Amicus Curiae Brief — RADesign, Inc., et al., Petitioners v. Michael Grecco Productions, Inc.

Supreme Court briefFeb 14, 2025

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No. 24-768

In the Supreme Court of the United States

RADESIGN, INC., DAVIS BY RUTHIE DAVIS, INC.,

RUTHIE ALLYN DAVIS, RUTHIE DAVIS, INC., DOES 1–5,

Petitioners,

MICHAEL GRECCO PRODUCTIONS, INC.,

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

BRIEF OF MCHALE & SLAVIN, P.A., AS

AMICUS CURIAE IN SUPPORT OF

PETITIONERS

ANDREW D. LOCKTON

Counsel of Record

EDWARD F. MCHALE

MCHALE & SLAVIN, P.A.

2855 PGA Boulevard

Palm Beach Gardens, FL 33401

(561) 625-6575

alockton@mchaleslavin.com

Counsel for Amicus Curiae

February 2025

LEGAL PRINTERS LLC ! Washington, DC ! 202-747-2400 ! legalprinters.com

QUESTION PRESENTED

Whether a claim “accrue[s]” under the Copyright

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

507(b), when the infringement occurs (the “injury

rule”) or when a plaintiff discovers or reasonably

should have discovered the infringement (the

“discovery rule”).

TABLE OF CONTENTS

Question Presented ..................................................... i

Table of Contents ........................................................ ii

Table of Authorities ................................................... iii

Interest of Amicus Curiae ........................................... 1

Summary of Argument ................................................ 2

Argument ..................................................................... 8

I. Review by This Court is Necessary to Resolve

the Conflicts and Confusion Arising From

Lower Courts’ Application of §507(b) That

Resulted in the So-Called “Discovery Rule.” ...... 8

II. The Court Should Grant Certiorari to Resolve

the Question Presented and Hold That

on the Occurrence of the Infringing Act, But

That General Equitable Principles Can Apply

to Toll the Limitations Period ........................... 18

Conclusion.................................................................. 20

iii

TABLE OF AUTHORITIES

Cases:

Allstate Fin. Corp. v. Zimmerman,

330 F.2d 740 (CA5 1964) ................................ 17

Bay Area Laundry and Dry Cleaning Pension

Trust Fund v. Ferbar Corp. of Cal.,

522 U.S. 192 (1997) ........................................... 6

Calhoun v. Lillenas Publ’g,

298 F.3d 1228 (CA11 2002) ............................ 14

Charlotte Telecasters, Inc. v. Jefferson-Pilot

Corp.,

546 F.2d 570 (CA4 1976) ................................ 11

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

Inc.,

770 F.3d 610 (CA7 2014) ................................ 11

Consumer Health Info. Corp. v. Amylin Pharms.,

Inc.,

819 F.3d 992 (CA7 2016) ................................ 11

Credit Suisse Sec. (USA) LLC v. Simmonds,

566 U.S. 221 (2012) ......................................... 17

Design Basics, LLC v. Lexington Homes, Inc.,

858 F.3d 1093 (CA7 2017) ........................ 18-19

Everly v. Everly,

958 F.3d 442 (CA6 2020) ...................4, 6, 12-14

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,

499 U.S. 340 (1991) ......................................... 14

Gabelli v. S.E.C., 568 U.S. 442 (2013) ....2-3, 15, 19

Gaiman v. McFarlane,

360 F.3d 644 (CA7 2004) ................................ 11

Cases—continued:

Graham Couty Soil & Water Conservation Dist.

v. United States ex rel. Wilson,

545 U.S. 409 (2005) ........................................... 6

Klinger v. Conan Doyle Estate, Ltd.,

761 F.3d 789 (CA7 2014) ................................ 18

Live Face on Web, LLC v. Cremation Soc’y of Ill.,

Inc.,

77 F.4th 630 (CA7 2023) ................................. 18

Merchant v. Levy, 92 F.3d 51 (CA2 1996) ....... 9-10

Pace v. DiGuglielmo, 544 U.S. 408 (2005) ..... 16, 20

Petrella v. MGM, Inc.,

572 U.S. 663 (2014) ................................ 3, 11,15

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

384 F.2d 700 (CA9 2004) .......................... 11-12

Prather v. Neva Paperbacks, Inc.,

446 F.2d 338 (CA5 1971) ..... 7, 10-11, 13, 16-17

Psihoyos v. John Wiley & Sons, Inc.,

748 F.3d 120 (CA2 2014) ................................ 10

Roley v. New World Pictures, Ltd.,

19 F.3d 479 (CA9 1994) ............................ 12-13

Rotkiske v. Klemm, 589 U.S. 8 (2019) ....... 6, 15, 20

SCA Hygiene Prods. Aktiebolag v. First Quality

Baby Prods., LLC,

580 U.S. 328 (2017) ......................................... 15

Stone v. Williams,

970 F.2d 1043 (CA2 1992) .....................9-10, 14

Sumrall v. LeSEA, Inc.,

104 F.4th 622 (CA7 2024) ............................... 11

Cases—continued:

Taylor v. Meirick,

712 F.2d 1112 (CA7 1983) ........................ 11, 16

United States v. Jeffries,

692 F.3d 473 (6th Cir. 2012) ............................. 4

Warner Chappell Music, Inc. v. Nealy,

601 U.S. 366 (2024) ............................... 5, 15, 20

Warren Freedenfeld Assocs. v. McTigue,

531 F.3d 38 (CA1 2008) .................................. 11

Webster v. Dean Guitars,

955 F.3d 1270 (CA11 2020) ............................ 14

William A. Graham Co. v. Haughey,

568 F.3d 425 (CA3 2009) .......................... 4, 8-9

William A. Graham Co. v. Haughey,

646 F.3d 138 (CA3 2011) .......................... 4, 8-9

Wilson v. Garcia, 471 U.S. 261 (1985) ............. 3, 19

Wood v. Carpenter, 101 U.S. 135 (1879) ...... 2, 3, 19

Wood v. Santa Barbara Chamber of Commerce,

Inc.,

507 F. Supp. 1128 (D. Nev. 1980) ............. 12-13

Young v. United States,

535 U.S. 43 (2002) ............................6, 15-16, 20

Statutes:

17 U.S.C. §504(c)(2) ........................................ 10

17 U.S.C. §507(b) ........ 3, 8, 10-12, 14-15, 19-20

Declaratory Judgment Act

28 U.S.C. §2201(a) ............................................ 9

Other Authorities:

I. Polonsky,

You Can’t Go Home Again: The Righthaven

Cases and Copyright Trolling on the Internet,

36 Colum. J.L. & Arts 71 (2012) ...................... 19

Learned Hand,

The Spirit of Liberty (2d ed. 1954) ..................... 5

M. Sag,

Iowa L. Rev. 1105 (2015) ................................. 18

In the Supreme Court of the United States

No. 24-768

RADESIGN, INC., DAVIS BY RUTHIE DAVIS, INC.,

RUTHIE ALLYN DAVIS, RUTHIE DAVIS, INC., DOES 1–5,

Petitioners,

MICHAEL GRECCO PRODUCTIONS, INC.,

Respondent.

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Second Circuit

BRIEF OF MCHALE & SLAVIN, P.A., AS

AMICUS CURIAE IN SUPPORT OF

PETITIONERS

INTEREST OF AMICUS CURIAE

MCHALE & SLAVIN, P.A., is a Florida professional

association of intellectual property attorneys that represents parties in all aspects in intellectual property

protection, including as counsel for both plaintiffs and

defendants in copyright infringement litigation. 1 Attorneys for the firm regularly litigate intellectual

property cases in trial and appellate courts and teach

intellectual property courses. Many of the firm’s cases

Amicus provided 10-day notice of intent to file this brief to

counsel of record for both parties. No counsel for any party authored this brief, in whole or in part, and no entity or person,

aside from amicus curiae and its counsel, made any monetary

contribution toward the preparation or submission of this brief.

(1)

and research have focused on issues related to the socalled “discovery rule,” used by plaintiffs to pursue

years prior to the suit being filed, cases where evidence of what occurred at that time may have been

lost due to the passage of time. That issue is increasingly more common, particularly with photography infringement claims based on a single image posted, and

archived, on the Internet. Consequently, attorneys at

the firm have developed a particular expertise in the

nuances of the issues addressed by the question presented in the petition for a writ of certiorari.

SUMMARY OF ARGUMENT

A. For over one hundred and forty-five years this

Court has recognized the “vital” role statutes of limitations play in the law and for society:

Statutes of limitations are vital to the

welfare of society and are favored in the

law. They are found and approved in all

systems of enlightened jurisprudence.

They promote repose by giving security

and stability to human affairs. An important public policy lies at their foundation. They stimulate to activity and punish negligence. While time is constantly

destroying evidence of rights, they supply in its place a presumption which renders proof unnecessary. Mere delay, extending to the limit prescribed is a conclusive bar. The bane and antidote go together.

Wood v. Carpenter, 101 U.S. 135, 139 (1879); see also

Gabelli v. S.E.C., 568 U.S. 442, 448-49 (2013) (“They

provide ‘security and stability to human affairs.’

Wood[, 101 U.S. at 139]. We have deemed them ‘vital

to the welfare of society,’ ibid., and concluded that

‘even wrongdoers are entitled to assume that their

sins may be forgotten,’ Wilson v. Garcia, 471 U.S. 261,

271 (1985).”). Employing the so-called “discovery rule”

to determine when copyright infringement claims “accrue”—at least in application—destroys that “vital”

role and disregards Congress’s reasoned judgment in

enacting the statute of limitations in the Copyright

Act of 1976, 17 U.S.C. §101 et seq. (“Copyright Act” or

“Act”).

Section 507(b) of the Copyright Act codifies a threeyear window for a copyright holder to file suit based

on the occurrence of an infringing act. 17 U.S.C.

§507(b). But that three-year window occurs for each

infringing act. Petrella v. MGM, 572 U.S. 663, 671

(2014) (“Each time an infringing work is reproduced or

distributed, the infringer commits a new wrong. Each

wrong gives rise to a discrete ‘claim’ that ‘accrue[s]’ at

the time the wrong occurs.”). That scheme balances

the equities: an infringer profiting from another’s

work will almost certainly continue committing separate acts of infringement and will therefore be subject

to suit, while a party that innocently (or accidentally)

infringed or who committed only a single act (or limited series) of infringement will be entitled to forgiveness. See Wood, 101 U.S. at 139; see also Gabelli,

568 U.S. at 448-49 (quoting Wilson, 471 U.S. at 271).

B. The question presented in the petition challenges the Second Circuit’s application of the so-called

“discovery rule” to determine when copyright infringement claims accrue, asking: “Whether a copyright infringement claim ‘accrue[s]’ under the Copyright Act’s

statute of limitations when the injury occurs (the

‘injury rule’) or when a plaintiff discovers or reasonably should have discovered the infringement (the ‘discovery rule’).” Pet. (i). The Second Circuit is not alone

in applying a “discovery rule” to determine copyright

infringement claim accrual, but such application is not

uniform—despite conventional wisdom.

The Third Circuit, the only circuit to analyze the

statutory text, holds that “the ‘accrual’ of a cause of

action occurs at the moment at which each of its component elements has come into being as a matter of

objective reality, such that an attorney with

knowledge of all the facts could get past a motion to

dismiss for failure to state a claim.” William A. Graham Co. v. Haughey, 646 F.3d 138, 150 (CA3 2011)

(“Graham II”). But even in recognizing that the “discovery rule” does not affect claim “accrual,” it applies

a “discovery rule” “in applicable cases to toll the running of the limitations period.” Id. at 150-51; id. at

146 (discussing William A. Graham Co. v. Haughey,

568 F.3d 425, 433-41 (CA3 2009) (“Graham I”)).

More recently, Judge Murphy of the Sixth Circuit

has written concurrences to address the errors in reasoning that has resulted in a “discovery rule.” See,

e.g., Everly v. Everly, 958 F.3d 442, 459-68 (CA6 2020)

(Murphy, J., concurring) (identifying and analyzing

mistakes in circuit precedents that apply a “discovery

rule” to copyright claims). Analyzing this Court’s

precedent, Judge Murphy correctly concludes that a

“discovery rule” is inconsistent with the statutory text

and this Court’s precedent. Id. at 461 (Murphy, J.,

concurring) (“Here, the Copyright Act’s statute of limitations can at least plausibly be read to use an occurrence rule. That should end the matter.”); id. at 468

(Murphy, J., concurring) (“‘When some law-making

bodies “get into grooves,” Judge Learned Hand used to

say, “God save” the poor soul tasked with “get[ting]

them out.”’ United States v. Jeffries, 692 F.3d 473, 486

(6th Cir. 2012) (Sutton, J., dubitante) (quoting

Learned Hand, The Spirit of Liberty 241-42 (2d ed.

1954)). I fear the courts have gotten into such a

‘groove’ in this copyright context.”).

C. The importance of the Copyright Act’s statute

of limitations was apparent last term in Warner Chappell Music, Inc. v. Nealy, 601 U.S. 366 (2024), where,

despite presenting the distinct question of whether

there was three-year damages bar independent from

the statute of limitation, briefing and arguments focused “almost entirely” on this antecedent question of

whether the Copyright Act embodied a “discovery

rule” at all. See id. at 371 n.1. The majority correctly

held that the Act did not embody a separate damages

limitation, taking care to explicitly and repeatedly

clarify that it was not passing on the antecedent question of whether the Act embodied a “discovery rule.”

See id. at 368, 371; see also id. at 374 (Gorsuch, J., dissenting) (“Rather than address [whether the Copyright Act embodies a discovery rule], the Court takes

great care to emphasize its resolution must await a future case.”)

Although three Justices dissented in Warner Chappell, the dissent was not a disagreement with the majority’s reasoning or the outcome of the decision, but

because it was so clear that the Copyright Act “does

not tolerate a discovery rule,” those Justices would

simply have dismissed the petition as improvidently

granted, explaining that “that fact promises soon

enough to make [the Majority opinion] about the rule’s

operational details a dead letter.” Id. at 374 (Gorsuch,

J., dissenting).

D. Amicus agrees with Petitioner that this case

presents an ideal vehicle for the Court to address the

predicate question left open in Warner Chappell and

clarify that the Copyright Act embodies the standard

rule, i.e., the incident of injury rule, and not a “discovery rule.” This is a “vital” and important question of

law. Its application across the circuits is confused and

inconsistent, and the reasoning for applying a “discovery rule” to copyright infringement claims has been rejected repeatedly by this Court. See, e.g., Everly, 958

F.3d at 459-68 (Murphy, J., concurring) (identifying

and analyzing mistakes in circuit precedents that apply a discovery rule to copyright infringement claims).

As Judge Murphy notes, its application appears to be

no more than a “groove,” requiring this court to get the

courts out of it. Id. at 468 (Murphy, J., concurring).

The Court has long recognized that “Congress legislates against the ‘standard rule that the limitations

period commences when the plaintiff has a complete

and present cause of action.’” Rotkiske v. Klemm, 589

U.S. 8, 13 (2019) (quoting Graham Couty Soil & Water

Conservation Dist. v. United States ex rel. Wilson, 545

U.S. 409, 418-19 (2005) (quoting Bay Area Laundry

and Dry Cleaning Pension Trust Fund v. Ferbar Corp.

of Cal., 522 U.S. 192, 201 (1997))). Further, if the statutory text can plausibly be interpreted as embodying

the standard rule, then it does. Ibid. Similarly, Congress is presumed to draft limitations periods against

the background principle that limtiations periods are

customarily subject to equitable tolling unless it would

be inconsistent with the relevant statutory text.

Young v. United States, 535 U.S. 43, 49-50 (2002)

(characterizing this background principle as “hornbook law”).

This framework—copyright claims “accruing” under the standard/injury rule but subject to equitable

tolling—properly assigns litigants with evidentiary

burdens within their control and promotes fairness in

the law. When sued, a defendant must establish the

“objective reality” of when the infringing act occurred.

The burden then shifts to the plaintiff to come forward

with evidence to establish a basis for equitable tolling.

Only then does a defendant need to come forward with

evidence peculiarly within a plaintiff’s control, i.e.,

when it actually knew of the alleged infringement or

when it “should have” known. See Prather v. Neva Paperbacks, Inc., 446 F.2d 338, 339-41 (CA5 1971).

Applying the standard rule for claim accrual, leaving open the possibility of a plaintiff establishing a basis for equitable tolling, is the only rule consistent with

the statutory text, the presumptions we attribute to

Congress, and this Court’s precedents for statutes of

limtiations. It also produces the fairest results. Most

cases will survive a motion to dismiss. Only cases

where the complaint forecloses a tolling argument, or

it cannot be genuinely disputed that the act was public

and not concealed, will be resolved at the Rule 12

stage. At summary judgment, the defendant must establish that the infringing act occurred more than

three years before the suit was filed to shift the burden

to the plaintiff to show that there is a triable issue

with respect to tolling. At trial, if the defendant establishes that the infringing act occurred more than three

years before suit, the plaintiff can only prevail if a basis for tolling is established to render the claim timely.

This protects defendants from being haled into court

for long dead claims, particularly where the allegedly

infringing act was public and temporary, occurring

only outside of the Act’s three-year limitation period.

The petition for a writ of certiorari should be

granted to harmonize the Copyright Act’s statute of

limtiations with this Court’s precedents and get lower

courts out of the “groove” they are in with respect to

the “discovery rule.”

ARGUMENT

A. Review by This Court is Necessary to Resolve the

Conflicts and Confusion Arising From Lower

Courts’ Application of §507(b) That Resulted in

the So-Called “Discovery Rule.”

1. While the Second Circuit’s application of the socalled “discovery rule” is the same as the rule adopted

in, at least, the Ninth Circuit, an actual conflict exists

between circuits applying a copyright claim accrual

“discovery rule” and the Third Circuit. Importantly,

the Third Circuit is the only circuit to analyze the text

of §507(b), the only circuit to have analyzed §507(b) in

light of this Court’s precedents, and—not surprisingly—it is the only circuit to hold that copyright infringement claims “accrue” when an infringing act occurs, i.e., that §507(b) embodies the “injury rule.” Graham II, 646 F.3d at 150 (“We hold that the ‘accrual of

a cause of action occurs at the moment at which each

of its component elements has come into being as a

matter of objective reality, such that an attorney with

knowledge of all the facts could get past a motion to

dismiss for failure to state a claim.”).

However, to reconcile its prior holding in that very

case, the Third Circuit held that the “discovery rule”

“operates in applicable cases to toll the running of the

limitations period.” Id. at 150-51; see also id. at 146

(characterizing the appellate argument as the “interplay between our prior holding in this case to the effect

that, under the ‘discovery rule’ Graham’s cause of action did not ‘accrue’ for statute of limitations purposes

until it discovered its injury, see [Graham I, 568 F.3d

at 433-41]” and Supreme Court precedent that prejudgment interest begins when the claim “accrues”).

Though correctly recognizing that the text of the Copyright Act cannot embody a “discovery rule” for claim

accrual, the Third Circuit incorrectly holds that the

there exists a federal “discovery rule” that—in “applicable cases”—tolls the limitations period. Id. at 147151. While it is not clear when a case is eligible for the

application of this new tolling doctrine, that rule also

misses the mark, introducing an alternate ground for

rejecting Congress’s reasoned judgment in enacting a

statute of limtiations.

2. a. When tracing back the application of the “discovery rule,” it is evident that using it as a rule for

copyright claim accrual results from the misapplication of the doctrine of equitable tolling. Most commonly, cases citing the “discovery rule” trace the origins back to the Second, Seventh, and Ninth Circuits.

Each of those circuits, however, trace their precedent

back to cases adopting the traditional rule of equitable

tolling for fraudulent concealment of a copyright

claim. That rule, applied incorrectly over the years,

ultimately resulted in a “discovery rule” for delaying

claim accrual, without any textual analysis or legal

reasoning for adopting such a broad, atextual “discovery rule.”

b. The Second Circuit traces its precedent to Stone

v. Williams, 970 F.2d 1043 (CA2 1992) and Merchant

v. Levy, 92 F.3d 51 (CA2 1996). The issue addressed

in Stone was whether the claims for a declaration of

Judgment Act, 28 U.S.C. §2201(a), were timely. 970

F.2d at 1047-49. But because the existence of the

plaintiff’s claim had been fraudulently concealed, the

claim was equitably tolled until the plaintiff knew, or

should have known, of the claim’s existence. Id. at

1048-49. Thus, Stone held the opposite of a “discovery

rule.” Rather than the claim accruing when the plaintiff knew or should have known of the claim, it “accrued” but was tolled due to fraudulent concealment

until it was known or should have been known. Ibid.

(citing Prather, 446 F.2d 341). In Merchant, the court

cited Stone but held that the cause of action was

barred by the limitations period, meaning that it did

not need to pass on the question of whether the claim

accrued based on “discovery” or “occurrence.” 92 F.3d

at 56.

The Second Circuit did not revisit the copyright

claim “accrual” until it decided Psihoyos v. John Wiley

& Sons, Inc., 748 F.3d 120 (CA2 2014). But Psihoyos,

once again, did not require the court to pass on the

question of claim “accrual.” Citing Stone and Merchant, the Psihoyos court stated that it “has previously

employed a discovery rule for copyright claims under

17 U.S.C. § 507(b),” and then unnecessarily concluded

that a “discovery rule” applied based on the Third Circuit’s decision in Graham I, overlooking the subsequent analysis in Graham II. Psihoyos, 748 F.3d at

124-25. But that discussion was unnecessary to the

holding because the 2011 lawsuit was filed within

three years of the most recent infringing acts, id. at

122 (infringing acts occurred between 2005 and 2009),

and the plaintiff sought relief in the form of statutory

damages under §504(c)(2), id. at 126-27. The statutory damage analysis can consider a defendant’s past

conduct—otherwise outside of the limitations period—

in determining what relief is necessary to deter future

infringement. Ibid.

c. The Seventh Circuit is also often credited as

adopting a “discovery rule” for copyright claims, but a

more careful reading shows it has not done so for copyright infringement claims. In Taylor v. Meirick, 712

F.2d 1112 (CA7 1983), often cited as a basis for applying a “discovery rule,” see, e.g., Warren Freedenfeld Assocs. v. McTigue, 531 F.3d 38, 44 (CA1 2008), the issued addressed by the Seventh Circuit was equitable

tolling based on fraudulent concealment. Taylor, 712

F.2d at 1117-18 (“In any event, there is no doubt that

the copyright statute of limitations is tolled by ‘fraudulent concealment’ of the infringment.”) (citing Prather, 446 F.2d at 340-41, and Charlotte Telecasters,

Inc. v. Jefferson-Pilot Corp., 546 F.2d 570, 573-74 (CA4

1976)). Moreover, acts of infringment occurred “well

within three years of the bringing of th[e] suit,” and

therefore were not barred by §507(b). Id. at 1119. The

Taylor court also applied a “continuing wrong” doctrine, ibid. that this Court has since rejected, Petrella,

572 U.S. at 671 and n.6.

While the Seventh Circuit has since passed on the

timeliness of claims for a declaration of copyright ownership, see, e.g., Gaiman v. McFarlane, 360 F.3d 644,

652-53 (CA7 2004); Consumer Health Info. Corp. v.

Amylin Pharms., Inc., 819 F.3d 992, 995-97 (CA7

2016); Sumrall v. LeSEA, Inc., 104 F.4th 622, 627-28

(CA7 2024), it has not passed on the question of copyright infringment claim accrual, see Chi. Bldg. Design,

P.C. v. Mongolian House, Inc., 770 F.3d 610, 612 (CA7

2014) (“CBD’s complaint alleges potentially infringing

acts that occurred within the three-year look-back period from the date of suit, so the case should not have

been dismissed” at the pleadings stage).

d. The Ninth Circuit adopted a “discovery rule” for

Timex Corp., 384 F.2d 700 (CA9 2004). That case addressed whether §507(b) “prohibit[ed] recovery of

damages incurred more than three years prior to the

filing of suit,” where the “plaintiff was unaware of the

infringement” at that time. Id. at 706. In holding that

such recovery was possible, the court adopted a “discovery rule” for copyright infringement claim accrual,

despite remanding the actual damages award to the

district court to order a remission of the excess contained in the verdict. Id. at 707, 710.

The conclusion in Polar Bear, however, was

reached without any analysis of the text of §507(b).

See id. at 705-07. Instead, the Polar Bear court imported a “rule” from Roley v. New World Pictures, Ltd.,

19 F.3d 479 (CA9 1994), without discussion or consideration of the different postures between those cases.

Polar Bear, 384 F.3d at 706 (citing Roley, 19 F.3d at

480-81); see also Everly, 958 F.3d at 461-62 (Murphy,

J., concurring) (“In an oft-cited example, the Ninth

Circuit adopted the discovery rule in an unreasoned

sentence, relying on a district-court decision addressing the use of fraudulent concealment to toll a statute

of limtiations.”) (citing Roley, 19 F.3d at 481).

The decision in Roley did not hold that a “discovery

rule” applied to copyright infringement claims. 19

F.3d at 481-82. In Roley, the Ninth Circuit rejected

the “‘rolling statute of limitations’ theory” from Taylor

and then held that the plaintiff’s claims were barred

under §507(b) while specifically noting that “Roley

fail[ed] to produce any evidence that appellees engaged in actionable conduct after February 7, 1988,”

i.e., within three years of the lawsuit’s filing. Ibid.

(emphasis added). Though unnecessary to its decision, the Roley court began with a statement in dicta

that “[a] cause of action for copyright infringement accrues when one has knowledge of a violation or is

chargeable with such knowledge.” Ibid. (citing Wood

v. Santa Barbara Chamber of Commerce, Inc., 507 F.

Supp. 1128, 1135 (D. Nev. 1980)); see also Everly, 958

F.3d at 461-62 (Murphy, J., concurring). The holding,

however, focused on the timing of the defendant’s conduct, i.e., the occurrence of the infringing act. Roley,

19 F.3d at 481-82.

The Wood decision, cited by Roley, did not adopt or

employ a “discovery rule.” Wood held that copyright

infringement claims accrue when an infringing act occurs. 507 F. Supp. at 1134-35 (“Thus, plaintiff may

sue only for those alleged infringements occurring on

or after January 2, 1976,” i.e., within three years of

the action’s filing). Wood addressed (again) the argument of whether “the statute should be tolled because

of an alleged fraudulent concealment of all of the infringements by all of the defendants,” where the plaintiff claimed “he had no basis until 1977 to reasonably

suspect infringements of any photograph other than

the one photograph which had been the subject matter

of his initial suit in 1972.” Id. at 1135 (citing Prather,

446 F.2d at 340); see also Everly, 958 F.3d at 461-62

(Murphy, J., concurring). In Wood, the claim was

barred because the plaintiff could not establish entitlement to equitable tolling based on fraudulent concealment of the cause of action. 507 F. Supp. at 1135.

3. Other confusion between the circuits has arisen

due to conflating infringement claims arising under

the Copyright Act with claims for a declaration of copyright ownership rights under the Declaratory Judgment Act. See, e.g., Everly, 958 F.3d at 463-68 (Murphy, J., concurring) (discussing problems arising from

decisions addressing copyright “ownership” as a claim

under the Copyright Act, rather than as an element of

an infringement claim or as a claim under the Declaratory Judgment Act).

Disputes where the plaintiff seeks to establish

ownership rights in a copyrighted work have been

commonly referred to as “copyright ownership”

“claims.” See, e.g., Webster v. Dean Guitars, 955 F.3d

1270, 1275-76 (CA11 2020) (collecting cases seeking

declarations of ownership); Everly, 958 F.3d at 463-68

(Murphy, J., concurring) (discussing problem associated with copyright ownership “claims”). “Ownership”

is not a “claim” under the Copyright Act. “Ownership”

is an element of a copyright infringement claim. Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361

(1991); see also Everly, 958 F.3d at 463-68 (Murphy, J.,

concurring). A claim seeking a declaration of “ownership” (or co-ownership) rights in a copyrighted work is

a “claim” under the Declaratory Judgment Act. See,

e.g., Stone, 970 F.2d at 1047-48; Webster, 955 F.3d at

1275-76; Everly, 958 F.3d at 463-68 (Murphy, J., concurring).

Courts addressing claims for a declaration of copyright ownership rights have looked to §507(b) for a

limitations period. See, e.g., Stone, 970 F.2d at 1048

(“Because a declaratory judgment action is a procedural device used to vindicate substantive rights, it is

time-barred only if relief on a direct claim based on

such rights would also be barred.”). Further, courts

have looked to §507(b) when addressing infringement

claims where the gravamen of the claim is a dispute

as to who owns the copyrighted work. See, e.g., Webster, 955 F.3d at 1277 (“when a copyright ownership

claim is time-barred, ‘all those claims logically following therefrom should be barred including infringement claims.’”) (quoting Calhoun v. Lillenas Publ’g,

298 F.3d 1228, 1236 (CA11 2002) (Birch, J., concurring)); Stone, 970 F.2d at 1047-48; Webster, 955 F.3d

at 1275-76. But those are not copyright “claims.”

While Congress included a statute of limitations

for “claims” under the Copyright Act, it did not do so

for claims maintained under the provisions of the Declaratory Judgement Act. Cf. 17 U.S.C. §507(b).

4. a. Under this Court’s precedents, §507(b) embodies the “standard rule,” also known as the “incident

of the injury” rule, where an infringement claim “accrues” each time an act of infringement occurs. See,

e.g., Rotkiske, 589 U.S. at 13; Warner Chappell, 601

U.S. at 374-75 (Gorsuch, J., dissenting) (collecting

cases). But this Court has also explained that “[i]t is

hornbook law that limitations periods are customarily

subject to equitable tolling, unless tolling would be inconsistent with the text of the relevant statute,” and

that “Congress must be presumed to draft limitations

periods in light of this background principle.” Young,

535 U.S. at 49-50.

The plain text of §507(b) indicates that copyright

infringement claims “accrue” under the standard rule,

i.e., the “incident of the injury rule” (or “injury rule”).

See Rotkiske, 589 U.S. at 13-15; Warner Chappell, 601

U.S. at 374-75 (Gorsuch, J., dissenting). As Petitioner

correctly asserts, §507(b) is properly interpreted as

adopting the occurrence rule rather than an atextual

discovery rule. Pet. 10-14.

This Court’s precedents reflect that applying a

broad, atextual discovery rule to alter the meaning of

the verb “accrue”—but only for copyright cases—is error. See, e.g., Gabelli, 568 U.S. at 448-49; Rotkiske,

589 U.S. at 13-15; Petrella, 572 U.S. at 670-71 (not

passing on the question but articulating these longstanding principles); SCA Hygiene Prods. Aktiebolag

v. First Quality Baby Prods., LLC, 580 U.S. 328, 33738 (2017) (explaining the interpretation of statutes of

limtiations generally).

b. Application of the “standard rule,” i.e., that infringement claims accrue each time an infringing act

occurs, is not an inflexible bar. That “standard rule”

leaves room for equity, and also is the only rule that

assigns the burdens of production and persuasion in a

fair and balanced manner. Limitations periods are

customarily subject to equitable tolling, unless tolling

would be inconsistent with the statutory text, and

Congress is presumed to draft such provisions against

that background principle. Young, 535 U.S. at 49-50.

For copyright infringement claims, a defendant

bears the burden of establishing that the alleged infringing act occurred more than three years prior to

the complaint’s filing, which then shifts the burden to

the plaintiff to establish a basis for equitable tolling.

Prather, 446 F.2d at 339-41. This rule is most consistent with the text of the statute and this Court’s

precedents, and it produces the fairest results.

Under the “standard rule,” most cases will survive

a motion to dismiss unless tolling is foreclosed by the

pleadings or the public nature of the alleged infringement. At summary judgment or trial, the defendant

must establish the date of the infringing act or acts,

something that is within the defendant’s ability to

prove. If infringement occurred more than three years

before suit, the burden shifts to the plaintiff to provide

a basis for tolling (or a triable issue to survive summary judgment). For example, to establish tolling

based on fraudulent concealment, a plaintiff must

show the defendant took an affirmative act to conceal

the infringement. See, e.g., Taylor, 712 F.2d at 1118

(“The term ‘fraudulent concealment’ implies active

misconduct”); Pace v. DiGuglielmo, 544 U.S. 408, 418

(2005) (“Generally, a litigant seeking equitable tolling

bears the burden of establishing two elements: (1) that

he has been pursuing his rights diligently, and (2) that

some extraordinary circumstance stood in his way.”).

If a basis for equitable tolling exists, the burden

shifts back to the defendant to establish when the tolling period ended, i.e., when the plaintiff knew or

should have known of the claim. See, e.g., Prather, 446

F.2d at 339-41; Credit Suisse Sec. (USA) LLC v. Simmonds, 566 U.S. 221, 227 (2012) (“It is well established

* * * that when a limitations period is tolled because

of fraudulent concealment of facts, the tolling ceases

when those are, or should have been, discovered by the

plaintiff.”).

But under the “discovery rule” applied in most

lower courts, defendants are required in the first instance to prove what a plaintiff knew or should have

known, putting defendants to the near-impossible burden of proving the mind of the plaintiff, a negative fact

peculiarly within the control of the plaintiff. Cf. Allstate Fin. Corp. v. Zimmerman, 330 F.2d 740, 744-45

and n.5 (CA5 1964) (collecting cases and explaining,

“[w]here the burden of proof of a negative fact normally rests on one party, but the other party has peculiar knowledge or control of evidence as to such matter, the burden rests on the latter to produce such evidence, and failing, the negative will be presumed to

have been established.”). The “discovery rule” improperly requires defendants to prove a negative fact, i.e.,

the plaintiff’s knowledge, where the plaintiff is the

only source of evidence on that fact. That places an

unfair and inequitable burden on defendants, and effectively eliminates the Act’s statute of limtiations altogether.

B. The Court Should Grant Certiorari to Resolve the

Question Presented and Hold That Copyright

Infringement Claims “Accrue” Based on the

Occurrence of the Infringing Act, But That

General Equitable Principles Can Apply to Toll

the Limitations Period.

1. Properly interpreting the statute of limitations

for copyright infringment claims is “vital,” more so

than most statutes of limitations, due to the growing

trend of copyright “trolling.” See, e.g., Design Basics,

LLC v. Lexington Homes, Inc., 858 F.3d 1093, 1097

(CA7 2017) (explaining the unsavory rise of intellectual property “trolling”); M. Sag, Copyright Trolling,

An Empirical Study, 100 Iowa L. Rev. 1105, 1107-11,

1113-14 (2015) (discussing and describing copyright

“trolling”). Such cases are characterized by copyright

holders bringing “strategic infringement claims of dubious merit in the hope of arranging prompt settlements with defendants who prefer to pay modest or

nuisance settlements rather than be tied up in expensive litigation.” Design Basics, 858 F.3d at 1097; accord Klinger v. Conan Doyle Estate, Ltd., 761 F.3d 789,

792 (CA7 2014) (“The [troll’s] business strategy is

plain: charge a modest license fee for which there is no

legal basis, in the hope that the ‘rational’ writer or

publisher asked for the fee will pay it rather than incur a greater cost, in legal expenses, in challenging the

legality of the demand.”); Live Face on Web, LLC v.

Cremation Soc’y of Ill., Inc., 77 F.4th 630, 634 (CA7

2023) (same).

That growing trend of copyright “trolling” is often

associated with allegations of Internet-based infringement, where a defendant’s acts from years (or decades)

earlier is often archived and capable of being searched

years after the act occurred. See, e.g., Design Basics,

858 F.3d at 1096-98; I. Polonsky, You Can’t Go Home

Again: The Righthaven Cases and Copyright Trolling

on the Internet, 36 Colum. J.L. & Arts 71, 78-80 (2012).

As such, parties who may have inadvertently used a

copyrighted image or other work is subject to being

haled into court years after the fact, where memories

have faded, and evidence of possible licensing or other

defenses have been lost due to the passage of time.

See, e.g., Gabelli 568 U.S. at 448-49 (citing Wood, 101

U.S. at 139; and Wilson, 471 U.S. at 271).

2. Permitting a “discovery rule” encourages unnecessary litigation. It encourages the filing of claims

long after the three-year limitations period has expired. It encourages parties to search the Internet Archive’s WayBack Machine for evidence of an infringing

act from years (or decades) earlier.

This causes the most harm to individual defendants and small companies that don’t have significant

funds to fight over a claim from years prior. For exactly that reason, these are the type of defendants regularly targeted for these types of claims. They are

easy prey; they are most likely to pay a nuisance settlement to quickly resolve the action. Avoiding litigation over stale, and dubious, claims is exactly why

Congress passes statutes of limtiations and why this

Court deems them “vital” to the welfare of society.

See, e.g., Wood, 101 U.S. at 139; Wilson, 471 U.S. at

271; Gabelli 568 U.S. at 448-49. Those goals are defeated by permitting a “discovery rule.” The “discovery rule” judicially eliminates that which Congress intentionally added to the Copyright Act.

The question presented in the petition is “vital” to

the statutory text of §507(b) have rightly concluded

that it embodies the “standard rule,” i.e., the “incident

of injury rule,” yet many circuits—and nearly all district courts—hold that infringement claims “accrue”

based on an atextual “discovery rule.” Only this Court

can harmonize the law by properly interpreting

§507(b), and remove those courts from the “groove”

they have found themselves in.

In so doing, the Court should hold, as three Justices discussed last term, that the Copyright Act “does

not tolerate a discovery rule.” Warner Chappell, 601

U.S. at 374 (Gorsuch, J., dissenting). If it is plausible

based on the text—and §507(b) is—Congress is presumed to have adopted an occurrence rule when creating a statute of limitations. Rotkiske, 589 U.S. at

13-14. Congress is also presumed to draft limitations

periods in light of the basic principle that equitable

tolling applies unless inconsistent with the text.

Young, 525 U.S. at 49-50. Applying these principles,

copyright claims “accrue” when the infringing act occurs, but they are subject to general principles of equitable tolling, such as for fraudulent concealment,

which can toll the limitations period, but only after the

plaintiff establishes a basis for tolling. Pace, 544 U.S.

at 418.

The petition for a writ of certiorari should be

granted.

CONCLUSION

For the foregoing reasons, amicus respectfully submits that the Court should grant the petition for a writ

of certiorari and resolve the question presented by

holding that copyright infringment claims “accrue”

under §507(b) based on the occurrence of the alleged

infringing act, and that it is the plaintiff’s burden to

establish entitlement to equitable tolling doctrines

before one can be applied.

Respectfully submitted,

/s/

ANDREW D. LOCKTON

Counsel of Record

EDWARD F. MCHALE

MCHALE & SLAVIN, P.A.

2855 PGA Boulevard

Palm Beach Gardens, FL 33401

(561) 625-6575

alockton@mchaleslavin.com

Counsel for Amicus Curiae

February 2025

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.