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 infringement 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 adjudication of a claim for damages brought within the three-year window. As to equitable relief, in extraordinary circumstances, laches may bar at the very threshold the particular 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 the "profits of the infringer ... attributable to the infringement." § 504(b).
Petitioner Paula Petrella, in her suit for copyright infringement, 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 entirety, without regard to the currency of the conduct of which Petrella complains. That position,
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. § 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, 110 S.Ct. 1750, 109 L.Ed.2d 184 (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, 110 S.Ct. 1750.
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 limitations. Until 1957, federal copyright law did not include a statute of limitations for civil suits. Federal courts therefore used analogous state statutes of limitations to determine 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 Teamsters & Employers Welfare Trust of Ill. v. Gorman Bros. Ready Mix, 283 F.3d 877, 881 (C.A.7 2002): "When Congress fails to enact a statute of limitations, a [federal] court that borrows a state statute of limitations but permits it to be abridged by the doctrine of laches is not invading 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
The federal limitations prescription governing copyright suits serves two purposes: (1) to render uniform and certain 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 understand 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, 118 S.Ct. 542, 139 L.Ed.2d 553 (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.
It is widely recognized that the separate-accrual rule attends the copyright statute of limitations.
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.
In sum, Congress provided two controlling time prescriptions: 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 three years back from the date the complaint was filed.
The allegedly infringing work in this case is the critically 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 screenplays, one registered in 1963, the other in 1973, and a book, registered in 1970. This case centers on the screenplay 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, respondent United Artists Corporation, a subsidiary of respondent Metro-Goldwyn-Mayer, Inc. (collectively, MGM), acquired 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 renewals and extensions thereof." Id., at 49. In 1980, MGM released, and registered a copyright in, the film Raging Bull, directed
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, 110 S.Ct. 1750 (relying on Court's earlier decision in Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373, 80 S.Ct. 792, 4 L.Ed.2d 804 (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 copyright in that work.
In 1998, seven years after filing for renewal of the copyright 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 copyright 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.
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 distributing Raging Bull, a work she described as derivative of the 1963 screenplay. Petrella's complaint sought monetary and injunctive relief. Because the statute of limitations for copyright claims requires commencement of suit "within three years after the claim accrued," § 507(b), Petrella sought relief only for acts of infringement occurring 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 infringement 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
The U.S. Court of Appeals for the Ninth Circuit affirmed 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 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.
Judge Fletcher concurred only because Circuit precedent 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.
We consider first whether, as the Ninth Circuit held, laches may be invoked
Moreover, if infringement within the three-year look-back period is shown, the Act allows the defendant to prove and offset against profits made in that period "deductible 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 Pictures Corp., 309 U.S. 390, 402, 407, 60 S.Ct. 681, 84 S.Ct. 825 (1940) (equitably apportioning profits to account for independent contributions of infringing defendant). See also infra, at 1977-1979 (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 remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation. See 1 D. Dobbs, Law of Remedies § 2.4(4), p. 104 (2d ed. 1993) (hereinafter 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,
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 1985. 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, Federal Practice and Procedure § 1043, p. 177 (3d ed. 2002). Holmberg, Merck, and Oneida so illustrate. The dissent presents multiple citations, see post, at 1979, 1980-1981, 1982-1983, 1984-1985, many of them far afield from the issue at hand, others obscuring what the cited decisions in fact ruled. Compare, e.g., post, at 1979, 1984, with infra, at 1977-1978 (describing Chirco v. Crosswinds Communities, Inc., 474 F.3d 227 (C.A.6 2007)); post, at 1979, 1984-1985, with infra, at 1975, n. 16 (describing National Railroad Passenger Corporation v. Morgan, 536 U.S. 101, 122 S.Ct. 2061, 153 L.Ed.2d 106 (2002)); post, at 1983, with infra, at 1975, n. 16 (describing Patterson v. Hewitt, 195 U.S. 309, 25 S.Ct. 35, 49 S.Ct. 214 (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 1985, about copyright cases in this regard.
We turn now to MGM's principal arguments regarding the contemporary scope of the laches defense, all of them embraced by the dissent.
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 maintains, the plea is "available ... in every civil action" to bar all forms of relief. Tr. of Oral Arg. 43; see Brief for Respondents 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 essentially gap-filling, not legislation-overriding, office of laches. Nothing in this Court's precedent suggests a doctrine of such sweep. Quite
MGM observes that equitable tolling "is read into every federal statute of limitation," Holmberg, 327 U.S., at 397, 66 S.Ct. 582, and asks why laches should not be treated similarly. See Brief for Respondents 23-26; post, at 1982-1983. Tolling, which lengthens the time for commencing a civil action in appropriate circumstances,
MGM insists that the defense of laches must be available to prevent a copyright
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 the original work, or even complements it. Fan sites prompted by a book or film, for example, may benefit the copyright owner. See Wu, Tolerated 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 infringements, lest those infringements eventually grow in magnitude. Section 507(b)'s three-year limitations period, however, coupled to the separate-accrual rule, see supra, at 1968-1970, avoids such litigation profusion. It allows a copyright owner to defer suit until she can estimate whether litigation 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.
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 1979-1981.
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 litigation, a copyright owner bears the burden of establishing a prima facie case."). But cf. post, at 1981 (overlooking plaintiff's burden to show infringement and the absence of any burden upon the defendant "to prove that it did not infringe").
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 copyright 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 comparing the two works'"total concept and overall feel." Peter F. Gaito Architecture, LLC v. Simone Development Corp., 602 F.3d 57, 66 (C.A.2 2010) (internal quotation marks omitted).
Finally, when a copyright owner engages in intentionally 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, eliminating all potential remedies. See 6 Patry § 20:58, at 20-110 to 20-112.
Stating that the Ninth Circuit "ha[d] taken a wrong turn in its formulation and application of laches in copyright cases," Judge Fletcher called for fresh consideration of the issue. 695 F.3d, at 959. "A recognition of the distinction between ... estoppel and laches," he suggested, "would be a good place to start." Ibid. We agree.
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 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 magnitude to warrant, at the very outset of the litigation, curtailment of the relief equitably awardable.
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 circumstances 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 1967-1968, 1972-1973. In doing so, however, that court should closely examine MGM's alleged reliance on Petrella's delay.
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 consistent with this opinion.
It is so ordered.
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 circumstances. "[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, 122 S.Ct. 2061, 153 L.Ed.2d 106 (2002), and, as a result, causes "unjust hardship" to the defendant, Chirco v. Crosswinds Communities, Inc., 474 F.3d 227, 236 (C.A.6 2007) (emphasis deleted). Its purpose is to avoid "inequity." Galliher v. Cadwell, 145 U.S. 368, 373, 12 S.Ct. 873, 36 S.Ct. 738 (1892). And, as Learned Hand pointed out, it may well be
Today's decision disables federal courts from addressing that inequity. I respectfully dissent.
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 1969; 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
A 20-year delay in bringing suit could easily prove inequitable. Suppose, for example, the plaintiff has deliberately waited for the death of witnesses who might prove the existence of understandings about a license to reproduce 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 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 continue 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 imaginary. 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 (C.A.9 2005), aff'g 2003 WL 22909286, at *1 (C.D.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 (C.A.9 2001) (claim that seven James Bond films infringed a copyright to a screenplay, 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 (C.A.9 1994), overruled on other grounds, 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994) (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 affairs around the Song" for years); Newsome v. Brown, 2005 WL 627639, at *8-*9 (S.D.N.Y., 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 condominium was
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 renewed 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 editions 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). Consequently, 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 possibility. 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 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.
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 limitations ... itself takes account of delay," and so additional safeguards like laches are not needed. Ante, at 1972. I agree that sometimes that is so. But I also fear that sometimes it is not. The majority correctly points out that the limitations period limits the retrospective relief a plaintiff can recover. It imposes a cap equal to the profits earned during 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 circumstances 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 expenses' incurred in generating those profits." Ante, at 1973 (quoting § 504(b)). In other words, the majority takes assurance from the fact that the Act enables the defendant 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
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 1975. 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 from state law which varied from place to place. See ante, at 1968-1969. 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 understood 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, 9 S.Ct. 177, 32 S.Ct. 547 (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 (C.A.3 1941) (applying laches to bar a copyright suit); D.O. Haynes & Co. v. Druggists' Circular, 32 F.2d 215, 216-218 (C.A.2 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 limitations, because a statutory "filing period" is a "requirement" subject to adjustment "`when equity so requires.'" Morgan, 536 U.S., at 121-122, 122 S.Ct. 2061 (quoting Zipes v. Trans World Airlines, Inc., 455 U.S. 385, 398, 102 S.Ct. 1127, 71 L.Ed.2d 234 (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, 122 S.Ct. 2061 ("an employer may raise a laches defense" under
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 foreclosing a doctrine that would shorten the period when equity favors the defendant (i.e., laches). See ante, at 1975-1976, 1977-1978. I do not understand the logic of reading a silent statute 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 1973-1974. The majority refers to three cases that offer support for this proposition, but none is determinative. In the first, Holmberg v. Armbrecht, 327 U.S. 392, 66 S.Ct. 582, 90 S.Ct. 743 (1946), the Court said:
This statement, however, constituted part of the Court's explanation as to why a federal statute, silent about limitations, should be applied consistently with "historic principles of equity in the enforcement of federally-created equitable rights" rather than with New York's statute of limitations. Id., at 395, 66 S.Ct. 582. 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
The second case the majority cites, Merck & Co. v. Reynolds, 559 U.S. 633, 130 S.Ct. 1784, 176 L.Ed.2d 582 (2010), provides some additional support, but not much. There, the Court cited a 1935 case for the proposition that "`[l]aches within the term of the statute of limitations is no defense at law.'" Id., at 652, 130 S.Ct. 1784 (quoting United States v. Mack, 295 U.S. 480, 489, 55 S.Ct. 813, 79 S.Ct. 1559 (1935)). But Merck concerned a federal securities statute that contained both a 2-year statute of limitations, running from the time of "discovery," and a 5-year statute of repose, running from the time of a "violation." Id., at 638, 130 S.Ct. 1784 (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, 111 S.Ct. 2773, 115 L.Ed.2d 321 (1991) (internal quotation marks and citation omitted); Merck, supra, at 650-652, 130 S.Ct. 1784. Merck did not suggest that statutes of limitations are always or normally inconsistent with equitable doctrines when plaintiffs seek damages. 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, 105 S.Ct. 1245, 84 L.Ed.2d 169 (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, 105 S.Ct. 1245. This statement was made in light of special policies related 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 defendants, for the lower court had not ruled on the issue. Id., at 244-245, 105 S.Ct. 1245.
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 provides 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, 122 S.Ct. 2061 (laches available in hostile work environment claims seeking damages under Title VII); Bay Area Laundry, 522 U.S., at 205, 118 S.Ct. 542 (laches available in actions 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 (C.A.2 2005) (laches available 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 available in suits under ERISA for benefits, but not warranted in that case); Hot Wax, 191 F.3d, at 822-827 ("[T]he application 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
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 affirmative 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 1984-1985 (citing cases). Why should copyright be treated differently? Indeed, the majority concedes that "restitutional remedies" like "profits" (which are often claimed in copyright cases) defy clear classification as "equitable" or "legal." Ante, at 1967, n. 1 (internal quotation marks omitted). 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 1977. I doubt that is so. As the majority recognizes, "the two defenses are differently oriented." Ibid. The "gravamen" of estoppel 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 defense has disappeared or the defendant has continued to invest in a derivative work, what misleading representation 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 statutes of
Consequently, with respect, I dissent.
The Patent Act states: "[N]o recovery shall be had for any infringement committed more than six years prior to the filing of the complaint." 35 U.S.C. § 286. The Act also provides that "[n]oninfringement, 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 commentary thereon, legislative history, and historical practice, the Federal 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.
Bay Area Laundry, described, along with Morgan, supra, at 1970, n. 7, is similarly featured by MGM. See also post, at 1982-1983, 1984. 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, 118 S.Ct. 542. Patterson v. Hewitt, 195 U.S. 309, 25 S.Ct. 35, 49 S.Ct. 214 (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 1968-1969; Russell v. Todd, 309 U.S. 280, 288, n. 1, 60 S.Ct. 527, 84 S.Ct. 754 (1940) ("Laches may bar equitable remedy before the local statute has run."). No federal statute of limitations figured in Patterson.