De Fontbrune v. Wofsy et al

Filing 27

ORDER VACATING 25 Order on Motion to Dismiss and GRANTING 9 MOTION to Dismiss Complaint Pursuant to Fed. R. Civ. P. 12(b)(6). Signed by Judge Samuel Conti on 3/26/2014. (sclc1, COURT STAFF) (Filed on 3/27/2014)

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IN THE UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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Northern District of California

United States District Court

YVES SICRE DE FONTBRUNE,
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Plaintiff,

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v.

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ALAN WOFSY, ALAN WOFSY &
ASSOCIATES, and DOES 1 through
100, inclusive,

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Defendants.
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Case No. 13-cv-05957-SC
ORDER VACATING MARCH 12,
2014 ORDER AND GRANTING
MOTION TO DISMISS

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I.

INTRODUCTION

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Now before the Court is Defendants Alan Wofsy and Alan Wofsy &

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Associates' (collectively, "Defendants") motion for leave to file a

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motion for reconsideration of the Court's March 12, 2014 Order

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granting in part and denying in part Defendants' motion to dismiss.

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ECF No. 26.

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originally submitted in connection with the motion to dismiss, the

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Court concludes that its previous finding concerning judicial

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notice of foreign laws was in error.

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VACATES the March 12, 2014 Order and enters this amended Order on

Having reviewed the motion, along with the papers

Accordingly, the Court

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Defendants' motion to dismiss.

No further briefing is necessary,

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and the Court limits its discussion to the issues raised in the

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papers filed in connection with Defendants' motion to dismiss.

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Nos. 9 ("MTD"), 18 ("Opp'n"), 19 ("Reply").

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forth below, Defendants' motion to dismiss is GRANTED.

ECF

For the reasons set

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II.

The following facts are taken from Plaintiff's Complaint along

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BACKGROUND

with the exhibits attached thereto.

The instant action arises out

United States District Court

For the Northern District of California

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of a copyright suit Plaintiff filed against Defendants in the

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French courts in 1996.

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1.

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literary property rights to a catalog of the works of Pablo Picasso

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created by Christian Zervos (the "Zervos works").

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asserted claims for copyright infringement and unfair competition

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against Defendants based on their alleged reproduction of the

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Zervos works in two catalogs of Picasso artwork.

Compl. Ex. 2 ("2001 J." (translation)) at

In the French action, Plaintiff claimed to have artistic and

Plaintiff

Id.

The trial court held Defendants harmless in the action and

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declared Plaintiff's claims "inadmissible[] due to his lack of

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proof of his locus standi."

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Paris Court of Appeals reversed.

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Defendants liable for copyright infringement, prohibited Defendants

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from using Zervos's photographs under penalty of "astreinte" 1 of ₣

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10,000 per discovered breach, ordered the destruction of the

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infringing materials, and awarded Plaintiff ₣ 800,000 in pecuniary

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damages and ₣ 50,000 in costs.

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Id. at 2.

On September 26, 2001, the

Id. at 12.

Id. at 12-13.

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The court held

Defendants appealed

As discussed below, the parties disagree on the precise
translation of astreinte in this context. Plaintiff claims it
means damages, while Defendants claim it means penalty.

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this judgment, but their appeal was dismissed.

Compl. ¶ 9.

In or around 2011, Plaintiff brought a case against Defendants

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before a French enforcement judge concerning the 2001 Judgment of

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the Paris Court of Appeals. 2

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(translation)) at 3.

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judgment in the action.

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facts and claims is vague, at least in the translation provided by

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Plaintiff, and Plaintiff's pleading does nothing to clarify the

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matter.

Compl. Ex. 6 ("2012 J."

On January 10, 2012, the court rendered a
The court's description of the underlying

However, it appears the court found that Defendants had

United States District Court

For the Northern District of California

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violated the terms of the 2001 Judgment.

The court awarded

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Plaintiff € 2,000,000 in "liquide l'astreinte" and € 1,000 for

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costs.

Compl. Exs. 5, 6 at 3-4.

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In September 2011, Plaintiff and Éditions Cahiers D'art filed

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another suit against Defendants concerning "works dedicated to the

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works of Picasso" before the Tribunal de Grande Instance de Paris.

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Compl. Ex. 16 ("2013 J." (translation)) at 2.

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engage an attorney for the proceeding.

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2013, the tribunal found that Plaintiff lacked locus standi to

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bring his claims for copyright infringement because, on December

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20, 2001, he transferred his intellectual property rights in the

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works to Cahier D'art Holding.

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that Plaintiff's claims against Defendants were "inadmissible" and

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ordered Plaintiff to pay the costs of the proceedings.

Id. at 3.

Id. at 4.

On January 13,

The tribunal concluded

Id.

Plaintiff filed the instant action in California state court

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on November 14, 2013.

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grounds.

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Defendants did not

Defendant subsequently removed on diversity

Pursuant to the Uniform Foreign-Country Money Judgments

There appears to be a typo in the French Judgment, which is
repeated in the translation, setting the date of the underlying
judgment at September 26, 2011, rather than September 26, 2001.

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Recognition Act ("UFCMJRA"), Cal. Code Civ. Proc. § 1713 et seq.,

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Plaintiff demands that "the judgment of the Paris Court of Appeals

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be recognized as [a] valid judgment for Plaintiff and be entered as

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a California judgment."

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$2,688,101.03, which is allegedly the United States dollar

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equivalent of the € 2,001,000 awarded in the 2012 Judgment.

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There is no indication that Plaintiff is seeking a California

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judgment in connection with the 2001 Judgment.

Id. pg. 6.

Plaintiff seeks a total sum of

Id.

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United States District Court

For the Northern District of California

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III. LEGAL STANDARD
A motion to dismiss under Federal Rule of Civil Procedure

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12(b)(6) "tests the legal sufficiency of a claim."

Navarro v.

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Block, 250 F.3d 729, 732 (9th Cir. 2001).

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on the lack of a cognizable legal theory or the absence of

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sufficient facts alleged under a cognizable legal theory."

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Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.

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1988).

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should assume their veracity and then determine whether they

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plausibly give rise to an entitlement to relief."

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Iqbal, 556 U.S. 662, 679 (2009).

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must accept as true all of the allegations contained in a complaint

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is inapplicable to legal conclusions.

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elements of a cause of action, supported by mere conclusory

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statements, do not suffice."

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Twombly, 550 U.S. 544, 555 (2007)).

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"Dismissal can be based

"When there are well-pleaded factual allegations, a court

Ashcroft v.

However, "the tenet that a court

Threadbare recitals of the

Id. (citing Bell Atl. Corp. v.

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IV.

DISCUSSION

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A.

Procedural Matters

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Plaintiff attached the 2001, 2012, and 2013 judgments to his

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Complaint, along with English translations of those judgments.

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Defendants object to the translations as inaccurate, and have

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offered purportedly accurate translations of their own.

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("Obj.") at 3.

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Vonnick le Guillou, an attorney licensed to practice in France, on

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certain issues of French law relevant to the instant dispute.

ECF No. 12

Defendants have also submitted the declaration of

ECF

United States District Court

For the Northern District of California

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No. 9-2 ("Guillou Decl.").

In response to the Guillou Declaration,

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Plaintiff has submitted a declaration on French law by Christopher

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J. Mesnooh, an attorney admitted to the Paris bar.

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("Mesnooh Decl.").

ECF No. 18-1

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Plaintiff argues that the Court should strike the translations

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submitted by Defendants, along with the Guillou Declaration, on the

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ground that the Court should limit its analysis to the pleadings on

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a Rule 12(b)(6) motion to dismiss.

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to Defendants' translations to resolve the instant dispute, it does

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not rule on Plaintiffs' objections to them.

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to Guillou Declaration is OVERRRULED.

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Civil Procedure 44.1, the Court may consider any relevant material

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or source in determining foreign law, regardless of whether that

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material is otherwise admissible under the Federal Rules of

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Evidence.

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determinations of foreign law at the pleading stage since the

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record is not yet fully developed and the Court should not merely

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resort to "simply picking one French lawyer's declaration . . . or

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another's."

Since the Court need not refer

Plaintiffs' objection

Pursuant to Federal Rule of

Plaintiff argues that the Court should decline to make

ECF No. 24.

However, pursuant to Rule 44.1, the Court

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is not limited to considering the materials submitted by the

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parties in resolving issues of foreign law.

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may be useful, it is not "an invariable necessity in establishing

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foreign law."

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F.3d 694, 713 (5th Cir. 1999) (internal quotations omitted).

While expert testimony

Access Telecom, Inc. v. MCI Telecomms. Corp., 197

As determinations of foreign law are issues of law, not fact,

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the Court takes judicial notice of the declarations submitted by

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both Guillou and Mesnooh, but only insofar as they relate to French

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law. 3

United States District Court

For the Northern District of California

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B.

The 2001 Judgment

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Defendants argue that recognition of the 2001 Judgment is

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barred by the UFCJMRA's ten-year statute of limitations.

Mot. at 5

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(citing Cal. Code Civ. Proc. § 1721).

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to this argument, though it appears that he is not seeking to

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enforce the 2001 Judgment.

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$2,688,101.03, the U.S. dollar equivalent of the 2012 Judgment.

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the extent that Plaintiff is seeking enforcement of the 2001

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Judgment, his claim is DISMISSED.

Plaintiff does not respond

The Complaint's prayer seeks only
To

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C.

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Defendants argue that the 2012 Judgment is unenforceable

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because: (1) Plaintiff lacks standing to enforce the 2012 Judgment

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because he sold his rights to the Zervos works in 2001; and (2) the

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judgment is for a fine or a penalty, neither of which are

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cognizable under the UFCMJRA.

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but finds the second persuasive.

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The 2012 Judgment

The Court rejects the first argument

Guillou also submitted a declaration in support of Defendants'
reply brief. ECF No. 22 ("Guillou Reply Decl."). Plaintiff
objects to the Guillou Reply Declaration on the ground that
Defendants should not be allowed to raise new arguments on reply.
Guillou's reply declaration does not change the Court's analysis.

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1.

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Plaintiff's Standing

Defendants argue that Plaintiff lacks standing to enforce the

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2012 Judgment because he transferred his rights to the Zervos works

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in 2001.

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conflates Plaintiff's locus standi in the French court and his

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standing in this Court.

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infringement in the instant action -- he is suing to enforce the

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2012 Judgment issued by the French court.

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question with respect to standing is whether Plaintiff has an

MTD at 10-11.

As an initial matter, this argument

Plaintiff is not suing for copyright

Thus, the pertinent

United States District Court

For the Northern District of California

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interest in the 2012 Judgment, not whether he has an interest in

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the Zervos works.

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2,001,000 to Plaintiff specifically, Defendants cannot dispute that

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Plaintiff has an interest in enforcing that judgment.

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Defendants are essentially challenging Plaintiff's standing in the

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2012 French action.

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courts.

As the 2012 Judgment ordered Defendants to pay €

Instead,

The Court leaves this issue to the French

To the extent that the Court can review the accuracy of the

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2012 Judgment, it would need to look outside of the pleadings to do

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so.

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to Plaintiff's pleading, states that Plaintiff transferred his

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rights to the Zervos works to Cahier D'Art Holding Limited on

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December 21, 2001.

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not ordinarily admissible for their truth in another case through

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judicial notice."

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Cir. 2003).

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in Plaintiff's Complaint when they are contradicted by the exhibits

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attached thereto, the 2012 Judgment, which is also attached to the

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Complaint, implicitly holds that Plaintiff did have locus standi in

Defendants point out that the 2013 Judgment, which is attached

However, "[f]actual findings in one case are

Wyatt v. Terhune, 315 F.3d 1108, 1114 n.5 (9th

And though the Court is not bound by the allegations

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the 2012 action.

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find that the 2012 Judgment was in error and the 2013 Judgment was

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not, when the reverse might be true.

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has the discretion to refuse to recognize a foreign judgment where

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it conflicts with another final and conclusive judgment.

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Code Civ. Proc. 1716(c)(4).

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discretion before it has had the opportunity to review the evidence

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concerning Plaintiff's rights to the Zervos works.

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Defendants are essentially asking that the Court

Under the UFCMJRA, the Court

See Cal.

The Court declines to exercise its

While the Court may not take judicial notice of the truth of

United States District Court

For the Northern District of California

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the matters asserted in the 2013 Judgment, it may take judicial

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notice of the judgment's legal effect.

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longer final, enforceable, or conclusive on account of the 2013

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Judgment, the Court could not enforce it under the UFCMJRA.

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id. § 1715(a)(2).

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Plaintiff did not inform the enforcement judge that he transferred

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his commercial rights to the photographs in 2001 and such

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concealment could form grounds for a motion for revision of the

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2012 Judgment, pursuant to Article 595 of the French Code of Civil

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Procedure.

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French Code of Civil Procedure, the statute of limitations for a

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motion for revision is two months, and it begins to run from the

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date on which a party is aware of the grounds for the revision upon

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which it relies.

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such a motion, though they were clearly aware of possible grounds

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for revision of the 2012 Judgment when this motion was filed over

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two months ago.

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speculate as to whether Defendants could file or have filed a

If the 2012 Judgment is no

See

According to Guillou, it is "very likely" that

Guillou Decl. ¶ 19.

However, under Article 596 of the

There is no indication that Defendants have filed

At the pleadings stage, the Court declines to

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motion for revision within the statute of limitations. 4
Accordingly, the Court declines to dismiss Plaintiff's case

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based on a lack of standing.
2.

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Penalty

Defendants argue that the 2012 Judgment is a penalty and is

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therefore not cognizable under the UFCMJRA.

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reviews the standard for determining whether a judgment constitutes

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a penalty and then applies this standard to the 2012 Judgment.
a.

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The Court first

Penalty Standard

United States District Court

For the Northern District of California

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The UFCMJRA applies to a foreign-country judgment to the

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extent that judgment both (1) "[g]rants or denies recovery of a sum

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of money" and (2) "[u]nder the law of the foreign country where

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rendered is final, conclusive, and enforceable."

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Proc. § 1715(a)(1)-(2).

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country judgment, even if the judgment grants or denies recovery of

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a sum of money," to the extent that the judgment is a "fine or

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other penalty."

Cal. Code Civ.

The statute "does not apply to a foreign-

Id. § 1715(b), (b)(2).

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In determining whether a foreign-country judgment is a penalty

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for the purposes of the UFCMJRA, a court must determine whether the

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purpose of the judgment "is to punish an offense against the public

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justice of the State, or to afford a private remedy to a person

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injured by the wrongful act."

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App. 4th 1178, 1187 (Cal. 2008) (quoting Huntington v. Attril, 146

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U.S. 657, 673-74 (1892)).

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statute is called by the legislature or the courts of the State in

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Java Oil Ltd. v. Sullivan, 168 Cal.

"The test is not by what name the

Even if Defendants decline to file a motion for revision, the
Court may choose not to enforce the 2012 Judgment if it was
obtained by fraud or is repugnant to public policy. Cal. Code Civ.
Proc. § 1716(c)(2)-(3). These issues are not amenable for
resolution at this stage of the litigation.

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which it was passed, but whether it appears . . . to be in its

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essential character and effect, a punishment of an offence against

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the public, or a grant of a civil right to a private person."

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(quoting Huntington, 146 U.S. at 683).

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"that awards a penalty to the state, or to a public officer in its

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behalf, or to a member of the public, suing in the interest of the

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whole community to redress a public wrong. . . . .

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must be, not reparation to one aggrieved, but vindication of the

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public justice."

United States District Court

For the Northern District of California

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Id.

A penal statute is one

The purpose

Id. (quoting Cavarria v. Sup. Ct., 40 Cal. App.

3d 1073, 1077 (Cal. Ct. App. 1974)).
Applying these principles in Java Oil, the California Supreme

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Court found that a foreign judgment awarding attorney fees was

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cognizable under the UFCMJRA.

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defendant was being ordered to compensate the plaintiffs for fees

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they incurred in defending a lawsuit, the award was payable to the

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plaintiffs rather than to the state, the judgment arose from a

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civil action, and the damages were not designed to provide an

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example or punish the defendant.

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The court reasoned that the

Id. at 1188.

In an earlier case, the California Supreme Court also found

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that penal section 205(e) of the Emergency Price Control Act of

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1942 was penal.

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1943).

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violation of a government price schedule to sue for either $50 or

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treble the amount of the overcharge.

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though the fines were payable to private citizens, the primary

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purpose of providing for consumer actions was to aid in the

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enforcement of the act, and that the penalties authorized by the

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statute were intended to serve as a deterrent.

Miller v. Mun. Court, 22 Cal. 2d 818, 838 (Cal.

That law allowed purchasers of commodities sold in

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Id.

The court reasoned that

Id. at 839.

The Ninth Circuit also addressed the issue of penalties under

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the UFCMJRA in Yahoo! Inc. v. La Ligue Contre Le Racisme Et

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L'Antisemitisme, 433 F.3d 1199 (9th Cir. 2006).

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French court entered an order requiring Yahoo! to block French

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citizens' access to Nazi material displayed on Yahoo!'s website.

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Id. at 1202-03.

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a penalty of € 100,000 per day of delay or per confirmed violation.

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Id. at 1203.

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unlikely" that the French judgment could be enforced under the

In that case, a

The French order stated that Yahoo! was subject to

The Ninth Circuit found that it "exceedingly

United States District Court

For the Northern District of California

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UFCMJRA because the judgment was a penalty.

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the court noted that the word used by the French court,

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"astreinte," was consistently translated as a "penalty" in the

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record. 5

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violating a section of the French penal code, and the judgment did

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not lose its penal nature merely because private litigants

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initiated the action.

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penalties were designed to deter Yahoo! from creating "a threat to

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public order" and were payable to the government.

Id. at 1219.

Id. at 1218.

First,

Second, Yahoo! had been held liable for

Id.

Third, the court observed that the

Id. at 1220.

In sum, courts generally balance a number of factors in

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determining whether an award is an unenforceable penalty under the

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UCMJRA: (1) does the award compensate the plaintiff for damages or

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punish the defendant for an offense against the public, (2) is the

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award payable to the plaintiff or to the state, (3) does the

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judgment arise from a civil action or a penal statute, (4) are the

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damages intended to provide an example and deterrence, and (5) does

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Defendants argue that the Ninth Circuit's translation of
astreinte in Yahoo! controls the outcome of the instant dispute.
The Court disagrees. The Ninth Circuit looked beyond the literal
translation of astreinte and considered its function in the
underlying French action. The Court does the same here.

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the judgment impose a mandatory fine, sanction, or multiplier on

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the defendant.

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CAB, 2009 WL 3153747, at *6 (S.D. Cal. Sept. 23, 2009).

See Plata v. Darbun Enterprises, Inc., 09CV44-IEG

b.

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Application to the 2012 Judgment

With the above framework in mind, the Court examines whether

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the € 2 million awarded as astreinte in the 2012 Judgment

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constitutes a penalty.

The Court concludes that it does.

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Guillou, Defendants' declarant, states that astreinte is

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independent of damages, and that French courts award an astreinte

United States District Court

For the Northern District of California

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to deter parties from noncompliance with a judgment or to punish

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parties for failing to comply.

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also states that the amount of astreinte is fixed by "taking into

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account the behavior of the defendant and the difficulties he has

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met to comply with the judgment," rather than the damages suffered

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by the plaintiff.

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concept of astreinte was created by French judges during the

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Nineteenth Century, when they did not have the means to coerce

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compliance with their civil orders.

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Mesnooh, Plaintiff's declarant, agrees that the intent of astreinte

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is to compel a party to comply with a judgment.

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27.

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a fine or a penalty because it is a personal remedy which goes

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entirely to the party seeking the enforcement of the court

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decision.

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Id. ¶ 14.

Guillou Decl. ¶¶ 12-13.

Guillou

Finally, Guillou asserts that the

Guillou Reply Decl. ¶ 9.

Mesnooh Decl. ¶

However, Mesnooh contends that astreinte cannot be considered

Id. ¶¶ 29-30.

On balance, the Court finds that the award of an astreinte in

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this case constitutes a penalty for the purposes of the UFCMJRA.

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As Plaintiff points out, the astreinte arises out of a civil matter

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vindicating Plaintiff's copyrights and is payable to Plaintiff, not

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to the state or the court.

Opp'n at 9.

However, this does not end

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the inquiry.

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remedy harm to Plaintiff, but to coerce compliance with the 2001

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injunction.

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considered Plaintiff's damages when it fixed the astreinte.

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Instead, it engaged in a mechanical calculation, multiplying the

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number of discovered violations by ₣ 10,000 -- the amount set by

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the 2001 Judgment -- and converting the product from Francs to

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Euros.

The primary purpose of the astreinte was not to

There is no indication that the French court even

2012 J. at 3.

Moreover, the court noted that it could

United States District Court

For the Northern District of California

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properly consider "the behaviour of the [Defendants], and the

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difficulties that [they] encountered in executing [the

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injunction]."

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disregard of Plaintiff's damages underscores the penal nature of

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the astreinte.

Id.

The court's focus on Defendants' behavior and

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It is possible that a portion of the astreinte awarded is

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compensatory, since assuming he continued to hold the rights to the

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Zervos works, Plaintiff may have been harmed by Defendants'

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repeated violation of the 2001 injunction.

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court did not delineate between the compensatory and punitive

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aspects of the award.

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compensatory portion is minimal.

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(the equivalent of about ₣ 14 million) is over eighteen times

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larger than the amount of the original 2001 Judgment (₣ 800,000),

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despite the fact that the court awarded the astreinte based on the

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examination of just two infringing works.

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However, the French

In any event, it appears that the
The amount of the 2012 Judgment

2012 J. at 3.

Accordingly, the Court finds that the € 2 million awarded as

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astreinte in the 2012 Judgment is a penalty and therefore not

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cognizable under the UFCMJRA.

Though neither party addresses the

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issue, the Court also finds that the € 1,000 in costs awarded by

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the 2012 Judgment is also not cognizable, as it was awarded in

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connection with a punitive award.

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V.

CONCLUSION
For these reasons, the Court VACATES the March 12, 2014 Order

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and GRANTS Defendants' motion to dismiss.

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This action is DISMISSED

WITH PREJUDICE.

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United States District Court

For the Northern District of California

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IT IS SO ORDERED.

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March 26, 2014
UNITED STATES DISTRICT JUDGE

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