In a long-awaited decision in the case of Rowling v. RDR Books, a federal judge in New York has ruled in favor of J.K. Rowling and Warner Bros. in the copyright infringement lawsuit they filed against RDR Books, the publisher of the Harry Potter Lexicon, an unofficial encyclopedic companion to the popular Harry Potter series of books. In his 68-page decision, Judge Robert Patterson held that RDR Books "had failed to establish an affirmative defense of fair use," granted a permanent injunction barring publication of the Lexicon, and awarded the plaintiffs $6,750 in statutory damages. Although the decision is a disappointing setback for RDR Books and many Harry Potter fans, there is some good news in Judge Patterson's opinion for fair use advocates, which I discuss below.
I'll spare you a detailed recitation of the facts, which run almost 30 pages (for an excellent -- and prescient -- analysis of the case before it went to trial, see Derek Bambauer at Info/Law). Instead, I'll just point out a few of the key passages in the court's decision that caught my eye.
While Judge Patterson carefully recounts the history of the Lexicon from its early days as an online resource to its (apparently short-lived) publication as a book, he seems to have fully adopted the plaintiffs' framing of the case (never a good sign for a defendant), essentially concluding that the defendant took too many of Rowling's "plums" to be entitled to invoke fair use.
At trial, Rowling testified that the Lexicon took “all the highlights of [her] work, in other words [her] characters’ secret history, the jokes certainly, certain exciting narrative twists, all the things that are the highlights of [her] stories.” She compared this taking of her work to plundering all of the “plums in [her] cake.” At trial, the testimony of Rowling and the expert opinion of Johnson focused at length on the Lexicon’s verbatim copying of language from the Harry Potter works.
Slip Op. at 18 (internal citations omitted).
Judge Patterson also seems swayed by what he perceives to be the Lexicon's shortcomings as a reference work, noting that it doesn't include consistent citations to the Harry Potter books and opining that the Companion to Narnia, a similar compendium, "is far more erudite and informative than the Lexicon." Slip Op. at 18 n.4.
With this framing of the facts, it seems inevitable that Judge Patterson would reject RDR's fair use defense. Indeed, that is precisely what he did. I am still trying to get my head around the court's rather strange -- and internally inconsistent -- holding that the Lexicon is not a derivative work, so I'll pass on doing an exhaustive analysis of the court's reasoning on this point. For a summary of this section of the opinion, see (again) Derek Bambauer and Mike Madison.
It is in the court's fair use analysis that Judge Patterson belies his initially thoughtful approach by letting his feeling that the Lexicon "took too much" undermine his analysis of the defendant's fair use defense at almost every turn. Here are some of the key parts of the decision:
- Purpose and Character of the Use: The court concluded that the Lexicon’s use is "slightly transformative in that it adds a productive purpose to the original material by synthesizing it within a complete reference guide that refers readers to where information can be found in a diversity of sources." Slip Op. at 45 But its transformative character is diminished because "it copies distinctive original language from the Harry Potter works in excess of its otherwise legitimate purpose of creating a reference guide." Slip Op. at 49.
- Nature of the Copyrighted Work: The court found that this factor clearly favored the plaintiffs because "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." Slip Op. at 58. Note that Judge Patterson concluded that the Lexicon is not entirely transformative because it takes too much of Rowling's works.
- Amount and Substantiality of the Use: The court conceded that in order for the Lexicon "[t]o fulfill its purpose as a reference guide to the Harry Potter works, it is reasonably necessary for the Lexicon to make considerable use of the original works." Slip Op. at 53. However, the court concluded that the Lexicon’s "verbatim copying and close paraphrasing" of language from Rowling's works weigh heavily against it on this factor, explaining that the "phrases [taken] are, as Rowling testified, the 'plums in [her] cake.'" Slip Op. at 54.
- Market Harm: Judge Patterson held that "there is no plausible basis to conclude that publication of the Lexicon would impair sales of the Harry Potter novels." Slip Op. at 60. But he then takes a strange turn and posits that "[a]lthough 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," which the Lexicon harms "by reproducing verbatim the songs and poems without a license." Slip Op. at 61-62. Huh? In any event, the court held that the Lexicon could harm sales of Rowling's two companion books, Quidditch Through the Ages and Fantastic Beasts & Where to Find Them, and in view of this market harm, the fourth factor tips in favor of the plaintiffs.
So what are we to make of the court's lengthy exposition on fair use? As I already noted, Judge Patterson's framing of the facts seems to have dictated how his fair use analysis would come out. Nevertheless, there is some good news in the opinion for fair use advocates.
First, the court concluded that reference guides such as the Lexicon are transformative in character and in order to fulfill their purpose they must be able to "make considerable use of the original works." Slip Op. at 53.
Second, reference works don't lose their transformative nature just because they lack analysis or commentary. The court rejected Rowling's argument that the Lexicon is not transformative because it fails to add these elements. "[I]ts lack of critical analysis, linguistic understanding, or clever humor is not determinative of whether or not its purpose is transformative." Slip Op. at 47.
Third, copyright holders cannot exert exclusive control over the market for reference works. According to Judge Patterson, even a copyright holder as eager as Rowling is to control through licensing all related markets must face limits.
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. The market for reference guides does not become derivative simply because the copyright holder seeks to produce or license one.
Slip Op. at 59 (internal citations omitted).
I've only just scratched the surface here. There is clearly a lot in Judge Patterson's opinion that other courts can draw from and good lawyers can distinguish. We also may benefit from the Second Circuit's take on this issue if RDR Books decides to appeal. No word yet on what they plan to do, but here is their short press release:
We are encouraged by the fact the Court recognized that as a general matter authors do not have the right to stop the publication of reference guides and companion books about literary works. As for the Lexicon, we are obviously disappointed with the result, and RDR is considering all of its options.
For more information on the case, including copies of court documents, see the CMLP's database entry, Rowling v. RDR Books.
(Note: I am on the board of directors for the Right to Write Fund, a nonprofit founded by the president of RDR Books that provides legal assistance to creative artists.)