The peoples of France and the United States tend to view things very differently — Jerry Lewis, berets and processed cheese food, to name just a few. Law sometimes transcends this divide – for example, French and American intellectual property lawyers can communicate based on shared fundamental understandings about copyright, trademarks and patents, even as our cultural differences persist. In other instances, however, a shared understanding of legal concepts by lawyers of different jurisdictions is much more difficult. The Ninth Circuit’s recent decision regarding a catalog of the works of Pablo Picasso, De Fontbrune v. Wofsy, is a good illustration of this lack of shared understanding, and particularly how U.S. lawyers and judges can misapprehend the legal traditions of other jurisdictions and thereby impair the legal rights afforded by those traditions when enforcing them in U.S. courts.
The Picasso Catalogue
The case of the Picasso Catalogue starts with Christian Zervos, a Greek-born art historian, critic and collector who spent most of his life in Paris, where he founded the Cahiers d’Art review and a publishing house. Zervos met Pablo Picasso there, starting a life-long friendship. Picasso was eager to produce a catalogue of his work to demonstrate that he was a preeminent artist, and Zervos accomplished his task with assiduous devotion. Zervos’ catalogue raisonné comprises about 16,000 copyrighted black and white photographs of Picasso’s paintings and drawings. Today, this catalogue is still considered worldwide to be THE Picasso catalogue. The 33 original volumes are rarities that have been sold at auction for up to $200,000 USD. Zervos died in 1970, and in 1979 Yves Sicre de Fontbrune bought the Cahiers d’Art business, which included the copyright to the catalogue.
On the other side of the Atlantic, Alan Wofsy, an antiquarian book dealer from California, published his own Picasso catalogue using a number of the copyrighted Zervos photographs, and offered it for sale at a Paris fair. De Fontbrune sued Wofsy in France and, in 2001, the Paris Court of Appeal held that Wofsy had infringed de Fontbrune’s rights. The Paris Court of Appeal awarded de Fontbrune 800,000 Francs ($136,000 USD) in damages and issued an injunction prohibiting him from further use of the photographs. If Wofsy did not obey the injunction, the Court’s order required him to pay an astreinte (in English, literally, a “penalty”) of 10,000 Francs (about $1,700.00 USD) for each violation.
French Rights in a California Court
Several years later, de Fontbrune noticed that Wofsy had used the photographs again, and initiated a new action to get Wofsy to pay the astreinte set out in the 2001 judgment. He was successful and, in 2012, the Paris District Court awarded him 2,000,000 euros.
This is where the story gets interesting.
De Fontbrune sought payment of the 2 million euro astreinte in the Northern District of California. Wofsy argued that, under California’s Uniform Foreign-Court Monetary Judgment Recognition Act (UFMJRA), the astreinte was not a compensatory award for copyright infringement but rather a foreign “fine or other penalty” that could not be enforced in a U.S. court. As the Ninth Circuit later explained, the UFMJRA “reflects an ancient maxim of international law that the courts of no country execute the penal laws of another.” The District Court agreed with Wofsy, and concluded that the astreinte functioned as a “fine or other penalty” which it could not enforce.
Since “astreinte” translates directly in English as “penalty,” and the UFMJRA precludes enforcement of a “penalty,” it is not difficult to see why the District Court ruled as it did. What the District Court misunderstood was that the astreinte rendered in 2001 against Wofsy is typical of the type of compensatory award plaintiffs receive from French courts in intellectual property infringement cases. When French courts find that an IP right has been infringed, they commonly award compensatory damages for past injury and an injunction to prohibit future violations. The injunctions are coupled with an astreinte, which will apply if the defendant does not comply with the injunction. The amount of the astreinte varies: it is often lower than what the plaintiff has requested but significantly higher than the value of the infringing product, since it serves as an incentive for compliance with the injunction.
The Ninth Circuit Applies Java Oil
On September 16, 2016, the Ninth Circuit Court of Appeals reversed. The Ninth Circuit looked to Java Oil Ltd. v. Sullivan, 168 Cal. App. 4th 1178 (Cal. Ct. App. 2008), a state appellate court decision that set forth a test for determining applicability of California’s version of the UFMJRA. The Java Oil test looks to “a number of factors, including: (1) whether the purpose of the award is to compensate an individual or to ‘provide an example’ or punish ‘an offense against the public;’ (2) whether the award is payable to an individual or to the state or one of its organs; (3) whether the judgment arose in the context of a civil action or through the enforcement of penal laws; and (4) whether the award was a ‘mandatory fine, sanction, or multiplier.’”
Applying the Java Oil facts, the Ninth Circuit found that, as to the first factor, the French astreinte is similar to civil contempt: its purpose is not to punish a harm against the public but to vindicate de Fontbrune’s personal interest in having his copyright respected and to deter further infringement by Wofsy. The other Java Oil factors led to the same conclusion: the astreinte awarded was payable to the plaintiff; the proceedings were before a civil court; and the award was not a mandatory fine in the sense that the amount to be paid was freely determined by the French judge.
Yahoo! & Nazi Memorabilia
So far, so good. The Ninth Circuit held that the French judgment of infringement and the astreinte can be enforced in the U.S. However, the Ninth Circuit had one more tricky task, which was to explain why its decision in this case was the opposite of its 2005 opinion in Yahoo! Inc. v. La Ligue Contre le Racisme et L’Antisémitisme.
In the Yahoo! case, the advocacy group LICRA used a French criminal law, which forbid the public display of Nazi memorabilia, to convince the Paris District Court to order Yahoo! to block French users’ access to those items. The Paris District Court’s order was issued along with an astreinte in the event of non-compliance. The Ninth Circuit opinion in that case — which focuses mostly on procedural issues and the First Amendment — also stated in dicta that it was “exceedingly unlikely” that the astreinte, which the Ninth Circuit observed appeared to be penal in nature, would be enforceable under the UFMJRA.
The Ninth Circuit’s attempt to harmonize its decision in De Fontbrune with its prior dictum in Yahoo! is problematic because it glosses over a number of errors in the Yahoo! opinion.
First, the Yahoo! opinion relied too heavily on the literal definition of astreinte (“penalty”), thus elevating form over substance. The Ninth Circuit in De Fontbrune seemed to acknowledge the incongruity of, on the one hand endorsing Yahoo!’s translation-based analysis, and on the other engaging in a contextual analysis, by noting that “translation alone is insufficient to capture the ‘essential character and effect’ of a foreign judgment.”
Second, the Ninth Circuit in De Fontbrune distinguished Yahoo! on the grounds that it concerned a violation of the French Criminal Code, as opposed to a civil copyright case. This is technically accurate but, under French law, all criminal offenses are also civil torts and can serve as the basis for an action before a civil court. In theory, copyright infringement is also a criminal offense that can be tried before French criminal courts, but in practice such actions are rare. Criminal proceedings are generally limited to circumstances where a plaintiff seeks to “provide an example” and chill potential future infringers (e.g., in the case of certain luxury goods). A more compelling distinction between De Fontbrune and Yahoo! that the Ninth Circuit noted is that De Fontbrune concerns an individual property right while Yahoo! concerns a vindication of the public interest in not having Nazi memorabilia disseminated to the public.
Finally, the Yahoo! opinion stated that the “astreinte was payable to the government and not a private individual or group.” This was an error as well. The astreinte was requested by LICRA and would have been payable to LICRA, not to the government.
The Ninth Circuit attempted to reconcile De Fontbrune and Yahoo! by stating that there could not be a “blanket determination that the device (“astreinte”) is always punitive or compensatory. Rather, we must consider a particular astreinte in the context in which it was awarded.” To U.S. lawyers, this makes sense in concept, but the Ninth Circuit’s inconsistent analysis should give attorneys pause before handicapping the likelihood of success of a future attempt to enforce an astreinte in the U.S. As for French lawyers, it is difficult to see any difference in nature between the astreinte that was ordered in the Yahoo! case and the one which was ordered in De Fontbrune. Adding to this uncertainty with respect to the issue here is that enforcing money judgments typically is a creature of state law, and application from state to state is far from uniform. There are two different uniform acts for money judgment recognition (one framework created in 1962 and the other in 2005), and each uniform act has been adopted in a third of the states, with the remaining states following common law.
The Ninth Circuit’s handling of the French legal device of astreinte illustrates the divide that exists in the preconceptions of U.S. and Continental European attorneys. Judges all over the world feel uncomfortable when they have to deal with questions of foreign law due to their unfamiliarity with the substance and nuance of the legal systems of other countries. This is a case in point, demonstrating that there will always be an additional uncertainty in “legal translation” when a court attempts to account for the law of a foreign jurisdiction.