United States Court of Appeals

for the Fifth Circuit

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 Copyright Act of 

1976 must be “commenced within 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 

United States Court of Appeals

Fifth Circuit

FILED

April 13, 2023

Lyle W. Cayce

Clerk

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a holding that the clock starts when an act of copyright infringement occurs. 

Hearst arguesthat 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.

I.

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 

Times Union, the Greenwich Time, and The Middletown Press. On 

February 19, 2020, Martinelli discovered the article on the Elle Décor

1 We adopt the parties’ spelling of the estate’s name, even though the more widely 

accepted spelling appears to be “Luggala.”

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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 copyright infringement claim 

against Hearst Magazine 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 

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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.

A.

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 

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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)).

B.

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 copyright infringement claim.

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.

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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 copyright-infringement claim runs from 

the date that 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).

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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 recognizing that “[o]ther 

circuits agree that this is the proper inquiry” without endorsing the reasoning 

of those out-of-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] 

2 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 copyright 

ownership claim, did not address whether the discovery 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 a copyright ownership claim. See id.

(citing Est. of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 165 (2d Cir. 2003)).

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toll the statute of limitations” under the Copyright Act as amended in 1957.3

446 F.2d at 341. The district court 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 federal-law 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 

3 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 Copyright Act of 1976: “No civil action 

shall be maintained under [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 (“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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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 requirements 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.

C.

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 

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when infringement occurs or by “fundamentally chang[ing] the focus of the 

relevant analysis” with respect to the Copyright Act. Bonvillian, 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).

1.

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

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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 Copyright Act, meaning that “each infringing act 

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 whether the discovery 

or occurrence of infringement starts the clock, what mattered to the Court 

was that the “limitations period . . . coupled to the separate-accrual rule . . . . 

allows a copyright owner to defer suit until she can estimate whether 

litigation is worth the candle.” Id. at 682-83. 

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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 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 

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§ 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 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 

4 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. 

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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 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 Copyright Act “are not solely intended to approximate actual 

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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 accrual, as discussed in Petrella, takes as given 

that a copyright claim accrues when an infringing act occurs (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). 

2.

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 

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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 “[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.

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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-

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 Rotkiskesaid 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 

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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 “[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 Copyright Act’s limitations period, which provides 

that 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 

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context, incorporate a general discovery rule unless Congress has expressly 

legislated otherwise,” Rotkiske did not fundamentally 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, Eckstein cited to, among other cases, our 

decision in In re FEMA Trailer Formaldehyde Products Liability Litigation, 646 

5 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.

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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 

6 Graper’s reference to out-of-circuit cases using the discovery rule is also different 

from Eckstein’s citation to FEMA Trailer. 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.

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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 “post-Johnson, 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 point.” Id. It leaves room for a Copyright Act discovery 

rule grounded in the nature of the copyright infringement injury. 

3.

Both circuits that have considered whether Petrella and Rotkiske

overturned their Copyright Act discovery rules have rejected the argument 

and stuck with their precedents.

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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 Copyright Act’s 

statute of limitations,” the Second 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 

7 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.

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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.

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