Rowling 1, Lexicon 0

J.K. Rowling has won her copyright lawsuit against RDR Books, the (now former) publisher of the Harry Potter Lexicon book. The decision is 68 pages long and is available courtesy of the Wall Street Journal. I thought Rowling would, and should, win, but I’m not impressed by the court’s reasoning, especially on the key question regarding derivative works. Hopefully the likely Second Circuit appeal will do better. Here is some snapshot analysis (below the jump) – I haven’t completely digested the decision yet.

  • At p. 39, the court argues that a parody isn’t a derivative work. I think that’s incorrect: many (if not most) parodies are substantially similar to the original, and are saved by fair use, not because they fall outside the definition of derivative work. The court elaborates a bit more carefully in FN17 on the substantial similarity point, but I still think this is inaccurate.
  • At 40, the court simply holds that the Lexicon isn’t an unauthorized abridgement without ever really defining what an abridgement is. Wouldn’t Cliffs Notes count as abridgements? (Maybe not, but parsing statutory language requires more precision than this section offers.)
  • Most oddly, at 40, the court holds that the Lexicon isn’t a derivative work. It’s correct that the Lexicon may not fall into one of the statutory categories, but those are expressly illustrative and not exhaustive. If it’s not a derivative work, what is it? Something sui generis? A poorly-formed copy? The decision really goes off the rails here without sufficient care in thinking about what a derivative work actually is. I believe the Second Circuit’s characterization of derivative works is much broader than Judge Patterson does.
  • FN18 on page 40 is interesting, but I disagree with it. The court seems to treat derivative works and works of fair use as mutually exclusive. I don’t think that’s right. The Wind Done Gone is clearly a derivative work of Gone With the Wind, but the 11th Circuit also held that it’s protected as fair use. This strikes me as getting the analytical procedure out of order. It should be: 1) Is there substantial similarity? 2) Does the accused work add new expression, either with new material or via new arrangement / editing / etc.? If the answers to those two questions are “Yes,” then we’re dealing with a derivative work that is prima facie infringing. Then and only then do we ask 3), is this new derivative immunized under fair use? If the answer is yes, then we’ve a derivative work that is also a work of fair use.
  • At 44, the court states that the Lexicon “does not supplant” the Potter novels. But this is in some tension with the earlier analysis about substantial similarity: the Lexicon summarizes the plot, and indeed the character development, of the 7 books rather thoroughly. Someone who wants the Potter novel experience won’t use the Lexicon as a market substitute, but someone who wants the gist of the Potter story arc might well do so.
  • At 49-50, the court does a good job of pointing out how weak the “Lexicon as scholarship” argument is. It notes that the Lexicon does not consistently document or refer readers back to the locations of facts in the Potter novels. I would have thought this would also affect the market substitution analysis. This also comes up at 54, in the discussion of the Lexicon’s liberal use of Rowling’s evocative writing in some of its entries.
  • A minor gripe: why doesn’t the court analyze the statutory factors in the order in which 17 U.S.C. 107 presents them? It’s not required, but most of us are used to marching through the analysis in the same way the statute does.
  • At 59-60, it’s refreshing to see the court set limits on the scope of the derivative works right (though the court doesn’t think of it this way): authors don’t get to exclude competitors from secondary markets just because they want or plan to enter them. The hard part, of course, is determining which markets the author does get to monopolize. And it’s a nice bit of market-based evidence to point out that HarperCollins probably wouldn’t produce a Chronicles of Narnia encyclopedia if it would cannibalize sales of C.S. Lewis’s novels – but that calculus might be wrong. What if the drop in revenues were outweighed by sales of encyclopedias? Still, a nice analytical point.

This case tees up hard copyright questions. What is the boundary of the term of art “derivative work”? How broad should an author’s control be over secondary, non-scholarly works treating her expression? How should courts deal with inventorying of “fictional facts”? This opinion resolves some of these questions in the Lexicon case, but I feel less certain it answers them for future plaintiffs. RDR is ably assisted by Stanford’s Fair Use Project, and hopefully we’ll see an appeal to the Second Circuit that expands some of this thinking.

5 Responses to “Rowling 1, Lexicon 0”

  1. Derek, great post! I wonder whether, on your fourth bullet point, we really need all 3 steps in your proposed 3-step analysis. Consider the substantially similar copy that does not add new expression and hence is not a derivative work: that would infringe the reproduction right (and require us to proceed to your step 3, asking whether the infringement is excused under fair use or some other doctrine). Your step 2 is useful for differentiating infringements of the derivative works right (the court’s key concern here, apparently) from infringements of the reproduction right, but the analysis properly goes to step 3 any time the answer to step 1 is “yes,” don’t we? It’s not necessary that steps 1 and 2 both be “yes.”

  2. Tim, you’re exactly right. The 3-step analysis should have been labeled more carefully: it’s intended to scout out violations of the derivative works right. If the answer to #1 – substantial similarity – is right, then we need to go to #3 (or, possibly, one of the other weird loopholes in Sections 108-122).

    It’s worth nothing that there are IP folks who disagree with me: they believe there are adapted / secondary works that do not qualify as derivatives and hence don’t require analysis under 107 at all. This means that, in the zone of possible adaptations, some will potentially infringe and some will not – but because they don’t meet the statutory definition of “derivative work.”

    My own view is that this describes an attractive vision of how copyright law should work, but I disagree strongly that it does in fact work this way. It’s standard blackletter law that if you have a work “based upon” a prior one with substantial similarity to it, it’s a derivative work.

    I hope to have time today or tomorrow to find some good 2d Circuit precedent to help make this more clear.

  3. […] Update: At Harvard’s Info/Law blog, Derek Baumbauer speaks. […]

  4. Thanks for your commentary. I’ve been summarizing the case over on my blog but didn’t even really get to commentary yet! (Well, except for the footnotes of commentary I just couldn’t help, such as “Why did he have to switch the order of the factors?” I see we agree there.)

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