Ninth Circuit reverses district court grant of summary judgment, finding reproductions of photographs of collected works of Pablo Picasso in series of books are not protected by fair use and that French judgment of copyright infringement awarding damages to owner of intellectual property rights in photographs was not against public policy of United States and California.
Starting in the 1930s, photographer Christian Zervos created a catalogue raisonne, or complete published catalog, of the works of Pablo Picasso. In totality, the Zervos Catalog contained almost 16,000 photographs of Picasso’s works. In 1979, Yves Sicre de Fontbrune acquired all of Zervos’ intellectual property rights, including those of the Zervos Catalog. In 1991, Alan Wofsy acquired permission from the estate of Pablo Picasso to publish a retrospective on Picasso’s works. Wofsy published a series of books, The Picasso Project, intended to form an illustrated catalog of all of Picasso’s works in chronological order. Included in The Picasso Project were reproductions of photographs from the Zervos Catalog.
Copies of The Picasso Project were seized from a book fair in Paris, and Sicre de Fontbrune subsequently brought a copyright infringement suit in 1998 against Wofsy in the French courts. The French Court of Appeal determined that the Zervos photographs were subject to copyright protection (due to the deliberate artistic choices made in photographing each of Picasso’s works), that Sicre de Fontbrune owned the intellectual property rights to the Zervos photographs and that Wofsy had violated those intellectual property rights. As part of the judgment, the Court of Appeal awarded Sicre de Fontbrune an astreinte, a legal device that would entitle Sicre de Fontbrune to damages of 10,000 francs for each infraction of the prohibition against Wofsy’s use of the Zervos photographs. Wofsy appealed to the French Supreme Court, but his appeal was dismissed because he refused to pay the damages and costs awarded to Sicre de Fontbrune by the Court of Appeal.
In 2011, Sicre de Fontbrune brought a new suit in French court seeking to enforce the terms of the astreinte after copies of The Picasso Project were found in a bookstore in Paris. Wofsy failed to appear before the court, and in a default judgment, the court awarded Sicre de Fontbrune 2 million Euros in damages. Sicre de Fontbrune then brought suit in Superior Court of California, Alameda County, to enforce the French judgment. Wofsy removed the case to federal court, and the district court dismissed the case pursuant to Federal Rule of Civil Procedure 12(b)(6). The Ninth Circuit reversed and found that the astreinte was not a penalty but a judgment for a sum of money that was cognizable under California’s Recognition Act. On remand, the district court granted summary judgment to Wofsy, determining that the astreinte was repugnant to the public policy of the United States and California that favors free expression.
On appeal, the Ninth Circuit panel noted that the domestication of foreign judgments is governed by the law of the state in which enforcement is sought. Accordingly, California’s Recognition Act is the governing law applied to this case. The Recognition Act is modeled on the federal Uniform Foreign-Country Money Judgments Recognition Act. If a judgment falls within the ambit of the Recognition Act (as the parties both acknowledge that the astreinte did), enforcement is presumed.
However, the Recognition Act has a public policy exception: A court may decline to recognize a foreign judgment if the judgment is based on a cause of action or claim that is repugnant to the public policy of California or the United States. The district court found that the use of the Zervos photographs would have fallen under the fair use defense to copyright infringement, and the fact that the French court did not allow such a defense made the astreinte repugnant to public policy.
The Ninth Circuit disagreed, first noting that the standard for repugnancy was much higher than simple incompatibility with U.S. or California law: It requires a direct and definite conflict with fundamental American principles. In this case, given that it focused on copyright, the French decision would have to contradict established constitutional principles. More significantly, however, the court found that The Picasso Project was not protected by fair use, and therefore the question of repugnancy was irrelevant.
The Ninth Circuit conducted the fair use analysis, beginning with the purpose and character of the allegedly infringing work. While Wofsy conceded that The Picasso Project was a commercial endeavor, which weighs against a finding of fair use, the district court noted that it was intended as a reference piece for libraries, art collectors and academic institutions, and stated that it fell within the type of criticism, comment, scholarship and research that are typically determined to be noninfringing. The Ninth Circuit noted, however, that the end use of the infringing work is largely irrelevant to the analysis of purpose under fair use and that The Picasso Project is ultimately a reproduction of copyrighted material in a book for sale. Further, The Picasso Project used exact replicas of the Zervos photographs, which the court determined were not transformative in a manner that would entitle them to fair use protection. Ultimately, the purpose of both the Zervos Catalog and The Picasso Project is the same: to depict the works of Pablo Picasso. The fact that The Picasso Project is commercial and not transformative therefore weighed heavily against a finding of fair use.
The appellate court then turned to the question of the nature of the copyrighted work. Wofsy presented expert testimony that stated that catalogues raisonnes are generally intended to be documentary and not artistic in nature. However, given that the French Court of Appeal found that the Zervos Catalog was entitled to copyright protection due to the artistic nature of the photographs, the court concluded that the photographs were sufficiently artistic to be deserving of copyright protection.
Turning to the question of the amount and substantiality of the portion of the copyrighted material used, the court reasoned that while the district court had focused on the fact that only 1,492 of the 16,000 photographs from the Zervos Catalogue were reproduced in The Picasso Project, each of those photographs was produced in its entirety. Given that the works were not transformative, this factor weighed against a finding of fair use.
Finally, the court examined the effect of the use on the potential market for the copyrighted work. While Wofsy offered evidence that auction prices for the Zervos Catalogue had actually increased during the time that The Picasso Project was on the market, the Ninth Circuit determined that this was the wrong question. Rather, the question is how The Picasso Project affects the market value for licensing the photographs in the Zervos Catalogue. Regardless, the fact that the infringing work is both commercial and non-transformative creates a presumption of market harm.
All four factors therefore weighed against a finding of fair use. Having concluded that The Picasso Project was not entitled to a fair use defense, the court determined that summary judgment in favor of Wofsy should be reversed and that Sicre de Fontbrune was entitled to summary judgment.
Summary prepared by David Grossman and Alex Inman