Amicus Curiae Brief — Warner Chappell Music, Inc., et al., Petitioners v. Sherman Nealy, et al.

Supreme Court briefDec 4, 2023

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No. 22-1078

IN THE

Supreme Court of the United States

————

WARNER CHAPPELL MUSIC, INC., ET AL.,

Petitioners,

SHERMAN NEALY, ET AL.,

Respondents.

————

On Writ of Certiorari to the

United States Court of Appeals

for the Eleventh Circuit

————

BRIEF FOR AMICUS CURIAE

ASSOCIATION OF AMERICAN PUBLISHERS

IN SUPPORT OF PETITIONERS

————

NICOLE BERGSTROM

Counsel of Record

EDWARD H. ROSENTHAL

FRANKFURT KURNIT KLEIN

& SELZ PC

28 Liberty Street

New York, NY 10005

(212) 980-0120

nbergstrom@fkks.com

erosenthal@fkks.com

Counsel for Amicus Curiae

December 4, 2023

WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D.C. 20002

TABLE OF CONTENTS

Page

STATEMENT OF INTEREST ............................

SUMMARY OF ARGUMENT .............................

ARGUMENT ........................................................

I. Application of the Discovery Rule Along

With an Indefinite Period for Retroactive

Damages Presents a Significant Concern

for AAP’s Members ...................................

II. Defendants Rarely Will be Able to Prove

that a Plaintiff Knew or Should Have

Known About an Infringement Without

Going Through Extensive Discovery and

a Trial ........................................................

III. By Adopting the Injury Rule, Amici and

Others Avoid This Unnecessary Burden .

A. Legislative History Counsels in Favor

of the Injury Rule ................................

B. This Court’s Case Law Also Favors

the Injury Rule ....................................

IV. In the Absence of the Injury Rule, This

Court Should Adopt Petrella’s ThreeYear Cap on Damages ..............................

CONCLUSION ....................................................

(i)

TABLE OF AUTHORITIES

CASES

Page(s)

Alaska Stock, LLC v. Houghton Mifflin

Harcourt Publ’g Co.,

747 F.3d 673 (9th Cir. 2014) .....................

Bean v. Houghton Mifflin Harcourt

Publ’g Co.,

3:07-cv-08063-JAT (D. Ariz.) ....................

Bean v. Houghton Mifflin Harcourt

Publ’g Co.,

3:10-cv-08034-DGC (D. Ariz.) ...................

Bean v. John Wiley & Sons Inc.,

3:11-cv-08028-FJM (D. Ariz.) ...................

Bean v. John Wiley & Sons Inc.,

3:12-cv-08001-GMS (D. Ariz.)...................

Bean v. John Wiley & Sons, Inc.,

No. CV 11-08028-PCT-FJM, 2012 WL

1078662 (D. Ariz. Mar. 30, 2012) .............

Bean v. Pearson Educ. Inc.,

3:11-cv-08030-GMS (D. Ariz.)...................

Bob Daemmrich Photography, Inc. v.

Scholastic Inc.,

1:2015-cv-01150-RP (W.D. Tex.) ..............

Cal. Public Employees’ Retirement Sys. v.

ANZ Securities, Inc.,

582 U.S. 497 (2017) ...................................

Chase Securities Corp. v. Donaldson,

325 U.S. 304 (1945) ...................................

iii

TABLE OF AUTHORITIES—Continued

Page(s)

Clifton v. Houghton Mifflin Harcourt

Publ’g Co.,

3:15-cv-03985-LB (N.D. Cal.) ...................

Clifton v. John Wiley & Sons, Inc.,

4:13-cv-02923-JSW (N.D. Cal.) .................

Clifton v. Macmillian Publishers Ltd.,

3:13-cv-02291-JST (N.D. Cal.) ..................

Clifton v. McGraw-Hill School Educ.

Holdings, LLC,

5:15-cv-01672-HRL (N.D. Cal.) ................

Clifton v. Pearson Educ., Inc.,

5:11-cv-03640-EJD (N.D. Cal.) .................

CTS Corp. v. Waldburger,

573 U.S. 1 (2014) .......................................

Degginger v. Houghton Mifflin Harcourt

Publ’g Co.,

2:10-cv-03069-JF (E.D. Pa.) ......................

Degginger v. John Wiley & Sons, Inc.,

2:11-cv-06600-CDJ (E.D. Pa.) ...................

Degginger v. McGraw-Hill Global Educ.

Holdings LLC,

4:14-cv-02429-DCB-DTF (D. Ariz.) ..........

Degginger v. Pearson Educ., Inc.,

2:11-cv-01302-GEKP (E.D. Pa.)................

Delaware State College v. Ricks,

449 U.S. 250 (1980) ...................................

TABLE OF AUTHORITIES—Continued

Page(s)

DRK Photo v. McGraw-Hill Cos., Inc.,

No. CV 12-08093-PCT-PGR, 2013 WL

1151497 (D. Ariz. Mar. 19, 2013) .............

5, 6

Frerck v. Pearson Educ., Inc.,

63 F. Supp. 3d 882 (N.D. Ill. 2014)...........

5, 6

Gabelli v. SEC,

568 U.S. 442 (2013) ...................................

Grant Heilman Photography, Inc. v.

McGraw-Hill Cos., Inc.,

28 F. Supp. 3d 399 (E.D. Pa. 2014) ..........

Grant Heilman Photography, Inc. v.

McGraw-Hill Glob. Educ. Holdings,

LLC., No. CIV.A. 12-2061, 2015 WL

1279502 (E.D. Pa. Mar. 20, 2015) ............

Hirsch v. Rehs Galleries, Inc.,

No. 18-cv-11864, 2020 WL 917213

(S.D.N.Y. Feb. 26, 2020) ...........................

Holmberg v. Armbrecht,

327 U.S. 392 (1946) ...................................

Krist v. Pearson Educ., Inc.,

419 F. Supp. 3d 904 (E.D. Pa. 2019) ........ 9, 10

Lorentz v. Sunshine Health Prod., Inc.,

No. 09-61529-CIV, 2010 WL 3733986

(S.D. Fla. Aug. 27, 2010) ...........................

Luar Music Corp. v.

Universal Music Grp., Inc.,

847 F. Supp 2d 299 (D.P.R. 2012) ............

TABLE OF AUTHORITIES—Continued

Page(s)

Martinelli v. Hearst Newspapers, L.L.C.,

65 F.4th 231 (5th Cir. 2023) .....................

Merck & Co. v. Reynolds,

559 U.S. 633 (2010) ...................................

Nealy v. Warner Chappell Music, Inc.,

60 F.4th 1325 (11th Cir. 2023),

cert. granted in part sub nom. Warner

Chappell Music v. Sherman Nealy,

No. 22-1078, 2023 WL 6319656

(U.S. Sept. 29, 2023) .................................

On Davis v. The Gap, Inc.,

246 F.3d 152 (2d Cir. 2001) (Leval, J.) .....

Order of R.R. Telegraphers v.

Railway Express Agency, Inc.,

321 U.S. 342 (1944) ...................................

Pac. Stock, Inc. v. Pearson Educ., Inc.,

No. CIV. 11-00423 SOM, 2012 WL 93182

(D. Haw. Jan. 11, 2012) ............................

Palmer Kane LLC v. Scholastic Corp.,

No. 12 CV 3890, 2013 WL 709276

(S.D.N.Y. Feb. 27, 2013) ...........................

Panoramic Stock Images, Ltd v.

McGraw-Hill Glob. Educ. Holdings, LLC,

No. 12 C 9881, 2014 WL 6685454 (N.D.

Ill. Nov. 25, 2014), opinion clarified,

2015 WL 393381 (N.D. Ill. Jan. 27, 2015)

Petrella v. Metro-Goldwyn-Mayer, Inc.,

572 U.S. 663 (2014) ......... 1, 3, 14, 15, 16, 17, 19

TABLE OF AUTHORITIES—Continued

Page(s)

PK Music Performance, Inc. v. Timberlake,

No. 16-CV-1215 (VSB), 2018 WL

4759737 (S.D.N.Y. Sept. 30, 2018) ...........

Rotella v. Wood,

528 U.S. 549 (2000) ...................................

Rotkiske v. Klemm,

140 S. Ct. 355 (2019) .................................

SCA Hygiene Prod. Aktiebolag v.

First Quality Baby Prod., LLC,

580 U.S. 328 (2017) ............................. 13, 14, 15

Sohm v. Scholastic Inc.,

959 F.3d 39 (2d Cir. 2020) .............. 1, 15, 16, 18

Sohm v. Scholastic Inc.,

No. 16-CV-7098 (JPO), 2018 WL

1605214 (S.D.N.Y. Mar. 29, 2018),

aff'd in part, rev’d in part and

remanded, 959 F.3d 39 (2d Cir. 2020) ......

5, 6

Starz Ent. LLC, v. MGM Domestic

Television Distrib., LLC,

39 F.4th 1236 (9th Cir. 2022) ...................

3, 9

Starz Ent., LLC v. MGM Domestic

Television Distrib., LLC,

510 F. Supp. 3d 878 (C.D. Cal. 2021),

aff’d, 39 F.4th 1236 (9th Cir. 2022) ..........

Steinmetz v. McGraw-Hill Global Educ.

Holdings, LLC,

2:15-cv-06600-ER (E. D. Pa.) ....................

TRW Inc. v. Andrews,

534 U.S. 19 (2001) .....................................

vii

TABLE OF AUTHORITIES—Continued

Page(s)

Yamashita v. Scholastic, Inc.

1:2016-cv-09201-KBF (S.D.N.Y.) ..............

Yamashita v. Scholastic Inc.,

936 F.3d 98 (2d Cir. 2019) ........................

STATUTES

et seq. ....................................... 2, 3, 7, 11, 12, 15

OTHER AUTHORITIES

Copyrights-Statute of Limitations: Hearing

on H.R. 781 Before the House Comm.

On the Judiciary, Subcomm. 3, 84th

Cong. 40 (1955) (statement of Fulton

Brylawski, Association of American

Motion Pictures)........................................

Fed. R. Civ. P. 12(b)(6) .................................

S. REP. No. 85–1014 (1957), reprinted in

1957 U.S.C.C.A.N.1961 ............................

STATEMENT OF INTEREST1

Amicus Curiae the Association of American Publishers,

Inc. (“AAP”) represents book, journal, and education

publishers in the United States on matters of law and

policy, including major commercial houses, small and

independent houses, and university presses and other

noncommercial scholarly publishers. AAP seeks to

promote an effective and enforceable framework that

enables publishers to create and disseminate a wide

array of original works of authorship to the public on

behalf of their authors and in furtherance of informed

speech and public progress.

AAP submits this brief in support of Petitioners and

urges this Court to adopt the so-called “injury” rule in

applying the statute of limitations in copyright infringement cases or, at a minimum, to endorse the ruling of

the Second Circuit in Sohm v. Scholastic Inc., 959 F.3d

39 (2d Cir. 2020), and hold that a copyright plaintiff

may be entitled to retrospective relief for, “three years,

and only three years” from the date of filing, so that

“the infringer is insulated from liability for earlier

infringements of the same work.” Petrella v. MetroGoldwyn-Mayer, Inc., 572 U.S. 663, 671 (2014).

SUMMARY OF ARGUMENT

publishing industry. AAP’s members highly respect

material owned by others. In some instances, publishers’ books, journals, and other works are infringed by

others, requiring them to be on the plaintiff ’s side of

No counsel for any party authored this brief in whole or in

part and no entity or person, aside from amicus curiae and their

counsel, made any monetary contribution toward the preparation

or submission of this brief.

faith licensing practices, AAP’s members are defendants in cases brought by other copyright owners.

Accordingly, they can be—and are—on either side of

infringement claims.

An open-ended statute of limitations might sometimes

benefit AAP’s members, but this potential advantage

is overridden by the need for consistency and predictability in copyright law, particularly in light of the

recent spate of lawsuits brought against publishers

and attendant difficulties in defending what are sometimes hundreds of claims of infringing uses spanning

decades. Frequently, records, including original licenses

for these uses, have been lost to time as imprints have

been acquired, witnesses have left and financial

information required to contextualize profits has been

discarded, leaving publishers largely unable to defend

themselves.

Permitting plaintiffs to bring claims based on

alleged infringements dating back dozens of years

runs contrary to the very purpose of a statute of

limitations, which is to “promote justice by preventing

surprises through the revival of claims that have been

allowed to slumber until evidence has been lost, memories

have faded, and witnesses have disappeared.” Gabelli

v. SEC, 568 U.S. 442 (2013) (quoting Order of R.R.

Telegraphers v. Railway Express Agency, Inc., 321 U.S.

342, 348-49 (1944)). This result also is contrary to the

plain meaning of Section 507(b) of the Copyright Act,

which states that “[n]o civil action shall be maintained

under the provisions of this title unless it is commenced

within three years after the claim accrued.” 17 U.S.C.

§ 507(b). And it contradicts this Court’s holdings that

where a statute of limitations does not otherwise

specify, courts should favor an “injury” rather than

“discovery” rule. Indeed, in reviewing the very statute

of limitations at issue here, this Court found that a

claim “accrues” when an infringing act occurs and that

the Copyright Act’s three-year limitations provision

“allows plaintiffs . . . to gain retrospective relief running

only three years back from the date the complaint was

filed.” Petrella, 572 U.S. at 672 (emphasis added).

The holding of the Eleventh Circuit in this case and

similar holdings in other circuits that have coupled

application of the discovery rule with an indefinite

damages lookback period2 creates an ironic and untenable situation. It rewards the indolent or indifferent

plaintiff (i.e., one that did not monitor the use of its

materials or take prompt action to enforce its rights)

by permitting such plaintiff to seek damages dating

back many years while at the same time limiting a

diligent copyright holder to damages for injuries that

occurred over three years prior to the commencement

of an infringement action.

AAP urges this Court to hold that the injury rule

governs application of the statute of limitations in copyright cases. At an absolute minimum, if the discovery

rule is to be maintained, the remedy for a prevailing

plaintiff should be limited to prospective relief coupled

with damages going back no further than three years

from the date the copyright claim was filed.

See, e.g., Starz Ent. LLC, v. MGM Domestic Television Distrib.,

LLC, 39 F.4th 1236, 1244-46 (9th Cir. 2022).

ARGUMENT

I. Application of the Discovery Rule Along

With an Indefinite Period for Retroactive

Damages Presents a Significant Concern

for AAP’s Members

It may not be obvious that AAP, which is an

organization that represents copyright holders, would

seek to limit the statute of limitations for copyright

claims. The explanation is in the way that the

discovery rule along with an unlimited lookback on

damages has been exploited by copyright plaintiffs.

Over the past two decades, publishers and other

distributors of content have faced hundreds of copyright cases brought by photographers and other copyright

owners claiming that the defendant publishers had

exceeded the scope of licenses, typically licenses for

photographs appearing in AAP members’ books or

other publications.3 The original price point for these

See, e.g., Bean v. Houghton Mifflin Harcourt Publ’g Co., 3:07cv-08063-JAT (D. Ariz.), Filed: 07/26/2007; Bean v. Houghton

Mifflin Harcourt Publ’g Co., 3:10-cv-08034-DGC (D. Ariz.), Filed:

02/22/2010; Clifton v. Houghton Mifflin Harcourt Publ’g Co., 3:15cv-03985-LB (N.D. Cal.), Filed: 09/01/2015; Degginger v. Houghton

Mifflin Harcourt Publ’g Co., 2:10-cv-03069-JF (E.D. Pa.), Filed:

06/24/2010; Bean v. John Wiley & Sons Inc., 3:11-cv-08028-FJM

(D. Ariz.), Filed: 02/23/2011; Bean v. John Wiley & Sons Inc., 3:12cv-08001-GMS (D. Ariz.), Filed: 01/04/2012; Clifton v. John Wiley

& Sons, Inc., 4:13-cv-02923-JSW (N.D. Cal.), Filed: 06/25/2013;

Degginger v. John Wiley & Sons, Inc., 2:11-cv-06600-CDJ (E.D.

Pa.), Filed: 10/21/2011; Clifton v. Macmillan Publishers Ltd.,

3:13-cv-02291-JST (N.D. Cal.), Filed: 05/20/2013; Clifton v.

McGraw-Hill School Educ. Holdings, LLC, 5:15-cv-01672-HRL

(N.D. Cal.), Filed: 04/13/2015; Degginger v. McGraw-Hill Global

Educ. Holdings LLC, 4:14-cv-02429-DCB-DTF (D. Ariz.), Filed:

10/21/2014; Steinmetz v. McGraw-Hill Global Educ. Holdings,

LLC, 2:15-cv-06600-ER (E. D. Pa.), Filed: 12/14/2015; Bean v.

licenses usually was low, often somewhere between

$50 and $200. See Alaska Stock, LLC v. Houghton

Mifflin Harcourt Publ’g Co., 747 F.3d 673, 676 (9th Cir.

2014) (noting, in photographer infringement case, that

“[p]urchasers buy permission from the stock agency to

use particular pictures, usually for a limited number

of copies, with the prices varying from less than a

dollar to perhaps a couple of hundred dollars.”).

Very often the price was set based on “rate cards” or

“preferred vendor agreements” agreed to by the photographer or its licensing agent and the publisher (see

Sohm v. Scholastic Inc., No. 16-CV-7098 (JPO), 2018

WL 1605214, at *1 (S.D.N.Y. Mar. 29, 2018), aff'd in

part, rev’d in part and remanded, 959 F.3d 39 (2d Cir.

2020) (describing “preferred vendor agreement” that

set prices for use of photographs)), and the license

price was calculated based on factors that included the

number of copies to be printed or distributed, medium

of use, and geographic scope. See Pac. Stock, Inc. v.

Pearson Educ., Inc., No. CIV. 11-00423 SOM, 2012

WL 93182, at *1 (D. Haw. Jan. 11, 2012) (identifying

common limitations in licenses). In most cases, a

license to print more copies or to permit additional

uses would have cost only a few dollars more.

In a typical instance, the plaintiffs, who are typically

either the photographer or a licensing agent, allege, on

information and belief, numerous acts of copyright

infringement—in the worst cases, thousands of uses

Pearson Educ. Inc., 3:11-cv-08030-GMS (D. Ariz.), Filed: 02/25/2011;

Clifton v. Pearson Educ., Inc., 5:11-cv-03640-EJD (N.D. Cal.),

Filed: 07/25/2011; Degginger v. Pearson Educ., Inc., 2:11-cv-01302GEKP (E.D. Pa.), Filed: 02/24/2011; Yamashita v. Scholastic, Inc.

1:2016-cv-09201-KBF (S.D.N.Y.), Filed: 11/29/2016; Bob Daemmrich

Photography, Inc. v. Scholastic Inc., 1:2015-cv-01150-RP (W.D.

Tex.), Filed 12/11/2015.

(see, e.g., Frerck v. Pearson Educ., Inc., 63 F. Supp. 3d

882 (N.D. Ill. 2014) (3,582 uses); Grant Heilman

Photography, Inc. v. McGraw-Hill Cos., Inc., 28 F. Supp.

3d 399 (E.D. Pa. 2014) (2,395 uses); DRK Photo v.

McGraw-Hill Cos., Inc., No. CV 12-08093-PCT-PGR,

2013 WL 1151497 (D. Ariz. Mar. 19, 2013) (1,120

uses))—based solely on the fact that photographs had

been licensed by a publisher and the bare allegation

that each was used beyond the scope of the license. See

Yamashita v. Scholastic Inc., 936 F.3d 98, 101 (2d Cir.

2019) (affirming dismissal of complaint where plaintiff

pled “‘[u]pon information and belief ’ that ‘the licenses

granted [defendant] were expressly limited by number

of copies, distribution area, language, duration, and/or

media’ . . . [defendant] ‘exceeded the licenses’ that it

purchased, [plaintiff] alleged, and ‘infringed [plaintiff’s]

copyrights in the Photographs in various ways’”).

More than that, the licenses at issue often are ten or

twenty years old and had been entered into by entities

or imprints that were later acquired by the defendant

publisher (see Palmer Kane LLC v. Scholastic Corp.,

No. 12 CV 3890, 2013 WL 709276, at *1 (S.D.N.Y. Feb.

27, 2013) (including uses made by imprints acquired

by defendant over a decade before)), where records

have likely been lost to time. See, e.g., Frerck, 63 F.

Supp. 3d 882 (identifying uses back to 1992); DRK,

2013 WL 1151497 (identifying uses back to 1992 in a

complaint filed in 2011).

Publishers defending these claims have been faced

with a difficult and often insurmountable burden.

Changes in their business structures, acquisitions and

realignments, outdated record-keeping practices and

the passage of time often means that the defendant

cannot find a copy of the original license or obtain a

full understanding of how the licensed photograph or

other material was used. Indeed, at times, it has been

impossible to find even a copy of the publication at

issue. Cf. Sohm, 2018 WL 1605214, at *8-9 (dismissing

claims on summary judgment where, following discovery,

there was no evidence that seven of the allegedly

infringed photographs had been used at all). Witnesses

involved in the negotiation and acquisition of a license

may no longer be working at the defendant entity, not

available to either party and/or may have no recollection of the specific licenses and uses at issue. In

addition, business records that might have been used

to show deductible expenses and elements of profits

from factors other than the use of the copyrighted

work may have been lost (see, e.g., On Davis v. The Gap,

Inc., 246 F.3d 152, 160 (2d Cir. 2001) (Leval, J.)),

leaving publishers without the ability to limit damage

exposure on cases resulting from licenses that originally

cost $200 or less.

Plaintiffs have used the difficulties faced by publishers

and other defendants to seek damages that exceed, by

many multiples, the lost license fee or the actual

advantage to the publisher gained from the use of the

copyrighted work.4 They know that if they can get by

the pleading stage, they can force a defendant to

engage in what surely will be extensive and expensive

discovery, as the defendant looks for information

relating to the license, use, sale, revenue and profits

from each of what often is a large number of claimed

The potential availability of statutory damages also encourages plaintiffs to demand large damage awards or settlements.

Pursuant to section 504(c)(1)-(2) of the Copyright Act, 17 U.S.C.

§ 504, a prevailing plaintiff can seek up to $30,000 for each

(registered) copyrighted work infringed, and up to $150,000 if the

infringement is found by the trier of fact to be “willful.” Again,

the absence of documents and of witnesses makes defending

against plaintiff’s showing of alleged willfulness very difficult.

infringements. They also know that many defendants

will choose to settle, rather than go through discovery,

motion practice and trial.

II. Defendants Rarely Will be Able to Prove

That a Plaintiff Knew or Should Have

Known About an Infringement Without

Going Through Extensive Discovery and a

Trial

While the discovery rule provides a theoretical

defense for defendants in cases with uses that are

more than three years old, in practical terms this

“defense” is illusory. First, it is nearly impossible for a

publisher to prevail on a statute of limitations defense

at the pleading stage, where a plaintiff need do little

more than claim that the infringement was recently

discovered. See PK Music Performance, Inc. v. Timberlake,

No. 16-CV-1215 (VSB), 2018 WL 4759737, at *7

(S.D.N.Y. Sept. 30, 2018) (citing Ortiz v. Cornetta, 867

F.2d 146, 149 (2d Cir. 1989)) (instructing, in a copyright

case, that “where there is even ‘some doubt’ as to

whether dismissal is warranted, a court should not

grant a Rule 12(b)(6) motion on statute of limitations

grounds”); see also Hirsch v. Rehs Galleries, Inc., No.

18-cv-11864, 2020 WL 917213, at *5 (S.D.N.Y. Feb. 26,

2020) (denying a motion to dismiss and noting that the

fact that the plaintiff retained a law firm that specializes in searching for infringing conduct is not enough

to put plaintiff on notice). Publishers are thus required

to defend the litigation through discovery and at least

until the summary judgment stage, at considerable cost.

Even at the summary judgment stage, it is extremely

difficult for a publisher or other defendant to prevail.

Because the statutory provision—unsurprisingly, as it

instead suggests the injury rule for the reasons noted

below—provides no clarity on what “discovery” means

or how it should be measured, courts have applied

different language and different tests to determine

whether the plaintiff should be precluded from continuing its lawsuit. Many courts have stated that a claim

is discovered when the plaintiff “knew or should have

known” of its claim. Starz Ent., LLC v. MGM Domestic

Telev. Dist., LLC, 39 F.4th 1236, 1244 (9th Cir. 2022).

But courts also agree that application of the discovery

rule is fact intensive and prone to credibility and other

factual disputes. Lorentz v. Sunshine Health Prod.,

Inc., No. 09-61529-CIV, 2010 WL 3733986 at *5-6 (S.D.

Fla. Aug. 27, 2010). Some courts look to see whether

there was “smoke necessary to put [[p]laintiff] on

inquiry notice that a fire started.” Luar Music Corp. v.

Universal Music Grp., Inc., 847 F. Supp 2d 299,

311 (D.P.R. 2012). Still other courts talk of “storm

warnings”. E.g., Grant Heilman Photography, Inc. v.

McGraw-Hill Glob. Educ. Holdings, LLC., No. CIV.A.

12-2061, 2015 WL 1279502 at *20 (E.D. Pa. Mar. 20,

2015) (finding that it was a very close question as to

whether plaintiff should have been aware of “storm

warnings” and denying motion for judgment as a

matter of law). But the reality is that, in more cases

than not, courts have found that there are factual

issues as to when the plaintiff discovered the infringement that require resolution at trial.

The difficulty for a defendant to prevail at the

summary judgment stage on the issue of when the

plaintiff discovered the work is illustrated by Krist v.

Pearson Educ., Inc., 419 F. Supp. 3d 904 (E.D. Pa. 2019).

There, defendant publisher established during discovery that more than three years before the plaintiff

photographer Krist commenced litigation, he was

approached by an attorney who told him that Krist’s

“name kept coming up” in searches the attorney

had conducted in searching for possible claims, that

Pearson had a “track record of infringements” and that

Krist might have a “goodly number” of infringement

claims. Id. at 909. Despite this evidence, and the

undisputed fact that Krist waited more than three

years after meeting with the attorney and learning of

his potential claims, the District Court found that

there were jury issues as to whether his attorney had

provided Krist with sufficient information to be placed

on inquiry notice or to “excite storm warnings of

culpable activity” and ordered the case to proceed to

trial. Id. at 911; see also Panoramic Stock Images, Ltd

v. McGraw-Hill Glob. Educ. Holdings, LLC, No. 12 C

9881, 2014 WL 6685454, at *3-4 (N.D. Ill. Nov. 25,

2014), opinion clarified, 2015 WL 393381 (N.D. Ill. Jan.

27, 2015) (denying summary judgment despite discussions with plaintiff ’s lawyer before applied statute of

limitations period regarding pattern of alleged infringement by publishers because plaintiff “maintain[ed]

that it did not discover [defendant’s] specific infringing

activity for each of its claims until discovery was

completed in this case, or at least not until after it filed

this lawsuit”); Bean v. John Wiley & Sons, Inc., No. CV

11-08028-PCT-FJM, 2012 WL 1078662, at *3 (D. Ariz.

Mar. 30, 2012) (denying summary judgment despite

plaintiff ’s prior lawsuits against other publisher and

plaintiff ’s lawyer’s prior knowledge of alleged infringements more than three years before filing).

Forcing a defendant to go all the way through fact

discovery and then, in all likelihood, a trial, in an effort

to establish that the plaintiff had or should have

discovered the infringing conduct more than three

years prior to commencement of litigation requires a

defendant to go through precisely the time and

expense that statutes of limitations are intended to

avoid. As this Court has long recognized, the purpose

of statutes of limitations is to “prevent[] surprises

through the revival of claims that have been allowed

to slumber until evidence has been lost, memories

have faded, and witnesses have disappeared.” Order

of R.R. Telegraphers, 321 U.S. at 348-49. Limitations

periods are intended to put defendants on notice of

adverse claims and to prevent plaintiffs from sleeping

on their rights. See Delaware State College v. Ricks,

449 U.S. 250, 256-57 (1980); see also Chase Securities

Corp. v. Donaldson, 325 U.S. 304, 313-14 (1945)

(finding statutes of limitations are “practical and

pragmatic devices to spare the courts from litigation of

stale claims, and the citizen from being put to his

defense after memories have faded, witnesses have

died or disappeared, and evidence has been lost”). This

purpose is not satisfied by the current situation.

III. By Adopting the Injury Rule, Amici and

Others Avoid This Unnecessary Burden

Section 507(b) states that: “No civil action shall be

maintained under the provisions of this title unless it

is commenced within three years after the claim

accrued.” AAP contends that this language mandates

that once three years has passed from the event

causing the alleged injury, the plaintiff is barred from

pursuing a claim no matter when it claims to have

discovered it.

A. Legislative History Counsels in Favor

of the Injury Rule

The legislative history of Section 507(b) supports

this interpretation. The civil statute of limitations in

the Copyright Act was added in 1957 because users of

intellectual property were “interested in a fixed statute

of limitations to know when they [would be] liable,”

in the face of state statutes of limitations that differed dramatically. Copyrights—Statute of Limitations:

Hearing on H.R. 781 Before the House Comm. On the

Judiciary, Subcomm. 3, 84th Cong. 40 (1955) (statement of Fulton Brylawski, Association of American

Motion Pictures). Unfortunately, sixty-six years later,

AAP and others still lack the clarity of a clear and

predictable statute of limitations.

The legislative history also suggests that lawmakers

believed that they were enacting a statute of limitations that operated under the injury rule. As the

Senate Report accompanying the legislation indicates,

“due to the nature of publication of works of art that

generally the person injured receives reasonably prompt

notice or can easily ascertain any infringement of

his rights. The committee agrees that 3 years is an

appropriate period for a uniform statute of limitations

for civil copyright actions and that it would provide an

adequate opportunity for the injured party to commence his action.” S. REP. No. 85–1014, at 2 (1957),

reprinted in 1957 U.S.C.C.A.N.1961, 1962. In other

words, in drafting the language of Section 507(b),

legislators understood that copyright violations were

typically public acts, making a discovery rule unnecessary. AAP’s members, despite being copyright owners

or exclusive licensees themselves, agree. While the

injury rule may lead to instances where members

cannot enforce their rights, the tradeoff of having a

definitive limit on claims carries much greater weight.

B. This Court’s Case Law Also Favors the

Injury Rule

This Court’s case law also suggests that the injury

rule is the proper choice. First, this Court has recently

clarified that, where a statute is unclear, the Court

is inclined to favor an injury rule. In TRW Inc. v.

Andrews, 534 U.S. 19, 27 (2001), the Court noted that

the Ninth Circuit had applied a discovery rule based

upon what it believed to be the Supreme Court’s

general premise that all federal statutes of limitations,

regardless of context, incorporate a general discovery

rule “unless Congress has expressly legislated otherwise.”

The Court in TRW explicitly rejected such a premise,

finding that its precedent that the Ninth Circuit was

relying on, Holmberg v. Armbrecht, 327 U.S. 392 (1946),

“does not establish a general presumption applicable

across all contexts,” and that the Court had applied a

discovery rule only “in two contexts, latent disease and

medical malpractice, where the cry for [such a] rule is

loudest …” TRW, 534 U.S. at 27 (internal citation

omitted). The Court made this clear in Rotkiske v.

Klemm, 140 S. Ct. 355, 360-361 (2019), calling the

recent “expansive approach to the discovery rule . . .

a ‘bad wine of recent vintage.’” (quoting TRW, 534 U.S.

at 37, and declining to write a discovery rule into the

law where Congress had not clearly done so); see also

Rotella v. Wood, 528 U.S. 549, 550 (2000) (“[a] pattern

discovery rule would allow proof even more remote

from time of trial and, hence, litigation even more at

odds with the basic policies of all limitations provisions: repose, elimination of stale claims, and certainty

about a plaintiff ’s opportunity for recovery and a

defendant’s potential liabilities.”).

Second, where this Court has addressed the question of when a plaintiff can bring a copyright claim, it

has implicitly, if not explicitly, endorsed the injury rule.

In describing the Copyright Act’s statute of limitations, the Court in Petrella began with the premise

that “[a] claim ordinarily accrues ‘when [a] plaintiff

has a complete and present cause of action.’” Petrella,

572 U.S. at 670 (quoting Bay Area Laundry and Dry

Cleaning Pension Trust Fund v. Ferbar Corp. of Cal.,

522 U.S. 192, 201 (1997)). From this, it reasoned that

“[a] copyright claim thus arises or ‘accrue[s]’ when an

infringing act occurs.” Id. The Court went on to

reconfirm that “[u]nder the Act's three-year provision,

an infringement is actionable within three years, and

only three years, of its occurrence…the infringer is

insulated from liability for earlier infringements of the

same work.” Id. at 671. Although the Court noted that

it was not passing on the injury vs. discovery rule

debate (id. at 670 n.4), that language appears to

clearly favor an injury rule.

The Court later repeated this rationale in a patent

case, SCA Hygiene Prod. Aktiebolag v. First Quality

Baby Prod., LLC, 580 U.S. 328 (2017). Rebuffing a

request to write a discovery rule into patent law, the

Court noted that it “is not ordinarily true” that a claim

accrues upon discovery. SCA, 580 U.S. at 337-38.

Citing Petrella, the Court noted that a claim instead

“ordinarily accrues ‘when [a] plaintiff has a complete

and present cause of action.’” Id. (quoting Petrella, 572

U.S. at 670).

Finally, this Court has in other circumstances

interpreted the word “accrues”, which Section 507(b)

employs, to be linked to injury. In Merck & Co. v.

Reynolds, 559 U.S. 633, 644 (2010), the Court noted

that “the general limitations rule [is] that a cause of

action accrues once a plaintiff has a ‘complete and

present cause of action,’” but held that a different rule

might apply in the case of fraud (id. at 644), because

Circuit courts that have adopted the discovery rule have

largely come to the opposite conclusion without any real analysis.

As the Fifth Circuit recently acknowledged, albeit in a decision

where it followed precedent in applying the discovery rule, its

own precedent “did not explain why the discovery rule applied”

and instead followed a prior, unpublished decision, without giving

any rationale. Martinelli v. Hearst Newspapers, L.L.C., 65 F.4th

231, 236 (5th Cir. 2023).

“a defendant’s deceptive conduct may prevent a

plaintiff from even knowing that he or she has

been defrauded.” Id. “Otherwise, ‘the law which was

designed to prevent fraud’ could become ‘the means by

which it is made successful and secure.’” Id. (quoting

Bailey v. Glover, 21 Wall. 342, 349, 22 L.Ed. 636

(1875)).6

IV. In the Absence of the Injury Rule, This

Court Should Adopt Petrella’s Three-Year

Cap on Damages

If this Court determines not to adopt the injury rule,

it should nevertheless take steps to balance the

equities in infringement cases by adopting the threeyear lookback from Sohm, which is based on Petrella.

Without the ability to deviate from prior Second

Circuit precedent, the Sohm court instead limited

damages. Following the clear language from Petrella

that “infringement is actionable within three years,

and only three years, of its occurrence,” meaning that

“the infringer is insulated from liability for earlier

infringements of the same work” (Petrella, 572 U.S. at

671), the Second Circuit held that, while plaintiff was

Other exceptions to the statute of limitations would still be

available to plaintiffs in particular situations, including the

possibility that the limitation period could be tolled in a case

where the defendant provided knowingly false or fraudulent

information to a copyright owner, thus depriving it of the

information it would need to commence litigation. CTS Corp. v.

Waldburger, 573 U.S. 1, 10 (2014) (quoting Lozano v. Montoya

Alvarez, 572 U.S. 1 (2014)) (“Equitable tolling is applicable to

statutes of limitations because their main thrust is to encourage

the plaintiff to ‘pursu[e] his rights diligently,’ and when an

‘extraordinary circumstance prevents him from bringing a timely

action,’ the restriction imposed by the statute of limitations does

not further the statute's purpose.”).

not barred by the statute of limitations from pursuing

his claim, his damages were limited to three years

before filing. Sohm v. Scholastic Inc., 959 F.3d 39,

51 (2d Cir. 2020). Although this approach leaves the

burden of addressing untimely claims and locating

years-worth of documents on defendants, it works to

limit recovery and, potentially, to discourage stale

claims. As noted above, the present state of the

discovery rule allows a plaintiff to wait decades to

bring suit, but recover damages for the entire period.

This makes little sense, and benefits the indolent

plaintiff. See Cal. Public Employees’ Retirement Sys. v.

ANZ Securities, Inc., 582 U.S. 497, 504-505 (2017)

(quoting CTS Corp. v. Waldburger, 573 U.S. 1 (2014))

(“Statutes of limitations are designed to encourage

plaintiffs ‘to pursue diligent prosecution of known

claims.’ In accord with that objective, limitations

periods begin to run ‘when the cause of action

accrues—that is, when the plaintiff can file suit and

obtain relief.’”).

Consider the facts of the case now before the Court.

Had Sherman Nealy diligently monitored his alleged

2008 (and there is evidence in the record that Nealy at

least had good reason to check to see if his works were

improperly being used). Instead he waited for ten

years until 2018 to commence an action. Under the

“injury” rule, Nealy could have obtained prospective

relief as well as retrospective relief dated back three

years to 2015. But given the Eleventh Circuit’s

application of the “discovery” rule, Nealy can look for

damages dating all the way back to 2008.

A comparison of the facts of this case with those in

the Petrella case is instructive. There, Plaintiff was

the successor to the copyright in screenplays for the

motion picture Raging Bull. Plaintiff knew of her

claim as early as 1998 but waited 11 years until 2009

(after the motion picture had been released on DVD

and Blu-Ray) to bring suit. Plaintiff conceded that she

was entitled to damages only going back for three

years to 2006. Defendant MGM argued that the claim

should be barred by reason of the doctrine of laches

given her knowledge of the claim and her delay in

pursuing her rights. This Court found that laches

did not apply, but confirmed that plaintiff could look

back “three years, but only three years,” meaning that

Petrella was limited to three years of damages.

But what would have happened if plaintiff claimed

only to have “discovered” the infringing conduct when

MGM announced the release of the film in new

formats? In that situation, under the rule set forth by

the Eleventh Circuit in this case and by other circuits,

Plaintiff could have used the discovery rule to seek

damages not only going back to 1998, but theoretically

back to the original release of the film in 1980 (or

vested). The underlying facts of Petrella provide an

excellent example of how the application of the

discovery rules, especially when coupled with the

indefinite look back period, punishes the diligent and

rewards the indolent. The Plaintiff in that case would

have been far better off had she claimed that she was

unaware of the use of her copyrighted materials than

she was by admitting that she had long been aware but

had waited for the economic value of the defendants’

property to increase.

Application of the rule announced by the court

below, and in the other circuits that have endorsed the

discovery rule but have rejected the Sohm three-year

limitation on retrospective damages begs the question

of how far back a plaintiff should be allowed to look.

We already have seen cases that suggest that a look

back of 10 or 20 years might be appropriate. On other

facts might it be even longer? If a photographer

suddenly “discovered” that a photograph he owned had

been displayed on the wall of Rick’s Café in the film

Casablanca, could he or his heirs claim damages going

all the way back to the 1942 release of the claim. Or

could the heirs of a composer claim that they had

recently discovered that their work had been infringed

by the use of song As Time Goes By in that same film?

These hypotheticals may seem far-fetched, but the

current state of the law is unclear and unpredictable.

Circuit courts that have declined to follow Sohm and

impose this limit have done so because they claim that

a three-year lookback on damages would “eviscerate”

the discovery rule. Starz Ent., LLC v. MGM Domestic

Television Distrib., LLC, 510 F. Supp. 3d 878, 886 (C.D.

Cal. 2021), aff’d, 39 F.4th 1236 (9th Cir. 2022); see also

Nealy v. Warner Chappell Music, Inc., 60 F.4th 1325,

1331 (11th Cir. 2023), cert. granted in part sub nom.

Warner Chappell Music v. Sherman Nealy, No. 221078, 2023 WL 6319656 (U.S. Sept. 29, 2023) (agreeing

with the Ninth Circuit). Not so. Copyright holders

would still be able to bring suit and garner prospective

relief like an injunction. Moreover, as Petrella itself

confirms, under the separate accrual rule, by which

“each infringing act starts a new limitations period”

(Petrella, 572 U.S. at 671), plaintiffs remain able to

address harms that occur within the prior three years.

What they would not be able to do is to go back

indefinitely for damages after burying their head in

the sand for decades.

CONCLUSION

For the foregoing reasons, this Court should reverse

the Eleventh Circuit’s judgment. This Court should

adopt the injury rule as governing the application of

the statute of limitations in copyright cases or, at a

minimum, hold that a copyright plaintiff may not

recover damages for more than three years prior to the

commencement of an infringement action.

Respectfully submitted,

NICOLE BERGSTROM

Counsel of Record

EDWARD H. ROSENTHAL

FRANKFURT KURNIT KLEIN

& SELZ PC

28 Liberty Street

New York, NY 10005

(212) 980-0120

nbergstrom@fkks.com

erosenthal@fkks.com

Counsel for Amicus Curiae

December 4, 2023

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.