Petrella v. Metro-Goldwyn-Mayer, Inc.

On remand from the U.S. Supreme Court, which held that doctrine of laches could not bar plaintiff's copyright infringement claims involving 1980 motion picture Raging Bull, Ninth Circuit vacates summary judgment in favor of defendants on infringement claims and remands case to district court to consider defendant's estoppel defense and, if necessary, conduct substantial similarity analysis.

After retiring from boxing, Jake LaMotta collaborated with Frank Petrella to produce a book and two screenplays about LaMotta’s life. In 1976, Petrella and LaMotta assigned all of their respective copyrights in the book and screenplays to Chartoff-Winkler Productions, Inc. In 1978, defendant Metro-Goldwyn-Mayer Studios Inc. acquired the motion picture rights to Raging Bull from Chartoff-Winkler. Plaintiff, Petrella’s daughter, brought suit alleging that following her father’s death in 1981, she became the sole owner of his interest in the book and the two screenplays. In 1991, plaintiff filed a renewal application for copyright in the 1963 screenplay. In 1998, plaintiff’s attorney contacted the defendants, asserting that plaintiff had obtained the rights to the 1963 screenplay and that the exploitation of any derivative work, including the motion picture Raging Bull, was an infringement. After plaintiff filed suit in 2010, the district court granted defendants’ motion for summary judgment based on the equitable defense of laches, finding that plaintiff had knowledge of the legal theories asserted in the action as early as 1990, yet did not file suit until 2009. The Ninth Circuit affirmed the district court’s decision.

The U.S. Supreme Court reversed the Ninth Circuit’s ruling, holding that laches could not be invoked to preclude adjudication of a claim for damages brought within the three-year statute of limitations period of Section 507(b) of the Copyright Act. (Read our summary of the Court’s decision here.) On remand, the Ninth Circuit vacated the grant of summary judgment on the plaintiff’s copyright claim and remanded to the district court for further proceedings.

Initially, the court noted that because plaintiff failed to timely renew the copyright term for the book and the 1973 screenplay, her copyright claim must rest on the 1963 screenplay. The defendants argued that even though plaintiff’s claim for copyright infringement is not barred by laches, the district court’s grant of summary judgment should be affirmed because plaintiff’s failure to renew the other two works undermined her claim for copyright infringement of the 1963 screenplay. The Ninth Circuit explained that the scope of defendants’ license to use the content of the book under the Copyright Act turns on the scope of copyright protection in the book. The scope of copyright protection in the book, in turn, depends on whether the 1963 screenplay was based on the book or vice versa, which was a genuine dispute of fact.

The panel held that ownership of the 1963 screenplay as either an independent work or a work of joint authorship between Petrella and LaMotta is a genuinely disputed material fact that precludes summary judgment. Additionally, the panel determined that the district court erred when it concluded that the defendants had not argued that plaintiff should be estopped from contradicting her father’s representations in the 1976 agreement that the book was original. Accordingly, the panel instructed the district court to address defendants’ estoppel argument on remand.

The panel also declined to reach the remaining issues argued by the defendants. If, on remand, the district court concludes that plaintiff is estopped from arguing that the book was based on the 1963 screenplay, the question of whether the book’s copyright protection extends to elements incorporated from the 1963 screenplay would become moot.

Finally, the court held that the district court did not apply the extrinsic test for substantial similarity required by Ninth Circuit precedent. The court explained that on a motion for summary judgment, a district court must apply the extrinsic test, which focuses on articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in two works. Accordingly, the court held that after the district court resolves the estoppel argument on remand, it must apply the extrinsic test to compare the film against the protected elements, if any, covered by plaintiff’s copyright interest.