US Court Says Fair Use Nullifies French Rightholder's Attempt To Extract $2.25 Million From A California Art Scholar

Almost twenty-three years after a US art editor was first sued by a French company for alleged copyright infringement, a US court has told the French rightholders going after him that copyright does not work that way… at least not here in the United States. (via Courthouse News)

Photos of Pablo Picasso's artwork were taken by one of his personal friends, Christian Zervos, over the course of four decades. The rights to these 16,000 photos were obtained by Yves Sicre de Fontbrune in 1979. Several of these photos were included in books created by American art editor Alan Wofsy. Wofsy made the mistake of trying to sell these books in Paris, which resulted in the rightsholder suing him in 1996.

That lawsuit was rejected, but the Paris Court of Appeals said otherwise in 2001. It concluded that copyright infringement had occurred and that Wofsy could be held liable for $1,700 per future infringement. More than a decade later, de Fontbrune went back to the court with new claims after finding a copy of one of Wofsy's book in a French bookstore. As the federal court notes in its recitation of the facts, this 2011 legal action was a bit sketchy.

Plaintiffs asserted that, in violation of the 2001 Judgment, Defendants had continued to publish The Picasso Project. Id. at 3. The summons and complaint for the Astreinte Proceeding stated that the purchased copy contained many hundreds of Plaintiffs’ photographs, and later that the “rights to [the photographs] are the property of [Plaintiffs].” Id. at 3-4. The summons and complaint also stated that the proceedings were “for the settlement of the non-compliance penalty” of the 2001 Judgment. Id. at 4. There is no evidence that Plaintiffs ever informed the [the French court] that they no longer owned the copyrights underlying the astreinte [civil penalty]. Dkt. 70-1 at 15 (Fact 30).

So, de Fontbrune was trying to backdate the infringement to collect fines linked to copyrights it no longer owned. In addition, Wofsy was not properly served with the lawsuit, resulting in de Fontbrune moving on unopposed. After being ordered to properly serve Wofsy, another attempt was made. Wofsy apparently received this notice, but did not show up to defend himself. With the proceedings being held in Paris and Wofsy residing in San Francisco, this no-show was perhaps to be expected.

Since Wofsy wasn't there to defend himself, the French court found in favor of de Fontbrune and the IP it no longer owned. In 2012, it awarded a $2.25 million judgment to the former rightsholders, concluding that Wofsy's publication of these photos violated the 2001 ruling by the Paris Court of Appeals.

After a long discussion of French court proceedings and whether or not this decision can even be reviewed by a US federal court, the California court comes to the conclusion that it can make a ruling on the enforceability of the order issued by the Paris Appeals Court 18 years ago. And that doesn't work out well for de Fontbrune. The enforceability of foreign judgments is subject to the Recognition Act, which says these must align themselves with US laws and policies to be enforceable.

In this case, the 2001 judgment fails. Here in the United States, fair use is a thing. Because of that, the California court [PDF] says Wofsy's use of some of the 16,000 photographs is protected, which means de Fontbrune can't collect $2.25 million for infringement that didn't actually occur -- at least not under US law.

[D]efendants contend that the purpose and character of their use of the photographs should qualify as fair use. While conceding that The Picasso Project is a commercial venture, Defendants point out that their books are reference works intended for libraries, academic institutions, art collectors and auction houses, and such institutions find it an attractive reference due to its price point. Dkt. No. 70-1 at 16, 19 (Facts 33, 42). The Picasso Project also includes information about the photographed works, such as their titles, literary references, provenance, current ownership and sales information, that is generally not included in the Zervos Catalogue. Dkt. No. 70-1 at 18 (Fact 39). Plaintiffs do not contest these facts. Id. Rather, Plaintiffs argue that Defendants’ copying has a commercial purpose, which weighs against fair use. However, the mere commercial nature of a work does not create a presumption against fair use; such a presumption “would swallow nearly all of the illustrative us