Discovery Rule Applies to Copyright Infringement Claims After Petrella and Rotkiske: Fifth Circuit
Published on 17 Apr 2023
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USA (National/Federal)
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by Practical Law Intellectual Property & Technology
PRACTICAL LAW
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17 Apr 2023
In Martinelli v. Hearst Newspapers, LLC, the US Court of Appeals for the Fifth Circuit held that the district court properly applied the discovery rule for determining when copyright infringement claims accrue for statute of limitations purposes.
In 2015, Sotheby's International Realty commissioned Antonio Martinelli to photograph Lugalla, an Irish estate owned by the Guinness family. In March 2017:
Hearst Newspapers used Martinelli's photographs in two separate occasions in a web-only article published on websites associated with several other newspapers.
Hearst Communications used four of the photographs in a web-only article published on a website associated with Elle Décor magazine.
In November 2018 and between September 2019 and May 2020, Martinelli discovered the articles on various websites. In October 2021, Martinelli sued Hearst Newspapers for copyright infringement, amending his complaint in February 2022 to include the Elle Décor use. Martinelli brought these claims within three years of discovering the infringements, but more than three years after the infringements occurred.
The parties filed cross-motions for summary judgment, stipulating that Hearst committed copyright infringement and that Martinelli would be entitled to $10,000 if he prevails. Hearst argued for application of the injury rule based on intervening Supreme Court decisions, and contended that Martinelli's claims were untimely because they accrued when Hearst infringed Martinelli's copyrights. The US District Court for the Southern District of Texas denied Hearst's motion for summary judgment, granted Martinelli's motion, and rejected Hearst's argument by continuing to follow the discovery rule adopted in Graper.
On appeal, the Fifth Circuit affirmed the district court's decision, finding that Martinelli's copyright infringement claims were timely because he brought them within three years of discovering Hearst's infringements. The court reasoned that:
Under the Fifth Circuit's rule of orderliness, the court must follow the discovery rule established in Graper unless, among other things, a Supreme Court decision fundamentally changes the focus of the relevant analysis such that the court is unequivocally directed to overrule prior precedent.
Petrella and Rotkiske leave open the possibility that the Supreme Court may later decide that the discovery rule does apply to 17 U.S.C. § 507(b), and did not unequivocally overrule Graper, either by:
holding that the limitations period in 17 U.S.C. § 507(b) starts running when infringement occurs; or
fundamentally changing the focus of the relevant analysis.