Ninth Circuit reverses US judge’s refusal to enforce French court’s Picasso copyright ruling

SAN FRANCISCO (CN) — A federal judge that ruled for a photographer found in violation of French laws for using copyrighted photographs of Pablo Picasso’s work was reversed Wednesday by the Ninth Circuit. 

The Ninth Circuit ruled that the district court improperly entered summary judgment for American art editor Alan Wofsy and Alan Wofsy & Associates, who created the "Zervos Catalogue" of the works of Pablo Picasso.

In 2019, U.S. District Judge Edward Davila overturned a French court’s judgment that Wofsy violated an "astreinte," a French legal device that imposes damages for his use of copyrighted photographs of Pablo Picasso’s works. Davila wrote in his ruling refusing to enforce the judgment that “The court finds that the defendants’ use of plaintiffs’ photographs qualifies as fair use.”

The photos in question come from Picasso's friend Christian Zervos, who took almost 16,000 photographs of the painter's artwork between 1932 and 1970. Cahiers d’Art published the photos in a universally recognized catalog, and Yves Sicre de Fontbrune acquired intellectual property rights to the Zervos Catalog under French law in 1979.

Wofsy later reproduced several photographs from the catalog in two volumes for sale at a Parisian book fair, prompting de Fontbrune to sue in France for copyright infringement. Although a French trial court initially rejected that 1996 claim, the Paris Court of Appeal in 2001 concluded that Wofsy had infringed on de Fontbrune’s rights and prohibited him from further use of the Zervos photographs under penalty of 10,000 francs per infraction. 

In 2012, de Fontbrune filed a claim with a French enforcement judge, who ruled that Wofsy had violated the 2001 judgment by reproducing copyrighted images from the Zervos Catalog. The judge ordered Wofsy to pay 2 million euros.

Davila ruled the 2012 French judgment “repugnant" to U.S. policy promoting both free speech and “criticism, teaching, scholarship, and research,” as Wofsy’s reference books are used by academic institutions, libraries, art collectors and auction houses. He said there is no evidence Wofsy’s “Picasso Project” had any effect on the market for the Zervos Catalog.

However, the Ninth Circuit held that Wofsy was not entitled to summary judgment based on a public policy defense. 

The panel held that in international diversity cases, the enforceability of foreign judgments is generally governed by the law of the state in which enforcement is sought — in this case, the California Recognition Act. They rejected Wofsy’s claim that the fair use doctrine of U.S. copyright law, which France’s copyright scheme lacks, would have protected the copying of the photographs.

“After weighing the four factors, the panel had serious doubts that a fair use defense would protect the copying of the photographs at issue, even if the nature of the copyrighted works were to favor fair use,” the ruling reported. “Wofsy’s inability to urge a fair use defense in France did not place the French judgment in conflict with fundamental American constitutional principles, and Sicre de Fontbrune was therefore entitled to partial summary judgment on this defense.” 

They added that “There is no indication that a plaintiff’s lack of standing circumscribes the judicial power — the subject matter jurisdiction — of French courts." 

The panel did agree that the district court properly granted partial summary judgment to de Fontbrune regarding the defense of lack of personal jurisdiction, after Wofsy challenged the district court’s grant of summary judgment to de Fontbrune regarding the assertion that the French court lacked jurisdiction over him.

The court remanded for further proceedings.

Wofsy’s lawyer Neil Popovic with Sheppard Mullin Richter & Hampton LLP said he and his clients are working to determine grounds to seek a rehearing.

"Among other things, the court’s fair use analysis gives short shrift to some important facts, including the nature of the photographs, that the Succession Picasso had authorized Wofsy to use them, and the public interest in reference works such as The Picasso Project," Popovic said. "Notably, the opinion recognizes that the underlying French astreinte proceeding was not properly served on Wofsy, and the court of appeals provided a roadmap to pursue the lack of notice defense if the case ends up back in the district court. The court of appeals also left room for Wofsy to pursue a defense based on fraud, recognizing that de Fontbrune misrepresented to the French court that he owned the relevant intellectual property rights at the time he initiated the astreinte case in France."

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