The U.S. Court of Appeals for the Ninth Circuit analyzed the fair use doctrine of U.S. copyright law in a litigation for recognition of a 2001 French judgment relating to a finding of copyright infringement of certain photographic works depicting the art of Pablo Picasso. The Court’s analysis ultimately led to a reversal of the District Court’s decision for the defendants against whom the French judgment was sought. Vincent Sicre de Fontbrune et al; vs. Alan Wofsy et al, Case No. 19-16913; -17024 (9th Cir. Jul. 13, 2022) (Hurwitz, VanDyke, JJ.; ericsen, Dist. J.) The Court remanded for retrial for a review of the applicability of the judgment under California’s Uniform Foreign-Country Money Judgment Recognition Act (California Recognition Act).
In 1979, Yves Sicre de Fontbrune acquired the share capital and intellectual property rights of Cashiers of Art, a comprehensive published catalog of the works of Pablo Picasso. The catalog was created in 1932 by photographer Christian Zervos and included nearly 16,000 photographs of works by Picasso. In 1991, Alan Wofsy Fine Arts obtained permission from the estate of Pablo Picasso to publish The Picasso projecta book illustrating and describing the works of Picasso. The Picasso project contained reproductions of certain photos of Cashiers of Art.
Sicre de Fontbrune sued Wofsy in France for copyright infringement after The Picasso project was put up for sale at a book fair in Paris and French police seized two volumes of the book. A lower court in France initially found that the photographs were documentary in nature and ineligible for copyright protection. In 2001, however, the French Court of Appeal determined that the photographs in question were not mere copies of Picasso’s works, but added creative elements through deliberate choices of lighting, lens filters and of framing. The Court of Appeal overturned the judgment of the court of first instance, found Wofsy “guilty of copyright infringement” and ruled in favor of Sicre de Fontbrune.
A long and complex procedural process followed the judgment of the Court of Appeal, during which appeals and new lawsuits were filed. Wofsy repeatedly failed to appear while filing review proceedings in French courts. Before Wofsy filed the French review proceeding, however, Sicre de Fontbrune filed suit in California Superior Court in Alameda County, seeking recognition of the original French judgment. Wofsy withdrew that action in the District Court, which dismissed the case with prejudice pursuant to Federal Rule of Civil Procedure 12(b)(6). The Ninth Circuit overruled, finding that the French judgment was not a penalty but a recognizable sum of money under California recognition law.
While on remand, the parties submitted cross motions for summary judgment on eight defenses under the California Recognition Act. The district court granted summary judgment to Wofsy on just one of the defenses, finding the French judgment to be “repugnant to public order”.
On appeal of the international diversity case, the Ninth Circuit explained that the enforceability of foreign judgments is governed by the law of the state in which enforcement is sought, which makes California recognition law applicable. Wofsy invoked five statutory grounds for non-recognition of the French judgment. Four of the five statutory grounds related to matters of jurisdiction, procedure and fraud. On each of these four grounds, the court either found that the plaintiffs were entitled to partial summary judgment, or found that Wofsy was not entitled to summary judgment. The fifth ground on which the plaintiffs challenged the granting of summary judgment to Wofsy by the district court was the court’s finding that the French judgment for copyright infringement was contrary to U.S. public policy favoring freedom of speech.
The Ninth Circuit first noted that California courts have set the bar high for reluctance under the California Recognition Act, and that differences in the laws of the countries involved are not enough. Instead, the judgment must be so offensive to public order that it “is prejudicial to recognized standards of morality and to the general interests of citizens”. In this context, the Court considered Wofsy’s claim that the fair use doctrine of US copyright law (a concept not available in French law) protected his copy of the photographs at issue. Because the Court rejected this thesis, it did not consider Wofsy’s second assertion that imposing a judgment for infringement in a fair use case is contrary to public policy.
The Ninth Circuit has defined the four factors of fair use under Section 107 of the Copyright Act:
The purpose and character of the use, including whether such use is commercial in nature or for non-profit educational purposes
The nature of the copyrighted work
The amount and importance of the part used in relation to the copyrighted work as a whole
The effect of the use on the potential market or value of the copyrighted work.
Regarding Wofsy’s copying of over 1,490 photographs of Cashiers of Artthe Court held that each of the four factors weighed against fair use.
On the first factor, the Ninth Circuit found the use of the Cashiers of Art photographs reproduced in full in The Picasso project be commercial and non-conformative because Wofsy’s use of the photos in its licensed “commercial enterprise” did not serve an entirely different function than the originals. Wofsy’s assertion that the works were intended for teaching, scholarship or research was “largely irrelevant” to the Court when the reproduced copyrighted works were nevertheless offered for sale.
With respect to the second factor, courts have generally concluded that fair dealing is more restricted with unpublished works than with published works. Therefore, the proper investigation in a matter involving published works, such as the Cashiers of Art photographs, emphasizes the creativity of the works. The Ninth Circuit noted that the photographs are generally considered worthy of copyright protection and pointed to the French court’s assessment that the Cashiers of Art the photographs involved deliberate artistic choices on the part of the photographer. Due to their “creative qualities”, this factor was found to weigh “heavily” in favor of fair use.
The third factor weighed against fair use since Wofsy did nothing to transform the more than 1,490 photographs copied in their entirety from the 16,000 Cashiers of Art photographs.
Regarding the fourth factor, which the U.S. Supreme Court called “arguably the most important element of fair dealing,” the Ninth Circuit explained that a presumption of harm to the market for copyrighted work arises when the infringing work is both commercial and non-transformative. Here, the Court concluded that the increase in auction prices for Cashiers of Art were merely circumstantial and found that Wofsy had provided no evidence contradicting the presumption of commercial harm, including any evidence regarding the market effect of licensing the copyrighted photographs.
Based on its assessment of the factors, the Ninth Circuit had “serious doubts” that a fair use defense would protect Wofsy’s use of the impugned photos and therefore concluded that Wofsy’s failure to allege a defense of fair use under French law was not in “direct and certain conflict with fundamental U.S. constitutional principles. Therefore, the Court found that Sicre de Fontbrune – not Wofsy – was entitled to summary judgment on the defense of repugnance to public order and dismissal.