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Judge Blocks Book That Takes 'Too Much' From 'Harry Potter'
New York Law Journal
September 09, 2008
In a victory for Harry Potter author J.K. Rowling, a Michigan publisher has been blocked from publishing a lexicon listing characters, places, spells, creatures and other details from the world of the wildly popular boy wizard.
Southern District of New York Judge Robert Patterson ruled Monday in Warner Bros. Entertainment Inc. v. RDR Books, 07 Civ. 9667, that the lexicon "appropriates too much of Rowling's creative work for its purposes as a reference guide."
Finding that RDR Books had violated the Copyright Act, 17 U.S.C. §§101 et seq, the judge permanently blocked publication and awarded Rowling and Warner Brothers $6,750 in statutory damages.
The decision comes after an April bench trial in which Rowling took the witness stand to denounce Steven Vander Ark, the author of "The Harry Potter Lexicon," for a "sloppy and lazy" product that amounted to a "betrayal" and the "wholesale theft" of her work.
Vander Ark portrayed himself as a devotee of both the series and of Rowling who had read each of her novels several times and established his own Harry Potter Web site in 2000 as a central reference point for like-minded fans. According to testimony at trial, Rowling herself had praised the Web site.
Attorney Anthony Falzone, the executive director of the Fair Use Project at Stanford Law School Center for Internet and Society, and Manhattan solo practitioner David Hammer argued for RDR Books that "The Harry Potter Lexicon" was a "transformative" reference work protected by the First Amendment.
RDR had argued that even though there was actual copying involved, there was no infringement because Rowling and Warner Brothers failed to show that the lexicon was "substantially similar" to the Harry Potter novels.
In the alternative, RDR contended that, even if infringement was found, the lexicon was a fair use allowed by law for reference books.
Judge Patterson concluded that the lexicon copied the Harry Potter works in "sufficient quantity" to support a finding of substantial similarity. To prove his point, he cited a total of 450 pages drawn from the 4,100 pages from Rowlings' Potter novels and companion books.
"As to the qualitative component of the substantial similarity analysis," he said, "plaintiffs have shown that the lexicon draws its content from creative, original expression in the Harry Potter series and companion books."
The judge said the defendants could not use as an excuse the fact that they reproduced "original expression in fragments or in a different order."
Patterson agreed the work was "transformative," but said other factors in the analysis persuaded him that the Copyright Act had been violated. He said the lexicon "sporadically leaves out material," but "essentially takes wholesale from the companion books."
The judge's agreement that the lexicon was transformative was based on its value as a reference tool and the fact that, in the words of the 2nd Circuit U.S. Court of Appeals in Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132 (1998), it offers, at times, "new information, new aesthetics, new insights and new understandings."
But he said the "transformative character of the Lexicon is diminished ... because the Lexicon's use of the original Harry Potter works is not consistently transformative."
And "a finding of verbatim copying in excess of what is reasonably necessary diminishes a finding of transformative use."
The judge declined to find that RDR and Vander Ark acted in bad faith. He said they were entitled to proceed with plans for publishing the lexicon before competitors did the same.
But he was also persuaded that Rowling's market for some of her own works would be damaged should he not grant an injunction.
In the end, Patterson said "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," he said. "In striking the balance between the property rights of the 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 [to] readers and students; but to borrow from Rowling's overstated views, they should not be permitted to 'plunder' the works of original authors."
Rowling said in a statement, "I took no pleasure at all in bringing legal action and am delighted that this issue has been resolved favourably. I went to court to uphold the right of authors everywhere to protect their own original work. The court has upheld that right."
She said the proposed lexicon had taken "an enormous amount of my work and added virtually no original commentary of its own."
She added, "Many books have been published which offer original insights into the world of Harry Potter. The lexicon just is not one of them."
Warner Bros. welcomed the verdict in a statement.
"As a content company, it is imperative that we work vigorously on all fronts to protect the intellectual property rights of those who create the stories and characters, words, pictures and music that entertain and benefit the worldwide audience," the company said.
Dale Margaret Cendali of O'Melveny & Myers represented Rowling and Warner Bros.
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."
