Fair Use in a Digital Age: A Closer Look at the Harry Potter Lexicon

1. Fair Use in a Digital Age: A Closer Look at the Harry Potter Lexicon Regina Forker University of Connecticut School of Law May 22, 2008

2. Overview • Reference Works • What are they? • The Internet’s Impact • What problems do they pose? • U.S. IP Origins • The U.S. “Bundle of Rights” • Fair Use Overview • What is Fair Use? • Why is it Important? • How is Fair Use Determined? • Background of the Lexicon Lawsuit

3. Overview • Judicial Fair Use Interpretations • Collectors Guides • Trivia Books • Online Movie Previews • Public Commentary on the Lexicon • Comparative Fair Use • How would the Lexicon fare in the U.K.? • The E.U.? • Predictions and Conclusion

4. Reference Works What are they? • Guides, summaries, compendiums, handbooks, dictionaries • Compilation of information for the purpose of easy reference • US copyright protection is afforded to compilations • 17 USC § 101 Compilation: a work formed by the collection, assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship • Can focus on anything from popular movies, books, authors, genres to legal, medical, and historical subjects • The sale of such guides is big business

5. Reference Works Literally thousands of such works are available • The Copyright Guide: A Friendly Handbook for Protecting and Profiting from Copyrights • Everyman's Guide to the Mysteries of Agatha Christie • Star Wars, Episode I What's What: A Pocket Guide to The Phantom Menace • The Lovecraft Lexicon: A Reader's Guide to Persons, Places and Things in the Tales of H.P. Lovecraft • The Rough Guide to Frank Sinatra • The Regions of Germany: A Reference Guide to History and Culture • It's Not Too Late To Learn Computers: An Easy Reference Guide • Leonard Maltin's Movie Guide • The Complete Idiot's Guide to the World of Narnia • Chaucer's Pilgrims: An Historical Guide to the Pilgrims in The Canterbury Tales

6. Reference Works The Internet’s Impact on Reference Works • Anyone can publish online • It seems the internet has done nothing but increased the availability of such guides • Allows smaller publishers to sell books online • Allows individuals to create guides and post them on websites • Without a publisher involved, mistakes may be more prevalent; more boundaries may be inadvertently crossed

7. Reference Works What Problems Do They Pose? • Line between reference works and unprotectable derivative works is blurry • Do not want the rights of the copyright holder to be stifled or usurped by creators of reference works • BUT we must allow for the fair use of copyrighted works • Do not want to stifle creativity or promote monopolies

8. U.S. Intellectual Property Origins • IP rights officially recognized in the U.S. as federal law when the Constitution was adopted in 1787 • 12 of the 13 colonies already had copyright statutes • Article 1 Section 8 of the Constitution empowers Congress to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” • As of the Copyright Act of 1976, under 17 U.S.C. §106, copyright holders are granted a “bundle” of exclusive IP rights • Includes the right to prepare derivative works

9. Note on Derivative Works • 17 USC § 101 Defines Derivative Work • A “derivative work” is 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 consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”. • Are reference guides actually derivative works?

10. Fair Use Overview What is Fair Use? • 17 USC § 107 – codified in 1976 • The fair use of a copyrighted work, including such use by reproduction in copies or phonorecords…, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

11. Fair Use Overview Cont. Why is Fair Use Important? • The concept of Fair Use allows others to use copyrighted works • Falls in line with purpose of Article 1 Section 8 to “promote the Progress of Science and useful Arts” • Fair use has been described as a rule of reason balancing an author’s right to compensation against the public’s interest in the widest possible dissemination of ideas and information • Without fair use, authors and creators have a virtual monopoly over their works

12. Fair Use Overview Cont. Folsom v. Marsh, 9 F.Cas. 342 (1841) • Beginnings of the Fair Use common law doctrine • The Reverend Charles Upham, the author of a 2-volume Life of Washington, was found to have infringed the copyright of The Writings of George Washington written by Jared Sparks. • Upham had copied 255 pages of Washington’s letters that were contained in Sparks’ work. • “No one can doubt that a reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism.” • “It is as clear, that if he thus cites the most important parts of the work, with a view, not to criticise, but to supersede the use of the original work, and substitute the review for it, such a use will be deemed in law a piracy.”

13. Background: The Harry Potter Lexicon • Harry Potter is the main character in a widely popular book series about a young orphan boy who discovers that he is a famous wizard • Written by British author, J.K. Rowling • She has published seven Harry Potter books • Four movies have been released by Warner Brothers; the rest are in production • Warner is a licensee of Rowling • Dubbed by Forbes as the “Billion Dollar Brand”

14. Background: The Harry Potter Lexicon Countless spin-off publications have been published, with and without permission • Ultimate Unofficial Guide to the Mysteries of Harry Potter • The Complete Idiot's Guide to the World of Harry • The Book of Harry Potter Trifles, Trivias, and Particularities • Fact, Fiction, And Folklore In Harry Potter's World: An Unofficial Guide • A The Unauthorized Harry Potter: Everything You Ever Wanted to Know About the Harry Potter Series • J.K. Rowling's Harry Potter Novels: A Reader's Guide – Unauthorized • The Pottersaurus: 1,500 Words Harry Potter Readers Need to Know

15. Background: The Harry Potter Lexicon • Countless websites revolving around the world of Harry Potter have been created, both sanctioned and not • mugglenet.com • www.darkmark.com • www.harrypotterorderofthephoenix.com • www.the-leaky-cauldron.org • www.harrypotterfanzone.com • www.veritaserum.com • www.harrypotterrealm.com

16. Background: The Harry Potter Lexicon The Harry Potter Lexicon • In July 2000, Steve Vander Ark started the Harry Potter Lexicon website • “The most amazing and complete reference anywhere to the world of Harry Potter.” • Includes things like • Encyclopedia of Potions • Visitor’s Guide to Hogwarts • Readers Guides • Encyclopedia of Spells • In June 2004, it won J.K. Rowling’s Fan Site Award

17. Background: The Harry Potter Lexicon • Rowling was openly supportive of the Lexicon and posted about it on her own website: • “This is such a great site that I have been known to sneak into an internet café while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing). A website for the dangerously obsessive; my natural home.”

18. Background: The Harry Potter Lexicon • Up until the 7th Harry Potter book was published, the Lexicon remained a website • After publication, RDR Books, a small independent publisher, contacted Vander Ark about selling the Lexicon in book form • Vander Ark eventually agreed and the publication process began • They assured him it was a legal endeavor • Included indemnity clause in contract whereby they would represent him and pay damages in the event a suit was filed

19. Background: The Harry Potter Lexicon • No contact was initiated with Rowling or Warner before or during publication • Rowling’s agent saw an online advertisement for the Lexicon in September 2007 which indicated it was to be released in October 2007 • Warner and Rowling contacted RDR and demanded publication be halted; no conclusive response was received and they filed a Complaint

20. Background: The Harry Potter Lexicon The Complaint • Filed October 31, 2007 • Alleged copyright infringement, trademark infringement, unfair competition and false designation of origin, false advertising, deceptive trade practices, and unfair competition under New York common law • Sought a declaratory judgment regarding the copyright infringement, an injunction restraining the manufacture, distribution, marketing, advertisement, promotion or solicitation of the book, as well as various damages including a profit accounting and costs of the suit

21. Background: The Harry Potter Lexicon The Complaint • “There is a significant difference between giving the innumerable Harry Potter fan sites latitude to discuss the Harry Potter works in the context of free-of-charge, ephemeral websites and allowing a single fan site owner and his publisher to commercially exploit the Harry Potter Books in contravention of Ms. Rowling’s wishes and rights and to the detriment of other Harry Potter fan sites.” • Rowling has said she plans to write an authoritative reference guide and donate the proceeds to charity

22. Background: The Harry Potter Lexicon • RDR Books has gotten free legal help from Stanford University Law School's Fair Use Project • Bench trial began in New York on April 14 and lased three days • Ruling is expected any day

23. Judicial Fair Use Interpretations Ty, Inc. v. Publications International, 292 F.3d 512 (7th Cir. 2002) • Ty, the manufacturer of the once-popular Beanie Baby toys, filed suit against Publications International Limited (PIL) • PIL had published several books about Beanie Babies, including For the Love of Beanie Babies and Beanie Babies Collector’s Guide • The 7th Circuit reversed the lower court’s summary judgment in favor of Ty

24. Judicial Fair Use Interpretations Ty, Inc. v. Publications International Cont. • Needed more information to determine whether the books were collector’s guides, which would constitute fair use, or whether they were unauthorized derivative works • “Copying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work, is not fair use.” • When discussing “guides” in reference to derivative works, the court noted that “guides don’t recast, transform, or adapt the things to which they are guides. A guide to Parisian restaurants is not a recasting, transforming, or adapting of Parisian restaurants.”

25. Judicial Fair Use Interpretations Ty and The Lexicon • Should the “guides” discussed in Ty be analogized to the Lexicon? • It seems that a reference guide such as the Lexicon would not be considered a “substitute” for the copyrighted Harry Potter book • Instead, it seems more to “complement” the books in that it explains, catalogues and parses out the contents of the books, rather than replaces it • Would the Lexicon ever be considered a replacement for the Harry Potter books?

26. Judicial Fair Use Interpretations Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132, (2d Cir. 1998) • Castle Rock sued Carol Publishing for publication of The Seinfeld Aptitude Test, a trivia book about the popular TV show, Seinfeld • 2nd Circuit said: • “By developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work, a copyright owner plainly cannot prevent others from entering those fair use markets.”

27. Judicial Fair Use Interpretations Castle Rock Entertainment, Inc. cont. • Surprising decision • Court concluded that The SAT unlawfully copied from Seinfeld and that its copying did not constitute fair use and thus was an actionable infringement • Later, the Ty court had this to say about the holding: • “The holding [in Castle Rock] seems to rest in part, and very dubiously we must say, on the court's judgment that the book was frivolous…. But the fair-use doctrine is not intended to set up the courts as judges of the quality of expressive works.”

28. Judicial Fair Use Interpretations Castle Rock and The Lexicon • Fair use determinations are not easily predicted • Warner and Rowling claim that Rowling has always planned to publish companion books to Harry Potter and that the Lexicon precludes Rowling’s ability to publish such a work • Under Castle Rock, such an argument lacks merit

29. Judicial Fair Use Interpretations Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc.,192 F. Supp. 2d 321 (2002) • Video Pipeline (VP) contracted with Disney to format previews and video clips for use in video retail stores • Disney argued that VP’s digitization and internet streaming of the in-store trailers and clip previews on VP’s website and the copying of Disney trailers constituted copyright infringement

30. Judicial Fair Use Interpretations Video Pipeline, Inc. cont. • “A fair use defense is favored if the copying complements the use of the copyrighted works and serves a transformative purpose, that is, a purpose different than that of the copyright owner.” • “Fair use, when properly applied, is limited to copying by others which does not materially impair the marketability of the work which is copied.”

31. Judicial Fair Use Interpretations Video Pipeline, Inc. cont. • “Like the collector’s guide in Ty, the clip previews and trailers in this case are informational, as they provide segments of the actual copyrighted movie to inform customers of the movie's story or theme. Unlike Ty, however, the clip previews and trailers, although accumulated on a database, do not add additional or critical evaluative information to the copyrighted works, as they are only truncated versions of the movies, with choice scenes selected and put together. Although the clip previews and trailers in this case are not clear substitutes for the copyrighted works, they do not complement the motion picture rentals or sales by adding information similar to a collectors’ guide nor do they represent an entirely different product line that consumers of the movie may also be interested in purchasing, as in Ty.”

32. Judicial Fair Use Interpretations Video Pipeline, Inc. and The Lexicon • It could be argued that the entries that make up the Lexicon “inform customers of the…story or theme,” and are thus analogous to the clips formatted together to form a preview, which the court held to be derivative works • But the Lexicon arguably serves a transformative purpose other than that of the Harry Potter books themselves • It could also be argued that the Lexicon complements the books and is thus more analogous to the protected collectors’ guides

33. Public Commentary • Popular consensus among scholars is that Rowling has a weak case, if any, and that the Lexicon is protected under the fair use doctrine • On the other side, however, are laypeople leaving comments on online articles and blogs; those comments undoubtedly favor Rowling and think the Lexicon should not be published

34. Public Commentary • William Patry, author of “Patry on Copyright” and senior copyright counsel for Google • “I don’t see how a list of spells…is anything other than fair use…Regardless of how the Harry Potter suit comes out, the most depressing part is that it was brought at all. Fans will happily buy her book; the only effects of the suit, therefore are negative.”

35. Public Commentary • Tim Wu, a Columbia Law School professor and freelance writer • Rowling is “overstepping her bounds. She has confused the adaptations of a work, which she does own, with discussion of her work, which she doesn’t.” • “No one would read the Lexicon as a substitute for the Potter books; it is useless unless you’ve read the original, and that makes all the difference…Giving Rowling what she wants would be like giving Egypt the power to control guides to the pyramids.”

36. Public Commentary • User Comments on the William Patry blog’s • It is my educated, but inexperienced, opinion that the Compendium [Lexicon] would not constitute a fair use of Ms. Rowling's copyrighted materials. The purpose of the use is commercial in nature and arguably non-transformative. The Compendium - judging by the court filings - is simply an alphabetical re-formatting of Ms. Rowling's creative expression.” • “It comes down to money...this guy saw that the Harry Potter series was a way to make money for him so he decided to try to cash in on it. Should he be permitted to do so, NO.”

37. Public Commentary • User comments on the Slate.com article “J.K. Rowling’s Dark Mark” • “JK should not lose her copyright lawsuit. she is not discouraging individual writers or fan fiction it is simply saying that lexicon should not be able to publish and therefore make money from something that was her original idea and not only that but she will soon be completing her own encyclopedia of Harry Potter” • “I actually agree with Rowling... It is her rights. It's fine to be a fan and do all those things out of love, but trying to make money off of someone else's creation sucks.”

38. Comparative Fair Use:How would the Lexicon fare in the U.K.? • Instead of a “fair use” concept, the UK employs the notion of “fair dealing” • The idea behind the concept is that if copyright laws are too restrictive, it may stifle free speech, news reporting, or result in disproportionate penalties for inconsequential or accidental inclusion • UK fair dealing is more restrictive than in the US and applies only to statutorily defined situations

39. Comparative Fair Use:How would the Lexicon fare in the U.K.? Copyright, Designs and Patents Act 1988, Chapter III Acts Permitted in relation to Copyright Works, §29. • “Fair dealing with a literary work, [other than a database] or a dramatic, musical or artistic work for the purposes of research or private study does not infringe any copyright in the work or, in the case of a published edition, in the typographical arrangement” • “Fair dealing with a work for the purpose of criticism or review, of that or another work or of a performance of a work, does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement”

40. Comparative Fair Use:How would the Lexicon fare in the U.K.? • The Society of Authors and the Publishers Association has issued guidelines regarding fair dealing in the context of criticism and review • Defined fair dealing as a “single extract of up to 400 words or a series of extracts (of which none exceeds 300 words) to a total of 800 words from a prose work. The words MUST be quoted in the context of criticism or review.” • The online Lexicon does not use quotation marks around direct quotations, and it is reported that the print version did not use them either

41. Comparative Fair Use:How would the Lexicon fare in the U.K.? • The University of Cambridge has indicated that “fair dealing for the purposes of criticism or review may apply if short extracts of copyright material are posted on an intranet or possibly the Internet, but the purpose must be that of criticism or review and not use of the extracts solely for anthologizing or illustrative purposes” • The purpose of the Lexicon is essentially to organize and “anthologize” information in Rowling’s books for “illustrative purposes"

42. Comparative Fair Use:How would the Lexicon fare in the U.K.? • The UK Intellectual Property Office, official government body responsible for granting IP rights in the UK, said: • “Fair dealing has been interpreted by the courts on a number of occasions by looking at the economic impact on the copyright owner of the use; where the economic impact is not significant, the use may count as fair dealing. So, it is probably within the scope of the above fair dealing exception to make single photocopies of short extracts of a copyright work for certain purposes, that is, non-commercial research or private study, criticism or review, reporting current events, and so on.”

43. Comparative Fair Use:How would the Lexicon fare in the U.K.? • Vander Ark’s guide admittedly uses a great amount of direct quotations from the Potter books • The Lexicon does not fit into the boxes of “criticism” or “review” • The Lexicon, which comprises hundreds of pages of copyrighted material, hardly seems to fit into the scope of fair dealing in the UK • Not likely he would find protection in the UK

44. Comparative Fair Use:How would the Lexicon fare in the E.U.? • All European Union Member States are parties to the: • Berne Convention • TRIPS (Trade-related Aspects Of Intellectual Property Rights) • WIPO Copyright Treaty

45. Comparative Fair Use:How would the Lexicon fare in the E.U.? Berne Convention • Gives authors the exclusive the right to make adaptations, arrangements, other alterations and collections of the work • “Free Use Concept” • Permissible to make quotations from a work which has already been lawfully made available to the public, provided it is compatible with fair practice, and the extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries • It is a matter for legislation in EU countries to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice • The Lexicon is not “for teaching” and certainly does more than “make quotations” from the Harry Potter books

46. Comparative Fair Use:How would the Lexicon fare in the E.U.? • Pursuant to the European Directive of May 22, 2001 permitted limitations include: • Use for illustration for teaching or scientific research, to the extent justified by the non-commercial purpose • Press reviews and news reporting; • Quotations for the purposes of criticism or review; • Incidental inclusion in another work; • Caricature, parody or pastiche • The widespread copying found in the Lexicon does not seem to comport with any of these permitted exceptions

47. Comparative Fair Use:How would the Lexicon fare in the E.U.? TRIPS (Agreement on Trade-related Aspects Of Intellectual Property Rights) • Exceptions to exclusive rights, like fair use, must be constrained: 3-Step Test for Exceptions (also found in Berne) • Members shall confine limitations and exceptions to exclusive rights to • Certain special cases; • Which do not conflict with a normal exploitation of the work; • And do not unreasonably prejudice the legitimate interests of the rights holder • Does the Lexicon “unreasonably prejudice” the legitimate interests of Rowling as the author? Does it conflict with normal exploitation of the work?

48. Comparative Fair Use:How would the Lexicon fare in the E.U.? WIPO Copyright Treaty • Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts • Nothing in this Treaty shall derogate from existing obligations that Contracting Parties have to each other under the Berne Convention • Also mandates the three-step restraint of Berne, TRIPS • Provides for protection for compilations of data or other material, in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations. This protection does not extend to the data or the material itself and is without prejudice to any copyright subsisting in the data or material contained in the compilation Does not seem the Lexicon would be protected as a compilation since the underlying work in the compilation is all copyrighted

49. Predictions, Comments & Conclusions • The internet has made it easy for anyone and everyone to create derivative works, post them online, and benefit from them commercially • The outcome of this lawsuit will have an impact on this practice • The internet has also made it easier for creators of original material to post it online and share it with the world • It is hard to predict how the court will rule • The Judge hearing the case urged the parties to settle, though neither party seems to have taken the advice

50. Predictions, Comments & Conclusions • Based on the fact that “unauthorized” guides have existed for so long, the Lexicon has a good chance for protection in the US • If this case was brought in Europe, chances for protection decrease dramatically • Denying protection would be a big blow to the “guide” industry and would disappoint many fans • How realistic is it that such guides would disappear completely • Even if publishers refused to publish them, anyone can post on the internet • Will more infringement suits be brought? • Fair Use seems to sufficiently protect the concept of such a guide, perhaps with some modifications