French copyright judgment found to be repugnant because fair use defense was unavailable.

French copyright judgment found to be repugnant because fair use defense was unavailable.

Copyright is a set of exclusive rights granted to the creator of an new work of expression.  Copyright protects works of expression like paintings, books, music, and photographs.   Copyright allows the creator of a new work of expression to control the sale and distribution of the work of art.  If someone sells or copies a copyrighted work of art without the creator’s permission this is known as copyright infringement.  A creator can file a lawsuit to stop copyright infringement.  But, the rights granted by copyright law in the United States have some limitations.  One of the limitations of copyright law in the United States is known as fair use.  A defendant in a copyright infringement lawsuit can claim that its use of a copyrighted work is protected by fair use and not be held liable for copyright infringement.

When a court is presented with a fair use defense to a copyright infringement claim, the court analyzes four factors.  Those four factors are: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion taken, and (4) the effect of the use upon the potential market.

The fair use factors are intended to be an objective test, but courts are given broad discretion to interpret the factors.  It is sometimes difficult to predict how a court will rule on a fair use defense unless a case with an identical fact pattern has already been ruled on.  Therefore it is helpful to study case law to predict how courts will apply the fair use factors to the facts in future cases.

De Fontbrune v. Wofsy, 13-cv-05957 (N.D.CA 2019) is an interesting case because it involves a judgment from a court in France, a country that does not recognize fair use as a strong defense to copyright infringement.  Plaintiffs own the rights to the “Zervos Catalogue”.  The catalogue comprises 16,000 photographs of Pablo Picasso’s work, taken by Picasso’s friend in 1932. In 1995, the defendants began publishing The Picasso Project.  The Picasso Project is a series of books which include reproductions of Picasso’s work.  The Picasso Project includes 1,492 images from the Zervos Catalogue. In 2001, Plaintiffs obtained a judgment against Defendants in France that would subject Defendants to damages for further acts of copyright infringement. After discovering copies of The Picasso Project in a French bookstore in 2012, the Plaintiffs were awarded a judgment of 2 million Euros. Plaintiffs filed suit in the United States to enforce the French judgment.  The defendant argued that the French judgement should not be honored in the United States because documenting artwork in a reference book constitutes a fair use.

In its decision the district court first held that the French judgment would be repugnant to U.S. public policy, and unenforceable, if Defendant’s use of the photographs was a fair use. The court then reviewed each of the fair use factors in turn.  The court found the first factor, the purpose and character of the use, strongly favored fair use despite the fact The Picasso Project was a commercial venture, because the intended use by “libraries, academic institutions, art collectors, and auction houses” are examples of fair use noted in 17 U.S.C. section 107. On the second factor, the nature of the copyrighted work, the court observed that while photographs in general are creative works, the photographs in the Zervos Catalogue were documentary in nature and did not “showcase the original artistic expression of the photographer.”  The third factor, the amount and substantiality of the work used, weighed in favor of fair use because Defendants copied less than ten percent of the Zervos catalogue.  With respect to the fourth factor, the court found in favor of fair use because the works did not compete with each other.  This finding was based on the different markets and wildly different price points. Plaintiffs presented no evidence that the market for or price of the Zervos Catalogue had decreased when The Picasso Project volumes became available. Weighing the factors together, the court concluded that only the second factor favored Plaintiffs while the other factors favored or strongly favored fair use, and accordingly that Defendants’ use fell within the fair use exception. Because the court found the French judgment failed to provide a fair use defense to promote scholarship and research, the court declined to recognize the French copyright judgment.

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