Petition for Writ of Certiorari — Alan Wofsy, et al., Petitioners v. Vincent Sicre de Fontbrune, as Personal Representative of the Estate of Yves Sicre de Fontbrune, et al.

APPENDIX

i

APPENDIX

TABLE OF CONTENTS

Appendix A Opinion in the United States Court of

Appeals for the Ninth Circuit

(July 13, 2022). . . . . . . . . . . . . . . . App. 1

Appendix B Order Granting Defendant’s Motion

for Summary Judgment; Denying in

Part and Granting in Part Plaintiffs’

Cross-Motion for Summary Judgment

in the United States District Court

Northern District of California San

Jose Division

(September 12, 2019) . . . . . . . . . App. 48

Appendix C Judgment in the United States

District Court Northern District of

California

(September 12, 2019) . . . . . . . . . App. 90

Appendix D Order Denying Rehearing in the

United States Court of Appeals for the

Ninth Circuit

(September 6, 2022) . . . . . . . . . . App. 92

App. 1

APPENDIX A

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Nos. 19-16913

19-17024

D.C. No. 5:13-cv-05957-EJD

[Filed: July 13, 2022]

_____________________________________________

VINCENT SICRE DE FONTBRUNE; LOAN

)

SICRE DE FONTBRUNE; ADEL SICRE

)

DE FONTBRUNE; ANAIS SICRE DE FONTBRUNE,

)

in their capacity as personal representatives

)

of the Estate of YVES SICRE DE FONTBRUNE,

)

Plaintiffs-Appellants/

)

Cross-Appellees,

)

)

v.

)

)

ALAN WOFSY; ALAN WOFSY & ASSOCIATES,

)

Defendants-Appellees/

)

Cross-Appellants.

)

_____________________________________________)

OPINION

Appeal from the United States District Court

for the Northern District of California

Edward J. Davila, District Judge, Presiding

App. 2

Argued and Submitted February 8, 2022

San Francisco, California

Filed July 13, 2022

Before: Andrew D. Hurwitz and Lawrence VanDyke,

Circuit Judges, and Joan N. Ericksen,* District

Judge.

Opinion by Judge Ericksen

SUMMARY**

Foreign Judgments

The panel reversed the district court’s summary

judgment entered for defendants Alan Wofsy and Alan

Wofsy & Associates (collectively “Wofsy”) in an action

brought by Yves Sicre de Fontbrune in California state

court seeking recognition of a French money judgment.

The photographer Christian Zervos created the

Zervos Catalogue of the works of Pablo Picasso, which

was originally published under the label of Cahiers

d’Art. In 1979, Sicre de Fontbrune acquired the rights

for the business capital of Cahiers d’Art. Wofsy

produced a series of books, titled “The Picasso Project,”

that contained reproductions of photographs from the

Zervos Catalogue.

*

The Honorable Joan N. Ericksen, United States District Judge for

the District of Minnesota, sitting by designation.

**

This summary constitutes no part of the opinion of the court. It

has been prepared by court staff for the convenience of the reader.

App. 3

The French judgment found that Wofsy had violated

an astreinte – a French legal device that imposed

money damages for the continued use of copyrighted

photographs of Pablo Picasso’s works. Sicre de

Fontbrune had obtained that astreintre as a form of

relief in a 2001 French judgment finding that the

photographs’ copyrights were infringed. The district

court granted summary judgment for Wofsy based on

a defense to recognition under California’s Uniform

Foreign-Country Money Judgment Recognition Act,

Cal. Civ. Proc. Code §§ 1713-1725, namely, the defense

that the French judgment was repugnant to United

States public policy protecting free expression.

The panel held that in international diversity cases,

such as this one, the enforceability of foreign

judgments is generally governed by the law of the state

in which enforcement is sought; and the California

Recognition Act governed. The Recognition Act lists

several grounds for nonrecognition. Five statutory

grounds for nonrecognition of the French judgment are

at issue in this appeal.

First, Sicre de Fontbrune challenged the district

court’s conclusion that the French judgment was

repugnant to United States public policy favoring free

expression. The fair use defense to copyright

infringement is one of the built-in First Amendment

accommodations that ease the tension between free

expression and U.S. copyright law. As part of its public

policy defense, Wofsy asserted that the fair use

doctrine of U.S. copyright law – a feature that France’s

copyright scheme lacked – would have protected the

copying of the photographs at issue. The panel rejected

App. 4

this contention. The fair use defense requires the

analysis of four statutory factors, and the panel

examined the factors with respect to the individual

photographs in the catalogue at issue. Concerning the

first factor - the “purpose and character” of the use, the

panel held that the undisputed evidence showed that

the use of the copyrighted photographs was commercial

and non-transformative. This factor weighed against a

finding of fair use. For the second fair use factor – the

nature of the copyrighted work, the panel held that the

photographs’ creative qualities prevented this factor

from weighing heavily, if at all, in favor of fair use.

With the third factor – the amount and substantiality

of the portion used, the panel held this factor weighed

against fair use where the copying included the

entirety of the copyrighted photographs at issue and

Wofsy did not transform the photographs. With the

fourth fair use factor – the effect on potential market or

value of the copyrighted work, the panel held that this

factor weighed against fair use where there was no

evidence countering the presumption of market harm,

which arose where the allegedly infringing use was

both commercial and non-transformative. After

weighing the four factors, the panel had serious doubts

that a fair use defense would protect the copying of the

photographs at issue, even if the nature of the

copyrighted works were to favor fair use. Wofsy’s

inability to urge a fair use defense in France did not

place the French judgment in conflict with

fundamental American constitutional principles, and

Sicre de Fontbrune was therefore entitled to partial

summary judgment on this defense.

App. 5

Second, both parties appealed the district court’s

denial of summary judgment concerning the assertion

that the French court lacked subject matter

jurisdiction. The French appellate courts did not

evaluate whether the French trial court, the Tribunal

de Grande Instance de Paris (“TGI”), had subject

matter jurisdiction over the astreinte proceeding. The

panel held that the TGI’s subject matter jurisdiction

did not depend on Sicre de Fontbrune’s standing, and

therefore the district court erred in holding otherwise.

There is no indication that a plaintiff’s lack of standing

circumscribes the judicial power – the subject matter

jurisdiction – of French courts. The panel concluded

that Sicre de Fontbrune is entitled to partial summary

judgment on this defense.

Third, Wofsy challenged the district court’s grant of

summary judgment to Sicre de Fontbrune regarding

the assertion that the French court lacked personal

jurisdiction over Wofsy. A court applying California’s

Recognition Act shall not refuse recognition of a

foreign-country judgment for lack of personal

jurisdiction if the defendant “voluntarily appeared in

the proceeding.” Cal Civ. Proc. Code § 1717(a)(2). The

panel agreed with the district court that Wofsy waived

this defense through a voluntary appearance when he

petitioned the TGI to set aside a 2012 judgment. The

panel concluded that the district court properly granted

partial summary judgment to Sicre de Fontbrune

regarding the defense of lack of personal jurisdiction.

Fourth, Wofsy asserted that he was entitled to

summary judgment on the defense that he received

inadequate notice of the proceedings that resulted in

App. 6

the French judgment. The California Supreme Court

has not clarified the showing that a defendant must

make to prove the insufficient notice defense. A

California Court of Appeal has held that a mere failure

of actual notice does not prove the inadequate notice

defense. The panel accepted the Court of Appeal’s

holding that the insufficient notice defense requires the

proponent to prove the absence of a constitutionally

adequate attempt at actual notice. The panel

considered whether the attempts to serve Wofsy before

the October 2011 hearing constituted sufficient efforts

at notice, despite their failure. The panel held that the

failed attempts to service process did not, by

themselves, disprove the notice defense. There was,

however, a factual dispute as to whether Wofsy

received actual notice of the pendency of the action and

an opportunity to present objections. The panel held

that the district court appropriately left to the finder of

fact to determine whether Wofsy “receive[d] notice of

the proceeding in sufficient time to enable [him] to

defend.” Cal. Civ. Proc. Code § 1716(c)(1).

Fifth, Wofsy argued that Sicre de Fontbrune

obtained the French judgment by fraud that deprived

Wofsy of an adequate opportunity to present his case.

The panel held that even assuming that Sicre de

Fontbrune deceived the TGI as to his legal interest in

the astreinte, Wofsy was not entitled to summary

judgment on the claim that the misrepresentation

“deprived [him] of an adequate opportunity to present

[his] case.” See Cal. Civ. Code § 1716(c)(2). A question

remains as to whether Wofsy reasonably should have

detected the alleged fraud during the French

proceedings, and therefore as to whether such fraud

App. 7

deprived him of an adequate opportunity to present his

case. The panel concluded that the district court did not

err by denying Wofsy summary judgment on the fraud

defense.

The panel held that Wofsy was not entitled to

summary judgment based on the public policy defense.

No other ground for nonrecognition at issue in this

appeal supplied an alternative basis for affirming the

judgment below. The panel reversed and remanded for

further proceedings.

COUNSEL

Richard J. Mooney (argued), RJM Litigation Group,

San Francisco, California, for Plaintiffs-Appellants.

Neil A.F. Popović (argued), Jonathan G. Borle, and

Matthew G. Halgren, Sheppard Mullin Richter &

Hampton LLP, San Francisco, California, for

Defendants-Appellees.

Kathryn C. Thornton (argued), Ropes & Gray LLP,

Washington, D.C.; Marta F. Belcher, James R.

Batchelder, and Monica A. Ortel, Ropes & Gray LLP,

East Palo Alto, California; Corynne McSherry, Mitchell

Stoltz, and Alexandra Moss, Electronic Frontier

Foundation, San Francisco, California; Robert S.

Adams IV and Avery Gardiner, Center for Democracy

& Technology, Washington, D.C.; John Bergmayer,

Public Knowledge, Washington, D.C.; for Amici Curiae

Project Gutenberg Literary Archive Foundation,

Electronic Frontier Foundation, Center for Democracy

and Technology, and Public Knowledge.

App. 8

OPINION

ERICKSEN, District Judge:

INTRODUCTION

Yves Sicre de Fontbrune brought this action in

California state court seeking recognition of a French

money judgment. The French judgment found that

Defendants, Alan Wofsy and Alan Wofsy & Associates

(collectively, “Wofsy”), had violated an astreinte—a

French legal device that imposed money damages for

the continued use of copyrighted photographs of Pablo

Picasso’s works. Sicre de Fontbrune had obtained that

astreinte as a form of relief in a 2001 French judgment

finding that the photographs’ copyrights were

infringed.

After removal, the district court considered motions

for summary judgment on eight defenses to recognition

under the California version of the Uniform ForeignCountry Money Judgment Recognition Act, Cal. Civ.

Proc. Code §§ 1713–1725. The district court granted

summary judgment for Wofsy based on one of those

defenses: that the French judgment was repugnant to

United States public policy protecting free expression.

Sicre de Fontbrune appeals,1 and Wofsy cross-appeals

the denial of summary judgment on other defenses. We

1

Sicre de Fontbrune died in 2015. His wife and children were later

substituted as successors in interest. Sicre de Fontbrune v. Wofsy,

838 F.3d 992, 996 n.3 (9th Cir. 2016), as amended on denial of

reh’g and reh’g en banc (Nov. 14, 2016). For convenience, we refer

to them collectively as “Sicre de Fontbrune.”

App. 9

conclude that summary judgment was not proper, and

we reverse and remand for further proceedings.

FACTUAL AND PROCEDURAL BACKGROUND

Starting in 1932, the photographer Christian Zervos

created a catalogue raisonné2 (the “Zervos Catalogue”)

of the works of the Spanish artist Pablo Picasso. Sicre

de Fontbrune, 838 F.3d at 995. The catalogue

ultimately featured nearly 16,000 photographs of

Picasso’s works. Id. Zervos originally published this

catalogue under the label of Cahiers d’Art. Id. In 1979,

Sicre de Fontbrune acquired the rights to the business

capital of Cahiers d’Art, including its intellectual

property. Id.

In 1991, Alan Wofsy Fine Arts LLC acquired

permission from the Estate of Pablo Picasso to publish

a work illustrating and describing works by Picasso.

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

Zervos Catalogue.

In 1996, at Sicre de Fontbrune’s request, French

police seized two volumes of The Picasso Project that

were offered for sale at a book fair in Paris. Sicre de

Fontbrune then sued Alan Wofsy in France for

copyright infringement. Alan Wofsy appeared, and

2

A catalogue raisonné is the “‘complete published catalogue of an

artist’s work.’” Sicre de Fontbrune, 838 F.3d at 995 n.1 (quoting

The Concise Oxford Dictionary of Art Terms Online (Michael

Clarke & Deborah Clarke eds., 2d ed. 2010)).

App. 10

Alan Wofsy & Associates intervened. In 1998, a trial

court, the Tribunal de Grande Instance de Paris

(“TGI”), determined that the photographs in the Zervos

Catalogue were documentary in nature and therefore

ineligible for copyright protection.

On September 26, 2001, the French Cour d’Appel

(Court of Appeal) reversed and entered judgment in

favor of Sicre de Fontbrune, determining that the

photographs at issue did not merely copy Picasso’s

works, but rather added creative features through

“deliberate choice[s] of lighting, the lens, filters, [and]

framing or angle of view.”3 The court also confirmed

that Sicre de Fontbrune had obtained “the intellectual

property rights on the intangible items attached to the

stock, to the [Zervos] catalogue and the photographs

that it contains” when he acquired the Cahiers d’Art

business in 1979. The Cour d’Appel found Wofsy “guilty

of infringement of copyright,” and awarded various

relief to Sicre de Fontbrune, including a legal device

known as an astreinte, under which Wofsy would be

liable for damages of 10,000 francs for each proven

infraction of the prohibition on using the photographs

at issue. Wofsy appealed to the Cour de Cassation (the

French Civil Supreme Court), but that court removed

the appeal from its docket after Wofsy did not pay the

other damages and costs the Cour d’Appel awarded to

Sicre de Fontbrune. On December 20, 2001, Sicre de

Fontbrune sold his business capital in Cahiers d’Art,

including all its tangible and intangible components, to

a third party.

3

The original judgments appear in French. We refer to the

certified translations provided by the parties.

App. 11

Sicre de Fontbrune initiated a new lawsuit (the

“Astreinte Proceeding”) in the TGI against Wofsy on

July 22, 2011, seeking to “liquidate” the astreinte

awarded by the Cour d’Appel in 2001. Sicre de

Fontbrune claimed that copies of The Picasso Project

were offered for sale in a French bookstore in 2011, and

that 1,492 photographs from the Zervos Catalogue were

reproduced in these works in violation of the astreinte.

Wofsy maintains that he was never served with

process in the Astreinte Proceeding. Sicre de Fontbrune

asserts that a huissier—a bailiff-like officer of the

French court—sent the complaint and French

equivalent of a summons to Wofsy through procedures

consistent with the Convention on the Service Abroad

of Judicial and Extrajudicial Documents in Civil or

Commercial Matters, Nov. 15, 1965 (“Hague Service

Convention”), 20 U.S.T. 361, T.I.A.S. No. 6638. The

French court official requested service at addresses

that the French courts already had on file: 401 China

Basin Street in San Francisco, and P.O. Box 2210 in

San Francisco. The U.S. process server, however, failed

to effect service.

The TGI held a hearing in the Astreinte Proceeding

on October 25, 2011. Wofsy did not appear. On

November 15, 2011, the TGI ordered another hearing.

The order contained a brief description of the claim and

proceedings to date and the decision to reopen the

proceedings for a hearing on December 13, 2011, “for

the production by [Sicre de Fontbrune] of the certificate

from the foreign authority responsible for notification

of the document instituting the proceedings,” as

requested in accordance with Article 6 of the Hague

App. 12

Service Convention. Wofsy received a copy of that order

in late November 2011. A letter accompanying the

order explained the time limits for appealing the order.

At the December 2011 hearing, the TGI accepted

the requested service certificates, and concluded that

Wofsy had been “duly summoned” in accordance with

the French Civil Procedure Code. But Wofsy again

failed to appear. The TGI entered a default judgment

against Wofsy on January 10, 2012, ordering Wofsy to

pay 2,000,000 Euros to Sicre de Fontbrune in

liquidation of the astreinte.

While the Astreinte Proceeding was pending, Sicre

de Fontbrune commenced another lawsuit in the TGI

on September 20, 2011. The suit alleged copyright

infringement by Wofsy and two defendants not party to

the instant lawsuit: Alan Wofsy Fine Arts LLC, and the

French bookstore where copies of The Picasso Project

had been discovered for sale in 2011. In January 2013,

the TGI found that on December 20, 2001, Sicre de

Fontbrune had sold the “commercial rights which [he]

had acquired on May 31, 1979,” and that he no longer

had standing to sue for copyright infringement.

On February 25, 2014, Wofsy initiated a proceeding

in the TGI seeking to vacate the 2012 astreinte

judgment, arguing that Sicre de Fontbrune’s transfer

of copyrights in December 2001 deprived him of

standing to bring the Astreinte Proceeding. The TGI

dismissed this “Review Proceeding” in August 2014.

Wofsy appealed, and the Cour d’Appel affirmed the

dismissal in April 2018, finding the filing of the Review

Proceeding untimely. The Cour de Cassation affirmed

App. 13

that decision on October 17, 2019. ECF Nos. 24 (Case

No. 19-16913), 22 (Case No. 19-17024).4

Before Wofsy filed the Review Proceeding, though,

Sicre de Fontbrune brought the instant action in the

Superior Court of California in Alameda County in

November of 2013, seeking recognition of the astreinte

judgment. After Wofsy removed the action to federal

court, the district court dismissed the case with

prejudice pursuant to Federal Rule of Civil Procedure

12(b)(6). We reversed, holding that the astreinte was

not a penalty but rather a judgment for “a sum of

money” cognizable under the Recognition Act. Sicre de

Fontbrune, 838 F.3d at 1007.

On remand, the district court heard cross-motions

for summary judgment on eight defenses under the

Recognition Act. See Cal. Civ. Proc. Code § 1716. The

district court granted summary judgment for Wofsy on

only one of those defenses, determining that the

astreinte judgment was repugnant to public policy, and

exercising its discretion to decline recognition. Sicre de

Fontbrune appeals the grant of summary judgment to

Wofsy on that issue, and appeals the district court’s

denial of partial summary judgment to Sicre de

Fontbrune on the defense of lack of subject matter

jurisdiction. Wofsy cross-appeals the grant of partial

summary judgment to Sicre de Fontbrune on the

defense of lack of personal jurisdiction, and appeals the

denial of summary judgment to Wofsy on the defenses

4

We take judicial notice of the 2019 Cour de Cassation opinion and

its certified English translation.

App. 14

based on lack of subject matter jurisdiction, insufficient

notice, and fraud.

JURISDICTION AND STANDARD OF REVIEW

We have jurisdiction to review a district court’s final

judgment under 28 U.S.C. § 1291. Our review extends

to an order denying partial summary judgment that

has become part of a final judgment. Scribner v.

WorldCom, Inc., 249 F.3d 902, 907 (9th Cir. 2001).

We review a summary judgment de novo. Id. We

“view the evidence in the light most favorable to the

nonmoving party, determine whether there are any

genuine issues of material fact, and decide whether the

district court correctly applied the relevant substantive

law.” Animal Legal Def. Fund v. U.S. Food & Drug

Admin., 836 F.3d 987, 989 (9th Cir. 2016) (en banc)

(per curiam).

DISCUSSION

“In international diversity cases such as this one,

‘enforceability of judgments of courts of other countries

is generally governed by the law of the state in which

enforcement is sought.’” Naoko Ohno v. Yuko Yasuma,

723 F.3d 984, 990 (9th Cir. 2013) (quoting Yahoo! Inc.

v. La Ligue Contre Le Racisme et L’Antisemitisme, 433

F.3d 1199, 1212 (9th Cir. 2006)). In this removed

action, California law—the Recognition Act—governs.5

5

Although there is no contest about diversity of citizenship, the

district court determined that the defendants in this case are

citizens and residents of California—a finding not disputed on

appeal. Although a defendant’s citizenship in the state where an

action is brought ordinarily prevents removal, 28 U.S.C.

App. 15

California’s Recognition Act is modeled on the 2005

version of the Uniform Foreign-Country Money

Judgments Recognition Act. AO Alfa-Bank v. Yakovlev,

230 Cal. Rptr. 3d 214, 221 (Ct. App. 2018), as modified

on denial of reh’g (Apr. 3, 2018); see Unif. ForeignCountry Money Judgments Recognition Act (Nat’l Conf.

of Comm’rs on Unif. State L. 2005). Amendments to

California’s Recognition Act became effective in 2018.

See Alfa-Bank, 230 Cal. Rptr. 3d at 221. But those

amendments apply only to claims commenced after

their effective date. Id. at 222. The district court was

thus correct to apply the version of the state

Recognition Act effective at the time Sicre de

Fontbrune filed this action in 2013.6

A majority of states have adopted either the 1962

version of the Uniform Foreign-Country Money

Judgments Recognition Act, or its 2005 update. Ohno,

723 F.3d at 990 n.8. Non-California authorities that

interpret the 1962 or the 2005 uniform acts, or that

apply principles of comity-based recognition to foreign

judgments, carry persuasive value in the application of

California’s Recognition Act. Alfa-Bank, 230 Cal. Rptr.

3d at 222–23 (citing Cal. Civ. Proc. Code § 1722).

§ 1441(b)(2), that rule is “procedural, or non-jurisdictional,” Lively

v. Wild Oats Markets, Inc., 456 F.3d 933, 939 (9th Cir. 2006).

Removal is unchallenged here.

6

As in the district court’s order, all citations to the Recognition Act

in this opinion refer to the version of the Recognition Act in effect

at the time this suit began in 2013, unless otherwise noted. See

Cal. Civ. Proc. Code §§ 1713 et seq. (West 2013).

App. 16

“Once coverage under the Uniform Act is

established,” as it has been here,7 “the presumption in

favor of enforcement applies,” and the party resisting

recognition must establish a ground for nonrecognition.

Ohno, 723 F.3d at 991 (quoting Cal. Civ. Proc. Code

§ 1716(d)). The Recognition Act lists several grounds

for nonrecognition. Some grounds, if established,

preclude recognition, Cal. Civ. Proc. Code § 1716(b), but

others only confer discretion on courts to deny

recognition, Cal. Civ. Proc. Code § 1716(c).

Five statutory grounds for nonrecognition are at

issue in this appeal. First, Sicre de Fontbrune

challenges the district court’s conclusion that the

French judgment was repugnant to U.S. public policy

favoring free expression, and argues that he was

entitled to partial summary judgment on this issue.

Second, both parties appeal the district court’s denial

of summary judgment concerning the assertion that the

French court lacked subject matter jurisdiction. Third,

Wofsy challenges the district court’s grant of partial

summary judgment to Sicre de Fontbrune regarding

the assertion that the French court lacked personal

jurisdiction over Wofsy. Fourth, Wofsy asserts that he

was entitled to summary judgment on the defense that

he received inadequate notice of the proceedings that

resulted in the French judgment. And fifth, Wofsy

argues that Sicre de Fontbrune obtained the French

judgment by fraud that deprived Wofsy of an adequate

opportunity to present his case.

7

Given our previous opinion, the parties no longer dispute that the

2012 Astreinte Judgment falls within the coverage of the

Recognition Act. See Sicre de Fontbrune, 838 F.3d at 1007.

App. 17

We conclude that Sicre de Fontbrune—not Wofsy—

was entitled to summary judgment on the defense of

repugnancy to public policy. We also conclude that no

other defenses raised on appeal provide an alternate

basis to affirm the grant of summary judgment. See

Spencer v. Peters, 857 F.3d 789, 797 n.3 (9th Cir. 2017).

Accordingly, we reverse the district court’s judgment

and remand for further proceedings.

I.

Public Policy

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 United States

undoubtedly has robust public policy favoring free

expression. See Cohen v. California, 403 U.S. 15, 24

(1971) (“The constitutional right of free expression is

powerful medicine[.]”). But “some restriction on

expression is the inherent and intended effect of every

grant of copyright.” Golan v. Holder, 565 U.S. 302,

327–28 (2012). The fair use defense to copyright

infringement is one of the “built-in First Amendment

accommodations” that ease the apparent tension

between free expression and U.S. copyright law. See

Eldred v. Ashcroft, 537 U.S. 186, 219 (2003).

The district court determined that Wofsy would

have prevailed on a fair use defense to the copyright

infringement claim on which the astreinte judgment

was based. The court also concluded that French law’s

failure to allow for Wofsy’s fair use defense made the

App. 18

judgment repugnant to U.S. public policy protecting

expression.

“California courts have set a high bar for

repugnancy under the Uniform Act.” Ohno, 723 F.3d at

1002. The issue is not simply whether the “foreign

judgment or cause of action is contrary to our public

policy.” Id. Rather, the question is whether either is “so

offensive to our public policy as to be prejudicial to

recognized standards of morality and to the general

interests of the citizens.” Hyundai Sec. Co. v. Lee, 182

Cal. Rptr. 3d 264, 272 (Ct. App. 2015) (cleaned up), as

modified (Jan. 14, 2015). Under this standard, a

“difference in law, even a marked one, is not sufficient

to raise a public policy issue. Nor is it relevant that the

foreign law allows a recovery that the forum state

would not allow.” Id. (cleaned up). Instead, public

policy is violated “only if recognition or enforcement of

the foreign-country judgment would tend clearly to

injure public health, the public morals, or the public

confidence in the administration of law, or would

undermine that sense of security for individual rights,

whether of personal liberty or of private property,

which any citizen ought to feel.” Id. (cleaned up).

The standard is not lower where the asserted

repugnancy arises from inconsistency with

constitutional principles rather than with statutes or

common law. Ohno, 723 F.3d at 1004. In such cases,

“only judgments presenting a direct and definite

conflict with fundamental American constitutional

principles will be denied recognition because

repugnant.” Id. at 1004–05 (emphasis added) (noting

cases finding repugnancy to the First Amendment

App. 19

where the foreign judgments “would unquestionably

violate the Constitution were they issued here with

respect to domestic activity”). Thus, in Ohno, this Court

determined that a judgment was not repugnant to

public policy in part because the defendant’s position—

that imposing tort liability on a church’s religious

practice was incompatible with the religion clauses of

the California and United States constitutions—was

debatable. Id. at 1009.

Wofsy’s public policy defense rests on two

assertions: first, that the fair use doctrine of U.S.

copyright law—a feature that France’s copyright

scheme lacks—would have protected the copying of the

photographs at issue; and second, that a judgment

imposing copyright liability based on copying that

would qualify as fair use is repugnant to our public

policy. For the reasons below, we reject the first of

these contentions, and therefore need not reach the

second. See S.A.R.L. Louis Feraud Int’l v. Viewfinder,

Inc., 489 F.3d 474, 483 (2d Cir. 2007) (“If the

publication of photographs of copyrighted material in

the same manner as [the defendant] has done in this

case would not be fair use under United States law,

then the French intellectual property regime

sanctioning the same conduct certainly would not be

repugnant to public policy.”).

The fair use defense under U.S. copyright law

requires the analysis of four statutory factors.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578

(1994). They are “(1) the purpose and character of the

use, . . . (2) the nature of the copyrighted work; (3) the

amount and substantiality of the portion used in

App. 20

relation to the copyrighted work as a whole; and (4) the

effect of the use upon the potential market for or value

of the copyrighted work.” 17 U.S.C. § 107.

While Wofsy claims fair use of the Zervos Catalogue

as a whole, the individual photographs within the

Zervos Catalogue are at issue in this case. The 2001

Cour d’Appel decision held that these photographs were

eligible for copyright protection in France and that that

the copyright had been infringed. And the astreinte

provided for damages of 10,000 francs for each violation

of the prohibition on further use of the photographs.

The 2012 astreinte judgment recognized damages of

14,920,000 francs,8 based on the 1,492 photographs

copied from the Zervos Catalogue. We accordingly

examine the fair use factors with respect to the

photographs, and need not analyze fair use with

respect to the Zervos Catalogue as a whole.

A. Purpose and character of use

The “purpose and character” of an allegedly

infringing use may indicate fair use, depending in part

on “whether such use is of a commercial nature or is for

nonprofit educational purposes.” 17 U.S.C. § 107.

Commercial use “‘tends to weigh against a finding of

fair use.’” Campbell, 510 U.S. at 585 (quoting Harper &

Row Publ’ers, Inc. v. Nation Enters., 471 U.S. 539, 562

(1985)). It is “not conclusive . . . but rather a fact to be

weighed along with others in fair use decisions.” Id.

(citing Sony Corp. of Am. v. Universal City Studios,

Inc., 464 U.S. 417, 448–49 (1984)) (cleaned up). The

8

The court limited the actual astreinte award to the amount that

Sicre de Fontbrune had sought—2,000,000 Euros.

App. 21

“central purpose” of considering the “purpose and

character” of the work is to determine whether the new

work is “transformative”—that is, whether it “adds

something new, with a further purpose or different

character, altering the first with new expression,

meaning, or message.” Id. at 579.

Wofsy concedes that The Picasso Project is a

commercial venture. But the district court observed

that The Picasso Project was “intended for libraries,

academic institutions, art collectors, and auction

houses,” and concluded that The Picasso Project’s

purpose aligned with the “criticism, comment, news

reporting, teaching . . . , scholarship, or research”

purposes that Section 107 characterizes as noninfringing. See 17 U.S.C. § 107. The district court relied

on that conclusion to find that the first fair use factor

weighed “strongly” in favor of fair use.

We disagree. The “use” at issue is the allegedly

infringing one—the reproduction of copyrighted

photographs in a book offered for sale. The “end-user’s

utilization of the product is largely irrelevant.” Zomba

Enters., Inc. v. Panorama Recs., Inc., 491 F.3d 574, 582

(6th Cir. 2007); see also Princeton Univ. Press v.

Michigan Document Servs., Inc., 99 F.3d 1381, 1386

(6th Cir. 1996) (rejecting a fair use defense where a

college-town copy shop copied portions of books and

sold them to students in “coursepacks” intended for

educational use).

Nor does the evidence support a finding of

transformative use that could rebalance this factor in

App. 22

Wofsy’s favor.9 It is true that even exact copies can be

transformative. For example, this Court has recognized

transformative use in the replication of copyrighted

photographs as low-resolution thumbnails for an

internet search engine, because the thumbnails “served

an entirely different function,” i.e., improving access to

information. Kelly v. Arriba Soft Corp., 336 F.3d 811,

818–19 (9th Cir. 2003). The reduction in resolution

made it “unlikely that anyone would use [the]

thumbnails for [the] illustrative or aesthetic purposes”

of the protected works. Id. at 819.

Wofsy argues that he used the photographs only as

documentation of Picasso’s works, without regard to

the photographs’ creative qualities. But a mere

“‘difference in purpose is not quite the same thing as

transformation.’” Monge v. Maya Mags., Inc., 688 F.3d

1164, 1176 (9th Cir. 2012) (quoting Infinity Broad.

Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998)).

Moreover, the purposes of the works overlap. The

Picasso Project and the photographs both present the

works of Picasso. This much is evident from the fact

that the photographs—though deemed by the French

Cour d’Appel to include creative or artistic qualities of

their own—originally were published as part of a

catalogue raisonné documenting Picasso’s works. The

exact copies in this case therefore did not serve an

9

Wofsy argues that Sicre de Fontbrune waived any argument

about transformative use by failing to address it in the district

court. But as the party resisting recognition of the French

judgment, Wofsy bore the burden to establish a ground for

nonrecognition. Ohno, 723 F.3d at 991; Cal. Civ. Proc. Code

§ 1716(d).

App. 23

“entirely different function” than the originals. Cf.

Kelly, 336 F.3d at 818–19.

The fact that The Picasso Project included

informative captions and organized the photographs so

as to facilitate research does not change our conclusion.

Adding informative captions does not necessarily

transform copyrighted works. See Monge, 688 F.3d at

1174 (finding that “neither minor cropping nor the

inclusion of headlines or captions transformed”

copyrighted photographs).

In sum, the undisputed evidence shows that the use

of the copyrighted photographs was commercial and

nontransformative. This factor therefore weighs

against a finding of fair use.

B. Nature of the copyrighted work

The second fair use factor considers “two aspects of

the work: the extent to which it is creative and whether

it is unpublished.” Id. at 1177. The “scope of fair use is

narrower with respect to unpublished works” than with

respect to published ones. Harper & Row, 471 U.S. at

564. The parties agree that the photographs were

published in the Zervos Catalogue. Accordingly, the

district court properly focused its inquiry on creativity.

“Photos are generally viewed as creative, aesthetic

expressions of a scene or image and have long been the

subject of copyright.” Monge, 688 F.3d at 1177. This is

so “especially when they are created for public

viewing.” VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723,

743 (9th Cir. 2019). Even “point-and-shoot”

photographs that are “not highly artistic” can merit

copyright protection. Monge, 688 F.3d at 1177.

App. 24

Wofsy emphasizes the documentary purpose of the

Zervos Catalogue. But that purpose does not negate

any creative character displayed by the photographs

themselves. Wofsy points to the expert declaration of a

prominent art historian opining that photographs in

catalogues raisonnes, in general, lack an artistic

purpose, and that the photographs in the Zervos

Catalogue are “not themselves works of art.” Yet, the

French Cour d’Appel recognized that the photographs

have creative elements reflecting deliberate choices of

lighting, filters, framing, and angle of view. The fact

that gallery owners and readers of Cahiers d’Art

(rather than Zervos himself) may have created some of

the disputed photographs does not contradict the

French court’s finding that the photographs exhibit

creativity.

The photographs’ creative qualities prevent this

factor from weighing heavily, if at all, in favor of fair

use.10

C. Amount and

portion used

substantiality

of

the

The third fair use factor is “the amount and

substantiality of the portion used in relation to the

copyrighted work as a whole.” 17 U.S.C. § 107.

“[C]opying an entire work militates against a finding of

10

The Second Circuit has concluded, albeit in dicta, that copied

works’ ineligibility for copyright in the United States does not, by

itself, suffice to establish repugnancy of a judgment based on that

copying. Louis Feraud, 489 F.3d at 483. Wofsy does not argue on

this appeal that the photographs would be uncopyrightable under

U.S. law, and we therefore do not address the issue.

App. 25

fair use.” VHT, 918 F.3d at 744 (quoting Worldwide

Church of God v. Phila. Church of God, Inc., 227 F.3d

1110, 1118 (9th Cir. 2000)) (cleaned up). But, because

the purpose of the copying informs the analysis,

copying entire works can qualify as fair use in some

circumstances, as where the copying is transformative.

See Kelly, 336 F.3d at 821.

The district court focused on the fact that The

Picasso Project reproduced only 1,492 photographs out

of the roughly 16,000 photographs in the Zervos

Catalogue. But the copying included the entirety of the

copyrighted photographs at issue. And especially in

view of our conclusion that Wofsy did not transform the

photographs, we are unpersuaded that this is a case

like Kelly in which copying the entirety of each

photograph was necessary. See id. This factor weighs

against fair use.

D. Effect on potential market or value

The fourth fair use factor is “the effect of the use

upon the potential market for or value of the

copyrighted work.” 17 U.S.C. § 107. “This last factor is

undoubtedly the single most important element of fair

use.” Harper & Row, 471 U.S. at 566. We consider not

only the effect of the allegedly infringing work itself,

but also “whether unrestricted and widespread conduct

of the sort engaged in by the defendant would result in

a substantially adverse impact on the potential market

for the original.” Campbell, 510 U.S. at 590 (cleaned

up).

Wofsy offered evidence that auction prices for the

Zervos Catalogue have increased during the time that

App. 26

The Picasso Project has been on the market. While this

is circumstantial evidence that The Picasso Project has

not depressed the market for the Zervos Catalogue, it

proves nothing about the effect on the market for

licensing the disputed photographs. The record

supplies no evidence that widespread appropriation of

those photographs in published books would only

negligibly affect the market for the photographs.

Furthermore, where the allegedly infringing use is

both commercial and non-transformative, a

presumption of market harm arises. Disney Enters.,

Inc. v. VidAngel, Inc., 869 F.3d 848, 861 (9th Cir. 2017)

(citing Leadsinger, Inc. v. BMG Music Pub., 512 F.3d

522, 531 (9th Cir. 2008)). We have concluded that The

Picasso Project’s use of the photographs was

commercial and non-transformative. With no evidence

countering the resulting presumption of market harm,

this factor weighs against fair use.

E. Conclusion on fair use and public policy

Fair use may depend on factual findings, but the

ultimate question of whether facts indicate fair use is

legal in nature. Google LLC v. Oracle Am., Inc., 141 S.

Ct. 1183, 1199 (2021). After weighing the four factors

above, we have serious doubts that a fair use defense

would protect the copying of the photographs at issue,

even if the nature of the copyrighted works were to

favor fair use. Because it is at least highly debatable—

if not absolutely clear—that a fair use defense would

not protect the conduct underlying the judgment of

which Sicre de Fontbrune seeks recognition, Wofsy’s

inability to urge a fair use defense in France does not

place the French judgment in “direct and definite

App. 27

conflict with fundamental American constitutional

principles.” Ohno, 723 F.3d at 1004. Sicre de Fontbrune

is therefore entitled to partial summary judgment on

this defense.11

II.

Lack of Subject Matter Jurisdiction

The applicable version of the California Recognition

Act provides that a court “shall not” recognize a

foreign-country judgment if the “foreign court did not

have jurisdiction over the subject matter.” Cal. Civ.

Proc. Code § 1716(b)(3). “Courts and commentators

agree that subject matter jurisdiction must be assessed

with reference to foreign law.” Tanya J. Monestier,

Whose Law of Personal Jurisdiction? The Choice of Law

Problem in the Recognition of Foreign Judgments, 96

B.U. L. Rev. 1729, 1747 (2016). “In determining foreign

law, the court may consider any relevant material or

source, including testimony, whether or not submitted

by a party or admissible under the Federal Rules of

Evidence.” Fed. R. Civ. P. 44.1; Sicre de Fontbrune, 838

F.3d at 997.

The district court determined that the French

court’s jurisdiction over the subject matter of the 2012

Astreinte Proceeding depended on Sicre de Fontbrune’s

standing; that his standing depended on whether he

retained rights in the astreinte; and that whether he

retained rights in the astreinte turned on the disputed

question of whether Sicre de Fontbrune had

11

We leave for another day the question of whether a defendant’s

lack of opportunity to assert a clearly meritorious fair use defense

would render a foreign judgment repugnant to the public policy of

the United States or of California.

App. 28

transferred those rights. Our conclusion regarding the

first of those assertions diverges from the district

court’s view and disposes of the subject matter

jurisdiction defense.

The French appellate courts did not evaluate

whether the TGI had subject matter jurisdiction over

the Astreinte Proceeding. Instead, they concluded that

Wofsy’s effort to set aside the Astreinte Judgment was

untimely. We therefore lack an authoritative statement

from the French courts as to whether the TGI

possessed subject matter jurisdiction over the Astreinte

Proceeding.

The parties’ submissions and our own research,

however, assure us that the TGI’s subject matter

jurisdiction did not depend on Sicre de Fontbrune’s

standing. Wofsy’s own expert explained that French

courts assess standing in terms of “admissibility,”

rather than jurisdiction. The French Code of Civil

Procedure provides, as translated, that no claim is

“admissible” unless brought by a person who has the

right to act; and that the right to act is “available to all

those who have a legitimate interest in the success or

dismissal of a claim.” Code de Procédure Civile arts. 31,

32 (Fr.).

We acknowledge, as the district court emphasized,

that the “practical result” of a lack of standing in

French courts resembles that of a failure of subject

matter jurisdiction in the federal courts of the United

States: dismissal without a decision on the merits. See

Brownback v. King, 141 S. Ct. 740, 749 (2021) (quoting

Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83,

101–02 (1998)) (“Ordinarily, a court cannot issue a

App. 29

ruling on the merits ‘when it has no jurisdiction’

because ‘to do so is, by very definition, for a court to act

ultra vires.’”). But the plain language of California’s

Recognition Act requires a proponent of the subject

matter jurisdiction defense to establish that the foreign

court “did not have jurisdiction over the subject

matter.” Cal. Civ. Proc. Code § 1716(b)(3). We are

aware of no authority holding that a procedural defect

that produces a similar practical result can suffice.

Our own research similarly yields no indication that

a plaintiff’s lack of standing circumscribes the judicial

power—the subject matter jurisdiction—of French

courts. The provisions of the Code of Civil Procedure

that set forth the requirements for standing appear

within Title II of the Code, titled “L’action” (“The

Action”). Code de Procédure Civile tit. II (Fr.). A

separate title addresses the “compétence” (competence)

of the courts, including their jurisdiction. Code de

Procédure Civile tit. III (Fr.).

Even if we were to assess subject matter jurisdiction

with reference to domestic law, we could not say that a

lack of standing necessarily deprives a court of subject

matter jurisdiction. To be sure, a party must show the

“irreducible constitutional minimum of standing” to

vest an Article III federal court with subject matter

jurisdiction. Lujan v. Defs. of Wildlife, 504 U.S. 555,

560 (1992). But California is one of numerous states

whose judiciaries’ subject matter jurisdiction does not

depend on standing. Jasmine Networks, Inc. v. Super.

Ct., 103 Cal. Rptr. 3d 426, 432 (Ct. App. 2009);

Weatherford v. City of San Rafael, 395 P.3d 274, 278

(Cal. 2017) (observing that California’s “state

App. 30

constitution has no case or controversy requirement

imposing an independent jurisdictional limitation on

our standing doctrine”); Tax Found. of Hawai’i v. State,

439 P.3d 127, 143 (Haw. 2019) (collecting examples of

states where “standing is a prudential concern and not

an issue of subject matter jurisdiction”).

Wofsy’s arguments on the subject matter

jurisdiction defense rest entirely on the assertion that

Sicre de Fontbrune had transferred his rights in the

astreinte at the time he sought to liquidate it. That

assertion, even if proven, does not establish a defect in

the French courts’ subject matter jurisdiction over the

Astreinte Proceeding. Sicre de Fontbrune is entitled to

partial summary judgment on this defense.

III.

Lack of Personal Jurisdiction

A court applying California’s Recognition Act must

refuse to recognize a foreign-country judgment if the

“foreign court did not have personal jurisdiction over

the defendant.” Cal. Civ. Proc. Code § 1716(b)(2). But

a court shall not refuse recognition for lack of personal

jurisdiction if the 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.” Cal. Civ. Proc. Code § 1717(a)(2).

We agree with the district court that Wofsy waived this

defense through a voluntary appearance.

Courts applying other states’ analogues to Section

1717(a)(2) have recognized that a voluntary appearance

may occur “in the proceeding” either before or after

judgment. See CIBC Mellon Tr. Co. v. Mora Hotel Corp.

App. 31

N.V., 792 N.E.2d 155, 162 (N.Y. 2003) (quoting

Restatement (Second) of Conflict of Laws § 33, cmt. b)

(noting that a defendant may be deemed to have

submitted to a court’s jurisdiction by “taking steps in

the action after judgment either in the trial court or in

an appellate court”); S.C. Chimexim S.A. v. Velcro

Enters. Ltd., 36 F. Supp. 2d 206, 215 (S.D.N.Y. 1999)

(defense waived where one of defendant’s arguments in

appellate proceedings in the foreign forum “concerned

the merits of the underlying dispute”); In re

Transamerica Airlines, Inc., No. CIV.A. 1039-VCP,

2007 WL 1555734, at *10 (Del. Ch. May 25, 2007)

(waiver where one of defendant’s arguments on appeal

went “to the merits” of the contested judgment). We

have confirmed that this principle applies to

California’s Recognition Act. See In re Rejuvi Lab’y,

Inc., 26 F.4th 1129, 1134 (9th Cir. 2022) (holding that

a defendant “waived its personal jurisdiction challenge

by voluntarily appearing in [the trial court that had

entered a default judgment] in its attempt to set aside

the default judgment”).

Wofsy “voluntarily appeared in the proceeding” by

petitioning the TGI to set aside the 2012 Judgment.

Wofsy does not specify the French procedural

mechanism through which he brought the Review

Proceeding in 2014, but contends that it was a

“collateral attack” without a direct analogue in

American law. The Cour d’Appel in 2018, however,

characterized the application to set aside the 2012

Judgment as a recours en révision pursuant to Article

593 and subsequent provisions of the French Code of

Civil Procedure. That chapter of the Code explains that

this procedure is available only to one who has been a

App. 32

party to the judgment of which review is sought, and

only for a limited set of reasons, including the discovery

of false statements or certain documents. Code de

Procédure Civile arts. 593–95 (Fr.). In this sense, a

recours en révision—loosely translated as an “appeal

for review”—resembles a motion to set aside a

judgment under Rule 60 of the Federal Rules of Civil

Procedure. We reject the argument that the Review

Proceeding constituted a wholly separate action. Cf.

CIBC Mellon, 792 N.E.2d at 162 (treating an

application to a court to set aside its judgment as a

voluntary appearance “in the proceedings”). The mere

fact that the French courts viewed the Review

Proceeding as untimely did not convert it into a

separate “proceeding” from the one that resulted in the

judgment.

Wofsy’s voluntary appearance also reached beyond

“protecting property seized or threatened with seizure

in the proceeding or . . . contesting the jurisdiction of

the court over the defendant[.]” See Cal. Civ. Proc. Code

§ 1717(a)(2). In the Review Proceeding, Wofsy argued

that Sicre de Fontbrune had transferred his interest in

the astreinte; that, therefore, the 2012 Judgment rested

on a flawed assertion of standing; and that the

judgment should be set aside. That effort does not fit

within the safe harbor for protecting seized property or

disputing personal jurisdiction.12 It therefore precludes

12

We need not conclude—as the district court did—that Wofsy

challenged the merits of the 2012 Judgment. We simply observe

that Wofsy argued issues other than the two that Section

1717(a)(2) exempts from triggering waiver of a defense based on

lack of personal jurisdiction.

App. 33

Wofsy from asserting the personal jurisdiction defense

to recognition. See id.

The district court properly granted partial summary

judgment to Sicre de Fontbrune regarding the defense

of lack of personal jurisdiction.

IV.

Insufficient Notice

The Recognition Act provides that a court may

refuse to recognize a foreign judgment if the “defendant

in the proceeding in the foreign court did not receive

notice of the proceeding in sufficient time to enable the

defendant to defend.” Cal. Civ. Proc. Code § 1716(c)(1).

The district court determined that issues of fact

precluded summary judgment regarding this defense.

Only Wofsy challenges that determination. The parties

dispute the adequacy of two efforts at notice: a failed

effort to serve the summons and complaint for the

Astreinte Proceeding, and a letter that the French TGI

mailed to Wofsy after the first hearing in the Astreinte

Proceeding but before the TGI entered judgment.

Although the district court reserved issues for the fact

finder that should have been decided as a matter of

law, we agree with the district court’s ultimate

conclusion regarding this defense.

The California Supreme Court has not clarified the

showing that a defendant must make to prove the

insufficient notice defense. But we “will ordinarily

accept the decision of an intermediate appellate court

as the controlling interpretation of state law, unless we

find convincing evidence that the state’s supreme court

likely would not follow it.” Mudpie, Inc. v. Travelers

App. 34

Cas. Ins. Co. of Am., 15 F.4th 885, 889 (9th Cir. 2021)

(cleaned up).

A California Court of Appeal13 has held that a mere

failure of actual notice does not prove the inadequate

notice defense. Rather, the proponent of this defense

must show the absence of notice “‘reasonably

calculated, under all the circumstances, to apprise

interested parties of the pendency of the action and

afford them an opportunity to present their objections.’”

Alfa-Bank, 230 Cal. Rptr. 3d at 224 (quoting Mullane

v. Cent. Hanover Bank & Tr. Co., 339 U.S. 306, 314

(1950)). The applicable standard, in other words, aligns

with the constitutional minimum for due process. See

id. at 233. Under that standard, where “notice is a

person’s due,” the “means employed must be such as

one desirous of actually informing the absentee might

reasonably adopt to accomplish it.” Id. at 225 (quoting

Mullane, 339 U.S. at 315).

Wofsy urges us to depart from this rule and hold

instead that a failure of actual notice proves this

defense. He argues that if a failure of actual notice does

not suffice, then this defense collapses into the “lack of

personal jurisdiction” defense. According to Wofsy, that

interpretation of the statute would render the

insufficient notice defense mere surplusage—a result

that should be avoided. See Delaney v. Super. Ct., 50

Cal. 3d 785, 799 (1990).

13

A decision of a California Court of Appeal that is not in conflict

with another appellate decision binds all inferior courts across the

state. Auto Equity Sales, Inc. v. Super. Ct. of Santa Clara Cnty.,

369 P.2d 937, 940 (Cal. 1962) (en banc).

App. 35

But we do not see “convincing evidence,” Mudpie, 15

F.4th at 889, that the California Supreme Court would

reject the Court of Appeal’s interpretation of the

insufficient notice defense. In Alfa-Bank, the Court of

Appeal considered that the “notice ground may have

broader application than the service of process

prerequisite for personal jurisdiction.” Alfa-Bank, 230

Cal. Rptr. 3d at 233 (citing Isack v. Isack, 733 N.W.2d

85 (Mich. Ct. App. 2007)). In Isack, the Court of

Appeals of Michigan—interpreting the analogous

provision of that state’s codification of the Uniform

Act—concluded that “recognition of a judgment may be

declined where the defendant was aware, or waived

notice, of the litigation, but where the defendant was

not notified of certain actions taken within the suit.”

733 N.W.2d at 86–87; see also Restatement (Fourth) of

Foreign Relations Law § 484 (2018) (recognizing that

“the notice requirement governs not just the initiation

of a proceeding, but relevant actions taken within the

suit”). Although the insufficient notice and personal

jurisdiction defenses “overlap[ped]” under the

particular facts of Alfa-Bank, the Court of Appeal

recognized that they would not always do so. See AlfaBank, 230 Cal. Rptr. 3d at 233. We therefore accept the

Court of Appeal’s conclusion that the insufficient notice

defense requires the proponent to prove the absence of

a constitutionally adequate attempt at actual notice.

See id.

We begin by considering whether the attempts to

serve Wofsy before the October 2011 hearing

constituted sufficient efforts at notice, despite their

failure. An officer of the French TGI attempted to serve

both defendants through procedures established in

App. 36

accordance with the Convention on the Service Abroad

of Judicial and Extrajudicial Documents in Civil or

Commercial Matters, Nov. 15, 1965 (“Hague Service

Convention”), 20 U.S.T. 361, T.I.A.S. No. 6638. The

Hague Service Convention was “intended to provide a

simpler way to serve process abroad, to assure that

defendants sued in foreign jurisdictions would receive

actual and timely notice of suit, and to facilitate proof

of service abroad.” Volkswagenwerk Aktiengesellschaft

v. Schlunk, 486 U.S. 694, 698 (1988). Its “primary

innovation” is a requirement that each state party

designate a “Central Authority” that can receive

foreign requests for service of process and arrange for

service on an addressee. Id. at 698–99; Hague Service

Convention, 20 U.S.T. 361, art. 2.

In accordance with that procedure, the French

court’s officer sent the complaint and the French

equivalent of a summons to the United States’ Central

Authority, and requested service on the defendants at

their addresses as listed in the summons. The

summons listed the address of Alan Wofsy & Associates

as 401 China Basin Street in San Francisco. For Alan

Wofsy himself, the summons listed Post Office Box

2210 in San Francisco.

Article 6 of the Hague Convention requires the

Central Authority (or another designee of the state

where process is to be served) to send to the applicant

for service a certificate stating the method, place, date,

and recipient of service, or the reasons that have

prevented service. Hague Service Convention, 20

U.S.T. 361, art. 6. Accordingly, the huissier’s requests

for service also included requests for these certificates.

App. 37

The U.S. process server’s attempt to serve Alan

Wofsy & Associates failed. The process server—a

contractor of the U.S. Central Authority—issued a

certificate of non-service dated August 12, 2011,

attesting that service had been attempted at 401 China

Basin Street; that no such address existed; and that

the process server had confirmed on the U.S. Postal

Service website that the address was “non

deliverable.”14

Upon learning of a failure of notice, “[d]eciding to

take no further action is not what someone desirous of

actually informing [the addressee] would do; such a

person would take further reasonable steps if any were

available.” Jones v. Flowers, 547 U.S. 220, 230 (2006)

(internal quotation omitted). The Supreme Court

accordingly held that a state failed to afford

constitutionally adequate notice where the state sold a

tax-delinquent property after the state’s certified-mail

14

The delivery trouble apparently arose from the fact that San

Francisco renamed the old China Basin Street as “Terry Francois

Boulevard” in the 1990s, and reassigned the name “China Basin

Street” to a newly built road at some point after 2010. But it is

undisputed that Wofsy continued to receive mail addressed to 401

China Basin Street for years after the Astreinte Proceeding. In any

event, Sicre de Fontbrune offers no indication that Wofsy was

obligated to apprise Sicre de Fontbrune or the French courts of any

change of address at the time the Astreinte Proceeding commenced.

Thus, there is no indication that Wofsy is to blame for the

huissier’s use of an outdated address or for the process server’s

failure to effect service. Cf. Alfa-Bank, 230 Cal. Rptr. 3d at 230

(holding that a Russian court’s mail service to a defendant’s last

known address was adequate notice, where the defendant was

required by a surety agreement to keep his address up to date with

the Russian government).

App. 38

notice to the property owner was returned unclaimed

and the state failed to take further reasonable and

available steps to accomplish notice. Id. at 239.

“Although the State may have made a reasonable

calculation” of how to reach the property owner, the

state had “good reason to suspect when the notice was

returned that [the addressee] was ‘no better off than if

the notice had never been sent.’” Id. at 230 (quoting

Malone v. Robinson, 614 A.2d 33, 37 (D.C. 1992)); see

also United States v. Ritchie, 342 F.3d 903, 911 (9th

Cir. 2003) (“[W]hen initial personal notice letters are

returned undelivered, the government must make

reasonable additional efforts to provide personal

notice.”).

Since the French huissier had requested a

certificate of service in accordance with the Hague

Service Convention, the absence of any confirmation of

successful service signaled a problem. And the issuance

of a certificate of non-service left no doubt that service

had failed. It thus triggered an obligation to take any

available and reasonable further steps to give notice of

the proceeding to Alan Wofsy & Associates. See Jones,

547 U.S. at 230.

Before considering whether such steps were

available or pursued, we turn to the process server’s

attempt to inform Alan Wofsy himself. It unfolded

similarly. When the Astreinte Proceeding was filed in

July 2011, the U.S. Central Authority received a

request to serve process at “POB 2210 San Francisco”—

the address listed for Alan Wofsy on the French

summons. The U.S. process server eventually issued a

certificate of non-service, indicating that a server had

App. 39

attempted to contact Alan Wofsy at 401 China Basin

Street on October 22, 2011, but had found “[n]o such

address.” The certificate of nonservice did not issue

until October 31—six days after the October merits

hearing in the TGI.

Under these circumstances, the failed service on

Alan Wofsy was as insufficient an attempt at notice as

was the failed service on Alan Wofsy & Associates. The

request for a certificate of service was unfulfilled at the

time of the first astreinte hearing. That should have

alerted the huissier that Wofsy might have lacked

notice of the proceedings, and that actual notice

therefore might require further reasonable efforts if

any were available. Moreover, the certificate of nonservice issued more than two months before the TGI

entered judgment.

Wofsy suggests several “further reasonable steps” to

accomplish notice, see id., that were available but went

unpursued. For example, it is undisputed that both

defendants were successfully served in the instant

proceedings at Alan Wofsy’s residence, and that since

1998 the website of Alan Wofsy Fine Arts LLC has

listed its gallery address on Geary Boulevard in San

Francisco, where staff are available to accept deliveries

during workdays. The record does not indicate any

attempt to deliver notice of the Astreinte Proceeding at

either of those addresses.

Sicre de Fontbrune claims that copies of the

summons and complaint were mailed to Wofsy at P.O.

Box 2210. But Wofsy contends that no such documents

ever arrived. The Supreme Court has “repeatedly

recognized that mail service is an inexpensive and

App. 40

efficient mechanism that is reasonably calculated to

provide actual notice.” Tulsa Pro. Collection Servs., Inc.

v. Pope, 485 U.S. 478, 490 (1988). The Hague Service

Convention allows mail service directly to a

defendant—circumventing the Central Authority—if

the receiving country has not objected to mail service

and if mail service is authorized by otherwise

applicable law. Water Splash, Inc. v. Menon, 137 S. Ct.

1504, 1513 (2017). The applicable law in California

permits service via mail, with acknowledgment of

receipt, at a Post Office box. Cal. Civ. Proc. Code

§ 415.30.

But the record does not support a finding that notice

was mailed. It contains no evidence of any attempt at

mail service apart from the failed attempt to send

process to Alan Wofsy through the U.S. Central

Authority. Indeed, Sicre de Fontbrune’s brief specifies

that the supposed mail service was performed “via the

Hague Convention Central Authority for the United

States.”15

15

Some confusion may originate from the huissier’s request to

serve Alan Wofsy at his U.S. Post Office box. The record contains

no direct evidence that either the U.S. Central Authority or its

process service contractor responded to that request by attempting

mail service. To the contrary, it contains a form indicating that the

U.S. process server sent the San Francisco postmaster as many as

three requests for “boxholder information needed for service of

legal process.” See 39 C.F.R. § 265.6(d)(5)(ii) (2011) (current

version at 39 C.F.R. § 265.14(d)(5)(ii)) (permitting disclosure of

post office boxholder name and information to a person authorized

to serve legal process). The Postal Service, in turn, provided an

address for Alan Wofsy at 401 China Basin Street. That is where

the certificate of nonservice on Alan Wofsy shows that the process

server unsuccessfully attempted service. The documentation in the

App. 41

Even if the U.S. process server had mailed notice to

P.O. Box 2210, our conclusion as to the sufficiency of

the service efforts would not change. The certificates

requested pursuant to the Hague Service Convention

revealed that neither defendant had been served.

Taking no further steps to give notice would not have

been the response of one “desirous of actually

informing” the addressee. Jones, 547 U.S. at 229; see

also Mullane, 339 U.S. at 315. The failed attempts to

serve process do not, by themselves, disprove the notice

defense.

There is, however, a factual dispute as to whether

Wofsy received actual notice of the “pendency of the

action and . . . an opportunity to present [his]

objections.” Alfa-Bank, 230 Cal. Rptr. 3d at 224; see

Cal. Civ. Proc. Code § 1716(c)(1). Wofsy received mail

correspondence from the TGI in November 2011. The

correspondence included a letter, dated November 16,

2011, accompanying a brief written order of the TGI

based on the October 2011 astreinte hearing. That

order included a half-page description of the October

2011 hearing that had occurred on Sicre de Fontbrune’s

claim for liquidation of the astreinte. It announced that

because Wofsy had not appeared and Sicre de

Fontbrune had failed to prove that Wofsy had been

served, the proceedings would be reopened for another

hearing on December 13, 2011, “for the production by

[Sicre de Fontbrune] of the certificate from the foreign

record is thus consistent with the possibility that the U.S. process

server simply dispatched an agent to attempt personal service at

the street address provided by the Postal Service, without ever

attempting service by mail at P.O. Box 2210.

App. 42

authority responsible for notification of the document

instituting the proceedings,” in accordance with Article

6 of the Hague Service Convention. The correspondence

was entirely in French. Wofsy testified at a deposition

in the present litigation, however, that he could

“reasonably” read French.16

“Notice to be effective must be informative.” Julen,

101 Cal. Rptr. at 798. The letter and order stated that

a proceeding was pending. But the correspondence

nowhere mentioned any remaining opportunity to

argue the merits of Sicre de Fontbrune’s claim for

liquidation of the astreinte, even at the December 2011

hearing. The letter provided instructions only as to how

to appeal the order. Because the letter omitted any

mention of an opportunity to participate in the

proceedings in the TGI—and, indeed, stated that the

reopening of the hearing was for a specific purpose that

did not include Wofsy appearing—we cannot say as a

matter of law that the letter was “reasonably

calculated, under all the circumstances, to apprise

interested parties of the pendency of the action and

afford them an opportunity to present their objections.”

See Alfa-Bank, 230 Cal. Rptr. 3d at 224 (citation

omitted).

16

Wofsy directs us to Julen v. Larson, 101 Cal. Rptr. 796, 798 (Ct.

App. 1972), for the proposition that notice, to be adequate, must be

given in the “language of the jurisdiction in which [the defendant]

is served,” among other requirements. In Julen—unlike here—the

foreign legal documents were written in German, which no one

argued the defendant could read. Id. And Alfa-Bank later clarified

that Julen did not “defin[e] constitutional ‘requirements’ for

adequate notice.” 230 Cal. Rptr. 3d at 232.

App. 43

Whether it actually resulted in notice, however, is

disputed. Wofsy avers that the correspondence led him

to believe that it was already too late to raise a defense

in the proceedings. But some evidence suggests that

the letter, despite its deficiencies, may have

accomplished actual notice. The declaration of Sicre de

Fontbrune’s French counsel—cited by Sicre de

Fontbrune in his response, and unchallenged in

Wofsy’s reply—indicates that French procedural rules

in fact would not have precluded Wofsy from asserting

a defense on the merits even after he received the

November 2011 mailing. And past copyright litigation

had given Wofsy more than five years of familiarity

with French litigation.

There accordingly remains a factual dispute about

the effect of the November 2011 correspondence on

Wofsy’s knowledge of his options. The district court

appropriately left to the finder of fact to determine

whether Wofsy “receive[d] notice of the proceeding in

sufficient time to enable [him] to defend.” Cal. Civ.

Proc. Code § 1716(c)(1).

V.

Fraud

A court may refuse to recognize a foreign judgment

if the judgment “was obtained by fraud that deprived

the losing party of an adequate opportunity to present

its case.” Cal. Civ. Proc. Code § 1716(c)(2). Wofsy

challenges the district court’s determination that

disputes of material fact precluded summary judgment

in Wofsy’s favor based on alleged fraud in the French

proceeding. Wofsy asserts that Sicre de Fontbrune

falsely represented to the TGI in the Astreinte

Proceeding that he owned the copyrights to the

App. 44

photographs at issue, and that Sicre de Fontbrune

failed to disclose that he no longer had an interest in

liquidating the astreinte that would make his claim

admissible. See Code de Procédure Civile arts. 31, 32

(Fr.).

The comments to the 2005 Uniform Act—on which

California’s Recognition Act is based, Alfa-Bank, 230

Cal. Rptr. 3d at 221—explain that the language used in

Section 1716(c)(2) refers only to “extrinsic fraud.” Unif.

Foreign-Country Money Judgments Recognition Act § 4

cmt. 7 (Nat’l Conf. of Comm’rs on Unif. State L. 2005).

Examples of extrinsic fraud include instances where

“the plaintiff deliberately had the initiating process

served on the defendant at the wrong address,

deliberately gave the defendant wrong information as

to the time and place of the hearing, or obtained a

default judgment against the defendant based on a

forged confession of judgment.” Id. Extrinsic fraud

differs from intrinsic fraud, which includes “false

testimony of a witness or admission of a forged

document into evidence during the foreign proceeding.”

Id. Those are concerns that “should be raised and dealt

with in the rendering court.” Id.

California caselaw indicates that concealing

material information from a court can, in some

circumstances, constitute extrinsic fraud. For example,

in Pentz v. Kuppinger, a plaintiff sought restitution for

“assertedly excessive amounts collected by defendant

under a Mexican judgment” that the defendant had

obtained against the plaintiff. 107 Cal. Rptr. 540, 541

(Ct. App. 1973). The court held that the plaintiff had

alleged extrinsic fraud against the creditor of the

App. 45

foreign judgment, because the judgment-creditor had

failed to disclose to the plaintiff or to the courts that

the judgment-creditor already had received payments

that would have reduced the amount of the foreign

judgment. Id. at 544–45. The plaintiff allegedly had

inquired about some of these payments while the

foreign action was pending, but the defendant’s

attorney had denied knowledge of them. Id. at 544 n.5.

As to other payments, the Court of Appeal observed

that the plaintiff “had not even a suspicion that credit

should have been given.” Id. at 544. Taking the

complaint’s allegations as true, then, the “plaintiff was

denied the opportunity to acquaint the [Mexican] court”

with information crucial to her case. Id. at 545. The

court accepted that this conduct would constitute

extrinsic fraud, concluding that on the alleged facts of

the case, the plaintiff “was denied her day in court as

to all of the issues tendered by her pleading[.]” Id.

(italicization in original).

Sicre de Fontbrune stated in his 2011 complaint in

the Astreinte Proceeding that he owned the copyrights

to the photographs that the resulting judgment found

to have been copied. In fact, as the French Cour d’Appel

later confirmed in a separate copyright infringement

proceeding, Sicre de Fontbrune had transferred those

copyrights in December 2001 to a business entity.

Whether this false representation mattered depends on

whether Sicre de Fontbrune nonetheless retained a

legal interest in liquidating the astreinte after

transferring the relevant intellectual property that the

astreinte was awarded to protect. That is, at least in

part, a question of French law.

App. 46

We need not resolve it in this appeal. Even

assuming that Sicre de Fontbrune deceived the TGI as

to his legal interest in the astreinte, Wofsy is not

entitled to summary judgment on the claim that the

misrepresentation “deprived [him] of an adequate

opportunity to present [his] case.” See Cal. Civ. Proc.

Code § 1716(c)(2). The misrepresentation may have

enabled Sicre de Fontbrune to obtain the astreinte

judgment. But unlike the party asserting fraud in

Pentz, Wofsy did not participate in the proceeding to

liquidate the astreinte. He accordingly did not request

evidence that was denied. Cf. Pentz, 107 Cal. Rptr. at

544 n.5. Moreover, Sicre de Fontbrune affirmatively

represented in his complaint that he owned the

copyrights. That fact suggests that if Wofsy had

participated in the Astreinte Proceeding, he might have

had occasion to question that assertion. Cf. id. at 544

(losing party “had not even a suspicion” regarding the

concealed information). For the reasons discussed with

respect to the notice defense, whether Wofsy had a

valid explanation for failing to mount a defense in the

Astreinte Proceeding is subject to factual dispute.

A question thus remains as to whether Wofsy

reasonably should have detected the alleged fraud

during the French proceedings—and, therefore, as to

whether such fraud deprived him of an adequate

opportunity to present his case. The district court did

not err by denying Wofsy summary judgment on the

fraud defense.

CONCLUSION

Wofsy was not entitled to summary judgment based

on the public policy defense. No other ground for

App. 47

nonrecognition at issue in this appeal supplies an

alternative basis for affirming the judgment below. We

therefore REVERSE and REMAND for further

proceedings consistent with this opinion.

REVERSED AND REMANDED.

App. 48

APPENDIX B

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

Case No. 5:13-cv-05957-EJD

[Filed: 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,

)

)

v.

)

)

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

App. 49

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

App. 50

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

1

For the sake of convenience, this order refers to de Frontbrune

and his heirs collectively as “Plaintiffs.”

App. 51

brought suit against Defendants for copyright

infringement (the “First Copyright Proceeding”). Id.

¶¶ 9-10; Dkt. 70-22 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. 70-14 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

2

Citations to “Dkt. No. 70-2” refer to Defendants’ Response

Separate Statement in Opposition to Plaintiffs’ Cross Motion For

Summary Judgment. Plaintiffs did not file a reply separate

statement in support of their cross motion for summary judgment.

Pls. Reply (Dkt. No. 71) at 1 n.1.

3

Defendants object to this fact as “[d]isputed as unsupported by

admissible evidence. . . .” Dkt. 70-2 at 1 (Pls.’ Fact 1). Defendant

Wofsy’s declaration supports this fact, so it is not disputed. Mot.

Wofsy Decl. ¶ 10. Defendants purport to dispute several of

Plaintiffs’ facts on the grounds that Plaintiffs’ cited evidence is

inadmissible, while ignoring that Defendants’ own evidence

supports the facts in question. To the extent that their own

evidence contradicts Defendants’ objections, those objections are

overruled.

4

Citations to “Dkt. No. 70-1” refer to Defendants’ Reply Separate

Statement in Support of Motion For Summary Judgment.

App. 52

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).

5

All citations and quotations to the record are the English

language translations of French documents.

App. 53

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

App. 54

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

6

Defendants object to Serre’s Second Reply Declaration—and

presumably this exhibit—because Serre did not sign or date the

declaration. Dkt. No. 73 at 2. The court overrules the objection for

the following reasons. The declaration attests that the contents are

true and correct, that Serre would testify to the facts contained

therein, and that it was made under penalty of perjury under U.S.

law. Second Reply Serre. Decl. at 1-2; see Kersting v. United States,

865 F. Supp. 669, 676 (D. Haw. 1994). Moreover, Serre filed a

signed and dated version of his Second Reply Declaration two

weeks after Plaintiffs’ filed the original unsigned version and

Defendants do not dispute the authenticity of the exhibit. The

court finds no reason to doubt that this exhibit is a true and

correct copy of the 2018 Judgment.

App. 55

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, 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

App. 56

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,

7

The Court of Appeal held that the 2018 amendments were not

retroactive, so this order applies and cites to the Recognition Act

as it was prior to the 2018 amendments. Alfa-Bank, 21 Cal. App.

5th at 199.

8

Uniform Law Commission, Foreign Money Judgments

Recognition Act, https://www.uniformlaws.org/committees/comm

unity-home?CommunityKey=9c11b007-83b2-4bf2-a08e74f642c840bc; Uniform Law Commission, Foreign-Country Money

Judgments Recognition Act, https://www.uniformlaws.org/

committees/communityhome?CommunityKey=ae280c30-094a4d8f-b722-8dcd614a8f3e.

App. 57

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.

App. 58

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

App. 59

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

App. 60

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.

App. 61

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.

App. 62

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

App. 63

§ 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

App. 64

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 party’s claim,

because the opposing party “lack[s] . . . a right to legal

action, such as . . . lack of interest.” Id. at Ex. 8. And

Article 123 allows a party to argue that a claim is

inadmissible at any stage of the proceeding. Id. at Ex.

10.

Defendants submitted a declaration from Vonnick

Le Guillou in support of their position. Le Guillou is a

partner at DLA Piper’s office in Paris and is the head

of the firm’s Litigation and Regulatory Group in

France. Id. ¶ 1. She obtained her Master’s degree in

Private Law from a French school, has been admitted

to the Paris Bar since 1984, and has extensive

experience litigating in French trial and appellate

courts. Id. She is well qualified to offer her opinion on

this question. Based on the Articles of the French Code

of Civil Procedure referenced above, she opines that

while French law refers to standing as “inadmissibility”

App. 65

rather than “jurisdiction,” “the practical result of a lack

of standing is the same,” because lack of admissibility

will lead to dismissal without consideration of the

merits at any stage of the proceeding. Id. ¶ 5.

Plaintiffs counter that inadmissibility is a defense

that a defendant may raise, but it does not go to the

subject matter jurisdiction of the court. Plaintiffs offer

the Second Reply Declaration of Eric Serre in

opposition. Serre is a litigator practicing in France who

has multiple Master’s degrees in law from French

schools and has been admitted to the Paris bar since

1996. Second Reply Serre Decl. ¶ 1. He is well qualified

to offer opinions on this question. He states that, under

French law, maintaining that an action is inadmissible

is a defense, and that if a defendant does not raise that

defense, the plaintiff does not have the burden to prove

the absence of such a defense, and the court is not

obligated to investigate the matter on its own. Id. ¶ 2.

The court finds that the question of admissibility

under French law is comparable to standing under U.S.

law, and that if an action is inadmissible, then the

French court does not have subject matter jurisdiction

over the action for the purposes of § 1716(b)(3). Under

U.S. law, a plaintiff must possess, among other

requirements, “a legally protected interest” that is

likely to be redressed by a favorable decision. Lujan v.

Defs. of Wildlife, 504 U.S. 555, 560-61 (1992); Maya v.

Centex Corp., 658 F.3d 1060, 1067 (9th Cir. 2011)

(“[L]ack of Article III standing requires dismissal for

lack of subject matter jurisdiction.”). This requirement

directly aligns with Article 31 of the French Code of

Civil Procedure’s requirement that a party have “a

App. 66

legitimate interest in the success or dismissal of a

claim.” Le Guillou Decl. Ex. 4. And—critically—under

both countries’ laws, where a party lacks this

“interest,” then courts will dismiss the action without

considering the merits underlying the claim. Compare

Righthaven LLC v. Hoehn, 716 F.3d 1166, 1173 (9th

Cir. 2013) (affirming dismissal for lack of standing)

with le Guillou Decl. Ex. 8 (allowing dismissal of

inadmissible actions without consideration of the

merits). Because the question of whether a matter is

inadmissible may lead to dismissal without

consideration of the merits, the court finds that if a

matter is inadmissible in French courts, then, those

courts lack subject matter jurisdiction under the

Recognition Act.

The court’s conclusion here has support from at

least one case that considered standing under French

law. In Oveissi v. Islamic Republic of Iran, the court,

applying French law to tort claims, found “standing” to

be a “threshold” question that required resolution

before the court could consider the underlying merits.

768 F. Supp. 2d 1, 11 (D.D.C. 2010). That court’s

consideration of standing turned on whether the

plaintiff could demonstrate that he had been “directly

injured” by the conduct of the defendants. Id. French

law, like U.S. law, requires that the plaintiff be able to

bring the dispute-in-question into the court’s

jurisdiction. That the French legal system is more

lenient on this requirement by neither obligating a

plaintiff to affirmatively demonstrate the claim is

admissible nor requiring the court to investigate

admissibility on its own does not change this court’s

analysis. See Second Reply Serre Decl. ¶ 2. The court

App. 67

finds that whether the JEX had subject matter

jurisdiction over the Astreinte Proceeding turns on the

question of whether Plaintiffs owned the right to

liquidate the astreinte.

The court briefly addresses Plaintiffs’ second

argument—that the JEX had subject matter

jurisdiction over the Astreinte Proceeding because it is

a court in the enforcement division of the French trial

courts. The court agrees that the JEX, as a court of the

enforcement division, would be the proper court to

consider generally whether to liquidate an astreinte;

and Defendants do not appear to dispute that point.

But, the issue is whether this JEX had subject matter

over this astreinte. If Plaintiffs did not possess the right

to liquidate this astreinte, then this JEX did not have

subject matter jurisdiction to enter the 2012 Judgment.

The court now considers whether Plaintiffs

transferred the right to liquidate the astreinte when

they transferred the Cahiers d’Art business and the

underlying copyrights in 2001. On Defendants’ behalf,

Sirinelli offers a declaration that describes the purpose

and use of astreintes in the French legal systems. He

references several French legal texts to argue that an

astreinte, while transferable, attaches to the underlying

right that it is intended to protect. Mot. Sirinelli Decl.

¶¶ 12-20. He opines, when Plaintiffs transferred the

copyrights, they also transferred the right to liquidate

the astreinte. Id. ¶ 28; see id. ¶¶ 21-28. Plaintiffs

counter with a declaration from Didier Le Prado filed

App. 68

with their Reply.9 Dkt. No. 71-2. Le Prado is a French

attorney who practices before the Cour de Cassation

and formerly served as President of the Bar Council of

Attorneys before the Council of State and the Cour de

Cassation. Le Prado Decl. ¶ 1. At the time of his

declaration, he was the President of the European

Association of Supreme Court Bars. Id. The court finds

that he is well qualified to opine on this matter. In his

declaration, Le Prado analyzes an unpublished 2012

case from the Cour de Cassation. Le Prado Decl.

¶¶ 22-26, 37-44 (discussing Cour de Cassation case no.

11-10488, Feb. 14, 2012). In that case, the Cour de

Cassation ruled that a business owner, who possessed

an astreinte arising from a judgment related to the

business, could still liquidate the astreinte after selling

the business because the astreinte attached to the

judgment. Id. ¶ 39. Le Prado opines that when

intellectual property rights are transferred as a part of

the sale of a business, the original business owner

retains the right to liquidate any astreinte issued in

connection with those rights after the sale of the

business without “the need to prove an agreement to

that effect.” Id. ¶ 51. Thus, the parties dispute

whether, under French law, the astreinte should be

9

Defendants object to Le Prado’s declaration because Plaintiffs’

originally filed only the French version and did not file an English

translation until several days later. The court overrules this

objection because Federal Rule of Civil Procedure 44.1 provides:

“In determining foreign law, the court may consider any relevant

material or source, including testimony, whether or not submitted

by a party or admissible under the Federal Rules of Evidence.” The

court finds Le Prado’s declaration relevant to the determination of

French law.

App. 69

presumed to have transferred with Plaintiffs’ transfer

of the copyrights.10

However, the court need not resolve this question of

French law for these motions. The parties agree that an

astreinte can be transferred. Pls.’ Mot (Dkt. No. 63) at

16-17; Mot. Sirinelli Decl. ¶ 12. So, regardless of

whether an astreinte should be presumed to attach to

the underlying intellectual property right or to the

judgment, the question here is whether this astreinte

was part of the 2001 transfer. And based on the

available evidence this question is subject to a genuine

issue of material fact. The contract for Plaintiffs’

transfer of the copyrights does not expressly address

whether the astreinte was transferred. See Mot.

Popović Decl. Ex. 9. But, a 2011 document that

Plaintiffs, along with the buyer of the copyrights, filed

in another French court addressed the rights arising

from the 2001 Judgment. Id. at Ex. 15. The document,

though, is ambiguous. It first provides, “Mr. Yves

SICRE de FONTBRUNE confirmed and reaffirmed, as

required, to the company EDITIONS CAHIERS D’ART,

the rights that he held to the works of Christian

ZERVOS (exhibit 3) and those that he had acquired

under the Ruling of the Court of Appeals of September

2001, cited below,” which would indicate that the

astreinte, as a right acquired from the 2001 Judgment

10

At oral argument, Defendants argued that the Ninth Circuit’s

decision implied that the astreinte attached to the copyrights, not

the judgment. However, they did not raise this argument in their

briefs, so the court will not consider it. Hr’g. Tr. at 13:12-14:14; see

Arpin v. Santa Clara Valley Transp. Agency, 261 F.3d 912, 919

(9th Cir. 2001).

App. 70

was transferred. Id. at 2. But, the document later

states that de Frontbrune is “the holder of the residual

rights which he held to the works of Christian ZERVOS

under the ruling of September 26, 2001, which he owns

with the Company CAHIERS D’ART,” indicating that

he retained at least some rights connected to the 2001

Judgment. Id. at 3. This document is ambiguous as to

whether, following the transfer of the copyrights, de

Frontbrune retained any rights arising from the 2001

Judgment. The interpretation of this document is a

task for the fact finder. See Wolf v. Superior Court, 114

Cal. App. 4th 1343, 1359-60 (2004), as modified on

denial of reh’g (Feb. 19, 2004). The court holds that

whether Plaintiffs transferred the astreinte as part of

the 2001 transfer of copyrights is a genuine issue of

material fact essential for determining if the JEX had

subject matter jurisdiction over the Astreinte

Proceeding.

c. Whether the defendant in the

proceeding in the foreign court received

notice of the proceeding in sufficient

time to enable the defendant to defend

(Cal. Civ. Proc. Code § 1716(c)(1))

The Recognition Act provides that a court may

decline to recognize a foreign money judgment where

“[t]he defendant in the proceeding in the foreign court

did not receive notice of the proceeding in sufficient

time to enable the defendant to defend.” Cal. Civ. Proc.

Code § 1716(c)(1). Plaintiffs initiated the Astreinte

Proceeding in July 2011. See generally Mot. Popović Ex.

3. Plaintiffs attempted service through Hague

Convention procedures, but Defendants did not receive

App. 71

the summons or complaint before the JEX issued the

2012 Judgment. See Dkt. No. 70-1 at 2 (Fact 6).11

Plaintiffs contend that actual service did not occur

because Defendants had provided an out-of-date

physical address during the First Copyright Lawsuit so

the process server could not find the address. Dkt. No.

70-2 at 1-2 (Facts 5, 8, 9).12 On October 25, 2011, the

JEX held a hearing on the merits in the Astreinte

Proceeding. Dkt. No. 70-2 at 2 (Fact 10). Defendants

did not learn of the Astreinte Proceeding until late

November 2011 when they received through the mail

an order, entirely in French, from the JEX. Dkt. No.

70-1 at 2 (Fact 7). The order stated that another

hearing concerning Plaintiffs’ service on Defendants

had been set for December 13, 2011. Dkt. No. 70-2 at 2

(Fact 11).

A defense based on notice is proper only if the

defendant “was not served in a manner reasonably

calculated to give him actual notice of the pendency of

the [foreign] proceeding.” Alfa-Bank, 21 Cal. App. 5th

at 213-14. “Due process of law does not require actual

notice, but only a method reasonably certain to

accomplish that end. The means employed must be

such as one desirous of actually informing the absentee

11

Plaintiffs argue that this fact is disputed because Defendants

filed the Review Proceeding in 2014, but provide no facts

indicating the Defendants received the complaint or summons to

the Astreinte Proceeding prior to the 2012 Judgment.

12

Defendants object that these facts are disputed because they are

not supported by admissible evidence. The court overrules this

objection because these facts, even if they were not in dispute,

would not be material to the court’s ruling on this defense.

App. 72

might reasonably adopt to accomplish it.” Id. at 209

(citations and quotations omitted). While, “no great

amount of formality is required for effective notice,”

effective notice will “normally” include information

“location of the pending action, the amount involved,

the date defendant is required to respond, and the

possible consequences of his failure to respond.” Julen

v. Larson, 25 Cal. App. 3d 325, 328 (Ct. App. 1972).

Defendants argue that because they did not receive

actual notice of the Astreinte Proceeding until late

November 2011, it was insufficient for them to defend

themselves. Plaintiffs counter first that this case is like

Alfa-Bank, where the Court of Appeal held that

reasonable efforts to provide service can preclude this

defense even in the absence of actual notice, and second

that the mailing Defendants received in November

2011 was sufficient for Defendants to mount a defense.

But, this case is not like Alfa-Bank. There, the Court of

Appeal found that service of process, while

unsuccessful, had been “[u]nder the[] circumstances . . .

reasonably calculated to apprise [the defendant] of the

pendency of the [foreign] action and afford him an

opportunity to respond.” 21 Cal. App. 5th at 209.

“Critical” to the decision of the Court of Appeal was the

fact that the defendant was contractually bound to

keep the foreign government apprised of his address

and he failed to do so. Id. at 210. There is no suggestion

that Defendants were under similar obligations here.

And it is undisputed that Defendants were publicly

listed in the phone book at the time and that the

French court successfully sent another document to

Defendants through the mail. Dkt. No. 70-1 at 2, 5

(Facts 7, 13). Plaintiffs cannot establish that their

App. 73

efforts to serve Defendants were, as a matter of law,

sufficient to preclude a notice defense under Alfa-Bank.

Whether Plaintiffs’ attempt at service was “reasonably

calculated to apprise” Defendants of the Astreinte

Proceeding is a factual question and is inappropriate

for summary judgment. Alfa-Bank, 21 Cal. App. 5th at

209. Plaintiffs’ second argument—that the November

2011 mailing was sufficient notice for Defendants to

defend in the Astreinte Proceeding—is also a question

of material fact.

d. Whether the judgment was obtained by

fraud that deprived the losing party of

an adequate opportunity to present its

case (Cal. Civ. Proc. Code § 1716(c)(2))

The Recognition Act provides that when “[t]he

[foreign] judgment was obtained by fraud that deprived

the losing party of an adequate opportunity to present

its case,” then the U.S. court need not recognize the

judgment. Cal. Civ. Proc. Code § 1716(c)(2). The

comments to the 2005 Act state that only extrinsic

fraud—that is “conduct of the prevailing party that

deprived the losing party of an adequate opportunity to

present its case”—provides a ground for

nonrecognition. 2005 Act Comments, § 4 comment 7

(quotations omitted). An example of extrinsic fraud

would be if a plaintiff “obtained a default judgment

against the defendant based on a forged confession of

judgment.” Id. “Extrinsic fraud should be distinguished

from intrinsic fraud, such as false testimony of a

witness or admission of a forged document into

evidence during the foreign proceeding;” intrinsic

evidence is not a basis for nonrecognition. Id.

App. 74

Defendants’ argument here turns on Plaintiffs’

representation to the JEX that Plaintiffs’ owned the

copyrights to the at-issue photographs and the right to

liquidate the astreinte. Defendants contend that

Plaintiffs “deceived the French court as to [their]

ownership of the underlying intellectual property

rights, and as a result of that deception, wrongfully

obtained a judgment liquidating an astreinte to which

[they] w[ere] not legally entitled. [Plaintiffs’]

misrepresentation regarding [their] ownership of the

rights compounded [their] failure to effect service,

making it so neither Defendants nor the French court

knew the true state of affairs.” Mot. at 16.

Defendants present evidence that is analogous to

the example provided in the Comments to the 2005 Act.

Here, Plaintiffs presented information to the

JEX—that they owned the copyrights underlying the

astreinte—that is contrary to a factual finding by the

French court that issued the 2013 Judgment. That

information contributed to Plaintiffs obtaining a

default judgment against Defendants in the 2012

Judgment. Moreover, as discussed above, whether

Plaintiffs transferred the astreinte is a disputed fact

that goes to whether the JEX had jurisdiction, and

“[e]xtrinsic fraud . . . goes to the question of

jurisdiction.” Iraq Middle Mkt. Dev. Found. v.

Harmoosh, 175 F. Supp. 3d 567, 577 (D. Md. 2016)

(citation and quotation omitted), vacated on other

grounds, 848 F.3d 235 (4th Cir. 2017). If Plaintiffs did

not own the right to liquidate the astreinte and if they

intentionally misled the JEX as to that fact, then those

facts could constitute extrinsic fraud. See Pentz v.

Kuppinger, 31 Cal. App. 3d 590, 597 (Ct. App. 1973).

App. 75

Accordingly, there are genuine disputes of material fact

that preclude summary judgment on this defense.

e. Whether the 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 (Cal. Civ. Proc. Code

§ 1716(c)(3))

The Recognition Act provides that 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.” Cal. Civ.

Proc. Code § 1716(c)(3). Defendants argue that this

court should decline to recognize the 2012 Judgment

because it is repugnant to U.S. public policy favoring

(1) free speech and (2) promotion of the arts. Plaintiffs

contend that any differences between U.S. and French

law do not meet the stringent standard for repugnancy.

“California courts have set a high bar for

repugnancy under the [Recognition] Act. The

standard . . . measures not simply whether the foreign

judgment or cause of action is contrary to our public

policy, but whether either is so offensive to our public

policy as to be prejudicial to recognized standards of

morality and to the general interests of the citizens.”

Ohno, 723 F.3d at 1002 (citations and quotations

omitted). “[T]he public policy exception codified at

§ 1716(c)(3) 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.” Id.

App. 76

(citation, quotations, and alteration omitted). In Ohno,

the Ninth Circuit recognized that “courts in other

jurisdictions have declined to enforce foreign-country

money judgments on grounds of repugnance to the

public policy embodied in the First Amendment, but

only where there were stark differences between

foreign and domestic law.” Id. at 1003. The Ninth

Circuit explained that “[s]uch direct conflict is more apt

to arise where the foreign-country judgment—or the

law underlying it— does not incidentally or indirectly

affect conduct that may be protected in the United

States, but expressly targets such conduct.” Id. So,

judgments based on “foreign laws specific to speech or

expression—such as libel, defamation and hate speech

laws—not laws of general application” are more likely

to be found repugnant. Id. On this basis, the Ninth

Circuit distinguished Ohno—which dealt with

Japanese tort laws—from the Second Circuit’s decision

in Viewfinder. Id. at 1004 n. 23. In Viewfinder, after

the district court for the Southern District of New York

found a French copyright judgment to be repugnant to

public policy under the New York Recognition Act

because it conflicted with U.S. and New York policy

protecting free expression, the Second Circuit vacated

and remanded with instructions to conduct a more

thorough analysis of French and U.S. copyright laws

and the fair use exception for activity protected by the

First Amendment. See Viewfinder, 489 F.3d at 478-84.

Plaintiffs argue that Defendants’ reliance on

Viewfinder is misplaced because Viewfinder is a Second

Circuit case applying the New York Recognition Act,

and this court should instead find that the 2012

Judgment does not meet the high standard for

App. 77

repugnancy articulated in Ohno. This argument fails to

persuade. First, as discussed above, the Recognition

Act provides that courts, “[i]n applying and construing

this uniform act, consideration shall be given to the

need to promote uniformity of the law with respect to

its subject matter among states that enact it.” Cal. Civ.

Proc. Code § 1722, see also Alfa-Bank, 21 Cal. App. 5th

at 199. The New York Act is based on the 1965 Act, so

cases interpreting it, like Viewfinder, are persuasive

even if they are not binding. Second, Ohno specifically

distinguished Viewfinder, so the two decisions are not

in conflict. Accordingly, while Plaintiffs are correct that

the standard for repugnancy is a difficult one to meet,

“[f]oreign judgments that impinge on First Amendment

rights will be found to be repugnant to public policy.”

Viewfinder, 489 F.3d at 480 (quotations omitted); see

also Ohno, 723 F.3d at 1004 (“[Foreign] judgments

presenting a direct and definite conflict with

fundamental American constitutional principles will be

denied recognition because repugnant.”).

The 2012 Judgment arises, through the 2001

Judgment, from French copyright law. Defendants

contend that it is repugnant to public policy set forth in

the U.S. Constitution because (1) it conflicts with the

fair use doctrine, which is rooted in the First

Amendment, and (2) it conflicts with policy favoring the

promotion of the arts as articulated in the Intellectual

Property Clause. U.S. Const. Art. I, § 8, cl. 8. In

Viewfinder, the Second Circuit articulated a framework

for applying the Recognition Act to this sort of

circumstance: First, a court should identify the

constitutional protections for the unauthorized use of

the intellectual property at issue, and second, it should

App. 78

determine whether French intellectual property laws

provide comparable protections. Viewfinder, 489 F.3d

at 481-82 (citing Bachchan, 585 N.Y.S.2d at 663-65;

Abdullah v. Sheridan Square Press, Inc., 1994 WL

419847, at *1 (S.D.N.Y. May 4, 1994)).

i. Fair Use

The court first considers Defendants’ fair use

argument. It is well accepted that the fair use doctrine

implicates the First Amendment. Viewfinder, 489 F.3d

at 482 (“[A]bsent extraordinary circumstances, the fair

use doctrine encompasses all claims of [F]irst

[A]mendment in the copyright field.”) (citations and

quotations omitted); L.A. News Serv. v. Tullo, 973 F.2d

791, 795 (9th Cir. 1992) (“First Amendment concerns

are . . . addressed in the copyright field through the

‘fair use’ doctrine.”). “Because the fair use doctrine

balances the competing interests of the copyright laws

and the First Amendment, some analysis of that

doctrine is generally needed before a court can conclude

that a foreign copyright judgment is repugnant to

public policy.” Viewfinder, 489 F.3d at 482. If

Defendants’ use of the copyright protected photographs

would not be protected by the fair use doctrine under

U.S. law, then the 2012 Judgment liquidating the

astreinte arising from Defendants’ infringing use of the

photographs would not be repugnant. See id. at 483.

The court must therefore determine whether

Defendants’ use of the photographs constitutes fair use.

See id.

The Copyright Act allows for the fair use of

copyright-protected works for criticism, commentary,

news reporting, scholarship, research and other such

App. 79

purposes. 17 U.S.C. § 107. In assessing whether

conduct constitutes fair use, courts should consider four

factors: “(1) the purpose and character of the use,

including whether such use is of a commercial nature

or is for nonprofit educational purposes; (2) the nature

of the copyrighted work; (3) the amount and

substantiality of the portion used in relation to the

copyrighted work as a whole; and (4) the effect of the

use upon the potential market for or value of the

copyrighted work.” Id.

As to the first factor, Defendants 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

App. 80

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. This factor weighs strongly in favor of

fair use.

Defendants next argue that the nature of the Zervos

Catalogue weighs in favor of finding fair use because

the photographs are unoriginal and documentary in

nature. However, as Plaintiffs point out, in the 2001

Judgment the Cour d’Appel found the photographs to

be creative works: “the photograph of his work seeks to

find its quintessence through the deliberate choice of

lighting, the lens, filters, framing or angle of view, it

has expressed in the representation that it has made of

it, its own personality, highlighting an aspect that

should be brought out in one place, or a contrast or

effect coming from the support in another . . . [and

thus] reveals a true creator.” Compl. Ex. 2 at 10.

However, Plaintiffs do not dispute that the Zervos

Catalogue is 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. Dkt. No. 70-1 at 16-17

(Facts 34-35). On balance, the court finds that this

factor tilts slightly away from finding fair use.

The third factor “asks whether the amount and

substantiality of the portion used in relation to the

copyrighted work as a whole, are reasonable in relation

App. 81

to the purpose of copying.” Mattel, Inc. v. Walking

Mountain Prods., 353 F.3d 792, 803 (9th Cir. 2003)

(citation and quotations omitted). “This factor has both

a quantitative and a qualitative component, so that

courts have found that use was not fair where the

quoted material formed a substantial percentage of the

copyrighted work . . . or where the quoted material was

essentially the heart of the copyrighted work.” New Era

Publ’ns Int’l, ApS v. Carol Publ’g. Grp., 904 F.2d 152,

158 (2d Cir. 1990) (quotation, citation, and

parenthetical omitted). The Zervos catalogue contains

some 16,000 photographs of Picasso’s work (Compl. Ex.

2 at 3), while the JEX found that Defendants had

copied 1,492 of those photographs (see Compl. Ex. 6 at

3; see also Reply Mooney Decl. ¶ 3 (“more than 1,000”)).

In the 2001 Judgment, the Cour d’Appel found that The

Picasso Project did not 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[].” Compl. Ex. 2 at

9. Because Defendants copied less than ten percent of

The Zervos Catalogue’s photographs and because

Plaintiffs have not presented evidence that the copied

photographs go to “the heart” of the Zervos Catalogue,

the court finds that the third factor weighs in favor of

fair use.

The last factor considers the effect of the use upon

the potential market for or value of the copyrighted

work. This factor is “undoubtedly the single most

important element of fair use.” Harper & Row

Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566

(1985). Here, the fourth factor weighs heavily in favor

of fair use. First, the Zervos Catalogue and The Picasso

App. 82

Project do not compete. 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.

This lack of competition is further shown in the

Zervos Catalogue’s market. In 1994 and 1995, the price

of the original Zervos Catalogue at auction houses,

such as Sotheby’s, was at different times $35,000 and

£38,900. Dkt. No. 70-1 at 18 (Fact 40); Little Decl. (Dkt.

No. 61-9) ¶ 6. The Picasso Project was first published in

1995. Dkt. No. 70-1 at 18 (Fact 40). Thereafter, 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.

Id.; Little Decl. ¶ 6. While the auction price of the

original Zervos Catalogue has declined since then, that

appears to be attributable to its 2013 reprint. Since the

App. 83

release of the reprint in 2013, the auction price of the

original Zervos Catalogue has declined, going for as

little as $8,750 at an auction in 2015. Dkt. No. 70-1 at

18 (Fact 40); Little Decl. ¶ 7. Plaintiffs offer no

evidence indicating that Defendants use of the

photographs in The Picasso Project has had any

effect—let alone a negative one—on the market for the

Zervos Catalogue. This fourth factor weighs heavily in

favor of Defendants.

The first, third, and fourth factors all support fair

use—with the first and fourth factors strongly

supporting fair use. While the second factor slightly

leans towards Plaintiffs’ position, the Ninth Circuit has

characterized that factor as “not . . . terribly significant

in the overall fair use balancing.” Mattel, 353 F.3d at

803 (9th Cir. 2003). The fair use doctrine exists to

promote criticism, teaching, scholarship, and research.

See 17 U.S.C. § 107. It is undisputed that The Picasso

Project, unlike the Zervos Catalogue, is intended for a

market serving those interests. Moreover, the two

publications have distinctly separate markets and do

not compete. Accordingly, the court finds that the

Defendants’ use of the photographs falls within the fair

use exception.

Having identified a protection for Defendants’ use

of the photographs, the court continues the Viewfinder

framework by determining whether French laws

provide a comparable fair use protection. 489 F.3d at

481-82. It does not. Plaintiffs concede that the French

intellectual property regime makes no exception for the

fair use of copyright-protected works. Cross-Mot. (Dkt.

No. 63) at 21 (“French law does not provide a ‘fair use’

App. 84

defense . . . .”). Sirinelli opines the fair use doctrine is

“completely foreign to French law.” Mot. Sirinelli Decl.

¶ 53. Commentators have stated that “the French

Intellectual Property Code has no comparable fair use

provisions.” Lyombe Eko, Anup Kumar, Qingjiang Yao,

To Google or Not to Google: The Google Digital Books

Initiative and the Exceptionalist Intellectual Property

Law Regimes of the United States and France, 15 J.

Internet L. 12, 24 (2012) (footnote omitted). The court

holds that French law does not provide comparable

protections for the fair use of copyright protected

materials.

The court is mindful of concerns over comity

between the French and U.S. courts. However, the

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. The parties did not brief

the standards for deciding to decline to recognize a

foreign judgment under a § 1716(c) defense. The

Restatement, though, provides that if a court finds a

§ 1716(c) defense to be applicable, then “the court is not

required to deny recognition, but may do so in the

interests of justice.” Restatement (Third) of Foreign

Relations Law § 482 (1987) (emphasis added). The

court finds that it is in the interest of justice to deny

recognition of the 2012 Judgment.

App. 85

ii. Public Policy Favoring Promotion of

the Arts

Defendants also argue that the 2012 Judgment is

repugnant to public policy favoring the arts, as

expressed by the Intellectual Property Clause of the

U.S. Constitution. This argument is based on their

conclusion that the copied photographs are not

protectable under U.S. copyright law because they are

not original creative works. However, as they

acknowledge, the Cour d’Appell has already found that

the photographs are themselves original works of art.

Compl. Ex. 2 at 10; Mot. at 18. The court will not

reconsider the merits of the French judgments. Ohno,

723 F.3d at 997. Accordingly, Defendants, as a matter

of law, cannot pursue this argument.

f. Whether the judgment conflicts with

another final and conclusive judgment

(Cal. Civ. Proc. Code § 1716(c)(4))

Defendants next argue that the 2012 Judgment

conflicts with the 2013 Judgment from the Second

Copyright Proceeding. Their theory is that there is a

conflict between the 2013 Judgment, wherein the

French court in the Second Copyright Proceeding found

that Plaintiffs lacked standing to sue for copyright

infringement, and the 2012 Judgment, in which the

JEX allowed Plaintiffs to liquidate the astreinte. This

argument fails though because it conflates the

copyrights in the photographs of the Zervos Catalogue

with the right to liquidate the astreinte. See supra

§ III.B. Whether the astreinte transferred away from

Plaintiffs with the copyrights is an unresolved factual

question. But even if it did, the 2012 Judgment and

App. 86

2013 Judgment would still arise from separate subject

matters, so the two judgments are not in conflict. The

court grants partial summary judgment in favor of

Plaintiffs on this defense.

g. Whether the judgment was rendered in

circumstances that raise substantial

doubt about the integrity of the

rendering court with respect to the

judgment (Cal. Civ. Proc. Code

§ 1716(c)(7))

Defendants ask the court to decline to recognize the

2012 Judgment because the circumstances surrounding

the 2012 Judgment raise substantial doubts as to the

integrity of the JEX. A federal bankruptcy court that

considered the comparable provision of the Texas

Recognition Act found that it “requires a showing of

corruption in the particular case that had an impact on

the judgment that was rendered.” In re Carmona, 580

B.R. 690, 710 (Bankr. S.D. Tex. 2018) (quoting Savage

v. Zelent, 777 S.E.2d 801, 808 (2015)). Mere “doubt

about the fairness of a case” will not suffice. Id.

Defendants argue that (1) The JEX did not explicate

its assertion of personal jurisdiction over Defendants,

and it did not require any demonstration by Plaintiffs

of efforts to locate and serve Defendants before

declaring them in default, (2) it not comply with its

own law regarding default judgments over foreign

defendants who have not received notice of the

proceedings by waiting the requisite six months after

the first mailing of the initiating documents before

declaring a foreign defendant in default and ruling on

the merits, (3) the euro 2 million award is arbitrary,

App. 87

(4) the wrong defendants were sued, and (5) the JEX

allowed Plaintiffs to proceed despite not having

standing. These arguments go to whether the JEX’s

ruling was correct on the merits; they do not support a

finding that the JEX was corrupt. “[T]his Court will not

attempt to insert itself into the shoes of the [French]

court and usurp its decision-making.” Id. at 711.

Because Defendants have presented no evidence that

the JEX was corrupt, the court grants partial summary

judgment in favor of Plaintiffs on this defense.

h. Whether the specific proceeding in the

foreign court leading to the judgment

was not compatible with the

requirements of due process of law (Cal.

Civ. Proc. Code § 1716(c)(8))

Defendants’ final defense is the Astreinte

Proceeding was not compatible with due process of law.

This grounds for nonrecognition is “reserved for

challenges as to the integrity or fundamental fairness

with regard to the particular proceeding leading to the

foreign country judgment.” Alfa-Bank, 21 Cal. App. 5th

at 215 (citation and quotations omitted). “[F]oreign

courts are not required to adopt every jot and tittle of

American due process.” Id. (citation and quotation

omitted). France “is not bound by our notions of due

process, and we do not insist on the additional niceties

of domestic jurisprudence in deciding whether to

enforce a [French] judgment.” Id. at 215-16. (citation

and quotations omitted). The court’s task is to “decide

whether the foreign procedures [were] fundamentally

fair and d[id] not offend basic fairness.” Id. at 216

(citations and quotations omitted).

App. 88

Defendants raise several points showing the

Astreinte Proceeding was not compatible with due

process: (a) they had insufficient notice, (b) the 2012

Judgment issued against the wrong parties,

(c) Plaintiffs misrepresented that they still owned the

rights to the astreinte to the JEX, and (d) the award

was arbitrary. California courts have recognized that

adequate notice is a requirement for due process. See,

e.g., Alfa-Bank, 21 Cal. App. 5th at 216. The court has

found that whether Defendants had sufficient notice to

defend the action is a triable question, so the court will

not grant partial summary judgment in favor of

Plaintiffs on this defense. However, whether all of

Defendants’ arguments, taken together, show that the

Astreinte Proceeding was not compatible with due

process is a question of material facts.

IV.

Conclusion

For the reasons discussed above, the court orders as

follows: Partial summary judgment is granted in favor

of Plaintiffs on the following defenses (i) that the JEX

did not have personal jurisdiction over Defendants

under § 1716(b)(2), (ii) that the 2012 Judgment

conflicts with the 2013 Judgment under § 1716(c)(4),

and (iii) that there are concerns about the integrity of

the JEX under § 1716(c)(7). The court grants

Defendants’ motion because the 2012 Judgment is

repugnant to U.S. public policy under § 1716(c)(3). The

court will not recognize the 2012 Judgment.

IT IS SO ORDERED.

Dated: September 12, 2019

App. 89

/s/ Edward J. Davila

EDWARD J. DAVILA

United States District Judge

App. 90

APPENDIX C

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

Case No. 5:13-cv-05957-EJD

[Filed: 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,

)

)

v.

)

)

Alan Wofsy, an individual; Alan Wofsy &

)

Associates; Does 1 through 100, inclusive,

)

)

Defendants.

)

__________________________________________)

JUDGMENT

Re: Dkt. No. 61

On September 12, 2019, the court granted

Defendants’ motion for summary judgment. Pursuant

to Federal Rule of Civil Procedure 58, the Court hereby

ENTERS judgment in favor of Defendants and against

App. 91

Plaintiffs. The Clerk of Court shall close the file in this

matter.

IT IS SO ORDERED.

Dated: September 12, 2019

/s/ Edward J. Davila

EDWARD J. DAVILA

United States District Judge

App. 92

APPENDIX D

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Nos. 19-16913, 19-17024

D.C. No. 5:13-cv-05957-EJD

Northern District of California, San Jose

[Filed: September 6, 2022]

_____________________________________________

VINCENT SICRE DE FONTBRUNE, in

)

their capacity as the personal representatives )

of the Estate of YVES SICRE

)

DE FONTBRUNE; et al.,

)

)

Plaintiffs-Appellants,

)

)

v.

)

)

ALAN WOFSY; ALAN WOFSY &

)

ASSOCIATES,

)

)

Defendants-Appellees.

)

_____________________________________________)

ORDER

App. 93

Before: HURWITZ and VANDYKE, Circuit Judges, and

ERICKSEN,* District Judge.

The panel unanimously voted to deny the petitions

for panel rehearing. Judges Hurwitz and VanDyke

voted to deny the petitions for rehearing en banc, and

Judge Ericksen so recommended. The petitions for

rehearing en banc were circulated to the judges of the

Court, and no judge requested a vote for en banc

consideration. Fed. R. App. P. 35.

The petitions for panel rehearing and for rehearing

en banc, Dkt. No. 83 (19-16913) and Dkt. No. 81 (1917024), are DENIED.

*

The Honorable Joan N. Ericksen, United States District Judge for

the District of Minnesota, sitting by designation.