United States District Court, N.D. California, San Jose Division
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.
ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY
JUDGMENT; DENYING IN PART AND GRANTING IN PART
PLAINTIFFS' CROSS-MOTION FOR SUMMARY JUDGMENT RE: DKT.
NOS. 61, 63
J. DAVILA, UNITED STATES DISTRICT JUDGE
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”).
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. 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
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.
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.
at 1 (Fact 1). 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.
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).
ten years later, copies of The Picasso Project were
found in a French bookstore. Mot. Popović Decl. Ex. 3 at
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).
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
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.
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. 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.
Summary Judgment Standard
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.
Application of the Recognition Act
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. Most states have enacted either the 1962
Act or the 2007 Act, including New York, Delaware, and
Texas. 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).
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.
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.
Whether the foreign court had personal jurisdiction over the
defendant (Cal. Civ. Proc. Code § 1716(b)(2))
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).
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).
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
Whether the foreign court had jurisdiction over the subject
matter (Cal. Civ. Proc. Code § 1716(b)(3))
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.
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.
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.
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