fair use in a digital age: a closer look at the harry potter lexicon regina forker university of...

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

Regina ForkerRegina Forker

University of Connecticut School of LawUniversity of Connecticut School of Law

May 22, 2008May 22, 2008

OverviewOverview Reference WorksReference Works

What are they?What are they? The Internet’s ImpactThe Internet’s Impact What problems do they pose?What problems do they pose?

U.S. IP OriginsU.S. IP Origins The U.S. “Bundle of Rights”The U.S. “Bundle of Rights” Fair Use OverviewFair Use Overview

What is Fair Use?What is Fair Use? Why is it Important?Why is it Important? How is Fair Use Determined?How is Fair Use Determined?

Background of the Lexicon LawsuitBackground of the Lexicon Lawsuit

OverviewOverview

Judicial Fair Use InterpretationsJudicial Fair Use InterpretationsCollectors GuidesCollectors GuidesTrivia BooksTrivia BooksOnline Movie PreviewsOnline Movie Previews

Public Commentary on the Lexicon Public Commentary on the Lexicon Comparative Fair UseComparative Fair Use

How would the Lexicon fare in the U.K.?How would the Lexicon fare in the U.K.?The E.U.?The E.U.?

Predictions and ConclusionPredictions and Conclusion

Reference WorksReference Works

What are they?What are they? Guides, summaries, compendiums, handbooks, Guides, summaries, compendiums, handbooks,

dictionariesdictionaries Compilation of information for the purpose of easy Compilation of information for the purpose of easy

referencereference US copyright protection is afforded to compilationsUS copyright protection is afforded to compilations

17 USC § 101 Compilation: a work formed by the collection, 17 USC § 101 Compilation: a work formed by the collection, assembling of preexisting materials or of data that are selected, assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorshipa whole constitutes an original work of authorship

Can focus on anything from popular movies, books, Can focus on anything from popular movies, books, authors, genres to legal, medical, and historical subjectsauthors, genres to legal, medical, and historical subjects

The sale of such guides is big businessThe sale of such guides is big business


Literally thousands of such works are available Literally thousands of such works are available The Copyright Guide: A Friendly Handbook for Protecting and Profiting The Copyright Guide: A Friendly Handbook for Protecting and Profiting

from Copyrights from Copyrights Everyman's Guide to the Mysteries of Agatha Christie Everyman's Guide to the Mysteries of Agatha Christie Star Wars, Episode I What's What: A Pocket Guide to The Phantom Star Wars, Episode I What's What: A Pocket Guide to The Phantom

Menace Menace The Lovecraft Lexicon: A Reader's Guide to Persons, Places and Things in The Lovecraft Lexicon: A Reader's Guide to Persons, Places and Things in

the Tales of H.P. Lovecraft the Tales of H.P. Lovecraft The Rough Guide to Frank Sinatra The Rough Guide to Frank Sinatra The Regions of Germany: A Reference Guide to History and CultureThe Regions of Germany: A Reference Guide to History and Culture It's Not Too Late To Learn Computers: An Easy Reference GuideIt's Not Too Late To Learn Computers: An Easy Reference Guide Leonard Maltin's Movie Guide Leonard Maltin's Movie Guide The Complete Idiot's Guide to the World of NarniaThe Complete Idiot's Guide to the World of Narnia Chaucer's Pilgrims: An Historical Guide to the Pilgrims in The Canterbury Chaucer's Pilgrims: An Historical Guide to the Pilgrims in The Canterbury

TalesTales


The Internet’s Impact on Reference WorksThe Internet’s Impact on Reference Works Anyone can publish onlineAnyone can publish online It seems the internet has done nothing but increased It seems the internet has done nothing but increased

the availability of such guidesthe availability of such guides Allows smaller publishers to sell books onlineAllows smaller publishers to sell books online Allows individuals to create guides and post them on Allows individuals to create guides and post them on

websiteswebsites Without a publisher involved, mistakes may be more Without a publisher involved, mistakes may be more

prevalent; more boundaries may be inadvertently prevalent; more boundaries may be inadvertently crossedcrossed


What Problems Do They Pose?What Problems Do They Pose? Line between reference works and unprotectable Line between reference works and unprotectable

derivative works is blurryderivative works is blurry Do not want the rights of the copyright holder to be Do not want the rights of the copyright holder to be

stifled or usurped by creators of reference worksstifled or usurped by creators of reference works BUT we must allow for the fair use of copyrighted BUT we must allow for the fair use of copyrighted

worksworks Do not want to stifle creativity or promote Do not want to stifle creativity or promote

monopoliesmonopolies

U.S. Intellectual Property OriginsU.S. Intellectual Property Origins IP rights officially recognized in the U.S. as federal law IP rights officially recognized in the U.S. as federal law

when the Constitution was adopted in 1787when the Constitution was adopted in 1787 12 of the 13 colonies already had copyright statutes12 of the 13 colonies already had copyright statutes

Article 1 Section 8 of the Constitution empowers Article 1 Section 8 of the Constitution empowers Congress to “promote the Progress of Science and useful Congress to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings Inventors the exclusive Right to their respective Writings and Discoveries.”and Discoveries.”

As of the Copyright Act of 1976, under 17 U.S.C. §106, As of the Copyright Act of 1976, under 17 U.S.C. §106, copyright holders are granted a “bundle” of exclusive IP copyright holders are granted a “bundle” of exclusive IP rightsrights Includes the right to prepare derivative worksIncludes the right to prepare derivative works

Note on Derivative WorksNote on Derivative Works

17 USC § 101 Defines Derivative Work17 USC § 101 Defines Derivative Work A “derivative work” is a work based upon one or more A “derivative work” is a work based upon one or more

preexisting works, such as a translation, musical preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”. original work of authorship, is a “derivative work”.

Are reference guides actually derivative works?Are reference guides actually derivative works?

Fair Use OverviewFair Use Overview

What is Fair Use?What is Fair Use? 17 USC § 107 – codified in 197617 USC § 107 – codified in 1976

The fair use of a copyrighted work, including such The fair use of a copyrighted work, including such use by reproduction in copies or phonorecords…, use by reproduction in copies or phonorecords…, for purposes such as for purposes such as criticism, comment, news criticism, comment, news reporting, teachingreporting, teaching (including multiple copies for (including multiple copies for classroom use), classroom use), scholarship, or researchscholarship, or research, , is not an is not an infringement of copyrightinfringement of copyright. .

Fair Use Overview Cont.Fair Use Overview Cont.

Why is Fair Use Important?Why is Fair Use Important? The concept of Fair Use allows others to use The concept of Fair Use allows others to use

copyrighted workscopyrighted works Falls in line with purpose of Article 1 Section 8 to Falls in line with purpose of Article 1 Section 8 to

“promote the Progress of Science and useful Arts”“promote the Progress of Science and useful Arts” Fair use has been described as a rule of reason Fair use has been described as a rule of reason

balancing an author’s right to compensation against balancing an author’s right to compensation against the public’s interest in the widest possible the public’s interest in the widest possible dissemination of ideas and information dissemination of ideas and information

Without fair use, authors and creators have a virtual Without fair use, authors and creators have a virtual monopoly over their worksmonopoly over their works

Fair Use Overview Cont.Fair Use Overview Cont.

Folsom v. MarshFolsom v. Marsh, 9 F.Cas. 342 (1841), 9 F.Cas. 342 (1841) Beginnings of the Fair Use common law doctrineBeginnings of the Fair Use common law doctrine The Reverend Charles Upham, the author of a 2-volume The Reverend Charles Upham, the author of a 2-volume Life of Life of

Washington,Washington, was found to have infringed the copyright of was found to have infringed the copyright of The The Writings of George WashingtonWritings of George Washington written by Jared Sparks. written by Jared Sparks.

Upham had copied 255 pages of Washington’s letters that were Upham had copied 255 pages of Washington’s letters that were contained in Sparks’ work.contained in Sparks’ work.

““No one can doubt that a reviewer may fairly cite largely from 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 the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism.”passages for the purposes of fair and reasonable criticism.”

““It is as clear, that if he thus cites the most important parts of the 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 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 original work, and substitute the review for it, such a use will be deemed in law a piracy.”deemed in law a piracy.”

Background: Background: The Harry Potter LexiconThe Harry Potter Lexicon

Harry Potter is the main character in a widely popular Harry Potter is the main character in a widely popular book series about a young orphan boy who discovers book series about a young orphan boy who discovers that he is a famous wizardthat he is a famous wizard

Written by British author, J.K. RowlingWritten by British author, J.K. Rowling She has published seven Harry Potter books She has published seven Harry Potter books

Four movies have been released by Warner Brothers; Four movies have been released by Warner Brothers; the rest are in productionthe rest are in production Warner is a licensee of Rowling Warner is a licensee of Rowling

Dubbed by Forbes as the “Billion Dollar Brand”Dubbed by Forbes as the “Billion Dollar Brand”


Countless spin-off publications have been published, with and Countless spin-off publications have been published, with and without permissionwithout permission

Ultimate Unofficial Guide to the Mysteries of Harry PotterUltimate Unofficial Guide to the Mysteries of Harry Potter The Complete Idiot's Guide to the World of HarryThe Complete Idiot's Guide to the World of Harry The Book of Harry Potter Trifles, Trivias, and ParticularitiesThe Book of Harry Potter Trifles, Trivias, and Particularities Fact, Fiction, And Folklore In Harry Potter's World: An Fact, Fiction, And Folklore In Harry Potter's World: An

Unofficial GuideUnofficial Guide A The Unauthorized Harry Potter: Everything You Ever Wanted A The Unauthorized Harry Potter: Everything You Ever Wanted

to Know About the Harry Potter Seriesto Know About the Harry Potter Series J.K. Rowling's Harry Potter Novels: A Reader's Guide – J.K. Rowling's Harry Potter Novels: A Reader's Guide –

UnauthorizedUnauthorized The Pottersaurus: 1,500 Words Harry Potter Readers Need to The Pottersaurus: 1,500 Words Harry Potter Readers Need to

Know Know


Countless websites revolving around the world of Countless websites revolving around the world of Harry Potter have been created, both sanctioned and Harry Potter have been created, both sanctioned and notnot mugglenet.commugglenet.com www.darkmark.com www.darkmark.com www.harrypotterorderofthephoenix.comwww.harrypotterorderofthephoenix.com www.the-leaky-cauldron.orgwww.the-leaky-cauldron.org www.harrypotterfanzone.comwww.harrypotterfanzone.com www.veritaserum.comwww.veritaserum.com www.harrypotterrealm.com www.harrypotterrealm.com


The Harry Potter LexiconThe Harry Potter Lexicon In July 2000, Steve Vander Ark started the Harry In July 2000, Steve Vander Ark started the Harry

Potter Lexicon websitePotter Lexicon website ““The most amazing and complete reference anywhere to The most amazing and complete reference anywhere to

the world of Harry Potter.”the world of Harry Potter.” Includes things likeIncludes things like

Encyclopedia of PotionsEncyclopedia of Potions Visitor’s Guide to Hogwarts Visitor’s Guide to Hogwarts Readers GuidesReaders Guides Encyclopedia of SpellsEncyclopedia of Spells

In June 2004, it won J.K. Rowling’s Fan Site AwardIn June 2004, it won J.K. Rowling’s Fan Site Award


Rowling was openly supportive of the Lexicon Rowling was openly supportive of the Lexicon and posted about it on her own website: and posted about it on her own website: ““This is such a great site that I have been known to This is such a great site that I have been known to

sneak into an internet café while out writing and sneak into an internet café while out writing and check a fact rather than go into a bookshop and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is buy a copy of Harry Potter (which is embarrassing). A website for the dangerously embarrassing). A website for the dangerously obsessive; my natural home.”obsessive; my natural home.”


Up until the 7Up until the 7thth Harry Potter book was published, the Harry Potter book was published, the Lexicon remained a websiteLexicon remained a website

After publication, RDR Books, a small independent After publication, RDR Books, a small independent publisher, contacted Vander Ark about selling the publisher, contacted Vander Ark about selling the Lexicon in book formLexicon in book form

Vander Ark eventually agreed and the publication Vander Ark eventually agreed and the publication process beganprocess began They assured him it was a legal endeavor They assured him it was a legal endeavor Included indemnity clause in contract whereby they would Included indemnity clause in contract whereby they would

represent him and pay damages in the event a suit was filed represent him and pay damages in the event a suit was filed


No contact was initiated with Rowling or No contact was initiated with Rowling or Warner before or during publicationWarner before or during publication

Rowling’s agent saw an online advertisement Rowling’s agent saw an online advertisement for the Lexicon in September 2007 which for the Lexicon in September 2007 which indicated it was to be released in October 2007indicated it was to be released in October 2007

Warner and Rowling contacted RDR and Warner and Rowling contacted RDR and demanded publication be halted; no conclusive demanded publication be halted; no conclusive response was received and they filed a response was received and they filed a ComplaintComplaint


The ComplaintThe Complaint Filed October 31, 2007Filed October 31, 2007 Alleged copyright infringement, trademark infringement, Alleged copyright infringement, trademark infringement,

unfair competition and false designation of origin, false unfair competition and false designation of origin, false advertising, deceptive trade practices, and unfair advertising, deceptive trade practices, and unfair competition under New York common law competition under New York common law

Sought a declaratory judgment regarding the copyright Sought a declaratory judgment regarding the copyright infringement, an injunction restraining the manufacture, infringement, an injunction restraining the manufacture, distribution, marketing, advertisement, promotion or distribution, marketing, advertisement, promotion or solicitation of the book, as well as various damages solicitation of the book, as well as various damages including a profit accounting and costs of the suit including a profit accounting and costs of the suit


The ComplaintThe Complaint ““There is a significant difference between giving the There is a significant difference between giving the

innumerable Harry Potter fan sites latitude to discuss innumerable Harry Potter fan sites latitude to discuss the Harry Potter works in the context of free-of-the Harry Potter works in the context of free-of-charge, ephemeral websites and allowing a single fan charge, ephemeral websites and allowing a single fan site owner and his publisher to commercially exploit site owner and his publisher to commercially exploit the Harry Potter Books in contravention of Ms. the Harry Potter Books in contravention of Ms. Rowling’s wishes and rights and to the detriment of Rowling’s wishes and rights and to the detriment of other Harry Potter fan sites.”other Harry Potter fan sites.” Rowling has said she plans to write an authoritative Rowling has said she plans to write an authoritative

reference guide and donate the proceeds to charityreference guide and donate the proceeds to charity


RDR Books has gotten free legal help from RDR Books has gotten free legal help from Stanford University Law School's Fair Use Stanford University Law School's Fair Use Project Project

Bench trial began in New York on April 14 Bench trial began in New York on April 14 and lased three daysand lased three days

Ruling is expected any dayRuling is expected any day

Judicial Fair Use InterpretationsJudicial Fair Use Interpretations

Ty, Inc. v. Publications InternationalTy, Inc. v. Publications International, 292 F.3d 512 (7th , 292 F.3d 512 (7th Cir. 2002)Cir. 2002)

Ty, the manufacturer of the once-popular Beanie Ty, the manufacturer of the once-popular Beanie Baby toys, filed suit against Publications Baby toys, filed suit against Publications International Limited (PIL)International Limited (PIL)

PIL had published several books about Beanie PIL had published several books about Beanie Babies, including Babies, including For the Love of Beanie BabiesFor the Love of Beanie Babies and and Beanie Babies Collector’s GuideBeanie Babies Collector’s Guide

The 7The 7thth Circuit reversed the lower court’s Circuit reversed the lower court’s summary judgment in favor of Tysummary judgment in favor of Ty


Ty, Inc. v. Publications InternationalTy, Inc. v. Publications International Cont. Cont. Needed more information to determine whether the books Needed more information to determine whether the books

were collector’s guides, which would constitute fair use, or were collector’s guides, which would constitute fair use, or whether they were unauthorized derivative workswhether they were unauthorized derivative works

““Copying that is complementary to the copyrighted work (in Copying that is complementary to the copyrighted work (in the sense that nails are complements of hammers) is fair use, the sense that nails are complements of hammers) is fair use, but copying that is a substitute for the copyrighted work (in but copying that is a substitute for the copyrighted work (in the sense that nails are substitutes for pegs or screws), or for the sense that nails are substitutes for pegs or screws), or for derivative works from the copyrighted work, is not fair use.”derivative works from the copyrighted work, is not fair use.”

When discussing “guides” in reference to derivative works, When discussing “guides” in reference to derivative works, the court noted that “guides don’t recast, transform, or adapt the court noted that “guides don’t recast, transform, or adapt the things to which they are guides. A guide to Parisian the things to which they are guides. A guide to Parisian restaurants is not a recasting, transforming, or adapting of restaurants is not a recasting, transforming, or adapting of Parisian restaurants.”Parisian restaurants.”


TyTy and The Lexicon and The Lexicon Should the “guides” discussed in Ty be analogized to Should the “guides” discussed in Ty be analogized to

the Lexicon?the Lexicon? It seems that a reference guide such as the Lexicon It seems that a reference guide such as the Lexicon

would not be considered a “substitute” for the would not be considered a “substitute” for the copyrighted Harry Potter bookcopyrighted Harry Potter book

Instead, it seems more to “complement” the books in Instead, it seems more to “complement” the books in that it explains, catalogues and parses out the contents that it explains, catalogues and parses out the contents of the books, rather than replaces itof the books, rather than replaces it

Would the Lexicon ever be considered a replacement Would the Lexicon ever be considered a replacement for the Harry Potter books?for the Harry Potter books?


Castle Rock Entertainment, Inc. v. Carol Publishing Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc.Group, Inc., , 150 F.3d 132, (2d Cir. 1998)150 F.3d 132, (2d Cir. 1998)

Castle Rock sued Carol Publishing for publication of Castle Rock sued Carol Publishing for publication of The Seinfeld Aptitude TestThe Seinfeld Aptitude Test, a trivia book about the , a trivia book about the popular TV show, Seinfeldpopular TV show, Seinfeld

22ndnd Circuit said: Circuit said: ““By developing or licensing a market for parody, news By developing or licensing a market for parody, news

reporting, educational or other transformative uses of its reporting, educational or other transformative uses of its own creative work, a copyright owner plainly cannot own creative work, a copyright owner plainly cannot prevent others from entering those fair use markets.”prevent others from entering those fair use markets.”


Castle Rock Entertainment, Inc. Castle Rock Entertainment, Inc. cont.cont. Surprising decision Surprising decision

Court concluded that Court concluded that The SATThe SAT unlawfully copied from unlawfully copied from Seinfeld and that its copying did not constitute fair use Seinfeld and that its copying did not constitute fair use and thus was an actionable infringement and thus was an actionable infringement

Later, the Later, the TyTy court had this to say about the court had this to say about the holding:holding: ““The holding [in Castle Rock] seems to rest in part, and The holding [in Castle Rock] seems to rest in part, and

very dubiously we must say, on the court's judgment that very dubiously we must say, on the court's judgment that the book was frivolous…. But the fair-use doctrine is not the book was frivolous…. But the fair-use doctrine is not intended to set up the courts as judges of the quality of intended to set up the courts as judges of the quality of expressive works.”expressive works.”


Castle Rock Castle Rock and The Lexiconand The Lexicon Fair use determinations are not easily Fair use determinations are not easily

predictedpredicted Warner and Rowling claim that Rowling has Warner and Rowling claim that Rowling has

always planned to publish companion books to always planned to publish companion books to Harry Potter and that the Lexicon precludes Harry Potter and that the Lexicon precludes Rowling’s ability to publish such a work Rowling’s ability to publish such a work Under Castle Rock, such an argument lacks meritUnder Castle Rock, such an argument lacks merit


Video Pipeline, Inc. v. Buena Vista Home Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc.,Entertainment, Inc., 192 F. Supp. 2d 321 (2002)192 F. Supp. 2d 321 (2002)

Video Pipeline (VP) contracted with Disney to format Video Pipeline (VP) contracted with Disney to format previews and video clips for use in video retail stores previews and video clips for use in video retail stores

Disney argued that VP’s digitization and internet Disney argued that VP’s digitization and internet streaming of the in-store trailers and clip previews on streaming of the in-store trailers and clip previews on VP’s website and the copying of Disney trailers VP’s website and the copying of Disney trailers constituted copyright infringement constituted copyright infringement


Video Pipeline, Inc. Video Pipeline, Inc. cont.cont. ““A fair use defense is favored if the copying A fair use defense is favored if the copying

complementscomplements the use of the copyrighted works and the use of the copyrighted works and serves a serves a transformative purposetransformative purpose, that is, a purpose , that is, a purpose different than that of the copyright owner.” different than that of the copyright owner.”

““Fair use, when properly applied, is limited to Fair use, when properly applied, is limited to copying by others which does not materially impair copying by others which does not materially impair the marketability of the work which is copied.”the marketability of the work which is copied.”


Video Pipeline, Inc. Video Pipeline, Inc. cont.cont. ““Like the collector’s guide in Like the collector’s guide in TyTy, the clip previews and trailers in , the clip previews and trailers in

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


Video Pipeline, Inc. Video Pipeline, Inc. and The Lexiconand The Lexicon It could be argued that the entries that make up the It could be argued that the entries that make up the

Lexicon “inform customers of the…story or theme,” Lexicon “inform customers of the…story or theme,” and are thus analogous to the clips formatted together and are thus analogous to the clips formatted together to form a preview, which the court held to be to form a preview, which the court held to be derivative worksderivative works But the Lexicon arguably serves a transformative purpose But the Lexicon arguably serves a transformative purpose

other than that of the Harry Potter books themselvesother than that of the Harry Potter books themselves It could also be argued that the Lexicon complements It could also be argued that the Lexicon complements

the books and is thus more analogous to the protected the books and is thus more analogous to the protected collectors’ guides collectors’ guides

Public CommentaryPublic Commentary

Popular consensus among scholars is that Popular consensus among scholars is that Rowling has a weak case, if any, and that the Rowling has a weak case, if any, and that the Lexicon is protected under the fair use Lexicon is protected under the fair use doctrinedoctrine

On the other side, however, are laypeople On the other side, however, are laypeople leaving comments on online articles and blogs; leaving comments on online articles and blogs; those comments undoubtedly favor Rowling those comments undoubtedly favor Rowling and think the Lexicon should not be published and think the Lexicon should not be published


William Patry, author of “Patry on Copyright” William Patry, author of “Patry on Copyright” and senior copyright counsel for Google and senior copyright counsel for Google ““I don’t see how a list of spells…is anything I don’t see how a list of spells…is anything

other than fair use…Regardless of how the other than fair use…Regardless of how the Harry Potter suit comes out, the most Harry Potter suit comes out, the most depressing part is that it was brought at all. depressing part is that it was brought at all. Fans will happily buy her book; the only effects Fans will happily buy her book; the only effects of the suit, therefore are negative.”of the suit, therefore are negative.”


Tim Wu, a Columbia Law School professor and Tim Wu, a Columbia Law School professor and freelance writer freelance writer Rowling is “overstepping her bounds. She has confused the Rowling is “overstepping her bounds. She has confused the

adaptationsadaptations of a work, which she does own, with of a work, which she does own, with discussiondiscussion of her work, which she doesn’t.” of her work, which she doesn’t.”

““No one would read the Lexicon as a substitute for the No one would read the Lexicon as a substitute for the Potter books; it is useless unless you’ve read the original, Potter books; it is useless unless you’ve read the original, and that makes all the difference…Giving Rowling what and that makes all the difference…Giving Rowling what she wants would be like giving Egypt the power to control she wants would be like giving Egypt the power to control guides to the pyramids.” guides to the pyramids.”


User Comments on the William Patry blog’sUser Comments on the William Patry blog’s It is my educated, but inexperienced, opinion that the It is my educated, but inexperienced, opinion that the

Compendium [Lexicon] would not constitute a fair use of Compendium [Lexicon] would not constitute a fair use of Ms. Rowling's copyrighted materials. The purpose of the Ms. Rowling's copyrighted materials. The purpose of the use is commercial in nature and arguably non-use is commercial in nature and arguably non-transformative. The Compendium - judging by the court transformative. The Compendium - judging by the court filings - is simply an alphabetical re-formatting of Ms. filings - is simply an alphabetical re-formatting of Ms. Rowling's creative expression.”Rowling's creative expression.”

““It comes down to money...this guy saw that the Harry It comes down to money...this guy saw that the Harry Potter series was a way to make money for him so he 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 decided to try to cash in on it. Should he be permitted to do so, NO.”so, NO.”


User comments on the Slate.com article “J.K. User comments on the Slate.com article “J.K. Rowling’s Dark Mark” Rowling’s Dark Mark” ““JK should not lose her copyright lawsuit. she is not JK should not lose her copyright lawsuit. she is not

discouraging individual writers or fan fiction it is simply discouraging individual writers or fan fiction it is simply saying that lexicon should not be able to publish and saying that lexicon should not be able to publish and therefore make money from something that was her therefore make money from something that was her original idea and not only that but she will soon be original idea and not only that but she will soon be completing her own encyclopedia of Harry Potter” completing her own encyclopedia of Harry Potter”

““I actually agree with Rowling... It is her rights. It's fine to 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 be a fan and do all those things out of love, but trying to make money off of someone else's creation sucks.”make money off of someone else's creation sucks.”

Comparative Fair Use:Comparative Fair Use:How would the Lexicon fare in the U.K.?How would the Lexicon fare in the U.K.?

Instead of a “fair use” concept, the UK employs the Instead of a “fair use” concept, the UK employs the notion of “fair dealing”notion of “fair dealing”

The idea behind the concept is that if copyright laws The idea behind the concept is that if copyright laws are too restrictive, it may stifle free speech, news are too restrictive, it may stifle free speech, news reporting, or result in disproportionate penalties for reporting, or result in disproportionate penalties for inconsequential or accidental inclusion inconsequential or accidental inclusion

UK fair dealing is more restrictive than in the US and UK fair dealing is more restrictive than in the US and applies only to statutorily defined situations applies only to statutorily defined situations


Copyright, Designs and Patents Act 1988, Chapter III Copyright, Designs and Patents Act 1988, Chapter III Acts Permitted in relation to Copyright Works, §29.Acts Permitted in relation to Copyright Works, §29.

““Fair dealing with a literary work, [other than a Fair dealing with a literary work, [other than a database] or a dramatic, musical or artistic work for database] or a dramatic, musical or artistic work for the purposes of the purposes of research or private study does not research or private study does not infringeinfringe any copyright in the work or, in the case of a any copyright in the work or, in the case of a published edition, in the typographical arrangement” published edition, in the typographical arrangement”

““Fair dealing with a work Fair dealing with a work for the purpose of criticism for the purpose of criticism or reviewor review, of that or another work or of a , of that or another work or of a performance of a work, does not infringe any performance of a work, does not infringe any copyright in the work provided that it is accompanied copyright in the work provided that it is accompanied by a sufficient acknowledgement”by a sufficient acknowledgement”


The Society of Authors and the Publishers The Society of Authors and the Publishers Association has issued guidelines regarding fair Association has issued guidelines regarding fair dealing in the context of criticism and reviewdealing in the context of criticism and review

Defined fair dealing as a “single extract of up to 400 Defined fair dealing as a “single extract of up to 400 words or a series of extracts (of which none exceeds words or a series of extracts (of which none exceeds 300 words) to a total of 800 words from a prose work. 300 words) to a total of 800 words from a prose work. The words MUST be quoted in the context of The words MUST be quoted in the context of criticism or review.”criticism or review.” The online Lexicon does not use quotation marks around The online Lexicon does not use quotation marks around

direct quotations, and it is reported that the print version direct quotations, and it is reported that the print version did not use them either did not use them either


The University of Cambridge has indicated that “fair The University of Cambridge has indicated that “fair dealing for the purposes of criticism or review may dealing for the purposes of criticism or review may apply if short extracts of copyright material are apply if short extracts of copyright material are posted on an intranet or possibly the Internet, but the posted on an intranet or possibly the Internet, but the purpose must be that of criticism or review and not purpose must be that of criticism or review and not use of the extracts solely for anthologizing or use of the extracts solely for anthologizing or illustrative purposes”illustrative purposes” The purpose of the Lexicon is essentially to organize and The purpose of the Lexicon is essentially to organize and

“anthologize” information in Rowling’s books for “anthologize” information in Rowling’s books for “illustrative purposes" “illustrative purposes"


The UK Intellectual Property Office, official The UK Intellectual Property Office, official government body responsible for granting IP rights in government body responsible for granting IP rights in the UK, said:the UK, said: ““Fair dealing has been interpreted by the courts on a Fair dealing has been interpreted by the courts on a

number of occasions by looking at the economic impact on number of occasions by looking at the economic impact on the copyright owner of the use; where the economic impact the copyright owner of the use; where the economic impact is not significant, the use may count as fair dealing. So, it is is not significant, the use may count as fair dealing. So, it is probably within the scope of the above fair dealing probably within the scope of the above fair dealing exception to make single photocopies of short extracts of a exception to make single photocopies of short extracts of a copyright work for certain purposes, that is, non-copyright work for certain purposes, that is, non-commercial research or private study, criticism or review, commercial research or private study, criticism or review, reporting current events, and so on.”reporting current events, and so on.”


Vander Ark’s guide admittedly uses a great Vander Ark’s guide admittedly uses a great amount of direct quotations from the Potter amount of direct quotations from the Potter booksbooks

The Lexicon does not fit into the boxes of The Lexicon does not fit into the boxes of “criticism” or “review”“criticism” or “review”

The Lexicon, which comprises hundreds of The Lexicon, which comprises hundreds of pages of copyrighted material, hardly seems to pages of copyrighted material, hardly seems to fit into the scope of fair dealing in the UK fit into the scope of fair dealing in the UK

Not likely he would find protection in the UKNot likely he would find protection in the UK

Comparative Fair Use:Comparative Fair Use:How would the Lexicon fare in the E.U.?How would the Lexicon fare in the E.U.?

All European Union Member States are parties All European Union Member States are parties to the:to the:Berne ConventionBerne ConventionTRIPS (Trade-related Aspects Of Intellectual TRIPS (Trade-related Aspects Of Intellectual

Property Rights)Property Rights)WIPO Copyright TreatyWIPO Copyright Treaty


Berne ConventionBerne Convention Gives authors the exclusive the right to make adaptations, Gives authors the exclusive the right to make adaptations,

arrangements, other alterations and collections of the work arrangements, other alterations and collections of the work ““Free Use Concept”Free Use Concept”

Permissible to Permissible to make quotationsmake quotations from a work which has already been from a work which has already been lawfully made available to the public, provided it is lawfully made available to the public, provided it is compatible with compatible with fair practicefair practice, and the extent does not exceed that justified by the , and the extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals purpose, including quotations from newspaper articles and periodicals in the form of press summaries in the form of press summaries

It is a matter for legislation in EU countries to permit the utilization, to 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 the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings of illustration in publications, broadcasts or sound or visual recordings for teachingfor teaching, provided such utilization is compatible with fair practice, provided such utilization is compatible with fair practice

The Lexicon is not “for teaching” and certainly does more The Lexicon is not “for teaching” and certainly does more than “make quotations” from the Harry Potter booksthan “make quotations” from the Harry Potter books


Pursuant to the European Directive of May 22, Pursuant to the European Directive of May 22, 2001 permitted limitations include:2001 permitted limitations include: Use for illustration for teaching or scientific research, to Use for illustration for teaching or scientific research, to

the extent justified by the non-commercial purpose the extent justified by the non-commercial purpose Press reviews and news reporting; Press reviews and news reporting; Quotations for the purposes of criticism or review; Quotations for the purposes of criticism or review; Incidental inclusion in another work; Incidental inclusion in another work; Caricature, parody or pasticheCaricature, parody or pastiche

The widespread copying found in the Lexicon The widespread copying found in the Lexicon does not seem to comport with any of these does not seem to comport with any of these permitted exceptionspermitted exceptions


TRIPS (Agreement on Trade-related Aspects Of Intellectual TRIPS (Agreement on Trade-related Aspects Of Intellectual Property Rights)Property Rights)

Exceptions to exclusive rights, like fair use, must be Exceptions to exclusive rights, like fair use, must be constrained: 3-Step Test for Exceptions (also found in Berne)constrained: 3-Step Test for Exceptions (also found in Berne) Members shall confine limitations and exceptions to Members shall confine limitations and exceptions to

exclusive rights to exclusive rights to Certain special cases;Certain special cases;Which do not conflict with a normal exploitation of the Which do not conflict with a normal exploitation of the

work; work; And do not unreasonably prejudice the legitimate interests of And do not unreasonably prejudice the legitimate interests of

the rights holderthe rights holder Does the Lexicon “unreasonably prejudice” the legitimate Does the Lexicon “unreasonably prejudice” the legitimate

interests of Rowling as the author? Does it conflict with interests of Rowling as the author? Does it conflict with normal exploitation of the work?normal exploitation of the work?


WIPO Copyright TreatyWIPO Copyright Treaty Copyright protection extends to expressions and not to ideas, Copyright protection extends to expressions and not to ideas,

procedures, methods of operation or mathematical concepts procedures, methods of operation or mathematical concepts Nothing in this Treaty shall derogate from existing obligations that Nothing in this Treaty shall derogate from existing obligations that

Contracting Parties have to each other under the Berne Convention Contracting Parties have to each other under the Berne Convention Also mandates the three-step restraint of Berne, TRIPS Also mandates the three-step restraint of Berne, TRIPS Provides for protection for compilations of data or other material, in Provides for protection for compilations of data or other material, in

any form, which by reason of the selection or arrangement of their any form, which by reason of the selection or arrangement of their contents constitute intellectual creations. This protection does not contents constitute intellectual creations. This protection does not extend to the data or the material itself and is without prejudice to extend to the data or the material itself and is without prejudice to any copyright subsisting in the data or material contained in the any copyright subsisting in the data or material contained in the compilationcompilation

Does not seem the Lexicon would be protected as a compilation since Does not seem the Lexicon would be protected as a compilation since the underlying work in the compilation is all copyrightedthe underlying work in the compilation is all copyrighted

Predictions, Comments & ConclusionsPredictions, Comments & Conclusions

The internet has made it easy for anyone and The internet has made it easy for anyone and everyone to create derivative works, post them everyone to create derivative works, post them online, and benefit from them commerciallyonline, and benefit from them commercially The outcome of this lawsuit will have an impact on this The outcome of this lawsuit will have an impact on this

practice practice The internet has also made it easier for creators of The internet has also made it easier for creators of

original material to post it online and share it with the original material to post it online and share it with the worldworld

It is hard to predict how the court will ruleIt is hard to predict how the court will rule The Judge hearing the case urged the parties to settle, The Judge hearing the case urged the parties to settle,

though neither party seems to have taken the advicethough neither party seems to have taken the advice

Predictions, Comments & ConclusionsPredictions, Comments & Conclusions

Based on the fact that “unauthorized” guides have existed for Based on the fact that “unauthorized” guides have existed for so long, the Lexicon has a good chance for protection in the so long, the Lexicon has a good chance for protection in the USUS

If this case was brought in Europe, chances for protection If this case was brought in Europe, chances for protection decrease dramaticallydecrease dramatically

Denying protection would be a big blow to the “guide” Denying protection would be a big blow to the “guide” industry and would disappoint many fansindustry and would disappoint many fans How realistic is it that such guides would disappear completelyHow realistic is it that such guides would disappear completely Even if publishers refused to publish them, anyone can post on the Even if publishers refused to publish them, anyone can post on the

internetinternet Will more infringement suits be brought?Will more infringement suits be brought?

Fair Use seems to sufficiently protect the concept of such a Fair Use seems to sufficiently protect the concept of such a guide, perhaps with some modificationsguide, perhaps with some modifications

fair use in a digital age: a closer look at the harry potter lexicon regina forker university of...

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