Use of under 10% of photos in catalogue raisonné was fair use

De Fontbrune v. Wofsy, No. 5:13-cv-05957-EJD (N.D. Cal. Sept. 12, 2019)

De Fontbrune first sued defendants in France in the late 1990s for publishing a book, The Picasso Project, which reproduced photographs of Picasso’s works. (Defendants allegedly used over 1400 of 16,000 of these photos, which had been assembled into the Zervos Catalogue; it appears that rights are held in the catalogue rather than primarily in the individual photos.) In 2001, the French court issued an “astreinte,” which would subject defendants to damages for any further acts of infringement. “About ten years later, de Fontbrune discovered copies of The Picasso Project in a French bookstore and initiated legal proceedings in France to liquidate the astreinte.” An award of €2 million issued; de Fontbrune then sued in Alameda County seeking recognition of the judgment; it was duly removed.  Now the court, while rejecting other barriers to enforcement (at least for purposes of defendants’ summary judgment motion), finds that fair use protects the relevant conduct and thus the judgment is unenforceable in the US on public policy grounds.

Under the uniform recognition of judgments act, a court is not required to recognize a foreign judgment when “[t]he judgment or the cause of action or claim for relief on which the judgment is based is repugnant to the public policy of this state or of the United States.” This is a high bar: “[T]he public policy exception … does not apply unless a foreign-country judgment or the law on which it is based is so antagonistic to California or federal public policy interests as to preclude the extension of comity.”  First Amendment-based public policy counts, but only where there are “stark differences” between foreign and domestic law. Such direct conflicts are more likely to be found where foreign law directly targets speech/expression, rather than incidentally affecting it.  (By contrast, the SPEECH Act prevents recognition of defamation judgments unless they’d be ok under domestic law.) The court adopted the Second Circuit’s approach: identify the constitutional protections for the unauthorized use of the IP at issue, and then determine whether French intellectual property laws provide comparable protections

“It is well accepted that the fair use doctrine implicates the First Amendment.” If defendants’ use wouldn’t be fair, then enforcing the judgment would be no problem.  But it was fair.

First, defendants’ books were “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.” 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.”  Commerciality didn’t defeat the fact that this factor weighed strongly in favor of fair use (mentioning the preamble of §107, but not transformativeness).

Second, defendants argued that the photos were unoriginal and documentary in nature, but a French court found them creative because of “the deliberate choice of lighting, the lens, filters, framing or angle of view.”  As Eva Subotnik has written, this reasoning calls photos creative because of the technical features that make them photographs rather than some other kind of object or representation, and that’s not particularly well-justified.  But that didn’t turn out to be dispositive because the Zervos Catalogue itself was “documentary in nature. The Zervos Catalogue is a catalogue raisonné, and the purpose of a catalogue raisonné is to faithfully reproduce an artist’s work, not to showcase the original artistic expression of the photographer.” Disfavored fair use, but only slightly.

Amount and substantiality: The French court already found that The Picasso Project didn’t copy the “sequences and the specific representations which, coming from the personal choices of Mr. ZERVOS . . . cause [the Zervos Catalouge] to be [an] original work[].” Defendants copied less than ten percent of the photos, and there was no evidence that those photos were “the heart” of the work, so this favored fair use.

Market effect: “undoubtedly the single most important element of fair use,” and heavily favored fair use. The parties’ books didn’t compete. The Picasso Project cost about $150 per volume, or $2,780, $3,400, or $3,780 for all 28. The original Zervos Catalogue is only available second-hand, and a 2013

reprint is only available as a complete set for $20,000 (an original is a lot more). “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.”

After The Picasso Project was published, the price of the Zervos Catalogue rose significantly, going for over $100,000 at no fewer than three auctions from 2007 to 2011, and for $74,200 at an auction in 2012; the later decline was apparently attributable to the 2013 reprint.  There was no evidence indicating that defendants’ use had “any effect—let alone a negative one” on the market for the Zervos Catalogue.  Unmentioned: derivative works rights—though it sounds like the Catalogue is valuable as a whole rather than in parts, so perhaps there’s no derivative market as such.

Although factor two slightly favored plaintiffs, the fair use doctrine “exists to promote criticism, teaching, scholarship, and research,” and defendants’ product, unlike the Zervos Catalogue, was “intended for a market serving those interests.” Thus, defendants’ use was fair.

Moreover, French law doesn’t have fair use. Thus, the French judgment was “at odds to the U.S. public policy promoting criticism, teaching, scholarship, and research” and repugnant to U.S. public policy. But the judgment wasn’t separately repugnant to public policy favoring the arts, given the French finding that the photographs are themselves original works of art, a finding the court wouldn’t revisit (though I think there’s justification for questioning it, especially given the finding about the Catalogue as a whole).