409 F.Supp.3d 823
N.D. Cal.2019Background:
- Plaintiffs (successors of Yves Sicre de Fontbrune) own rights to the Zervos catalogue; in 2001 the Cour d’Appel de Paris found Wofsy liable for copyright infringement and imposed an astreinte (per-violation penalty) tied to the judgment.
- Plaintiffs transferred copyrights in 2001 to Editions Cahiers d’Art; it is disputed whether the right to liquidate the astreinte transferred with that sale.
- In 2011 Plaintiffs initiated an enforcement (astreinte) proceeding before the JEX; Defendants were not served and did not appear; JEX entered a €2,000,000 judgment in January 2012 (the 2012 Judgment).
- Plaintiffs then brought suit in California to recognize the 2012 Judgment under California’s Recognition Act; the Ninth Circuit previously held the astreinte is not a fine or penalty and remanded.
- On summary judgment, the district court (1) held Defendants waived a personal-jurisdiction defense by filing the later French Review Proceeding, (2) found genuine fact disputes as to ownership of the astreinte, notice, extrinsic fraud, and due process, and (3) concluded the 2012 Judgment is repugnant to U.S. public policy because Defendants’ use qualifies as fair use under U.S. law while French law has no comparable fair-use defense, so the court refused recognition.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (§1716(b)(2)) | Defendants voluntarily appeared in French proceedings only earlier; thus JEX had jurisdiction. | JEX lacked jurisdiction; Defendants were not properly served and lacked contacts. | Court: Defendants waived PJ defense by initiating the Review Proceeding challenging the 2012 Judgment; partial SJ for Plaintiffs. |
| Subject-matter jurisdiction / standing (ownership of astreinte) (§1716(b)(3)) | Plaintiffs had the right to liquidate the astreinte; JEX had jurisdiction. | Plaintiffs transferred copyrights in 2001 and thereby the astreinte; Plaintiffs lacked standing. | Court: Whether the astreinte transferred is a genuine factual dispute; cannot decide on SJ. |
| Insufficient notice (§1716(c)(1)) | Service attempts were reasonable; mailing in Nov. 2011 notified Defendants of pending matter. | Defendants received no timely notice and could not defend. | Court: Notice adequacy is a factual question; SJ denied. |
| Fraud (extrinsic) (§1716(c)(2)) | No fraud; proceedings were proper. | Plaintiffs misrepresented ownership of rights to the JEX, causing a default judgment. | Court: Possible extrinsic fraud tied to jurisdiction; factual disputes preclude SJ. |
| Public policy / repugnancy (fair use) (§1716(c)(3)) | French judgment lawful; no U.S. repugnancy. | U.S. fair-use doctrine protects Defendants’ reference/academic use; French law has no comparable fair-use defense. | Court: Defendants’ use is fair use under U.S. law and French law lacks comparable protection; 2012 Judgment is repugnant and recognition is denied (Defendants’ MSJ granted). |
| Conflict with another French judgment (§1716(c)(4)) | No conflict; judgments address distinct matters. | 2013 French dismissal found Plaintiffs lacked standing to sue for infringement, conflicting with 2012 liquidation. | Court: No direct conflict because subject matters differ; partial SJ for Plaintiffs. |
| Integrity of rendering court (§1716(c)(7)) | Proceedings were regular; no corruption. | Circumstances (default, timing, large award) raise doubt about JEX integrity. | Court: No evidence of corruption; partial SJ for Plaintiffs. |
| Due process compatibility (§1716(c)(8)) | JEX procedures were fundamentally fair. | Combined defects (notice, identity, misrepresentations, award) violated due process. | Court: Some due-process issues (notice, possible fraud) are factual; SJ denied on overall due-process defense. |
Key Cases Cited
- Ohno v. Yasuma, 723 F.3d 984 (9th Cir. 2013) (Recognition Act framework; limited inquiry into merits and high bar for nonrecognition)
- S.A.R.L. Louis Feraud Int’l v. Viewfinder, Inc., 489 F.3d 474 (2d Cir. 2007) (framework for assessing repugnancy of foreign copyright judgments vis-à-vis U.S. fair use)
- de Fontbrune v. Wofsy, 838 F.3d 992 (9th Cir. 2016) (prior appellate ruling that astreinte is not a fine or other penalty)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (standing requires a legally protected interest likely redressable by relief)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (commercial character not dispositive in fair-use analysis)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (importance of market harm factor in fair use)
- Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003) (fair-use balancing guidance)
- Alfa‑Bank v. Yakovlev, 21 Cal. App. 5th 189 (Ct. App. 2018) (California appellate treatment of Recognition Act principles)