Steven Vander Ark, the fan who wrote The Lexicon, had been operating a Harry Potter website since 2000. His website included an A-to-Z index of characters, spells and creatures from all of her HP books (including the two companion books). Ms. Rowling applauded the site, even writing a note that said, "This is such a great site that I have been known to sneak into an Internet cafe while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing)."
However, when Vander Ark set out to publish a book based on those same entries, Ms. Rowling cried foul. The London Times reported:
Accusing the unauthorised book of lifting 2,034 of its 2,437 entries straight from her work, Rowling condemned the Lexicon as “a Harry Potter ‘rip-off’ . . . [that] interferes with my rights as a creator and copyright holder”.In my April post, I offered the basis on which this case would likely be decided:
The fair use provision has a four-factor test used to determine whether such use of a work qualifies as fair use. The four factors are:I was ambivalent about the case. On the one hand, I absolutely supported Ms. Rowling's right to protect her words. On the other hand, I could appreciate attorney Jonathan Band's argument in an article titled "Educational Fair Use Today" that, even when a work is derivative, "repurposing" it or "or placing it in a new context may be sufficient to render a use transformative."
(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.
Apparently Judge Robert Patterson shared at least some of my ambivalence around the transformative nature. Here are some of his comments from the 68-page ruling. The bold type is mine:
The Content of The Lexicon
While there was considerable opining at trial as to the type of reference work the Lexicon purports to be . . . the Lexicon fits in the narrow genre of non-fiction reference guides to fictional works . . . 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 imaginary world over thousands of pages . . . The Lexicon, an A-to-Z guide . . . synthesizes information from the series and generally provides citations for location of that information rather than offering commentary . . .
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, the Lexicon indeed contains at least a troubling amount of direct quotation or close paraphrasing of Rowling’s original language. 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.
Conclusions of Law: 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.” . . . 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 . . . 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.”
Ownership
There is no dispute that the Lexicon actually copied from Rowling’s copyrightedorks. 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.
Copying
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.
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 . . . 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.
Reproducing original expression in fragments or in a different order, however, does not preclude a finding of substantial similarity . . . 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’” . . . “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.’”
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.”
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” . . .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.”
. . . 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,” . . . 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” . . . 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.
Fair Use
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,’” . . . 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.
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.’” . . . 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 . . .because such a work contributes to the enrichment of society.
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.
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.
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 . . . 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.
. . . despite Plaintiffs’ criticisms, the Lexicon occasionally does offer “new information, new aesthetics, new insights and understandings,” . . . as to the themes and characters in 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. A finding of verbatim copying in excess of what is reasonably necessary diminishes a finding of a transformative use.
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.
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.
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 . . . The Court is not persuaded . . . 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 . . . the Court finds that Defendant reasonably believed its use was ultimately fair.
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.
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. Verbatim copying . . . 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 . . . in composing the Lexicon entries.
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" . . . “In general, fair use is more likely to be found in factual works than in fictional works.”
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 . . . 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 . . . As a result, the second factor favors Plaintiffs.
Market Harm
The fourth statutory factor considers “the effect of the use upon the potential market for or value of the copyrighted work” . . . 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 . . . The fourth factor will favor the copyright holder “if she can show a ‘traditional, reasonable, or likely to be developed’ market for licensing her work.”
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 . . . 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.
Furthermore, there is no plausible basis to conclude that publication of the Lexicon would impair sales of the Harry Potter novels . . . Accordingly, the Lexicon does not present any potential harm to the markets for the original Harry Potter works.
On the other hand, publication of the Lexicon could harm sales of Rowling’s two companion books.
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 . . . Although there is no supporting testimony, one potential derivative market that would reasonably be developed or licensed by Plaintiffs is use of 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 . . . 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.
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 awarding statutory damages, courts have broad discretion to set the amount of the award within the statutory limits . . . 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 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.
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