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

from the how's-all-that-litigating-going-for-you? dept

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 uses listed in the preamble paragraph of § 107, including news reporting, comment, criticism, teaching, scholarship, and research, since these activities are generally conducted for profit in this country.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584 (1994) (citation and quotations omitted). Because Plaintiffs do not dispute that The Picasso Project is intended for libraries, academic institutions, art collectors, and auction houses, it falls within the exemplary uses named in the preamble of § 107 of the Copyright Act.

The court also points out the two publications in dispute — the 16,000-photo Zervos Catalogue and Wofsy’s “The Picasso Project” — are not competitive products. The reproduction of photos from the Zervos Catalogue does not replace the Catalogue, nor does it even come close to diminishing its market value.

Plaintiffs argue that they are competing products, but they provide no factual basis for this position. The Picasso Project can be purchased by individual volumes for about $150 per volume. Mot. Wofsy Decl. ¶ 38. When sold as a collection of all 28 volumes, it retails for either $2,780, $3,400, or $3,780. Id.; Reply Mooney Decl. (Dkt. No. 71-1) ¶ 3 & Attachment. By contrast, the original Zervos Catalogue is only available on the second-hand market, and a 2013 reprint is only available as a complete set of all of its volumes and sells for $20,000. Dkt. No. 70- 1 at 17 (Facts 36, 37). Plaintiffs do not dispute that The Picasso Project is intended for libraries, academic institutions, art collectors, and auction houses, whereas the Zervos Catalogue has a niche market due to its historic nature and high price. Dkt. No. 70-1 at 16, 18-19 (Facts 33, 41). Given their disparate markets and wildly different price points, no reasonable fact finder could conclude that the Zervos Catalogue and The Picasso Project compete.

Since three of the four factors weigh heavily in favor of Wofsy and his Picasso Project, the 2012 judgment de Fontbrune secured in France cannot be enforced in the United States.

[T]he court finds that the Defendants’ use of Plaintiffs’ photographs qualifies as fair use. The 2012 Judgment is, therefore at odds to the U.S. public policy promoting criticism, teaching, scholarship, and research. Defendants have carried their burden of showing that there is no genuine issue of material fact that the 2012 Judgment is repugnant to U.S. public policy.

Having reached this conclusion, the court will not recognize the 2012 Judgment.

And away goes a $2.25 million judgment that may have been awarded to de Fontbrune for works it had already sold the rights to. Fair use prevails and de Fontbrune will have to figure out some other form of rent-seeking if it wants to continue profiting from photos someone else took.

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

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That One Guy (profile) says:

Well great...

If people who don’t own the rights to pictures they didn’t create can’t sue people for millions thanks to some garbage called ‘fair use’ then what possible reason could the long-dead artist possibly have to create more works?

Way to utterly destroy even the possibility of zombie-Picasso making any new works there judge.

Alan Wofsy (user link) says:

Corrections for Tim Cushing

I would like you to add some clarifications and corrections to your reporting on this Franco-American legal saga regarding a great Spanish artist and his Greek cataloguer and a deceased Frenchman, Yves de Fontbrune, who managed to hoodwink several French courts by playing on misplaced xenophobia.

Your main error is this statement:

"Photos of Pablo Picasso’s artwork were taken by one of his personal friends, Christian Zervos, over the course of four decades. "

Zervos obtained many of the photographs from collectors, museums and Picasso’s dealers and published solicitations for photographs in his own journal "Cahiers d’art" beginning in 1929. Zervos was successfully sued by one of Picasso’s dealers David Henry Kahnweiler for using photos without Kahnweiler’s permission. The French Cour d’appel made a false finding in 2001 that Zervos took the photographs and that these documentary photographs were works of art. The Cour d’appel cynically overturned the opposite findings of fact by the impartial Paris Tribunal from 1998.

From the article you have written on the case a reader might infer that I did not have permission to reproduce the works by Picasso which had previously been reproduced in the Zervos catalogues. As one can see from Court produced documents from 1990-1991, the Succession Picasso gave me permission to reproduce all the works by the master, including all the works that were reproduced in the Zervos catalogues.

Fontbrune was prohibited by the attorney for the Succession Picasso from reproducing any works by Picasso in 1979 and in 1991 the copyright agent for the Succession Picasso, SPADEM, informed Fontbrune that Wofsy had the right to reproduce all the works in the Zervos catalogues.

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