Vincent Sicre de Fontbrune v. Wofsy

• Decision Date: 26 September 2016
• Docket Number: No. 14–15790,14–15790
• Citation: 120 U.S.P.Q.2d 1230,120 U.S.P.Q.2d 1650,838 F.3d 992
• Court: U.S. Court of Appeals — Ninth Circuit
• 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–Appellants, v. Alan Wofsy; Alan Wofsy & Associates, Defendants–Appellees.

838 F.3d 992

120 U.S.P.Q.2d 1230

120 U.S.P.Q.2d 1650

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–Appellants,

v.Alan Wofsy; Alan Wofsy & Associates, Defendants–Appellees.

No. 14–15790

United States Court of Appeals, Ninth Circuit.

Argued and Submitted May 9, 2016, San Francisco, California

Filed September 26, 2016

As Amended on Denial of Rehearing and Rehearing En Banc November 14, 2016

Richard Mooney (argued), Rimon PC, San Francisco, California, for Plaintiffs–Appellants.

Neil A.F. Popovic (argued) and Shanna M. Pearce, Sheppard Mullin Richter & Hampton LLP, San Francisco, California, for Defendants–Appellees.

Before: M. Margaret McKeown and Michelle T. Friedland, Circuit Judges and Richard F. Boulware,^* District Judge.

OPINION

McKEOWN

, Circuit Judge:

Justice Holmes once observed that foreign legal systems can appear to the uninitiated “like a wall of stone,” impenetrable and unyielding. Diaz v. Gonzale z , 261 U.S. 102, 106, 43 S.Ct. 286, 67 L.Ed. 550 (1923)

(Holmes, J.). For over a century, the federal courts attempted to scale this stone wall by treating questions of foreign law as questions of fact to be pleaded and proved. But over the years, this method proved unsatisfactory, obscuring rather than illuminating the content and nuance of foreign laws. Finally, in 1966, following a proliferation of international litigation, Federal Rule of Civil Procedure 44.1 was adopted to furnish federal courts with a uniform procedure for raising and determining an issue concerning foreign law. Fed. R. Civ. P. 44.1 advisory committee's note. Now, according to the Rule, a “court's determination [of foreign law] must be treated as a ruling on a question of law.” Fed. R. Civ. P. 44.1.

Despite the clear mandate of the federal rule, this appeal illustrates the difficulty that can arise in determining foreign law and the confusion surrounding the role of foreign law in domestic proceedings. The dispute stems from the transcontinental attempts of Yves Sicre de Fontbrune to protect his copyright in photographs of Pablo Picasso's artworks after an American art editor, Alan Wofsy and Alan Wofsy and Associates (collectively, “Wofsy”), reproduced the photographic images. As part of his efforts, de Fontbrune received a judgment in French court of two million euros in “astreinte ” against Wofsy for copyright violations. De Fontbrune sought to enforce this astreinte in federal court in California under the California Uniform Foreign–Court Monetary Judgment Recognition Act (“Uniform Recognition Act” or “the Act”), Cal. Civ. Proc. Code §§ 1713 et seq.

The Picasso photographs—intended to convey the quintessence of Picasso's artworks—now require us to delve into the essence of astreinte , a French judicial device. The enforceability of the French award turns on whether, in this case, the astreinte functions as a fine or penalty—which the Uniform Recognition Act does not recognize—or as a grant of monetary recovery—which is statutorily cognizable. The answer to this question is not a simple matter of translation, but, as we explain, requires a broader look at French law to understand the nature of the astreinte remedy in this case, in conjunction with an analysis of California law regarding the enforcement of foreign judgments.

In granting Wofsy's Rule 12(b)(6)

motion to dismiss de Fontbrune's claim, the district court considered the parties' expert declarations on the nature of astreinte . We disagree with de Fontbrune's proposition that consideration of such materials outside the pleadings was error. Rather, under Rule 44.1's broad mandate, foreign legal materials—including expert declarations on foreign law—can be considered in ruling on a motion to dismiss where foreign law provides the basis for the claim. We reverse and remand, however, because, the district court erred in concluding that the astreinte awarded by the French court in this case functioned as a “fine or other penalty” for purposes of the Uniform Recognition Act.

BACKGROUND

Between 1932 and 1970, Christian Zervos created a “catalogue raisonn锹 featuring photographs of Picasso's artistic corpus. The “Zervos Catalog,” which contained almost 16,000 photographs of Picasso's art, was ultimately published by Cahiers d'Art and has become a universally recognized reference work. De Fontbrune purchased Cahiers d'Art's publisher's stock in 1979, thereby acquiring intellectual property rights in the Zervos Catalog under French law.

Almost two decades later, Wofsy reproduced several photographs from the Zervos Catalog in two volumes on Picasso, which he offered for sale at a Parisian book fair. De Fontbrune brought suit in French court claiming that these reproductions violated his copyright in the Zervos Catalog.

After a French trial court rejected his claims, de Fontbrune appealed to the Paris Court of Appeal. In a 2001 decision (the “2001 Judgment”), the Court of Appeal concluded that Wofsy was “guilty of infringement of copyright and ha[d] infringed on [de Fontbrune's] rights.” The court accordingly prohibited Wofsy “from the use in any manner whatsoever of the [Zervos] photographs under penalty of ... [astreinte ] of 10,000 francs by proven infraction,” and required Wofsy “to pay Mr. de Fontbrune 800,000 francs in pecuniary damages in redress of his injury resulting from the infringement of copyright.”²

Ten years later, de Fontbrune filed a claim with an enforcement judge at the Tribunal de Grande Instance de Paris (High Court of Paris) for “[liquidation d'astreinte ] made against [Wofsy] by judgment of the Paris Court of Appeal [ ].” De Fontbrune sought “a judgment ordering [Wofsy] to pay him the sum of 2,000,000 euros from the amount of the [liquidation d'astreinte ].”

In a 2012 decision (the “2012 Judgment”), the enforcement judge found that Wofsy had violated the 2001 Judgment by reproducing copyrighted images from the Zervos Catalog. The judge accordingly “[a]ward[ed] the [astreinte ] prounounced by the Paris Court of Appeal[ ] ... in the amount of 2,000,000 euros,” as well as 1,000 euros in costs.

De Fontbrune then initiated proceedings in California state court seeking recognition of the 2012 Judgment under the Uniform Recognition Act. Wofsy removed the action to federal court on diversity grounds, and filed a motion to dismiss under Rule 12(b)(6)

.

Wofsy's motion contested the characterization of astreinte as “damages” in the English versions of the 2001 and 2012 Judgments attached to de Fontbrune's complaint. Wofsy argued that astreinte functions as a penalty—not as an award of damages—and is thus not cognizable under the Uniform Recognition Act. In support of this assertion, Wofsy supplied a declaration by a French lawyer, Vonnick le Guillou. De Fontbrune countered with a declaration from his own expert on French law, Christopher Mesnooh, explaining that, in the French system, astreinte can function as an award of damages. De Fontbrune also argued that the district court should strike Guillou's declaration as evidence outside the pleadings impermissibly filed in support of a motion to dismiss.

Faced with conflicting information about the function of astreinte in French law, the district court initially denied Wofsy's motion in part, concluding that determining whether astreinte is a “fine, a penalty, damages, or something else ... require[d] an analysis of French law” that would be “premature at [the] pleadings stage.” The district court also declined to consider Guillou's declaration under Rule 44.1

, on the grounds that the Rule did not “expressly allow the Court to consider evidence outside the pleadings on a Rule 12(b)(6) motion,” and that a party relying on foreign law bears the burden of proving the content of that law.

After Wofsy filed a motion for reconsideration, together with a reply declaration from Guillou, the district court reversed course. This time around, the district court concluded that “its previous finding concerning judicial notice of foreign law was in error” and vacated the order denying Wofsy's motion to dismiss. In a complete volte face, the district court reasoned that Rule 44.1

permits judicial consideration of any relevant material or source in determining foreign law, irrespective of its admissibility as evidence. Because “determinations of foreign law are issues of law, not fact,” the court also concluded that it could take judicial notice of the declarations of the French legal experts, “insofar as they relate to French law.”

Taking these declarations into consideration, the court determined that the primary purpose of the astreinte was not to compensate de Fontbrune for the damages he suffered, but to compel Wofsy's compliance with the 2001 Judgment. The court concluded that the astreinte thus functioned as a penalty and so was not cognizable under the Uniform Recognition Act. De Fontbrune now appeals from the district court's dismissal of the action with prejudice.³

ANALYSIS

The district court's vacillation illustrates the lingering uncertainty surrounding the role of foreign law in domestic proceedings, even after the advent of Rule 44.1

. We take this opportunity to address a question that no circuit has yet answered directly, perhaps because the answer is implicit in the rule: whether Rule 44.1 authorizes district courts to consider foreign legal materials outside the pleadings in ruling on a motion to dismiss. Our answer is yes, because Rule 44.1 treats foreign law determinations as questions of law, not fact.

I. Foreign Law under Rule 44.1

Rule 44.1

provides:

A party who intends to raise an issue about a foreign country's law must give notice by a pleading or other writing. 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's determination

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