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De Fontbrune v. Wofsy

United States District Court, N.D. California, San Jose Division

September 12, 2019

Vincent Sicre de Fontbrune; Loan Sicre de Fontbrune; Adel Sicre de Fontbrune; Anais Sicre de Fontbrune, in their capacity as the personal representatives of the Estate of Yves Sicre de Fontbrune, Plaintiffs,
Alan Wofsy, an individual; Alan Wofsy & Associates; Does 1 through 100, inclusive, Defendants.



         This case arises from French litigation over copyrights of photographs of the works of Pablo Picasso. Yves Sicre de Fontbrune first sued Alan Wofsy and Alan Wofsy & Associates (“Defendants”) in France in the late 1990s for publishing volumes of a book, The Picasso Project, that reproduced copyright-protected photographs of Picasso's works. In 2001, de Fontbrune prevailed on the appeal of that suit, and the French court issued a French legal device, called an astreinte, that 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. Defendants did not appear in the proceeding and contend that they were not properly served. In early 2012, the enforcement division of the French trial court, the Juge de l'Exécution près le Tribunal de Grand Instance de Paris (the “JEX”) granted an award of €2 million for de Fontbrune (the “2012 Judgment”).

         The next year, de Fontbrune brought suit against Defendants in the Superior Court of Alameda County seeking recognition of the 2012 Judgment under California's Uniform Foreign Country Money Judgments Recognition Act (the “Recognition Act”). Defendants removed the case to federal court. The court granted Defendants' initial motion to dismiss, finding that the astreinte was a “fine or other penalty” under the statute and therefore not appropriate for recognition. Dkt. No. 27. De Fontbrune appealed the order, and the Ninth Circuit, finding that the astreinte was not a fine or other penalty, vacated the dismissal order, reversed, and remanded. Dkt. No. 33 (de Fontbrune v. Wofsy, 838 F.3d 992 (9th Cir. 2016), as amended on denial of reh'g and reh'g en banc (Nov. 14, 2016)). While on appeal, de Fontbrune died. His wife and children filed a motion to continue as his successors in interest, which the Ninth Circuit granted. Id. at 9 n.3.[1] On remand, the case was reassigned to the undersigned. The parties have both moved for summary judgment. For the reasons set forth below, the court grants Defendants' motion, and grants in part and denies in part Plaintiffs' motion as to certain defenses raised by Defendants.

         Federal jurisdiction arises from 28 U.S.C. § 1332(a) because Plaintiffs are citizens and residents of France and Defendants are citizens and residents of California, and the amount in controversy exceeds $75, 000.

         I. Factual Background

         Beginning in 1932, Picasso's friend Christian Zervos and his company Cahiers d'Art compiled and published a series of photographs of Picasso's art in the “Zervos Catalogue.” Compl. (Dkt. No. 1-1) Ex. 2 at 3. The Zervos Catalogue comprises some 16, 000 photographs of Picasso's work. Id. Plaintiffs acquired Cahiers d'Art and the rights to the Zervos Catalogue in 1979. Id.; Popović Decl. Ex. 7. In 1995, Wofsy began to publish a series of works reproducing Picasso's art called The Picasso Project. Mot. Wofsy Decl. (Dkt. No. 61-3) ¶¶ 6-8. In 1996, after copies of two volumes of The Picasso Project were seized in France, Plaintiffs brought suit against Defendants for copyright infringement (the “First Copyright Proceeding”). Id. ¶¶ 9-10; Dkt. 70-2[2] at 1 (Fact 1).[3] Defendants appeared in the First Copyright Proceeding. Dkt. 70-2 at 1 (Fact 2); Mot. Wofsy Ex. 7. Defendants prevailed at the trial court in 1998; Plaintiffs then appealed. See Dkt. 70-2 at 1 (Fact 3). Defendants appeared in this appeal. Dkt. No. 70-1[4] at 9-10 (Additional Fact 2). On September 26, 2001, the Cour d'Appel de Paris issued a ruling reversing the trial court's ruling (the “2001 Judgment”). Dkt. 70-2 at 1 (Fact 3). The 2001 Judgment found Defendants guilty of copyright infringement, awarded relief to Plaintiffs, and prohibited Defendants from using the at-issue photographs subject to an astreinte of 10, 000 francs per violation. Dkt. 70-2 at 1 (Fact 4). The parties agree that generally an astreinte is transferrable. Mot. Sirinelli Decl. (Dkt No. 61-5) ¶¶ 11-20; Cross-Mot. Serre Decl. (Dkt. No. 63-1) ¶ 18; see infra § III.B. Defendants initiated an appeal of the 2001 Judgment to the Cour de Cassation, but abandoned the appeal before it was decided. Dkt. No. 70-1 at 10 (Additional Fact 3); Wofsy Decl. ¶ 12. In December of that year, Plaintiffs transferred away their rights to the copyrights underlying the 2001 Judgment to the company Editions Cahiers d'Art. Dkt. 70-1 at 11-12 (Fact 26).

         About ten years later, copies of The Picasso Project were found in a French bookstore. Mot. Popović Decl. Ex. 3 at 3-5.[5] On July 22, 2011, Plaintiffs began legal proceedings in France to, among other things, enforce the astreinte against Defendants (the “Astreinte Proceeding”). See generally id at 1-5. These proceedings took place before the JEX. 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 JEX that they no longer owned the copyrights underlying the astreinte. Dkt. 70-1 at 15 (Fact 30).

         Defendants were not served with the summons and complaint during the pendency of the Astreinte Proceeding. See Dkt. No. 70-1 at 1 (Fact 2). Plaintiffs contend that they attempted to serve Defendants at the San Francisco address that Defendants had provided to the French court during the First Copyright Proceeding, but the name of Defendants' street had been changed prior to that proceeding. Dkt. 70-2 at 1-2 (Facts 5-6); id. at 2 (Facts 8-10). In October 2011, the JEX held a hearing on the merits of the Astreinte Proceeding; Defendants were unaware of the hearing and did not attend. Id. at 2 (Fact 10); Dkt. No. 70-1 at 2 (Fact 7). The next month, the JEX issued a written order directing Plaintiffs to provide further evidence of service on Defendants at a hearing set for December. Dkt. No. 70-2 at 2 (Fact 11). Defendants received the order through the mail that month. Dkt. No. 70-1 at 2 (Fact 7); Dkt. No. 70-2 at 2 at 2-3 (Fact 12). Defendants did not attend the hearing or otherwise join the Astreinte Proceeding. See Mot. Wofsy Decl. ¶ 23. On January 10, 2012, the French court granted judgment in favor of Plaintiffs (the “2012 Judgment”) and awarded € 2 million to Plaintiffs. Dkt. No. 70-2 at 3 (Fact 14); Mot. Mooney Decl. (Dkt. No. 63-2) Ex. B. Defendants, who never appeared in the proceeding, did not appeal. See Dkt. No. 70-2 at 3 (Fact 17).

         Around the same time that Plaintiffs initiated the Astreinte Proceeding, they filed another lawsuit against Defendants and a French bookseller for infringement of the copyrights to the Zervos Catalogue (the “Second Copyright Proceeding”). Dkt. No. 70-1 at 13 (Fact 28). Defendants received notice of the Second Copyright Proceeding in October 2011 but did not appear in the lawsuit. Dkt. No. 70-2 at 3-4 (Fact 18). That French court sua sponte dismissed the Second Copyright Proceeding in January 2013 (the “2013 Judgment”). Dkt. No. 70-1 at 15-16 (Fact 31). The 2013 Judgment stated that Plaintiffs are “not permitted to bring an action of infringement of copyright on the date of the summons since [they] lack[] locus standi.” Compl. Ex. 16 at 4; Cross-Mot. Serre Decl. . (Dkt. No. 63-1) ¶ 11, Ex. B.

         On February 25, 2014-after the period for a timely appeal of the 2012 Judgment and after this litigation began-Defendants filed a new action in French court seeking to vacate the 2012 Judgment (the “Review Proceeding”). Dkt. No. 70-2 at 4 (Fact 19). In this case, Defendants challenged the 2012 Judgment arguing that Plaintiffs' 2001 transfer of intellectual property rights included the transfer of their right to liquidate the astreinte. Second Reply Serre Decl. (Dkt. No. 71-4) Ex. A at 4.[6] The trial court dismissed the Review Proceeding on procedural grounds. Cross-Mot. Serre Decl. ¶ 12; see Dkt. No. 70-2 at 4 (Fact 20). Defendants appealed. Dkt. No. 70-2 at 4 (Fact 21). In April 2018, the French appellate court affirmed the dismissal (the “2018 Judgment”). Id. (Fact 22); Second Reply Serre Decl. Ex. A at 6-7.

         II. Summary Judgment Standard

         A party may move the court to grant summary judgment on a claim or defense-or on a part of a claim or defense. Fed.R.Civ.P. 56(a). “A principal purpose of the summary judgment procedure is to identify and dispose of factually unsupported claims.” O'Brien as Tr. of Raymond F. O'Brien Revocable Tr. v. XPO CNW, Inc., 362 F.Supp.3d 778, 781 (N.D. Cal. 2018). “Summary judgment is appropriate when, viewing the evidence in the light most favorable to the nonmoving party, there is no genuine dispute as to any material fact.” Zetwick v. Cty. of Yolo, 850 F.3d 436, 440 (9th Cir. 2017). A fact is “material” where it may affect the outcome of the case, and a dispute is “genuine” where a reasonable fact finder could find for either party. O'Brien, 362 F.Supp.3d at 782.

         III. Application of the Recognition Act

         Plaintiffs seek recognition of the 2012 Judgement through the Recognition Act. Cal. Civ. Proc. Code §§ 1713-1725. In 1962, the National Conference of Commissioners on Uniform State Laws promulgated the Uniform Foreign Money-Judgments Recognition Act (the “1962 Act”). AO Alfa-Bank v. Yakovlev, 21 Cal.App. 5th 189');">21 Cal.App. 5th 189, 198 (Ct. App. 2018), as modified on denial of reh'g (Apr. 3, 2018). California adopted the 1962 Act in 1967. In re Marriage of Lyustiger, 177 Cal.App.4th 1367, 1370 (2009). In 2005, the National Conference approved changes to the 1965 Act (the “2005 Act”), and California adopted those changes in 2007 as its Recognition Act. Id. California made minor amendments to the 2007 version of the Recognition Act that became effective on January 1, 2018. Alfa-Bank, 21 Cal.App. 5th at 198-99.[7] Most states have enacted either the 1962 Act or the 2007 Act, including New York, Delaware, and Texas.[8] Authorities from outside California that apply another state's enactment of the 1962 Act or the 2005 Act have persuasive value for applying the Recognition Act. Alfa-Bank, 21 Cal.App. 5th at 200 (citing Cal. Civ. Proc. Code. § 1722).

         The Recognition Act employs a burden-shifting framework. First, the party seeking to enforce the foreign judgment must establish that the judgment grants a sum of money; is final, conclusive, and enforceable under the law of the country where it was rendered; and is not a judgment for taxes, a fine or other penalty, or a judgment arising from domestic relations. Cal. Civ. Proc. Code. § 1715; Ohno v. Yasuma, 723 F.3d 984, 991 (9th Cir. 2013); Alfa-Bank, 21 Cal.App. 5th at 199. The Ninth Circuit has already held that the astreinte does not qualify as a fine or penalty. Dkt. No. 33 at 21-30. Plaintiffs argue that the 2012 Judgment meets the other criteria of § 1715 and Defendants do not dispute this point. “Once the initial showing is made, there is a presumption in favor of enforcement, and the party resisting recognition bears the burden of establishing” that one of the enumerated bases for nonrecognition set forth in § 1716 applies. Alfa-Bank, 21 Cal.App. 5th at 199; see also Cal. Civ. Proc. Code. § 1716(d) (“If the party seeking recognition of a foreign-country judgment has met its burden of establishing recognition of the foreign-country judgment . . . a party resisting recognition of a foreign-country judgment has the burden of establishing that a ground for nonrecognition stated in [§ 1716] exists.”). A court must recognize the foreign judgment unless the resisting party can carry its burden. Cal. Civ. Proc. Code. § 1716(a). The Recognition Act's defenses are, therefore, affirmative defenses. Ohno, 723 F.3d at 991. The Recognition Act provides three mandatory grounds for nonrecognition. Cal. Civ. Proc. Code. § 1716(b). Defendants argue that two apply here: (a) the JEX lacked personal jurisdiction over him, and (b) the JEX lacked subject matter jurisdiction. Id. §§ 1716(b)(2), (3). The Recognition Act provides nine bases where a court “is not required to recognize a foreign-country judgment.” Id. § 1716(c). Defendants argue that the following defenses under § 1716(b) bar recognition of the 2012 Judgment: (1) Defendants received insufficient notice to defend in the Astreinte Proceeding; (2) Plaintiffs obtained the 2012 Judgment through fraud; (3) Plaintiffs' claim underlying the 2012 Judgment is repugnant to U.S. policy; (4) the 2012 Judgment conflicts with another final and conclusive judgment-the 2013 Judgment; (5) circumstances around the 2013 Judgment raise substantial doubt as to integrity of the French court in the Astreinte Proceeding; and (6) the 2012 Judgment is not compatible with due process.

         For Defendants to prevail, they must show that there is no dispute of material fact as to just one of the defenses. Plaintiffs, though, must show that there are no triable issues on all of the defenses for the court to grant their motion in its entirety. But, where Plaintiffs show that no triable issue exists for a particular defense, the court will grant partial summary judgment as to that defense.

         a. Whether the foreign court had personal jurisdiction over the defendant (Cal. Civ. Proc. Code § 1716(b)(2))

         Defendants' first argument is that the JEX had no personal jurisdiction because they lacked minimum contacts with France, they were never properly served, they did not have adequate notice and opportunity to defend the action, and they did not consent to jurisdiction. Plaintiffs counter those arguments and also argue that Defendants waived this defense by voluntarily appearing in the First Copyright Proceeding and/or the Review Proceeding. Plaintiffs base this argument on § 1717(a)(2), which provides that “a foreign-country judgment shall not be refused recognition for lack of personal jurisdiction if . . . [t]he defendant voluntarily appeared in the proceeding, other than for the purpose of protecting property seized or threatened with seizure in the proceeding or of contesting the jurisdiction of the court over the defendant.” The court finds that, under § 1717, Defendants' challenge to the 2012 Judgment in the Review Proceeding waived any personal jurisdiction defense. The parties do not cite any cases that apply this section of the California Recognition Act, but Plaintiffs cite cases that apply New York's version of the 1962 Act (the “New York Recognition Act”) and Delaware's version of the 2007 Act. In S.C. Chimexim S.A. v. Velco Enterprises Ltd., a district court in the Southern District of New York considered whether the defendant's appeal of a foreign judgment constituted a voluntary appearance. 36 F.Supp.2d 206, 215 (S.D.N.Y. 1999). The defendant, who maintained an office in the foreign nation, contended that it was not properly served in the foreign action and that it did not appear in the proceeding against it. Id. at 209-10. The foreign court entered a money judgment against the defendant. Id. at 210. The defendant appealed, but the foreign appellate court affirmed the judgment. Id. When the plaintiff brought suit in the United States to recognize the judgment, the district court found that, under the provision of the New York Recognition Act that corresponds to § 1717, the defendant had waived its personal jurisdiction defense. Id. at 215. The district court reasoned, “Velco contends that its appeal from the Bucharest Judgment does not constitute a voluntary appearance. Velco is mistaken. One of Velco's arguments on appeal concerned the merits of the underlying dispute. . . . On this basis alone, Chimexim has met its burden of proving that the Romanian courts had personal jurisdiction over Velco.” Id. at 210, 215. In CIBC Mellon Trust Co. v. Mora Hotel Corp. N.V., the New York Court of Appeals held that defendants who had appealed the foreign court decision challenging the merits of that decision had waived their personal jurisdiction defense in the U.S. litigation. 100 N.Y.2d 215, 225 (2003). And the Delaware Court of Chancery court found that a defendant had waived any personal jurisdiction defense, in part, because that defendant had challenged the underlying merits on appeal. In re Transamerica Airlines, Inc., 2007 WL 1555734, at *10 (Del. Ch. May 25, 2007). Another district court in New York ruled against a defendant's summary judgment motion where the defendant had, amongst other actions, “sought to have the Judgment reversed or nullified on various grounds.” Chevron Corp. v. Donziger, 886 F.Supp.2d 235, 280 (S.D.N.Y. 2012).

         The court finds that that the reasoning of these cases is persuasive to the matter at hand. Defendants protest that in those cases there were firmer grounds for finding that the foreign courts had personal jurisdiction over each defendant. But, this argument overlooks that in each case the court applied the New York or Delaware statutory analog to § 1717(a)(2). Chevron, 886 F.Supp.2d at 280; Velco, 36 F.Supp.2d at 215; In re Transamerica Airlines, Inc., 2007 WL 1555734, at *10; Mora Hotel, 100 N.Y.2d at 225. In the Review Proceeding, Defendants went beyond merely challenging the “jurisdiction of the [Astreinte Proceeding] court over” Defendants; they brought an action to argue that Plaintiffs had transferred their rights to enforce the astreinte when Plaintiffs sold the underlying copyrights such that the 2012 Judgment should be vacated. Second Reply Serre Decl. Ex. A at 4. Because Defendants brought the Review Proceeding as a direct challenge to the 2012 Judgment on the merits, the court is not moved by the fact that it was not a direct appeal. Defendants cannot voluntarily submit to the jurisdiction of the French courts to bring a challenge on the merits of the 2012 Judgment and simultaneously complain that the French courts lack jurisdiction over them. See Dow Chem. Co. v. Calderon, 422 F.3d 827, 834 (9th Cir. 2005) (assuming, without deciding, that the Ninth Circuit would adopt “an affirmative relief rule, specifying that personal jurisdiction exists where a defendant also independently seeks affirmative relief in a separate action before the same court concerning the same transaction or occurrence. Such action may take place prior to the suit's institution, or at the time suit is brought, or after suit has started.” (citation and quotations omitted)); cf. Mora Hotel, 100 N.Y.2d at 225-26 (“[A] defendant may be deemed to have made an appearance in an action and, therefore, to have submitted to a court's jurisdiction, by, among other things, ‘taking steps in the action after judgment either in the trial court or in an appellate court.'” (quoting Restatement [Second] of Conflict of Laws § 33, Comment b).

         Because Defendants voluntarily initiated the Review Proceeding, the court finds that they are precluded from raising personal jurisdiction as a defense. The court grants partial summary judgment in favor of Plaintiffs on this issue. The court does not consider the parties' other arguments regarding personal jurisdiction.

         b. Whether the foreign court had jurisdiction over the subject matter (Cal. Civ. Proc. Code § 1716(b)(3))

         Defendants argue that when Plaintiffs transferred the rights to the copyrights underlying the astreinte in 2001, they also transferred the right to liquidate the astreinte. Plaintiffs, the argument goes, therefore did not have the French equivalent of standing to bring the Astreinte Proceeding and the JEX did not have the subject matter jurisdiction over the astreinte required to enter the 2012 Judgment. Plaintiffs make several counter arguments: First, they argue that the Defendants are attempting to re-litigate ownership of the astreinte, which was decided in the Astreinte Proceeding. Next, they contend that the JEX, as a court in the enforcement division of the French trial court system, possessed subject matter jurisdiction over the question of liquidating the astreinte. Third, they argue that they did not transfer the rights to the astreinte when they transferred the underlying copyrights. And fourth, they argue that the Recognition Act considers the subject matter jurisdiction under French law, so the entire question of their standing is inappropriate.

         Whether this court may even consider the ownership of the right to liquidate the astreinte at the time of the Astreinte Proceeding is a threshold question. Plaintiffs' argument that under the Recognition Act a U.S. court should not inquire into the merits underlying the foreign judgment is correct so far as it goes. Ohno, 723 F.3d at 996-97. Plaintiffs omit, however, that a U.S. court should still consider whether there are grounds for nonrecognition under § 1716(b) or (c). Id. (The Recognition Act “requires a court to recognize a final, conclusive foreign monetary award that is enforceable where rendered, without inquiry into the merits of the underlying judgment, once the court determines that there is no ground for nonrecognition under § 1716(b) or (c) of the [Recognition] Act.” (citation omitted)); see S.A.R.L. Louis Feraud Int'l v. Viewfinder, Inc., 489 F.3d 474, 479 (2d Cir. 2007) (refusing to “second-guess” whether the defendant's actions infringed the plaintiff's intellectual property rights, but still considering defenses under § 1716). Thus, the first question for this court is whether ownership of the astreinte goes to the subject matter jurisdiction of the French court.

         Plaintiffs assert this court should apply French law to determine whether the JEX had subject matter jurisdiction over the Astreinte Proceeding, and Defendants do not object. “[F]oreign law interpretation and determination is a question of law.” Dkt. No. 33 at 15. “Independent research, plus the testimony of foreign legal experts, together with extracts of foreign legal materials, has been and will likely continue to be the basic mode of determining foreign law. Importantly, such material and testimony may be considered at any time whether or not submitted by a party.” Id. at 12 (citation and quotations omitted). Both parties have filed declarations from French legal experts to assist the court in determining French law, and the court has conducted its own research on the matter.

         Defendants' position is that under French law, a party must have an interest in the outcome of a suit in order to bring the suit, or the suit will be dismissed. Such a suit with a party lacking an interest is “inadmissible” under French law. This requirement is equivalent to standing under U.S. law, so when a plaintiff lacks an interest in the outcome of the case, the court lacks subject matter jurisdiction over the case. Article 31 of the French Code of Civil Procedure states in part, “[t]he right of taking legal action is available to all those who have a legitimate interest in the success or dismissal of a claim.” Le Guillou Decl. (Dkt No. 61-8) Ex. 4. And Article 32 provides, “[n]o claim is admissible that is filed by or against any person who does not have the right to act.” Id. at Ex. 6. Article 122 provides that a party may argue that the opposing party is inadmissible “without examination of the grounds” underlying the opposing ...

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