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IP Law Daily, COPYRIGHT—9th Cir.: €2 million French astreinte award over Picasso photographs gets the green light for enforcement, (Jul 14, 2022)

Law Firms Mentioned:Rimon Law PC | Sheppard, Mullin, Richter & Hampton LLP
Organizations Mentioned:Alan Wofsy & Associates | Rimon Law, PC

By Matthew Hersh, J.D.

The district court was wrong to find that the photo documentary was covered by fair use.

The reproduction and reassembly in chronological order of a collection of photos of the works of Pablo Picasso could not be justified on fair use grounds merely b ...

By Matthew Hersh, J.D.

The district court was wrong to find that the photo documentary was covered by fair use.

The reproduction and reassembly in chronological order of a collection of photos of the works of Pablo Picasso could not be justified on fair use grounds merely because the intent was to “use the photographs only as documentation of Picasso’s works, without regard to the photographs’ creative qualities,” the U.S. Court of Appeals for the Ninth Circuit has held. The court, reversing a grant of summary judgment in favor of the California-based publisher that assembled the collection, gave a green light to the enforcement in the United States of a French judgment against the publisher for copyright infringement (de Fontbrune v. Wofsy, July 13, 2022, Erickson, J.).

The lawsuit over the Picasso photos weaves together the Spanish master, a noted Greek art historian, a French copyright owner, a San Francisco fine art publisher, and a modest assemblage of California courts. Starting in 1932, the Greek-born photographer and art historian Christian Zervos created a catalogue of the works of Picasso. The catalogue ultimately featured nearly 16,000 photographs of Picasso’s works. In 1979, a French citizen, Yves Sicre de Fontbrune acquired the rights to the catalogue.

In 1991, Alan Wofsy Fine Arts LLC, a San Francisco fine arts publisher, acquired permission from the Estate of Pablo Picasso to publish a work illustrating and describing works by the Spanish master. Wofsy then produced a series of books on Picasso, titled “The Picasso Project”—a chronological illustrated catalogue of Picasso’s works. The Picasso Project contained reproductions of photographs from the original Zervos collection.

The copyright owner sued the California fine arts publisher in a French court, winning a judgment of two million euros. The copyright owner then sought enforcement of the judgment in the United States, bringing an action in the Superior Court of California in Alameda County in 2013 seeking recognition of the judgment. After removal to federal court and an initial dismissal on procedural grounds (reversed by the Ninth Circuit in 2016), the case was heard on remand by the district court in 2019. The court granted summary judgment for the arts publisher on the ground that the French judgment was “repugnant to public policy”—particularly to the U.S. policy of fair use—and therefore should not be recognized. The California Recognition Act allows a court to decline to recognize a foreign-country money judgment if the “judgment or the cause of action or claim for relief on which the judgment is based is repugnant to the public policy of [California] or of the United States.” Cal. Civ. Proc. Code § 1716(c)(3).

The copyright owner appealed, leading to this opinion.

Fair use. The court of appeals reversed, finding that fair use would not clearly apply to the use made of the copyrighted photos, and therefore the foreign judgment was not repugnant to U.S. public policy.

The court of appeals began its opinion by rejecting the district court’s assessment of the purpose and character of the use. The district court found that The Picasso Project was “intended for libraries, academic institutions, art collectors, and auction houses,” and therefore its purpose aligned with the “criticism, comment, news reporting, teaching..., scholarship, or research” purposes that the Copyright Act characterizes as non-infringing. The court of appeals disagreed. The “use” at issue, the court noted, “is the allegedly infringing one—the reproduction of copyrighted photographs in a book offered for sale.” The fact that end users might put the book to educational purposes did not shift the calculus. More importantly, the court noted, fair use could not be sustained merely because the publisher used the photographs only as documentation of Picasso’s works, allegedly “without regard to the photographs’ creative qualities.” A mere difference in “purpose,” the court noted, “is not quite the same thing as transformation.” And in any event, the court noted, the purposes of the works overlapped, as “both present the works of Picasso.”

Nor did any other fair use factor favor the publisher, the court of appeals held. The nature of the works did not advance the fair use argument, the court noted. The publisher cited an expert declaration of a prominent art historian opining that photographs in art catalogues are “not themselves works of art.” But the French court had recognized—correctly, in the court of appeals’ view—that the photographs “have creative elements reflecting deliberate choices of lighting, filters, framing, and angle of view.” Moreover, the photos were used in their entirety and, in light of the first three factors, the copyright owner was entitled to a presumption of market harm. Thus, it was “at least highly debatable—if not absolutely clear—that a fair use defense would not protect the conduct underlying the judgment” of which the copyright owner sought recognition here.

The Ninth Circuit reversed the district court’s judgment and remanded the case for further proceedings.

The Case is Nos. 19-16913 and 19-17024.

Attorneys: Richard James Mooney, (Rimon Law PC) for Vincent Sicre de Fontbrune, Adel Sicre de Fontbrune; Anais Sicre de Fontbrune, in their capacity as personal representatives of the Estate of YvesSicre de Fontbrune. Neil A.F. Popovic (Sheppard, Mullin, Richter & Hampton LLP) for Alan Wofsy and Alan Wofsy & Associates.

Companies: Alan Wofsy & Associates

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