How Long Should You Wait to Sue for Copyright Infringement?

Suppose that you’ve created something copyrightable.  You’ve gone through the process of registration with the Copyright Office and followed the renewal procedures (if they were  necessary).  You learn that someone is infringing your copyright.  You seek the advice of your lawyer, who sends a cease and desist letter to the infringer.  How long can you wait before you have to sue?  The answer, it turns out, is a complicated one.

The issue is currently under consideration by the Supreme Court.  In January, the Court heard oral arguments from parties in the case of Petrella v. Metro-Goldwyn-Mayer, Inc.  A decision is expected by June 2014.  Ms. Paula Petrella is the owner of the copyright of a screenplay that served as a basis for the classic Martin Scorsese 1980 film Raging Bull.  Ms. Petrella’s father, Frank Petrella, had written the screenplay with his friend, boxer Jake LaMotta (the eponymous Bull).  Raging Bull is widely considered one of the greatest films of all time, and resulted in an Academy Award for Robert DeNiro for Best Actor. 

Mr. Petrella had assigned his renewal rights in the copyright of the screenplay to the film’s production company.  However, Mr. Petrella died in 1981, before the time for renewal.  The Supreme Court, in Stewart v. Abend, ruled that when the original copyright owner of a work dies, the renewal rights can revert to his or her heirs, even if the original copyright owner assigned the copyright in a work and agreed to renew the copyright in the assignee’s name.  The renewal's “second bite at the apple” was designed to ensure that the heirs of copyright owners had an opportunity to recoup profits made on a work that may not have received its true value at the time of assignment.  With many works of art, the true value of a work is not always realized until much later.  When Ms. Petrella renewed the copyright in her father’s work in 1991, she became the copyright owner of the screenplay. 

Ms. Petrella’s attorney sent Metro-Goldwyn Mayer (MGM) a cease and desist letter, and the two parties exchanged correspondence throughout the 1990s and early 2000s.  Ms. Petrella filed a suit for copyright infringement against MGM in 2009, nearly two decades after first gaining ownership of the copyright.  The two sides offer differing explanations for the delay:  Ms. Petrella blames the extended time period on family issues and an alleged conflict of interest by her first two attorneys. MGM counters that Ms. Petrella knowingly waited to see if the film would become profitable.  (Although influential and critically acclaimed, the profitability of the motion picture is apparently in question.)

Whatever the reason behind the delay, a federal district court, and later the Ninth Circuit Court of Appeals, found that Ms. Petrella’s delay was unreasonable, and barred her suit on the grounds of laches.  Laches is an ancient legal doctrine that protects a defendant from suit if the plaintiff has unreasonably delayed bringing its lawsuit and if allowing the suit after such an unreasonable delay would be prejudicial to the defendant.  Essentially, it penalizes plaintiffs for sitting on their rights.  Historically, laches was a more common defense when there was no statute of limitations prescribing the time in which the particular legal claim could be brought.

Why is the case in the Supreme Court? First, a bit more legal background helps explain the situation. Many statutes of limitation restrict a claim to a fixed period of time after the alleged wrong has occurred.  For example, a certain claim might be limited to lawsuits filed within five years of the incident.  Others, like the three-year statute of limitations within the Copyright Act, are more continuous, and begin with each separate wrongful act over a period of time (here, three years).  For example, if someone infringed a copyright in 2008, then stopped before infringing again from 2012 to present, any claim brought for the 2008 infringement would be barred by the statute of limitations.  However, claims which one may choose to bring concerning the infringing activity beginning in 2012 would still be considered timely, as they would be within the previous three years.  This three-year statute of limitations for copyright infringement is rolling, meaning that, if the infringer were to continue to infringe the copyright, one could sue in 2017 for damages for the infringement occurring between 2014 and that date.

Note that suing fast enough to obtain an injunction from a federal judge to prohibit activity (like publishing) by a defendant is on a faster track. Judges are often strict on the time a plaintiff has to act once it learns of infringement before obtaining the extraordinary remedy of a court-ordered injunction.

Ms. Petrella argues that because her 2009 infringement claim sought damages only for infringement from 2006 onwards, the claim was within the statute of limitations and, thus, could not possibly meet the standard for unreasonable delay required for a defense of laches.  MGM, meanwhile, says that Congress could not have intended for the statute of limitations to allow for a claim to be asserted so long after the copyright owner knew of the infringement. 

Ms. Petrella’s case is before the Supreme Court to resolve a split within the federal circuit courts.  Right now a plaintiff doesn't know where it stands. Three positions on laches in copyright cases have evolved.  The Ninth Circuit, as applied in Ms. Petrella’s case, takes the view that laches may be used as a defense in a case of copyright infringement whether the copyright owner is seeking injunctive relief or monetary damages.  A second position is a restriction of laches to only “extraordinary” or “the most compelling” copyright infringement cases, as is the situation in the Sixth and Eleventh Circuits.  In circuits where this second view is the rule, sometimes there is a further restriction on laches.  For example, in the Eleventh Circuit, laches bars only prior damages, not prospective damages or injunctive relief.  Finally, there is the Second Circuit’s view, which is similar to the Ninth Circuit’s stance, except that the Second Circuit limits laches to protection against equitable relief such as injunctions.  This means that a copyright owner could be barred from obtaining an injunction against an infringer, but could still obtain monetary relief.

When the Court rules on Ms. Petrella’s case,  uniformity should be established on this issue.  It’s a dry, even mundane, topic, but if you have a  long-ago copyright claim, the case may be important to you to learn if you’re down for the count, or have a fighting chance.

Mark A. Fischer is a partner at Duane Morris LLP. His law practice is focused on solving problems and making deals for innovative companies, institutions and individuals. Mr. Fischer’s clients are typically in the creative industries such as new media, social networking, music, interactive entertainment, information technology, software, television, publishing and toys. He has particular experience in U.S. and international copyright, entertainment, licensing, celebrity representation, copyright litigation, arbitration, open source, privacy and trademarks. He has a growing client base in the biotechnology and medical industries. You can read his professional biography here: He may be contacted at:



All’s Fair in Copying the World’s Books

Wouldn’t it be fantastic to have all the world’s literature scanned and available for search in text online?  Well, something along those lines is already here.

Google’s Book Project (or “Google Books”, as it has come to be called) is one of the enterprising tech giant’s ambitious ventures.  Google Books itself consists of two smaller components.  First, the Partner Program, in which Google hosts books on its website licensed from publishers with whom it has entered into agreements.  Second, the Library Project, via which Google hosts scanned books from various libraries and collections without obtaining permission of the respective authors or publishers.  Since beginning in 2004, Google has scanned over twenty million books as part of the Library Project.  The goal is to make the text fully searchable through Google’s search engine. 

You may be asking yourself what is the problem with such a highly useful service?  The issue is one of copyright law. Google did not obtain permission from authors or publishers before scanning their works.  Among Google’s justifications is that obtaining permission would be impractical, as some of the books are “orphaned” works whose rights holder could not be identified.  But, many books are well cared for by their parents.  As a result, the Library Project earned the ire of the Authors Guild, which filed a class action lawsuit against Google on behalf of authors of books Google had scanned and made searchable without their permission.  In other words, just because the service is good doesn't necessarily make it legal under copyright laws.

Does the social benefit of having much of the world’s literature scanned and copied by Google for use in online searching outweigh the rights of copyright owners to say “yes” or “no” to that endeavor?  Judge Denny Chin of the Second Circuit Court of Appeals recently said: yes, in effect, social benefit trumps strict copyright control by authors and publishers.

The case has been on an eight year journey with Judge Chin, travelling with him from his original seat in the Southern District of New York to his current position on the Second Circuit Court of Appeals.  On an appeal of his district court decision on class certification, the Second Circuit remanded the case to determine whether the Project constituted fair use of copyrighted materials.  Between the filing and decision of this appeal, Judge Chin had been elevated to the Second Circuit Court of Appeals. 

In a sense, the long period of consideration gave Google an opportunity to embed Google Books into our lives.  An adverse decision to Google would have been unpopular.

Fair use is an affirmative defense that an infringing party can raise in which it argues that although it copied a work, its use of the copied material fulfills the Constitutional purpose of copyright in that it contributes to the advancement of science or the arts.  The concept behind fair use is that creativity often requires the use of others’ works for the expression of ideas. 

Certain types of copying have often been held to be fair use, such as criticism, commentary, news reporting, or parody.  These uses sometimes can be said to be transformative, because they use the underlying work for a different purpose.  In April 2013, in the case of Prince v. Cariou, the Second Circuit held that the determination of a use’s transformative value is to be made by examining whether a “reasonable observer” would think the use is transformative.  This new standard effectively lowers the bar for transformative use by omitting a need for the new use to comment on the work being copied. 

When a court analyzes copying to determine if it qualifies as fair use, the court conducts an analysis of four factors: (1) the purpose of the use, including whether it is done for commercial gain and/or is transformative; (2) the nature of the work being copied; (3) the amount of the work copied; and (4) the potential harm to the original rights holder’s market for the copied work. 

In his January 2014 opinion, Judge Chin addressed each of the four factors before finding that the Library Project constituted fair use.  I don’t believe it’s an exaggeration to say that Judge Chin was enchanted by the power and utility of Google Books in making these findings.

The first factor looks at the purpose of the use of the original books.  Although he conceded that the Library Project was commercial in nature – Google is a for-profit powerhouse --  he found that this fact was not determinative, noting that Google had ceased displaying ads on Library Project pages.  Judge Chin found that the second factor weighed slightly in Google’s favor because most of the works being copied were non-fiction, which generally does not receive as much protection as fiction.  Although he found that the third factor weighed slightly against Google, Judge Chin seemingly minimized it by stating that in order for Google to carry out the purpose of the Library Project, it would necessarily need to copy entire books.

The fourth factor inquiry includes analyzing if the secondary work supersedes the copied work, or if it has a significant negative impact on the potential market for the copied work, fair use can be less likely to be found.  In this inquiry, there’s a need to talk about facts.  Here, Judge Chin held that the fourth factor weighed in favor of Google.  He stated that if anything, the rights holders of the copied works would gain improved markets through the Library Project, as it would increase awareness of long forgotten works, and would make the works easier for consumers to find. But, to copyright owners, isn’t this reasoning a little like the scout helping an elderly person across the road who hits the scout with a cane?  If the copyright holders wanted the help, they could have asked Google to do so.  Although Google scanned complete books, Judge Chin found that measures Google had taken to limit the amount of each book that could be read in search results made it very difficult to piece together the entire book to read, and thus, to cause market harm.

Judge Chin found that the Library Project was transformative, but not for the reasons one might first guess. Instead of focusing on the preservation aspect of Google Books, he focused his analysis to its use as a research tool, stating that it was invaluable for scholarly research.  Over the Library Project’s nearly ten-year existence, researchers had come to rely on the Library Project’s fully searchable text to improve their location of works, even if just for citation. 

Judge Chin also discussed at great length the opportunity that Google Books offers for linguistic and historical researchers.  Having millions of books in fully searchable form, it is argued, would allow researchers to study how language and grammar have changed over time, and for historians to better know when certain terms or ideas first came to prominence.  As Judge Chin noted, even his own law clerks relied on using Google Books in their research for him.  But users like you and me--and the judge’s law clerks—access only search results -- not full text.  So the duration of the case played into Google’s favor.  If shut down as infringing, the Library Project now represented a loss of an entitlement.  Researchers had come to rely on the Library Project.  After nearly a decade of existence, evidence of scholarly reliance on the Project could be found pretty much all around. 

In comparison to the Google decision is Judge Chin’s pro-copyright protection opinion in WNET v. Aereo, Inc., another infringement case concerning the copying of works through new technology.  There, he issued a strong dissent to the Second Circuit panel’s finding that Aereo’s television rely and recording service infringed broadcasters rights. 

What factors could affect the legality of the Library Project under copyright in the future? If Google changes the structure of the Project by adding advertisements? Google is essentially a class of one, a unique case. Is Google Books a public utility or another copyright user?

A challenge of the case is that it may set up a kind of broad de facto license for use of copyrighted content without authorization.  In general, other fair use cases have focused on specific uses, such as use of a film clip in a TV show, the use of photographs in a collage, a quotation in a book, or the use of a song in a motion picture. Google Books, on the other hand, is a vast ongoing endeavor that will change and evolve. The fact specific nature of a typical fair use inquiry might have been given a back seat.

We’ll hear much more about this case in the courts and perhaps even in the next revision of the Copyright Act.  It’s a very big decision.  The story may not be over, as the Authors Guild has already announced its intent to appeal.  In the meantime,  like many of us, I’m going to search Google to check out a question or two.


Mark A. Fischer is a partner at Duane Morris LLP. His law practice is focused on solving problems and making deals for innovative companies, institutions and individuals. Mr. Fischer’s clients are typically in the creative industries such as new media, social networking, music, interactive entertainment, information technology, software, television, publishing and toys. He has particular experience in U.S. and international copyright, entertainment, licensing, celebrity representation, copyright litigation, arbitration, open source, privacy and trademarks. He has a growing client base in the biotechnology and medical industries. You can read his professional biography here: He may be contacted at:




Sherlock Holmes and the Public Domain

Over his illustrious 125-plus-year career, Sherlock Holmes has captured the public's imagination by catching thieves, stopping assassins, and breaking up spy rings.  His adventures have led to his appearance in many books, motion pictures, video games, and television series, including two of the most popular programs currently airing.  Sir Arthur Conan Doyle's famed detective's latest case lands him in an Illinois district court.  [Read More]

Is the Doctor on TV Playing the Part of Your Doctor?

Real and fictional doctors have been staples of television for decades. Viewers can tune in and listen to remedies offered by The Doctors, Dr. Drew on Call, and The Dr. Oz Show, among many other real and fictional healthcare providers.

[Read More]

Hangman Lives to Pursue a Copyright Claim

You wouldn't think that there was much protectable intellectual property in the classic "Hangman" word game.  In Hangman, as you probably know, one player thinks of a word or phrase and the second player tries to figure out what it is. The word or phrase is initially represented by a fixed number of dashes, which comprise the number of letters that it contains.

[Read More]

The T- Shirt Found No Love – Rihanna Wins in Court

International singing star Rihanna (Robyn Rihanna Fenty to the court) won a lawsuit in July in England against the Top Shop stores over the manufacture and sale of an unauthorized T-Shirt bearing her image. Merchandise (such as T-shirts, jackets, buttons) is a very big business; so the respective rights of celebrities and merchants are important. I frequently work on licenses and litigation in this area and know firsthand how valuable these rights are – and how seriously infringements are taken.

[Read More]

Good Deeds and Minimal Unauthorized Copying of Copyrighted Works

A Woody Allen motion picture depicted the great writer William Faulkner as a character. A quotation from one of Faulkner's books was used in the motion picture. Was the use permitted under copyright law?[Read More]

Artists and Lawyers

A famous artist advised that your lawyer should be "your best friend."[Read More]

Prince of Fair Use

If an artist uses copyrighted photographs in paintings and collages without permission, is transforming the photos into a new and different kind of work enought to avoid liability for copyright infringement?[Read More]

The Next Great Copyright Act

Maria A. Pallante, the Register of Copyrights, has called for a new "great" copyright law. Congress seems receptive. What should a major revision of US copyright law look like? [Read More]

I Know I Am, But What Am I? Two Music Stars in a Trademark Dispute

Two multi-talented stars are in court over trademark rights. Is it the stars or the legal issues that make this case something special? [Read More]

Happy Birthday to You – Who Will Celebrate the Song’s Copyright?

Is the famous song "Happy Birthday to You" still protected by copyright? A new lawsuit is challenging the copyright status of the song everybody knows. [Read More]

Who’s Afraid of Fair Use? Is Fair Use a Right and Not a Defense Any More?

Fair use as a defense to claims of copyright infringement is on the rise. A recent case highlights a shift in favor of fair use claimants to use copyrighted work 
without permission.
[Read More]

Fifty Shades of Grey and Fan Fiction: Do You Own Your User-Generated Content?

A copyright infringement lawsuit involving the Fifty Shades of Grey books provoked an unusual claim: that the wildly popular books were in the public domain.[Read More]

Patent Trolls Aren’t the Only IP Trolls in the Forest: Copyright Trolls

Patent trolls aren't the only intellectual property "trolls". What are tactics of copyright trolls?
[Read More]

Duane Morris New Media and Entertainment Law

At the intersection of content, technology and law, Duane Morris shares insights from their work with innovative companies in new media, social networking, interactive entertainment, music, video games, software, publishing and electronic content.

« April 2014
© 2009- Duane Morris LLP. Duane Morris is a registered service mark of Duane Morris LLP.
The opinions expressed on this blog are those of the author and are not to be construed as legal advice.