“Of the Horcrux, wickedest of magical inventions, we shall not speak nor give direction.” - from the introduction of Magick Moste Evile, Hogwarts library (HBP18)”

— excerpt from The Harry Potter Lexicon, online at http://www.hp-lexicon.org/magic/devices/ horcruxes.html (25 Sept 08)

Although author J.K. Rowling has finished writing the Harry Potter series of novels, fan conferences and websites continue to flourish. There has been no shortage of fan anger, disappointment and hate mail to film studio Warner Bros. Entertainment Inc. over its recent decision to delay the release of the film Harry Potter and the Half-Blood Prince by eight months to July 2009.

The Harry Potter brand is estimated to be worth more than £7 billion, according to the telegraph.co.uk. The Wall Street Journal recently reported that the five prior Harry Potter films grossed almost $4.5 billion in worldwide box-office revenue, making the series “the biggest franchise in history.” Potter-branded merchandise abounds ? including toys by Mattel, video games by Electronic Arts, bandages by Johnson & Johnson and booger-flavoured jellybeans by Jelly Belly.

In the past, Warner Bros. invited operators of Harry Potter fan websites to movie premieres to help generate buzz before upcoming theatrical releases. It flew one such fan, Steven Vander Ark, to the set of the fifth film, The Order of the Phoenix, in 2006. Vander Ark had launched a fan website called “The Harry Potter Lexicon” in 2000 as a hobby. The site organizes information about characters, places, spells, creatures and physical objects in the world of Harry Potter.

In 2004, Rowling gave the site her fan site award and wrote that she had consulted the site to check facts about her books. She described the Lexicon site as “A website for the dangerously obsessive; my natural home.” American publisher Scholastic Inc. and the producer of the films acknowledged to Vander Ark that they used the Lexicon site for reference. In 2007, Vander Ark visited the studios of Harry Potter video game producer Electronic Arts, and claimed that he saw the walls of the studio covered with printouts from the Lexicon site.

By fall 2007, Vander Ark had made a deal with RDR Books to publish a print book version of the Lexicon site, in the format of an A to Z guide to the facts of Harry Potter. Warner Bros. and Rowling sued RDR Books. During the trial, Vander Ark cried on the witness stand. Rowling said she “came close to tears” during her testimony. Where did it all go wrong? This six-question primer looks at the recent court decision over the Lexicon book.

WHAT? Warner Bros. Entertainment Inc. and J.K. Rowling v. RDR Books, U.S. District Court, Southern District, New York (07 Civ. 9667 (RPP)). Plaintiffs Warner Bros. and Rowling commenced a court action against defendant RDR Books, seeking injunctive relief and statutory damages for claims including copyright infringement. The court awarded the plaintiffs a permanent injunction and statutory damages.

WHO? J.K. Rowling is the author of the Harry Potter series of books. She also authored two short companion books to the series, Quidditch Through The Ages and Fantastic Beasts & Where to Find Them (the latter being an A to Z encyclopedia of imaginary beasts and beings in the Harry Potter fictional world). She also authored “Daily Prophet” newsletters, and a series of “Famous Wizard Cards” used in Harry Potter video games produced by Electronic Arts under licence from Warner Bros. Warner Bros. Entertainment Inc. owns exclusive worldwide distribution rights in the Harry Potter films and related ancillary merchandise.

RDR Books is the publishing company that planned to release a book version of the Lexicon site. Steven Vander Ark is a Harry Potter fan, former teacher and librarian, who owns and is the principal author of the popular Lexicon fan site.

WHEN? The Lexicon book was scheduled for release in late October 2007. The court action was commenced on October 31, 2007. The trial ended on April 16, 2008. The court rendered its written Opinion and Order on September 8, 2008. (The court had earlier ? on November 8, 2007 ? issued a temporary restraining order, on consent, against RDR Books, preventing it from typesetting, printing, distributing, selling, advertising, soliciting or accepting orders for the Lexicon book.)

WHERE? Rowling initially published the first of seven Harry Potter books in the United Kingdom, and owns US copyright registrations in each of the seven books, the two companion books, “The Daily Prophet” newsletters and the “Famous Wizard Cards.” Warner Bros. owns US copyright registrations in the Harry Potter films. Warner Bros. and Electronic Arts jointly own copyright in Harry Potter video games, in which Electronic Arts owns US copyright registrations. RDR Books is based in the US state of Michigan, where Vander Ark also resides. The case was tried in the Federal District Court in Manhattan, New York.

WHY? The court held that the Lexicon book infringed the copyright of Warner Bros. and J.K. Rowling in the Harry Potter works, and RDR Books failed to establish its defence of fair use. The plaintiffs established that:

1. actual copying had occurred; and

2. the copying amounted to an improper or unlawful appropriation.

The court stated that copying is actionable where the second work bears a substantial similarity to protected expression in the earlier work. The substantial similarity test examines whether the copying is qualitatively and quantitatively sufficient to demonstrate that infringement (actionable copying) has occurred. A lower threshold of copying may meet the substantial similarity test where the work copied is creative, original expression.

In finding that the plaintiffs had established a prima facie case of infringement, the court considered a range of factors: 

  • Rowling’s ownership of copyright in key Harry Potter works —Judicial notice was taken of Rowling’s copyright registrations in the various works. However, the court only addressed infringement in respect of the seven novels and the two companion books, since copies of the works of “The Daily Prophet” and “Famous Wizard Cards” were not entered into evidence. 
  • The Lexicon book is a non-fiction reference guide — The Lexicon book does fit within the narrow genre of non-fiction reference guides to fictional works. The Lexicon book was an A to Z guide to the creatures, characters, objects, events, spells, potions, magical items or devices, forms of magic, and places in the world of Harry Potter.

The manuscript had 2,437 entries organized alphabetically. Most entries gathered and synthesized pieces of information from among the Harry Potter novels. The Lexicon book stated that the only source of its content was the work of Rowling, including the novels, her interviews and other materials she developed or wrote herself. The Lexicon book included commentary and background information from outside knowledge on occasion. However, claims that Vander Ark had also used outside reference sources could not be substantiated since no other citations to third-party works appeared in the manuscript, apart from four dictionary citations.

  • Inconsistent thoroughness of citation — Although information in the entries was generally followed by citations in parentheses indicating its location in the Harry Potter works, (i) some entries contained few citations relative to the information provided, and (ii) citations to the novels provided only the book and chapter number, without reference to editions of the books. 
  • Verbatim direct quotation or close paraphrasing from Harry Potter works — The court found the Lexicon book contained “at least a troubling amount of direct quotation or close paraphrasing of Rowling’s original language.” Occasionally, quotation marks were used, but more often original language was copied without quotation marks. Sometimes the Lexicon book used italics. Often it did not indicate which language was original expression. The book reproduced entire songs or poems appearing in the novels.

Rowling’s “artistic literary devices” also were often copied in close paraphrase, including descriptive language and similes. As an example, compare language from the novel Harry Potter and the Order of the Phoenix describing Professor Griselda Marchbanks “with a face so lined it looked as though it had been draped in cobwebs,” with her description in the Lexicon: “… her face so lined it appeared draped in cobwebs.” Rowling provided the court with numerous examples of verbatim copying or close paraphrasing. 

  • Summarizing key events provides synopsis of primary narrative thread — The court drew attention to longer entries that described important objects or events, or traced the development of an important character. The court did not see these entries as abridgements or plot summaries, nor as character studies or analysis. Rather, they were like synopses or outlines of the narrative revolving around those characters, objects or events.

The entries proceeded chronologically, and did not follow the plot structure of the novels. However, they did provide a “skeleton of the plot elements that hold the story together.” Also, because the characters Harry Potter and Lord Voldemort drive the narrative and appear in almost every chapter of the series, describing the events surrounding them “ultimately yields a synopsis of the primary narrative thread” of the series. 

  • Extensive copying from Rowling’s companion books — Rowling’s companion books Quidditch through the Ages and Fantastic Beasts and Where to Find Them were both written in non-narrative form, presenting fictional facts without commentary. The court found that the Lexicon book took wholesale from the companion books, sporadically leaving out material. In particular, the Lexicon book copied substantially from the descriptions of beasts in the A to Z section of Fantastic Beasts and Where to Find Them. 
  • A sufficient quantity of copying of “wholly original” works — Most of the entries contained direct quotations, paraphrases, plot details or summaries of scenes from one or more of the Harry Potter novels. The court took the position that where copyrighted work is “wholly original,” a lower quantity of copying will support a finding of substantial similarity. The court wrote: “Although hundreds of pages or thousands of fictional facts may amount only to 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.” The copying was even more extensive in respect of the companion books. 
  • Qualitative copying of the creative, original expression from the Harry Potter works — The invented “facts” of characters, plots and events are fictitious expressions that come from an author’s imagination and are original elements protected by copyright. The court considered past US cases involving the unauthorized use of fictional “facts” from the television series Seinfeld in a trivia game, and from Star Trek in a fan book about the series. Here each “fact” reported by the Lexicon book was expression invented by Rowling. Even if used in its factual capacity (to report information about the series), that expression would not take on the status of fact and lose its copyrightability. If such facts are copied in fragments or in a different order than they appear in the original works, this rearrangement would not preclude a finding of substantial similarity.

The court noted the use of fictional “facts” in their factual capacity may be relevant to the question of fair use resulting from transformative purpose of the second work. However, it does not influence the analysis of infringement and substantial similarity. Also, the considerable amount of direct quotation, close paraphrasing and synopses of major plot elements supported a finding of sufficient qualitative copying and substantial similarity.

In rejecting the defendant’s defence of fair use, the court balanced factors including:

  • The Lexicon book is not a derivative work, its purpose is transformative — The Lexicon book was not a guidebook providing a detailed plot summary or abridgement of the original work. Rather, the Lexicon book reorganized pre-existing material and gave it another purpose, namely a reference purpose. It would not serve the entertainment, aesthetic or expressive purpose of the original works. It did not recast, transform or adapt the work into another medium, mode, language or revised version. It no longer represented the original works of authorship.

The use of the companion books was marginally transformative: they are in encyclopedic form and could be used for a reference purpose, but they are marketed and packaged for an entertainment purpose. The Lexicon book’s use of material from the companion books added some productive purpose by synthesizing the original material within a complete reference guide. The Lexicon book occasionally added new information or insights. The court found that nevertheless, “verbatim copying in excess of what is reasonably necessary diminishes a finding of transformative use.” 

  • The commercial nature of the Lexicon book weighs slightly against fair use — The Lexicon book was clearly intended for commercial gain. To the extent that the book could provide a useful reference guide to the public, the use was fair and commercial gain only weighed slightly against a finding of fair use. 
  • While the defendant RDR Books did not act in bad faith, its conduct weighs slightly against fair use — RDR Books reasonably believed that that its use of the Harry Potter works constituted fair use. RDR Books advised Vander Ark that it had looked into the legality of publishing the Lexicon site in book form and had determined that doing so would be legal. In response to Vander Ark’s concern about the legality of publishing the Lexicon book, RDR Books agreed to defend and indemnify Vander Ark in the event of any lawsuits. In preparing the book, Vander Ark had not used any material that was not already available to the public. 
  • Amount and substantiality of use weighs more heavily against fair use — The court found that on balance, the amount and value of original expression taken was more than reasonably necessary. It was reasonably necessary for the Lexicon book to make considerable use of the original works in order to fulfill the Lexicon book’s transformative purpose as a reference guide. However, the extent of verbatim copying and close paraphrasing, including the copying of the author’s literary devices or distinctive descriptions, was substantial. At times, the Lexicon book appeared to retell parts of the storyline. The Lexicon book also took wholesale from the companion books. This extent of taking weighed against a finding of fair use given the expressive value of the language and the amount taken. 
  • The creative nature of the Harry Potter works weighs against fair use by the Lexicon book — The court reiterated US case law establishing that copyright law generally favours the protection of creative and fictional works over factual works. 
  • Market harm to the Harry Potter works weighs against fair use — The Lexicon book is unlikely to cause market harm to the sale of Harry Potter novels, since they are enjoyed for a different purpose. However, the sale of the Lexicon book could harm sales of the companion books.

Also, the unauthorized verbatim copying of songs and poems could harm the market for derivative works. The court noted that although Rowling had publicly stated her intention to publish her own encyclopedia, the market for reference guides is not exclusive.

Given that infringement was established and that the defendants could not establish fair use, the court found that irreparable injury was presumed as a result of publishing the Lexicon book. Monetary damages would not compensate harm that could result from RDR’s continuing infringement, including lost sales of Rowling’s companion books and injury to Rowling as a writer. Conversely, RDR Books did not identify any hardship it would suffer as a result of being enjoined.

The court made two notable final comments.

1. Although the Lexicon book, in its current state, was not a fair use of the Harry Potter works, reference works generally should be encouraged and not stifled.

2. The court awarded only minimum statutory damages in the amount of $6,750 ($750 for each of the seven novels and two companion books). This award reflected the fact that the Lexicon book had not been published and no harm had been suffered beyond the fact of infringement.

HOW? This decision is a detailed, systematic balancing of the factors underlying copyright infringement and fair use under US law. The court acknowledged several times the importance of the public interest and lack of exclusivity in creating informational, reference works. On one hand, the court saw that the amount of quantitative and qualitative taking from the original Harry Potter works, combined with the commercial purpose and potential market harm, surpassed an argument for fair use. On the other hand, the court left open the possibility that reference works like the Lexicon book could constitute fair use of original works, if the expressive and original content used was no more than necessary. The fact that Rowling and Warner Bros. had given past support to the Lexicon site as a fan website had little effect on this decision.

THE LAST WORD: This case may be of interest in the context of fans and user rights in the digital era. The court acknowledged the importance of dissemination and public interest, but drew distinctions as to when such use crossed the line into unlawful appropriation.

The case may also be of interest in other jurisdictions, including Canada. There are differences between the concepts of fair use in the United States and fair dealing in Canada, even before addressing moral rights. However, Canadians are still waiting for their courts to apply the concepts of (i) balancing public interest versus creator reward and (ii) an open list of purposes and a flexible approach to interpreting fair dealing.

Following the Supreme Court of Canada decisions in CCH Canadian Ltd. v. Law Society of Upper Canada and Théberge v. Galérie d’Art du Petit Champlain inc., reasons like those in the Lexicon case could provide guidance in balancing infringement and fair use or dealing factors, even if the hierarchy of factors may differ between the countries. Here, it seems unlikely that the end result would have been much different in principle had these facts been tried in Canada post-CCH and post- Théberge. However, the result would have given creators, users and copyright lawyers in Canada a recipe less like magic, and more like precedent.