Zervos v Picasso, or copyright v droit d'auteur

Whilst most readers are likely familiar with the work of Pablo Picasso, the same might not be true for the work of someone who closely worked with and catalogued Picasso's impressive wealth of artworks. 

Zervos was a Greek-French art historian, critic, collector and publisher who founded the magazine Cahiers d'art in Paris and published several books such as The Art of Crete, The Art of the Cyclades, L'art de l'époque du Renne en France. In the early 1930s, he began to catalog Picasso’s work, publishing what is, among experts, generally known as “Zervos”, a 33-volume publication including more than 16,000 Picasso’s paintings and drawings. The last volume of the catalogue was published in 1978, at a time when both Picasso and Zervos had died. 

Together with The Picasso Project, the Zervos has been the subject of a long legal battle which ended last week with a decision of the the United States District Court Northern District of California San Jose Division.

Background

In 1979, Yves Sicre de Fontbrune, the original plaintiff in the case, acquired Cahiers d’art and the rights to the Zervos.

In 1995 Wofsy published The Picasso Project.

In 1996, after copies of two volumes of The Picasso Project were seized in France, Sicre de Fontbrune sued Wofsy for copyright infringement. The Cour d’Appel de Paris found the defendant liable and awarded relief to the plaintiffs prohibiting the defendants from using the photographs subject to an astreinte (a French injunction tool). 

Ten years later, copies of The Picasso Project were found in a French bookstore. In 2011 the plaintiff began legal proceedings in France to enforce the astreinte and in 2012 a French court granted judgment in favor of plaintiff and EUR 2 million in damages (the 2012 Judgment).

The following year Sicre de Fontbrune brought suit against Wofsy as individual and Wofsy & associates  before the court, seeking recognition of the 2012 Judgment under the California’s Uniform Foreign Country Money Judgments Recognition Act.

Analysis

Under the Recognition Act the party seeking to enforce the foreign judgment must establish that the judgment: 1) awards a sum of money; 2) is final, conclusive and enforceable under the law of the country where is rendered; and 3) is not a judgment for taxes, fine or a judgment arising from domestic relations.

The Ninth circuit has already held that the astreinte doesn't qualify as a fine or penalty. Plaintiffs argued that the 2012 judgement meets the other criteria and the defendant didn't dispute this point, consequently it is the party resisting recognition, the defendant, that bears the burden of establishing. The defendant argued, inter alia, that the 2012 Judgment would be contrary to U.S. policy favoring free speech and promotions of the arts. 

On this specific point, the court first recalled that the California courts have set a high bar for repugnancy and underlined that, according to the Ohno’s decision, which dealt with Japanese tort law, repugnancy does not mean that the foreign judgment is contrary to the U.S. public policy, but rather that it is so offensive to the public policy to be prejudicial to recognized standards of morality and to the general interests of the citizens. 

The court distinguished the Ohno’s decision from the Viewfinder’s decision which found a French copyright judgment to be repugnant to public policy. And having distinguished the two decisions the court found that they were not in conflict. 

Defendants then argued that the 2012 Judgment would be repugnant to public policy as it would conflict with the fair use doctrine, which is rooted within the First Amendment and the policy favouring the promotion of the arts as articulated in the Intellectual Property Clause of the US Constitution. According to Viewfinder to apply the Recognition Art in these circumstances, a court should: 

• first identify the constitutional protections for the unauthorized use of intellectual property and then;
• determine whether French intellectual property laws provide comparable protections. 

For what concerns the constitutional protections for the unauthorized use of intellectual property, as readers might remember, it is well accepted that the fair use doctrine implicates the First Amendment and according to Viewfinder;

Because the fair use doctrine balances the competing interests of copyright and the First Amendment some analysis of that doctrine is generally needed before a court can conclude that a foreign copyright judgement is repugnant to public policy. 

Consequently a court must determine whether the use of the photographs constitutes fair use. The Copyright Act allows for the fair use of copyright-protected works for criticism, commentary, news reporting, scholarship, research and other such purposes. In assessing whether conduct constitutes fair use, a court should consider four factors: 

1. the purpose and character of the use, including whether such use is for 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;
4. the effect of the use upon the potential market for the value of the copyrighted work. 

Concerning the first factor, the Defendants argue that The Picasso Project included 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 and that it is intended for academic and art collectors. The court accepted this and recalled that the simple fact that an unauthorized use has commercial purpose does not weight against a finding of fair use.

Regarding the second factor, the Defendants argued that the photographs were unoriginal and documentary in nature. The court note however that the photography had already been found to be creative works in the first French judgment. 

Concerning the third factor, the court underlined that 

this factor has both quantitative and 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 copyrighted work 

Then the court noted that the Zervos contains 16.000 photographs of Picasso’s work while The Picasso Project only 1.492. According to the court this factor weighed in favour of a finding of fair use. 

Concerning the fourth factor, the Zervos and The Picasso Project do not compete, because of their different markets and significantly dissimilar prices. The Zervos is only available on the second-hand market and a 2013 reprint sells at $20.000 while The Picasso Project can be purchased by individual volumes for about $150,00. Consequently also this factor weighed in favor of a finding of fair use. 

For what concerns the presence of a comparable protection under the French Intellectual Property Code, the French system has not comparable fair use provisions. Consequently the court found that the Defendant’s use of Plaintiff’s photographs qualified as fair use. The 2012 Judgment was thus considered to be at odds to the U.S. public policy promoting criticism, teaching, scholarship and research. As such, the court refused to recognize the 2012 Judgment.

Comment

Copyright and the droit d'auteur have traditionally been considered distinct if not antithetical, for many different reasons: their justifications for protection, the importance attributed to the author, the recognition of moral rights and the balance of the author's rights with the public interest.

Some scholars have pointed out that these differences have been, in some ways, exaggerated and do not accurately describe the two copyright systems.

This decision, finding French copyright law repugnant to U.S. policy, seems to confirm that the differences between the two systems do actually subsist.

Comments and observations from French and U.S. copyright enthusiasts readers are welcome!