Vincent De Frontbrune v. Alan Wofsy

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
VINCENT SICRE DE FONTBRUNE; No. 14-15790
LOAN SICRE DE FONTBRUNE; ADEL
SICRE DE FONTBRUNE; ANAIS D.C. No.
SICRE DE FONTBRUNE, in their 3:13-cv-05957-SC
capacity as the personal
representatives of the Estate of
Yves Sicre de Fontbrune, OPINION
Plaintiffs-Appellants,
v.
ALAN WOFSY; ALAN WOFSY &
ASSOCIATES,
Defendants-Appellees.
Appeal from the United States District Court
for the Northern District of California
Samuel Conti, Senior District Judge, Presiding
Argued and Submitted May 9, 2016
San Francisco, California
Filed September 26, 2016
2 DE FONTBRUNE V. WOFSY
Before: M. Margaret McKeown and Michelle T. Friedland,
Circuit Judges and Richard F. Boulware,* District Judge.
Opinion by Judge McKeown
SUMMARY**
Foreign Law
The panel reversed the district court’s Fed. R. Civ. P.
12(b)(6) dismissal of Yves Sicre de Fontbrune’s action
seeking to protect his copyright in photographs of Pablo
Picasso’s artworks, and to enforce a French judgment of two
million euros in astreinte in federal court against American
art editor Alan Wofsy under the California Uniform Foreign-
Court Monetary Judgment Recognition Act; and remanded.
California’s Uniform Recognition Act governs the
enforcement of foreign-country judgments that (1) grant or
deny monetary recovery and (2) are “final, conclusive, and
enforceable” under the law of the jurisdiction where rendered.
Cal. Civ. Proc. Code § 1715(a).
The panel held that Fed. R. Civ. P. 44.1 authorizes district
courts to consider foreign legal materials – including expert
testimony and declarations – outside the pleadings in rulings
*
The Honorable Richard F. Boulware, District Judge for the U.S.
District Court for the District of Nevada, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
DE FONTBRUNE V. WOFSY 3
on a motion to dismiss because Rule 44.1 treats foreign law
determinations as questions of law, not fact. The panel
concluded that the district court did not err in considering
expert declarations on the content of French law in ruling on
Wofsy’s Rule 12(b)(6) motion.
The panel held that the district court erred in concluding
that the award of an astreinte in this case constituted a “fine
or other penalty” for the purposes of California’s Uniform
Recognition Act. The panel further held that the astreinte
was awarded in the context of a civil action in order to
enforce a civil remedy provided for in the French Intellectual
Property Code, and no criminal or penal proceedings were
involved. The panel concluded that the astreinte awarded by
the French court to de Fontbrune fell within the Uniform
Recognition Act as a judgment that granted a sum of money.
COUNSEL
Richard Mooney (argued), San Francisco, California, for
Plaintiffs-Appellants.
Neil Popovic (argued), San Francisco, California, for
Defendants-Appellees.
4 DE FONTBRUNE V. WOFSY
OPINION
McKEOWN, Circuit Judge:
Justice Holmes once observed that foreign legal systems
can appear to the uninitiated “like a wall of stone,”
impenetrable and unyielding. Diaz v. Gonzales, 261 U.S.
102, 106 (1923) (Holmes, J.). For over a century, the federal
courts attempted to scale this stone wall by treating questions
of foreign law as questions of fact to be pleaded and proved.
But over the years, this method proved unsatisfactory,
obscuring rather than illuminating the content and nuance of
foreign laws. Finally, in 1966, following a proliferation of
international litigation, Federal Rule of Civil Procedure 44.1
was adopted to furnish federal courts with a uniform
procedure for raising and determining an issue concerning
foreign law. Fed. R. Civ. P. 44.1 advisory committee’s note.
Now, according to the Rule, a “court’s determination [of
foreign law] must be treated as a ruling on a question of law.”
Fed. R. Civ. P. 44.1.
Despite the clear mandate of the federal rule, this appeal
illustrates the difficulty that can arise in determining foreign
law and the confusion surrounding the role of foreign law in
domestic proceedings. The dispute stems from the
transcontinental attempts of Yves Sicre de Fontbrune to
protect his copyright in photographs of Pablo Picasso’s
artworks after an American art editor, Alan Wofsy and Alan
Wofsy and Associates (collectively, “Wofsy”), reproduced
the photographic images. As part of his efforts, de Fontbrune
received a judgment in French court of two million euros in
“astreinte” against Wofsy for copyright violations. De
Fontbrune sought to enforce this astreinte in federal court in
California under the California Uniform Foreign-Court
DE FONTBRUNE V. WOFSY 5
Monetary Judgment Recognition Act (“Uniform Recognition
Act” or “the Act”), Cal. Civ. Proc. Code §§ 1713 et seq.
The Picasso photographs—intended to convey the
quintessence of Picasso’s artworks—now require us to delve
into the essence of astreinte, a French judicial device. The
enforceability of the French award turns on whether, in this
case, the astreinte functions as a fine or penalty—which the
Uniform Recognition Act does not recognize—or as a grant
of monetary recovery—which is statutorily cognizable. The
answer to this question is not a simple matter of translation,
but, as we explain, requires a broader look at French law to
understand the nature of the astreinte remedy in this case, in
conjunction with an analysis of California law regarding the
enforcement of foreign judgments.
In granting Wofsy’s Rule 12(b)(6) motion to dismiss de
Fontbrune’s claim, the district court considered the parties’
expert declarations on the nature of astreinte. We disagree
with de Fontbrune’s proposition that consideration of such
materials outside the pleadings was error. Rather, under Rule
44.1’s broad mandate, foreign legal materials—including
expert declarations on foreign law—can be considered in
ruling on a motion to dismiss where foreign law provides the
basis for the claim. We reverse and remand, however,
because, the district court erred in concluding that the
astreinte awarded by the French court in this case functioned
as a “fine or other penalty” for purposes of the Uniform
Recognition Act.
BACKGROUND
Between 1932 and 1970, Christian Zervos took almost
16,000 photographs of Picasso’s art. These pictures were
6 DE FONTBRUNE V. WOFSY
ultimately published by Cahiers d’Art in what has become a
universally recognized reference work—the “Zervos
Catalog”—a 22 volume “catalogue raisonné”1 of Picasso’s
artistic corpus. De Fontbrune purchased Cahiers d’Art’s
publisher’s stock in 1979, thereby acquiring intellectual
property rights in the Zervos Catalog under French law.
Almost two decades later, Wofsy reproduced several
photographs from the Zervos Catalog in two volumes on
Picasso, which he offered for sale at a Parisian book fair. De
Fontbrune brought suit in French court claiming that these
reproductions violated his copyright in the Zervos Catalog.
After a French trial court rejected his claims, de
Fontbrune appealed to the Paris Court of Appeal. In a 2001
decision (the “2001 Judgment”), the Court of Appeal
concluded that Wofsy was “guilty of infringement of
copyright and ha[d] infringed on [de Fontbrune’s] rights.”
The court accordingly prohibited Wofsy “from the use in any
manner whatsoever of the [Zervos] photographs under
penalty of . . . [astreinte] of 10,000 francs by proven
infraction,” and required Wofsy “to pay Mr. de Fontbrune
800,000 francs in pecuniary damages in redress of his injury
resulting from the infringement of copyright.”2
1
A catalogue raisonné is “[t]he complete published catalogue of an
artist’s work. Such catalogues . . . are normally regarded as standard
publications on the subject.” The Concise Oxford Dictionary of Art
Terms Online (Michael Clarke & Deborah Clarke eds., 2d ed. 2010).
2
The original judgments are in French. These translations come from
the translated versions provided by de Fontbrune.
DE FONTBRUNE V. WOFSY 7
Ten years later, de Fontbrune filed a claim with an
enforcement judge at the Tribunal de Grande Instance de
Paris (High Court of Paris) for “[liquidation d’astreinte]
made against [Wofsy] by judgment of the Paris Court of
Appeal[].” De Fontbrune sought “a judgment ordering
[Wofsy] to pay him the sum of 2,000,000 euros from the
amount of the [liquidation d’astreinte].”
In a 2012 decision (the “2012 Judgment”), the
enforcement judge found that Wofsy had violated the 2001
Judgment by reproducing copyrighted images from the
Zervos Catalog. The judge accordingly “[a]ward[ed] the
[astreinte] prounounced by the Paris Court of Appeal[] . . . in
the amount of 2,000,000 euros,” as well as 1,000 euros in
costs.
De Fontbrune then initiated proceedings in California
state court seeking recognition of the 2012 Judgment under
the Uniform Recognition Act. Wofsy removed the action to
federal court on diversity grounds, and filed a motion to
dismiss under Rule 12(b)(6).
Wofsy’s motion contested the characterization of
astreinte as “damages” in the English versions of the 2001
and 2012 Judgments attached to de Fontbrune’s complaint.
Wofsy argued that astreinte functions as a penalty—not as an
award of damages—and is thus not cognizable under the
Uniform Recognition Act. In support of this assertion, Wofsy
supplied a declaration by a French lawyer, Vonnick le
Guillou. De Fontbrune countered with a declaration from his
own expert on French law, Christopher Mesnooh, explaining
that, in the French system, astreinte can function as an award
of damages. De Fontbrune also argued that the district court
should strike Guillou’s declaration as evidence outside the
8 DE FONTBRUNE V. WOFSY
pleadings impermissibly filed in support of a motion to
dismiss.
Faced with conflicting information about the function of
astreinte in French law, the district court initially denied
Wofsy’s motion in part, concluding that determining whether
astreinte is a “fine, a penalty, damages, or something else . . .
require[d] an analysis of French law” that would be
“premature at [the] pleadings stage.” The district court also
declined to consider Guillou’s declaration under Rule 44.1,
on the grounds that the Rule did not “expressly allow the
Court to consider evidence outside the pleadings on a Rule
12(b)(6) motion,” and that a party relying on foreign law
bears the burden of proving the content of that law.
After Wofsy filed a motion for reconsideration, together
with a reply declaration from Guillou, the district court
reversed course. This time around, the district court
concluded that “its previous finding concerning judicial
notice of foreign law was in error” and vacated the order
denying Wofsy’s motion to dismiss. In a complete volte face,
the district court reasoned that Rule 44.1 permits judicial
consideration of any relevant material or source in
determining foreign law, irrespective of its admissibility as
evidence. Because “determinations of foreign law are issues
of law, not fact,” the court also concluded that it could take
judicial notice of the declarations of the French legal experts,
“insofar as they relate to French law.”
Taking these declarations into consideration, the court
determined that the primary purpose of the astreinte was not
to compensate de Fontbrune for the damages he suffered, but
to compel Wofsy’s compliance with the 2001 Judgment. The
court concluded that the astreinte thus functioned as a penalty
DE FONTBRUNE V. WOFSY 9
and so was not cognizable under the Uniform Recognition
Act. De Fontbrune now appeals from the district court’s
dismissal of the action with prejudice.3
ANALYSIS
The district court’s vacillation illustrates the lingering
uncertainty surrounding the role of foreign law in domestic
proceedings, even after the advent of Rule 44.1. We take this
opportunity to address a question that no circuit has yet
answered directly, perhaps because the answer is implicit in
the rule: whether Rule 44.1 authorizes district courts to
consider foreign legal materials outside the pleadings in
ruling on a motion to dismiss. Our answer is yes, because
Rule 44.1 treats foreign law determinations as questions of
law, not fact.
I. Foreign Law under Rule 44.1
Rule 44.1 provides:
A party who intends to raise an issue about a
foreign country’s law must give notice by a
pleading or other writing. In determining
foreign law, the court may consider any
relevant material or source, including
testimony, whether or not submitted by a
party or admissible under the Federal Rules of
3
While his appeal was pending, de Fontbrune died. His wife and
children filed a motion for substitution of party to continue these
proceedings as de Fontbrune’s successors in interest pursuant to California
Civil Procedure Code § 377.32. We grant this motion. For convenience,
we refer to the appellants collectively as “de Fontbrune.”
10 DE FONTBRUNE V. WOFSY
Evidence. The court’s determination must be
treated as a ruling on a question of law.
The adoption of Rule 44.1 in 1966 marked a sea change
in the treatment of foreign law by the federal courts. See
Twohy v. First Nat’l Bank of Chi., 758 F.2d 1185, 1192–93
(7th Cir. 1985). Prior to its adoption, foreign law was viewed
as a question of fact to “be proved like other facts.” Church
v. Hubbart, 6 U.S. (2 Cranch) 187, 187 (1804) (Marshall,
C.J.). The treatment of foreign law as fact reflected
understandable judicial discomfort with questions of foreign
law due to inevitable unfamiliarity with the substance and
nuance of the legal systems of other countries. Arthur R.
Miller, Federal Rule 44.1 and the “Fact” Approach to
Determining Foreign Law: Death Knell for a Die-Hard
Doctrine, 65 Mich. L. Rev. 613, 619–20 (1967).
Rule 44.1 endeavored to lay to rest this antiquated
conception of foreign law as “a question of fact that must be
proved at trial and reviewed on appeal only for clear error.”
Rationis Enters. Inc. of Pan. v. Hyundai Mipo Dockyard Co.,
426 F.3d 580, 585 (2d Cir. 2005). The Rule achieved this
transformation by making the process of ascertaining foreign
law equivalent to the process for determining domestic law,
insofar as possible. 9A Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure § 2444 (3d ed. 2008);
see also Matter of McLinn, 739 F.2d 1395, 1398 (9th Cir.
1984) (analogizing treatment of foreign law and treatment of
laws of sister states).
Rule 44.1 thus unshackles courts and litigants from the
evidentiary and procedural requirements that apply to factual
determinations. It accordingly permits courts to consider
“any relevant material, including testimony, without regard
DE FONTBRUNE V. WOFSY 11
to its admissibility under Rule 43,” authorizes the court to
“engage in its own research,” eschews any requirement that
the court formally take judicial notice of foreign law, and
obviates the need for the court to provide “formal notice to
the parties of its intention to engage in its own research on an
issue of foreign law which has been raised by them, or of its
intention to raise and determine independently an issue not
raised by them.” Fed. R. Civ. P. 44.1 advisory committee’s
note.
The Rule’s requirements are intended to be “flexible and
informal” to “encourage the court and counsel to regard the
determination of foreign law as a cooperative venture
requiring an open and unstructured dialogue among all
concerned.” Wright & Miller at § 2444. Rule 44.1 exhorts
trial and appellate courts alike to make the most of this
flexibility to independently research and analyze foreign
law—particularly as such issues will undoubtedly continue
coming “to the federal courts with increasing frequency as the
global economy expands and cross-border transactions
increase.” Curley v. AMR Corp., 153 F.3d 5, 13 (2d Cir.
1998); see also Twohy, 758 F.2d at 1193 (“In determining
[questions of foreign law], both trial and appellate courts are
urged to research and analyze foreign law independently.”).
We have likewise stressed the district court’s independent
obligation to adequately ascertain relevant foreign law, even
if the parties’ submissions are lacking. See Universe Sales
Co., Ltd. v. Silver Castle, Ltd., 182 F.3d 1036, 1039 (9th Cir.
1999) (noting “it is not novel for an appellate court . . . to
determine that a district court performed an inadequate
inquiry” into foreign law (citing Twohy, 758 F.2d at 1193)).
Independent research, plus the testimony of foreign legal
experts, together with extracts of foreign legal materials, “has
12 DE FONTBRUNE V. WOFSY
been and will likely continue to be the basic mode” of
determining foreign law. Id. at 1038. Importantly, such
material and testimony may be considered “at any time,
whether or not submitted by a party.” Stuart v. United States,
813 F.2d 243, 250 (9th Cir. 1987), rev’d on other grounds by
United States v. Stuart, 489 U.S. 353 (1989); cf Kaho v.
Ilchert, 765 F.2d 877, 881 (9th Cir. 1985) (noting that the
traditional prohibition against considering materials not
before an agency does not apply to consideration of foreign
legal materials under Rule 44.1).
Yet despite Rule 44.1’s seemingly clear language, federal
courts have largely remained hesitant to engage with
questions of foreign law as fully and independently as they do
with questions of domestic law—confusion and contradiction
continue to plague the application of Rule 44.1. See, e.g.,
Peter Hay, The Use and Determination of Foreign Law in
Civil Litigation in the United States, 62 Am. J. Comp. L.
Supp. 213, 235 (2014) (noting the lack of uniformity in
application of Rule 44.1).
The application of Rule 44.1 has also been beset by
semantic sloppiness. Courts continue to refer to the “burden
of proving foreign law.” See, e.g., McGee v. Arkel Int’l.,
LLC, 671 F.3d 539, 546 (5th Cir. 2012) (referencing the
plaintiff’s “burden of proving foreign law” and requiring that
litigants “present to the district court clear proof of the
relevant legal principles” (internal quotations and citations
omitted)); Ferrostaal, Inc. v. M/V Sea Phoenix, 447 F.3d 212,
216 (3d Cir. 2006) (explaining that, because Rule 44.1 does
not impose a duty on courts to conduct independent research
into foreign law, the parties “carry the burden of proving” it).
Imposing a burden of proof on the parties is at odds with the
mandate of Rule 44.1. To be sure, under Rule 44.1, a party
DE FONTBRUNE V. WOFSY 13
raising a foreign law issue “must give notice by pleading on
other writings.” But this notice is not tantamount to a burden
of proof.
In light of the lingering conflicts in the application of
Rule 44.1—and in the absence of any guiding precedent from
the higher courts—it is unsurprising that uncertainty
surrounds the precise issue of whether it is appropriate for a
district court to consider foreign legal materials outside of the
pleadings in ruling on a motion to dismiss. District courts
addressing this question have—predictably—adopted
differing approaches. Compare Abdallah v. Int’l Lease Fin.
Corp., 2015 A.M.C. 1137, 1160 (C.D. Cal. 2015)
(acknowledging practical considerations that “often require”
reliance on evidence concerning substance of foreign law at
Rule 12(b)(6) stage), with United States v. 594,464 Pounds of
Salmon, More or Less, 687 F.Supp. 525, 526 (W.D. Wash.
1987) (treating a motion to dismiss “in accordance with Fed.
R. Civ. P. 12(b) as one for summary judgment,” and
explaining reluctance to rule on foreign legal questions
without “a more complete picture of the [foreign] legal and
regulatory system”).
Since matters outside the pleadings are often required to
determine foreign law, summary judgment may appear at first
blush to be the appropriate mechanism for dismissing a claim
when foreign law applies. Grice v. A/S J. Ludwig
Mowinckels, 477 F.Supp. 365, 367 (S.D. Ala. 1979). The
continued misplaced emphasis on the parties’ burden of
proving foreign law, the frequently intertwined factual
questions, and the sheer complexity of ascertaining foreign
law all might superficially support this conclusion. But it
would be antithetical to the language and purpose of Rule
44.1 to prohibit courts from considering relevant materials
14 DE FONTBRUNE V. WOFSY
beyond the pleadings in ruling on a Rule 12(b)(6) motion
when the claim depends on a determination of foreign law.
This does not preclude the possibility that there may be
situations where factual matters underlie the legal
determination and that, in such a case, summary judgment
may be the appropriate procedural mechanism for resolution.
The general prohibition against looking at matters beyond
the complaint to resolve a Rule 12(b)(6) motion ensures that
parties have adequate notice to present additional evidence
and establish whether there are any genuine issues of material
fact to be resolved. See, e.g., Cortec Indus., Inc. v. Sum
Holding L.P., 949 F.2d 42, 48 (2d Cir. 1991) (noting that the
rule requiring the conversion of a Rule 12(b)(6) motion to a
motion for summary judgment when materials outside the
pleadings are considered ensures “that the party against
whom the motion to dismiss is made may respond” with
evidence of its own). These concerns are not implicated by
the consideration of foreign legal materials at the pleading
stage. Under Rule 44.1, rulings on foreign law are
determinations of law, not of fact. Accordingly, “even
differences of opinion on the content, applicability, or
interpretation of [a] foreign provision may not be
characterized as a ‘genuine issue as to any material fact’
. . . .” Banco de Credito Indus., S.A. v. Tesoreria General,
990 F.2d 827, 838 (5th Cir. 1993) (quoting John R. Brown,
44.1 Ways to Prove Foreign Law, 9 Mar. L. Rev. 179, 194
(1984)).
The Rule authorizes courts to conduct independent
research outside the parties’ submissions in determining
foreign law. Its deliberately “flexible procedures for
presenting and utilizing material on issues of foreign law,”
Fed. R. Civ. P. 44.1 advisory committee’s note, likewise cut
DE FONTBRUNE V. WOFSY 15
against a determination that district courts should be
prohibited from considering relevant foreign legal materials
at the motion to dismiss stage.
Importantly, because foreign law interpretation and
determination is a question of law, independent judicial
research does not implicate the judicial notice and ex parte
issues spawned by independent factual research undertaken
by a court. See Edmund M. Morgan, Judicial Notice,
57 Harv. L. Rev. 269, 270–72 (1944) (explaining that, while
the “judge is unrestricted in his investigation and conclusion”
in determining the content of legal rules, “[t]he situation as to
disputed and disputable issues of fact is different,” and the
judge is not “permitted to make an independent
investigation”); see also Rowe v. Gibson, 798 F.3d 622, 641
(7th Cir. 2015) (Hamilton, J., dissenting) (noting that looking
at facts outside the record “turns the court from a neutral
decision-maker into an advocate for one side”); Blunt v.
United States, 244 F.2d 355, 365 (D.C. Cir. 1957) (warning
that adding to the record “t[akes] on the aspect of advocacy”).
Judicial research into domestic law provides an
appropriate analog. Although our common law system relies
heavily on advocacy by the parties, judges are free to
undertake independent legal research beyond the parties’
submissions. It is no revelation that courts look to cases,
statutes, regulations, treatises, scholarly articles, legislative
history, treaties and other legal materials in figuring out what
the law is and resolving legal issues. Independent judicial
research into the content of foreign law thus leaves
undisturbed a bedrock principle of our adversarial
system—that “adversarial testing is the surest route to truth,”
and the failure to expose facts to such rigorous testing “can
undermine the quality of [factual] findings.” Brianne J.
16 DE FONTBRUNE V. WOFSY
Gorod, The Adversarial Myth: Appellate Court Extra-Record
Factfinding, 61 Duke L. J. 1, 3, 6 (2011). Rather,
determining foreign law—like determining domestic law—
requires “adequate study,” without which there can be neither
the “adequate reflection” nor “that fruitful interchange of
minds which is indispensable to thoughtful, unhurried
decision and its formulation in learned and impressive
opinions.” Salve Regina Coll. v. Russell, 499 U.S. 225, 232
(1991) (quoting Dick v. N.Y. Life Ins. Co., 359 U.S. 437,
458–59 (1959) (Frankfurter, J., dissenting)).
Two of our sister circuits appear to have tacitly endorsed
this interpretation of Rule 44.1, without explicitly addressing
the question before us. In Baloco ex rel. Tapia v. Drummond
Co., the Eleventh Circuit considered an expert affidavit on
Colombian law that had been submitted to the district court
as part of a response to a motion to dismiss under Rule 44.1.
640 F.3d 1338, 1349 n.13 (11th Cir. 2011). Similarly, in
Twohy, in considering an appeal arising out of a Rule 12(c)
motion for a claim arising under Spanish law, the Seventh
Circuit chided the district court for considering only “a series
of affidavits of foreign law experts concerning issues of
Spanish law relevant to the case,” and not “fully me[eting] its
duty to ascertain foreign law under Rule 44.1.” 758 F.2d at
1192–93.
Thus, we hold that courts do not transgress the broad
boundaries established by Rule 44.1 when considering
foreign legal materials—including expert testimony and
declarations—at the pleading stage, and the district court here
did not err in considering expert declarations on the content
of French law in ruling on Wofsy’s Rule 12(b)(6) motion.
DE FONTBRUNE V. WOFSY 17
II. California’s Uniform Recognition Act
The district court erred in concluding that “the award of
an astreinte in this case constitutes a penalty for purposes of
the [Uniform Recognition Act].” To explain why this is so,
we first review the requirements governing the recognition of
foreign-court monetary judgments under California law and
then consider the nature of the astreinte in the judgment at
issue. See Richmark Corp. v. Timber Falling Consultants,
959 F.2d 1468, 1473 (9th Cir. 1992) (all questions of law,
including questions of foreign law, are reviewed de novo).
California’s Uniform Recognition Act governs the
enforcement of foreign-country judgments that (1) grant or
deny monetary recovery and (2) are “final, conclusive, and
enforceable” under the law of the jurisdiction where rendered.
Cal. Civ. Proc. Code § 1715(a). A judgment that constitutes
“[a] fine or other penalty,” however, is not cognizable under
the statute. Id. § 1715(b)(2). The statutory exclusion of fines
or penalties reflects an ancient maxim of international law
that “[t]he Courts of no country execute the penal laws of
another.” The Antelope, 23 U.S. (10 Wheat.) 66, 123 (1825)
(Marshall, C.J.); Hyundai Sec. Co. v. Lee, 182 Cal. Rptr. 3d
264, 269 (Cal. Ct. App. 2015).
The prescription against recognizing or enforcing penal
laws focuses on whether the character of the foreign
judgment is essentially punitive or compensatory. See, e.g.,
Restatement (Second) of Conflicts of Laws § 89 & cmt. a
(1971) (explaining that the “narrow” prohibition “applies
only to actions brought for the purpose of punishing the
defendant for a wrong done by him” and “does not apply to
actions brought by a private person . . . to recover
compensation for a loss”); Restatement (Third) of Foreign
18 DE FONTBRUNE V. WOFSY
Relations Law § 483 cmt. b (1987) (“A penal judgment . . . is
. . . primarily punitive rather than compensatory in
character.”). The prohibition “reflect[s] a reluctance of courts
to subject foreign public law to judicial scrutiny . . . combined
with reluctance to enforce law that may conflict with the
public policy of the forum state . . . . [and] distrust of foreign
criminal procedures.” Restatement (Third) of Foreign
Relations Law § 483 n.2.
Adopting the test articulated by the Supreme Court in
Huntington v. Attrill, 146 U.S. 657 (1892), the California
courts likewise concentrate on the character of a foreign
judgment. Java Oil Ltd. v. Sullivan, 86 Cal. Rptr. 3d 177,
183 (Cal. Ct. App. 2008). In Huntington, the Supreme Court
explained that determining whether a foreign law is “a penal
law, in the international sense, so that it cannot be enforced
in the courts of another state, depends upon . . . whether its
purpose is to punish an offense against the public justice of
the state, or to afford a private remedy to a person injured by
the wrongful act.” 146 U.S. at 673–74. This inquiry entails
consideration of whether the harm the foreign judgment seeks
to redress is private or public. Private harms “are an
infringement or privation of the private or civil rights
belonging to individuals, considered as individuals,” whereas
public harms “are a breach and violation of public rights and
duties, which affect the whole community, considered as a
community.” Id. at 668–69 (quoting 3 William Blackstone,
Commentaries *2).
The Court acknowledged the elasticity of the terms
“penal” and “penalty” in both the British and American
systems, noting that, while these terms “[s]trictly and
primarily . . . denote punishment . . . imposed and enforced by
the state for a crime or offense against its laws,” they also
DE FONTBRUNE V. WOFSY 19
commonly encompass “any extraordinary liability to which
the law subjects a wrongdoer in favor of the person
wronged.” Id. at 666–67. The Court emphasized that, for
purposes of recognition and enforcement, “[p]enal laws,
strictly and properly, are those imposing punishment for an
offense committed against the state, and which . . . the
executive of the state has the power to pardon.” Id. at 667.
In contrast, “[s]tatutes giving a private cause of action against
the wrongdoer are sometimes spoken of as penal in their
nature, but . . . neither the liability imposed nor the remedy
given is strictly penal.” Id.The Court cautioned against being misled by
nomenclature, emphasizing that the crux of the analysis is not
whether a judgment is termed penal or a penalty by “the
courts of the [country] in which it was passed, but whether it
appears, to the tribunal which is called upon to enforce it, to
be, in its essential character and effect, a punishment of an
offense against the public, or a grant of a civil right to a
private person.” Id. at 683. This admonition recognizes that
translation will always be incomplete, because the
“resonances from centuries of legal, political, and literary
use” that necessarily accompany any legal term can never be
fully transferred by translation alone. John E. Joseph,
Indeterminacy, Translation and the Law, in 8 Translation and
the Law 13, 17 (Marshall Morris ed., 1995).
In undertaking the Huntington inquiry, California uses a
nuanced balancing test to determine whether the “essential
character and effect” of an award is penal—an approach that
acknowledges that courts must consider more than how a
term is translated to understand the nature of a foreign
judgment. The Java Oil test thus looks to a number of
factors, including: (1) whether the purpose of the award is to
20 DE FONTBRUNE V. WOFSY
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.” Java
Oil, 86 Cal. Rptr. 3d at 183–84; see also Hyundai, 182 Cal.
Rptr. 3d at 270–71 (relying on Java Oil factors in
determining whether a foreign judgment was a penalty).
No one factor is determinative, and, not surprisingly, the
same factors may point in differing directions. In Hyundai,
for example, Hyundai Securities sought enforcement of a
Korean judgment that included indemnification for a criminal
fine the company had paid on behalf of Ik Chi Lee, its former
CEO. 182 Cal. Rptr. 3d at 266–67. Lee argued that, because
the indemnification order was based on a criminal fine, it was
penal in nature and not cognizable under the Act. Id. at 267.
The California Court of Appeal disagreed, reasoning that the
purpose of the Korean judgment was “to compensate Hyundai
for the damages it suffered from having to pay a fine,” and
that “the prohibition against the recognition of a judgment
based on a fine . . . does not include an award to compensate
a plaintiff.” Id. at 1387, 1389.
III. The Nature of the Astreinte in the French
Judgment against Wofsy
With the Java Oil factors in mind, we turn to the nature
of the astreinte in the French legal system generally and more
particularly in the judgment against Wofsy. Heeding our own
advice, we consider the judgment itself, the expert
declarations and materials on the astreinte submitted to the
DE FONTBRUNE V. WOFSY 21
district court by de Fontbrune and Wofsy, as well as our own
research into American and French law.
At the outset, we note that the astreinte is a “device that
may appear rather strange” to common law lawyers. An
Introduction to French Law 234 (George A. Bermann &
Etienne Picard eds., 2008). It currently occupies a role of
considerable procedural and substantive complexity. M.P.
Mitchell, Imperium by the Back Door: The Astreinte and the
Enforcement of Contractual Obligations in France, 51 U.
Toronto Fac. L. Rev. 250, 259 (1993). Unsurprisingly, then,
the astreinte cannot be neatly categorized as either essentially
penal or wholly civil in nature. It is hybrid, with elements
that cut both ways.
To begin, we emphasize that we cannot ascertain whether
the astreinte is a “fine or other penalty” simply by turning to
translations or dictionary definitions. Citing the Dictionnaire
Juridique Français-Anglais and the Council of Europe
French-English Legal Dictionary, Wofsy’s counsel argued
that “astreinte means a fine for noncompliance with a
judgment.” But the test is not whether astreinte is translated
as “fine” or “penalty.” Rather, we must look to “whether it
appears, to the tribunal which is called upon to enforce it, to
be, in its essential character and effect, a punishment of an
offense against the public, or a grant of a civil right to a
private person.” Huntington, 146 U.S. at 683. Dictionaries
may be a starting point, but in this case are of limited utility
in looking beneath the surface to determine the “essential
character and effect” of the foreign judgment. Indeed, the
limitations of terminology for understanding the character
and purpose of a foreign award is reflected in the nuanced
nature of the Java Oil test. Although the Uniform
Recognition Act prohibits recognition of a “fine[] or other
22 DE FONTBRUNE V. WOFSY
penalty,” the Java Oil factors do not rely on this vocabulary
to determine what judgments fall within the Act’s exception
to enforcement. We must accordingly be cautious about
falling back on bald nomenclature as providing a definitive
category in lieu of undertaking the in-depth analysis of
foreign judgments required by Java Oil.
The declarations of the parties’ French-law experts
illustrate the variegated character of the astreinte. The
statements of the experts and argument by counsel conjure up
an image of one side pointing a finger one way, and the other
side pointing a finger in the opposite direction. On the one
hand, the Guillou declarations take the position that the
astreinte is awarded “independent of damages,” calculated
based on the behavior of the defendant rather than injury to
the plaintiff. Its purpose is thus not, strictly speaking, to
compensate for actual pecuniary harm. Rather, it operates as
a sort of “private penalty,” intended to deter and punish non-
compliance with the court’s judgment. Although Guillou
describes the astreinte as a means to vindicate the public
interest in compliance with court orders, she does not suggest
that the order was intended to punish an “offense against the
public.” Thus, Guillou characterizes the astreinte as a
“private penalty” that is a “personal legal measure of
constraint.” But of course, invoking the word “penalty”
without benchmarking it against the Java Oil analysis does
not answer the question.
On the other hand, the Mesnooh declaration states that the
astreinte is “imposed by a judge, always for an amount of
money, ordering a party which is subject to a court order to
do something . . . to comply with such order.” An astreinte
can thus be awarded only in connection with a valid and
enforceable legal duty. According to Mesnooh, the astreinte
DE FONTBRUNE V. WOFSY 23
is a “personal remedy,” payable entirely to the party seeking
enforcement of an astreinte, not to the court or any other part
of the French State. The amount is “within the discretion of
the judge,” and “can be modified before it is reduced to
judgment.” Although not “a grant of a civil right to a private
person,” the astreinte is not a punishment for a crime against
the public, either. It is awarded, rather, “for the sole benefit
of” the party seeking the remedy.
The experts’ recitations, which sometimes overlap, are
useful in laying out some of the characteristics of the
astreinte. However, with the exception of parts of the
Mesnooh declaration, they do not provide the answer to our
state law inquiry. Additional explanatory materials indicate
that French judges devised the astreinte as a “coercive
sanction which operates in its own right to secure
enforcement of a judgment.” Michael Chesterman,
Contempt: In the Common Law but not the Civil Law, 46 Int’l
& Comp. L. Q. 521, 545 (1997). The astreinte is now widely
used in the French legal system “to obtain the performance of
any type of obligation . . . for matters civil or commercial,
and also in administrative matters including those in which
the party owing performance is the state or a public body.”
James Gordley & Arthur von Mehren, An Introduction to the
Comparative Study of Private Law 533 (2006). In this regard,
as Guillou noted, astreinte can be seen as analogous to
contempt of court.4 The protean nature and wide applicability
4
The functional similarity between the astreinte and contempt of
court of course does not answer whether the astreinte here is designed to
“punish an offense against the public,” or is in the nature of a “grant of a
civil right to a private party.” Contempt may be civil or penal, and even
within our own system, “parsing coercive civil and criminal contempt”
orders is no easy matter. Int’l Union, United Mine Workers of Am. v.
24 DE FONTBRUNE V. WOFSY
of astreinte warns against a blanket determination that the
device is always either punitive or compensatory. Rather, we
must consider a particular astreinte in the context in which it
was awarded.
Turning to the first Java Oil factor, the context of the
French orders here persuades us that the purpose of the
astreinte awarded to de Fontbrune was not to punish “an
offense against the public” or make an example of Wofsy, see
86 Cal. Rptr. 3d at 183, but to safeguard de Fontbrune’s
copyright. The 2001 Judgment prohibited Wofsy from using
the Zervos photographs “under penalty of [astreinte] of
10,000 francs” per violation. The court concluded that Wofsy
had infringed de Fontbrune’s copyright in the Zervos Catalog
in violation of Articles L335-2 and L335-3 of the French
Intellectual Property Code. According to these articles “any
reproduction by any means of a work of the mind, any edition
of writings, musical compositions, drawings, paintings, or
any other printed or engraved production made in violation of
rules protecting the authors’ right is an infringement: any
infringement is an offence.” Nicolas Bouche, Intellectual
Property Law in France ¶ 294 (2d ed. 2014). Such
infringements “may entail criminal and civil sanctions” as
remedies. Id. at ¶ 324. The criminal sanctions include “a
term of three years imprisonment and a fine of EUR
300,000.” Id. at ¶ 325. We note that the word translated here
as “fine” is “amende”—not astreinte—in the original French
version. Code de la propriété intellectuelle [Intellectual
Property Code] art. L335-2. The civil remedies include both
damages and an order requiring “cessation of the infringing
acts.” Bouche, supra, at ¶ 333. Such an order enjoining the
Bagwell, 512 U.S. 821, 836 (1994). Superficial comparisons between
judicial devices in divergent legal systems cannot answer that question.
DE FONTBRUNE V. WOFSY 25
infringing acts may be made, if necessary, under “astreinte.”
Code de la propriété intellectuelle [Intellectual Property
Code] art. L331-1–2.
In the 2001 Judgment, the Paris Court of Appeal awarded
both forms of civil remedies—that is, pecuniary damages for
de Fontbrune’s injury and an injunction against future
reproductions of the Zervos Catalog images under an
astreinte. The court did not, however, impose any of the
criminal sanctions provided for in the Intellectual Property
Code. Thus, the astreinte was not awarded pursuant to the
court’s authority to criminally punish copyright violations
under the Intellectual Property Code through imposing an
amende.
The astreinte was awarded separately and apart from the
pecuniary damages awarded by both the Paris Court of
Appeal and the enforcement judge. The enforcement judge
expressly referenced Articles 35 and 36 of the Law of 9 July
1991,5 pursuant to which any French judge could order
liquidation d’astreinte, “taking into consideration the
behaviour of the party to whom the injunction has been
addressed, and the difficulties that he or she has encountered
in executing it.”
Ultimately, the purpose of the astreinte was to set a sum,
per violation, for Wofsy’s failure to comply with the judicial
prohibition on the continued use of de Fontbrune’s
5
We note that the Law of 9 July 1991 was modified in 1992 and
abrogated in 2011. See Loi 92-644 du 13 juillet 1992, Journal Officiel de
la République Française, July 14, 1992, art. 3; Ordonnance 2011-1895 du
19 décembre 2011, Journal Officiel de la République Française, Dec. 20,
2011, art. 4.
26 DE FONTBRUNE V. WOFSY
copyrighted photographs. In this sense, it may be likened to
a civil contempt order. The California Supreme Court has
clarified that the primary object of civil contempt “is to
protect the rights of litigants. . . . Civil contempt is a forward-
looking remedy imposed to coerce compliance with a lawful
order of the court.” In re Nolan W., 203 P.3d 454, 466 (Cal.
2009) (internal quotations and citations omitted). Civil
contempt orders are thus “remedial, and for the benefit of the
[plaintiff].” Bagwell, 512 U.S. at 828–29 (quoting Gompers
v. Bucks Stove & Range Co., 221 U.S. 418, 441 (1911)).
Here, as Guillou pointed out, the astreinte was a “personal
legal measure of constraint,” for de Fontbrune’s benefit; in
other words “a forward-looking remedy imposed to coerce
compliance with” the Paris Court of Appeal’s lawful order to
stop Wofsy using de Fontbrune’s copyrighted images.
Cast in another light, the astreinte here may also be seen
as fulfilling a function akin to statutory damages in American
copyright law, although we acknowledge that de Fontbrune
was awarded damages separately. In the U.S. system, a party
may opt for an award of statutory damages rather than actual
damages. 17 U.S.C. § 504(c)(1). Such damages are intended
to induce copyright holders to enforce their copyrights and to
deter infringers by preventing unjust enrichment, even where
actual damages are unproved. Roger D. Blair & Thomas F.
Cotter, An Economic Analysis of Damages Rules in
Intellectual Property Law, 39 Wm. & Mary L. Rev. 1585,
1651–52 (1998). Here, too, the astreinte was awarded
without determining the actual amount of pecuniary harm
suffered by de Fontbrune as a result of Wofsy’s continued use
of the Zervos Catalog images. Nevertheless, the purpose of
the award was not to punish a harm against the public, but to
vindicate de Fontbrune’s personal interest in having his
DE FONTBRUNE V. WOFSY 27
copyright respected and to deter further future infringements
by Wofsy.
The remaining Java Oil factors weigh in favor of our
conclusion that the astreinte was not essentially penal in
nature. Significantly, the astreinte awarded was payable
directly to de Fontbrune, rather than to a court or the French
state. As the Mesnooh declaration noted, an astreinte creates
a “debt belonging to the party which is condemned [to pay
the astreinte].” The result is that “the beneficiaries of the
underlying award [for damages] becomes a creditor for the
amount of the astreinte.” See Francois Chabas, Régime de la
Réparation: JurisClasseur Civil Code Article 1382–1386 ¶ 97
(2001).
Turning to the nature of the proceedings, the astreinte
here was awarded in the context of a civil action in order to
enforce a civil remedy provided for in the French Intellectual
Property Code. No criminal or penal proceedings were
involved. And, finally, the award was not a mandatory fine,
sanction or multiplier. Indeed, an astreinte’s “effectiveness
is . . . a function of the choice of the amount which is freely
determined by the judge.” Gordley & von Mehren, supra, at
532. In fact, the enforcement judge accepted a reduction of
the astreinte to 2,000,000 euro, which is consistent with the
notion that she retained final discretion to determine the
amount. In all, the astreinte was not essentially “a
punishment of an offense against the public;” rather, it
“afford[ed] a private remedy to [de Fontbrune,] a person
28 DE FONTBRUNE V. WOFSY
injured by the wrongful act.” See Huntington, 146 U.S. at673–74, 683.6
Our conclusion is buttressed by contrasting the nature of
the astreinte awarded here with another case in which our
court considered in dicta the character of an astreinte
imposed under French criminal law and in a different context.
The case of Yahoo! Inc. v. La Ligue Contre Le Racisme et
L’Antisemitisme arose from the availability in France of Nazi-
related memorabilia on Yahoo!’s auction site. 433 F.3d 1199,
6
While the French characterization of the astreinte is not
determinative of whether the astreinte is penal or remedial under U.S. law,
we note that our conclusion is reinforced by a decision of the French high
court noting the civil nature of the device. The French case centered on
the enforceability of a $13 million penalty imposed on an American
citizen and French resident, Richard Blech, for his role in a Ponzi scheme.
The scheme resulted in an estimated $200 million in damages to the
victims. S.E.C. v. Credit Bancorp, Ltd., No. 99 CIV 11395 RWS, 2000
WL 1752979 (S.D.N.Y. 2000). A U.S. court ordered Blech to cooperate
with the receiver appointed to trace Blech’s assets under penalty of $100
dollars per day, doubled each day for noncompliance. Order, Credit
Bancorp, No. 99 CIV 11395 RWS, 2000 WL 1752979 (S.D.N.Y. 2000)
(No. 188). Four months later, the receiver applied for an accounting and
the U.S. court ordered Blech to pay approximately $13 million in
penalties. Order, Credit Bancorp, No. 99 CIV 11395 RWS, 2000 WL
1752979 (S.D.N.Y. 2000) (No. 333). The receiver sought to enforce the
award in France. In reasoning that mirrors our own, the Cour de cassation
characterized the $13 million penalty as an astreinte, and concluded that,
because an astreinte is civil in nature, the penalty was enforceable. See
Cour de cassation [Cass.] [supreme court for judicial matters] 1e civ., Jan.
28, 2009, Bull. civ. I, No. 15 (Fr.) (calling the $100 daily penalty “une
astreinte” and explaining “la condemnation . . . au paiement d’une somme
d’argent à titre de sanction du non respect d’une injonction du juge
étranger constituait une décision de nature civile”). For a translation of
the relevant portions of the French opinion, see Benjamin West Janke &
François-Xavier Licari, Enforcing Punitive Damage Awards in France
after Fountaine Pajot, 60 Am. J. Comp. L. 775, 799 (2012).
DE FONTBRUNE V. WOFSY 29
1202 (9th Cir. 2006) (en banc) (per curiam). A French court
issued an injunction ordering Yahoo! to remove access to the
memorabilia or pay 100,000 euros per day of delay. Id. at
1203. Yahoo! claimed that “the threat of a monetary penalty
h[ung over it] like the sword of Damocles.” Id. at 1218. We
stated that “even if the French court were to impose a
monetary penalty against Yahoo!,” it is “exceedingly
unlikely” that it would be an enforceable penalty under the
Uniform Recognition Act. Id. at 1218.
Four factors suggested that the astreinte at issue in
Yahoo! was penal rather than compensatory in character.
First, the word astreinte was consistently translated as
“penalty.”7 Id. at 1219. Second, the sanctions were imposed
for violations of the French Penal Code, “which declares it a
‘crime’ to exhibit or display Nazi emblems, and which
prescribes a set of ‘criminal penalties,’ including fines.” Id.In other words, the penalty in Yahoo! was imposed for “a
breach and violation of public rights and duties, which affect
the whole community, considered as a community.”
Huntington, 146 U.S. at 668–69 (quoting 3 William
Blackstone, Commentaries *2). Third, the penalties imposed
by the French court were expressly intended to deter Yahoo!
from creating a “threat to internal public order”—obviously,
an issue of public interest affecting the whole community, not
solely related to a private dispute. Yahoo!, 433 F.3d at 1220.
7
We emphasize again that translation alone is insufficient to capture
the “essential character and effect” of a foreign judgment. The translation
of astreinte as “penalty” in the French order at issue in Yahoo! does not
compel a conclusion that the astreinte at issue here is essentially penal in
character. We decline to hold that an astreinte is necessarily penal in
nature; instead, future courts should be left to consider under Java Oil
whether an astreinte operates to punish or to compensate in the context of
a particular case.
30 DE FONTBRUNE V. WOFSY
As we noted, such judgments “designed to deter conduct that
constitutes a threat to the public order are typically penal in
nature.” Id. Finally, the astreinte was payable to the
government and not a private individual or group—further
underscoring the public nature of award. Id. Here, in
contrast, the astreinte was imposed in the context of a civil
action for contravening an injunction against the use of
copyrighted materials and was payable to the individual
copyright holder.
For the foregoing reasons, we hold that the astreinte
awarded by the French courts to de Fontbrune falls within the
Uniform Recognition Act as a judgment that “[g]rants . . . a
sum of money.” Cal. Civ. Proc. Code § 1715(a)(1). In this
case, the astreinte was not a “fine or other penalty” for
purposes of the Act, id. § 1715(b)(2), and accordingly the
district court erred in concluding otherwise.
REVERSED AND REMANDED.