The US Court of Appeals for the Ninth Circuit analyzed the fair use doctrine of US copyright law in a dispute seeking recognition of a 2001 French judgment regarding a finding of copyright infringement in certain photographic works featuring works by Pablo Picasso. The court’s analysis eventually led to an overturning of the district court’s judgment for the defendants against whom the French judgment was directed. Vincent Sicre de Fontbrune et al.; v. Alan Wofsy et al, cases #19-16913; -17024 (9th circle, July 13, 2022) (Hurwitz, VanDyke, JJ.; ericksenDistribution J.) The court referred to another procedure to review the enforceability of the judgment under the California Uniform Foreign-Country Money Judgment Recognition Act (California Recognition Act).
In 1979, Yves Sicre de Fontbrune acquired the business capital and intellectual property rights Cashier d’Art, a fully published catalog of the works of Pablo Picasso. The catalog was created by photographer Christian Zervos in 1932 and contained nearly 16,000 photographs of Picasso’s work. In 1991 Alan Wofsy Fine Arts received permission to publish from the estate of Pablo Picasso The Picasso Projecta work that illustrates and describes Picasso’s works. The Picasso Project included reproductions of certain photographs Cashier d’Art.
Sicre de Fontbrune then sued Wofsy in France for copyright infringement The Picasso Project was put up for sale at a book fair in Paris and French police confiscated two volumes of the work. A court of first instance in France initially determined that the photographs are documentary in nature and cannot be protected by copyright. In 2001, however, the French Court of Appeal ruled that the photographs in question were not mere copies of Picasso’s work, but had added creative elements through deliberate choices of lighting, lens filters and framing. The Court of Appeal overturned the trial court, found Wofsy “guilty of copyright infringement” and ruled in favor of Sicre de Fontbrune.
The Court of Appeals’ ruling was followed by a lengthy and complex procedural process, during which appeals and new lawsuits were filed. Wofsy failed to appear several times while simultaneously filing a review case before the French courts. However, before Wofsy commenced French review proceedings, Sicre de Fontbrune brought an action in the Superior Court of California in Alameda County for recognition of the original French judgment. Wofsy referred this complaint to the district court, which dismissed the case unconditionally under Federal Civil Procedure Code 12(b)(6). The Ninth Circuit Court of Appeals reversed and found that the French verdict was not a penalty but an amount of money recognizable under the California Recognition Act.
While in custody, the parties filed countermotions for summary judgment on eight California Recognition Act defenses. The district court granted Wofsy only one of the defenses in the summary judgment, finding that the French judgment “contradicts public policy”.
In the appeal of the International Diversity Case, the Ninth Circuit stated that the enforceability of foreign judgments is governed by the law of the state in which enforcement is sought, making the California Recognition Act applicable. Wofsy put forward five legal grounds for not recognizing the French judgment. Four of the five legal grounds related to jurisdictional, procedural and fraud issues. On each of these four grounds, the court either found that the plaintiffs were entitled to a partial summary judgment or found that Wofsy was not entitled to a summary judgment. The fifth reason plaintiffs challenged the District Court’s summary judgment for Wofsy was the court’s conclusion that the French copyright infringement judgment violated US public policy, which promotes freedom of expression.
The Ninth Circuit first found that the California courts set a high bar for inconsistency under the California Recognition Act and that the differences in the laws of the disputed countries are insufficient. Instead, the verdict must be so offensive to public order that it is “detrimental to accepted moral standards and the general interests of citizens”. Against this background, the court examined Wofsy’s contention that the fair use doctrine of US copyright law (a concept unavailable under French law) would have protected his copying of the photographs in question. In rejecting this allegation, the court did not consider Wofsy’s second allegation that imposing a conviction for infringement in a fair use case was against public policy.
The Ninth Circuit established the four fair use factors under Section 107 of the Copyright Act:
- Purpose and nature of use, including whether such use is commercial in nature or for non-profit educational purposes
- The type of copyrighted work
- The quantity and materiality of the portion used in relation to the copyrighted work as a whole
- The effect of the use on the potential market for or value of the copyrighted work.
Regarding Wofsy’s copying of more than 1,490 photographs Cashier d’Artthe court found that each of the four factors must be weighed against fair use.
As for the first factor, the Ninth Circle made use of the Cashier d’Art Photographs reproduced in full in The Picasso Project to be commercial and non-transformative, because Wofsy’s use of the photos in his avowed “commercial endeavor” served no entirely different function than the originals. Wofsy’s claim that the works were intended for teaching, scholarship or research was “largely irrelevant” to the court when the copyrighted works reproduced were nevertheless offered for sale.
As for the second factor, courts have generally found that fair use is narrower in relation to unpublished works than in relation to published works. Therefore, proper investigation in a case involving published works, such as Cashier d’Art Photographs, focuses on the creativity of the works. The Ninth Court found that photographs are generally considered to be protected by copyright and underlined the French court’s assessment that the Cashier d’Art Photographs involved conscious artistic choices by the photographer. Due to their “creative qualities”, this factor has been found to weigh “strongly” in favor of fair use.
The third factor was against fair use, as Wofsy did nothing to transform the more than 1,490 photographs that were copied in their entirety from the 16,000 Cashier d’Art photographs.
Regarding the fourth factor, which the United States Supreme Court has identified as “undoubtedly the most important element of fair use,” the Ninth Circuit Court held that a presumption of harm to the market for the copyrighted work arises when the infringing work is both commercial and not transformative. Here the court found that increased auction prices e.g Cashier d’Art were merely indicative, stating that Wofsy had not provided any evidence contradicting the presumption of market harm, including any evidence relating to the impact on the market for the licensing of the copyrighted photographs.
Based on its assessment of the factors, the Ninth Court had “serious doubts” that a fair use defense would protect Wofsy’s use of the disputed photos, and therefore found that Wofsy’s inability to assert a fair use defense under French law, was not “direct” and was in clear conflict with fundamental American constitutional principles.” Thus, the court concluded that Sicre de Fontbrune – not Wofsy – was entitled to summary judgment on the defense of public order violations and pre-trial detention.