Laches from Copyright Ruling: What You Need to Know in 2015
Laches defense involves un-reasonable delay that prejudices an opponent in legal cases.
The Court of Appeals for the Federal Circuit ordered a re-hearing en banc in SCA Hygiene Products Aktiebolag v. First Quality Baby Products LLC. The court will reconsider the doctrine of laches in patent law in light of a U.S. Supreme Court case earlier this year that ruled on the laches doctrine in copyright law. Specifically, the court announced that it will consider whether previous cases be over-ruled so the defense of laches is not applicable to bar a claim for damages based on patent infringement occurring within the six-year damages limitations period, and whether the defense of laches will be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief. In 2014, the U.S. Supreme Court ruled that the defense of laches cannot bar a copy-right claim. This might be true also hold true for patent cases. Several litigants suggested that the court re-consider the 1992 Laches precedent in A.C. Aukerman v. Chaides Construction.
If the courts do away with laches, it would give patent holders a strategic advantage to maintain a patent, let damages increase, and sue or ask for license; maximizing gain by pursuing successful products. The Supreme Court decision stemmed from a copyright infringement suit, Petrella v. Metro-Goldwyn-Mayer, Inc., in which the daughter of the late screenwriter Frank Petrella, brought a copyright infringement suit seeking royalties from the continued commercial use of a film. Ultimately, the court ruled that laches cannot bar damages for the three years prior to filing a suit.
The Knowledge Group has assembled a panel of key thought leaders to provide the audience with an in depth discussion of Laches from Copyright Ruling. Speakers will also offer best practices in implementing an effective Copyright Protection Strategy and help attendees ensure compliance with Intellectual Property Laws.
Key topics include:
- Laches From Copyright Ruling: An Overview
- A.C. Aukerman v. Chaides Construction
- Lawsuit for Negligence
- Litigation for Copyright Infringement
- Recent Developments on Copyright Ruling
- Actions and Possible Sanctions
Robert A. McFarlane, Partner
Hanson Bridgett LLP
- Laches is an equitable defense that, until the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer, Inc., could bar recovery for copyright infringement if the copyright holder sat on his or her rights and unduly delayed bringing a suit for copyright infringement. The defense offered a significant barrier to suit and could be an effective defense for the accused infringer. Prior to Petrella, an accused infringer could use the defense of laches as a powerful defense.
- The Petrella decision largely did away with the equitable defense of laches in copyright infringement matters, finding that the statutory three-year statute of limitation, not the equitable concept of laches, governs the timeliness of an infringement action. Following Petrella what, if anything, remains of the laches defense in copyright matters.
- The Federal Circuit ruled in 1992 that laches can bar damages incurred prior to the commencement of a patent infringement action. The Supreme Court dropped a footnote in its Petrella decision referring to that precedent, but noting that the Court had not had occasion to review the Federal Circuit's position. This footnote has been viewed as an open invitation to limit the equitable defense of laches in the patent infringement context, and the Federal Circuit is considering the issue en banc in SCA Hygiene Products v. First Quality Baby Products LLC.Does the defense of laches still apply in patent infringement actions and how will the Federal Circuit rule thePetrella case applies in the patent infringement context.
Donald J. Curry, Partner
Fitzpatrick, Cella, Harper & Scinto
- Overview of the laches doctrine and the Supreme Court Petrella decision concerning suits for copyright infringement.
- The Supreme Court Petrella decision is a game-changer in favor of small copyright plaintiffs who wish to sue for copyright infringement.
- In conjunction with the Petrella decision, recent developments in the Second Circuit Court of Appeals – a well respected and leading venue for copyright suits – will enhance plaintiffs’ ability to recover for copyright infringement of their works.
- The ways in which content providers (studios, etc.) should take the Petrella decision into account in their business practices.
- Reasons why the Petrella decision may well result in changes to the law relating to laches in patent infringement lawsuits, in view of the Federal Circuit’s agreement to rehear en banc the decision in SCA Hygiene Prods. v. First Quality Baby Prods., and asked for briefing on whether its decision in Aukerman v. Chaides should be overruled in view of the Supreme Court’s Petrella decision.
Leslie A. Bertagnolli, Partner
Baker & McKenzie LLP
- Petrella has precipitated an immediate reexamination of the laches defense in patent law law but its most significant effect may be on copyright reform .The decision may become the poster child for limiting reversionary rights, eliminating or shortening the statute of limitations, or reforming the remedies in the Copyright Act.
- The treatment of laches in Petrella should stimulate an increased focus on due diligence among content users at the time of acquisition of works as to authorship, scope of rights acquired, timing and likely value of reversionary rights as well as the valuation of user contributions
- Both authors and content users will need to review litigation strategies ranging from evidence preservation to timing of lawsuits with a view to the long life of copyrights and the various types of relief available
Who Should Attend:
- Copyright Lawyers
- Intellectual Property Lawyers
- IP and Copyright Consultants
- In-House Lawyers
- In house Counsel (Public & Private)
- Other Related/Interested Professionals and Organizations
Leslie Bertagnolli has more than 30 years of experience representing multinational companies in trademark, copyright and unfair competition matters in the US and abroad. She is a founding member of the Firm’s Global IP Practice, and a pioneer in Baker & McKenzie’s integrated international trademark practice, and previously served as chair of the North America IP management committee, and North American representative on the Global IP Steering Committee. Ms. Bertagnolli concentrates on helping companies select, register, monitor and enforce their trademarks and copyrights at home and across borders. She has extensive experience in all aspects of trademark selection, registration and enforcement and copyright registration and enforcement in the US, and advises multinational companies on licensing issues related to buying and selling trademarks worldwide.
Leslie Bertagnolli has more than 30 years of experience representing multinational companies in trademark, copyright and unfair competition matters in …
Donald Curry has extensive experience in patent, trade secret and copyright litigation in the computer, pharmaceutical and chemical industries, as well as providing general counseling to clients on intellectual property matters. Mr. Curry has advised clients on copyright issues and represented clients in the music, publishing and computer industries in copyright litigation, and is the Chair of the firm’s Copyright Practice Group. He has engaged in several inter partes review trials before the Patent Trial and Appeal Board, and is a member of the firm’s PTO Contested Proceedings Committee, which focuses on contested patent proceedings under the America Invents Act.
Donald Curry has extensive experience in patent, trade secret and copyright litigation in the computer, pharmaceutical and chemical industries, as …
Rob chairs Hanson Bridgett’s Technology Practice. He is a registered patent attorney whose litigation practice focuses on patent infringement matters, trademark and copyright disputes, and technology-related commercial disputes. He also advises clients on a wide range of intellectual property matters relating to licensing negotiations, trademark, copyright, and trade secrets. He has argued cases before the Federal Circuit and the California Courts of Appeals, and represents his clients in courts throughout the United States, the International Trade Commission and the Trademark Trial and Appeal Board. Rob litigates trademark, trade dress, and unfair competition matters involving consumer products; and cases involving trade secret issues relating to the use and ownership of proprietary inventions in diverse industries. He is an Adjunct Professor at Golden Gate University School of Law where he teaches intellectual property and patent litigation.
Rob chairs Hanson Bridgett’s Technology Practice. He is a registered patent attorney whose litigation practice focuses on patent infringement matters, …
Print and review course materials
Method of Presentation:
NASBA Field of Study:
Specialized Knowledge and Applications
NY Category of CLE Credit:
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About Baker & McKenzie LLP
Executing the right IP strategy is key to successfully navigating today’s global marketplace.
At Baker & McKenzie, we match emerging IP challenges with sophisticated and cost effective solutions. Taking a strategic approach to IP management, we leverage our unparalleled global reach and cutting-edge processes and technologies to help you protect – and optimize – the value of intellectual property.
For over 50 years, we have served as trusted IP advisers to global market leaders in technology, luxury brands, entertainment, media, consumer products, pharmaceuticals and life sciences. Our team of nearly 400 IP professionals in more than 40 countries offers innovative and commercially sound advice to help manage, enforce and protect your IP assets even in the most challenging jurisdictions.
Awarded Global Law Firm of the Year: Intellectual Property - (Chambers Global, 2013 and 2014)
About Fitzpatrick, Cella, Harper & Scinto
At Fitzpatrick, IP is not just a practice area – it is our sole focus. We have one of the premier patent litigation and prosecution practices and consistently appear in the list of top litigation and patent prosecution firms.
Our practice is dedicated exclusively to intellectual property (“IP”), and we cover the spectrum of intellectual property services, including applying for patent and trademark and copyright protection, litigation, appeals, interferences, post-grant challenges (e.g., IPRs), alternative dispute resolution, licensing, opinions, corporate transactions and due diligence. The firm provides these services to clients from virtually every industry, including aerospace, automotive, biotechnology, chemicals, computers, consumer goods, electronics, energy, financial services, industrial equipment, manufacturing, marine, medical devices, nanotechnology, networks, pharmaceuticals, software, semiconductor technologies and telecommunications. As new technologies emerge, the firm is at the forefront in developing strategies for their intellectual property protection. Over 95% of the firm’s attorneys hold scientific or technical degrees and many also have substantial industry experience in various fields of technology including chemistry, biotechnology, pharmaceuticals, software and computers.
Our offices in New York, Washington D.C. and Orange County, California, serve a diverse national and international clientele from start-ups to Fortune 500 companies. Founded in 1971, we have continually kept pace with the complex world of new technologies and the strategies required for protecting knowledge, vision and ideas.
About Hanson Bridgett LLP
Hanson Bridgett is a law firm with more than 150 attorneys in offices in San Francisco, Sacramento, the North Bay and the East Bay. Serving clients since 1958, we are well known in Northern California and have earned a national reputation in many of our practice areas including Intellectual Property and Technology. Our Technology Practice provides comprehensive advice on issues critical to the success of companies at all stages of their growth and advises companies that range from start-ups to established Fortune 500 companies.