de Fontbrune v. Wofsy

• Decision Date: 12 September 2019
• Docket Number: Case No. 5:13-cv-05957-EJD
• Citation: 409 F.Supp.3d 823
• Court: U.S. District Court — Northern District of California
• Parties: 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.

409 F.Supp.3d 823

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.

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

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

Signed September 12, 2019

Richard James Mooney, RJM Litigation Group, San Francisco, CA, for Plaintiffs.

Neil A. Friedman Popovic, Sheppard Mullin Richter & Hampton LLP, San Francisco, CA, Shanna Michelle Pearce, Sheppard Mullin Richter & Hampton LLP, San Diego, CA, for 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

EDWARD J. DAVILA, United States District Judge This case arises from French litigation over copyrights of photographs of the works of Pablo Picasso. Yves Sicre de Fontbrune first sued Alan Wofsy and Alan Wofsy & Associates ("Defendants") in France in the late 1990s for publishing volumes of a book, The Picasso Project , that reproduced copyright-protected photographs of Picasso’s works. In 2001, de Fontbrune prevailed on the appeal of that suit, and the French court issued a French legal device, called an astreinte , that would subject Defendants to damages for any further acts of infringement. About ten years later, de Fontbrune discovered copies of The Picasso Project in a French bookstore and initiated legal proceedings in France to liquidate the astreinte. Defendants did not appear in the proceeding and contend that they were not properly served. In early 2012, the enforcement division of the French trial court, the Juge de l'Exécution près le Tribunal de Grand Instance de Paris (the "JEX") granted an award of €2 million for de Fontbrune (the "2012 Judgment").

The next year, de Fontbrune brought suit against Defendants in the Superior Court of Alameda County seeking recognition of the 2012 Judgment under California’s Uniform Foreign Country Money Judgments Recognition Act (the "Recognition Act"). Defendants removed the case to federal court. The court granted Defendants' initial motion to dismiss, finding that the astreinte was a "fine or other penalty" under the statute and therefore not appropriate for recognition. Dkt. No. 27. De Fontbrune appealed the order, and the Ninth Circuit, finding that the astreinte was not a fine or other penalty, vacated the dismissal order, reversed, and remanded. Dkt. No. 33 ( de Fontbrune v. Wofsy , 838 F.3d 992 (9th Cir. 2016), as amended on denial of reh'g and reh'g en banc (Nov. 14, 2016)). While on appeal, de Fontbrune died. His wife and children filed a motion to continue as his successors in interest, which the Ninth Circuit granted. Id. at 9 n.3.¹ On remand, the case was reassigned to the undersigned. The parties have both moved for summary judgment. For the reasons set forth below, the court grants Defendants' motion, and grants in part and denies in part Plaintiffs' motion as to certain defenses raised by Defendants.

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

I. Factual Background

Beginning in 1932, Picasso’s friend Christian Zervos and his company Cahiers d'Art compiled and published a series of photographs of Picasso’s art in the "Zervos Catalogue." Compl. (Dkt. No. 1-1) Ex. 2 at 3. The Zervos Catalogue comprises some 16,000 photographs of Picasso’s work. Id. Plaintiffs acquired Cahiers d'Art and the rights to the Zervos Catalogue in 1979. Id. ; Popovic Decl. Ex. 7. In 1995, Wofsy began to publish a series of works reproducing Picasso’s art called The Picasso Project. Mot. Wofsy Decl. (Dkt. No. 61-3) ¶¶ 6-8. In 1996, after copies of two volumes of The Picasso Project were seized in France, Plaintiffs brought suit against Defendants for copyright infringement (the "First Copyright Proceeding"). Id. ¶¶ 9-10; Dkt. 70-2² 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 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. Popovic Decl. Ex. 3 at 3-5.⁵ On July 22, 2011, Plaintiffs began legal proceedings in France to, among other things, enforce the astreinte against Defendants (the "Astreinte Proceeding"). See generally id. at 1-5. These proceedings took place before the JEX. Plaintiffs asserted that, in violation of the 2001 Judgment, Defendants had continued to publish The Picasso Project. Id. at 3. The summons and complaint for the Astreinte Proceeding stated that the purchased copy contained many hundreds of Plaintiffs' photographs, and later that the "rights to [the photographs] are the property of [Plaintiffs]." Id. at 3-4. The summons and complaint also stated that the proceedings were "for the settlement of the non-compliance penalty" of the 2001 Judgment. Id. at 4. There is no evidence that Plaintiffs ever informed the JEX that they no longer owned the copyrights underlying the astreinte. Dkt. 70-1 at 15 (Fact 30).

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

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

On February 25, 2014—after the period for a timely appeal of the 2012 Judgment and after this litigation began—Defendants filed a new action in French court seeking to vacate the 2012 Judgment (the "Review Proceeding"). Dkt. No. 70-2 at 4 (Fact 19). In this case, Defendants challenged the 2012 Judgment arguing that Plaintiffs' 2001 transfer of intellectual property rights included the transfer of their right to liquidate the astreinte. Second Reply Serre Decl. (Dkt. No. 71-4) Ex. A at 4.⁶ The trial court dismissed the Review Proceeding on procedural grounds. Cross-Mot. Serre Decl. ¶ 12; see Dkt. No. 70-2 at 4 (Fact 20). Defendants appealed. Dkt. No. 70-2 at 4 (Fact 21). In April 2018, the French appellate court affirmed the dismissal (the "2018 Judgment"). Id. (Fact 22); Second Reply Serre Decl. Ex. A at 6-7.

II. Summary Judgment Standard

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