District court refused to enforce €2 million French copyright infringement award, finding it “repugnant to U.S. policy” after determining that infringing work was fair use under U.S. law.

In 1932, Pablo Picasso’s friend compiled and published a series of photographs of Picasso’s artwork in the Zervos Catalogue. In 1979, Yves Sicre de Fontbrune acquired the rights to the Zervos Catalogue, which included roughly 16,000 photographs of Picasso’s art. In 1995, defendant Wofsy began to publish a series of books reproducing Picasso’s art, called The Picasso Project. In 1996, after discovering defendants’ books, de Fontbrune sued defendants for copyright infringement in France. While he lost at the lower court level, French appeals court, the Cour d’Appel de Paris, found in favor of plaintiff on Sept. 26, 2001,and awarded relief in the form of an “astreinte” of 10,000 francs per violation. An astreinte is a French legal remedy that subjects wrongdoers to damages for further acts of infringement. Approximately 10 years later, plaintiff sought to enforce this astreinte before the enforcement judge of the French trial court, the Tribunal de Grand Instance de Paris. On Jan. 10, 2012, plaintiffs were awarded €2 million against defendants. Plaintiff then sought recognition of this judgment in California through California’s Uniform Foreign Money Judgments Recognition Act—Cal. Civ. Proc. Code Sections 1713 – 1725.

Plaintiff initially sought enforcement of the French judgment in state court (the Superior Court of Alameda County), but defendants removed the case to federal court (the Northern District of California, San Jose Division). The court granted defendants’ initial motion to dismiss, finding that the astreinte was a “fine or other penalty” under the statute and therefore not appropriate for recognition under the Uniform Foreign Money Judgments Recognition Act. De Fontbrune appealed the order, and the Ninth Circuit, finding that the astreinte was not a fine or other penalty, vacated the dismissal order, reversed and remanded. While on appeal, de Fontbrune died, but his wife and children continued to pursue judgment enforcement as his successors in interest.

Rejecting defendants’ seven other arguments for why the French judgment should not be enforced, the court in December 2018 found that the French judgment “is repugnant to public policy” and granted defendants’ motion for summary judgment, refusing to recognize the judgment. The Recognition Act provides that a court is not required to recognize a foreign judgment when “[t]he judgment or the cause of action or claim for relief on which the judgment is based is repugnant to the public policy of this state or of the United States.” Cal. Civ. Proc. Code Section 1716(c)(3). The court adopted defendants’ argument that the French judgment is repugnant to public policy because “it conflicts with the fair use doctrine.” The court reasoned that because defendants’ books are “intended for libraries, academic institutions, art collectors, and auction houses, it falls within the exemplary uses named in the preamble of Section 107 of the Copyright Act.” The court found the first fair use factor “weighs strongly in favor of fair use.” The court also found that the third fair use factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” weighs in favor of fair use because only 1,492 of the roughly 16,000 photographs in the Zervos Catalogue were used by defendants. Finally the court found that the fourth fair use factor weighs in favor of fair use because “no reasonable fact finder could conclude that The Picasso Project and the Zervos Catalogue compete” given the difference in price points ($2,000 – $3,000 versus $20,000 – $100,000, respectively) and intended points of sale (libraries, academic institutions, art collectors and auction houses, versus a “niche market”). Finding three of the four fair use factors in favor of fair use, the court concluded that books intended for libraries, academic institutions, art collectors and auction houses “promote criticism, teaching, scholarship, and research—the very reason the fair use doctrine exists.”