De Fontbrune v. Wofsy

Background

The dispute concerned French litigation over copyrights in photographs of Pablo Picasso’s works. Plaintiffs, acting for the Estate of Yves Sicre de Fontbrune, had acquired Cahiers d’Art and rights to the Zervos Catalogue. Alan Wofsy and Alan Wofsy & Associates later published The Picasso Project, which reproduced photographs appearing in that catalogue.

In 2001, a French appellate court found defendants liable for copyright infringement, awarded relief to plaintiffs, and prohibited further use of the photographs subject to an astreinte—a monetary penalty that would accrue for later violations. In 2011, plaintiffs began a French proceeding to enforce that astreinte after copies of The Picasso Project were found in a French bookstore. Defendants did not appear. On January 10, 2012, the French enforcement court awarded plaintiffs €2 million.

Plaintiffs later sued in California under the Uniform Foreign-Country Money Judgments Recognition Act, seeking recognition of the 2012 French judgment. The Ninth Circuit had previously held that the astreinte was not a fine or other penalty under the Act and had sent the case back for further proceedings. Both sides then moved for summary judgment, which is a ruling without a trial when no genuine dispute exists over facts that could affect the result.

Recognition Act and Defenses

Under California’s Recognition Act, the party seeking recognition must first show that the foreign judgment grants money, is final and enforceable where issued, and is not a judgment for taxes, a fine or other penalty, or domestic-relations relief. If that showing is made, the judgment is presumed enforceable, and the opposing party must establish a statutory reason for refusing recognition.

Defendants raised several defenses, including lack of personal jurisdiction, lack of subject-matter jurisdiction, insufficient notice, fraud, conflict with another final judgment, concerns about the integrity of the French court, and incompatibility with due process.

Personal Jurisdiction

The court granted partial summary judgment for Plaintiffs on the personal-jurisdiction defense. Defendants had later initiated a French Review Proceeding seeking to vacate the 2012 judgment and arguing that plaintiffs had transferred away the right to enforce the astreinte. Because defendants challenged the 2012 judgment on its merits in that proceeding, the court held that they had voluntarily submitted to the French court’s jurisdiction and could not simultaneously claim that the court lacked personal jurisdiction.

Subject-Matter Jurisdiction and Notice

The court did not resolve whether the French court had subject-matter jurisdiction. The parties agreed that an astreinte could be transferred, but the 2001 transfer documents did not clearly show whether plaintiffs had transferred the astreinte. The court found that the evidence created a genuine dispute over whether plaintiffs retained the right to liquidate it. That question could affect whether the French court had subject-matter jurisdiction over the enforcement proceeding.

The court also found factual disputes concerning notice. Defendants did not receive the summons or complaint before the French court’s 2012 judgment and first learned of the proceeding when they received a French-language order in late November 2011. The court held that whether plaintiffs’ service efforts were reasonably calculated to notify defendants, and whether the later mailing gave them enough time to defend, could not be decided on summary judgment.

Fraud and Due Process

The court denied summary judgment on the fraud defense because factual disputes existed about whether plaintiffs represented to the French court that they owned the copyrights and the right to liquidate the astreinte, despite the 2001 transfer. If plaintiffs did not own that right and intentionally misled the French court, the conduct could constitute extrinsic fraud—conduct that deprives the opposing party of a meaningful opportunity to present its case.

The court also declined to grant Plaintiffs’ motion on the due-process defense. Defendants’ arguments included insufficient notice, an allegedly improper judgment against the wrong parties, alleged misrepresentations about ownership of the astreinte, and an allegedly arbitrary award. Because the notice issue remained factually disputed, the court held that the overall fairness of the French proceeding presented material factual questions.

Public Policy and Fair Use

The court granted Defendants’ motion for summary judgment based on the Recognition Act’s public-policy exception. Defendants argued that the French judgment conflicted with U.S. policy protecting free expression and the arts because their copying was fair use.

Applying the four fair-use factors under U.S. copyright law, the court found that the purpose and character of The Picasso Project strongly favored fair use because the books were commercial reference works intended for libraries, academic institutions, art collectors, and auction houses. The nature of the Zervos Catalogue weighed slightly against fair use because the photographs had previously been found to be creative works, although the catalogue was documentary in purpose. The amount copied favored fair use because defendants copied fewer than ten percent of the catalogue’s photographs and plaintiffs did not show that the copied images represented the catalogue’s core. The market-effect factor strongly favored fair use because the two publications served different markets, had substantially different prices, and plaintiffs offered no evidence that The Picasso Project harmed the market for the Zervos Catalogue.

The court concluded that defendants’ use qualified as fair use under U.S. law, while French law had no comparable fair-use defense. It therefore held that the 2012 French judgment conflicted with U.S. public policy favoring criticism, teaching, scholarship, and research. In the interest of justice, the court declined to recognize the judgment.

The court rejected Defendants’ separate argument based on public policy favoring the promotion of the arts. That argument depended on treating the photographs as insufficiently original for U.S. copyright protection, but the French appellate court had already found that they were original works. The court stated that it would not reconsider the merits of the French copyright judgments.

Disposition

The court granted Defendant’s motion for summary judgment. It denied in part and granted in part Plaintiffs’ cross-motion for summary judgment, including partial summary judgment for Plaintiffs on the personal-jurisdiction, conflicting-judgment, and French-court-integrity defenses. The court did not recognize the 2012 French judgment.