s to keep. Brought to bear
here, §507(b) directs that MGM’s returns on its invest-
ment in Raging Bull in years outside the three-year win-
dow (years before 2006) cannot be reached by Petrella.
Only by disregarding that feature of the statute, and the
separate-accrual rule attending §507(b), see supra, at 4–5,
could the Court of Appeals presume that infringing acts
occurring before January 6, 2006 bar all relief, monetary
and injunctive, for infringement occurring on and after
that date. See 695 F.3d, at 951; supra, at 9–10.13
Moreover, if infringement within the three-year look-
back period is shown, the Act allows the defendant to
——————
compelling of cases”); Jacobsen v. Deseret Book Co., 287 F.3d 936, 950
(CA10 2002) (“Rather than deciding copyright cases on the issue of
laches, courts should generally defer to the three-year statute of limita-
tions.”); New Era Publications Int’l v. Henry Holt & Co., 873 F.2d 576,
584–585 (CA2 1989) (“severe prejudice, coupled with . . . unconscionable
delay . . . mandates denial of . . . injunction for laches and relegation of
[plaintiff] to its damages remedy”). Cf. post, at 1, 13 (acknowledging
that application of laches should be “extraordinary,” confined to “few
and unusual cases”).
13 Assuming Petrella had a winning case on the merits, the Court of
Appeals’ ruling on laches would effectively give MGM a cost-free license
to exploit Raging Bull throughout the long term of the copyright. The
value to MGM of such a free, compulsory license could exceed by far
MGM’s expenditures on the film.
12 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
prove and offset against profits made in that period “de-
ductible expenses” incurred in generating those profits.
§504(b). In addition, the defendant may prove and offset
“elements of profit attributable to factors other than the
copyrighted work.” §504(b). The defendant thus may
retain the return on investment shown to be attributable
to its own enterprise, as distinct from the value created by
the infringed work. See Sheldon v. Metro-Goldwyn Pic-
tures Corp., 309 U.S. 390, 402, 407 (1940) (equitably
apportioning profits to account for independent contribu-
tions of infringing defendant). See also infra, at 19–22
(delay in commencing suit as a factor in determining
contours of relief appropriately awarded).
Last, but hardly least, laches is a defense developed by
courts of equity; its principal application was, and re-
mains, to claims of an equitable cast for which the Legisla-
ture has provided no fixed time limitation. See 1 D.
Dobbs, Law of Remedies §2.4(4), p. 104 (2d ed. 1993) (here-
inafter Dobbs) (“laches . . . may have originated in equity
because no statute of limitations applied, . . . suggest[ing]
that laches should be limited to cases in which no statute
of limitations applies”). Both before and after the merger
of law and equity in 1938,14 this Court has cautioned
against invoking laches to bar legal relief. See Holmberg
v. Armbrecht, 327 U.S. 392, 395, 396 (1946) (in actions at
law, “[i]f Congress explicitly puts a limit upon the time for
enforcing a right which it created, there is an end of the
matter,” but “[t]raditionally . . . , statutes of limitation are
not controlling measures of equitable relief ”); Merck & Co.
v. Reynolds, 559 U.S. 633, 652 (2010) (quoting, for its
current relevance, statement in United States v. Mack,
295 U.S. 480, 489 (1935), that “[l]aches within the term of
——————
14 See Fed. Rule Civ. Proc. 2 (“There is one form of action—the civil
action.”); Rule 8(c) (listing among affirmative defenses both “laches”
and “statute of limitations”).
Cite as: 572 U. S. ____ (2014) 13
Opinion of the Court
the statute of limitations is no defense [to an action] at
law”); County of Oneida v. Oneida Indian Nation of N. Y.,
470 U.S. 226, 244, n. 16 (1985) (“[A]pplication of the
equitable defense of laches in an action at law would be
novel indeed.”).15
Because we adhere to the position that, in face of a
statute of limitations enacted by Congress, laches cannot
be invoked to bar legal relief, the dissent thinks we
“plac[e] insufficient weight upon the rules and practice of
modern litigation.” Post, at 12. True, there has been,
since 1938, only “one form of action—the civil action.”
Fed. Rule Civ. Proc. 2. But “the substantive and remedial
principles [applicable] prior to the advent of the federal
rules [have] not changed.” 4 C. Wright & A. Miller, Fed-
eral Practice and Procedure §1043, p. 177 (3d ed. 2002).
Holmberg, Merck, and Oneida so illustrate. The dissent
presents multiple citations, see post, at 1, 3–4, 7–8, 10–11,
many of them far afield from the issue at hand, others
obscuring what the cited decisions in fact ruled. Compare,
e.g., post, at 1, 11, with infra, at 20–21 (describing Chirco
——————
15 In contrast to the Copyright Act, the Lanham Act, which governs
trademarks, contains no statute of limitations, and expressly provides
for defensive use of “equitable principles, including laches.” 15 U.S. C.
§1115(b)(9). But cf. post, at 8, 11 (citing Hot Wax, Inc. v. Turtle Wax,
Inc., 191 F.3d 813 (CA7 1999), but failing to observe that Lanham Act
contains no statute of limitations).
The Patent Act states: “[N]o recovery shall be had for any infringe-
ment committed more than six years prior to the filing of the com-
plaint.” 35 U.S. C. §286. The Act also provides that “[n]onin-
fringement, absence of liability for infringement or unenforceability”
may be raised “in any action involving the validity or infringement
of a patent.” §282(b) (2012 ed.). Based in part on §282 and com-
mentary thereon, legislative history, and historical practice, the Fed-
eral Circuit has held that laches can bar damages incurred prior to
the commencement of suit, but not injunctive relief. A. C. Aukerman
Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 1029–1031, 1039–1041
(1992) (en banc). We have not had occasion to review the Federal
Circuit’s position.
14 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
v. Crosswinds Communities, Inc., 474 F.3d 227 (CA6
2007)); post, at 1, 10–11, with infra, at 15, n. 16 (describ-
ing National Railroad Passenger Corporation v. Morgan,
536 U.S. 101 (2002)); post, at 8, with infra, at 15, n. 16
(describing Patterson v. Hewitt, 195 U.S. 309 (1904)). Yet
tellingly, the dissent has come up with no case in which
this Court has approved the application of laches to bar a
claim for damages brought within the time allowed by a
federal statute of limitations. There is nothing at all
“differen[t],” see post, at 12, about copyright cases in this
regard.
IV
We turn now to MGM’s principal arguments regarding
the contemporary scope of the laches defense, all of them
embraced by the dissent.
A
Laches is listed among affirmative defenses, along with,
but discrete from, the statute of limitations, in Federal
Rule of Civil Procedure 8(c). Accordingly, MGM main-
tains, the plea is “available . . . in every civil action” to bar
all forms of relief. Tr. of Oral Arg. 43; see Brief for Re-
spondents 40. To the Court’s question, could laches apply
where there is an ordinary six-year statute of limitations,
MGM’s counsel responded yes, case-specific circumstances
might warrant a ruling that a suit brought in year five
came too late. Tr. of Oral Arg. 52; see id., at 41.
The expansive role for laches MGM envisions careens
away from understandings, past and present, of the essen-
tially gap-filling, not legislation-overriding, office of laches.
Nothing in this Court’s precedent suggests a doctrine
of such sweep. Quite the contrary, we have never applied
laches to bar in their entirety claims for discrete wrongs
occurring within a federally prescribed limitations pe-
Cite as: 572 U. S. ____ (2014) 15
Opinion of the Court
riod.16 Inviting individual judges to set a time limit other
than the one Congress prescribed, we note, would tug
against the uniformity Congress sought to achieve when it
enacted §507(b). See supra, at 3–4.
B
MGM observes that equitable tolling “is read into every
federal statute of limitation,” Holmberg, 327 U.S., at 397,
and asks why laches should not be treated similarly. See
Brief for Respondents 23–26; post, at 7–8. Tolling, which
lengthens the time for commencing a civil action in appro-
priate circumstances,17 applies when there is a statute of
——————
16 MGM pretends otherwise, but the cases on which it relies do not
carry the load MGM would put on them. Morgan, described supra, at 6,
n. 7, is apparently MGM’s best case, for it is cited 13 times in MGM’s
brief. See Brief for Respondents 8, 9, 14, 16, 18, 19, 25, 31, 34, 35, 36,
40, 47; post, at 1, 7, 10–11. Morgan, however, does not so much as hint
that laches may bar claims for discrete wrongs, all of them occurring
within a federal limitations period. Part II–A of that opinion, dealing
with the separate-accrual rule, held that “[e]ach discrete discriminatory
act starts a new clock for filing charges alleging that act,” regardless of
whether “past acts” are time barred. 536 U.S., at 113. Parts II–B and
II–C of the opinion then distinguished separately accruing wrongs from
hostile-work-environment claims, cumulative in effect and extending
over long periods of time. Id., at 115–117, 121. Laches could be in-
voked, the Court reasoned, to limit the continuing violation doctrine’s
potential to rescue untimely claims, not claims accruing separately
within the limitations period.
Bay Area Laundry, described, along with Morgan, supra, at 6, n. 7, is
similarly featured by MGM. See also post, at 7–8, 11. But that opinion
considered laches only in the context of a federal statute calling for
action “[a]s soon as practicable.” 29 U.S. C. §1399(b)(1); see 522 U.S.,
at 205. Patterson v. Hewitt, 195 U.S. 309 (1904), described by MGM as
a case resembling Petrella’s, see Tr. of Oral Arg. 32–33, 53, barred
equitable claims that were timely under state law. When state law was
the reference, federal courts sometimes applied laches as a further
control. See supra, at 3–4; Russel v. Todd, 309 U.S. 280, 288, n. 1
(1940) (“Laches may bar equitable remedy before the local statute has
run.”). No federal statute of limitations figured in Patterson.
17 E.g., a party’s infancy or mental disability, absence of the defend-
16 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
limitations; it is, in effect, a rule of interpretation tied to
that limit. See Young v. United States, 535 U.S. 43, 49–
50 (2002); Johnson v. Railway Express Agency, Inc., 421
U.S. 454, 464 (1975).18 Laches, in contrast, originally
served as a guide when no statute of limitations controlled
the claim; it can scarcely be described as a rule for inter-
preting a statutory prescription. That is so here, because
the statute, §507(b), makes the starting trigger an infring-
ing act committed three years back from the commence-
ment of suit, while laches, as conceived by the Ninth
Circuit and advanced by MGM, makes the presumptive
trigger the defendant’s initial infringing act. See 695
F.3d, at 951; Brief for United States 16.
C
MGM insists that the defense of laches must be avail-
able to prevent a copyright owner from sitting still, doing
nothing, waiting to see what the outcome of an alleged
infringer’s investment will be. See Brief for Respondents
48. In this case, MGM stresses, “[Petrella] conceded that
she waited to file because ‘the film was deeply in debt and
in the red and would probably never recoup.’ ” Id., at 47
(quoting from App. 110). The Ninth Circuit similarly
faulted Petrella for waiting to sue until the film Raging
Bull “made money.” 695 F.3d, at 953 (internal quotation
marks omitted). See also post, at 3–6 (deploring plaintiffs
who wait to see whether the allegedly infringing work
makes money).
It is hardly incumbent on copyright owners, however, to
challenge each and every actionable infringement. And
——————
ant from the jurisdiction, fraudulent concealment. See S. Rep. No.
1014, 85th Cong., 1st Sess., 2–3 (1957) (hereinafter Senate Report).
18 The legislative history to which the dissent refers, post, at 7, speaks
of “equitable situations on which the statute of limitations is generally
suspended,” Senate Report 3, and says nothing about laches shrinking
the time Congress allowed.
Cite as: 572 U. S. ____ (2014) 17
Opinion of the Court
there is nothing untoward about waiting to see whether an
infringer’s exploitation undercuts the value of the copy-
righted work, has no effect on the original work, or even
complements it. Fan sites prompted by a book or film, for
example, may benefit the copyright owner. See Wu, Tol-
erated Use, 31 Colum. J. L. & Arts 617, 619–620 (2008).
Even if an infringement is harmful, the harm may be too
small to justify the cost of litigation.
If the rule were, as MGM urges, “sue soon, or forever
hold your peace,” copyright owners would have to mount a
federal case fast to stop seemingly innocuous infringe-
ments, lest those infringements eventually grow in magni-
tude. Section 507(b)’s three-year limitations period, how-
ever, coupled to the separate-accrual rule, see supra, at
3–6, avoids such litigation profusion. It allows a copyright
owner to defer suit until she can estimate whether litiga-
tion is worth the candle. She will miss out on damages for
periods prior to the three-year look-back, but her right to
prospective injunctive relief should, in most cases, remain
unaltered.19
D
MGM points to the danger that evidence needed or
useful to defend against liability will be lost during a
copyright owner’s inaction. Brief for Respondents 37–38;
see post, at 2–4.20 Recall, however, that Congress provided
for reversionary renewal rights exercisable by an author’s
heirs, rights that can be exercised, at the earliest for pre-
——————
19 The dissent worries that a plaintiff might sue for profits “every
three years . . . until the copyright expires.” Post, at 5; see post, at 2.
That suggestion neglects to note that a plaintiff who proves infringe-
ment will likely gain forward-looking injunctive relief stopping the
defendant’s repetition of infringing acts.
20 As earlier noted, see supra, at 10, n. 11, the Court of Appeals did
not reach the question whether evidentiary prejudice existed. 695
F.3d, at 953.
18 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
1978 copyrights, 28 years after a work was written and
copyrighted. See, supra, at 2–3. At that time, the author,
and perhaps other witnesses to the creation of the work,
will be dead. See supra, at 7. Congress must have been
aware that the passage of time and the author’s death
could cause a loss or dilution of evidence. Congress chose,
nonetheless, to give the author’s family “a second chance
to obtain fair remuneration.” Stewart, 495 U.S., at 220.
Moreover, a copyright plaintiff bears the burden of
proving infringement. See 3 W. Patry, Copyright §9.4,
p. 9–18 (2013) (hereinafter Patry) (“As in other civil litiga-
tion, a copyright owner bears the burden of establishing a
prima facie case.”). But cf. post, at 4 (overlooking plain-
tiff ’s burden to show infringement and the absence of any
burden upon the defendant “to prove that it did not in-
fringe”). Any hindrance caused by the unavailability of
evidence, therefore, is at least as likely to affect plaintiffs
as it is to disadvantage defendants. That is so in cases of
the kind Petrella is pursuing, for a deceased author most
probably would have supported his heir’s claim.
The registration mechanism, we further note, reduces
the need for extrinsic evidence. Although registration is
“permissive,” both the certificate and the original work
must be on file with the Copyright Office before a copy-
right owner can sue for infringement. §§408(b), 411(a).
Key evidence in the litigation, then, will be the certificate,
the original work, and the allegedly infringing work. And
the adjudication will often turn on the factfinder’s direct
comparison of the original and the infringing works, i.e.,
on the factfinder’s “good eyes and common sense” in com-
paring the two works’ “total concept and overall feel.”
Peter F. Gaito Architecture, LLC v. Simone Development
Corp., 602 F.3d 57, 66 (CA2 2010) (internal quotation
marks omitted).
Cite as: 572 U. S. ____ (2014)
19
Opinion of the Court
E
Finally, when a copyright owner engages in intention-
ally misleading representations concerning his abstention
from suit, and the alleged infringer detrimentally relies on
the copyright owner’s deception, the doctrine of estoppel
may bar the copyright owner’s claims completely, elimi-
nating all potential remedies. See 6 Patry §20:58, at 20–
110 to 20–112.21 The test for estoppel is more exacting
than the test for laches, and the two defenses are differ-
ently oriented. The gravamen of estoppel, a defense long
recognized as available in actions at law, see Wehrman v.
Conklin, 155 U.S. 314, 327 (1894), is misleading and
consequent loss, see 6 Patry §20:58, at 20–110 to 20–112.
Delay may be involved, but is not an element of the de-
fense. For laches, timeliness is the essential element. In
contrast to laches, urged by MGM entirely to override the
statute of limitations Congress prescribed, estoppel does
not undermine Congress’ prescription, for it rests on mis-
leading, whether engaged in early on, or later in time.
Stating that the Ninth Circuit “ha[d] taken a wrong
turn in its formulation and application of laches in copy-
right cases,” Judge Fletcher called for fresh consideration
of the issue. 695 F.3d, at 959. “A recognition of the dis-
tinction between . . . estoppel and laches,” he suggested,
“would be a good place to start.” Ibid. We agree.
V
The courts below summarily disposed of Petrella’s case
based on laches, preventing adjudication of any of her
claims on the merits and foreclosing the possibility of any
form of relief. That disposition, we have explained, was
erroneous. Congress’ time provisions secured to authors a
——————
21 Although MGM, in its answer to Petrella’s complaint, separately
raised both laches and estoppel as affirmative defenses, see Defendants’
Answer to Plaintiff’s Complaint in No. CV 09–0072 (CD Cal.), the
courts below did not address the estoppel plea.
20 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
copyright term of long duration, and a right to sue for
infringement occurring no more than three years back
from the time of suit. That regime leaves “little place” for
a doctrine that would further limit the timeliness of a
copyright owner’s suit. See 1 Dobbs §2.6(1), at 152. In
extraordinary circumstances, however, the consequences
of a delay in commencing suit may be of sufficient magni-
tude to warrant, at the very outset of the litigation, cur-
tailment of the relief equitably awardable.
Chirco v. Crosswinds Communities, Inc., 474 F.3d 227
(CA6 2007), is illustrative. In that case, the defendants
were alleged to have used without permission, in planning
and building a housing development, the plaintiffs’ copy-
righted architectural design. Long aware of the defend-
ants’ project, the plaintiffs took no steps to halt the hous-
ing development until more than 168 units were built, 109
of which were occupied. Id., at 230. Although the action
was filed within §507(b)’s three-year statute of limitations,
the District Court granted summary judgment to the
defendants, dismissing the entire case on grounds of laches.
The trial court’s rejection of the entire suit could not
stand, the Court of Appeals explained, for it was not within
the Judiciary’s ken to debate the wisdom of §507(b)’s
three-year look-back prescription. Id., at 235. Neverthe-
less, the Court of Appeals affirmed the District Court’s
judgment to this extent: The plaintiffs, even if they might
succeed in proving infringement of their copyrighted de-
sign, would not be entitled to an order mandating destruc-
tion of the housing project. That relief would be inequit-
able, the Sixth Circuit held, for two reasons: the plaintiffs
knew of the defendants’ construction plans before the de-
fendants broke ground, yet failed to take readily available
measures to stop the project; and the requested relief
would “work an unjust hardship” upon the defendants and
innocent third parties. Id., at 236. See also New Era
Publications Int’l v. Henry Holt & Co., 873 F.2d 576, 584–
Cite as: 572 U. S. ____ (2014) 21
Opinion of the Court
585 (CA2 1989) (despite awareness since 1986 that book
containing allegedly infringing material would be pub-
lished in the United States, copyright owner did not seek a
restraining order until 1988, after the book had been
printed, packed, and shipped; as injunctive relief “would
[have] result[ed] in the total destruction of the work,” the
court “relegat[ed plaintiff] to its damages remedy”).
In sum, the courts below erred in treating laches as a
complete bar to Petrella’s copyright infringement suit.
The action was commenced within the bounds of §507(b),
the Act’s time-to-sue prescription, and does not present
extraordinary circumstances of the kind involved in Chirco
and New Era. Petrella notified MGM of her copyright
claims before MGM invested millions of dollars in creating
a new edition of Raging Bull. And the equitable relief
Petrella seeks—e.g., disgorgement of unjust gains and an
injunction against future infringement—would not result
in “total destruction” of the film, or anything close to it.
See New Era, 873 F.2d, at 584. MGM released Raging
Bull more than three decades ago and has marketed it
continuously since then. Allowing Petrella’s suit to go
forward will put at risk only a fraction of the income MGM
has earned during that period and will work no unjust
hardship on innocent third parties, such as consumers
who have purchased copies of Raging Bull. Cf. Chirco, 474
F.3d, at 235–236 (destruction remedy would have ousted
families from recently purchased homes). The circum-
stances here may or may not (we need not decide) warrant
limiting relief at the remedial stage, but they are not
sufficiently extraordinary to justify threshold dismissal.
Should Petrella ultimately prevail on the merits, the
District Court, in determining appropriate injunctive relief
and assessing profits, may take account of her delay in
commencing suit. See supra, at 1–2, 11–12. In doing so,
however, that court should closely examine MGM’s alleged
22 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
Opinion of the Court
reliance on Petrella’s delay.22 This examination should
take account of MGM’s early knowledge of Petrella’s
claims, the protection MGM might have achieved through
pursuit of a declaratory judgment action, the extent to
which MGM’s investment was protected by the separate-
accrual rule, the court’s authority to order injunctive relief
“on such terms as it may deem reasonable,” §502(a), and
any other considerations that would justify adjusting
injunctive relief or profits. See Haas v. Leo Feist, Inc., 234
F. 105, 107–108 (SDNY 1916) (adjudicating copyright
infringement suit on the merits and decreeing injunctive
relief, but observing that, in awarding profits, account
may be taken of copyright owner’s inaction until infringer
had spent large sums exploiting the work at issue). See
also Tr. of Oral Arg. 23 (Government observation that, in
fashioning equitable remedies, court has considerable
leeway; it could, for example, allow MGM to continue
using Raging Bull as a derivative work upon payment of a
reasonable royalty to Petrella). Whatever adjustments
may be in order in awarding injunctive relief, and in ac-
counting for MGM’s gains and profits, on the facts thus far
presented, there is no evident basis for immunizing
MGM’s present and future uses of the copyrighted work,
free from any obligation to pay royalties.
* * *
For the reasons stated, the judgment of the United
States Court of Appeals for the Ninth Circuit is reversed,
and the case is remanded for further proceedings con-
sistent with this opinion.
It is so ordered.
——————
22 While reliance or its absence may figure importantly in this case,
we do not suggest that reliance is in all cases a sine qua non for ad-
justment of injunctive relief or profits.
Cite as: 572 U. S. ____ (2014) 1
BREYER, J., dissenting
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
[May 19, 2014]
JUSTICE BREYER, with whom THE CHIEF JUSTICE, and
JUSTICE KENNEDY join, dissenting.
Legal systems contain doctrines that help courts avoid
the unfairness that might arise were legal rules to apply
strictly to every case no matter how unusual the circum-
stances. “[T]he nature of the equitable,” Aristotle long ago
observed, is “a correction of law where it is defective owing
to its universality.” Nicomachean Ethics 99 (D. Ross
transl. L. Brown ed. 2009). Laches is one such equitable
doctrine. It applies in those extraordinary cases where the
plaintiff “unreasonably delays in filing a suit,” National
Railroad Passenger Corporation v. Morgan, 536 U.S. 101,
121 (2002), and, as a result, causes “unjust hardship” to
the defendant, Chirco v. Crosswinds Communities, Inc.,
474 F.3d 227, 236 (CA6 2007) (emphasis deleted). Its
purpose is to avoid “inequity.” Galliher v. Cadwell, 145
U.S. 368, 373 (1892). And, as Learned Hand pointed out,
it may well be
“inequitable for the owner of a copyright, with full no-
tice of an intended infringement, to stand inactive
while the proposed infringer spends large sums of
money in its exploitation, and to intervene only when
his speculation has proved a success.” Haas v. Leo
Feist, Inc., 234 F. 105, 108 (SDNY 1916).
2 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
BREYER, J., dissenting
Today’s decision disables federal courts from addressing
that inequity. I respectfully dissent.
I
Circumstances warranting the application of laches in
the context of copyright claims are not difficult to imagine.
The 3-year limitations period under the Copyright Act
may seem brief, but it is not. 17 U.S. C. §507(b). That is
because it is a rolling limitations period, which restarts
upon each “separate accrual” of a claim. See ante, at 5; 6
W. Patry, Copyright §20:23, pp. 20–44 to 20–46 (2013). If
a defendant reproduces or sells an infringing work on a
continuing basis, a plaintiff can sue every 3 years until the
copyright term expires—which may be up to 70 years after
the author’s death. §302(a) (works created after January
1, 1978, are protected until 70 years after the author’s
death); §304(a) (works created before January 1, 1978, are
protected for 28 years plus a 67-year renewal period). If,
for example, a work earns no money for 20 years, but then,
after development expenses have been incurred, it earns
profits for the next 30, a plaintiff can sue in year 21 and at
regular 3-year intervals thereafter. Each time the plain-
tiff will collect the defendant’s profits earned during the
prior three years, unless he settles for a lump sum along
the way. The defendant will recoup no more than his
outlays and any “elements of profit attributable to factors
other than the copyrighted work.” §§504(a)(1), (b).
A 20-year delay in bringing suit could easily prove
inequitable. Suppose, for example, the plaintiff has delib-
erately waited for the death of witnesses who might prove
the existence of understandings about a license to repro-
duce the copyrighted work, or who might show that the
plaintiff ’s work was in fact derived from older copyrighted
materials that the defendant has licensed. Or, suppose
the plaintiff has delayed in bringing suit because he wants
to avoid bargaining with the defendant up front over a
Cite as: 572 U. S. ____ (2014) 3
BREYER, J., dissenting
license. He knows that if he delays legal action, and the
defendant invests time, effort, and resources into making
the derivative product, the plaintiff will be in a much
stronger position to obtain favorable licensing terms
through settlement. Or, suppose the plaintiff has waited
until he becomes certain that the defendant’s production
bet paid off, that the derivative work did and would con-
tinue to earn money, and that the plaintiff has a chance of
obtaining, say, an 80% share of what is now a 90% pure
profit stream. (N. B. The plaintiff ’s profits recovery will
be reduced by any “deductible expenses” incurred by the
defendant in producing the work, and by any “elements of
profits attributable to factors other than the copyrighted
work,” §504(b)). Or, suppose that all of these circumstances
exist together.
Cases that present these kinds of delays are not imagi-
nary. One can easily find examples from the lower courts
where plaintiffs have brought claims years after they
accrued and where delay-related inequity resulted. See,
e.g., Ory v. McDonald, 141 Fed. Appx. 581, 583 (CA9
2005), aff ’g 2003 WL 22909286, *1 (CD Cal., Aug. 5, 2003)
(claim that a 1960’s song infringed the “hook or riff ” from
the 1926 song “Muskrat Ramble,” brought more than 30
years after the song was released); Danjaq LLC v. Sony
Corp., 263 F.3d 942, 952–956 (CA9 2001) (claim that
seven James Bond films infringed a copyright to a screen-
play, brought 19 to 36 years after the films were released,
and where “many of the key figures in the creation of the
James Bond movies ha[d] died” and “many of the relevant
records [went] missing”); Jackson v. Axton, 25 F.3d 884,
889 (CA9 1994), overruled on other grounds, 510 U.S. 517
(claim of coauthorship of the song “Joy to the World,”
brought 17 years after the plaintiff learned of his claim
such that memories faded, the original paper containing
the lyrics was lost, the recording studio (with its records)
closed, and the defendant had “arranged his business
4 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
BREYER, J., dissenting
affairs around the Song” for years); Newsome v. Brown,
2005 WL 627639, *8–*9 (SDNY, Mar. 16, 2005) (claim
regarding the song “It’s a Man’s World,” brought 40 years
after first accrual, where the plaintiff ’s memory had faded
and a key piece of evidence was destroyed by fire). See
also Chirco, 474 F.3d, at 230–231, 234–236 (claim that
condominium design infringed plaintiff ’s design, brought
only 2.5 years (or so) after claim accrued but after condo-
minium was built, apartments were sold, and 109 families
had moved in).
Consider, too, the present case. The petitioner claims
the MGM film Raging Bull violated a copyright originally
owned by her father, which she inherited and then re-
newed in 1991. She waited 18 years after renewing the
copyright, until 2009, to bring suit. During those 18 years,
MGM spent millions of dollars developing different edi-
tions of, and marketing, the film. See App. to Pet. for
Cert. 13a. MGM also entered into numerous licensing
agreements, some of which allowed television networks to
broadcast the film through 2015. Id., at 14a. Meanwhile,
three key witness died or became unavailable, making it
more difficult for MGM to prove that it did not infringe the
petitioner’s copyright (either because the 1963 screenplay
was in fact derived from a different book, the rights to
which MGM owned under a nonchallenged license, or
because MGM held a license to the screenplay under a
1976 agreement that it signed with Jake LaMotta, who
coauthored the screenplay with the petitioner’s father, see
id. at 3a, 5a; App. 128–129, 257–258, 266–267). Conse-
quently, I believe the Court of Appeals acted lawfully in
dismissing the suit due to laches.
Long delays do not automatically prove inequity, but,
depending upon the circumstances, they raise that possi-
bility. Indeed, suppose that that the copyright-holders in
the song cases cited above, or their heirs, facing sudden
revivals in demand or eventual deaths of witnesses, had
Cite as: 572 U. S. ____ (2014) 5
BREYER, J., dissenting
brought their claims 50, or even 60 years after those
claims first accrued. Or suppose that the loss of evidence
was clearly critical to the defendants’ abilities to prove
their cases. The Court holds that insofar as a copyright
claim seeks damages, a court cannot ever apply laches,
irrespective of the length of the plaintiff ’s delay, the
amount of the harm that it caused, or the inequity of
permitting the action to go forward.
II
Why should laches not be available in an appropriate
case? Consider the reasons the majority offers. First, the
majority says that the 3-year “copyright statute of limita-
tions . . . itself takes account of delay,” and so additional
safeguards like laches are not needed. Ante, at 11. I agree
that sometimes that is so. But I also fear that sometimes
it is not. The majority correctly points out that the limita-
tions period limits the retrospective relief a plaintiff can
recover. It imposes a cap equal to the profits earned dur-
ing the prior three years, in addition to any actual damages
sustained during this time. Ibid.; §504(b). Thus, if the
plaintiff waits from, say, 1980 until 2001 to bring suit, she
cannot recover profits for the 1980 to 1998 period. But she
can recover the defendant’s profits from 1998 through
2001, which might be precisely when net revenues turned
positive. And she can sue every three years thereafter
until the copyright expires, perhaps in the year 2060. If
the plaintiff ’s suit involves the type of inequitable circum-
stances I have described, her ability to recover profits from
1998 to 2001 and until the copyright expires could be just
the kind of unfairness that laches is designed to prevent.
Second, the majority points out that the plaintiff can
recover only the defendant’s profits less “ ‘deductible ex-
penses’ incurred in generating those profits.” Ante, at 12
(quoting §504(b)). In other words, the majority takes
assurance from the fact that the Act enables the defendant
6 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
BREYER, J., dissenting
to recoup his outlays in developing or selling the allegedly
infringing work. Again, sometimes that fact will prevent
inequitable results. But sometimes it will not. A plain-
tiff ’s delay may mean that the defendant has already
recovered the majority of his expenses, and what is left is
primarily profit. It may mean that the defendant has
dedicated decades of his life to producing the work, such
that the loss of a future profit stream (even if he can re-
cover past expenses) is tantamount to the loss of any
income in later years. And in circumstances such as those
described, it could prove inequitable to give the profit to a
plaintiff who has unnecessarily delayed in filing an action.
Simply put, the “deductible expenses” provision does not
protect the defendant from the potential inequity high-
lighted by Judge Hand nearly 100 years ago in his influ-
ential copyright opinion. That is, it does not stop a
copyright-holder (or his heirs) from “stand[ing] inactive
while the proposed infringer spends large sums of money”
in a risky venture; appearing on the scene only when the
venture has proved a success; and thereby collecting sub-
stantially more money than he could have obtained at the
outset, had he bargained with the investor over a license
and royalty fee. Haas, 234 F., at 108. But cf. id., at 108–
109 (plaintiff to receive injunctive relief since one of the
defendants was a “deliberate pirate,” but profit award to
be potentially reduced in light of laches).
Third, the majority says that “[i]nviting individual
judges to set a time limit other than the one Congress
prescribed” in the Copyright Act would “tug against the
uniformity Congress sought to achieve when it enacted
§507(b).” Ante, at 15. But why does the majority believe
that part of what Congress intended to “achieve” was the
elimination of the equitable defense of laches? As the
majority recognizes, Congress enacted a uniform statute of
limitations for copyright claims in 1957 so that federal
courts, in determining timeliness, no longer had to borrow
Cite as: 572 U. S. ____ (2014) 7
BREYER, J., dissenting
from state law which varied from place to place. See ante,
at 3–4. Nothing in the 1957 Act—or anywhere else in the
text of the copyright statute—indicates that Congress also
sought to bar the operation of laches. The Copyright Act
is silent on the subject. And silence is consistent, not
inconsistent, with the application of equitable doctrines.
For one thing, the legislative history for §507 shows that
Congress chose not to “specifically enumerat[e] certain
equitable considerations which might be advanced in
connection with civil copyright actions” because it under-
stood that “ ‘[f]ederal district courts, generally, recognize
these equitable defenses anyway.’ ” S. Rep. No. 1014, 85th
Cong., 1st Sess., 2–3 (1957) (quoting the House Judiciary
Committee). Courts prior to 1957 had often applied laches
in federal copyright cases. See, e.g., Callaghan v. Myers,
128 U.S. 617, 658–659 (1888) (assuming laches was an
available defense in a copyright suit); Edwin L. Wiegand
Co. v. Harold E. Trent Co., 122 F.2d 920, 925 (CA3 1941)
(applying laches to bar a copyright suit); D. O. Haynes &
Co. v. Druggists’ Circular, 32 F.2d 215, 216–218 (CA2
1929) (same). Congress expected they would continue to
do so.
Furthermore, this Court has held that federal courts
may “appl[y] equitable doctrines that may toll or limit the
time period” for suit when applying a statute of limita-
tions, because a statutory “filing period” is a “requirement”
subject to adjustment “ ‘when equity so requires.’ ” Mor-
gan, 536 U.S., at 121–122 (quoting Zipes v. Trans World
Airlines, Inc., 455 U.S. 385, 398 (1982); emphasis added).
This Court has read laches into statutes of limitations
otherwise silent on the topic of equitable doctrines in a
multitude of contexts, as have lower courts. See, e.g.,
Morgan, supra, at 121 (“an employer may raise a laches
defense” under Title VII); Bay Area Laundry and Dry
Cleaning Pension Trust Fund v. Ferbar Corp. of Cal., 522
U.S. 192, 205 (1997) (similar, in respect to suits under the
8 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
BREYER, J., dissenting
Multiemployer Pension Plan Amendments Act of 1980
(MPPAA)); Abbott Laboratories v. Gardner, 387 U.S. 136,
155 (1967) (similar, in respect to an action for declaratory
and injunctive relief under the Administrative Procedure
Act); Patterson v. Hewitt, 195 U.S. 309, 319–320 (1904)
(similar, in the case of a property action brought within
New Mexico’s statute of limitations); Alsop v. Riker, 155
U.S. 448, 460 (1894) (holding that “independently of the
statute of limitations,” the contract action was barred
“because of laches”); Teamsters & Employers Welfare Trust
of Ill. v. Gorman Bros. Ready Mix, 283 F.3d 877, 883 (CA7
2002) (laches available “in a suit against an [Employee
Retirement Income Security Act of 1974] (ERISA)] plan for
benefits”); Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813,
822–823 (CA7 1999) (laches available in a Lanham Act
suit filed within the limitations period). Unless Congress
indicates otherwise, courts normally assume that equita-
ble rules continue to operate alongside limitations periods,
and that equity applies both to plaintiffs and to defend-
ants. See Astoria Fed. Sav. & Loan Assn. v. Solimino, 501
U.S. 104, 108 (1991) (“Congress is understood to legislate
against a background of common-law adjudicatory princi-
ples” and to incorporate them “except when a statutory
purpose to the contrary is evident” (internal quotation
marks and citation omitted)); Porter v. Warner Holding
Co., 328 U.S. 395, 398 (1946) (“Unless otherwise provided
by statute, all the inherent equitable powers of the Dis-
trict Court are available for the proper and complete
exercise of that jurisdiction”).
The Court today comes to a different conclusion. It
reads §507(b)’s silence as preserving doctrines that
lengthen the period for suit when equitable considerations
favor the plaintiff (e.g., equitable tolling), but as foreclos-
ing a doctrine that would shorten the period when equity
favors the defendant (i.e., laches). See ante, at 15–16, 19–
20. I do not understand the logic of reading a silent stat-
Cite as: 572 U. S. ____ (2014) 9
BREYER, J., dissenting
ute in this manner.
Fourth, the majority defends its rule by observing that
laches was “developed by courts of equity,” and that this
Court has “cautioned against invoking laches to bar legal
relief ” even following the merger of law and equity in
1938. Ante, at 12–13. The majority refers to three cases
that offer support for this proposition, but none is deter-
minative. In the first, Holmberg v. Armbrecht, 327 U.S.
392 (1946), the Court said:
“If Congress explicitly puts a limit upon the time for
enforcing a right which it created, there is an end of
the matter.
. . . . .
“Traditionally and for good reasons, statutes of limita-
tion are not controlling measures of equitable relief.”
Id., at 395–396.
This statement, however, constituted part of the Court’s
explanation as to why a federal statute, silent about limi-
tations, should be applied consistently with “historic prin-
ciples of equity in the enforcement of federally-created
equitable rights” rather than with New York’s statute of
limitations. Id., at 395. The case had nothing to do with
whether laches governs in actions at law. The lawsuit in
Holmberg had been brought “in equity,” and the Court
remanded for a determination of whether the petitioners
were “chargeable with laches.” Id., at 393, 397.
The second case the majority cites, Merck & Co. v. Reyn-
olds, 559 U.S. 633 (2010), provides some additional sup-
port, but not much. There, the Court cited a 1935 case for
the proposition that “ ‘[l]aches within the term of the stat-
ute of limitations is no defense at law.’ ” Id., at 652 (quot-
ing United States v. Mack, 295 U.S. 480, 489 (1935)). But
Merck concerned a federal securities statute that con-
tained both a 2-year statute of limitations, running from
the time of “discovery,” and a 5-year statute of repose,
10 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
BREYER, J., dissenting
running from the time of a “violation.” Id., at 638 (citing
28 U.S. C. §1658(b)). Given that repose statutes set “an
outside limit” on suit and are generally “inconsistent with
tolling” and similar equitable doctrines, the Court held
that the 2-year limitations period at issue was not subject
to an “inquiry notice” rule or, by analogy, to laches. Lampf,
Pleva, Lipkind, Prupis & Petigrow v. Gilbertson, 501 U.S.
350, 363 (1991) (internal quotation marks and citation
omitted); Merck, supra, at 650–652. Merck did not suggest
that statutes of limitations are always or normally incon-
sistent with equitable doctrines when plaintiffs seek dam-
ages. It simply found additional support for its conclusion
in a case that this Court decided before the merger of law
and equity. And here, unlike in Merck, the statute of
limitations is not accompanied by a corollary statute of
repose.
Third, in County of Oneida v. Oneida Indian Nation of
N. Y., 470 U.S. 226 (1985), the Court said in a footnote
that “application of the equitable defense of laches in an
action at law would be novel indeed.” Id., at 245, n. 16.
This statement was made in light of special policies re-
lated to Indian tribes, which the Court went on to discuss in
the following sentences. Ibid. In any event, Oneida did
not resolve whether laches was available to the defend-
ants, for the lower court had not ruled on the issue. Id., at
244–245.
In sum, there is no reason to believe that the Court
meant any of its statements in Holmberg, Merck, or Oneida
to announce a general rule about the availability of
laches in actions for legal relief, whenever Congress pro-
vides a statute of limitations. To the contrary, the Court
has said more than once that a defendant could invoke
laches in an action for damages (even though no assertion
of the defense had actually been made in the case), despite
a fixed statute of limitations. See Morgan, 536 U.S., at
116–119, 121–122 (laches available in hostile work envi-
Cite as: 572 U. S. ____ (2014) 11
BREYER, J., dissenting
ronment claims seeking damages under Title VII); Bay
Area Laundry, 522 U.S., at 205 (laches available in ac-
tions for “withdrawal liability assessment[s]” under the
MPPAA). Lower courts have come to similar holdings in a
wide array of circumstances—often approving not only of
the availability of the laches defense, but of its application
to the case at hand. E.g., Cayuga Indian Nation of N. Y. v.
Pataki, 413 F.3d 266, 274–277 (CA2 2005) (laches avail-
able in a “possessory land claim” in which the District
Court awarded damages, whether “characterized as an
action at law or in equity,” and dismissing the action due
to laches); Teamsters, 283 F.3d, at 881–883 (laches avail-
able in suits under ERISA for benefits, but not warranted
in that case); Hot Wax, 191 F.3d, at 822–827 (“[T]he ap-
plication of the doctrine of laches to Hot Wax’s Lanham
Act claims [requesting damages] by the district court was
proper”); A. C. Aukerman Co. v. R. L. Chaides Constr. Co.,
960 F.2d 1020, 1030–1032, 1045–1046 (CAFed 1992) (en
banc) (laches available in patent suit claiming damages,
and remanding for whether the defense was successful);
Cornetta v. United States, 851 F.2d 1372, 1376–1383
(CAFed 1988) (en banc) (same, in suit seeking backpay).
Even if we focus only upon federal copyright litigation,
four of the six Circuits to have considered the matter have
held that laches can bar claims for legal relief. See 695
F.3d 946, 956 (CA9 2012) (case below, barring all copy-
right claims due to laches); Peter Letterese & Assocs., Inc.
v. World Inst. of Scientology Enterprises, Int’l, 533 F.3d
1287, 1319–1322 (CA11 2008) (laches can bar copyright
claims for retrospective damages); Chirco, 474 F.3d, at
234–236 (“laches can be argued ‘regardless of whether the
suit is at law or in equity,’ ” and holding that while the
plaintiffs could obtain damages and an injunction, their
request for additional equitable relief “smack[ed] of the
inequity against which Judge Hand cautioned in Haas and
which the judicial system should abhor” (quoting Team-
12 PETRELLA v. METRO-GOLDWYN-MAYER, INC.
BREYER, J., dissenting
sters, supra, at 881)); Jacobsen v. Deseret Book Co., 287 F.
3d 936, 950–951 (CA10 2002) (laches available in “ ‘rare
cases,’ ” and failing to draw a distinction in the type of
remedy sought (citation omitted). But see New Era Publi-
cations Int’l v. Henry Holt & Co., 873 F.2d 576, 584–585
(CA2 1989) (laches can bar claims for injunctive relief, but
not damages, under the Copyright Act); Lyons Partner-
ship, L. P. v. Morris Costumes, Inc., 243 F.3d 789, 798–
799 (CA4 2001) (laches unavailable in copyright cases
altogether).
Perhaps more importantly, in permitting laches to apply
to copyright claims seeking equitable relief but not to
those seeking legal relief, the majority places insufficient
weight upon the rules and practice of modern litigation.
Since 1938, Congress and the Federal Rules have replaced
what would once have been actions “at law” and actions
“in equity” with the “civil action.” Fed. Rule Civ. Proc. 2
(“There is one form of action—the civil action”). A federal
civil action is subject to both equitable and legal defenses.
Fed. Rule Civ. Proc. 8(c)(1) (“In responding to a pleading, a
party must affirmatively state any avoidance or affirma-
tive defense, including: . . . estoppel . . . laches . . . [and]
statute of limitations”). Accordingly, since 1938, federal
courts have frequently allowed defendants to assert what
were formerly equitable defenses—including laches—in
what were formerly legal actions. See supra, at 10–11
(citing cases). Why should copyright be treated differ-
ently? Indeed, the majority concedes that “restitutional
remedies” like “profits” (which are often claimed in copy-
right cases) defy clear classification as “equitable” or
“legal.” Ante, at 2, n. 1 (internal quotation marks omit-
ted). Why should lower courts have to make these uneasy
and unnatural distinctions?
Fifth, the majority believes it can prevent the inequities
that laches seeks to avoid through the use of a different
doctrine, namely equitable estoppel. Ante, at 19. I doubt
Cite as: 572 U. S. ____ (2014) 13
BREYER, J., dissenting
that is so. As the majority recognizes, “the two defenses
are differently oriented.” Ibid. The “gravamen” of estop-
pel is a misleading representation by the plaintiff that the
defendant relies on to his detriment. 6 Patry, Copyright
§20:58, at 20–110 to 20–112. The gravamen of laches is
the plaintiff ’s unreasonable delay, and the consequent
prejudice to the defendant. Id., §20:54, at 20–96. Where
due to the passage of time, evidence favorable to the de-
fense has disappeared or the defendant has continued to
invest in a derivative work, what misleading representa-
tion by the plaintiff is there to estop?
In sum, as the majority says, the doctrine of laches may
occupy only a “ ‘little place’ ” in a regime based upon stat-
utes of limitations. Ante, at 20 (quoting 1 D. Dobbs, Law
of Remedies §2.6(1), p. 152 (2d ed. 1993)). But that place
is an important one. In those few and unusual cases
where a plaintiff unreasonably delays in bringing suit and
consequently causes inequitable harm to the defendant,
the doctrine permits a court to bring about a fair result. I
see no reason to erase the doctrine from copyright’s lexi-
con, not even in respect to limitations periods applicable to
damages actions.
Consequently, with respect, I dissent.