I'm getting quite a bit of email about the J.K. Rowling Harry Potter decision in the copyright infringement suit, and so I know you are interested in it. So here you go, the Order [PDF]. I've done it as text for you as well. And to help you understand even better, here's [PDF] what the fan site suggested to the judge for findings and order, and here's what [PDF] Time Warner/Rowling thought would be appropriate. The latter document also has six exhibits, which I'll get for you too, if there is sufficient interest. But this is, I believe, enough for you to grasp why the judge made the decision he did. It must have been an very hard decision, and Rowling certainly didn't win every claim. The court rejected the allegations of bad faith and willfulness, as I'll show you. I think you can see that just in the money damages order, which are very, very low, the absolute statutory minimum.
The fact is, Rowling and her editor led the defendant on with praise of his website work, such that there was a suggestion by him that he might be the editor of the official encyclopedia, a suggestion that was turned down. Her prior praise of his fan site weighed against her. But she did tell him he had no role as her editor, and he went ahead with his own book anyway, with some marketing that the judge found misleading. So the question was, is it fair use? It certainly could have been, since a copyright owner can't control transformative derivative works totally, but where the defendant failed was in the how of it, how he went about it. The impression I get from the Order is that if he'd been less of a fan and copied less and written more of his own words instead, it would have worked out better for him. The court, despite finding against fair use, found the defendant at the time had a reasonable belief that it was fair, and that shows me how close the call was, but in analyzing the four factors courts use for fair use determinations case by case, this judge decided it didn't pass ultimately. But he managed to do so without, in my view, damaging the field for transformative fair use works. Let me show you what I mean. You'll see how carefully the judge annotates his ruling with prior case law, and if you wish to understand his decision, you really would have to read all the citations, because that is where the judge tells you why he decided each element.
The truth is, the defendant could have done a lexicon without all the copying that might have survived challenge. This defendant put in a lot of effort and volunteer labor, and I'm guessing he's sorry now, and who can blame him? His draft for his book was more than 400 typed pages with 2,437 entries
organized alphabetically. But there is nothing inappropriate in asking fan sites to learn where the line is. And while the Order includes an injunction against publishing the Lexicon, I wasn't clear if this impacts the website. The judge quotes from the Feist case, which tells us where the line is in copyright infringement cases, since not all copying is infringing:
To establish a prima facie case of copyright infringement, a plaintiff must
demonstrate "(1) ownership of a valid copyright, and (2) copying of constituent elements
of the work that are original."...The
element of copying has two components: first, the plaintiff must establish actual copying
by either direct or indirect evidence; then, the plaintiff must establish that the copying
amounts to an improper or unlawful appropriation. There was admittedly a lot of copying, both word for word and in paraphrasing. So the question was, how much is too much? Footnote 13 shows that it wasn't that simple for the judge, because a novel and a lexicon are not the same genre: The post-trial briefs of the parties both suggest that Ringgold's quantitative/qualitative approach is the
applicable test for substantial similarity in this case, and the Court agrees. Since the original and secondary
works are of different genres, the question of substantial similarity is difficult to examine using the other
tests applied in this Circuit. See Castle Rock, 150 F.3d at 139 ("Because in the instant case the original and
secondary works are of different genres and to a lesser extent because they are in different media, tests for
substantial similarity other than the quantitative/qualitative approach are not particularly helpful to our
analysis."). The Harry Potter books are wholly original, not a mixture of original elements and uncopyrightable elements, so that means, under the law, the court states, that you get to copy less:
Where, as here,
the copyrighted work is "wholly original," rather than mixed with unprotected elements,
a lower quantity of copying will support a finding of substantial similarity. ... And that's where the defendant fell on his sword, because there was a lot of copying, admittedly, and the judge's feeling was that it went over the quantitative line of what is acceptable under the law, even for a lexicon, particularly with respect to the companion books Rowling produced, not so much with the novels: The quantitative extent of the Lexicon's copying is even more substantial with
respect to Fantastic Beasts and Quidditch Through the Ages. Rowling's companion
books are only fifty-nine and fifty-six pages long, respectively. The Lexicon reproduces
a substantial portion of their content, with only sporadic omissions, across hundreds of
entries. Does that mean if he had done a lexicon of just the novels, not the companion books, if might have passed muster? Maybe, particularly if it didn't include so much copying and if instead of quoting or closely paraphrasing the author the lexicon author did his own original writing. What made this case so difficult is that while a lexicon is a compilation of facts, and you can't copyright facts, Rowling's books are invented facts, hence original and inventive. So a compilation of her invented facts isn't the same as a compilation of facts about World War I or Elvis, or any other actual event or person. Rowling has sent a very clear message that she wants her stuff left alone. And the law, the judge points out, presumes that her original expression is entitled to protection up to a point. What about fair use, though? Surely a lexicon is a transformative work. The defendant raised that defense, arguing that the ruling in an earlier case about a book of trivia from the Seinfeld TV series didn't apply here, because unlike in the Seinfeld case, there is no substantial similarity here. A lexicon isn't a novel. And the copied facts about the novels were not in the same order, for example. The judge didn't buy that argument: Reproducing original expression in fragments or in a different order, however, does not preclude a finding of substantial similarity. The law doesn't care what order the copying is in, if there is substantial copying in any order, it won't fly, and this is why the judge found it crossed the line: Notwithstanding the dissimilarity in the overall structure of the Lexicon and the
original works, some of the Lexicon entries contain summaries of certain scenes or key
events in the Harry Potter series, as stated in the Findings of Fact. These passages, in
effect, retell small portions of the novels, though without the same dramatic effect. In
addition, the entries for Harry Potter and Lord Voldemort give a skeleton of the major
plot elements of the Harry Potter series, again without the same dramatic effect or
structure. Together these portions of the Lexicon support a finding of substantial similarity. To be sure, this case is different from Twin Peaks, where forty-six pages of
the third chapter of a guidebook to the Twin Peaks television series were found to
constitute "essentially a detailed recounting of the first eight episodes of the series.
Every intricate plot twist and element of character development appear[ed] in the Book in
the same sequence as in the teleplays." 996 F.2d at 1372-73 (supporting the Second
Circuit's finding of comprehensive nonliteral similarity). Those "plot summaries" were
far more detailed, comprehensive, and parallel to the original episodes than the so-called
"plot summaries" in this case. Nonetheless, it is clear that the plotlines and scenes
encapsulated in the Lexicon are appropriated from the original copyrighted works. See
Paramount Pictures, F. Supp. 2d at 334 (noting that Twin Peaks was distinguishable but
nonetheless applying its broader holding that "a book which tells the story of a
copyrighted television series infringes on its copyright"). Under these circumstances,
Plaintiffs have established a prima facie case of infringement.
But then there was another element, derivative work. Was the Lexicon a derivative work? Copyright owners have certain rights over derivative works. If you write a book that consists of annotations, revisions, modifications, and elaborations, it is a derivative work, the court explained. It's not derivative automatically, the ruling continued, just because it's based upon a preexisting work, because a parody will pass even though it is based on a preexisting work. The overarching concept is to protect the author's right to transform the work into a new medium. If a writer wants to turn her novel into a play or a movie, that right is hers. You'll notice in the news today that there is a new lawsuit filed alleging that Steven Spielberg failed to get permission to use the short story on which Rear Window was based and which he is alleged to have used for Disturbia, for example. But a lexicon isn't a movie or a play. It's a completely different thing. But here, once again, the substantial amount of copying was the elephant in the room, and Plaintiffs made that point:
Plaintiffs argue that based on the Twin Peaks decision "companion guides
constitute derivative works where, as is the case here, they 'contain a substantial amount
of material from [the underlying work.'"
But this judge disagreed: By condensing, synthesizing, and
reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does not
recast the material in another medium to retell the story of Harry Potter, but instead gives
the copyrighted material another purpose. That purpose is to give the reader a ready
understanding of individual elements in the elaborate world of Harry Potter that appear in
voluminous and diverse sources. As a result, the Lexicon no longer "represents [the]
original work[s] of authorship." 17 U.S.C. § 101. Under these circumstances, and
because the Lexicon does not fall under any example of derivative works listed in the
statute, Plaintiffs have failed to show that the Lexicon is a derivative work. He also ruled it was not an unauthorized abridgement, as claimed by plaintiffs. But what about fair use? Without it, there can be a real stifling of the incentive to create secondary works. And lexicons are valuable. So how does a court decide which matters most, the original author's monopoly rights, which the law views as also a public benefit if it provides an incentive to authors to publish, or the public's interest in having secondary works? Copyright law's goal is 'promoting the
Progress of Science and useful Arts,' according to the US Constitution, so which competing interest works to accomplish that best in a fair use analysis of this case? And that's where the concept of transformative use comes in. If it's transformative, it adds something new, and the public benefits from the new work, which can add value to the original. Here's how this court reasoned: The purpose of the Lexicon's use of the Harry Potter series is transformative.
Presumably, Rowling created the Harry Potter series for the expressive purpose of telling
an entertaining and thought provoking story centered on the character Harry Potter and
set in a magical world. The Lexicon, on the other hand, uses material from the series for
the practical purpose of making information about the intricate world of Harry Potter
readily accessible to readers in a reference guide. To fulfill this function, the Lexicon
identifies more than 2,400 elements from the Harry Potter world, extracts and synthesizes
fictional facts related to each element from all seven novels, and presents that information
in a format that allows readers to access it quickly as they make their way through the
series. Because it serves these reference purposes, rather than the entertainment or
aesthetic purposes of the original works, the Lexicon's use is transformative and does not
supplant the objects of the Harry Potter works. That is talking about the novels. But Rowling does companion books too, a kind of lexicon of her own. And there the transformative issue was less obvious:Although the Lexicon does not use the
companion books for their entertainment purpose, it supplants the informational purpose
of the original works by seeking to relate the same fictional facts in the same way. Even
so, the Lexicon's use is slightly transformative in that it adds a productive purpose to the
original material by synthesizing it within a complete reference guide that refers readers
to where information can be found in a diversity of sources.
The best evidence of the Lexicon's transformative purpose is its demonstrated
value as a reference source.... The utility of the Lexicon, as a reference guide to a multi-volume work of
fantasy literature, demonstrates a productive use for a different purpose than the original
works. After all, Rowling herself said she used the website as a resource, so she can hardly argue effectively that the work isn't transformative, since if it weren't, she wouldn't need to use it to check a fact. She could just check her companion books. The Lexicon occasionally does offer
"new information, new aesthetics, new insights and understandings," the judge wrote, quoting from the standard in Castle Rock. However, its transformative character is diminished by inconsistency. And the massive copyright came into play there: A finding of verbatim copying in excess of what is
reasonably necessary diminishes a finding of a transformative use.... Perhaps because Vander Ark is such a Harry Potter enthusiast, the
Lexicon often lacks restraint in using Rowling's original expression for its inherent
entertainment and aesthetic value. Then there was the issue of commercial or noncommercial use. The website was free. The book was intended as a commercial venture. The general underlying concept is that the author of a creative work gets to make the money; significant commercial exploitation by others will be blocked by the courts. Fair use is supposed to be about the public's interest, not your pocketbook's. Here, the judge found that it counted only a little against the defendant, though, because he'd already determined that the lexicon would be of value to the public. But it did count some that it hoped to be the first in the market with such a lexicon, and the author herself had said she wanted to do one herself. The plaintiffs also argued bad faith and willfulness, but the judge wasn't persuaded. The defendant, he decided, had a reasonaable belief that the use was fair. But what about the balance between how much was copied and the benefits of a transformative use?
In undertaking this inquiry, the Court bears in mind that "room must be allowed
for judgment, and judges must not police criticism," or other transformative uses, "with a
heavy hand." Chicago Bd. of Educ.... Obviously, a Lexicon has to use the original work quite a bit to be useful as a reference work, but the court felt that "there are a number of places where the
Lexicon engages in the same sort of extensive borrowing that might be expected of a
copyright owner, not a third party author". And you don't lose your copyright rights just because your work is wildly popular, the court points out. It reminds me of something Dylan said once,
"Just because you like my stuff doesn't mean I owe you anything".
The 4th fair use factor is market harm. This was a biggie. "Plaintiffs presented expert testimony that the Lexicon would compete directly
with, and impair the sales of, Rowling's planned encyclopedia by being first to market." However, the judge noted that case law doesn't necessarily give her that exclusive right. She doesn't get to be first, if a sufficiently transformative work gets published first: Notwithstanding
Rowling's public statements of her intention to publish her own encyclopedia, the market
for reference guides to the Harry Potter works is not exclusively hers to exploit or license,
no matter the commercial success attributable to the popularity of the original works. See
Twin Peaks, 996 F.2d at 1377 ("The author of 'Twin Peaks' cannot preserve for itself the
entire field of publishable works that wish to cash in on the 'Twin Peaks' phenomenon").
The market for reference guides does not become derivative simply because the copyright
holder seeks to produce or license one. I expect that sentence I've highlighted was a disappointment to Rowling. But US law allows for fair use. You can't prevent fair use here.
But was the Lexicon fair use or not? An expert testified that the Lexicon would diminish demand for the books, because they reveal key plot lines without any spoiler warnings. But the judge disagreed. Kids would read them both for different reasons. But not the companion books. There it could indeed interfere. Why would you buy the companion books when they are almost all in the Lexicon? So summing up the analysis of all the fair use factors, the judge found that this was not fair use:
The fair-use factors, weighed together in light of the purposes of copyright law,
fail to support the defense of fair use in this case. The first factor does not completely
weigh in favor of Defendant because although the Lexicon has a transformative purpose,
its actual use of the copyrighted works is not consistently transformative. Without
drawing a line at the amount of copyrighted material that is reasonably necessary to
create an A-to-Z reference guide, many portions of the Lexicon take more of the
copyrighted works than is reasonably necessary in relation to the Lexicon's purpose.
Thus, in balancing the first and third factors, the balance is tipped against a finding of fair
use. The creative nature of the copyrighted works and the harm to the market for
Rowling's companion books weigh in favor of Plaintiffs. In striking the balance between
the property rights of original authors and the freedom of expression of secondary
authors, reference guides to works of literature should generally be encouraged by
copyright law as they provide a benefit readers and students; but to borrow from
Rowling's overstated views, they should not be permitted to "plunder" the works of
original authors (Tr. (Rowling) at 62:25-63:3), "without paying the customary price"
Harper & Row, 471 U.S. at 562, lest original authors lose incentive to create new works
that will also benefit the public interest (see Tr. (Rowling) at 93:20-94:13).
In this instance, Rowling testified that she was disheartened by the Lexicon, and she wouldn't have the incentive to write her own if the market became filled with what she viewed as substandard encyclopedias of her works. Also, the charity would lose expected royalties, if she couldn't protect her own version of a lexicon. If this lexicon was permitted, others would follow. The judge took that seriously as a factor, but it was not the winning factor. It was the copying, the extent of it:Ultimately, because
the Lexicon appropriates too much of Rowling's creative work for its purposes as a
reference guide, a permanent injunction must issue to prevent the possible proliferation of works that do the same and thus deplete the incentive for original authors to create new
works. As for damages, the court awarded the statutory minimum. First, the Lexicon hadn't been published yet, so there was no harm beyond the infringement. So, that meant $750.00 for each of the seven Harry Potter novels and
each of the two companion books, for a total of $6,750.00. I can't have an opinion, since I haven't read either work and so can't judge the amount of copying, but I think it's clear that the judge put forth the effort to really try to get it right and to balance fairly everyone's interests, as defined by Copyright and case law.
Update: The lawyer who represented RDR, the defendant, has now offered a statement which you can find in Mark Hamblett's New York Law Journal article on Law.com:
Hammer, who represented RDR Books, said the decision was thoughtful and well crafted.
"I'm sorry about the result, that the lexicon was not found to be sufficiently transformative," Hammer said. "But I am happy the judge endorsed the genre of reference works and companion books as valuable and important and that authors don't have an automatic right to control what's written about their works."
That's pretty much what I got from the ruling too, and I'm gratified to see that my assessment is on the mark.
************************
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
----------------------------------------------X
WARNER BROS. ENTERTAINMENT INC. and
J.K. ROWLING,
Plaintiffs,
-against-
RDR BOOKS and DOES 1-10,
Defendants.
07 Civ. 9667 (RPP)
OPINION & ORDER
----------------------------------------------X
ROBERT P. PATTERSON, JR., U.S.D.J.
On October 31, 2007, Plaintiffs Warner Bros. Entertainment Inc. and J.K.
Rowling commenced this action against Defendant RDR Books, alleging copyright
infringement pursuant to 17 U.S.C. §§ 101 et seq., as well as several other federal and
state claims, and seeking both injunctive relief and damages. By order dated March 5,
2008, the Court consolidated the scheduled evidentiary hearing on Plaintiffs' motion for a
preliminary injunction
with a trial on the merits pursuant to Federal Rule of Civil
Procedure 65(a)(2). By their pretrial orders, the parties narrowed the claims and defenses
to be tried: Plaintiffs pursued only their claims for copyright infringement and statutory
damages under 17 U.S.C. §§ 101 et seq. of the Copyright Act; Defendant pursued only its
defenses and affirmative defenses of copyright fair use under 17 U.S.C. § 107, copyright
misuse, and unclean hands. The Court held a bench trial on the merits from April 14,
2008 to April 17, 2008. This opinion constitutes the Court's findings of fact and
conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).
FINDINGS OF FACT
I. The Copyrighted Works
Plaintiff J.K. Rowling ("Rowling") is the author of the highly acclaimed Harry
Potter book series. (Tr. (Rowling) at 43:6-7, 47:17-20; Pl. Ex. 25 (Rowling Decl.) at ¶1.)
Written for children but enjoyed by children and adults alike, the Harry Potter series
chronicles the lives and adventures of Harry Potter and his friends as they come of age at
the Hogwarts School of Witchcraft and Wizardry and face the evil Lord Voldemort. (Pl.
Ex. 25 (Rowling Decl.) at ¶ 2.) It is a tale of a fictional world filled with magical spells,
fantastical creatures, and imaginary places and things. (Tr. (Vander Ark) at 346:1-6;
371:1-22; id. (Sorensen) at 513:6-14.)
Rowling published the first of seven books in the series, Harry Potter and the
Philosopher's Stone, in the United Kingdom in 1997. (Tr. (Rowling) at 46:12-16; id.
(Vander Ark) at 363:19-20.) In 1998, the first book was published in the United States as
Harry Potter and the Sorcerer's Stone. (Pl. Ex. 25 (Rowling Decl.) at ¶ 2.) Over the next
ten years, Rowling wrote and published the remaining six books in the Harry Potter series
(Id.): Harry Potter and the Chamber of Secrets (1998), Harry Potter and the Prisoner of
Azkaban (1999), Harry Potter and the Goblet of Fire (2000), Harry Potter and the Order
of the Phoenix (2003), and Harry Potter and the Half-Blood Prince (2005). (Pl. Exs. 5-9.)
The seventh and final book, Harry Potter and the Deathly Hallows was released on July
21, 2007. (Pl. Ex. 10). Rowling owns a United States copyright in each of the Harry
Potter books. (Pl. Ex. 12 (Blair Decl.) at ¶ 4; Pl. Ex. 12A; Tr. (Rowling) at 43:8-9.)
2
The Harry Potter series has achieved enormous popularity and phenomenal sales.
(Tr. (Murphy) at 432:20-433:3; id. (Harris) at 443:16-18). The books have won
numerous awards, including children's literary awards and the British Book Award. (Id.
(Rowling) at 47:17-20). Most gratifying to Rowling is that the Harry Potter series has
been credited with encouraging readership among children. (Id. (Rowling) at 103:8-22.)
As a result of the success of the Harry Potter books, Plaintiff Warner Bros.
Entertainment Inc. ("Warner Brothers") obtained from Rowling the exclusive film rights
to the entire seven-book Harry Potter series. (Pl. Ex. 26 (Williams Decl.) at ¶ 3.) Warner
Brothers is the exclusive distributor for worldwide distribution of these films. (Id. at ¶ 4.)
To date, Warner Brothers has released five Harry Potter films, and the sixth is scheduled
for a worldwide release in November 2008. (Id. at ¶¶ 3, 4.) Each of the Harry Potter
films is the subject of a copyright registration. (Id. at ¶ 3.) Warner Brothers licensed
certain rights to Electronic Arts to create video games based on the Harry Potter books
and films, which included a series of "Famous Wizard Cards" that Rowling created and
which are the subject of U.S. copyright registrations jointly owned by Warner Brothers
and Electronic Arts. (Tr. (Rowling) at 76:15-17; Pl. Post-trial Br., Ex. B.)
Early on in the publication of the Harry Potter series, Rowling wrote a short series
of fictional newspapers entitled "The Daily Prophet," which were published and
distributed to fans in the United Kingdom. (Tr. (Rowling) at 73:17-74:1.) Rowling owns
a U.K. copyright in "The Daily Prophet" newsletters. (Tr. (Rowling) at 74:6-7; see Pl.
Post-trial Br., Ex. A.)
In addition, Rowling wrote two short companion books to the Harry Potter series
(the "companion books"), the royalties from which she donated to the charity Comic
3
Relief. (Tr. (Rowling) at 49:12-50:10.) The first, Quidditch Through the Ages (2001),
recounts the history and development of "quidditch," an imaginary sport featured in the
Harry Potter series that involves teams of witches and wizards on flying broomsticks.
(Pl. Ex. 2.) The second, Fantastic Beasts & Where to Find Them (2001), is an A-to-Z
encyclopedia of the imaginary beasts and beings that exist in Harry Potter's fictional
world. (Pl. Ex. 3.) Both appear in the Harry Potter series as textbooks that the students at
Hogwarts use in their studies, and the companion books are marketed as such. Neither of
the companion books is written in narrative form; instead each book chronicles and
expands on the fictional facts that unfold in the Harry Potter series. (Tr. (Vander Ark) at
396:21-25; see Pl. Exs. 2-3.) The companion books are both registered with the United
States Copyright Office. (Pl. Ex. 12 (Blair Decl.) at ¶ 4.) Although the market for the
companion books is not nearly as large as the market for the Harry Potter series,
Rowling's companion books have earned more than $30 million to date. (Tr. (Rowling)
at 49:25-50:10; Pl. Ex. 25 (Rowling Decl.) at ¶ 6; Pl. Ex. 12 (Blair Decl.) at ¶ 3.)
Rowling has stated on a number of occasions since 1998 that, in addition to the
two companion books, she plans to publish a "Harry Potter encyclopedia" after the
completion of the series and again donate the proceeds to charity. (Tr. (Rowling) at
50:25-51: 15, 55: 1-5; Pl. Ex. 25 (Rowling Decl.) at ¶ 6; Pl. Ex. 12 (Blair Decl.) at ¶ 17.)
Rowling intends that her encyclopedia contain alphabetical entries for the various people,
places and things from the Harry Potter novels. (Tr. (Rowling) at 53:11-13.) While she
intends to add new material as well, her encyclopedia is expected to reflect all of the
information in the Harry Potter series. (Tr. (Vander Ark) at 387:20-388:16; Pl. Ex. 25
(Rowling Decl.) at ¶ 7; Pl. Ex. 32 (Suppl. Rowling Decl.) at ¶ 5.)
4
Rowling already has begun preparations for work on the encyclopedia by
assembling her materials and requesting from her U.K. publisher its "bible" of Harry
Potter materials. (Tr. (Rowling) at 52:1-24.) The publisher's "bible" is a catalogue of the
people, places, and things from the Harry Potter books. (Pl. Ex. 23 (Odedina Decl.) ¶ 2;
Pl. Ex. 23A.) Rowling's U.S. publisher has compiled a similar catalogue of elements
from the Harry Potter books which Rowling has requested and intends to draw on in
creating her encyclopedia. (Tr. (Rowling) at 52:25-53:10; Pl. Ex. 25 (Rowling Decl.) at ¶
7; Pl. Ex. 18 (Klein Decl.) at ¶¶ 2-3; Pl. Ex. 18A.) Rowling plans on using an A-to-Z
format for her encyclopedia. (Tr. (Rowling) at 53:11-13.)
II. The Allegedly Infringing Work
Defendant RDR Books is a Michigan-based publishing company that seeks to
publish a book entitled "The Lexicon," the subject of this lawsuit. (Tr. (Rapoport) at
150:19-151:2.) Steven Vander Ark, a former library media specialist at a middle school
in Michigan (Tr. (Vander Ark) at 248:4-6), is the attributed author of the Lexicon (Def.
Ex. 502 (Vander Ark Decl.) at ¶ 1). He is also the originator, owner, and operator of
"The Harry Potter Lexicon" website (id.), a popular Harry Potter fan site from which the
content of the Lexicon is drawn (id. at ¶ 30).
A. The Origins of the Lexicon
An immediate fan of the Harry Potter novels, Vander Ark began taking personal
notes to keep track of the details and elements that unfold in the Harry Potter world while
reading the second book in the series in 1999. (Tr. (Vander Ark) at 335:2-17.) After
joining an online discussion group about the Harry Potter books, Vander Ark expanded
5
his notes to include descriptive lists of the spells, characters, and fictional objects in
Harry Potter to share with fellow fans. (Id. at 335:20-336:9.) These lists included brief
descriptions or definitions of the terms. (Id. at 336:8-11.)
Vander Ark began work on his website, "The Harry Potter Lexicon" (the
"website" or "Lexicon website"), in 1999 and opened the website in 2000. (Id. at
336:23.) His purpose in establishing the website was to create an encyclopedia that
collected and organized information from the Harry Potter books in one central source for
fans to use for reference. (Id. at 338:6-21; Def. Ex. 502 (Vander Ark Decl.) at ¶ 13.) At
its launch, the website featured Vander Ark's descriptive lists of spells, characters,
creatures, and magical items from Harry Potter with hyperlinks to cross-referenced
entries. (Tr. (Vander Ark) at 337:7-10, 336:4-7.) In response to feedback from users of
the website, Vander Ark developed an A-to-Z index to each list to allow users to search
for entries alphabetically. (Id. at 343:2-21.)
The website presently features several indexed lists of people, places, and things
from Harry Potter, including the "Encyclopedia of Spells," "Encyclopedia of Potions,"
"Wizards, Witches, and Beings," "The Bestiary," and "Gazetteer of the Wizarding
World." (Pl. Exs. 14 (Bradley Decl.) at ¶ 5, 14C.) In addition to these reference features,
the website contains a variety of supplemental material pertaining to Harry Potter,
including fan art, commentary, essays, timelines, forums, and interactive data. (Pl. Exs.
14 (Bradley Decl.) at ¶ 3, 14A.) The website is currently run by a staff of seven or eight
volunteers, including four primary editors (Tr. (Vander Ark) at 340:14-16), all of whom
were recruited to help update and expand the website's content after the publication of
the fifth book in the Harry Potter series. (Id. at 339:18-340:24.) The website uses
6
minimal advertising to offset the costs of operation. (Id. at 349:24-350:10.) Use of the
website is free and unrestricted. (Id. at 293:8-12; 351:25-352:4.)
The content of the encyclopedia entries on the Lexicon website is drawn primarily
from the Harry Potter series, the companion books, "The Daily Prophet" newsletters, the
"Famous Wizard Cards," and published interviews of Rowling. (Tr. (Vander Ark) at
348:7-13; Def. Ex. 502 (Vander Ark Decl.) at ¶ 14). According to Vander Ark, some
additional content is drawn from outside reference sources, including Bullfinch's
Mythology, Field Guide to Little People, New Shorter Oxford English Dictionary, and
online encyclopedias such as Encyclopedia Mythica. (Tr. (Vander Ark) at 346:12-
348:19; Def. Ex. 502 (Vander Ark Decl.) at ¶ 14.) Frequently, these sources are not cited
in the website's encyclopedia entries. Vander Ark's purpose in including additional
information from outside sources or from his own knowledge was to enrich the
experience of readers of the Harry Potter series by illuminating "the incredibly rich world
and hidden meanings" contained within them. (Tr. (Vander Ark) at 345:21-346:6.)
Vander Ark has received positive feedback, including from Rowling and her
publishers, about the value of the Lexicon website as a reference source. In May 2004,
Vander Ark read a remark by Rowling posted on her website praising his Lexicon
website as follows: "This is such a great site that I have been known to sneak into an
internet café while out writing and check a fact rather than go into a bookshop and buy a
copy of Harry Potter (which is embarrassing). A website for the dangerously obsessive;
my natural home." (Tr. (Rowling) at 118:2-119:2). In July 2005, Vander Ark received a
note from Cheryl Klein, a Senior Editor at Scholastic Inc., American publisher of the
Harry Potter series, thanking him and his staff "for the wonderful resource [his] site
7
provides for fans, students, and indeed editors & copyeditors of the Harry Potter series,"
who "referred to the Lexicon countless times during the editing of [the sixth book in the
series], whether to verify a fact, check a timeline, or get a chapter & book reference for a
particular event." (Def. Ex. 502 (Vander Ark Decl.) at ¶ 39; Def. Ex. 502A.) In
September 2006, Vander Ark was invited by Warner Brothers to the set of the film The
Order of the Phoenix, where he met David Heyman, the producer of all the Harry Potter
films. Heyman told Vander Ark that Warner Brothers used the Lexicon website almost
every day.2(Tr. 386:8-20; Def. Ex. 502 (Vander Ark Decl.) ¶ 39.) Finally, in July 2007,
Vander Ark visited the studios of Electronic Arts, the licensed producer of the Harry
Potter video games, where he observed printed pages from the Lexicon covering the
walls of the studio. (Tr. at 387:3-13; Def. Ex. 502 (Vander Ark Decl.) ¶ 39.)
Prior to any discussions with RDR Books about publishing portions of the
Lexicon website as a book, Vander Ark was aware of Rowling's public statements
regarding her intention to write a Harry Potter encyclopedia upon completion of the
seventh book in the series. (Tr. (Vander Ark) at 247:10-12, 250:21-251:13; Def. Ex. 502
at ¶ 37.) In June 2007, just before the release of the seventh book, Vander Ark emailed
Christopher Little Literary Agency, Rowling's literary agent in the United Kingdom, and
suggested that he would be "a good candidate for work as an editor, given [his] work on
the Lexicon," should Rowling start working on an encyclopedia or other reference to the
Harry Potter series. (Pl. Ex. 12C.) The literary agency advised him that Rowling
8
intended to work alone and did not require a collaborator. (Tr. (Vander Ark) at 250:14-20; Pl. Ex. 12 (Blair Decl.) at ¶ 12; Pl. Ex. 12C.)
B. RDR Books' Acquisition and Marketing of the Lexicon
Roger Rapoport is the president of Defendant RDR Books. Rapoport learned of
Vander Ark and the Lexicon website when he read an article in his local newspaper dated
July 23, 2007, profiling Vander Ark as a well known figure within the Harry Potter fan
community and the proprietor of the Lexicon website who "holds the key to all things
' Harry Potter.'" (Tr. (Rapoport) at 153:2-154:15; Pl. Ex. 77.) Recognizing a publishing
opportunity, Rapoport contacted Vander Ark on August 6, 2007 about the possibility of
publishing a Harry Potter encyclopedia based on some of the materials from the Lexicon
website. (Tr. (Vander Ark) at 357:10-19.) Rapoport denies seeing any coverage by
national news outlets of Rowling's appearance on NBC's Today Show on July 25, 2007
(Tr. (Rapoport) at 156:10-158:4), where Rowling stated that she intended to write a Harry
Potter encyclopedia. (Def. Ex. 506a; Tr. (Rapoport) at 155:20-156:5.)
At his first meeting with Rapoport in August 2007, Vander Ark raised his
concerns regarding the permissibility of publishing the Lexicon in view of Rowling's
plan to publish an encyclopedia and her copyrights in the Harry Potter books. (Tr.
(Vander Ark) at 251:14-22, 358:2-4). Prior to August 2007, Vander Ark had developed
and circulated the opinion that publishing "any book that is a guide to [the Harry Potter]
world" would be a violation of Rowling's intellectual property rights. (Pl. Ex. 20 (Lares
Decl.) at ¶ 3, Pl. Ex. 21 (Lawliss Decl.) at ¶ 3); see also Tr. (Vander Ark) at 251:20-22.)
Vander Ark had even stated on a public internet newsgroup that he would not publish the
Lexicon "in any form except online" without permission because Rowling, not he, was
9
"entitled to that market." (Pl. Ex. 27 (Blumsack Corrected Supp. Decl.) at ¶ 12; Pl. Ex.
27G). Vander Ark changed his mind about publishing the Lexicon after Rapoport
reassured him that he had looked into the legal issue and determined that publication of
content from the Lexicon website in book form was legal. (Tr. (Vander Ark) at 357:10-359:5.) Rapoport agreed to stand by this opinion by adding an atypical clause to the
publishing contract providing that RDR would defend and indemnify Vander Ark in the
event of any lawsuits. (Tr. (Vander Ark) 359:6-10, 360:8-21; Def. Ex. 502 (Vander Ark
Decl.) at ¶ 28; Pl. Ex. 14J.)
Rapoport and Vander Ark agreed that the content of the book would be limited to
the encyclopedia sections of the Lexicon website that presented descriptions of the
persons, places, spells, and creatures from the Harry Potter works. (Tr. (Vander Ark) at
359:14-21; Def. Ex. 502 (Vander Ark Decl.) at ¶ 28.) They conceived of the book as an
encyclopedia organized in the A-to-Z format, rather than by topic as the Lexicon website
is organized, to allow the user to find information as quickly as possible. (Tr. (Vander
Ark) at 366:25-367:24.) The idea was to publish the first complete guide to the Harry
Potter series that included information from the seventh and final Harry Potter novel. (Id.
at 361:12-24.) Vander Ark believed that there was an advantage to being the first
reference guide on the market to cover all seven Harry Potter books. (Id. at 255:7-14,
361:9-15). He also believed that by virtue of it completeness, the Lexicon would be most
useful for the purpose it sought to serve, namely helping readers and fans to find
information from the Harry Potter novels. (Id. at 361:17-362:6.)
RDR Books intended to have a manuscript of the Lexicon completed within two-to-three weeks of execution of the publishing contract. (Tr. (Vander Ark) at 255:15-18.)
10
The plan was to rush the book to market by late-October 2007, in part, to capitalize on
the interest generated by the last Harry Potter book and the surge in sales during the
holiday season. (Tr. (Rapoport) at 165:14-165:21, 167:10-17.) RDR Books initially
planned a print-run of 10,000 copies of the Lexicon, but would undertake subsequent
print-runs if the book was successful. (Tr. at (Rapoport) 238:22-239:20.)
Even before his initial meeting with Vander Ark, Rapoport began working to
secure foreign publishers for the proposed Lexicon project and had contacted Methuen
Publishing in the United Kingdom to gauge their interest in doing such a project. (Tr.
(Rapoport) at 160:18-161:18.) He marketed the Lexicon to foreign publishers, as well as
to U.S. bookstores and book sellers, as the "definitive" Harry Potter encyclopedia. (Tr.
(Rapoport) at 160:18-161:15, 213:5-214:4; Tr. (Vander Ark) at 361:9-16; see also Pl.
Exs. 114, 117.) Some of Rapoport's marketing communications mischaracterized
Rowling's statements about the Lexicon website, giving the impression that she
supported the publication of the Lexicon book. (Tr. at (Rapoport) 175:2-176:5; Pl. Ex.
89.) One marketing flyer for the Lexicon prominently displayed Rowling's 2004
statement praising the Lexicon website. (Tr. (Rapoport) at 171:3-6; Pl. Ex. 14 (Bradley
Decl.) at ¶ 17; Pl. Ex. 22 (Murphy Decl.) at ¶ 15; Pl. Ex. 22A). As a result of Rapoport's
marketing efforts, RDR Books secured oral contracts with foreign publishers for rights to
the Lexicon in England, Canada, France, Australia, New Zealand, and China, and an
order from Borders bookstore in the United States. (Tr. (Rapoport) at 187:2-11; 240:15-241:4; Pl. Ex. 137).
11
C. Plaintiffs' Objections to Publication of the Lexicon
Rowling's literary agent, Neil Blair of the Christopher Little Literary Agency,
first learned of the Lexicon book when he saw an advertisement on
www.PublishersMarketplace.com announcing that RDR Books would be publishing the
Lexicon, scheduled for release in late October 2007. (Pl. Exs. 12 (Blair Decl.) at ¶ 14,
12D). On September 18, 2007, counsel for Rowling and Warner Brothers forwarded a
letter to Vander Ark by email, copying Rapoport, notifying them that the Lexicon
appeared to infringe Rowling's copyrights and requesting that RDR Books cease
publication of the book. (Tr. at (Rapoport) 190:7-13; Pl. Ex. 15 at ¶ 3). Rapoport replied
to Plaintiffs' counsel that he intended to study the various issues with RDR Books' legal
advisers (Pl. Ex. 15 (Cendali Decl.) at ¶ 5) and that his work had been interrupted by
personal circumstances (id. ¶ 7). Meanwhile he continued to market the Lexicon book
domestically and abroad. (Tr. (Rapoport) at 193:2-25, 194:4-14, 208:3-17; Pl. Exs. 110-130, 133-140.)
On October 3, 2007, after receiving no substantive response from RDR Books,
Plaintiffs' counsel wrote again to Rapoport emphasizing their clients' concerns and
asking for a prompt substantive response. (Pl. Ex. 15 (Cendali Decl.) at ¶ 6.) On
October 5, 2007, when pitching the Lexicon to a Brazilian publisher, Rapoport asked for
confirmation that the agent would not speak with the local publisher of the Harry Potter
novels about the Lexicon. (Pl. Ex. 120.) On October 8, 2007, despite having received a
cease-and-desist letter and a subsequent letter from Plaintiffs' counsel, Rapoport told a
German publisher who raised copyright concerns that a lawsuit was unlikely. (Tr.
(Rapoport) at 198:6-19; Pl. Ex. 121.)
12
On October 11, 2007, RDR Books sent the chairman of Warner Brothers a cease-and-desist letter claiming that Warner Brothers had violated Vander Ark's rights in the
"Hogwarts Timeline" of events from the Harry Potter novels that was featured on the
Lexicon website. (Pl. Ex. 14 (Bradley Decl.) at ¶ 12; Pl. Ex. 14H). RDR Books also
stated that it was seeking "tangible rewards" for Vander Ark in exchange for Warner
Brothers' purported use of the timeline as an extra feature of the DVD versions of the
first three Harry Potter films. (Id.) On October 19, 2007, Warner Brothers responded to
RDR Books' letter regarding the timeline with a request for a copy of the "print version"
of the Lexicon website referred to by RDR Books to aid its evaluation of any potential
claims. (Pl. Ex. 15 (Cendali Decl.) at ¶¶ 8-9). RDR Books refused, stating that Warner
Brothers could print the material from the Lexicon website. (Tr. (Rapoport) at 205:21-206:13; Pl. Ex. 15 (Cendali Decl.) at ¶ 9.)
On October 19 and 24, 2007, Plaintiffs' counsel sent two more letters to RDR
Books, asking for a substantive response to their clients' concerns regarding the Lexicon
and for confirmation that RDR Books would not publish the Lexicon until it attempted to
resolve the matter in good faith. (Pl. Ex. 15 (Cendali Decl.) at ¶¶ 9, 11.) RDR Books'
responses deflected the inquiries (id. ¶ 10) and stated that Plaintiffs' objections were
"unwarranted" (id. ¶ 12). On October 31, 2007, Plaintiffs called Rapoport to offer a last
chance to agree to cease publication, or at least delay publication, and to provide
Plaintiffs with a copy of the manuscript and proposed cover, in effort to resolve the
matter. (Id. ¶ 13.) RDR refused to delay publication and refused to provide a copy of the
manuscript. (Id.) Plaintiffs filed suit on October 31, 2007, at which time they also moved
by order to show cause for a preliminary injunction. (Id. ¶ 13; Compl.)
13
Since the filing of this lawsuit, RDR Books has revised the front and back covers
of the Lexicon. Specifically, RDR Books removed the quotation of Rowling's 2004
statement about her use of the Lexicon website from the back cover of the Lexicon after
Plaintiffs presented a survey in this litigation demonstrating that 38% of respondents
believed that the appearance of the quote on the proposed book cover meant that Rowling
endorsed the book. (Tr. (Rapoport) at 237:6-13; Pl. Ex. 13C (Blumsack Decl.); Pl. Ex. 16
(Helfgott Decl.) at ¶ 2). RDR Books changed the title from "The Harry Potter Lexicon"
to "The Lexicon: An Unauthorized Guide to Harry Potter Fiction and Related Materials."
Additionally, the final revision of the front cover of the Lexicon displays the following
disclaimer:
Harry Potter and the names of fictitious people and places in the Harry
Potter novels are trademarks of Warner Bros. Entertainment, Inc. This
book is not written, prepared, approved, or licensed by Warner Bros.
Entertainment, Inc., Scholastic Corporation, Raincoast Books,
Bloomsbury Publishing Plc, or J.K. Rowling, nor is the author, his staff
members, www.HP-Lexicon.org or the publisher in any way affiliated
with Warner Bros. Entertainment, Inc., Scholastic Corporation, Raincoast
Books, Bloomsbury Publishing Plc, J.K. Rowling, or any other person or
company claiming an interest in the Harry Potter works.
(Def. Ex. 501a.) RDR Books maintains, however, that the original cover was truthful and
did not infringe any rights of Plaintiffs. (Def. Ex. 501 (Rapoport Decl.) at ¶ 6.)
D. The Content of the Lexicon
The Lexicon is an A-to-Z guide to the creatures, characters, objects, events, and
places that exist in the world of Harry Potter. As received by the Court in evidence, the
Lexicon manuscript is more than 400 type-written pages long and contains 2,437 entries
organized alphabetically. The first few pages contain a list of abbreviations used
throughout the Lexicon to cite to the original sources of the material.
14
The Lexicon manuscript was created using the encyclopedia entries from the
Lexicon website. (Tr. (Vander Ark) at 365:1-5; Def. Ex. 502 (Vander Ark Decl.) ¶30.)
Because of space limitations for the printed work, which seeks to be complete but also
easy to use, about half of the material from the website was not included in the Lexicon
manuscript. (Tr. 365:1-11, 366:9-18; Def. Ex. 502 (Vander Ark Decl.) ¶¶ 30, 31, 33.)
The Lexicon itself makes clear that the only source of its content is the work of J.K.
Rowling. The first page of the Lexicon manuscript states: "All the information in the
Harry Potter Lexicon comes from J.K. Rowling, either in the novels, the 'schoolbooks,'
from her interviews, or from material which she developed or wrote herself." (Pl. Ex. 1
at 1). While Vander Ark claims that the Lexicon uses material from outside reference
sources, such as Bullfinch's Mythology, Field Guide to Little People, New Shorter
Oxford English Dictionary, and online encyclopedias (Tr. (Vander Ark) at 346:12-348:19; Def. Ex. 502 (Vander Ark Decl.) at ¶ 14), it is not possible to confirm this claim
because, aside from four dictionary citations, no other citations to third-party works
appear in the Lexicon. (Tr. (Vander Ark) at 295:13-296:13).
The Lexicon entries cull every item and character that appears in the Harry Potter
works, no matter if it plays a significant or insignificant role in the story. The entries
cover every spell (e.g., Expecto Patronum, Expelliarmus, and Incendio), potion (e.g.,
Love Potion, Felix Felicis, and Draught of Living Death), magical item or device (e.g.,
Deathly Hallows, Horcrux, Cloak of Invisibility), form of magic (e.g., Legilimency,
Occlumency, and the Dark Arts), creature (e.g., Blast-Ended Skrewt, Dementors, and
Blood-Sucking Bugbears), character (e.g., Harry Potter, Hagrid, and Lord Voldemort),
group or force (e.g., Aurors, Dumbledore's Army, Death Eaters), invented game (e.g.,
15
Quidditch), and imaginary place (e.g., Hogwarts School of Witchcraft and Wizardry,
Diagon Alley, and the Ministry of Magic) that appear in the Harry Potter works. The
Lexicon also contains entries for items that are not explicitly named in the Harry Potter
works but which Vander Ark has identified, such as medical magic, candle magic, wizard
space, wizard clothing, and remorse. Some of the entries describe places or things that
exist in the real world but also have a place in the Harry Potter works, such as moors,
Greece, and Cornwall.
Each entry, with the exception of the shortest ones, gathers and synthesizes pieces
of information relating to its subject that appear scattered across the Harry Potter novels,
the companion books, The Daily Prophet newsletters, Famous Wizard Cards, and
published interviews of Rowling. The types of information contained in the entries
include descriptions of the subject's attributes, role in the story, relationship to other
characters or things, and events involving the subject. Repositories of such information,
the entries seek to give as complete a picture as possible of each item or character in the
Harry Potter world, many of which appear only sporadically throughout the series or in
various sources of Harry Potter material.
The snippets of information in the entries are generally followed by citations in
parentheses that indicate where they were found within the corpus of the Harry Potter
works. The thoroughness of the Lexicon's citation, however, is not consistent; some
entries contain very few citations in relation to the amount material provided. (See, e.g.,
Pl. Ex. 1, entry for "Dumbledore, Albus Percival Wulfric Brian" (containing no citations
in a five-page entry); entry for "Granger, Hermione Jean" (containing no citations in a
three-page entry); entry for "Chamber of Secrets" (containing one citation for nearly two
16
pages of material); entry for "Crouch, Bartemius 'Barty', Sr." (containing one citation for
nearly a full page of material).) When the Lexicon cites to one of the seven Harry Potter
novels, the citation provides only the book and chapter number. Vander Ark explained
that page numbers were excluded from the citations because the various editions of the
Harry Potter books have different pagination, but the chapter numbers remain consistent.
(Tr. (Vander Ark) at 277:19-278:1.) The Lexicon neither assigns a letter to each edition
nor specifies a standard edition while providing a conversion table for other editions,
practices which Plaintiffs' expert Jeri Johnson testified were common for reference
guides. (Tr. (Johnson) at 594:11-16, 594:20-595:3.)
While not its primary purpose, the Lexicon includes commentary and background
information from outside knowledge on occasion. For example, the Lexicon contains
sporadic etymological references, (e.g., Pl. Ex. 1, entries for "Colloportus," "Lupin,
Remus," "Alohamora," "Fidelius Charm"), analogies to characters outside the Harry
Potter world such as Merlin, and observations of Rowling's allusions to other works of
literature such as "the weird sisters" from Shakespeare's Macbeth. The Lexicon also
points to the very few "flints," or errors in the continuity of the story, that appear in the
Harry Potter series. (See Tr. (Vander Ark) at 297:15-298:4.)
While there was considerable opining at trial as to the type of reference work the
Lexicon purports to be and whether it qualifies as such (no doubt in part due to its title),
the Lexicon fits in the narrow genre of non-fiction reference guides to fictional works.
As Defendant's expert testified, the Harry Potter series is a multi-volume work of fantasy
literature, similar to the works of J.R.R. Tolkien and C.S. Lewis. Such works lend
themselves to companion guides or reference works because they reveal an elaborate
17
imaginary world over thousands of pages, involving many characters, creatures, and
magical objects that appear and reappear across thousands of pages. (Tr. (Sorensen) at
504:16-23; id. at 507:1-5 (testifying that she found 19 or 20 companion guides to J.R.R.
Tolkien's works, and about 15 guides to C.S. Lewis's works).) Fantasy literature spawns
books having a wide variety of purposes and formats, as demonstrated by the books about
Harry Potter that Plaintiffs entered into evidence. (Pl. Exs. 73, 74, 75, 192; 13E-13G.)
The Lexicon, an A-to-Z guide which synthesizes information from the series and
generally provides citations for location of that information rather than offering
commentary, is most comparable to the comprehensive work of Paul F. Ford, Companion
to Narnia: A Complete Guide to the Magical World of C.S. Lewis's The Chronicles of
Narnia (Pl. Ex. 62), or the unauthorized A-to-Z guide by George W. Beahm, Fact,
Fiction, and Folklore in Harry Potter's World: An Unofficial Guide (Pl. Ex. 192).
At trial, Rowling testified that the Lexicon took "all the highlights of [her] work,
in other words [her] characters' secret history, the jokes certainly, certain exciting
narrative twists, all the things that are the highlights of [her] stories." (Tr. (Rowling) at
647:6-10). She compared this taking of her work to plundering all of the "plums in [her]
cake." (Tr. (Rowling) at 647:3-6). At trial, the testimony of Rowling and the expert
opinion of Johnson focused at length on the Lexicon's verbatim copying of language
from the Harry Potter works. Johnson testified that in particular, entries that deal with
invented terms, creatures, places and things from the Harry Potter books use "again and
18
again the specific, very colorful, idiosyncratic . . . nouns and phrases of Ms. Rowling."
(Tr. (Johnson) at 619:7-9.)
Although it is difficult to quantify how much of the language in the Lexicon is
directly lifted from the Harry Potter novels and companion books,5 the Lexicon indeed
contains at least a troubling amount of direct quotation or close paraphrasing of
Rowling's original language.6 The Lexicon occasionally uses quotation marks to indicate
Rowling's language, but more often the original language is copied without quotation
marks, often making it difficult to know which words are Rowling's and which are
Vander Ark's. (Tr. (Rowling) at 57:6-15, 58:24-59:12, 59:19-60:2; Tr. (Johnson) at
619:3-12.)
For example, in the entry for "armor, goblin made," the Lexicon uses Rowling's
poetic language nearly verbatim without quotation marks.7 The original language from
Harry Potter and the Deathly Hallows reads:
"Muggle-borns," he said. "Goblin-made armour does not require
cleaning, simple girl. Goblins' silver repels mundane dirt, imbibing only
that which strengthens it."
(Pl. Ex. 10 at 303.)8 The Lexicon entry for "armor, goblin made" reads in its
entirety:
19
Some armor in the wizarding world is made by goblins, and it is
quite valuable. (e.g., HBP20) According to Phineas Nigellus, goblin-made
armor does not require cleaning, because goblins' silver repels mundane
dirt, imbibing only that which strengthens it, such as basilisk venom. In
this context, "armor" also includes blades such as swords.
Although the Lexicon entry introduces Rowling's language with the phrase, "According
to Phineas Nigellus," it does not use quotation marks.
The Lexicon entry for "Dementors" reproduces Rowling's vivid description of
this creature sometimes using quotation marks and sometimes quoting or closely
paraphrasing without indicating which language is original expression. The original
language appears in Chapters 5 and 10 of Harry Potter and the Prisoner of Azkaban as
follows:
. . . Its face was completely hidden beneath its hood. . . . There was a hand
protruding from the cloak and it was glistening, grayish, slimy-looking,
and scabbed, like something dead that had decayed in water. . . .
And then the thing beneath the hood, whatever it was, drew a long,
slow, rattling breath, as though it were trying to suck something more than
air from its surroundings.
***
"Dementors are among the foulest creatures to walk this earth.
They infest the darkest, filthiest places, they glory in decay and despair,
they drain peace, hope, and happiness out of the air around them. Even
Muggles feel their presence, though they can't see them. Get too near a
dementor and every good feeling, every happy memory will be sucked out
of you. If it can, the dementor will feed on you long enough to reduce you
to something like itself . . . soulless and evil. . . ."
(Pl. Ex. 6 at 83, 187.) The Lexicon entry for "Dementors" reads in its entirety:
Dementors are some of the most terrible creatures on earth, flying
tall black spectral humanoid things with flowing robes. They "infest the
darkest, filthiest places, they glory in decay and despair, they drain peace,
hope, and happiness out of the air around them," according to Lupin
(PA10). Dementors affect even Muggles, although Muggles can't see the
foul, black creatures. Dementors feed on positive human emotions; a
large crowd is like a feast to them. They drain a wizard of his power if left
20
with them too long. They were the guards at Azkaban and made that place
horrible indeed. The Ministry used Dementors as guards in its courtrooms
as well (GF30, DH13). There are certain defenses one can use against
Dementors, specifically the Patronus Charm. A Dementor's breath sounds
rattling and like it's trying to suck more than air out of a room. Its hands
are "glistening, grayish, slimy-looking, and scabbed". It exudes a biting,
soul-freezing cold (PA5).
Another example of verbatim copying and close paraphrase can be found in the
Lexicon entry for "Mirror of Erised." The original language from Harry Potter and the
Sorcerer's Stone reads:
It was a magnificent mirror, as high as the ceiling, with an ornate
gold frame, standing on two clawed feet. There was an inscription carved
around the top: Erised stra ehru oyt ube cafru oyt on wohsi.
***
. . . "It shows us nothing more or less than the deepest desire of our
hearts. You [ Harry Potter], who have never known your family, see them
standing around you. Ronald Weasley, who has always been
overshadowed by his brothers, sees himself standing alone, the best of all
of them. However, this mirror will give us neither knowledge or truth.
Men have wasted away before it, entranced by what they have seen, or
been driven mad, not knowing if what it shows is real or even possible."
(Pl. Ex. 4 at 207, 213). The first paragraph of the Lexicon entry reads:
A magnificent mirror, as high as a classroom ceiling, with an
ornate gold frame, standing on two clawed feet. The inscription carved
around the top reads "Erised stra ehru oyt ube cafru oyt on wohsi," which
is "I show you not your face but your heart's desire" written backwards
(that is, in what is called 'mirror writing'). When you look into the mirror
you see the deepest, most desperate desire of your heart. The mirror has
trapped people who can't bear to stop staring into it, unsure if what they
see is going to actually happen. Harry sees his family in the Mirror; Ron
sees himself as Head Boy and Quidditch champion (PS12).
The Lexicon entry for "Boggart" takes strands of dialogue from Harry Potter and
the Prisoner of Azkaban and closely paraphrases it in the third person. The original work
contains the following bits of dialogue:
"Boggarts like dark, enclosed spaces."
21
"It's a shape-shifter. . . . It can take the shape of whatever it thinks will
frighten us most."
"Nobody knows what a boggart looks like when he is alone, but when I let
him out, he will immediately become whatever each of us most fears."
(Pl. Ex. 6 at 133.) The Lexicon entry begins as follows:
A shape shifter that prefers to live in dark, confined spaces, taking the
form of the thing most feared by the person it encounters; nobody knows
what a boggart looks like in its natural state.
An example of particularly extensive direct quotation is found in the Lexicon
entry for "Trelawney, Sibyll Patricia," the professor of Divination at the Hogwarts School
who tells two important prophecies in the story. The Lexicon not only reproduces her
prophecies word-for-word in their entirety, but in doing so, reveals dramatic plot twists
and how they are resolved in the series. For example, the first prophecy reads:
"The one with the power to vanquish the Dark Lord approaches. .
. . Born to those who have thrice defied him, born as the seventh month
dies . . . and the Dark Lord will mark him as his equal, but he will have
power the Dark Lord knows not . . . and either must die at the hand of the
other for neither can live while the other survives. . . . The one with the
power to vanquish the Dark Lord will be born as the seventh month dies. .
. ."
(Pl. Ex. 8 at 841 (ellipses in original).) The Lexicon entry reproduces this prophecy
exactly but in italics and indented. (Pl. Ex. 1, entry for "Trelawney, Sibyll Patricia.")
The Lexicon entry continues by discussing what happens as a result of this prophecy:
"Severus Snape was eavesdropping on this conversation and he reported the first part of
the Prophecy to the Dark Lord. Voldemort immediately began searching for this threat,
and centered his attention on the child of Lily and James Potter. (OP 37)." The entry
then quotes the second prophecy, but without a citation to where it appears in the Harry
Potter series.
22
A number of Lexicon entries copy Rowling's artistic literary devices that
contribute to her distinctive craft as a writer. For example, the Lexicon entry for "brain
room," uses Rowling's evocative literary device in a very close paraphrase. The original
language from Harry Potter and the Order of the Phoenix reads:
For a moment it seemed suspended in midair, then it soared toward Ron,
spinning as it came, and what looked like ribbons of moving images flew
from it, unraveling like rolls of film.
(Pl. Ex. 8 at 798.) The Lexicon entry reads in part:
. . . When Summoned, the brains fly out of the tank, unspooling ribbons of
thought like strips of film, which wrap themselves around the Summoner
and cause quite a bit of damage (OP35). . . .
The Lexicon entry for "Clankers" copies a vivid simile created by Rowling and
reproduces a thought in the mind of Harry Potter as a factual statement using nearly
identical wording. The original language from Harry Potter and the Deathly Hallows
reads:
Ron passed the bag to Griphook, and the goblin pulled out a
number of small metal instruments that when shaken made a loud, ringing
noise like miniature hammers on anvils. . . .
. . . Harry could see [the dragon] trembling, and as they drew
nearer he saw the scars made by vicious slashes across its face, and
guessed that it had been taught to fear hot swords when it heard the sound
of the Clankers.
(Pl. Ex. 10 at 536). The Lexicon entry reads:
A number of small metal instruments, which when shaken make a
loud, ringing noise like tiny hammers on anvil [sic]. Anyone visiting one
of the high-security vaults at Gringotts must carry one of these, shaking it
to make noise. The dragon guarding those vaults has been conditioned to
back away at the sound, apparently by being taught to fear hot swords
whenever it hears the Clankers (DH26).
23
Similarly, the Lexicon entry for "Marchbanks, Madam Griselda" uses an artful
simile from the original works to describe this character. Rowling's language in Harry
Potter and the Order of the Phoenix reads:
. . . Harry thought Professor Marchbanks must be the tiny, stooped witch
with a face so lined it looked as though it had been draped in cobwebs;
Umbridge was speaking to her very deferentially. . . .
(Pl. Ex. 8 at 710.) The Lexicon entry reads in part:
. . . Madam Marchbanks in June 1996 was tiny and stooped, her face so
lined it appeared draped in cobwebs. . . .
The Lexicon's close paraphrasing is not limited to the seven Harry Potter novels,
but can be found in entries drawn from the companion books as well. For example, the
entry for "Montrose Magpies" uses language from Quidditch Through the Ages. The
original language reads:
The Magpies are the most successful team in the history of the
British and Irish League, which they have won thirty-two times. Twice
European Champions . . . . The Magpies wear black and white robes with
one magpie on the chest and another on the back.
(Pl. Ex. 2 at 35-36.) The Lexicon entry reads:
The most successful Quidditch team in history, which has won the
British and Irish league thirty-two times and the European Cup twice.
Their robes are black and white, with one magpie on the chest and another
on the back (QA7).
(See also Pl. Ex. 1, entry for "Woollongong Shimmy.")
The same close paraphrasing takes place in the Lexicon entries drawing from
Rowling's other companion book, Fantastic Beasts & Where to Find Them. For
example, the entry for "Chinese Fireball" closely tracks the original language, which
reads:
24
The only Oriental dragon. Scarlet and smooth-scaled, it has a
fringe of golden spikes around its snub-snouted face and extremely
protuberant eyes. The Fireball gained its name for the mushroom-shaped
flame that bursts from its nostrils when it is angered. . . . Eggs are a vivid
crimson speckled with gold. . . .
(Pl. Ex. 3 at 11.) The Lexicon entry reads:
A species of dragon native to China. The Fireball is a scarlet dragon with
golden spikes around its face and protruding eyes. The blast of flame
from a fireball forms a distinctive mushroom shape. Eggs of a Fireball are
vivid crimson, flecked with gold (FB).
(See also Pl. Ex. 1, entry for "Fire Crab.")
Instances of such verbatim copying or close paraphrasing of language in the Harry
Potter works occur throughout the Lexicon. (See, e.g., Pl. Ex. 1, entries for "Apparition,"
"Bubtotuber," "Pince, Madam Irma," "Twycross, Wilkie," "Lovegood, Luna," "third-floor corridor," "Slytherin common room.") Rowling provides numerous examples in
Plaintiffs' Exhibit 47, "a chart [she] made to show what [she] felt was the constant
pilfering of [her] work." (Tr. (Rowling) at 57:23-24.)
Aside from verbatim copying, another factual issue of contention at trial was the
Lexicon entries that contain summaries of certain scenes or key events in the Harry Potter
series. Most frequently, these are the longer entries that describe important objects, such
as the "Deathly Hallows," or momentous events, such as the "Triwizard Tournament," or
that trace the development of an important character, such as Harry Potter, Lord
Voldemort, Severus Snape, and Albus Dumbledore. Plaintiffs' expert testified at length
that in her opinion these entries constitute "plot summaries," (Tr. (Johnson) at 592:14-22,
611:13-22, 623:4-624:11), while Defendant's expert characterized them as character
studies or analysis.
25
Neither of these characterizations is exactly apt. Without endorsing one
characterization or another, such entries in the Lexicon do encapsulate elements of the
very elaborate and wide ranging plot (sometimes in chronological order, sometimes not)
confined to the subject of the entry. In the entries for significant characters, these plot
elements are occasionally used to support an observation about the character's nature or
development. For instance, the three-and-a-half page entry for "Lovegood, Luna"
contains the following paragraph:
Luna came into her own during her sixth year at Hogwarts. With
Harry, Ron, and Hermione gone from school, she joined Ginny and
Neville to revive the D.A. and resist the Death Eaters' influence at
Hogwarts. She was kidnapped on the Hogwarts Express on her way home
for the Christmas holidays (DH25) because of what Mr. Lovegood had
been writing in The Quibbler, and imprisoned in the cellar at the Malfoy
Mansion along with Ollivander. She was helpful in their efforts to escape
the Malfoy Mansion, and then fought bravely, again, at the Battle of
Hogwarts (DH31).
(See also, e.g., Pl. Ex. 1, entry for "Malfoy, Draco," ¶¶ 5, 6, 7.) But other times, the
presentation of plot details, in effect, summarizes a vignette or portion of a scene. In the
same entry for "Lovegood, Luna," the Lexicon summarizes a scene on the Hogwarts
Express found on pages 185 to 188 of Chapter 10 of Harry Potter and the Order of the
Phoenix:
Harry met Luna for the first time aboard the Hogwarts Express on
September 1, 1995. He, Ginny, and Neville shared a compartment with
her on the train (OP10). She was reading a copy of The Quibbler
magazine upside down. She informed the others that her father is the
editor of The Quibbler, a magazine which most in the Wizarding World
consider a joke. She laughed a little too loud; she stared at the other kids,
and generally made an odd traveling companion. Harry privately thought,
when Cho happened by their compartment to say hello, that he would
much rather have been sitting with "cooler" kids than Luna and Neville.
(Compare Pl. Ex. 8 at 185-88.)
26
The entries for the hero and the villain of the Harry Potter series ( Harry Potter and
Lord Voldemort) present the closest thing to "plot summaries," but are more aptly
characterized as synopses or outlines of the narrative revolving around those characters.
Because Harry Potter and Lord Voldemort drive the narrative and because they appear in
nearly every chapter of the series, an encapsulation of the events surrounding them
ultimately yields a synopsis of the primary narrative thread in the Harry Potter series.
The Lexicon entry for "Potter, Harry James" is eleven pages long and chronicles each
year of Harry Potter's life at the fictional Hogwarts School, providing the reader with all
of the main events of the story through all seven of Rowling's novels, leading up to Harry
Potter's final battle with Lord Voldemort. (Pl. Ex. 11 (Birchall Decl.) at ¶ 5). The nine-page entry for "Voldemort, Lord" begins by providing the pre-story for the character,
which is included in the sixth Harry Potter novel, giving background into the character as
a child. (Tr. (Rowling) at 146:10-13). The entry then proceeds to describe
chronologically all of the events surrounding this character in the Harry Potter story from
books one through seven, and also gives an account of this character's death in the last
Harry Potter novel. (Tr. (Rowling) at 62: 12-20; Tr. (Johnson) at 623:6-624:11).
Although the entries proceed chronologically and do not use the same plot structure as do
the Harry Potter novels (which structure the plot so as to create an interesting drama), the
entries do provide a skeleton of the plot elements that hold the story together.
Finally, Plaintiffs established the Lexicon's extensive copying from Rowling's
companion books, Quidditch Through the Ages and Fantastic Beasts & Where to Find
Them, the schoolbooks used by the students attending the Hogwarts School. These two
27
books are very short, fifty-six and fifty-nine pages, respectively. They are written in
non-narrative form (Tr. (Vander Ark) at 396:21-25) and present fictional facts without
commentary (id. (Rowling) at 63:18-20), in a similar way to the Lexicon. When
questioned about his use of these books in creating the Lexicon, Vander Ark testified:
. . . Fantastic Beasts and Quidditch [Through] the Ages had sections of
them which were essentially encyclopedias already which presented quite
a problem. We wanted to be complete, but we certainly didn't want to
replace Ms. Rowling's encyclopedia content which presented us with quite
a challenge of how to do that, how to include information, but not to
include all of it. And that was what we decided to do. We said we'll
intentionally leave things out and put a very clear note, Please go read her
books, which is what we did.
(Id. (Vander Ark) 287:20-288:4.) Although the Lexicon sporadically leaves out material,
such as some material from the introductory chapters of Quidditch Through the Ages, it
essentially takes wholesale from the companion books. (Tr. (Rowling) at 65:3-8, 62:25-63:1.) When questioned about the Lexicon entry for "Chudley Cannons" and whether
there was anything about this quidditch team in Quidditch Through the Ages that he did
not put in the Lexicon, Vander Ark admitted, "In that particular case, it looks like we
pretty much caught it all." (Id. at 288:15-22.) Vander Ark later admitted that although
he left out some of the first half of Quidditch Through the Ages, "[w]hen it comes to
28
descriptions of specific things, a Quidditch f[oul], for example, there's not a lot of
information there to condense, and so there would be more of that included and
referenced." (Id. at 290:3-6.) Similarly, the Lexicon copies a large part of the
descriptions of each beast in the A-to-Z section of Fantastic Beasts & Where to Find
Them.
CONCLUSIONS OF LAW
I. Copyright Infringement
To establish a prima facie case of copyright infringement, a plaintiff must
demonstrate "(1) ownership of a valid copyright, and (2) copying of constituent elements
of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361 (1991); Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992). The
element of copying has two components: first, the plaintiff must establish actual copying
by either direct or indirect evidence; then, the plaintiff must establish that the copying
amounts to an improper or unlawful appropriation. Castle Rock Entm't, Inc. v. Carol
Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998); Laureyssens v. Idea Group, Inc.,
964 F.2d 131, 139-140 (2d Cir. 1992). The plaintiff demonstrates that the copying is
actionable "by showing that the second work bears a 'substantial similarity' to protected
expression in the earlier work." Castle Rock, 150 F.3d at 137 (citing Repp v. Webber,
132 F.3d 882, 889 (2d Cir. 1997)); see Ringgold v. Black Entm't Television, Inc., 126
F.3d 70, 74-75 (explaining the distinction between actionable copying and factual
29
copying); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A]
(2007) [hereinafter Nimmer].
A. Ownership
There is no dispute regarding Plaintiff Rowling's ownership of valid copyrights in
the seven Harry Potter novels and two companion books, Quidditch Through the Ages
and Fantastic Beasts & Where to Find Them. With respect to those works, Plaintiffs
introduced evidence of copyright ownership in the form of registration certificates from
the U.S. Copyright Office (Pl. Ex. 12-A), which constitute prima facie evidence of the
works' copyrightability and the validity of the copyrights. 17 U.S.C. § 410(c). Plaintiffs
also introduced the declarations and testimony of Rowling concerning her creation of the
works and ownership of the copyrights in them. (Pl. Exs. 25, 32; Tr. (Rowling) at 43:8-9.)
Defendant disputes, however, that Plaintiffs have established Rowling's
ownership of copyrights in "The Daily Prophet" newsletters and Warner Brothers'
beneficial ownership of copyrights in the Harry Potter video games that contain the
allegedly infringed "Famous Wizard Cards." The only evidence offered at trial to
establish Plaintiffs' ownership of these copyrights was Rowling's testimony. Plaintiffs
attached to their post-trial brief documents demonstrating Rowling's U.K. copyright in
the "The Daily Prophet" (Pl. Post-Trial Br., Ex. A) and Warner Brothers' joint ownership
with Electronic Arts Inc. of U.S. copyrights in Harry Potter videogames (id., Ex. B).
Having taken judicial notice of these documents as public records as permitted by the
Federal Rules of Evidence, see Fed. R. Evid. 201(b)(2); Island Software & Computer
Serv. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005), the Court concludes that
30
Plaintiffs have established ownership of copyrights in "The Daily Prophet" and the
"Famous Wizard Cards." Plaintiffs cannot establish infringement of these works,
however, because neither work was entered into evidence, and they are not before the
Court. Accordingly, Plaintiffs' claims of copyright infringement will be addressed only
with respect to the seven Harry Potter novels and two companion guides.
B. Copying
There is no dispute that the Lexicon actually copied from Rowling's copyrighted
works. Vander Ark openly admitted that he created and updated the content of the
Lexicon by taking notes while reading the Harry Potter books and by using without
authorization scanned, electronic copies of the Harry Potter novels and companion books.
(Tr. (Vander Ark) at 335:9-17, 259:5-9, 16-23.) While acknowledging actual copying,
Defendant disputes that the copying amounts to an improper or unlawful appropriation of
Rowling's works. Defendant argues that Plaintiffs fail to establish a prima facie case of
infringement because they have not shown that the Lexicon is substantially similar to the
Harry Potter works.
The appropriate inquiry under the substantial similarity test is whether "the
copying is quantitatively and qualitatively sufficient to support the legal conclusion that
infringement (actionable copying) has occurred." Ringgold, 126 F.3d at 75; accord
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 70 (2d Cir. 1999);
31
Castle Rock, 150 F.3d at 138. The quantitative component addresses the amount of the
copyrighted work that is copied, while the qualitative component addresses the copying
of protected expression, as opposed to unprotected ideas or facts. Ringgold, 126 F.3d at
75.
In evaluating the quantitative extent of copying in the substantial similarity
analysis, the Court "considers the amount of copying not only of direct quotations and
close paraphrasing, but also of all other protectable expression in the original work."
Castle Rock, 150 F.3d at 140 n.6. As the Second Circuit has instructed, "[i]t is not
possible to determine infringement through a simple word count," which in this case
would be an insuperable task; "the quantitative analysis of two works must always occur
in the shadow of their qualitative nature." Nihon Keizai, 166 F.3d at 71. Where, as here,
the copyrighted work is "wholly original," rather than mixed with unprotected elements,
a lower quantity of copying will support a finding of substantial similarity. Nihon Keizai,
166 F.3d at 71.
Plaintiffs have shown that the Lexicon copies a sufficient quantity of the Harry
Potter series to support a finding of substantial similarity between the Lexicon and
Rowling's novels. The Lexicon draws 450 manuscript pages worth of material primarily
from the 4,100-page Harry Potter series. Most of the Lexicon's 2,437 entries contain
32
direct quotations or paraphrases, plot details, or summaries of scenes from one or more of
the Harry Potter novels. As Defendant admits, "the Lexicon reports thousands of
fictional facts from the Harry Potter works." (Def.'s Post-trial Br. at 35). Although
hundreds pages or thousands of fictional facts may amount to only a fraction of the
seven-book series, this quantum of copying is sufficient to support a finding of
substantial similarity where the copied expression is entirely the product of the original
author's imagination and creation. See Castle Rock, 150 F.3d at 138 (concluding that a
Seinfeld trivia book that copied 643 fragments from 84 copyrighted Seinfeld episodes
"plainly crossed the quantitative copying threshold under Ringgold"); Twin Peaks Prods.,
Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1372 (2d Cir. 1993) (upholding the district
court's conclusion that "the identity of 89 lines of dialogue" between Twin Peaks
teleplays and a guide to the television series constituted substantial similarity); see also
Harper & Row, 471 U.S. at 548-49 (stating that "lifting verbatim quotes of the author's
original language totaling between 300 and 400 words and constituting some 13% of [the
defendant's] article" was sufficient to constitute copyright infringement).
The quantitative extent of the Lexicon's copying is even more substantial with
respect to Fantastic Beasts and Quidditch Through the Ages. Rowling's companion
books are only fifty-nine and fifty-six pages long, respectively. The Lexicon reproduces
a substantial portion of their content, with only sporadic omissions, across hundreds of
entries. (Tr. (Vander Ark) at 287:20-288:4 (testifying that to overcome the problem of
copying the companion books, "which were essentially encyclopedias already," in their
entirety, the Lexicon intentionally leaves some things out).
33
As to the qualitative component of the substantial similarity analysis, Plaintiffs
have shown that the Lexicon draws its content from creative, original expression in the
Harry Potter series and companion books. Each of the 2,437 entries in the Lexicon
contains "fictional facts" created by Rowling, such as the attributes of imaginary
creatures and objects, the traits and undertakings of major and minor characters, and the
events surrounding them. The entry for "Boggart," for example, contains the fictional
facts that a boggart is "[a] shape shifter that prefers to live in dark, confined spaces,
taking the form of the thing most feared by the person it encounters; nobody knows what
a boggart looks like in its natural state," and that "Lupin taught his third year Defence
Against the Dark Arts class to fight [a boggart] with the Riddikulus spell (PA7), and used
a boggart as a substitute for a Dementor in tutoring Harry (PA12)." (Pl. Ex. 1.) In Castle
Rock Entertainment, Inc. v. Carol Publishing Group, Inc., the Second Circuit explained
that such invented facts constitute creative expression protected by copyright because
"characters and events spring from the imagination of [the original] authors." 150 F.3d at
139; see also Paramount Pictures Corp. v. Carol Publ'g Group, 11 F. Supp. 2d 329, 333
(S.D.N.Y. 1998) (stating that "[t]he characters, plots and dramatic episodes" that
comprise the story of the "fictitious history of Star Trek" are the story's "original
elements," protected by copyright). The Castle Rock court held that a trivia book which
tested the reader's knowledge of "facts" from the Seinfeld series copied protected
expression because "each 'fact' tested by [the trivia book] is in reality fictitious
expression created by Seinfeld's authors." Id. It follows that the same qualitative
conclusion should be drawn here, where each "fact" reported by the Lexicon is actually
expression invented by Rowling.
34
Seeking to distinguish Castle Rock, Defendant argues that the qualitative
similarity between the Lexicon and the Harry Potter works is significantly diminished
because "the Lexicon uses fictional facts primarily in their factual capacity" to "report
information and where to find it," unlike the Seinfeld trivia book, which used fictional
facts "primarily in their fictional capacity to entertain and 'satisfy' the reader's 'craving'
for the Seinfeld television series." (Def. Post-trial Br. at 36 (quoting Castle Rock, 150
F.3d at 142-43).) While this distinction is important, Defendant's argument goes to the
fair use question of whether the Lexicon's use has a transformative purpose, not to the
infringement question of whether the Lexicon, on its face, bears a substantial similarity to
the Harry Potter works. The court in Castle Rock addressed these two inquires separately
and found that the Seinfeld trivia book not only bore a substantial similarity to the
Seinfeld series but also lacked a transformative purpose. See Castle Rock, 150 F.3d at
138-39, 141-43. What matters at the infringement stage of this case is that the copied text
is expression original to Rowling, not fact or idea, and therefore is presumptively entitled
to copyright protection. See Harper & Row, 471 U.S. at 547; Feist, 499 U.S. at 344-46.
Even if expression is or can be used in its "factual capacity," it does not follow that
expression thereby takes on the status of fact and loses its copyrightability.
Defendant also argues that while a substantial similarity may be found where
invented facts are "reported and arranged in such a way as to tell essentially the same
story" as the original, "the order in which the fictional facts are presented in the Lexicon
bears almost no resemblance to the order in which the fictional facts are arranged to
create the story of Harry Potter and the universe he inhabits." (Def. Post-trial Br. at 34,
36). Reproducing original expression in fragments or in a different order, however, does
35
not preclude a finding of substantial similarity. See Castle Rock, 150 F.3d at 139
(finding a substantial similarity even though the allegedly infringing trivia book
rearranged fragments of expression from Seinfeld in question-and-answer format);
Paramount Pictures, 11 F. Supp. 2d at 333-34 (finding that a book containing brief
synopses of major plot lines, histories of major characters, and descriptions of fictional
alien species in Star Trek was substantially similar to the Star Trek series even though
"the fictitious history is presented in a different order than that in which it appeared in the
[original works]"). Regardless of how the original expression is copied, "'the standard
for determining copyright infringement is not whether the original could be recreated
from the allegedly infringing copy, but whether the latter is "substantially similar" to the
former.'" Castle Rock, 150 F.3d at 141 (quoting Horgan v. Macmillan, Inc., 789 F.2d
157, 162 (2d Cir. 1986)). Here, the Lexicon's rearrangement of Rowling's fictional facts
does not alter the protected expression such that the Lexicon ceases to be substantially
similar to the original works.
Furthermore, the law in this Circuit is clear that "the concept of similarity
embraces not only global similarities in structure and sequence, but localized similarity in
language." Twin Peaks, 996 F.2d at 1372 (endorsing the taxonomy of "comprehensive
nonliteral similarity" and "fragmented literal similarity" from the Nimmer treatise, 4
Nimmer § 13.03[A][2]); see also Ringgold, 126 F.3d at 75 n.3; Arica Institute, 970 F.2d
at 1073. In evaluating fragmented literal similarity, or "localized similarity in language,"
the Court examines the copying of direct quotations or close paraphrasing of the original
36
work. Castle Rock, 150 F.3d at 140; Paramount Pictures, 11 F. Supp. 2d at 333
("Fragmented similarity refers to exact copying of a portion of a work."). As determined
in the Findings of Fact, the Lexicon contains a considerable number of direct quotations
(often without quotation marks) and close paraphrases of vivid passages in the Harry
Potter works. Although in these instances, the Lexicon often changes a few words from
the original or rewrites original dialogue in the third person, the language is nonetheless
substantially similar. See Salinger v. Random House, Inc., 811 F.2d 90, 97 (2d Cir.
1987) (indicating that protected expression is infringed whether it is "quoted verbatim or
only paraphrased"); Craft v. Kobler, 667 F. Supp. 120, 124 (S.D.N.Y. 1987) (stating that
protected writing is infringed by "direct quotation" or "by paraphrase which remains
sufficiently close that, in spite of changes, it appropriates the craft of authorship of the
original"); see also 4 Nimmer § 13.03[A][1] ("The mere fact that the defendant has
paraphrased rather than literally copied will not preclude a finding of substantial
similarity. Copyright 'cannot be limited literally to the text, else a plagiarist would
escape by immaterial variations.'" (footnote omitted) (quoting Nichols v. Universal
Pictures Co., 45 F.2d 119, 121 (2d Cir. 1930))).
Notwithstanding the dissimilarity in the overall structure of the Lexicon and the
original works, some of the Lexicon entries contain summaries of certain scenes or key
events in the Harry Potter series, as stated in the Findings of Fact. These passages, in
effect, retell small portions of the novels, though without the same dramatic effect. In
addition, the entries for Harry Potter and Lord Voldemort give a skeleton of the major
plot elements of the Harry Potter series, again without the same dramatic effect or
structure. Together these portions of the Lexicon support a finding of substantial
37
similarity. To be sure, this case is different from Twin Peaks, where forty-six pages of
the third chapter of a guidebook to the Twin Peaks television series were found to
constitute "essentially a detailed recounting of the first eight episodes of the series.
Every intricate plot twist and element of character development appear[ed] in the Book in
the same sequence as in the teleplays." 996 F.2d at 1372-73 (supporting the Second
Circuit's finding of comprehensive nonliteral similarity). Those "plot summaries" were
far more detailed, comprehensive, and parallel to the original episodes than the so-called
"plot summaries" in this case. Nonetheless, it is clear that the plotlines and scenes
encapsulated in the Lexicon are appropriated from the original copyrighted works. See
Paramount Pictures, F. Supp. 2d at 334 (noting that Twin Peaks was distinguishable but
nonetheless applying its broader holding that "a book which tells the story of a
copyrighted television series infringes on its copyright"). Under these circumstances,
Plaintiffs have established a prima facie case of infringement.
C. Derivative Work
Plaintiffs allege that the Lexicon not only violates their right of reproduction, but
also their right to control the production of derivative works. The Copyright Act defines
a "derivative work" as "a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture version,
sound recording, art reproduction, abridgment, condensation, or any other form in which
a work may be recast, transformed, or adapted." 17 U.S.C. § 101 (emphasis added). A
work "consisting of editorial revisions, annotations, elaborations, or other modifications
which, as a whole, represents an original work of authorship" is also a derivative work.
Id.
38
A work is not derivative, however, simply because it is "based upon" the
preexisting works. If that were the standard, then parodies and book reviews would fall
under the definition, and certainly "ownership of copyright does not confer a legal right
to control public evaluation of the copyrighted work." Ty, Inc. v. Publ'ns Int'l Ltd., 292
F.3d 512, 521 (7th Cir. 2002). The statutory language seeks to protect works that are
"recast, transformed, or adapted" into another medium, mode, language, or revised
version, while still representing the "original work of authorship." See Castle Rock, 150
F.3d at 143 n.9 (stating that "derivative works that are subject to the author's copyright
transform an original work into a new mode of presentation"); Twin Peaks, 996 F.2d at
1373 (finding a derivative work where a guidebook based on the Twin Peak television
series "contain[ed] a substantial amount of material from the teleplays, transformed from
one medium to another"). Thus in Ty, Inc. v. Publications International Ltd., Judge
Posner concluded, as the parties had stipulated, that a collectors' guide to Beanie Babies
was not a derivative work because "guides don't recast, transform, or adapt the things to
which they are guides." 292 F.3d at 520 (emphasis added).
Plaintiffs argue that based on the Twin Peaks decision "companion guides
constitute derivative works where, as is the case here, they 'contain a substantial amount
of material from [the underlying work.'" (Pl. Post-trial Br. ¶ 288, at 88-89.) This
argument inaccurately states the holding of Twin Peaks and overlooks two important
distinctions between the Lexicon and the guidebook in Twin Peaks. First, as mentioned
earlier, the portions of the Lexicon that encapsulate plot elements or sketch plotlines bear
39
no comparison with the guidebook in Twin Peaks, whose plot summaries giving
"elaborate recounting of plot details" were found to constitute an "abridgement" of the
original work. See Twin Peaks, 996 F.2d at 1373 n.2 (reproducing an excerpt of the
infringing book containing a high degree of detail). Given that the Lexicon's use of plot
elements is far from an "elaborate recounting" and does not follow the same plot
structure as the Harry Potter novels, Plaintiffs' suggestion that these portions of the
Lexicon are "unauthorized abridgements" is unpersuasive. Second, and more
importantly, although the Lexicon "contain[s] a substantial amount of material" from the
Harry Potter works, the material is not merely "transformed from one medium to
another," as was the case in Twin Peaks. Id. at 1373. By condensing, synthesizing, and
reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does not
recast the material in another medium to retell the story of Harry Potter, but instead gives
the copyrighted material another purpose. That purpose is to give the reader a ready
understanding of individual elements in the elaborate world of Harry Potter that appear in
voluminous and diverse sources. As a result, the Lexicon no longer "represents [the]
original work[s] of authorship." 17 U.S.C. § 101. Under these circumstances, and
because the Lexicon does not fall under any example of derivative works listed in the
statute, Plaintiffs have failed to show that the Lexicon is a derivative work.
II. Fair Use
40
Defendant contends that even if Plaintiffs have shown a prima facie case of
infringement, the Lexicon is nevertheless a fair use of the Harry Potter works. An
integral part of copyright law, the fair use doctrine is designed to "fulfill copyright's very
purpose, 'To promote the Progress of Science and useful Arts,'" Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const. art. I, § 8, cl. 8), by balancing
the simultaneous needs "to protect copyrighted material and to allow others to build upon
it." Id. As the Second Circuit has observed, there is an
inevitable tension between the property rights [that copyright law]
establishes in creative works, which must be protected up to a point, and
the ability of authors, artists, and the rest of us to express them or
ourselves by reference to the works of others, which must be protected up
to a point. The fair-use doctrine mediates between the two sets of
interests, determining where each set of interests ceases to control.
Blanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006). At stake in this case are the
incentive to create original works which copyright protection fosters and the freedom to
produce secondary works which monopoly protection of copyright stifles--both interests
benefit the public. See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev.
1105, 1109 (1990) (noting that on one hand "[t]he monopoly created by copyright . . .
rewards the individual author in order to benefit the public," and on the other
"[m]onopoly protection of intellectual property that impeded referential analysis and the
development of new ideas out of old would strangle the creative process").
The common law doctrine of fair use is codified at Section 107 of the Copyright
Act of 1976 as follows:
The fair use of a copyrighted work . . . for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for
classroom use), scholarship, or research, is not an infringement of
copyright. In determining whether the use made of a work in any
particular case is a fair use the factors to be considered shall include--
41
(1) the purpose and character of the use, including whether such use
is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole, and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
17 U.S.C. § 107. The evaluation of these factors is "an open-ended and context-sensitive
inquiry," Blanch, 467 F.3d at 244; accord Campbell, 510 U.S. at 577 (stating that "the
statute, like the doctrine it recognizes, calls for a case-by-case analysis"), and the
examples listed in the statute (i.e., criticism, comment, news reporting, and teaching) are
illustrative rather than limiting, Campbell, 510 U.S. at 577-78. The four statutory factors
may not "be treated in isolation, one from another"; instead they all must "be explored,
and the results weighed together, in light of the purposes of copyright." Id. at 578. "The
ultimate test of fair use, therefore, is whether the copyright law's goal of 'promoting the
Progress of Science and useful Arts,' U.S. Const., art. I, § 8, cl. 8, 'would be better served
by allowing the use than by preventing it.'" Castle Rock, 150 F.3d at 141 (quoting Arica
Inst., 970 F.2d at 1077).
A. Purpose and Character of the Use
Most critical to the inquiry under the first fair-use factor is "whether and to what
extent the new work is 'transformative.'" Campbell, 510 U.S. at 579; see also Bill
Graham Archives v. Dorling Kindersley Ltd, 448 F.3d 605, 608 (2d Cir. 2006); Elvis
Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 628 (9th Cir. 2003). Specifically,
the court asks "whether the new work merely 'supersede[s] the objects' of the original
42
creation, or instead adds something new, with a further purpose or different character,
altering the first with new expression, meaning, or message." Campbell, 510 U.S. at 579.
The fair use doctrine seeks to protect a secondary work if it "adds value to the original--
if [copyrightable expression in the original work] is used as raw material, transformed in
the creation of new information, new aesthetics, new insights and understandings,"
because such a work contributes to the enrichment of society. Castle Rock, 150 F.3d at
141 (alteration in original) (quoting Leval, supra, at 1111). Courts have found a
transformative purpose both where the defendant combines copyrighted expression with
original expression to produce a new creative work, see, e.g., Campbell, 510 U.S. at 582-83; Blanch, 467 F.3d at 251-51; Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257
(11th Cir. 2001), and where the defendant uses a copyrighted work in a different context
to serve a different function than the original, see, e.g., Perfect 10, Inc. v. Amazon.com,
Inc., 508 F.3d 1146 (9th Cir. 2007); Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006).
The purpose of the Lexicon's use of the Harry Potter series is transformative.
Presumably, Rowling created the Harry Potter series for the expressive purpose of telling
an entertaining and thought provoking story centered on the character Harry Potter and
set in a magical world. The Lexicon, on the other hand, uses material from the series for
the practical purpose of making information about the intricate world of Harry Potter
readily accessible to readers in a reference guide. To fulfill this function, the Lexicon
identifies more than 2,400 elements from the Harry Potter world, extracts and synthesizes
fictional facts related to each element from all seven novels, and presents that information
in a format that allows readers to access it quickly as they make their way through the
43
series. Because it serves these reference purposes, rather than the entertainment or
aesthetic purposes of the original works, the Lexicon's use is transformative and does not
supplant the objects of the Harry Potter works. See Elvis Presley Enters., 349 F.3d at 629
(stating that new works are described as transformative "when the works use copyrighted
materials for purposes distinct from the purpose of the original material"); see also Bill
Graham Archives, 448 F.3d at 609 (concluding that the use of artistic images as historical
artifacts is "transformatively different from the original expressive purpose").
The Lexicon's use of Rowling's companion books, however, is transformative to
a much lesser extent. Although there is no supporting testimony, the companion books
can be used for a reference purpose. Their packaging demonstrates an entertainment
purpose: bringing to life the fictional schoolbooks they represent in the Harry Potter
novels, the companion books have fictional authors, forewords written by Albus
Dumbledore, handwritten notes to Harry from his friends, a game of tic-tac-toe sketched
on one page, a library log and warning by the Hogwarts librarian, and a "Property of
Hogwarts Library" stamp. In this regard, the companion books serve as playful
accessories to the Harry Potter series. At the same time, the content of the companion
books takes on the informational purpose of the schoolbooks they represent in the novels.
As Vander Ark testified, the companion books are "essentially encyclopedias already."
(Tr. (Vander Ark) at 287:21-22.) Fantastic Beasts describes the attributes and origins of
each beast listed in the alphabetical guide, defines "beast," and explains the place of
beasts in the "muggle" and wizard worlds. Quidditch Through the Ages describes the
history and development of quidditch, the rules of the game, the teams, and the spread of
quidditch internationally. Neither book, however, makes reference to where the beasts or
44
quidditch facts appear in the Harry Potter novels. Although the Lexicon does not use the
companion books for their entertainment purpose, it supplants the informational purpose
of the original works by seeking to relate the same fictional facts in the same way. Even
so, the Lexicon's use is slightly transformative in that it adds a productive purpose to the
original material by synthesizing it within a complete reference guide that refers readers
to where information can be found in a diversity of sources.
The best evidence of the Lexicon's transformative purpose is its demonstrated
value as a reference source. See Am. Geophysical Union v. Texaco Inc., 60 F.3d 913,
(2d Cir. 1994) (stating that the "transformative use concept assesses the value generated
by the secondary use and the means by which such value is generated"); Leval, supra, at
1111 (stating that for a use to be transformative, "[t]he use must be productive and must
employ the quoted matter in a different manner or for a different purpose than the
original"). The utility of the Lexicon, as a reference guide to a multi-volume work of
fantasy literature, demonstrates a productive use for a different purpose than the original
works. The Lexicon makes the elaborate imaginary world of Harry Potter searchable,
item by item, and gives readers a complete picture of each item that cannot be gleaned by
reading the voluminous series, since the material related to each item is scattered over
thousands of pages of complex narrative and plot. The demand for and usefulness of this
type of reference guide is evidenced by the publication of similar works such as Paul F.
Ford's Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis's
The Chronicles of Narnia. (Pl. Ex. 62; see also Def. Ex. 503 (Sorensen Decl.) ¶ 12.) The
utility of the Lexicon as a reference guide has been demonstrated to Vander Ark by way
of responses to his Lexicon website. This feedback included a remark by Rowling that
45
she has "been known to sneak into an internet café while out writing and check a fact" on
the Lexicon website, a remark by David Heyman of Warner Brothers that he used the
Lexicon website almost every day while shooting the fifth Harry Potter film, and a
glimpse of the walls of the Electronic Arts studios covered with printed pages from the
Lexicon website. (Tr. 386:8-20, 387:3-13; Def. Ex. 502 (Vander Ark Decl.) ¶ 39.) This
feedback supports Defendant's claim that it had good reason to believe that a print
version of the Lexicon would serve as a valuable reference source to readers and fans of
Harry Potter.
Its function as a reference guide distinguishes the Lexicon from the secondary
work at issue in Castle Rock, a 132-page book of trivia about the events and characters
depicted in Seinfeld. Despite its specious claims to critique and expose the Seinfeld
series, the trivia book served no purpose but "to satiate Seinfeld fans' passion" for the
series and simply "repackage[d] Seinfeld to entertain Seinfeld viewers." Castle Rock,
150 F.3d at 142. A statement by the book's creators on the back cover, urging readers to
"open this book to satisfy [their] between-episode [Seinfeld] cravings," belied its
transformative purpose. Id. By contrast, the Lexicon seeks not to entertain but to aid the
reader or student of Harry Potter by providing references about the elements encountered
in the series.
The Lexicon's purpose as a reference guide also distinguishes it from the books at
issue in Twin Peaks and Paramount Pictures. Those books sought to retell the fictional
stories of the Twin Peaks series and the Star Trek series in abridged versions. See Twin
Peaks, 996 F.2d at 1372-73, 1375-76 (finding that the book at issue was an "abridgment"
46
because it recounted "precisely the plot details" of television episodes "in the same
sequence" as they appeared in the original series); Paramount Pictures, 11 F. Supp. 2d at
335 (finding that the work at issue "simply retells the story of Star Trek in a condensed
version"). Because the books in those cases merely recast the originals in abridged
versions, they were held to be derivative works. The Lexicon, on the other hand, has a
"further purpose or different character," Campbell, 510 U.S. at 579, that alters the
original aesthetic of the Harry Potter series from an intricate narrative to an alphabetized
catalogue of elements from the Harry Potter world.
Plaintiffs argue that the Lexicon's use of Rowling's works cannot be considered
transformative because the Lexicon does not add significant analysis or commentary. In
the opinion of Plaintiffs' expert, the Lexicon contributes nothing new other than
occasional facetious phrases and facile jokes that are condescending to children (Pl. Ex.
28 (Suppl. Johnson Decl.) ¶ 9; Tr. (Johnson) at 633:8-634:7), sporadic and often wrong
etymological references demonstrating "no real linguistic understanding" (Pl. Ex. 28, ¶
11), and conclusions that would be obvious to any child reading Harry Potter (id. ¶ 7).
The Lexicon, however, does not purport to be a work of literary criticism or to constitute
a fair use on that basis; and its lack of critical analysis, linguistic understanding, or clever
humor is not determinative of whether or not its purpose is transformative.
Cf. Bill
Graham Archives, 448 F.3d at 610 (concluding that the defendant's use of copyrighted
images "is transformative both when accompanied by referencing commentary and when
standing alone" because in either case the images are used as "historical artifacts" for the
47
transformative purpose of "enhancing the biographical information" in the allegedly
infringing book). Focusing on what the Lexicon fails to add by way of analysis misses
the point that the Lexicon's chief contribution is the function it serves.
Nonetheless, despite Plaintiffs' criticisms, the Lexicon occasionally does offer
"new information, new aesthetics, new insights and understandings," Castle Rock, 150
F.3d at 141 (internal quotation marks omitted), as to the themes and characters in the
Harry Potter works. The Lexicon's discussion of certain characters, while perhaps not
rigorous analysis, contain some reflections on the character, observations of his or her
nature, and examples of how that nature is exhibited in the story. For example, the
Lexicon observes that "Draco [Malfoy] was constantly frustrated by the attention given to
Harry," and gives anecdotal examples from the novels to support this conclusion. (See
also Pl. Ex. 1, entry for "Longbottom, Neville" (containing observations about the nature
of his bravery and leadership); entry for "Lovegood, Luna" (containing observations
about her social awkwardness and dignity)). Moreover, in some instances, the Lexicon
yields insights about an element of the Harry Potter world simply by encapsulating all the
fictional facts related to that element in a single entry. When all the fictional facts related
to "Hallowe'en" are collected, for example, the entry reveals that this occasion is "an
eventful day in Harry's life; on Hallowe'en 1981 his parents were killed (DH17) and his
subsequent years included knocking out a troll (PS10), the opening of the Chamber of
Secrets (CS8), Sirius Black's first break-in to Hogwarts (PA8), and Harry's name coming
out of the Goblet of Fire (GF16)." Finally, the Lexicon's etymological references, while
occasionally inaccurate, offer one possible interpretation of the meaning and derivation of
characters' names, even if not the meaning intended by Rowling. Thus, while not its
48
primary purpose, the Lexicon does add some new insight, of whatever value, as to the
Harry Potter works.
The transformative character of the Lexicon is diminished, however, because the
Lexicon's use of the original Harry Potter works is not consistently transformative. The
Lexicon's use lacks transformative character where the Lexicon entries fail to
"minimize[] the expressive value" of the original expression. See Bill Graham Archives,
448 F.3d at 611 (finding evidence of transformative use where the defendant "minimized
the expressive value of the reproduced images by combining them with a prominent
timeline, textual material, and original graphical artwork to create a collage of text and
images on each page of the book"). A finding of verbatim copying in excess of what is
reasonably necessary diminishes a finding of a transformative use. See Campbell, 510
U.S. at 587 (observing that "whether a substantial portion of the infringing work was
copied verbatim from the copyrighted work . . . may reveal a dearth of transformative
character" (internal quotation marks omitted)). As discussed more fully in analyzing the
"amount and substantiality" factor, the Lexicon copies distinctive original language from
the Harry Potter works in excess of its otherwise legitimate purpose of creating a
reference guide. Perhaps because Vander Ark is such a Harry Potter enthusiast, the
Lexicon often lacks restraint in using Rowling's original expression for its inherent
entertainment and aesthetic value. See Elvis Presley Enters., 349 F.3d at 629 (finding
that where a film biography of Elvis Presley showed the plaintiffs' copyrighted clips of
Elvis's television appearances without much interruption, "[t]he purpose of showing
these clips likely goes beyond merely making a reference for a biography, but instead
serves the same intrinsic entertainment value that is protected by Plaintiffs' copyrights").
49
The Lexicon also lacks transformative character where its value as a reference
guide lapses. Although the Lexicon is generally useful, it cannot claim consistency in
serving its purpose of pointing readers to information in the Harry Potter works. Some of
the longest entries contain few or no citations to the Harry Potter works from which the
material is taken. (See supra Findings of Fact; Pl. Ex. 28 (Suppl. Johnson Decl.) ¶ 16.)
In these instances, the Lexicon's reference purposes are diminished.
While the transformative character of the secondary work is a central inquiry, the
commercial or nonprofit nature of the secondary work is an explicit part of the first fair-use factor. 17 U.S.C. 107(1); Blanch, 467 F.3d at 253. Given that even the statutory
examples of fair use are generally conducted for profit, courts often "do not make much
of this point." Castle Rock, 150 F.3d at 141. The real concern behind the commercial
nature inquiry is "the unfairness that arises when a secondary user makes unauthorized
use of copyrighted material to capture significant revenues as a direct consequence of
copying the original work." Blanch, 467 F.3d at 253. Courts will not find fair use when
the secondary use "can fairly be characterized as a form of commercial exploitation," but
"are more willing to find a secondary use fair when it produces a value that benefits the
broader public interest." Id. In this case, Defendant's use of the copyrighted works is
certainly for commercial gain. As the testimony of Rapoport and Vander Ark make clear,
one of the Lexicon's greatest selling points is being the first companion guide to the
Harry Potter series that will cover all seven novels. Seeking to capitalize on a market
niche does not necessarily make Defendant's use non-transformative, but to the extent
that Defendant seeks to "profit at least in part from the inherent entertainment value" of
the original works, the commercial nature of the use weighs against a finding of fair use.
50
Elvis Presley Enters., 349 F.3d at 628. To the extent that Defendant seeks to provide a
useful reference guide to the Harry Potter novels that benefits the public, the use is fair,
and its commercial nature only weighs slightly against a finding of fair use.
Finally, in evaluating the purpose and character of a secondary use of a
copyrighted work, courts will consider the "subfactor" of whether the defendant acted in
good or bad faith. NXIVM Corp. v. Ross Inst., 364 F.3d 471, 478 (2d Cir. 2004); see
also Harper & Row, 471 U.S. at 562-63. Plaintiffs point to several facts in the record to
support their argument that Defendant acted with willfulness and bad faith. The Court is
not persuaded, however, that the acts of RDR Books, which do not amount to more than
intentional delays in responding to Plaintiffs' communications from counsel, constitute
acts of bad faith. Based on the reasonable belief that its use of the Harry Potter works
constituted fair use, Defendant was entitled to proceed with marketing the Lexicon
domestically and abroad and preparing it for publication before competitors released
similar books. Vander Ark's use of unauthorized electronic copies of Rowling's works,
obtained by improperly scanning each of those works, in preparing the Lexicon
manuscript is insufficient proof for the Court to make a finding of bad faith, particularly
because Vander Ark did not obtain any material that was not already available to the
public. Compare NXIVM Corp., 364 F.3d at 478 (weighing this factor slightly in favor
of plaintiffs because defendants knew they had obtained unauthorized access to the
copyrighted manuscript, which was unpublished in the sense it was not available to the
general public). In any event, as the Second Circuit has concluded, "a finding of bad
faith is not to be weighed very heavily within the first fair use factor and cannot be made
51
central to fair use analysis." Id. at 479 n.2. This subfactor weighs only slightly in favor
of Plaintiffs, as the Court finds that Defendant reasonably believed its use was ultimately
fair.
B. Amount and Substantiality of the Use
Plaintiffs contend that the Lexicon's actual use of Plaintiffs' original works far
surpasses any purpose as a reference source. They argue, in other words, that the
Lexicon takes too much original expression for the use to be fair use. Here, the
transformative purpose of Defendant's use and the third statutory factor of fair use--the
amount and substantiality of the use--must be "explored, and the results weighed
together." Campbell, 510 U.S. at 577-78. The question is whether the amount and value
of Plaintiffs' original expression used are reasonable in relation to the Lexicon's
transformative purpose of creating a useful and complete A-to-Z reference guide to the
Harry Potter world. See Campbell, 510 U.S. at 586 (stating that the third factor asks
whether the amount and substantiality of the portion used in relation to the copyrighted
work as a whole "are reasonable in relation to the purpose of the copying"); Blanch, 467
F.2d at 257 ("The question is whether 'the quantity and value of the materials used,' are
reasonable in relation to the purpose of the copying."); see also Chicago Bd. of Educ. v.
Substance, Inc., 354 F.3d 624, 629 (7th Cir. 2003) (stating that "the fair use copier must
copy no more than is reasonably necessary . . . to enable him to pursue an aim that the
law recognizes as proper"). This inquiry requires the Court to examine not only "the
quantity of the materials used, but their quality and importance, too." Campbell, 510
U.S. at 587; Nihon Keizai Shimbun, 166 F.3d at 73. Blanch, 467 F.2d at 257 ("The
52
question is whether 'the quantity and value of the materials used,' are reasonable in
relation to the [transformative] purpose of the copying.").
In undertaking this inquiry, the Court bears in mind that "room must be allowed
for judgment, and judges must not police criticism," or other transformative uses, "with a
heavy hand." Chicago Bd. of Educ., 354 F.3d at 629. The Court is hesitant to substitute
its own judgment for that of an author in determining how much copying of original
material is "reasonably necessary" to create a useful and complete reference work.
Nonetheless, the fair use test calls for a court determination on this issue.
To fulfill its purpose as a reference guide to the Harry Potter works, it is
reasonably necessary for the Lexicon to make considerable use of the original works. As
Vander Ark testified, for a reference work to be valuable and useful, it must be as
complete as possible. (Tr. (Vander Ark) at 281:20-21, 369:23-25.) Similarly, in Ty, Inc.
v. Publications International Ltd., the Seventh Circuit recognized that for a collectors'
guide to have enough value "to compete in the marketplace, [it] has to be
comprehensive." 292 F.3d at 521. At trial, Plaintiffs questioned Vander Ark and
Defendants' expert about whether it was possible to create a reference book that took less
of Rowling's work and gave shorter descriptions. (Id. (Vander Ark) at 281:10-282:6; id.
(Sorensen) at 543:23-546:316-20.) While it is possible to describe "Albus
Dumbledore" or "Bertie Bott's Every Flavor Beans," for example, in a few phrases,
such a short entry would not fulfill the Lexicon's purpose of serving as a useful reference
53
guide that provides the reader or student with as complete a picture as possible of the
entry's subject.
Weighing most heavily against Defendant on the third factor is the Lexicon's
verbatim copying and close paraphrasing of language from the Harry Potter works. In
many instances, the copied language is a colorful literary device or distinctive
description, as in the Lexicon entries for "Clankers," "Marchbanks, Madam Griselda,"
"Brain room," and "Dementors." See supra Findings of Fact. This type of langauge is of
great quality and importance; these phrases are, as Rowling testified, the "plums in [her]
cake." (Tr. (Rowling) at 647:3-6). The Lexicon's verbatim copying of such highly
aesthetic expression raises a significant question as to whether it was reasonably
necessary for the purpose of creating a useful and complete reference guide. While the
exact quantity of verbatim copying and paraphrasing in the Lexicon is difficult to assess,
the instances identified by Plaintiffs amount to a substantial enough taking to tip the third
factor against a finding of fair use in view of the expressive value of the language. See
Harper & Row, 471 U.S. at 564-66 (finding that defendant's verbatim copying,
constituting "an insubstantial portion" of the copyrighted work and only 13% of the
infringing magazine article, was a substantial appropriation in view of the expressive
value of the excerpts and their key role in the infringing work); Salinger v. Random
House, Inc., 811 F.2d 90, 99 (2d Cir. 1987) (finding that defendant's biography, in which
plaintiff identified 59 instances of verbatim quoting or close paraphrasing (constituting
just 40% of defendant's 192-page book), to be so quantitatively significant a taking so as
to tip the third factor in favor of plaintiff); Craft v. Kobler, 667 F. Supp. 120, 128-29
(S.D.N.Y. 1987) (concluding that defendant's takings, which constituted approximately
54
3% of the infringing biography and "the liveliest and most entertaining part" of it, were
"far too numerous and with too little instructional justification to support the conclusion
of fair use").
Defendant argues that it is impossible to describe an imaginary object that exists
only in a fictional world without using some of the language that invented it. Certainly,
the Lexicon must be permitted to refer to an object by its invented name and describe
some of its invented attributes to fulfill its purpose as a reference work; but again, the use
must be reasonable in light of that purpose. The imaginary objects "clankers," for
example, can be successfully described without using the original literary device ("like
miniature hammers on anvils") and the original turn of phrase ("a number of small metal
instruments that when shaken made a loud, ringing noise") that brought them into
existence. As the Second Circuit noted in Salinger v. Random House, Inc., a copier is not
entitled to copy the vividness of an author's description for the sake of accurately
reporting expressive content. 811 F.2d at 96-97. Moreover, in some entries, the Lexicon
copies original expression verbatim even when describing objects that are ordinary and
exist in the real world. For example, the Lexicon entry for "Mirror of Erised" replicates
Rowling's original language from Harry Potter and the Sorcerer's Stone to describe a
mirror: "A magnificent mirror, as high as a classroom ceiling, with an ornate gold frame,
standing on two clawed feet." (See supra Findings of Fact.) Verbatim copying of this
nature demonstrates Vander Ark's lack of restraint due to an enthusiastic admiration of
Rowling's artistic expression, or perhaps haste and laziness as Rowling suggested (Tr.
(Rowling) at 62:18-20), in composing the Lexicon entries.
55
Determining how much copying of fictional facts and plot elements from the
Harry Potter series is reasonably necessary to create a useful and complete reference
guide presents a difficult task. As Vander Ark testified, "[a] reference work of th[is] kind
has to have value based on how much information it gives, and so it is difficult
sometimes to figure out the balance. And we tried to do the best we could to find a
balance between" creating shorter descriptions that take less copyrighted material and
creating a valuable entry that is as complete as possible. (Tr. (Vander Ark) at 281:20-23.)
As to the Harry Potter series, the Lexicon often does demonstrate a significant
condensation of narrated events in the novels to bare fictional facts. For example, the
entry for "Boggart" encapsulates Professor Lupin's Defense Against the Dark Arts lesson
on how to use the Riddikulus spell to defeat a boggart, spanning seven pages of lively
narration and dialogue (see Pl. Ex. 6 at 133-39), in one colorless phrase: "Lupin taught
his third year Defence Against the Dark Arts class to fight this with the Riddikulus spell
(PA7)." (Compare also Pl. Ex. 6 at 236-42, with Pl. Ex. 1, entry for "Boggart" (stating
that Lupin "used a boggart as a substitute for a Dementor in tutoring Harry (PA12)").)
Other times, however, the Lexicon disturbs the balance and takes more than is reasonably
necessary to create a reference guide. In these instances, the Lexicon appears to retell
parts of the storyline rather than report fictional facts and where to find them. For
example, the Lexicon entry for "Trelawney, Sibyll Patricia" not only copies exactly the
Divination professor's prophecies about the fates of Voldemort, Harry Potter, and Peter
Pettigrew, it then tells how the prophecies are fulfilled, including events that do not
involve Trelawney. (Compare also Pl. Ex. 10 at 714-720, with Pl. Ex. 1, entry for
"Deathly Hallows, The," ¶ 5 (retelling the story that Dumbledore tells Harry about his
56
own quest for the Hallows with Grindelwald in Chapter 35 of the seventh novel).) While
it is difficult to draw the line at each entry that takes more than is reasonably necessary
from the Harry Potter series to serve its purposes, there are a number of places where the
Lexicon engages in the same sort of extensive borrowing that might be expected of a
copyright owner, not a third party author.
The Lexicon's use of copyrighted expression from Rowling's two companion
books presents an easier determination. The Lexicon takes wholesale from these short
books. See supra Findings of Fact. Depending on the purpose, using a substantial
portion of a work, or even the whole thing, may be permissible. See, e.g., Perfect 10, 518
F.3d at 1167-68; Bill Graham Archives, 448 F.3d at 613; Nunez v. Caribbean v. Int'l
News Corp., 235 F.3d 18, 24 (1st Cir. 2000). In this case, however, the Lexicon's
purpose is only slightly transformative of the companion books' original purpose. As a
result, the amount and substantiality of the portion copied from the companion books
weighs more heavily against a finding of fair use.
C. Nature of the Copyrighted Work
The second statutory fair use factor, the nature of the copyrighted work,
recognizes that "some works are closer to the core of intended copyright protection than
others." Campbell, 510 U.S. at 586. It is well settled that creative and fictional works are
generally more deserving of protection than factual works. Stewart v. Abend, DBA
Authors Research Co., 495 U.S. 207, 237 (1990) ("In general, fair use is more likely to be
found in factual works than in fictional works."); Harper & Row, 471 U.S. at 563 ("The
law generally recognizes a greater need to disseminate factual works than works of
57
fiction or fantasy."); Castle Rock, 150 F.3d at 143-144 (finding that the second factor
favored plaintiff given the fictional nature of the copyrighted work); Twin Peaks, 996
F.2d at 1376 (stating that the second factor "must favor a creative and fictional work, no
matter how successful"); Ty, Inc. v. Publ'ns Int'l, Ltd., 333 F. Supp. 2d 705, 713 (N.D.
Ill. 2004) (recognizing that "creative works are deemed more deserving of protection than
works that are more of diligence than of originality or inventiveness." (internal quotation
marks omitted)). In creating the Harry Potter novels and the companion books, Rowling
has given life to a wholly original universe of people, creatures, places, and things. (Tr.
(Sorensen) at 504:7-15). Such highly imaginative and creative fictional works are close
to the core of copyright protection, particularly where the character of the secondary
work is not entirely transformative. See Castle Rock, 150 F.3d at 144; Twin Peaks, 996
F.2d at 1376; Paramount, 11 F. Supp. 2d at 336. As a result, the second factor favors
Plaintiffs.
D. Market Harm
The fourth statutory factor considers "the effect of the use upon the potential
market for or value of the copyrighted work." 17 U.S.C. § 107(4). Courts must consider
harm to "not only the primary market for the copyrighted work, but the current and
potential market for derivative works" as well. Twin Peaks, 996 F.2d at 1377 (finding
that fourth factor favored plaintiff where book about television series "may interfere with
the primary market for the copyrighted works and almost certainly interferes with
legitimate markets for derivative works"); see also Harper & Row, 471 U.S. at 568.
Potential derivative uses "include[] only those that creators of original works would in
general develop or license others to develop." Campbell, 510 U.S. at 592. The fourth
58
factor will favor the copyright holder "if she can show a 'traditional, reasonable, or likely
to be developed' market for licensing her work." Ringgold, 126 F.3d at 81. In addition
to evaluating the particular actions of the alleged infringer, the fourth factor examines
"whether unrestricted and widespread conduct of the sort engaged in by the defendant . . .
would result in a substantially adverse impact on the potential market for the original."
Campbell, 510 U.S. at 590 (omission in original) (internal quotation marks and citations
omitted).
Plaintiffs presented expert testimony that the Lexicon would compete directly
with, and impair the sales of, Rowling's planned encyclopedia by being first to market.
(Tr. (Murphy) at 413:2-416:6, 417:21-418:9.) Defendant rebutted this evidence with its
own expert who testified that publication of the Lexicon is "extremely unlikely" to affect
the sales of any encyclopedia that Rowling might one day publish. (Id. (Harris) at 442:9-16.) This testimony does not bear on the determination of the fourth factor, however,
because a reference guide to the Harry Potter works is not a derivative work; competing
with Rowling's planned encyclopedia is therefore permissible. Notwithstanding
Rowling's public statements of her intention to publish her own encyclopedia, the market
for reference guides to the Harry Potter works is not exclusively hers to exploit or license,
no matter the commercial success attributable to the popularity of the original works. See
Twin Peaks, 996 F.2d at 1377 ("The author of 'Twin Peaks' cannot preserve for itself the
entire field of publishable works that wish to cash in on the 'Twin Peaks' phenomenon").
The market for reference guides does not become derivative simply because the copyright
holder seeks to produce or license one. Ty, Inc., 292 F.3d at 521; see also Castle Rock,
150 F.3d at 145 n.11 ("[B]y developing or licensing a market for parody, news reporting,
59
educational or other transformative uses of its own creative work, a copyrighted owner
plainly cannot prevent others from entering those fair use markets"); Twin Peaks, 996
F.2d at 1377.
Furthermore, there is no plausible basis to conclude that publication of the
Lexicon would impair sales of the Harry Potter novels. Plaintiffs' expert Suzanne
Murphy, vice president and publisher of trade publishing and marketing at Scholastic,
testified that in her opinion a child who read the Lexicon would be discouraged from
reading the Harry Potter series because the Lexicon discloses key plot points and does not
contain "spoiler alerts." (Tr. (Murphy) at 409:12-411:7.) Children may be an elusive
market for book publishers, but it is hard to believe that a child, having read the Lexicon,
would lose interest in reading (and thus his or her parents' interest in purchasing) the
Harry Potter series. Because the Lexicon uses the Harry Potter series for a transformative
purpose (though inconsistently), reading the Lexicon cannot serve as a substitute for
reading the original novels; they are enjoyed for different purposes. The Lexicon is thus
unlikely to serve as a market substitute for the Harry Potter series and cause market harm.
Campbell, 510 U.S. at 591 (stating that when "the second use is transformative, market
substitution is at least less certain and market harm may not be so readily inferred"); see
also Castle Rock, 150 F.3d at 145; Bill Graham Archives, 448 F.3d at 614-15. It seems
unlikely that a publisher like HarperCollins would produce the Companion to Narnia (Pl.
Ex. 62), which reveals storylines, plot twists, and the ultimate fates of the characters in
C.S. Lewis's original works, if it expected the publication would reduce sales and
enthusiasm for the original works. Accordingly, the Lexicon does not present any
60
potential harm to the markets for the original Harry Potter works. See Bill Graham
Archives, 448 F.3d at 614; Castle Rock, 150 F.3d at 145.
On the other hand, publication of the Lexicon could harm sales of Rowling's two
companion books. Unless they sought to enjoy the companion books for their
entertainment value alone, consumers who purchased the Lexicon would have scant
incentive to purchase either of Rowling's companion books, as the information contained
in these short works has been incorporated into the Lexicon almost wholesale. (Tr.
(Murphy) at 419:10-19; id. (Rowling) at 104:2-11.) Because the Lexicon's use of the
companion books is only marginally transformative, the Lexicon is likely to supplant the
market for the companion books. See Campbell, 510 U.S. at 591 (stating that "when a
commercial use amounts to mere duplication of the entirety of an original, it clearly
'supersede[s] the objects' of the original and serves as a market replacement for it,
making it likely that cognizable harm to the original will occur" (citation omitted)). At
trial, Vander Ark himself recognized that although "[t]here's no way that someone's
going to take an encyclopedia of [the Harry Potter novels] and think of it as a
replacement" (Tr. (Vander Ark) at 287:14-16), using the companion books without
"replac[ing] Ms. Rowling's encyclopedia content" presents "quite a challenge" (id. at
287:22-25). In view of the market harm to Rowling's companion books, the fourth factor
tips in favor of Plaintiffs.
Additionally, the fourth factor favors Plaintiffs if publication of the Lexicon
would impair the market for derivative works that Rowling is entitled or likely to license.
Ringgold, 126 F.3d at 81. Although there is no supporting testimony, one potential
derivative market that would reasonably be developed or licensed by Plaintiffs is use of
61
the songs and poems in the Harry Potter novels. Because Plaintiffs would reasonably
license the musical production or print publication of those songs and poems, Defendant
unfairly harms this derivative market by reproducing verbatim the songs and poems
without a license.
***
The fair-use factors, weighed together in light of the purposes of copyright law,
fail to support the defense of fair use in this case. The first factor does not completely
weigh in favor of Defendant because although the Lexicon has a transformative purpose,
its actual use of the copyrighted works is not consistently transformative. Without
drawing a line at the amount of copyrighted material that is reasonably necessary to
create an A-to-Z reference guide, many portions of the Lexicon take more of the
copyrighted works than is reasonably necessary in relation to the Lexicon's purpose.
Thus, in balancing the first and third factors, the balance is tipped against a finding of fair
use. The creative nature of the copyrighted works and the harm to the market for
Rowling's companion books weigh in favor of Plaintiffs. In striking the balance between
the property rights of original authors and the freedom of expression of secondary
authors, reference guides to works of literature should generally be encouraged by
copyright law as they provide a benefit readers and students; but to borrow from
Rowling's overstated views, they should not be permitted to "plunder" the works of
original authors (Tr. (Rowling) at 62:25-63:3), "without paying the customary price"
Harper & Row, 471 U.S. at 562, lest original authors lose incentive to create new works
that will also benefit the public interest (see Tr. (Rowling) at 93:20-94:13).
62
III. Injunctive and Statutory Relief
The Copyright Act provides that courts "may" grant injunctive relief "on such
terms as it may deem reasonable to prevent or restrain infringement of a copyright." 17
U.S.C. § 502(a). In eBay Inc. v. MercExchange, L.L.C., the Supreme Court made clear
that an injunction does not automatically follow a determination that a copyright has been
infringed. 547 U.S. 388, 392-93 (2006). A copyright plaintiff seeking a permanent
injunction still must satisfy the traditional four-factor test before the district court may
use its equitable discretion to grant such relief. The plaintiff must demonstrate: (1) that it
will suffer an irreparable injury; (2) that remedies available at law, such as monetary
damages, are inadequate to compensate for that injury; (3) that, considering the balance
of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4)
that the public interest would not be disserved by a permanent injunction. See
Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-13 (1982); Amoco Production Co. v.
Gambell, 480 U.S. 531, 542 (1987).
A. Irreparable Injury
Under the law of this Circuit, "generally when a copyright plaintiff makes out a
prima facie showing of infringement, irreparable harm may be presumed." ABKCO
Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 66 (2d Cir. 1996). Because Plaintiffs
have demonstrated a case of copyright infringement, and because Defendant has failed to
establish its affirmative defense to copyright infringement, irreparable injury may be
presumed in this case. In view of eBay, which applied the traditional four-part test for
injunctive relief in the context of a patent claim, there is some question of whether the
presumption of irreparable harm still applies. District courts, however, have continued to
63
apply the presumption post-eBay. See, e.g., Warner Bros. Entm't Inc. v. Carsagno, No.
06 Civ. 2676, 2007 WL 1655666, *6 (E.D.N.Y. June 4, 2007) (finding irreparable harm
where plaintiff had demonstrated that without an injunction, its copyrighted work would
be subject to continued copyright infringement); UMG Recordings, Inc. v. Blake, No. 06
Civ. 00120, 2007 WL 1853956, *3 (E.D.N.C. June 26, 2007) (stating that irreparable
injury is presumed when plaintiff succeeds on the merits).
Regardless, even if irreparable injury is not presumed, Plaintiffs have presented
sufficient evidence that such injury would result from Defendant's infringement in the
absence of relief. First, Plaintiffs have established that publication of the Lexicon will
cause irreparable injury to Rowling as a writer. Rowling testified that if the Lexicon is
published, it would destroy her "will or heart to continue with [writing her own]
encyclopedia." (Tr. (Rowling) at 54:9-12.) She further testified that if the Lexicon is
published--giving "carte blanche to . . . anyone who wants to make a quick bit of
money" by drawing freely from her works and opening the doors to "a surfeit of
substandard so-called lexicons and guides"--she would have much less incentive to write
her own book. (Tr. (Rowling) at 54:4-12.) By deterring Rowling from writing her
planned encyclopedia, publication of the Lexicon would also result in harm to the
charitable organizations that would receive the royalties from the sale of the book and the
reading public who would be unable to enjoy such a book. (Tr. (Rowling) at 55:1-5.)
More concretely, publication of the Lexicon would cause irreparable harm to the
sales of Rowling's companion books, all the elements of which are replicated in the
Lexicon for a similar purpose. Readers would have no reason to purchase the companion
books since the Lexicon supersedes their value. (Tr. (Rowling) at 101:25-102:12.)
64
Additionally, because the Lexicon engages in considerable verbatim copying of the Harry
Potter works, publication of the Lexicon would diminish Rowling's copyright in her own
language. Based on evidence of Vander Ark's vigorous claim to his rights in the Lexicon
website (Tr. (Rowling) at 100:18-101:7; id. (Vander Ark) at 312:6-313:13), publication
of the Lexicon may result in conflicting assertions of copyright over the same material by
Rowling on one hand and Vander Ark or RDR Books on the other. (See Tr. (Rowling)
96:10-11, 14-23 (noting her concern that if she published her own encyclopedia, RDR
Books would sue her for copyright infringement, claiming that her "paraphrase ran a little
too close to [Vander Ark's] paraphrasing").)
B. Inadequate Remedies at Law
If an injunction is not issued, Defendant is likely to continue infringing Plaintiffs'
copyright in the future. RDR Books has actively marketed the Lexicon domestically and
abroad (see supra Findings of Fact) and might gain considerable commercial success as
the first Harry Potter reference guide to hit the market after Rowling's completion of the
series. (Tr. (Vander Ark) at 255:7-14, 361:9-15; id. (Murphy) at 413:24-414:24; see Pl.
Ex. 14N.) In view of the irreparable harm that would flow from Defendant's continuing
infringement, including lost sales of Rowling's companion books and the injury to
Rowling as a writer, Plaintiffs have shown that money damages alone are an insufficient
remedy. See Lauratex Textile Corp. v. Allton Knitting Mills Inc., 519 F. Supp. 730, 732
(S.D.N.Y. 1981) (finding that money damages would not suffice where there was a
strong probability that the defendant would continue to infringe plaintiff's copyright).
C. Balance of Hardships
65
While Plaintiffs have identified their hardships if an injunction were not granted,
Defendant identifies no hardship it would suffer if publication of the Lexicon were
enjoined. The only possible harm to Defendant is the loss of the chance to sell an
infringing book, but the law does not protect this type of hardship. See My-T Fine Corp.
v. Samuels, 69 F.2d 76, 78 (2d Cir. 1934) (Hand, J.); see also Concrete Mach. Co. v.
Classic Lawn Ornaments, 843 F.2d 600, 612 (1st Cir. 1988); Apple Computer Inc. v.
Franklin Computer Corp., 714 F.2d 1240, 1255 (3d Cir. 1983). Thus, the balance of the
hardships weighs in favor of Plaintiffs.
D. Public Interest
Issuing an injunction in this case both benefits and harms the public interest.
While the Lexicon, in its current state, is not a fair use of the Harry Potter works,
reference works that share the Lexicon's purpose of aiding readers of literature generally
should be encouraged rather than stifled. As the Supreme Court suggested in Campbell,
"[b]ecause the fair use enquiry often requires close questions of judgment as to the extent
of permissible borrowing" in cases involving transformative uses, granting an injunction
does not always serve the goals of copyright law, when the secondary use, though
edifying in some way, has been found to surpass the bounds of fair use. Campbell, 510
U.S. at 578 n.10. On the other hand, to serve the public interest, copyright law must
"prevent[] the misappropriation of the skills, creative energies, and resources which are
invested in the protected work." Apple Computer, 714 F.2d at 1255. Ultimately, because
the Lexicon appropriates too much of Rowling's creative work for its purposes as a
reference guide, a permanent injunction must issue to prevent the possible proliferation of
66
works that do the same and thus deplete the incentive for original authors to create new
works.
In addition to injunctive relief, Plaintiffs seek statutory damages in this case.
Under the Copyright Act, a plaintiff may elect to recover an award of statutory damages
for each infringed work "in a sum of not less than $750 or more than $30,000 as the court
considers just." 17 U.S.C. § 504. In awarding statutory damages, courts have broad
discretion to set the amount of the award within the statutory limits. Fitzgerald Publ'g
Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1116-17 (2d Cir. 1986). Since the Lexicon has
not been published and thus Plaintiffs have suffered no harm beyond the fact of
infringement, the Court awards Plaintiffs the minimum award under the statute for each
work with respect to which Plaintiffs have established infringement. Plaintiffs are
entitled to statutory damages of $750.00 for each of the seven Harry Potter novels and
each of the two companion books, for a total of $6,750.00.
CONCLUSION
For the foregoing reasons, Plaintiffs have established copyright infringement of
the Harry Potter series, Fantastic Beasts & Where to Find Them, and Quidditch Through
the Ages by J.K. Rowling. Defendant has failed to establish its affirmative defense of
67
fair use. Defendant's publication of the Lexicon (Doc. No. 22) is hereby permanently enjoined, and Plaintiffs are awarded statutory damages of $6,750.00.
IT IS SO ORDERED
Dated: New York, New York
September 8, 2008
____[signature]_____
Robert P. Patterson, Jr.
U.S.D.J.
Copies of this Order sent to:
Attorneys for Plaintiffs
O'Melveny & Meyers L.L.P.
Attn: Dale Margaret Cendali
[address, phone, fax]
Attorneys for Defendant
David S. Hammer
[address, phone, fax]
1
Prior to the Court's present ruling, Defendant was under a temporary restraining order issued by the
Court, with consent of the parties' attorneys, on November 8, 2007. Pursuant to that order, Defendant was
temporarily restrained from completing the typesetting of the allegedly infringing book, from printing the
book and distributing the same to the public for sale, and from advertising, promoting, soliciting, licensing,
or accepting orders for the book in the United States of America and abroad.
2
This testimony was ruled admissible over Plaintiffs' hearsay objection for the purpose of showing that
Vander Ark was told by Warner Brothers that it had used the Lexicon almost every day, and not for the
truth of the statement. (Tr. at 386:24-387:1.) Regardless of whether or not Warner Brothers in fact used
the Lexicon website every day during the production of the film, Vander Ark had reason to believe based
on this statement that the website was serving its intended purpose as a reference guide to the Harry Potter
novels.
3
Rapoport admitted that Borders' order was cancelled because of the instant lawsuit. (Tr. (Rapoport) at
241:15-23).
4
The Companion to Narnia, however, is far more erudite and informative than the Lexicon. The Harry
Potter guide by Beahm does not provide citations for the sources of its information and is less
comprehensive than the Lexicon in that it covers only certain categories of information (e.g., Fabulous
Beasts, Wizards, Magical Spells, etc.).
5
Rowling went so far as to say that "if Mr. Vander Ark had put quotation marks around everything he has
lifted, most of the Lexicon would be in quotation marks." (Tr. (Rowling) at 64:19-21.)
6
Some of the most extensive direct quotation occurs where the Lexicon reproduces a song or poem that
appears in the novels, such as the "Hogwarts' School Song," the Sorting Hat Song, and the poem, "His
Eyes are as Green as a Fresh Pickled Toad." (Pl. Ex. 11 (Birchall Decl.) at ¶ 8, Pl. Ex. 11E-11G.) During
his testimony at trial, Vander Ark conceded that these entries took too much and offered to remove the
poems and songs from the Lexicon. (Tr. (Vander Ark) at 397:1-3.) In its post-trial brief, Defendant
acknowledged this testimony (Def. Post-trial Br. ¶ 51, at 17), but did not confirm that Vander Ark's
proposal would be adopted by RDR Books.
7
Italics are used in the block quotations to highlight the original language that is copied or paraphrased.
The italics do not appear in the originals.
8
Having determined that the charts introduced by Plaintiffs (Pl. Exs. 47, 48, 43, and 44) do not consistently
represent the language from the Lexicon with accuracy, the Court relies not on the charts but on the
underlying texts themselves for its comparisons.
9
Fantastic Beasts & Where to Find Them is fifty-nine pages including the introductory material.
10
The passage describing the Chudley Cannons from Quidditch Through the Ages reads in full as follows:
The Chudley Cannons' glory days may be considered by many to be over, but their
devoted fans live in hope of a renaissance. The Cannons have won the League twenty-one times, but the last time they did so was in 1892 and their performance over the last
century has been lackluster. The Chudley Cannons wear robes of bright orange
emblazoned with a speeding cannon ball and a double "C" in black. The club motto was
changed in 1972 from "We shall conquer' to "Let's all just keep our fingers crossed and
hope for the best."
(Pl. Ex. 2 at 33-34.) The Lexicon entry for "Chudley Cannons" reads in part as follows:
. . . The Cannons wear orange robes with a speeding black cannon ball and a double
letter C on them. They hail from Chudley. The Cannons have won the league twenty-ojne
[sic] times, but the last time was in 1892. As a result of this endless losing streak, the club
motto, which used to be "We shall conquer", was changed in 1972 to 'Let's all just keep
our fingers crossed and hope for the best (QA7). . . .
11
Quidditch Through the Ages contains a chart of all the fouls in quidditch and their description. (Pl. Ex.
2, at 29-30.) The Lexicon reproduces the descriptions from this chart in the entries for each of the fouls.
12
At trial, Exhibits 45 and 46, which contain charts comparing text from the Famous Wizard Cards and The
Daily Prophet with text from the Lexicon, were admitted as demonstrative exhibits, but the underlying
works were not introduced.
13
The post-trial briefs of the parties both suggest that Ringgold's quantitative/qualitative approach is the
applicable test for substantial similarity in this case, and the Court agrees. Since the original and secondary
works are of different genres, the question of substantial similarity is difficult to examine using the other
tests applied in this Circuit. See Castle Rock, 150 F.3d at 139 ("Because in the instant case the original and
secondary works are of different genres and to a lesser extent because they are in different media, tests for
substantial similarity other than the quantitative/qualitative approach are not particularly helpful to our
analysis.").
14
The Court analyzes the amount of expression copied from the Harry Potter series in the aggregate, rather
than from each individual novel in the series, following the Second Circuit's reasoning in Castle Rock, 150
F.3d at 138 (observing that "[o]ur precedents . . . tend to support the aggregate analysis," and resolving to
"treat Seinfeld--a discrete, continuous television series--as a single work"). Cautioning against the
aggregate approach used in Castle Rock, the Nimmer treatise warns that the "broader the series, the more
all-encompassing plaintiff's copyright becomes, thereby squelching new expression in direct defiance to
copyright's mandate of stimulating the production of new works." 4 Nimmer § 13.03[A][3]. In this case,
however, because the Harry Potter novels tell one coherent narrative in a series, rather than tell discrete
tales, the danger identified by Nimmer is less likely to exist.
15
Not included in the Court's quantitative analysis is the small amount of information appearing in these
450 pages that is taken from other sources, common knowledge, or Vander Ark's contribution.
16
Moreover, the Lexicon's arrangement of fictional facts, although far more extensive, is not so different
from that of Fantastic Beasts, which organizes descriptions of creatures in alphabetical order, and
Quidditch Through the Ages, which contains individual descriptions of quidditch fouls, teams, and
countries where quidditch is played.
17
The law in this Circuit has recognized that "even when one work is 'based upon' another, 'if the
secondary work sufficiently transforms the expression of the original work such that the two works cease to
be substantially similar, then the secondary work is not a derivative work and, for that matter, does not
infringe the copyright of the original work.'" Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d
112, 117 (2d Cir. 2003) (quoting Castle Rock, 150 F.3d at 143 n.9).
18
This distinction is critical to the difference between derivative works, which are infringing, and works of
fair use, which are permissible. See Castle Rock, 150 F.3d at 143 ("Although derivative works that are
subject to the author's copyright transform an original work into a new mode of presentation, such works--
unlike works of fair use--take expression for purposes that are not "transformative."); Twin Peaks, 996
F.2d at 1375-76 (suggesting that whether an abridgement is a fair use rather than a derivative work may
depend on whether it serves "a transformative function and elaborates in detail far beyond what is required
to serve any legitimate purpose"). But see Blanch v. Koons, 467 F.3d 244, 252 n.4 ("A derivative use can
certainly be complementary to, or fulfill a different function from, the original.").
19
Also, unlike the defendants in Castle Rock who used the cachet of Seinfeld on the cover of the trivia
book to entice fans, RDR Books has changed the title of the Lexicon to bear no reference to Harry Potter
and at Plaintiffs' request added a prominent disclaimer on the book's cover.
20
In its original motion papers, Defendant argued that the Lexicon was a work of scholarship. In his
testimony at trial, Roger Rapoport maintained this position. Defendant's fair use defense has since changed
its angle and no longer characterizes the Lexicon as a scholarly work. Defendant's expert Janet Sorensen
admits that the Lexicon book is not a work of scholarship (Tr. (Sorensen) at 538:14-15), and Vander Ark
testified that commentary and analysis are not the purpose of the Lexicon (Tr. (Vander Ark) at 283:8-14).
21
Nor does the Court find Defendant's allegations of Plaintiffs' copyright misuse and unclean hands to
amount to more than aggressive protective actions permitted by copyright law. Defendant apparently
agreed, as it abandoned these defenses by the end of trial.
22
To demonstrate that "Albus Dumbledore" could be described without using Rowling's words or details
from the novels, Plaintiffs use the testimony of Defendant's expert, identifying Dumbledore as "the master
of Hogwarts in Harry's time there and for decades before that. He's one of the main characters. He's sort
of very wise, almost a kind of father figure to Harry. He is the leader of the sort of good force in the
novel." (Tr. (Sorensen) at 514:13-18.)
23
Plaintiffs suggest that the Lexicon could have described "Bertie Bott's Every Flavor Beans" as follows:
"A favorite candy in the wizarding world, similar to jellybeans but with unexpected and sometimes
disgusting flavors." (Pl. Post-trial Br. at 42.)
24
In fact, the Lexicon borrows from the Harry Potter works with approximately the same liberty that the
Companion to Narnia (Pl. Ex. 62), written by third-party author Paul F. Ford and published by copyright
holder HarperCollins, borrows from C.S. Lewis's The Chronicles of Narnia.
25
See Tr. (Murphy) at 419:24-2 (stating her opinion that publication of the Lexicon would open the doors
to widespread creation of works that copy too much from the Harry Potter works).
67
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