Petition for Writ of Certiorari — Hearst Newspapers, L.L.C., et al., Petitioners v. Antonio Martinelli

Supreme Court briefNov 2, 2023

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No. 23-____

IN THE

Supreme Court of the United States

————

HEARST NEWSPAPERS L.L.C. &

HEARST MAGAZINE MEDIA, INC.,

Petitioners,

ANTONIO MARTINELLI,

Respondent.

————

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Fifth Circuit

————

PETITION FOR WRIT OF CERTIORARI

————

JONATHAN R. DONNELLAN

Counsel of Record

RAVI V. SITWALA

NATHANIEL S. BOYER

THE HEARST CORPORATION

300 West 57th Street

New York, NY 10019

(212) 649-2051

jdonnellan@hearst.com

Counsel for Petitioners

November 2, 2023

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

QUESTION PRESENTED

Whether the “discovery rule” applies to the

17 U.S.C. 507(b).

(i)

PARTIES TO THE PROCEEDING

AND CORPORATE DISCLOSURE STATEMENT

Petitioners are Hearst Newspapers, LLC, and

Hearst Magazine Media, Inc.

Pursuant to this Court’s Rule 29.6, Hearst

Newspapers, LLC, and Hearst Magazine Media, Inc.

(together, “Hearst”) state that they are both indirectly

owned, in full, by the Hearst Corporation, a privately

held company. No public company owns more than

10% of the Hearst Corporation’s stock.

Respondent is Antonio Martinelli.

STATEMENT OF RELATED CASES

Pursuant to Supreme Court Rule 14, Hearst hereby

states that there are no related cases.

TABLE OF CONTENTS

Page

QUESTION PRESENTED ..................................

PARTIES TO THE PROCEEDING AND

CORPORATE DISCLOSURE STATEMENT ...

STATEMENT OF RELATED CASES ................

TABLE OF AUTHORITIES ................................

OPINIONS BELOW ............................................

JURISDICTION ..................................................

STATUTORY PROVISION INVOLVED ............

STATEMENT ......................................................

A. Legal Background .....................................

B. The Stipulated Facts ................................

C. Procedural History....................................

REASONS FOR GRANTING THE PETITION..

A. The Meaning of “Accrue” and the

Rejection of a Presumed Discovery

Accrual ......................................................

B. Lower Court Decisions Applying the

Discovery Rule Are Unpersuasive............

C. The Circuit Courts’ Refusal to Jettison

the Discovery Rule Has Led to the Split

at Issue in Warner Chappell Music ..........

D. The Discovery Rule Leads to Inconsistent

Rulings, Contrary to the Intent of the

Drafters of the Copyright Act of 1976 ......

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

APPENDIX

(iii)

TABLE OF AUTHORITIES

CASES

Page(s)

Auscape Int’l v. Nat’l Geographic Soc’y,

409 F. Supp. 2d 235 (S.D.N.Y. 2004)........ 22, 23

Baxter v. Curtis Indus., Inc.,

201 F. Supp. 100 (N.D. Ohio 1962) ..........

Bay Area Laundry & Dry Cleaning Pension

Trust Fund v. Ferbar Corp. of

California, Inc.,

522 U.S. 192 (1997) ................................. 8, 9, 12

Bridgeport Music, Inc. v.

Rhyme Syndicate Music,

376 F.3d 615 (6th Cir. 2004) .....................

Chi. Bldg. Design, P.C. v.

Mongolian House, Inc.,

770 F.3d 610 (7th Cir. 2014) .....................

Comcast of Ill. X v. MultiVision Elecs., Inc.,

491 F.3d 938 (8th Cir. 2007) .....................

Cooper v. NCS Pearson, Inc.,

733 F.3d 1013 (10th Cir. 2013) .................

Everly v. Everly,

958 F.3d 442 (6th Cir. 2020) .....................

Fahmy v. Jay-Z,

835 F. Supp. 2d 783 (C.D. Cal. 2011) .......

Fogerty v. Fantasy, Inc.,

510 U.S. 517 (1994) ...................................

Gabelli v. S.E.C.,

568 U.S. 442 (2013) ................................. 7, 9, 10

TABLE OF AUTHORITIES—Continued

Page(s)

Garcia v. Coleman,

No. C-07-2279, 2008 WL 4166854

(N.D. Cal. Sept. 8, 2008) ...........................

Graham Cnty. Soil & Water Conservation

Dist. v. United States ex rel. Wilson,

545 U.S. 409 (2005) ...................................

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) ...........................

Hamilton v. 1st Source Bank,

928 F.2d 86 (4th Cir. 1990) ....................... 19, 22

Hirsch v. Rehs Galleries, Inc.,

No. 18-cv-11864, 2020 WL 917213

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

Hotaling v. Church of Jesus Christ of

Latter-Day Saints,

118 F.3d 199 (4th Cir. 1997) .....................

Lixenberg v. Complex Media, Inc.,

No. 22-cv-354, 2023 WL 144663

(S.D.N.Y. Jan. 10, 2023) ...........................

Lorentz v. Sunshine Health Prods., Inc.,

No. 09-61529-CIV, 2010 WL 3733986

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

recommendation adopted, No. 09-61529CIV, 2010 WL 3733985 (S.D. Fla. Sept.

23, 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 (2023) ............................ 1-7, 13, 17

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

No. H-21-3412, 2022 WL 2542301 (2022)

1, 6

Michael Grecco Prods., Inc. v. RADesign, Inc.,

No. 21-cv-8381, --- F. Supp. 3d ----, 2023

WL 4106162 (S.D.N.Y. June 20, 2023),

appeal docketed, No. 23-1078 (2d Cir.

July 20, 2023) ............................................

Minden Pictures, Inc. v. Buzzfeed, Inc.,

390 F. Supp. 3d 461 (S.D.N.Y. 2019)........

Nealy v. Warner Chappell Music, Inc.,

60 F.4th 1325 (11th Cir. 2023) ................. 4, 18

Parisienne v. Scripps Media, Inc.,

No. 19-cv-8612, 2021 WL 3668084

(S.D.N.Y. Aug. 17, 2021) ...........................

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

572 U.S. 663 (2014) .. 2, 3, 7, 12, 13, 15-18, 21, 22

Polar Bear Prods., Inc. v. Timex Corp.,

384 F.3d 700 (9th Cir. 2004), as

amended on denial of reh’g and reh’g en

banc (Oct. 25, 2004), opinion amended

on denial of reh’g, No. 03-35188, 2004

WL 2376507 (9th Cir. Oct. 25, 2004). ......

Prather v. Camerarts Publ’g Co.,

No. 68 C 1496, 1972 WL 17668

(N.D. Ill. Apr. 19, 1972), aff’d,

481 F.2d 1406 (7th Cir. 1973) ...................

vii

TABLE OF AUTHORITIES—Continued

Page(s)

Prather v. Neva Paperbacks, Inc.,

446 F.2d 338 (5th Cir. 1971) .....................

Psihoyos v. John Wiley & Sons, Inc.,

748 F.3d 120 (2d Cir. 2014) ......................

Rawlings v. Ray,

312 U.S. 96 (1941) .....................................

Roley v. New World Pictures, Ltd.,

19 F.3d 479 (9th Cir. 1994) ....................... 14, 15

Rotella v. Wood,

528 U.S. 549 (2000) ................................... 9, 16

Rotkiske v. Klemm,

140 S. Ct. 355 (2019) ............................. 7, 10, 11

Santa-Rosa v. Combo Recs.,

471 F.3d 224 (1st Cir. 2006) .....................

SCA Hygiene Prods. Aktiebolag v. First

Quality Baby Prods., LLC,

580 U.S. 328 (2017) ................................... 2, 13

Sohm v. Scholastic Inc.,

959 F.3d 39 (2d Cir. 2020) .................... 3, 17, 18

Starz Ent., LLC v. MGM Domestic

Television Distrib., LLC,

39 F.4th 1236 (9th Cir. 2022) ............ 3-4, 17, 18

Stone v. Williams,

970 F.2d 1043 (2d Cir. 1992) ....................

Taylor v. Meirick,

712 F.2d 1112 (7th Cir. 1983) ...................

TRW Inc. v. Andrews,

534 U.S. 19 (2001) .............................. 7, 9-11, 16

viii

TABLE OF AUTHORITIES—Continued

Page(s)

UMG Recordings, Inc. v. Glob. Eagle Ent., Inc.,

No. CV 14-3466, 2016 WL 3457179

(C.D. Cal. Apr. 20, 2016)........................... 20-21

Urie v. Thompson,

337 U.S. 163 (1949) ...................................

Wakefield v. Olenicoff,

No. SACV 12-2077, 2015 WL 1460152

(C.D. Cal. Mar. 30, 2015), aff’d in

relevant part, rev’d in part, 679 F. App’x

591 (9th Cir. 2017) ....................................

Warner Chappell Music, Inc. v. Nealy,

No. 22-1078 (docketed May 5, 2023) .. 2-4, 17, 18

Webster v. Dean Guitars,

955 F.3d 1270 (11th Cir. 2020) .................

William A. Graham Co. v. Haughey,

568 F.3d 425 (3d Cir. 2009) ...................... 15, 16

Wood v. Santa Barbara Chambers of

Com., Inc.,

507 F. Supp. 1128 (D. Nev. 1980) .............

STATUTES

12 U.S.C. 3416 ..............................................

15 U.S.C. 77m ...............................................

15 U.S.C. 1681p ............................................ 11, 13

17 U.S.C. 106(5) ............................................

17 U.S.C. 504 ................................................

17 U.S.C. 504(b) ............................................

TABLE OF AUTHORITIES—Continued

Page(s)

17 U.S.C. 507(a) ............................................

17 U.S.C. 507(b) ........................... 2-4, 7, 12, 16, 21

18 U.S.C. 1030(g) ..........................................

28 U.S.C. 1254(l)...........................................

28 U.S.C. 2462 ..............................................

31 U.S.C. 3731(b)(1) .....................................

42 U.S.C. 9612(d)(2) .....................................

50 U.S.C. 4611(k)(3) .....................................

RULES

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

Sup. Ct. R. 10(c) ............................................

COURT FILINGS

Order, Warner Chappell Music, No. 221078 (Sept. 29, 2023) ................................ 4, 18

Pet. for Writ of Cert., Warner Chappell

Music, Inc., No. 22-1078 (May 3, 2023) ....

OTHER AUTHORITIES

Copytrack, https://www.copytrack.com/ (last

visited Oct. 24, 2023) ................................

ImageRights, www.imagerights.com/ (last

visited Oct. 24, 2023) ................................

3 Melville Nimmer, Nimmer on Copyright ....

6 William F. Patry, Patry on Copyright ... 14, 17, 23

TABLE OF AUTHORITIES—Continued

Page(s)

Pixsy, https://www.pixsy.com/ (last visited

Oct. 24, 2023) ............................................

S. Rep. No. 85-1014, 85th Cong., 1st Sess. 2

(1957) .........................................................

U.S. Courts, Fed. Judicial Caseload

Statistics 2022, https://www.uscourts.go

v/statistics-reports/federal-judicial-casel

oad-statistics-2022 (last visited Oct. 24,

2023) ..........................................................

IN THE

Supreme Court of the United States

————

No. 23-___

————

HEARST NEWSPAPERS L.L.C. &

HEARST MAGAZINE MEDIA, INC.,

Petitioners,

ANTONIO MARTINELLI,

Respondent.

————

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Fifth Circuit

————

PETITION FOR WRIT OF CERTIORARI

Petitioners Hearst Newspapers, L.L.C. and Hearst

Magazine Media, Inc. (together, “Hearst”) respectfully

submit this petition for a writ of certiorari to review

the judgment of the United States Court of Appeals for

the Fifth Circuit.

OPINIONS BELOW

The opinion of the court of appeals (App. 1a-25a) is

reported at 65 F.4th 231. The opinion of the district

court (App. 26a-31a) is unreported but available at

2022 WL 2542301.

JURISDICTION

The United States Court of Appeals for the Fifth

Circuit entered judgment on October 2, 2023 after

denying Hearst’s petition for rehearing en banc on

September 22, 2023. App. 32a-35a. This Court’s

jurisdiction is invoked under 28 U.S.C. 1254(1).

STATUTORY PROVISION INVOLVED

Section 507(b) of Title 17 of the United States Code

provides:

No civil action shall be maintained under the

provisions of this title unless it is commenced

within three years after the claim accrued.

STATEMENT

This case is a strong candidate for the Court’s

review. It concerns an important question that has led

to a circuit split and inconsistent rulings, as lower

courts apply a rule of accrual supported by neither the

text of the statute of limitations nor this Court’s

precedent.

The question presented is whether the Copyright

Act’s statute of limitations for civil claims incorporates

a so-called “discovery rule” that does not appear in the

statute. The Court has, twice, left this question open,

observing that it has never applied a discovery rule to

the Copyright Act. See SCA Hygiene Prods. Aktiebolag

v. First Quality Baby Prods., LLC, 580 U.S. 328, 33638 (2017); Petrella v. Metro-Goldwyn-Mayer, Inc., 572

U.S. 663, 670 n.4 (2014). This Term, the Court will

consider a closely related question concerning available damages, over which the circuits are at odds. See

Warner Chappell Music, Inc. v. Nealy, No. 22-1078.

But the circuit split at issue in Warner Chappell

Music is the symptom—not the problem. This Court

should fix the problem, which was not litigated below

in Warner Chappell Music. Hearst v. Martinelli is the

ideal vehicle to consider whether the discovery rule

applies. This case should be considered together with

Warner Chappell Music.

A. Legal Background.

“No 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).

There is no discovery-accrual provision in this statute.

This Court has never applied a discovery rule to

Yet the circuit courts, including the Fifth Circuit,

apply an atextual discovery rule to copyright claims.

That is, a claim does not accrue until “the plaintiff

knows or has reason to know of the injury upon which

the claim is based,” according to the Fifth Circuit.

App. 1a. The circuits continue to apply the discovery

rule even after this Court stated, in Petrella, that an

infringement claim “‘accrues’ when an infringing act

occurs.” 572 U.S. at 670 (emphasis added); see also id.

at 671 (“[A]n infringement is actionable within three

years, and only three years, of its occurrence.”).

Lower courts are divided in their efforts to reconcile

Petrella with their discovery rule precedent. The

Second Circuit has held that, although the discovery

rule applies, an infringement plaintiff may only

recover damages from a three-year “lookback” period.

Sohm v. Scholastic Inc., 959 F.3d 39, 50 (2d Cir. 2020).

The Ninth Circuit has rejected that limitation, while

criticizing Sohm for, the Ninth Circuit wrote, effectively “eviscerat[ing] the discovery rule.” Starz Ent.,

LLC v. MGM Domestic Television Distrib., LLC,

39 F.4th 1236, 1244 (9th Cir. 2022). The Eleventh

Circuit recently sided with the Ninth. Nealy v. Warner

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

Warner Chappell Music is now before this Court:

This Term, the Court will consider the “limited”

question of whether, “under the discovery accrual rule

applied by the circuit courts and the Copyright Act’s

statute of limitations for civil actions, 17 U.S.C.

§ 507(b), a copyright plaintiff can recover damages for

acts that allegedly occurred more than three years

before the filing of a lawsuit.” Order, Warner Chappell

Music, No. 22-1078 (Sept. 29, 2023) (emphasis added).

But in Warner Chappell Music, the defendants did

not argue against the discovery rule in the courts

below. Here, the defendants did.

B. The Stipulated Facts.

The parties stipulated to all material facts. And the

facts are simple.

This copyright infringement case concerns the

web-only use of photographs. Respondent Antonio

Martinelli (“Martinelli”) owns the copyright in seven

photographs depicting the estate known as “Luggala”

or the “Guinness Castle” (the “Photographs”). App. 2a.

Hearst Newspapers publishes the Houston Chronicle

and the San Antonio Express-News and operates

their associated websites, including Chron.com and

MySA.com. App. 2a. Hearst Newspapers used the

Photographs in a web-only news article that was

posted to Chron.com on March 7, 2017, and to

MySA.com on March 13, 2017, and which were viewable through other websites associated with Hearst

Newspapers and its affiliates. App. 2a. Separately, on

March 14, 2017, Hearst Magazines1 used four of

the Photographs in a web-only news article on

elledecor.com. App. 2a.

As stipulated, Martinelli discovered these uses by

Hearst on various dates ranging from November 17,

2018 through May 28, 2020, and could not have,

through reasonable diligence, discovered the uses

before those dates. App. 2a-3a.

Due to the passage of time, Hearst was unable to

locate any record of permission for these uses. And

Hearst chose not to assert a fair use defense in this

case. Thus, Hearst conceded it infringed Martinelli’s

copyrights in the Photographs through its volitional

acts which caused displays on March 7-14, 2017. App.

3a; 17 U.S.C. 106(5).

Yet Martinelli did not file his original complaint

in this action until October 18, 2021, naming

Hearst Newspapers as a defendant. App. 3a. Hearst

Magazines was added as a defendant in an amended

complaint on February 11, 2022. App. 3a. The

amended complaint asserts claims for direct copyright

infringement (Counts I and II) and contributory

the above-described conduct to which the parties

stipulated. To avoid the need for discovery on the

issue of damages, the parties agreed that, if successful

in this action, Martinelli would be entitled to recover

a total of $10,000. App. 3a; see also 17 U.S.C. 504(b).

Though this use was made by Hearst Magazines’ predecessorin-interest, Hearst Communications, Inc. (which at the time

published the ELLE DECOR magazine and elledecor.com through

its magazines operating division), the parties agreed that Hearst

Magazine Media, Inc. is the correct defendant.

As stipulated, Martinelli filed his original complaint

(i) more than three years after Hearst used the

Photographs, but (ii) less than three years after

he discovered the infringements. Only one question

remained for the lower courts to resolve: Were

Martinelli’s claims untimely under the Copyright Act’s

statute of limitations?

C. Procedural History.

In April 2022, Hearst moved for summary judgment,

arguing Martinelli’s claims were time-barred because

they “accrued” when Hearst published the Photographs in 2017, more than three years before

Martinelli filed his original complaint. App. 26a-27a.

Martinelli moved for summary judgment at the same

time, arguing that his claims were not time-barred

because they did not “accrue” until he discovered the

infringements, which was less than three years before

he filed his original complaint. App. 26a-27a. Bound

by Fifth Circuit precedent applying the discovery rule,

the district court denied Hearst’s motion, granted

Martinelli’s motion, and entered final judgment for

Martinelli for $10,000. App. 28a-31a.

On April 13, 2023, the Fifth Circuit affirmed—but

its opinion did not endorse the discovery rule. Rather,

it simply followed the circuit court’s rule of orderliness, reasoning that its prior precedent had not been

“unequivocally overrule[d]” by recent Supreme Court

precedent. App. 25a.

In fact, in its 23-page published opinion, the Fifth

Circuit correctly observed that none of its precedent

“explains why the discovery rule applies to a copyright

infringement claim.” App. 5a-6a (emphasis added).

The one Fifth Circuit case that squarely applied the

discovery rule to copyright infringement claims did not

“endors[e] the reasoning of [the two] out-of-circuit

decisions” to which it cited, either. App. 8a.

The Fifth Circuit denied rehearing en banc on

September 22, 2023. App. 32a-33a. Hearst now seeks

this Court’s review.

REASONS FOR GRANTING THE PETITION

“No civil action shall be maintained . . . unless it

is commenced within three years after the claim

accrued.” 17 U.S.C. 507(b). “In common parlance a

right accrues when it comes into existence.” Gabelli v.

S.E.C., 568 U.S. 442, 448 (2013) (citation omitted)

(interpreting a statute of limitations with the word

“accrue”). This comports with the “natural reading”

of the word “accrue,” ibid., and it is the “standard

rule” against which “Congress legislates,” see Rotkiske

v. Klemm, 140 S. Ct. 355, 360-61 (2019) (citations

omitted). For copyright infringement, the claim “comes

into existence” when the act of infringement occurs.

Yet the Fifth Circuit, like other circuit courts,

applies a judge-made discovery rule, holding that a

claim does not accrue until the plaintiff discovers, or

should have discovered, the infringement. The lower

courts apply the discovery rule with little-to-no

attention to this Court’s case law. This “expansive

approach to the discovery rule” is a “bad wine of recent

vintage.” Rotkiske, 140 S. Ct. at 360-61 (quoting TRW

Inc. v. Andrews, 534 U.S. 19, 37 (2001) (Scalia, J.,

concurring in judgment)).

It is important for the Court to grant certiorari for

several reasons. This case presents an alternative

approach to resolving the conflict among the circuits

that has erupted after Petrella, and which the Court is

slated to consider this Term. See infra Point C. The

discovery rule leads to inconsistent and unpredictable

rulings among the lower courts, contrary to Congress’s

intent. See infra Point D. This uneven application of

the law is significant; over 1,000 copyright cases are

filed annually,2 and many are filed long after the

alleged infringement occurred.

But at base, this Court should correct the lower

courts. They have gone astray. Like its sister circuits,

the Fifth Circuit has decided this important federal

question in a way that conflicts with relevant decisions

of this Court. See Sup. Ct. Rule 10(c). The Court

should grant certiorari and hold that the discovery

rule does not apply to the Copyright Act’s statute of

limitations for civil claims. See infra Points A, B.

A. The Meaning of “Accrue” and the Rejection

of a Presumed Discovery Accrual.

When a claim “accrues.” Over the last 26 years,

this Court has issued a drumbeat of decisions instructing that a claim ordinarily “accrues” when a plaintiff

has a complete and present cause of action, and

rejecting a judicially presumed “discovery rule.” They

provide the framework for properly analyzing the

A starting point is Bay Area Laundry & Dry

Cleaning Pension Trust Fund v. Ferbar Corp. of

California, Inc., 522 U.S. 192 (1997). It is “the

standard rule that the limitations period commences

when the plaintiff has ‘a complete and present cause

of action.’” Id. at 201 (citation omitted). Notably, for

See U.S. Courts, Fed. Judicial Caseload Statistics 2022,

https://www.uscourts.gov/statistics-reports/federal-judicial-case

load-statistics-2022 (last visited Oct. 24, 2023) (1,345 copyright

claims filed in the 12-month period ending March 31, 2022, a

42 percent increase from the prior 12-month period).

this statement, the Court relied on a case in which the

statute of limitations at issue used the word “accrue,”

like that of the Copyright Act. Ibid. (citing Rawlings

v. Ray, 312 U.S. 96, 98 (1941) (limitation period runs

“after the cause of action shall accrue”) (citation

omitted)). “Unless Congress has told us otherwise in

the legislation at issue, a cause of action . . . become[s]

‘complete and present’ for limitations purposes [when]

the plaintiff can file suit and obtain relief.” Bay Area

Laundry, 522 U.S. at 201.

Four years later, in TRW, the Supreme Court

applied these principles, adding that it had only ever

adopted a discovery rule for statutes of limitations in

the context of “fraud or concealment” or “latent

disease and medical malpractice, where the cry for

such a rule is loudest.” 534 U.S. at 27 (citations,

alterations, and quotation marks omitted); see also

Rotella v. Wood, 528 U.S. 549, 555 (2000). Then, in

2005, the Court stated that “the default rule [is]

that Congress generally drafts statutes of limitations

to begin when the cause of action accrues,” and

“Congress legislates against the ‘standard rule that

the limitations period commences when the plaintiff

has a complete and present cause of action.’” Graham

Cnty. Soil & Water Conservation Dist. v. United States

ex rel. Wilson, 545 U.S. 409, 418 (2005) (citation

omitted).

The meaning of “accrue” and the rejection of a

discovery rule collided in Gabelli. The Court held

that the discovery rule does not apply to a statute of

limitations that—like that of the Copyright Act—runs

from the date on which the claim “accrue[s].” 568 U.S.

at 445 (quoting 28 U.S.C. 2462 (claim must be brought

“within five years from the date when the claim first

accrued”)). Among the Court’s reasons was that—

again—the “standard rule” is that a claim accrues

“when the plaintiff has a complete and present cause

of action.” Id. at 448 (citation omitted). That is “the

most natural reading of the statute” because “[i]n

common parlance a right accrues when it comes into

existence.” Ibid. (citation omitted).

Fast forward to Rotkiske, in 2019: To judicially

graft a discovery rule onto a statute of limitations

where none appears would be inconsistent with “a

fundamental principle of statutory interpretation that

absent provision[s] cannot be supplied by the courts.”

140 S. Ct. at 360-61 (citation and quotation marks

omitted). In rejecting the discovery rule for the statute

at issue in that case, the Court criticized “read[ing] in

a provision stating that [the applicable] limitations

period begins to run on the date an alleged . . . violation is discovered,” where Congress has declined to

include such language itself. Ibid. Such an “expansive

approach to the discovery rule” is a “bad wine of recent

vintage.” Ibid. (quoting TRW, 534 U.S. at 37 (Scalia,

J., concurring in judgment)).

This quotation is as significant as it is colorful. In

his TRW concurrence, Justice Scalia argued that the

Court should reject a general presumption in favor of

the discovery rule. Such a presumption, which has

never been adopted by this Court, usurps Congress’s

role, which legislates against the “backdrop rule” that

a claim “accrues” once a plaintiff has a complete and

present cause of action. 534 U.S. at 35-39.

Eighteen years later, in Rotkiske, the Court employed the same reasoning, cited with approval Justice

Scalia’s concurring opinion, and affirmed a ruling of

the Third Circuit that “there is no default presumption

that all federal limitations periods run from the date

of discovery.” 140 S. Ct. at 359. Though TRW had left

open the question of whether “all federal statutes of

limitations . . . incorporate a general discovery rule

unless Congress has expressly legislated otherwise,”

TRW, 534 U.S. at 27 (citation and quotation marks

omitted), that question was answered by Rotkiske:

There is no such presumption.

And of course, when Congress wants the statute of

limitations to run from the date of discovery, it knows

how to draft such a statute. It has done so. Many

times.3 But not for the Copyright Act.

See, e.g., 12 U.S.C. 3416 (“An action to enforce any provision

of this chapter may be brought in any appropriate United States

district court without regard to the amount in controversy within

three years from the date on which the violation occurs or the date

of discovery of such violation, whichever is later.” (emphasis

added)); 15 U.S.C. 77m (“No action shall be maintained to enforce

any liability created under section 77k or 77l(a)(2) of this title

unless brought within one year after the discovery of the untrue

statement or the omission, or after such discovery should have

been made by the exercise of reasonable diligence . . . .” (emphasis

added)); 15 U.S.C. 1681p (“An action to enforce any liability

created under this subchapter may be brought . . . not later than

the earlier of—(1) 2 years after the date of discovery by the plaintiff

of the violation that is the basis for such liability; or (2) 5 years

after the date on which the violation that is the basis for such

liability occurs.” (emphasis added)); 18 U.S.C. 1030(g) (“No action

may be brought under this subsection unless such action is begun

within 2 years of the date of the act complained of or the date

of the discovery of the damage.” (emphasis added)); 42 U.S.C.

9612(d)(2) (“No claim may be presented under this section for

recovery of the damages referred to in section 9607(a) of this title

unless the claim is presented within 3 years after the later of

the following: (A) The date of the discovery of the loss and its

connection with the release in question. (B) The date on which

final regulations are promulgated under section 9651(c) of this

title.” (emphasis added)); 50 U.S.C. 4611(k)(3) (“An action under

this subsection shall be commenced not later than 3 years after

Petrella. In describing the Copyright Act’s statute

of limitations, the Court in Petrella stated that a

claim “accrue[s] when an infringing act occurs.” 572

U.S. at 670-71 (alteration in original; emphasis added;

citation omitted). This is so because—echoing the

principles discussed supra—a claim ordinarily accrues

“when [a] plaintiff has a complete and present cause of

action,” ibid. (alteration in original) (quoting Bay Area

Laundry, 522 U.S. at 201), and “the limitations period

generally begins to run at the point when ‘the plaintiff

can file suit and obtain relief,’” ibid. (citation omitted).

This is consistent with the “separate-accrual rule,”

which applies to the Copyright Act’s statute of limitations, and pursuant to which “the statute of

limitations runs separately from each violation.” Ibid.

(emphasis added).

Petrella reiterated that the focus is on acts of

infringement within the last three years only:



Page 671: “[A]n 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.”



Page 677: “[A] successful plaintiff can gain

retrospective relief only three years back

from the time of suit. No recovery may be

had for infringement in earlier years.”



Page 682: “[T]he statute, § 507(b), makes

the starting trigger an infringing act

committed three years back from the

commencement of suit . . . .”

the violation occurs, or one year after the violation is discovered,

whichever is later.” (emphasis added)).

Though the Court saved, for another day, the question

of whether and when a discovery rule might apply, id.

at 670 n.4,4 that day has come: This Court should

make clear that the discovery rule does not apply.

B. Lower Court Decisions Applying

Discovery Rule Are Unpersuasive.

the

The lower courts are not correctly applying the

precedent described above (if they consider it at all)

to the Copyright Act. Instead, they are reflexively

applying the discovery rule to a statute of limitations

with no discovery accrual provision. This is illustrated

by the Fifth Circuit’s remarkable acknowledgements

in this case.

Below, the Fifth Circuit carefully reviewed all six

of its precedents that even arguably applied the

discovery rule to the Copyright Act, and concluded:

“None . . . explains why the discovery rule applies to a

added). The Fifth Circuit’s leading case applying

the discovery rule to an infringement claim did not

“endors[e] the reasoning of [the two] out-of-circuit

decisions” to which it cited, either. App. 7a-8a, 21a

n.5, 22a-23a n.6.

After marching through Fifth Circuit case law, the

court below did not offer any reasoning to support, or

Three years later, in a patent infringement case, the Court

again observed that it had “‘not passed on the question’ [of]

whether the Copyright Act’s statute of limitations is governed by”

the discovery rule. SCA, 580 U.S. at 337-38 (citation omitted).

But notably, in observing that “some claims” are subject to a

discovery rule, the examples the Court provided involved statutes

of limitations that, unlike that of the Copyright Act, expressly

include a discovery rule. See ibid. (citing 31 U.S.C. 3731(b)(1)

and 15 U.S.C. 1681p).

try to defend, the discovery rule as the correct reading

of the statute. Instead, the panel held it was bound

by the Fifth Circuit’s prior precedent, even if the

earlier decisions applied the discovery rule for no

stated reason.

The Fifth Circuit’s opinions applying the discovery

rule “merely cite other decisions; they pay little

attention to the statutory text or the Supreme Court’s

precedent.” See Everly v. Everly, 958 F.3d 442, 461-62

(6th Cir. 2020) (Murphy, J., concurring).5 This same

criticism has been leveled toward the decisions of

other Courts of Appeals, too. See, e.g., ibid. (criticizing

Roley v. New World Pictures, Ltd., 19 F.3d 479, 481

(9th Cir. 1994), for “adopt[ing] the discovery rule in an

unreasoned sentence”).

In fairness, the Fifth Circuit deserves credit for

candidly admitting that it applies the discovery rule

for no stated reason except its obligation to its own

precedent. Other circuits have been less introspective.

The most common mistake among the circuits is

that they apply the discovery rule to copyright claims

based on an incorrect presumption that the discovery

rule applies to all federal statutes of limitations. See,

This concurring opinion by Judge Murphy persuasively

explains why the discovery rule does not apply. Likewise, two of

the leading treatises on copyright law leave little doubt that

their authors believe that inferior courts have ignored Supreme

Court guidance in favor of a rule that causes confusion and

inconsistency. See 3 Melville Nimmer, Nimmer on Copyright

§ 12.05[B][2][b] (“To date, all Courts of Appeals have adopted the

discovery rule, leaving only logic in support of the injury rule.”);

6 William F. Patry, Patry on Copyright § 20:18 (undiscovered

violations of the Copyright Act “bear no resemblance” to the

limited situations where this Court has recognized that a

discovery rule may be appropriate).

e.g., Webster v. Dean Guitars, 955 F.3d 1270, 1276

(11th Cir. 2020); Cooper v. NCS Pearson, Inc., 733 F.3d

1013, 1015-16 (10th Cir. 2013); William A. Graham

Co. v. Haughey, 568 F.3d 425, 434 (3d Cir. 2009);

Comcast of Ill. X v. MultiVision Elecs., Inc., 491 F.3d

938, 944 (8th Cir. 2007); Santa-Rosa v. Combo Recs.,

471 F.3d 224, 227-28 (1st Cir. 2006); Taylor v. Meirick,

712 F.2d 1112, 1117-18 (7th Cir. 1983).6 As described

supra Section A, this Court has rejected that

presumption.

The Ninth Circuit’s discovery rule was born from

a case concerning fraudulent concealment, with no

explanation for why that equitable tolling doctrine

should be expanded to apply to all copyright claims.

Roley, 19 F.3d at 481 (citing Wood v. Santa Barbara

Chambers of Com., Inc., 507 F. Supp. 1128, 1135 (D.

Nev. 1980)); see also infra Section D. The Sixth and

Fourth Circuits have applied the Ninth Circuit’s Roley

decision with no analysis of their own. See Bridgeport

Music, Inc. v. Rhyme Syndicate Music, 376 F.3d 615,

621 (6th Cir. 2004) (citing Roley, 19 F.3d at 481);

Hotaling v. Church of Jesus Christ of Latter-Day

Saints, 118 F.3d 199, 202 (4th Cir. 1997) (citing Roley,

19 F.3d at 481).

The Third Circuit offered two additional reasons to

support the discovery rule, William A. Graham Co.,

568 F.3d at 433-37, neither of which withstands

scrutiny. First, the Third Circuit relied on an inapposite decision interpreting the statute of limitations

under the Federal Employers’ Liability Act. That

More recently, the Seventh Circuit has recognized that

Petrella casts the discovery rule into question. See Chi. Bldg.

Design, P.C. v. Mongolian House, Inc., 770 F.3d 610, 618 (7th Cir.

2014). The Seventh Circuit has not revisited the issue.

Act sought to achieve the “human[e]” objective of

providing railroad employees with remedies for onthe-job injuries, including injuries from inhaled silica

dust they may not learn about until years later. See

Urie v. Thompson, 337 U.S. 163, 170 (1949). But this

Court has never applied the “latent disease” reasoning

to intellectual property claims, TRW, 534 U.S. at 27,

Rotella, 528 U.S. at 555, and that would be an odd fit

indeed. The Copyright Act is not a “humanitarian”

statute; it does not place a thumb on the scale in favor

of plaintiffs. See Fogerty v. Fantasy, Inc., 510 U.S.

517, 526 (1994).

Second, the Third Circuit reasoned that the difference between the Copyright Act’s criminal statute of

limitations, 17 U.S.C. 507(a) (“5 years after the cause

of action arose” (emphasis added)), and its civil statute

of limitations, 17 U.S.C. 507(b) (“three years after

the claim accrued” (emphasis added)), indicates that

Congress intended for “accrues” to embrace the discovery rule. William A. Graham, 568 F.3d at 433-37.

This non sequitur is not supported by the legislative

history, see infra Section D, and “arose” is not the

opposite of the discovery rule. In fact, Petrella

suggests that neither “arose” nor “accrue” incorporates

the discovery rule: “A copyright claim thus arises or

‘accrue[s]’ when an infringing act occurs.” 572 U.S. at

670 (alteration in original; emphases added; citation

omitted).

The Second Circuit has applied the discovery rule

based on “the text and structure of the Copyright Act”

and “[p]olicy considerations,” citing the Third Circuit’s

William A. Graham decision. Psihoyos v. John Wiley

& Sons, Inc., 748 F.3d 120, 124-25 (2d Cir. 2014). But

the Second Circuit in Psihoyos did not explain what

it meant by this; its “discussion of the issue was

surprisingly brief and devoid of any reasoning at all.”

Patry, supra, § 20:20.

Though it may not be clear why the circuits cling

to the discovery rule, one thing is clear: They will

not stop until this Court tells them so. That “some

language in Petrella is perhaps consistent with the

injury rule,” Sohm, 959 F.3d at 50, was not enough for

the Second Circuit to deviate from its discovery rule

precedent. And in this case, the Fifth Circuit clung to

its discovery rule only because it has not yet been

“unequivocally overrule[d]” by this Court, not because

it has merit. App. 25a.

For this reason, the Fifth Circuit was “chary to

create a circuit split.” App. 25a. But in fact, there is

a circuit split. And it can be resolved by holding that

the discovery rule does not apply.

C. The Circuit Courts’ Refusal to Jettison the

Discovery Rule Has Led to the Split at

Issue in Warner Chappell Music.

It was prudent of the Court to grant certiorari in

Warner Chappell Music to address the circuit split

that has emerged in Petrella’s wake. But the underlying cause of the split is the circuits’ continued

adherence to the discovery rule.

In Sohm, the Second Circuit attempted to reconcile

Petrella with its prior precedent by holding that, while

a claim “accrues” when it is discovered, an infringement plaintiff may only recover damages from a threeyear “lookback” period. 959 F.3d at 51. But the rule

of Sohm has been criticized for lacking support in the

text of 17 U.S.C. 507 or the Copyright Act’s section

governing damages, 17 U.S.C. 504. See Starz, 39

F.4th at 1245-46.

In 2022, the Sohm approach was rejected by the

Ninth Circuit, which reasoned that Sohm effectively

“eviscerate[s] the discovery rule,” to which the Ninth

Circuit remains committed. Starz, 39 F.4th at 1244.

The court stated that—although, “[i]n the copyright

context, a claim accrues when an infringing act

occurs,” which happens the moment “the infringer

violates any of the exclusive rights of the copyright

owner”—“this is not the only time a claim accrues,”

and the claim will later re-accrue pursuant to the

discovery rule. Id. at 1239-40 (citations and quotation

marks omitted). Starz does not explain how the text

of § 507 supports multiple instances of accrual for a

single act of infringement; which rule applies under

what circumstances; or, if the plaintiff gets to choose

which rule applies, why any plaintiff would ever select

a rule that yields an earlier accrual date.

Most recently, the Eleventh Circuit sided with the

Ninth Circuit in rejecting the rule of Sohm. See Nealy,

supra. But in that case, “the discovery rule was

not challenged below.” Pet. for Writ of Cert., Warner

Chappell Music, Inc., No. 22-1078, at 14 (May 3, 2023).

And when the Court considers Warner Chappell Music

this Term, the question will be “limited” to the scope

of available damages “under the discovery accrual

rule applied by the circuit courts . . . .” Order, Warner

Chappell Music, No. 22-1078 (Sept. 29, 2023)

(emphasis added).

Neither of these approaches is consistent with this

Court’s precedent. By shoehorning Petrella into their

discovery rule case law, the circuits are getting it

wrong. The cleaner (and correct) way to resolve the

circuit split is for this Court to answer the question

that is antecedent to the one presented in Warner

Chappell: The discovery rule simply does not apply.

This petition is a pristine vehicle to consider that

question.

D. The Discovery Rule Leads to Inconsistent

Rulings, Contrary to the Intent of the

Drafters of the Copyright Act of 1976.

The discovery rule requires an examination of when

the plaintiff discovered or, with reasonable diligence,

should have discovered, the alleged act of infringement. “One can never be sure exactly when on that

continuum of awareness a plaintiff knew or should

have known enough that the limitations period should

have begun.” Hamilton v. 1st Source Bank, 928 F.2d

86, 88 (4th Cir. 1990).7

This imprecise inquiry leads to unpredictable results at the district court, especially for the substantial

volume of cases that concern the use of content on the

internet.

Take, for example, cases from the Southern District

of New York, a district with a high volume of copyright

cases due to it being a hub for media and entertainment. On one end, some judges hold, on a Rule 12(b)(6)

motion, that some plaintiffs (at least, “seasoned litigators”) are presumed to be on “inquiry notice” at the

Though lower courts sometimes label the discovery rule an

“objective” standard, it is fact-intensive and prone to credibility

and other fact disputes. Lorentz v. Sunshine Health Prods., Inc.,

No. 09-61529-CIV, 2010 WL 3733986, at *5, *6 (S.D. Fla. Aug. 27,

2010) (discovery rule a “hotly contested issue of material fact”

that “involves issues of credibility and weighing of evidence”),

report and recommendation adopted, No. 09-61529-CIV, 2010 WL

3733985 (S.D. Fla. Sept. 23, 2010); see also Polar Bear Prods.,

Inc. v. Timex Corp., 384 F.3d 700, 707 (9th Cir. 2004) (“[T]he date

of discovery is an issue of fact.”), as amended on denial of reh’g

and reh’g en banc (Oct. 25, 2004), opinion amended on denial of

reh’g, No. 03-35188, 2004 WL 2376507 (9th Cir. Oct. 25, 2004).

time of the allegedly infringing use, and thus they

“should have discovered” an infringement as soon as it

was displayed on the internet. See, e.g., Minden

Pictures, Inc. v. Buzzfeed, Inc., 390 F. Supp. 3d 461,

467 (S.D.N.Y. 2019); Lixenberg v. Complex Media, Inc.,

No. 22-cv-354, 2023 WL 144663, at *3 (S.D.N.Y.

Jan. 10, 2023); Michael Grecco Prods., Inc. v.

RADesign, Inc., No. 21-cv-8381, --- F. Supp. 3d ----,

2023 WL 4106162, at *2-3 (S.D.N.Y. June 20, 2023),

appeal docketed, No. 23-1078 (2d Cir. July 20, 2023).

On the other end, some judges allow such cases to

proceed to and, perhaps, through discovery on the

theory that there is no “general duty to police the

internet for infringements.” See, e.g., Parisienne v.

Scripps Media, Inc., No. 19-cv-8612, 2021 WL 3668084,

at *4 (S.D.N.Y. Aug. 17, 2021). As these cases reason,

the statute of limitations turns on nebulous inquiries

like whether the plaintiff was on “inquiry notice,”

or whether the plaintiff had been presented with

“storm warnings.” Id. at *3; see also Hirsch v. Rehs

Galleries, Inc., No. 18-cv-11864, 2020 WL 917213, at

*5 (S.D.N.Y. Feb. 26, 2020) (motion to dismiss denied;

fact that plaintiff hired a firm that “specializes in

searching the internet for infringing conduct” not

enough to put plaintiff on notice).

Either way, the discovery rule spawns inquiries and

sub-inquiries that are nowhere to be found in the

infringement “reasonable”? Garcia v. Coleman, No.

C-07-2279, 2008 WL 4166854, at *6 (N.D. Cal. Sept. 8,

2008) (concluding that the “lack of knowledge was

reasonable under the circumstances” (citation omitted)).

Is it enough that a plaintiff was on “inquiry notice”?

Most say yes, but some say no. UMG Recordings, Inc.

v. Glob. Eagle Ent., Inc., No. CV 14-3466, 2016 WL

3457179, at *1 (C.D. Cal. Apr. 20, 2016). Was there a

“storm warning” or two and, if so, did the plaintiff see

those “warnings”? 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) (“very close question” of whether

plaintiff “was aware or should have been aware of

storm warnings”). Opting for a different analogy,

some courts ask whether there was “smoke necessary

to put [the plaintiff] 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) (alteration

in original; citation omitted). And do unrelated acts

of infringement provide the necessary “smoke”? Sometimes, yes. Ibid.; Fahmy v. Jay-Z, 835 F. Supp. 2d 783,

790 (C.D. Cal. 2011). Sometimes, no. Wakefield v.

Olenicoff, No. SACV 12-2077, 2015 WL 1460152, at *3

(C.D. Cal. Mar. 30, 2015), aff’d in relevant part, rev’d

in part, 679 F. App’x 591 (9th Cir. 2017). And when,

precisely, were the facts constituting that “notice,”

“warning,” or “smoke” sufficiently clear to the plaintiff

such that the statute of limitations should start to

run?

These considerations are absent from Section 507(b),

which simply states that a claim must be brought

within three years of when it “accrues.”

This is more than a practical problem: Such confusion and uncertainty are contrary to a core intent of

the Copyright Act of 1976.

Congress adopted the statute of limitations in

Section 507(b) to “render uniform and certain the time

within which copyright claims could be pursued.”

Petrella, 572 U.S. at 670. The statutes of limitations

in the Copyright Act of 1976 were carried over,

verbatim in substance, from that of the Copyright Act

of 1909, which had been amended in 1957 to add a

statute of limitations for civil claims. Id. at 670 n.3.

The Senate Report for the 1957 Act indicates that

all witnesses before the House Judiciary Committee

“agreed to a 3-year uniform period, feeling that this

represents the best balance attainable to this type of

action.” Auscape Int’l v. Nat’l Geographic Soc’y, 409

F. Supp. 2d 235, 245 (S.D.N.Y. 2004) (citing S. Rep.

No. 85-1014, 85th Cong., 1st Sess. 2 (1957)). The time

to locate the infringement is baked in to the three-year

period; “generally[,] the person injured receives reasonably prompt notice or can easily ascertain any

infringement of his rights,” so “3 years is an

appropriate period for a uniform statute of limitations

. . . .” Ibid. (citation omitted).8

From this, it can be inferred that Congress intended

for (i) a “fixed” statute of limitations, not one that

“would depend on something as indefinite as when

the copyright owner learned of the infringement,” and

(ii) “the three-year period to begin at the date of

infringement.” Ibid.; see also Hamilton, 928 F.2d at

88 (“A discovery rule . . . substitutes a vague and

uncertain period for a definite one.”).

Moreover, a “substantial focus” of the Congressional

hearings was on whether to codify equitable doctrines,

To the extent it could be argued that it is more difficult to

locate infringements on the internet than in the analog world

of the 1976 Act, (i) that policy consideration should be left to

Congress, and (ii) that is likely untrue; for example, there are now

technological means (which are becoming increasingly sophisticated) by which authors can search the internet for unauthorized

uses of their works. See, e.g., Pixsy, https://www.pixsy.com/ (last

visited Oct. 24, 2023); ImageRights, https://www.imagerights.

com/ (last visited Oct. 24, 2023); Copytrack, https://www.copy

track.com/ (last visited Oct. 24, 2023).

including fraudulent concealment. But “[i]f an infringement claim would not accrue until the copyright

holder knew of the infringement, the question whether

the holder’s ignorance was attributable to simple ignorance or concealment would have been immaterial.”

Auscape, 409 F. Supp. 2d at 246-47.

Further, under the 1909 Act (as amended in 1957),

the word “accrue” referred to the incident-of-injury

rule, not a discovery rule. See Prather v. Neva

Paperbacks, Inc., 446 F.2d 338, 339 (5th Cir. 1971)

(rejecting application of a “Blameless Ignorance rule”

to “toll the three year statute of limitations”; claim

accrued at the time of “the last publication of the

alleged infringing work”); Prather v. Camerarts Publ’g

Co., No. 68 C 1496, 1972 WL 17668, at *4 (N.D. Ill.

Apr. 19, 1972) (claims untimely where infringing use

was “neither published, sold nor distributed within

three years of the time this cause was commenced”),

aff’d, 481 F.2d 1406 (7th Cir. 1973); Baxter v. Curtis

Indus., Inc., 201 F. Supp. 100, 101 (N.D. Ohio 1962)

(“[T]he period of limitation began from the date of

the last infringing act.”). Congress intended for the

statutes of limitations under the 1976 Act to apply just

as they had applied under the prior Act. See Stone v.

Williams, 970 F.2d 1043, 1047 (2d Cir. 1992); Patry,

supra, § 20:13. And Hearst is not aware of any case

applying the discovery rule under the prior Act.

Congress, in enacting the 1976 Act, would have been

aware of this case law interpreting the word “accrue”

under the prior Act. It could have added a discovery

rule. See supra note 4. It did not do so.

CONCLUSION

The Court should grant this petition for certiorari.

Respectfully submitted,

JONATHAN R. DONNELLAN

Counsel of Record

RAVI V. SITWALA

NATHANIEL S. BOYER

THE HEARST CORPORATION

300 West 57th Street

New York, NY 10019

(212) 649-2051

jdonnellan@hearst.com

Counsel for Petitioners

November 2, 2023

APPENDIX

APPENDIX TABLE OF CONTENTS

Page

APPENDIX A: OPINION, U.S. Court of Appeals

for the Fifth Circuit (April 13, 2023) ..................

APPENDIX B: ORDER, U.S. District Court for

the Southern District of Texas (July 5, 2022) ....

26a

APPENDIX C: ORDER, U.S. Court of Appeals

for the Fifth Circuit (September 22, 2023) .........

32a

APPENDIX D: JUDGMENT, U.S. Court of

Appeals for the Fifth Circuit (October 2, 2023) ..

34a

APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

[Filed: April 13, 2023]

————

No. 22-20333

————

ANTONIO MARTINELLI,

Plaintiff-Appellee,

versus

HEARST NEWSPAPERS, L.L.C.;

HEARST MAGAZINE MEDIA, INCORPORATED,

Defendants-Appellants.

————

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:21-CV-3412

————

Before BARKSDALE, SOUTHWICK, and HIGGINSON,

Circuit Judges.

STEPHEN A. HIGGINSON, Circuit Judge:

A civil action for copyright infringement under the

three years after the claim accrued.” 17 U.S.C. § 507(b).

In Graper v. Mid-Continent Casualty Co., our court

decided that this limitations period starts running

“once the plaintiff knows or has reason to know of the

injury upon which the claim is based,” which is also

known as the discovery rule. 756 F.3d 388, 393 (5th Cir.

2014) (cleaned up). Today, appellants Hearst Newspapers,

L.L.C. and Hearst Magazine Media, Incorporated

(collective, “Hearst”) ask us to replace the discovery

rule with a holding that the clock starts when an act

of copyright infringement occurs. Hearst argues that

Graper is no longer binding in light of the Supreme

Court’s decisions in Petrella v. Metro-Goldwyn-Mayer,

Inc., 572 U.S. 663 (2014), and Rotkiske v. Klemm, 140

S. Ct. 355 (2019). Since neither of those cases unequivocally overruled Graper, we AFFIRM.

In 2015, Sotheby’s International Realty commissioned

Antonio Martinelli to photograph Lugalla, an Irish

estate owned by the Guinness family.1 Martinelli took

seven photographs of the property, and Lugalla was

subsequently listed for sale.

On March 7, 2017, Hearst Newspapers used

Martinelli’s photographs in a web-only article, “The

‘Guinness Castle’ in Ireland Is on the Market,” which

Hearst Newspapers published on websites associated

with the Houston Chronicle, the San Francisco Chronicle,

the Times Union, the Greenwich Time, and The

Middletown Press. Six days later, Hearst Newspapers

again used the photographs in a web-only article

available on those websites. The next day, a different

entity called Hearst Communications used four of the

photographs in a web-only article published on a

website associated with Elle Décor magazine.

Martinelli first discovered the Houston Chronicle

article on November 17, 2018. Between September

2019 and May 2020, Martinelli discovered the article

on the websites of the San Francisco Chronicle, the

We adopt the parties’ spelling of the estate’s name, even

though the more widely accepted spelling appears to be “Luggala.”

Times Union, the Greenwich Time, and The Middletown

Press. On February 19, 2020, Martinelli discovered the

article on the Elle Décor website. Hearst has stipulated that Martinelli could not have discovered those

uses of his photographs with reasonable diligence at

earlier times.

On October 18, 2021, Martinelli sued Hearst Newspapers for copyright infringement, alleging that the

Houston Chronicle’s website had used Martinelli’s

photographs without permission. On February 11,

2022, Martinelli amended his complaint to bring a

Media, Inc.—the current owner of the Elle Décor

copyrights—and to allege that his photographs were

also used on websites associated with the San

Francisco Chronicle, the Times Union, the Greenwich

Time, and The Middletown Press. Martinelli brought

these claims within three years of discovering the

infringements but more than three years after the

infringements occurred.

The parties cross-moved for summary judgment,

stipulating that Hearst committed copyright infringement and that Martinelli would be entitled to $10,000

if he prevails. Hearst argued that intervening Supreme

Court decisions “undermined” this circuit’s discovery

rule and that Martinelli’s claims were untimely because

they accrued when Hearst infringed Martinelli’s

copyrights. The district court rejected this argument,

followed Graper, granted Martinelli’s motion for summary judgment, and denied Hearst’s motion.

Hearst timely appealed.

II.

On appeal, Hearst argues that Martinelli’s claims

are time-barred because a claim accrues under § 507(b)

when the infringement occurs. Hearst recognizes that

under this circuit’s precedents, the § 507(b) limitations

period starts when the plaintiff “knows or has reason

to know of the injury upon which the claim is based.”

Graper, 756 F.3d at 393 (cleaned up). Yet Hearst contends that the Supreme Court’s decisions in Petrella

and Rotkiske “undermined the reasoning of [this

circuit’s] precedents” such that the rule of orderliness

does not require this court to follow the discovery rule.

Petrella and Rotkiske had no such effect. Accordingly,

as the district court concluded, Martinelli’s claims

were timely under Graper.

Under this circuit’s rule of orderliness, “one panel . . .

may not overturn another panel’s decision, absent an

intervening change in the law, such as by a statutory

amendment, or the Supreme Court, or our en banc

court.” Jacobs v. Nat’l Drug Intel. Ctr., 548 F.3d 375,

378 (5th Cir. 2008); see United States v. Alcantar, 733

F.3d 143, 145-46 (5th Cir. 2013). “[F]or a Supreme

Court decision to change our [c]ircuit’s law, it must . . .

unequivocally overrule prior precedent.” Tech. Automation

Servs. Corp. v. Liberty Surplus Ins. Corp., 673 F.3d 399,

405 (5th Cir. 2012) (cleaned up); Brotherhood of

Locomotive Eng’rs & Trainmen v. Union Pac. R.R. Co.,

31 F.4th 337, 344 (5th Cir. 2022) (similar). Neither “a

mere ‘hint’ of how the [Supreme] Court might rule in

the future,” Alcantar, 733 F.3d at 146, nor a decision

that is “merely illuminating with respect to the case

before [us]” will permit a subsequent panel to depart

from circuit precedent, Tech. Automation, 673 F.3d

at 405.

Following these principles, where an intervening

Supreme Court decision “fundamentally changes the

focus of the relevant analysis,” our precedents relying

on that analysis are “implicitly overruled.” In re

Bonvillian Marine Serv., Inc., 19 F.4th 787, 792 (5th

Cir. 2021) (cleaned up). But this is only true when the

changed analysis clearly applies to the case before us,

such that we are “unequivocally directed by controlling

Supreme Court precedent” to “overrule the decision

of [the] prior panel,” United States v. Zuniga-Salinas,

945 F.2d 1302, 1306 (5th Cir. 1991); see Stokes v. Sw.

Airlines, 887 F.3d 199, 204 (5th Cir. 2018) (“Such a

change occurs, for example, when the Supreme Court

disavows the mode of analysis on which our precedent

relied.”); Gonzalez v. Thaler, 623 F.3d 222, 226 (5th Cir.

2010) (examining whether a Supreme Court decision

“establishes a rule of law inconsistent with our own”

(cleaned up)).

The parties identify six cases, three of which are

published and binding, in which this circuit arguably

held that a copyright infringement claim accrues “once

the plaintiff knows or has reason to know of the injury

upon which the claim is based.” Graper, 756 F.3d at 393

(cleaned up); see Pritchett v. Pound, 473 F.3d 217, 220

(5th Cir. 2006); Prather v. Neva Paperbacks, Inc., 446

F.2d 338, 341 (5th Cir. 1971); Aspen Tech., Inc. v. M3

Tech., Inc., 569 F. App’x 259, 264 (5th Cir. 2014) (per

curiam) (unpublished); Jordan v. Sony BMG Music

Ent. Inc., 354 F. App’x 942, 945 (5th Cir. 2009) (per

curiam) (unpublished); Groden v. Allen, 279 F. App’x

290, 294 (5th Cir. 2008) (per curiam) (unpublished).

Out of our three published authorities, only Graper

squarely held the discovery rule applies to a copyright

infringement claim. See 756 F.3d at 393. None of these

cases explains why the discovery rule applies to a

Graper resolved an insurance coverage dispute. The

insureds were sued for copyright infringement, and

after they tendered the claim to the insurer, the

insurer agreed to defend them subject to a reservation

of rights. Id. at 390. One of the bases for exclusion of

coverage was “that the injury may not have occurred

during policy coverage dates.” Id. at 391. The insureds

then retained their own counsel to defend the copyright

infringement suit because “they believed there was a

disqualifying conflict of interest between them and

any counsel [the insurer] chose,” and they filed a

separate declaratory action to determine their rights

under the relevant policies. Id.

On appeal, the only issue was “whether [the insurer]

was obligated to pay for the [i]nsureds’ selected

counsel to defend the [copyright infringement] claims.”

Id. The court explained that an obligation to pay for an

insured’s selected counsel arises if the insurer’s chosen

counsel has a disqualifying conflict of interest. Id. at

392. Such a conflict of interest exists if “the facts to be

adjudicated in the underlying lawsuit are the same

facts upon which coverage depends.” Id. (cleaned up).

The insureds argued that because they defended the

“copyright claims on grounds that the claims ‘accrued’

outside the applicable time provided by the statute of

limitations” and because the insurer “reserved the

right to deny coverage of the . . . claims on grounds that

the alleged acts of infringement . . . ‘occurred’ outside

the time the policy was in effect,” “many of the same

facts [would] determine both the [i]nsureds’ liability

and the [i]nsureds’ coverage.” Id. at 393.

We disagreed, holding that no disqualifying conflict

of interest existed because the limitations period for a

the infringement is discovered, not the date that the

infringement occurs. Id. at 393-94. “In litigating the

[i]nsureds’ statute of limitation defense,” counsel

“would only need to have adjudicated the fact of when

the claim accrued, not the fact of when the acts of

infringement occurred,” id. at 393 (emphasis in

original), and we explained that “[a] claim accrues once

the plaintiff knows or has reason to know of the injury

upon which the claim is based,” id. (quotation marks

and alterations omitted) (quoting Jordan, 354 F. App’x

at 945). Although adjudication of the date when the

infringement was discovered “would signal, in subsequent litigation, that the infringing conduct occurred

before that date of discovery,” “such a determination . . .

would lack the specificity necessary to decide whether

the claim was covered under the [i]nsureds’ policy.” Id.

(emphasis omitted).

Although it was necessary to the decision in Graper

that the discovery rule controlled the limitations

period for a copyright infringement claim, Graper did

not explain why the discovery rule applied. Instead, as

noted above, the discovery rule holding in Graper

quoted from our unpublished decision in Jordan v.

Sony BMG Music Entertainment Inc. See 354 F. App’x

at 945.2 At most, Graper included a footnote recogniz-

In turn, Jordan does not explain why the discovery rule

applies to copyright infringement claims and instead quotes from

our published decision in Pritchett v. Pound. 354 F. App’x at 945

(quoting Pritchett, 473 F.3d at 220). But Pritchett involved a

rule applied to a copyright infringement claim, and also did not

explain why the discovery rule applied to the claims at issue. See

Pritchett, 473 F.3d at 220. Instead, it cited to a Second Circuit case

that similarly does not explain why the discovery rule applies to

ing that “[o]ther circuits agree that this is the proper

inquiry” without endorsing the reasoning of those outof-circuit decisions. Graper, 756 F.3d at 393 n.5 (citing

Cooper v. NCS Pearson, Inc., 733 F.3d 1013 (10th Cir.

2013); and William A. Graham Co. v. Haughey, 568

F.3d 425, 433 (3d Cir. 2009)).

Two other recent unpublished cases from this court

apply the discovery rule to copyright infringement

claims without giving a rationale. See Aspen, 569 F.

App’x at 264 (stating that “the discovery rule . . .

appl[ies] to . . . infringement claims”); Groden, 279 F.

App’x at 294 (stating that “the relevant inquiry” under

§ 507(b) “is when the claim accrued, not when the

infringement occurred”). Both cases rely on our earlier

published decision in Prather v. Neva Paperbacks, Inc.

See Aspen, 569 F. App’x at 264 n.8.; Groden, 279 F.

App’x at 294.

However, Prather concerned whether the “fraudulent

concealment” of a copyright infringement cause of

action “by the defendant will [equitably] toll the

statute of limitations” under the Copyright Act as

amended in 1957.3 446 F.2d at 341. The district court

a copyright ownership claim. See id. (citing Est. of Burne Hogarth

v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 165 (2d Cir. 2003)).

As the Supreme Court explained in Petrella, “[u]ntil 1957,

federal copyright law did not include a statute of limitations for

civil suits,” and so federal courts “used analogous state statutes

of limitations.” 572 U.S. at 669. In 1957, Congress added a threeyear limitations period for civil claims, which read, “[n]o civil

action shall be maintained under [the Act] unless the same is

commenced within three years after the claim accrued.” See Act

of Sept. 7, 1957, Pub. L. 85–313, 71 Stat. 633, 17 U.S.C. § 115(b)

(1958 ed.). Essentially the same language was recodified in the

[the Act] unless it is commenced within three years after the

claim accrued.” 17 U.S.C. § 507(b); see Petrella, 572 U.S. at 670 n.3

had found “that the last publication of the alleged

infringing work occurred in June, 1964, but [the] suit

was not filed until August, 1969,” and “no circumstances . . . excuse[d] plaintiff ’s lack of knowledge of

the infringement.” Id. at 339. On appeal, we considered

only whether the plaintiff was entitled to equitable

tolling. Id. at 339-41.

At the outset, we refused to apply a Florida-law

equitable doctrine called the “Blameless Ignorance

rule” because enforcing “a peculiarly local doctrine”

would “frustrate the Congressional goal of homogeneity”

in enacting a uniform three-year limitations period. Id.

at 339-40. Then, we considered whether the federallaw fraudulent concealment doctrine tolled the limitations period. Id. at 340-41. The plaintiff argued that

the defendants had concealed the existence of a book

that infringed his copyrights “and prevented him from

obtaining a copy of that book.” Id. at 340. But the court

concluded that the defendants had not fraudulently

concealed the book because the plaintiff knew about

the book all along. Id. at 341. That the “plaintiff was

unable to procure a copy of the [allegedly infringing

book was] insufficient to show the successful concealment necessary to toll the statute of limitations.” Id. In

more general terms, we said that “[o]nce [a] plaintiff is

on inquiry that it has a potential claim, the statute

can start to run,” even if the plaintiff has not yet

“obtain[ed] a thorough understanding of all the facts.”

Id. (citation omitted). Prather borrowed this principle

from a decision of the Court of Claims, which explained

that “[t]his standard is in line with the modern

philosophy of pleading which has reduced the require(“The Copyright Act was pervasively revised in 1976, but the

three-year look-back statute of limitations has remained materially unchanged.”).

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ments of the petition and left for discovery and other

pretrial procedures the opportunity to flesh out claims

and to define more narrowly the disputed facts and

issues.” Id. (quoting Japanese War Notes Claimants

Ass’n of Philippines, Inc. v. United States, 373 F.2d 356,

359 (Ct. Cl. 1967)). As Prather put it, “[t]he bells do not

toll the limitations statute while one ferrets the facts.”

Id.

Thus, in Prather, we appear to have assumed that

the statute of limitations would bar the plaintiff ’s

claim unless the fraudulent concealment doctrine

applied. And since the plaintiff knew about the alleged

infringement, he could not assert that the defendants

had concealed it. So Prather narrowly held that a

plaintiff ’s inability to obtain evidence of infringement

does not equitably toll the limitations period under a

fraudulent concealment theory. The issue of whether

the limitations period of the Copyright Act as amended

in 1957 started running when the defendants published

the book or when the plaintiff discovered the book was

not clearly raised or resolved.

In sum, Graper is the only precedent binding this

court to apply the discovery rule with respect to the

§ 507(b) limitations period for copyright infringement

claims.

Hearst argues that the panel “need not . . . follow[]”

this circuit’s discovery rule because cases like Graper

“cannot be reconciled” with Petrella and Rotkiske. But

Petrella and Rotkiske did not “unequivocally overrule”

Graper, either by holding that the limitations period

in § 507(b) starts running when infringement occurs

or by “fundamentally chang[ing] the focus of the relevant

analysis” with respect to the Copyright Act. Bonvillian,

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19 F.4th at 792 (cleaned up). To the contrary, Petrella

and Rotkiske leave open the possibility that in a later

case, the Supreme Court might decide that the

discovery rule does apply to § 507(b).

In Petrella, the Court decided under what circumstances a defendant can assert the equitable defense

of laches—an “unreasonable, prejudicial delay in

commencing suit”—against a copyright infringement

claim that is brought within § 507(b)’s limitations

period. 572 U.S. at 667. The Court held that although

laches cannot preclude a timely claim for damages,

in “extraordinary circumstances,” laches may bar

equitable relief. Id. at 667-68. But the Court left for

another day the question of whether discovery or

occurrence of an infringing act triggers § 507(b).

Before reaching the question of whether a laches

defense was available, the Court explained how the

§ 507(b) limitations period works. Id. at 669-72. The

Court noted that “[a] claim ordinarily accrues when a

plaintiff has a complete and present cause of action,”

and then stated that “[a] copyright claim thus arises

or accrues when an infringing act occurs.” Id. at 670

(cleaned up). However, in a corresponding footnote, the

Court clarified that “[a]lthough we have not passed

on the question, nine Courts of Appeals have adopted,

as an alternative to the incident of injury rule, a

‘discovery rule,’ which starts the limitations period

when the plaintiff discovers, or with due diligence

should have discovered, the injury that forms the basis

for the claim.” Id. at 670 n.4 (cleaned up).

Although the Court appears to have assumed

without deciding that the limitations period starts to

run when the infringement occurs, that assumption

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was not necessary to the Court’s decision. The Court

held that laches may not be invoked as a bar to

damages under the Copyright Act because § 507(b)

“itself takes account of delay.” Id. at 677. Specifically,

under “the separate-accrual rule,” “the statute of

limitations runs separately from each violation” of the

starts a new limitations period.” Id. at 671. Because “a

successful plaintiff can gain retrospective relief only

three years back from the time of suit,” the plaintiff

could not reach the defendant’s “returns on its investments” realized earlier than three-years prior to the

date of the suit. Id. at 677. None of this analysis

requires that the limitations period start running with

the infringing act—only that the plaintiff ’s recovery be

limited to a three-year window “from the time of suit,”

and that separate infringing acts trigger separate

limitations periods. Id.

In rebutting the counterargument that laches

should be treated like equitable tolling and read into

every federal statute of limitations, the Court said that

unlike tolling, laches “originally served as a guide

when no statute of limitations controlled the claim”

and “can scarcely be described as a rule for interpreting a statutory prescription.” Id. at 681-82. To

illustrate the point, the Court noted that § 507(b)

“makes the starting trigger an infringing act committed three years back from the commencement of suit,

while laches, as conceived by [the court of appeals] and

advanced by [the respondent], makes the presumptive

trigger the defendant’s initial infringing act.” Id. at

682 (emphasis omitted). But the Court’s gloss on what

condition triggers the limitations period was not

necessary to the Court’s point that § 507(b) contained

a limitations period, and so there was no need to use

laches “as a guide.” Id. at 681. After all, regardless of

13a

whether the discovery or occurrence of infringement

starts the clock, what mattered to the Court was that

the “limitations period . . . coupled to the separateaccrual rule . . . . allows a copyright owner to defer suit

until she can estimate whether litigation is worth the

candle.” Id. at 682-83.

The Court later confirmed that Petrella didn’t

disturb the discovery rule in SCA Hygiene Products

Aktiebolag v. First Quality Baby Products, LLC, 580

U.S. 328 (2017). There, the Court decided that laches

could not be asserted as a defense against a timely

claim for damages from patent infringement under the

Patent Act, 35 U.S.C. § 286. SCA Hygiene, 580 U.S. at

346. The infringer tried to distinguish Petrella on the

basis that unlike § 507(b), § 286 was not a “true statute

of limitations” because it “runs backward from the

time of suit.” Id. at 336 (citation omitted). The Court

rejected this distinction, explaining that Petrella described § 507(b) as “a three year look-back limitations

period” that “allows plaintiffs to gain retrospective relief

running only three years back from the date the

complaint was filed.” Id. at 336-37 (cleaned up and

emphasis omitted). Nor was the Court persuaded

that § 286 of the Patent Act is different from § 507(b)

because § 286 “turns only on when the infringer is

sued, regardless of when the patentee learned of the

infringement.” Id. at 337 (citation omitted). The Court

quoted Petrella that “a claim ordinarily accrues when

a plaintiff has a complete and present cause of action,”

and further explained that “[w]hile some claims are

subject to a ‘discovery rule’ . . . that is not a universal

feature of statutes of limitations.” Id. (cleaned up). The

Court further recognized that “in Petrella, we specifically noted that ‘we have not passed on the question’

whether the Copyright Act’s statute of limitations is

14a

governed by such a rule.” Id. at 337-38 (citation

omitted).

Hearst acknowledges that Petrella did not decide

whether the statute of limitations in § 507(b) starts

running when the infringing act occurs or is discovered.

So instead of arguing that Petrella unequivocally overruled Graper, Hearst contends that “the Court’s

articulation of when claims generally accrue, and its

explanation [of] how statutes of limitations generally

work, leads to the conclusion that [the discovery rule]

does not apply” to § 507(b).4 Petrella does not lead to

that conclusion. But even if it did, under this circuit’s

rule of orderliness, we would still be bound to Graper.

Petrella’s general statements about statutes of limitation and the separate-accrual rule leave room for

caselaw holding that the discovery rule applies to

§ 507(b). Petrella said that limitations periods “generally

begin[] to run at the point when the plaintiff can file

suit and obtain relief,” assumed that “[a] copyright

claim . . . accrues when an infringing act occurs,” and

reasoned that “each infringing act starts a new

limitations period” under the separate-accrual rule.

Petrella, 572 U.S. at 670-71 (cleaned up). But the Court

did “not pass[]” on whether the § 507(b) limitations

period is triggered by discovery of infringement. Id. at

Graper issued on June 24, 2014, about a month after Petrella.

See 572 U.S. 663 (decided May 19, 2014). However, as Hearst

points out, just because Graper came out after Petrella doesn’t

mean that Graper actually decided that the discovery rule

survives Petrella. See Gahagan v. USCIS, 911 F.3d 298, 302 (5th

Cir. 2018). Graper did not mention Petrella or address whether

Petrella foreclosed the discovery rule, and no party appears to

have brought Petrella to the court’s attention. The issue of

whether Petrella unequivocally overruled the discovery rule is

accordingly before us as a matter of first impression.

15a

670 n.4; see SCA Hygiene, 580 U.S. at 337. Instead, the

Court left open the possibility that at the time of

§ 507(b)’s enactment, a copyright infringement claim

accrued like claims arising from “latent disease and

medical malpractice,” TRW Inc. v. Andrews, 534 U.S.

19, 27 (2001), which are “unknown or unknowable

until the injury manifests itself,” Rotella v. Wood, 528

U.S. 549, 556 (2000) (citation omitted), and for which

the Court has “recognized a prevailing discovery rule,”

TRW Inc., 534 U.S. at 27.

However, even accepting as true that Petrella “leads

to the conclusion that” the discovery rule does not

apply to § 507(b), the rule of orderliness still requires

us to follow Graper. As set forth above, Petrella’s

statements suggesting that a copyright infringement

claim accrues when the infringement occurs are dicta,

which do not bind us and are therefore at most “merely

illuminating” with respect to this case. Tech. Automation,

673 F.3d at 405.

This court’s decision in Energy Intelligence Group,

Inc. v. Kayne Anderson Capital Advisors, L.P. does not

compel a different result. 948 F.3d 261 (5th Cir. 2020).

There, we did not interpret Petrella as unequivocally

overruling Graper, and we certainly did not bind

future courts to such an interpretation. Rather, we

decided that “mitigation is not an absolute defense to

statutory damages under the Copyright Act.” Id. at

275. Before reaching that holding, we explained that

the viability of a mitigation defense turned on “whether

the Copyright Act contains a statutory purpose” contrary

to “the common-law principle of mitigation,” and we

summarized Petrella because “statutory purpose and

the nature of the common-law defense asserted . . .

were central to [that case].” Id. at 270-71. In our recap

of Petrella, we said in a footnote that “[t]he rule of

16a

separate accrual, as discussed in Petrella, takes as

given that a copyright claim accrues when an infringing act occurs (the ‘incident of injury’ rule) and treats

each successive infringing act as a new, independent

wrong with its own limitations period.” Id. at 271 n.5.

This footnote simply reiterates that Petrella assumed

without deciding that a copyright infringement claim

accrues when the infringement occurs. It does not say

that Graper is bad law. Indeed, even if we are bound to

this claim that Petrella assumed that the “incident of

injury” rule applies, as discussed above, it might still

be that the limitations period in § 507(b) starts

running at the discovery of each infringing act.

In any event, the Energy Intelligence footnote is

dicta to which the rule of orderliness does not apply.

Netsphere, Inc. v. Baron, 799 F.3d 327, 333 (5th Cir.

2015) (citation omitted). Our decision that mitigation

is not an absolute defense to statutory damages was

based on the insight that statutory damages under the

actual damages,” “serve purposes that include deterrence,”

and “are therefore distinct from the type of damages

that are typically calculated according to rules of

mitigation.” Energy Intel. Grp., 948 F.3d at 274.

Although we rejected the defendant’s argument that

the “harm . . . for purposes of its mitigation defense,

was [its] continuing infringing conduct” because

“Petrella unequivocally approved the rule of separate

accrual and held that every act of copyright infringement is an independently actionable legal wrong,” id.,

this part of our analysis depended solely on the fact

that the separate-accrual rule creates a separate

limitations period for each infringing act—not that the

limitations period starts running when each separate

infringement occurs. The first part of the footnote

about the separate-accrual rule—“[t]he rule of separate

17a

accrual, as discussed in Petrella, takes as given that a

(the ‘incident of injury’ rule),” id. at 271 n.5—“could

have been deleted without seriously impairing the

analytical foundations of the holding and being

peripheral, may not have received the full and careful

consideration of the court that uttered it,” Netsphere,

Inc., 799 F.3d at 333 (citation omitted). We know that

this is true because if we “turn the questioned proposition around . . . to assert whatever alternative proposition

the court rejected in its favor”—namely, that the

separate limitations periods start running when the

infringing acts are discovered—“the insertion of the

rejected proposition. . . would not require a change in

either the court’s judgment or the reasoning that

supports it.” Pierre N. Leval, Judging Under the

Constitution: Dicta About Dicta, 81 N.Y.U. L. REV.

1249, 1257 (2006).

Next, Hearst argues that Rotkiske “fundamentally

changes the focus of the relevant analysis” by holding

that “the discovery rule does not generally apply to

statutes of limitations absent clear language in the

statute to that effect.” But Hearst misconstrues Rotkiske

and overstates the extent to which Rotkiske governs

this court’s interpretation of the Copyright Act.

Rotkiske held that the statute of limitations in the

Fair Debt Collection Practices Act (FDCPA), 15 U.S.C.

§ 1692k(d), “begins to run on the date on which the

alleged FDCPA violation occurs, not the date on which

the violation is discovered.” 140 S. Ct. at 358. To start,

the Court considered whether § 1692k applied “a

general discovery rule as a principle of statutory

interpretation.” Id. at 360. The Court explained that

“we begin by analyzing the statutory language,” and

18a

“[i]f the words of a statute are unambiguous, this first

step of the interpretive inquiry is our last.” Id. The

limitations provision in the FDCPA says that an action

may be brought “within one year from the date on

which the violation occurs.” 15 U.S.C. § 1692k(d). The

Court held that this “language unambiguously sets the

date of the [FDCPA] violation as the event that starts

the one-year limitations period.” Rotkiske, 140 S. Ct.

at 360.

Given § 1692k(d)’s unambiguous text, the Court

refused “to read in a provision stating that [the]

limitations period begins to run on the date an alleged

FDCPA violation is discovered.” Id. The Court called

such an attempt to add a discovery rule into a statute

where Congress did not include one a “bad wine of

recent vintage.” Id. (quoting TRW Inc., 534 U.S. at 37

(Scalia, J., concurring in judgment)). Although “at the

time Congress enacted the FDCPA, many statutes

included provisions that . . . would begin the running

of a limitations upon the discovery of a violation,

injury, or some other event,” Congress did not say as

much in § 1692k. Id. at 361 (emphasis omitted). Thus,

the Court declined “to second-guess Congress’ decision

to include a ‘violation occurs’ provision, rather than a

discovery provision, in § 1692k(d).” Id.

The Court also noted that “[i]f there are two

plausible constructions of a statute of limitations, we

generally adopt the construction that starts the

time limit running when the cause of action accrues

because Congress legislates against the standard rule

that the limitations period commences when the plaintiff has a complete and present cause of action.” Id. at

360 (internal quotation marks and alteration omitted)

(quoting Graham Cnty. Soil & Water Conservation

Dist. v. United States ex rel. Wilson, 545 U.S. 409, 418-

19a

19 (2005)). But because the Court decided that § 1692k

was unambiguous, it had no occasion in Rotkiske to

apply this general rule.

Therefore, contrary to Hearst’s position, Rotkiske did

not introduce a clear statement rule that a limitations

period runs from the occurrence of the injury unless

the statute expressly says that the discovery rule

applies. Rather, Rotkiske identified how to resolve the

limitations question in two categories of cases. First,

in cases where a limitations period is unambiguous

with respect to what conditions starts the clock

running, the statutory language controls. Rotkiske,

140 S. Ct. at 360. Second, for cases where “there are

two plausible constructions,” the court “generally adopt[s]

the construction that starts the time limit running

when the cause of action accrues.” Id. (cleaned up).

But Rotkiske did not describe how to analyze every

statute of limitations in the U.S. Code. Because the

limitations period at issue in Rotkiske “unambiguously

set[] the date of the violation as the event that starts

the . . . limitations period,” id., the Court did not need

to decide whether or under what circumstances an

ambiguous limitations period could be construed to

apply the discovery rule. Indeed, with respect to ambiguous statutes, while Rotkiske said that courts “generally

adopt the construction that starts the time limit running

when the cause of action accrues,” id. (emphasis added

and alteration omitted), it did not survey when courts

might permissibly adopt an alternative construction.

For example, statutory language describing the limitations period might be ambiguous, yet the only plausible construction might be that the discovery rule

applies. Rotkiske did not address this scenario.

While Rotkiske refused to “enlarge[]” the FDCPA by

“read[ing] in” a discovery rule provision and noted that

20a

“[a]textual judicial supplementation” of a discovery

rule was “particularly inappropriate” because “Congress

has enacted statutes that expressly include” discovery

rule language, id. at 360-61, the Court said so in the

context of an unambiguous statute that provided a

limitations period “within one year from the date

on which the violation occurs,” 15 U.S.C. § 1692k(d)

(emphasis added). The Court did not hold that any

ambiguity forecloses application of a discovery rule.

And the Court did not hold that the only way that

Congress can signal a discovery rule is by using the

word “discover.”

Accordingly, the issues decided in Rotkiske and

Graper are distinct. See Gahagan v. USCIS, 911 F.3d

298, 302-03 (5th Cir. 2018) (In determining whether “a

Supreme Court decision involving one statute implicitly

overrules our precedent involving another statute,”

“[t]he overriding consideration is the similarity of the

issues decided.”). Rotkiske declined to read a discovery

rule into an unambiguous statute that said that “the

date on which the violation occurs” is the date that

the limitations period starts. Graper interpreted the

a civil action must be “commenced within three years

after the claim accrued,” 17 U.S.C. § 507(b), as running

from the date that infringement is discovered. Unlike

the FDCPA, the Copyright Act does not explicitly pin

the limitations period to the date that the “violation

occurred.” Compare 17 U.S.C. § 507(b) with 15 U.S.C.

§ 1692k(d).

Further, even assuming, as Hearst argues, that

Rotkiske “rejects any . . . presumption” that “all federal

statutes of limitations, regardless of context, incorporate a general discovery rule unless Congress has

expressly legislated otherwise,” Rotkiske did not fun-

21a

damentally change the focus of the analysis in Graper.

Graper did not explain why it was adopting the

discovery rule, let alone announce that it was applying

such a presumption.5 Graper could have concluded

that at the time of § 507(b)’s adoption, a copyright

infringement claim accrued in the same manner as

other claims that the Supreme Court has decided are

controlled by the discovery rule. See TRW Inc., 534 U.S.

at 27-28; Rotella, 528 U.S. at 556. Had Graper reached

that conclusion, the court might have further concluded that the only plausible construction of the

phrase “claim accrued” in § 507(b) is that the discovery

rule applies. Graper and Rotkiske can be reconciled

along those lines.

Finally, Hearst argues that In re Bonvillian Marine

Service, Inc. “maps perfectly on this case.” But

Bonvillian is an awkward fit.

In Bonvillian, the district court dismissed an untimely action under the Limitation of Liability Act of

1851 for lack of subject-matter jurisdiction in accordance with In re Eckstein Marine Service L.L.C., 672

F.3d 310, 315-16 (5th Cir. 2012), which held that the

time bar in the Limitation Act was jurisdictional.

Bonvillian, 19 F.4th at 789-90. In holding that the time

bar was jurisdictional, Eckstein asserted that “[w]hile

many statutory filing deadlines are not jurisdictional,

we have long recognized that some are” and the

Limitation Act’s “requirement is one of these.”

Eckstein, 672 F.3d at 315. To support that proposition,

Hearst argues that Graper “relied on two pre-Rotkiske and

Petrella cases that employed” this presumption. However, as we

explained, Graper merely cited those cases for the proposition

that “[o]ther circuits agree” that the discovery rule applies, not to

incorporate the reasoning of those out-of-circuit cases. Graper,

756 F.3d at 393 n.5.

22a

Eckstein cited to, among other cases, our decision in

In re FEMA Trailer Formaldehyde Products Liability

Litigation, 646 F.3d 185, 189 (5th Cir. 2011), which

held that the FTCA’s statute of limitations was

jurisdictional. Eckstein, 672 F.3d at 315 n.12.

On appeal, we concluded that the rule of orderliness

did not bind us to Eckstein. After we had decided

Eckstein, in United States v. Kwai Fun Wong, the

Supreme Court held that procedural rules like time

bars are jurisdictional “only if Congress has clearly

stated as much.” 575 U.S. 402, 409 (2015). And Wong

had “directly abrogated” FEMA Trailer, which was “a

logical linchpin” of Eckstein. Bonvillian, 19 F.4th at

791. So we held that Wong “fundamentally change[d]

the focus of the relevant analysis,” id. at 792 (internal

quotation marks omitted), because “the Eckstein

panel largely assumed—by citation to a prior panel’s

unsupported assumption . . . and by analogy to this

court’s since-abrogated interpretation of the FTCA’s

statute of limitations—that [the] action’s untimeliness

deprives a district court of jurisdiction,” while Wong

said “that the essential hallmark of a jurisdictional

procedural rule is a clear congressional statement,

which is nowhere to be found in the Limitation Act.”

Id. at 793.

Unlike in Bonvillian, here, intervening Supreme

Court decisions have not unequivocally established a

clear rule for determining when a statute of limitations is triggered by the discovery rule. Petrella and

Rotkiske left room for exceptions, including an exception

upon which our court might have relied in Graper—

the nature of the copyright infringement injury.6

Graper’s reference to out-of-circuit cases using the discovery

rule is also different from Eckstein’s citation to FEMA Trailer.

23a

This case is more like Jacobs v. National Drug

Intelligence Center than Bonvillian. In Jacobs, the

defendant appealed the district court’s award of

emotional-distress damages to the plaintiff under the

Privacy Act of 1974, 5 U.S.C. § 552a, arguing that the

plaintiff was limited to out-of-pocket expenses. See 548

F.3d at 377. In affirming the damages award, we

adhered to an earlier decision of this court, Johnson v.

National Drug Intelligence Center, 700 F.2d 971 (5th

Cir. 1983), which held that the Privacy Act’s damages

remedy included emotional-distress damages, id. at

986; see Jacobs, 548 F.3d at 377-79. To overcome our

rule of orderliness, the appellant argued that “postJohnson, Supreme Court cases have construed other

statutory waivers of sovereign immunity narrowly;

and therefore, were Johnson to be re-decided today, our

court’s analysis of what damages are recoverable under

the Privacy Act might reach a different outcome.”

Jacobs, 548 F.3d at 378. We declined to address whether

the outcome in Johnson would be different under a

present-day analysis because the fact that those intervening Supreme Court cases arguably changed the

method for construing statutory waivers of sovereign

immunity did not count as an “intervening change in

law” that would permit us to overrule Johnson. Id.

“[I]n Jacobs, we specifically rejected the idea that later

Supreme Court and other decisions that were not

directly on point could alter the binding nature of our

prior precedent.” United States v. Traxler, 764 F.3d 486,

489 (5th Cir. 2014). Here, Rotkiske is not “directly on

Eckstein cited FEMA Trailer for an example of a jurisdictional

statutory filing deadline and said that the Limitation Act’s

deadline was analogous. See 672 F.3d at 315 n.12. Graper cited

out-of-circuit cases merely to show that other circuits had reached

a similar conclusion as to § 507(b), not to adopt the reasoning of

those cases.

24a

point.” Id. It leaves room for a Copyright Act discovery

rule grounded in the nature of the copyright infringement

injury.

Both circuits that have considered whether Petrella

and Rotkiske overturned their Copyright Act discovery

rules have rejected the argument and stuck with their

precedents.

First, in Sohm v. Scholastic Inc., the Second Circuit

“decline[d] to alter . . . [c]ircuit[] precedent mandating

use of the discovery rule” despite Petrella and Rotkiske.

959 F.3d 39, 50 (2d Cir. 2020). In the Second Circuit, “a

published opinion of a prior panel . . . is binding

precedent . . . unless and until its rationale is overruled,

implicitly or expressly, by the Supreme Court or [the

Second Circuit] en banc.” Id. (cleaned up). The Second

Circuit emphasized that “Petrella specifically noted

that it was not passing on the question of the discovery

rule” and that SCA Hygiene “reaffirmed that position.”

Id. Thus, the Second Circuit concluded that “while

some language in Petrella is perhaps consistent with

the [rule that the clock starts running when the

infringement occurs], in light of the Supreme Court’s

direct and repeated representations that it has not

opined on the propriety of [these] rules, it would

contravene settled principles of stare decisis for this

Court to depart from its prior holding . . . on the basis

of Petrella.” Id. Rotkiske did “not persuade [the Second

Circuit] to depart from this holding,” either. Id. at 50

n.2. Because “Rotskiske’s holding . . . was based on the

Court’s interpretation of the FDCPA’s text,” not “the

25a

Circuit decided that “Rotkiske is inapposite here.”7 Id.

Second, in Starz Entertainment, LLC v. MGM

Domestic Television Distribution, LLC, the Ninth

Circuit affirmed that Petrella did not change its

discovery rule. See 39 F.4th 1236, 1246 (9th Cir. 2022).

The Ninth Circuit read Petrella as “acknowledg[ing]

that the ‘incident of injury’ rule it described in the

main text of the case is not the only accrual rule that

federal courts apply in copyright infringement cases”

and saying “nothing else about the discovery rule’s

continued viability.” Id. at 1242 (cleaned up).

Thus, “[w]ere we to hold” that the discovery rule does

not apply to § 507(b), “we would be the only court of

appeals to do so after [Petrella and Rotkiske].”

Gahagan, 911 F.3d at 304. “We are always chary to

create a circuit split, including when applying the rule

of orderliness,” and we decline to do so in this case. Id.

(cleaned up).

III.

For those reasons, the Supreme Court’s decisions in

Petrella and Rotkiske did not unequivocally overrule

Graper. And under Graper, Martinelli’s copyright

infringement claims were timely because he brought

them within three years of discovering Hearst’s

infringements. Accordingly, the judgment of the

district court is AFFIRMED.

Although Sohm adhered to the Second Circuit’s discovery rule

precedents, following Petrella, Sohm also held that “a plaintiff’s

recovery is limited to damages incurred during the three years

prior to filing suit.” 959 F.3d at 52. Hearst does not argue that

this court should adopt a similar interpretation of the Copyright

Act, and because the parties have stipulated to the amount of

damages to which Martinelli is entitled, this case does not present

the issue of whether we should adopt the Sohm rule.

26a

APPENDIX B

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

[Entered: July 05, 2022]

————

Civil Action No. H-21-3412

————

ANTONIO MARTINELLI,

Plaintiff,

HEARST NEWSPAPERS, LLC and

HEARST MAGAZINE MEDIA, INC.,

Defendants.

————

ORDER

Pending before the Court are Defendants’ Motion for

Summary Judgment (Document No. 32) and Plaintiff ’s

Motion for Summary Judgment (Document No. 33).

Having considered the motions, submissions, and

applicable law, the Court determines Plaintiff ’s motion

should be granted and Defendants’ motion denied.

I. Background

Plaintiff Antonio Martinelli (“Martinelli”) is a French

photographer who, in 2016, took a series of photographs

(the “Photographs”) of the interior and surrounding

land of Guiness Castle in Ireland. Defendant Hearst

Newspapers, LLC (“Hearst Newspapers”) publishes

the Houston Chronicle and the San Antonio ExpressNews and operates their associated websites, including

Chron.com and MySA.com. On March 7, 2017, Martinelli

27a

alleges Hearst Newspapers used the Photographs in a

web-only news article about the sale of Guinness

Castle. On March 14, 2017, Hearst Magazine Media,

Inc., through its predecessor-in-interest, published five

of the Photographs in a news article. In neither case

were the Photographs used with Martinelli’s permission.

On October 18, 2021, Martinelli filed suit against

Hearst Newspapers. On November 12, 2021, Hearst

Newspapers moved to dismiss. On February 11, 2022,

Martinelli filed an amended complaint against both

Hearst entities (collectively, “Hearst”), asserting two

claims of direct copyright infringement and one claim

of contributory copyright infringement. On March 14,

2022, the Court denied the motion to dismiss as moot.

On April 22, 2022, the parties filed cross motions for

summary judgment.

II. STANDARD OF REVIEW

Summary judgment is proper when “there is no

genuine dispute as to any material fact and the

movant is entitled to a judgment as a matter of law.”

Fed. R. Civ. P. 56(a). The Court must view the evidence

in a light most favorable to the nonmovant. Coleman

v. Hous. Indep. Sch. Dist., 113 F.3d 528, 533 (5th Cir.

1997). Initially, the movant bears the burden of

presenting the basis for the motion and the elements

of the causes of action upon which the nonmovant will

be unable to establish a genuine issue of material fact.

Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The

burden then shifts to the nonmovant to come forward

with specific facts showing there is a genuine issue for

trial. See Fed. R. Civ. P. 56(c); Matsushita Elec. Indus.

Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986).

“A dispute about a material fact is ‘genuine’ if the

evidence is such that a reasonable jury could return a

verdict for the nonmoving party.” Bodenheimer v. PPG

28a

Indus., Inc., 5 F.3d 955, 956 (5th Cir. 1993) (citation

omitted).

But the nonmovant’s bare allegations, standing

alone, are insufficient to defeat a motion for summary

judgment. Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 247-48 (1986). The plaintiff cannot rest on his

allegations to get to a jury without any significant

probative evidence tending to support the complaint.

Nat’l Ass’n of Gov’t Emps. v. City Pub. Serv. Bd. of San

Antonio, 40 F.3d 698, 713 (5th Cir. 1994). If a reasonable jury could not return a verdict for the nonmovant,

summary judgment is appropriate. Liberty Lobby, Inc.,

477 U.S. at 248. The nonmovant’s burden cannot be

satisfied by conclusory allegations, unsubstantiated

assertions, or “only a scintilla of evidence.” Turner v.

Baylor Richardson Med. Ctr., 476 F.3d 337, 343 (5th

Cir. 2007) (quoting Little v. Liquid Air Corp., 37 F.3d

1069, 1075 (5th Cir. 1994)). It is not the function of the

Court to search the record on the nonmovant’s behalf.

Topalian v. Ehrman, 954 F.2d 1125, 1137 n.30 (5th Cir.

1992). Thus, although the Court views “the evidence

and all reasonable inferences drawn therefrom in the

light most favorable to the nonmovant, the nonmoving

party may not rest on the mere allegations or denials

of its pleadings, but must respond by setting forth

specific facts indicating a genuine issue for trial.”

Goodson v. City of Corpus Christi, 202 F.3d 730, 735

(5th Cir. 2000) (quoting Rushing v. Kan. City S. R.R.

Co., 185 F.3d 496, 505 (5th Cir. 1999)).

III. LAW & ANALYSIS

The parties agree on all triable issues of material

fact, including damages. Accordingly, the Court takes

as stipulated that Martinelli filed the original complaint

more than three years after the infringement took

place, but less than three years after Martinelli

29a

discovered the infringement. The only dispute regards

whether the Court should apply the discovery rule or

the injury rule in evaluating the statute of limitations.

The owner of a copyright has the exclusive right to

reproduce the copyrighted work. 17 U.S.C. § 106. To

establish a prima facie case of copyright infringement,

a copyright owner must prove: (1) ownership of a valid

v. Lewis, 976 F.3d 493, 501 (5th Cir. 2020) (citing Gen.

Universal Sys., Inc. v. Lee, 379 F.3d 131, 141 (5th Cir.

2004) (per curiam)). “No civil action shall be maintained

under [the portion of the United States Code concerning

years after the claim accrued.” 17 U.S.C. § 507(b).

“While causes of action generally accrue ‘when a

wrongful act causes some legal injury, even if the fact

of the injury is not discovered until later, and even if

all resulting damages have not yet occurred,’ several

equitable tolling doctrines may defer the accrual of a

claim.” Aspen Tech., Inc. v. M3 Tech., Inc., 569 F. App’x

259, 264 (5th Cir. 2014) (per curiam) (citations and

footnotes omitted). “Specifically, the discovery rule . . .

appl[ies] to . . . infringement claims.” Id. “A claim

accrues once the plaintiff knows or has reason to know

of the injury upon which the claim is based.” Grapey v.

Mid-Continent Cas. Co., 756 F.3d 388, 393 (5th Cir.

2014) (cleaned up).1

Hearst argues the Court should adopt the injury rule to apply

to civil copyright actions, meaning that the statute of limitations

begins running when the infringing act takes place, regardless of

when the copyright owner discovers the infringement. In support

of this construction, Hearst points to two recent Supreme Court

decisions. In the first, the Supreme Court held that a copyright

“claim ordinarily accrues ‘when a plaintiff has a complete and

30a

There is no dispute between the parties as to any

triable issues of material fact. The parties agree that

Martinelli is the author of the Photographs, that they

were created in January 2016, and the copyrights were

present cause of action.’” Petrella v. Metro-Goldwyn-Mayer, Inc.,

572 U.S. 663, 670 (2014) (cleaned up). The Supreme Court further

states the statute of limitations begins to run “generally” at

the point the plaintiff can file suit. Id. However, the opinion

specifically goes on to note “we have not passed on the question”

of the discovery rule, which “nine Courts of Appeal have adopted.”

Id. at 670 n.4. In the second opinion, the Supreme Court held that

the statute of limitations begins to run on the date of injury

(rather than discovery) for violations of the Fair Debt Collection

Practices Act (the “FDCPA”), absent an applicable equitable

doctrine. Rotkiske v. Klemm, 140 S. Ct. 355, 358 (2019). As Hearst

acknowledges, the FDCPA statute of limitations uses different

language than that of the Copyright Act. Compare 15 U.S.C.

§ 1692k(d) (requiring civil enforcement actions be brought “within one year from the date on which the violation occurs”) with

17 U.S.C. § 507(b) (requiring civil actions be “commenced within

three years after the claim accrued”). In its most recent opinions

discussing the matter, the Fifth Circuit has continued to apply

the discovery rule. See Mid-Continent Cas. Co., 756 F.3d at 393

(applying the discovery rule in the context of copyright infringement); Aspen Tech., 569 F. App’x at 264 (applying the rule in the

context of infringement and misappropriation). One of these

opinions even suggests that the Fifth Circuit considers the discovery rule an equitable tolling doctrine, which would make it an

exception to Rotkiske’s default rule for statutes of limitation.

Aspen Tech., 569 F. App’x at 264 (“[S]everal equitable tolling

doctrines may defer the accrual of a claim. Specifically, the

discovery rule and the doctrine of fraudulent concealment

apply to both misappropriation and infringement claims.”). The

Supreme Court has not squarely held the discovery rule does not

apply to copyright cases (in Petrella, the injury rule is said to

“ordinarily” or “generally” apply), and the Fifth Circuit has not

backed away from its application in its most recent opinions.

Accordingly, the Court determines the discovery rule still governs

the Copyright Act, and the statute of limitations thus began to

run when Martinelli learned of the infringement.

31a

registered in 2019 and 2020. Hearst published the

Photographs without Martinelli’s permission on March

7, 2017, March 13, 2017, and March 14, 2017. Hearst

also agrees Martinelli discovered these uses by Hearst

on various dates ranging from November 17, 2018

through May 28, 2020, and could not have discovered

the uses earlier through reasonable diligence. Hearst

concedes it infringed on Martinelli’s copyrights. The

parties agree Martinelli is entitled to recover a total of

$10,000 if the Court finds the infringement fell within

the statute of limitations. Martinelli filed his original

complaint October 18, 2021 and his amended complaint February 11, 2022. Hearst does not dispute the

allegations in the amended complaint, or that the

amended complaint relates back to October 18, 2021.

Because Martinelli discovered the infringement within three years of the date he first filed suit, the Court

finds Hearst is liable to Martinelli for the infringement

of the Photographs. Accordingly, Martinelli’s motion is

granted and Hearst’s motion is denied.

IV. CONCLUSION

Based on the foregoing, the Court hereby

ORDERS that Defendants’ Motion for Summary

Judgment (Document No. 32) is DENIED. The Court

further

ORDERS that Plaintiff ’s Motion for Summary

Judgment (Document No. 33) is GRANTED. The Court

will issue a separate final judgment.

SIGNED at Houston, Texas, on this 5 day of July, 2022.

/s/ David Hittner

DAVID HITTNER

United States District Judge

32a

APPENDIX C

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

[Filed: September 22, 2023]

————

No. 22-20333

————

ANTONIO MARTINELLI,

Plaintiff-Appellee,

versus

HEARST NEWSPAPERS, L.L.C.;

HEARST MAGAZINE MEDIA, INCORPORATED,

Defendants-Appellants.

————

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:21-CV-3412

————

ON PETITION FOR REHEARING EN BANC

Before BARKSDALE, SOUTHWICK, and HIGGINSON,

Circuit Judges.*

PER CURIAM:

Treating the petition for rehearing en banc as a

petition for panel rehearing (5TH CIR. R. 35 I.O.P.), the

petition for panel rehearing is DENIED. Because no

Judge Carolyn Dineen King, Patrick E. Higginbotham,

James L. Dennis, Edith Brown Clement, did not participate in the

consideration of the rehearing en banc.

33a

member of the panel or judge in regular active service

requested that the court be polled on rehearing

en banc (FED. R. APP. P. 35 and 5TH CIR. R. 35), the

petition for rehearing en banc is DENIED.

34a

APPENDIX D

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

[Filed: April 13, 2023]

————

No. 22-20333

————

ANTONIO MARTINELLI,

Plaintiff-Appellee,

versus

HEARST NEWSPAPERS, L.L.C.;

HEARST MAGAZINE MEDIA, INCORPORATED,

Defendants-Appellants.

————

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:21-CV-3412

————

Before BARKSDALE, SOUTHWICK, and HIGGINSON,

Circuit Judges.

JUDGMENT

This cause was considered on the record on appeal

and was argued by counsel.

IT IS ORDERED and ADJUDGED that the

judgment of the District Court is AFFIRMED.

IT IS FURTHER ORDERED that defendantsappellants pay to plaintiff-appellee the costs on appeal

to be taxed by the Clerk of this Court.

35a

[SEAL]

United States Court of Appeals

Fifth Judicial Circuit

Certified as a true copy and

issued as the mandate on

Oct. 02, 2023

Attest: /s/ Lyle W. Cayce

Clerk, U.S. Court of Appeals,

Fifth Circuit

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.