In the runup to the issuance of the U.S. Supreme Court opinion in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith,[1] which is due sometime in the spring 2023, which will deal with the major issue of transformative use as part of first factor in the four-factor test for fair use under U.S. copyright law, this blog will discuss several other recently decided circuit court cases involving fair use.
Facts
The first case is De Fontbrune v. Wofsy,[2] decided by the Court of Appeals for the Ninth Circuit, in an opinion issued July 13, 2022. This case is convoluted in part because of the foreign domiciles of the parties – De Fontbrune in France, and Alan Wofsy in the US, as well as the multi-litigations in both France and both California state and federal courts. The Ninth Circuit decision spawns from these basic facts. In 1932, French photographer Christian Zervos prepared a catalogue raisonné – a complete work on Pablo Picasso’s works – which was published as Cahiers d’Art. In 1979, De Fontbrune acquired the rights to the Cahiers d’Art, including its copyright estate. In 1991, Wofsy acquired a license from the Estate of Pablo Picasso to publish a book of Picasso’s work, entitled The Picasso Project. Several pieces from Zervos’s catalogue raisonné were included in The Picasso Project. In 1998, De Fontbrune initiated the process to sue Wofsy in French courts for copyright infringement, which resulted in a lower French court finding Wofsy guilty of copyright infringement under French law, and awarding de Fontbrune an astreinte – money damages for continuing infringement. In 2001, de Fontbrune sold his rights in Cahiers d’Art to a third party. In 2011, de Fontbrune filed suit to enforce the astreinte in French courts, which resulted in a default judgment in favor of de Fontbrune. In 2013, he then filed suit in California state court to enforce the astreinte, which was removed to the federal court under diversity jurisdiction. After a round to the Ninth Circuit on an unrelated procedural issue, the case was remanded to the district court, which held the astreinte judgment was repugnant to public policy under C.C.P. §1716(c)(1)(C), and found in favor of Wofsy. De Fontbrune appealed this decision, specifically questioning the district court’s decision that the astreinte judgment was repugnant to California public policy because it did not allow free expression, as formulated by the fair use exception to U.S. copyright law.
Procedural Issues
Because of the extensive procedural and international law arguments made on appeal, this posting will only discuss the fair use analysis of the court’s decision. As a preliminary jurisdictional issue, the Ninth Circuit panel, comprised of Judges Hurwitz, VanDyke, and Ericksen, with Judge Ericksen writing for a unanimous court, found that enforcement of foreign judgments was governed by the state law where the enforcement is sought.[3] Here, it is California law, based on the California Recognition Act.
California Code of Civil Procedure §1716(c)(1)(C) reads:
A court of this state shall not recognize a foreign-country judgment if . . . (C) the judgment of the cause of action or claim for relief on which the judgment is based is repugnant to the public policy of this state or of the United States.
The party seeking nonrecognition of the enforcement is required to establish grounds for nonrecognition. Wofsy made five arguments to challenge the astreinte. Only one dealt with copyright fair use. Specifically, Wofsy argued that because France does not recognize fair use under its copyright law, and therefore, would be repugnant to California and American public policy, which favors First Amendment freedom of expression espoused by fair use principles. Further, Wofsy argued that if French law recognized fair use, his use of the de Fortbrune photographs would be protected as fair use.
Fair use requires analyzing four statutory factors: 1) purpose and character of the use, 2) nature of the copyrighted work, 3) amount and substantiality of work used, and 4) effect on market or value.[4] Each factor is discussed in turn.
Purpose and Character of Use
The purpose and character of the infringing use depends if the use was of a commercial nature or for an educational purpose, with commercial use weighing against fair use.[5] The main analysis focuses on whether the infringing use was transformative – that is, the infringing use adds or creates something new, “with a further purpose or different character, altering the first with new expression, meaning, or message.”[6] Wofsy conceded that The Picasso Project was a book published as a commercial venture, but argued that it was actually more educational in purpose because it was aimed at reporting, teaching, and educating others about Picasso’s works. However, Judge Ericksen disagreed, noting that the book was sold in bookstores, for profit, and the end user’s motivation is irrelevant to this factor. Wofsy also argued that his use was transformative because he added comments and informative captions under each of the Zervos photos he used. However, this was not deemed transformative by the court. As such, this factor weighed against fair use.
Nature of Copyrighted Work
The nature and character of the work looks at the extent to which it is creative or not, and if it is published or unpublished. Fair use is narrower for unpublished works, and creativity weighs in favor of a fair use finding. Because photographs have long been considered creative, given the need of the photographer to combine photographic skill with light, background, and context for expression, the court found that The Picasso Project as creative. However, in spite of the photos’s creativity, it was deemed a rather neutral factor in favor of fair use.
Amount and Substantiality Used
The amount and substantiality of the work used looks at how much of the work is taken; copying an entire work militates against fair use. While Wofsy copied only 1,492 photographs out of 16,000 in the Zervos collection, he also copied the entirety of those 1,492 photos from de Fortbrune. The court found this factor weighed against fair use.
Market Effect
The effect of the use on the market effect or value of the copyrighted work is the most important factor. The infringer’s use is considered as to whether the conduct resulted in an adverse impact on the potential market of the copyrighted work. Wofsy noted that the Cahier d’Art collection actually increased in value based on auction house sales, but the court noted Wofsy failed to introduce evidence of his copying’s effect on the licensing of the Zervos collection. Where the infringing use is both commercial and non-transformative, there is a presumption of market harm.[7] The court found because Wofsy’s copying was commercial and non-transformative based on the other factors, market effect was severely affected. As a result, this factor weighed heavily against fair use.
Because the court found against fair use, Wofsy’s repugnancy argument based on a fair use defense had failed, and reversed partial summary judgment in Wofsy’s favor. The other jurisdictional and international law arguments also failed, and the court reversed the lower court’s findings against Wofsy.
Takeaway
The takeaway from De Fontbrune is two-fold. First, it should be noted that I.P. law is jurisdictional in nature, and although members of the Berne Convention enjoy reciprocal benefits, in the event of infringement, any case is adjudicated by the situs of the infringement. The U.S. recognizes a copyright fair use defense under broad First Amendment principles; France does not. This creates a disparate resolution of a copyright infringement case depending on the jurisdiction. Second, fair use is an affirmative defense, which means the infringer commits copyright infringement and then must plead fair use as a defense. Put another way, the infringer cannot use fair use before the act to commit infringement of another’s copyrighted work. Where there are questions in this regard, it is best to get a license from the copyright owner.
[1] 382 F. Supp. 3d 312 (S.D.N.Y. 2019), rev’d, vacated and remanded, 992 F.3d 99 (2nd Cir. 2021), as amended, 11 F.4th 26 (2nd Cir. 2021), cert. granted, 142 S.Ct. 1412 (2022).
[2] Case No. 13-cv-05957-SC (N.D.Cal. Mar. 12, 2014), rev’d and remanded on other grounds and as amended on denial of reh’g and reh’g en banc, 838 F.3d 992 (9th Cir. 2016), remanded, 409 F. Supp. 3d 823 (N.D.Cal. 2019), rev’d and remanded, 39 F.4th 1214 (9th Cir. 2022).
[3] See Naoko Ohno v. Yuko Yasuma, 723 F.3d 984, 990 (9th Cir. 2013) (quoting Yahoo!, Inc. v. La Ligue Contre Le Racisme et L’Antisemitisme, 433 F.3d 1199, 1212 (9th Cir. 2006)).
[4] 17 U.S.C. §107(1)-(4).
[5] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 585 (1994).
[6] Id. at 579.
[7] See Disney Ents., Inc. v. VidAngel, Inc., 869 F.3d 848, 861 (9th Cir. 2017).