The US Court of Appeals for the Ninth Circuit analyzed the fair use doctrine of US copyright law in a dispute for recognition of a 2001 French judgment relating to a finding of copyright infringement of certain photographic works featuring the art of Pablo Picasso. The Court’s analysis ultimately resulted in a reversal of the district court’s ruling for the defendants against whom the French judgment was sought. Vincent Sicre de Fontbrune et al; v. Alan Wofsy et al, Case Nos. 19-16913; -17024 (9th Cir. July 13, 2022) (Hurwitz, VanDyke, JJ.; Ericksen, Distr. J.) The Court remanded for further proceedings for an examination of the enforceability of the judgment under California’s Uniform Foreign-Country Money Judgment Recognition Act (California Recognition Act).

In 1979, Yves Sicre de Fontbrune acquired the business capital and intellectual property rights to Cashiers d’Art, a complete published catalog of the works of Pablo Picasso. The catalog was created in 1932 by photographer Christian Zervos and featured almost 16,000 photographs of Picasso’s works. In 1991, Alan Wofsy Fine Arts obtained permission from the estate of Pablo Picasso to publish The Picasso Project, a work illustrating and describing Picasso’s works. The Picasso Project contained reproductions of certain photos from Cashiers d’Art.

Sicre de Fontbrune sued Wofsy in France for copyright infringement after The Picasso Project was offered for sale at a book fair in Paris and French police seized two volumes of the work. A trial court in France first found the photographs to be documentary in nature and ineligible for copyright protection. In 2001, however, the French Court of Appeal determined that the photographs at issue were not mere copies of Picasso’s works but added creative elements through deliberate choices of lighting, lens filters and framing. The Court of Appeal reversed the trial court, found Wofsy “guilty of infringement of copyright” and entered judgment in favor of Sicre de Fontbrune.

A long and complex procedural process followed the Court of Appeal’s ruling, during which appeals and new lawsuits were filed. Wofsy failed to appear on several occasions while also filing a review proceeding in the French courts. Before Wofsy filed the French review proceeding, however, Sicre de Fontbrune brought an action in the Superior Court of California in Alameda County, seeking recognition of the original French judgment. Wofsy removed that action to district court, which dismissed the case with prejudice pursuant to Federal Rule of Civil Procedure 12(b)(6). The Ninth Circuit reversed, finding the French judgment to be not a penalty but a sum of money cognizable under the California Recognition Act.

On remand, the parties submitted cross motions for summary judgment on eight defenses under the California Recognition Act. The district court granted summary judgment for Wofsy on only one of the defenses, finding that the French judgment was “repugnant to public policy.”

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, making the California Recognition Act applicable. Wofsy asserted five statutory grounds for nonrecognition of the French judgment. Four of the five statutory grounds related to jurisdictional, procedural and fraud issues. On each of those four grounds, the court either found that 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 district court’s grant of summary judgment for Wofsy was the court’s conclusion that the French judgment for copyright infringement was repugnant to US public policy favoring free expression.

The Ninth Circuit first noted that California courts have set a high bar for repugnancy under the California Recognition Act, and that differences in the laws of the countries at issue is not enough. Instead, the judgment must be so offensive to public policy as “to be prejudicial to recognized standards of morality and to the general interests of the citizens.” With this background, the Court examined Wofsy’s assertion that the fair use doctrine of US copyright law (a concept not available under French law) would have protected his copying of the photographs at issue. Because the Court rejected this contention, it did not consider Wofsy’s second assertion that imposing judgment for infringement in a case of fair use is repugnant to public policy.

The Ninth Circuit set out the four fair use factors under § 107 of the Copyright Act:

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

2. The nature of the copyrighted work

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

4. The effect of the use upon the potential market for, or value of, the copyrighted work.

With respect to Wofsy’s copying of more than 1,490 photographs from Cashiers d’Art, the Court found each of the four factors to weigh against fair use.

On the first factor, the Ninth Circuit found use of the Cashiers d’Art photographs reproduced in whole in The Picasso Project to be commercial and non-transformative because Wofsy’s use of the photos in his conceded “commercial venture” did not serve an 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 reproduced copyrighted works were nevertheless offered for sale.

On the second factor, courts have generally found that fair use is narrower with respect to unpublished works than with published works. Therefore, the proper inquiry in a case involving published works, such as the Cashiers d’Art photographs, focuses on the creativity of the works. The Ninth Circuit noted that photographs are generally considered to merit copyright protection and highlighted the French court’s assessment that the Cashiers d’Art photographs involved deliberate artistic choices by the photographer. Because of 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 d’Art photographs.

On the fourth factor, which the Supreme Court of the United States has called “undoubtedly the single most important element of fair use,” the Ninth Circuit explained that a presumption of harm to the market for the copyrighted work arises when the infringing work is both commercial and non-transformative. Here, the Court found that increased auction prices for Cashiers d’Art were merely circumstantial and held that Wofsy provided no evidence countering the presumption of market harm, including any evidence regarding the effect on the market for 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 photos at issue and thus found that Wofsy’s inability to allege a fair use defense under French law was not in “direct and definite conflict with fundamental American constitutional principles.” Therefore, the Court concluded that Sicre de Fontbrune—not Wofsy—was entitled to summary judgment on the defense of repugnancy to public policy and remanded.