No, it’s not the eighth installment of the Rowling series – rather, it’s the latest installment of the ongoing legal fistfight over RDR Books and Steven Vander Ark’s attempt to publish a book version of the on-line guide to the Harry Potter wizarding world. (I posted briefly on this earlier, when I was annoyed by clueless coverage of the case by the NY Times and Joe Nocera.) The trial in the case starts
9:30AM on 24 March [update: it’s been moved to 14 April, though I don’t know why – thanks to Brandy Karl for the logistics tip!] before Judge Robert Patterson at courtroom 24 of the Moynihan Courthouse, 500 Pearl Street, in New York City. (Hat tip to Lauren Gelman of Stanford’s Center for Internet and Society for the information, and to Fred von Lohmann for distributing it.)
- the plaintiffs claim the Lexicon violates Rowling’s copyrights in her novels and that the book’s cover blurb with her praise of the Web site violates federal and NY state trademark law;
- the defendants respond that the book doesn’t infringe Rowling’s copyrights and, even if it did, it’s protected by fair use, and also that there’s no TM violation;
- I think the book infringes Rowling’s copyrights, that the use isn’t fair, that the trademark claim is weak, that the plaintiffs will win on the copyright claim, and that this outcome is a good thing.
- Documents are available from the Justia search engine and also from the CIS Fair Use Project site. (Props to Brandy Karl for the links, though she’ll disagree vehemently with my reasoning.)
See below the jump for my analysis on the copyright issues. (I’ll defer the TM analysis for a day or so since I’m technically still on spring break and already feel like a nerd for writing this much.)
1. Copyright Infringement?
First, Rowling and Warner Bros. have to show a prima facie case for infringement – in other words, is it plausible to think RDR and Vander Ark have violated copyright law? To prove a violation of the reproduction right, Rowling / WB need to show 1) access by RDR / VA to the Potter works (easy) and 2) similarities between the Lexicon book and the Potter works that demonstrate copying of protected material. Since the Lexicon is nearly an encyclopedia of the Potter world, point 2 seems a lock. Thus, absent a defense, liability for infringement seems easy. (To be precise, there seem to be at least 3 theories for copyright infringement: 1) violation of the 106(1) reproduction right, for copying characters, plot, dialogue, etc. from the books and movies; 2) violation of the 106(2) derivative works right, for recasting or modifying the Potter works; and 3) violation of the 106(3) distribution right, for distributing the infringing works. Since there haven’t been public sales yet of the Lexicon book, claim 3 of these seems the weakest link.)
2. Fair Use?
Assume Rowling / WB make out a prima facie case for infringement. RDR and VA might still be off the hook if their use of the Potter works is fair under 17 U.S.C. 107. Congress set up 4 non-exclusive factors to evaluate a fair use claim: what is the purpose and character of that use (is it transformative)? What is the nature of the copyrighted work? How much – amount and substantiality – of the copyrighted work is used? And what effect will that use have on actual and potential markets for the work? (Importantly, these are non-exclusive factors – courts are free to find and use others – and there’s no explicit guide to weighing them. Fair use is like gumbo: you dump everything in together, mix it, simmer, and see how it tastes in the end. Lawyers call this a “standard” rather than a “rule” – “don’t drive too fast” versus “don’t drive faster than 55 mph.”)
I want to take these 4 factors out of order. Start with amount and substantiality (factor 3). The Lexicon incorporates a lot – if not most – of the Potter works. It’s an encyclopedia – if it wasn’t comprehensive, it wouldn’t be worth much. So, there’s significant copying from a quantitative perspective. Qualitative analysis seems somewhat less damning, since the book is more judicious about quotes from the sources, but it still clearly cuts against RDR / VA: there’s substantial copying of important expression. So, factor 3 cuts against the defense.
Now, nature of the copyrighted work: the Potter books / films are published, which helps a fair use claim, but they’re fictional, which hurts, since fictional works get greater (“thicker”) copyright protection. Factor 3 goes against the defense.
Market analysis: generally, market analysis (factor 4) vies with transformation (factor 1) for pride of place. The two also interrelate: the more transformative a new work, the more market harm to the copyrighted work courts are likely to tolerate. Here, market analysis has to be speculative: the book hasn’t been published yet. So, Rowling / WB have to project likelihood of harm, mostly by focusing on Rowling’s plans to write her own encyclopedia. (Interestingly, for you copyright geeks, note that this approach – by now the standard for courts in copyright cases – tracks Justice Blackmun’s dissent in Sony for market analysis, not the majority opinion by Justice Stevens. It’s a nice example of how a clear (though snippy) dissent can influence, significantly, future legal analysis.) Rowling’s lawyers clearly overstep by arguing that “[not] every person who purchases the [RDR/VA] Book [would] purchase a second encyclopedia, even if it is written by Ms. Rowling.” (Mem. in Support of Prelim. Inj. at 24.) The test isn’t any market harm, but rather the level of market harm relative to other considerations. My own take is that the market factor also cuts against RDR/VA, but that’s mostly because I don’t think the new Lexicon book adds much in the way of transformative elements, and hence we should be less willing to tolerate displacement of sales of the Potter books / movies, or future sales of a Rowling encyclopedia.
Finally, transformation. The RDR/VA Memorandum opposing a preliminary injunction sets out several arguments that the new book is transformative: it creates a reference tool, like a search engine (citing Perfect 10 v. Amazon and, by implication, Kelly v. Arriba Soft); it organizes a voluminous, scattered Potter universe into an easy-to-use supplement; it adds commentary and analysis of the Potter works; it unpacks obscure references and allusions; and brings in substantial outside research. The memorandum implicitly takes up economic concerns under the market (4th) factor here also, calling the Lexicon book an economic complement rather than a substitute. (See p. 12.)
For transformation, let’s dispose quickly of a red herring: RDR/VA’s work – and it’s extensive – in cataloging and assembling information about the Potter world gets zero weight in fair use analysis. Feist makes this clear: “sweat of the brow” copyright is dead – you get no protection for your work because of the effort involved in pulling it together. Rather, the key is the new expression you add – or, here, the new transformative expression. And I don’t think there’s enough of it.
The search engine analogy is intriguing but flawed. The Web operates largely on an implied license model: we let Google index sites (unless they opt out via ROBOTS.TXT) because society needs search engines and the transaction costs of negotiating a license with each site owner are prohibitive. Moreover, as Kelly points out, there’s no deliberate targeting of a specific work – search engines scoop up everything. And finally, indexing via search engines helps rather than hurts copyright owners: the thumbnail images in Kelly and Perfect 10 didn’t compete with the full-size originals, but instead pointed consumers to them. (And if I link to Perfect 10’s Web site, thereby pointing you to it, this blog goes from PG to NC-17 really fast.) The Lexicon book can advance this argument somewhat – it will probably drive some sales of the original Potter works, as most derivatives do – but it’s clearly less powerful than for search engines.
The best argument for RDR/VA is the outside research and the analysis / commentary. This isn’t a trivial argument, and I do want to protect non-academic research. But my subjective analysis is that, in the Second Circuit, there isn’t enough original analysis / criticism / commentary to save the Lexicon book. The primary purpose of the work isn’t to critique the Potter world; it’s to provide a guide to it. We might ask, as Justice Blackmun did, whether this work is “productive”: does it add sufficient value to society to tolerate its harms to Rowling / WB’s copyrights, and to the implied harm the precedent would do to other copyright owners? In short, does the Lexicon generate positive externalities? The answer is “Yes,” but I think Castle Rock, Twin Peaks, and Paramount v. Carol Publishing (11 F. Supp. 2d 329 (SDNY 1998)) show that the Second Circuit employs rather stringent standards for transformation that cut against a reference or supplementary work. In the end, I think the first factor – is the work transformative? – also cuts against RDR/VA.
4-0 looks like a clean sweep, as the Red Sox have demonstrated. If Judge Patterson disagrees with my analysis (not that he’ll ever learn about it!) on factors 1 or 4, it’s a closer call, as the inverse relationship between these factors would help the defendants. But I don’t think that’s likely.
Is this a good outcome? I think so. Remember that the 4 factors are non-exclusive. I’d argue Judge Patterson should consider an additional factor here: behavior by the copyright owner. Rowling has been supportive – very much so – of the Lexicon as long as it remained on-line and relatively non-commercial. To the degree that free speech concerns arise in this case (as the memo in opposition of the injunction argues, at p. 6), Rowling’s conduct mitigates those worries. (Eldred v. Ashcroft, which establishes fair use as constitutionally necessary, also notes there’s a difference between making one’s own speech and making someone else’s speech; 537 U.S. 186, 221 (2003).) She’s allowing this information to be presented to her fans and the public in general, while trying to minimize financial harm to her works. Copyright is often presented as a balance between incentives to produce and access to that production; here, Rowling’s approach seems to find that balance. When a use is commercial, it is slightly disfavored for fair use (copyright geeks: compare Sony‘s presumption here with Campbell‘s tacit repudiation of that position), though courts recognize that even fair use has to pay the bills. As a derivative work becomes more transformative, I think we should tolerate greater commerciality (because there’s less risk of substitution for the original), but where a copyright owner wields her legal entitlements not to block a derivative (as Acuff-Rose tried to block 2 Live Crew’s parody of Roy Orbison) but to cabin its economic impact, I think we should give that approach greater deference. In short, we want to encourage good behavior by copyright owners. (The plaintiffs and defendants take up this question: RDR/VA notes that Rowling/WB haven’t sued other compendiums, and Rowling/WB point out that we don’t want to press copyright owners to police fanfic in the same way that TM owners police their marks.)
As I’ve written, I would favor a change in the law that would immunize derivative works, and other, smarter folks advocate changes that would do away with injunctions in favor of a compulsory license / revenue-sharing scheme. But with the current state of the law, I think the Lexicon loses. In Potter terms, though, I think this is a triumph for Dumbledore’s Army, and not for the Death Eaters.