Conjuring a Ghost: Copyright and Rowling prevail in the Harry Potter Encyclopedia Case

Fair use, like obscenity, is something that judges in America seem to know when they see it.  With the rise of the Internet, fair use seems to be becoming a more popular defense, and even an offense, in copyright infringement cases.   What qualifies for fair use in one case, may likely not qualify in another for a variety of reasons.  As Professor Paul Goldstein has pointed out in his treatise on copyright “[a] use that is fair one day may be unfair the next.”

That there is no easily identifiable standard of fair use has caused a great deal of conflict between the creators of content and those who use and/or repurpose it.   Using law schools as their pulpits, professors have promulgated proposed solutions and standards for the fair use debate.  For example, Stanford’s Center for Internet and Society hosts the Fair Use Project which provides pro bono legal defense to those accused of copyright infringement.  Other schools have joined Stanford in the fight to define fair use as it seems the cool thing to do. Fairly recently, under the auspices of the American University Center for Social Media, a group of law professors created the Code of Best Practices in Fair Use for Online Video.

As most of the solutions law school professors advocate wrest control of copyright protected works away from the creator and/or owner, copyright owners and creators have not jumped on their bandwagon.  Nor are they lining up to support organizations, like EFF and Public Knowledge, that similarly advocate decreased control over how copyright protected works can be used without permission from, or compensation to, the owners of the copyright.

America is unique among other countries in that those accused of copyright infringement have a viable defense that they have made a “fair use” of the work, and are not liable for infringement.   The doctrine of fair use dates back to 1841, when a publisher sued the publisher of the “Life of Washington” in Folsom v. Marsh for copyright infringement over the inclusion of 353 pages of materials lifted directly from its “Writings of President Washington.”

Justice Joseph Story heard Folsom v. Marsh, and recognized immediately that the task before him was not an easy one:

This is one of those intricate and embarrassing questions, arising in the administration of civil justice, in which it is not, from the peculiar nature and character of the controversy, easy to arrive at any satisfactory conclusion, or to lay down any general principles applicable to all cases.

Significantly, the defendant in Folsom v. Marsh argued that there could be no copyright infringement because the works in the “Writings of President Washington” were factual in nature and not protected by copyright.  Justice Story found that copyright did extend to the materials for a number of reasons, including that their  creator, President Washington, had treated them as private property.

The issue as to whether or not the author of another work without permission from the copyright owner had the right to use the protected works was novel in the United States.  Therefore, Justice Story looked to England for guidance.  Significantly, the courts in England had recognized that third parties had the right to abridge protected works for use in newspapers and other similar materials.

However, in Lewis v. Fullarton, the defendant in a piracy action claimed that he had made “fair use” of materials from the plaintiff’s “A Topographical Dictionary of England” in his competitive dictionary.

Similar to the argument set forth in Folsom v. Marsh, the defendant’s claim was that the materials were not subject to copyright protection as they were factual in nature.  While Lord Langdale acknowledged that the defendant may have believed no copyright attached, he stated that “whilst all are entitled to resort to common sources of information, none are entitled to save themselves trouble and expense by availing themselves, for their own profit, or other men’s works still subject to copyright and entitled to protection.”

If no copyright protection extended to compilations of factual based works, Lord Langdale noted:

it is plain no protection whatever could be given to any work in the nature of a gazetteer, dictionary, road book, calendar, map or any other work in the subject-matter of which is open to common observation and enquiry; and that every man who had bestowed any amount of labour or expense in collecting and arranging the information requisite for the production of such work, might immediately on its publication, be deprived of the fruit of his industry and ability.

Affirming the copyright in the “Topographical Dictionary of England,” Lord Langdale issued an injunction against the defendant’s continued publication of its dictionary because the amount and nature of the use of the infringing materials was the fundamental base of the competitor’s work.

In Folsom v. Marsh, Justice Story considered whether or not the defendant

had a right to abridge and select, and use the materials which they have taken for their work, which though it embraces the number of letters above stated, is an original and new work, and that it constitutes, in no just sense, a piracy of the work of the plaintiffs.

Relying greatly on Lord Langdale’s analysis in Lewis v. Fullarton, Justice Story held that the use of the materials from the “Writings of President Washington” constituted copyright infringement. Based on the number of letters, and the percentage of the final work that the letters comprised, Justice Story held that the use of the letters from “Writings of President Washington” was not justified. According to Justice Story “every one must see, that the work of the defendants is mainly founded upon these letters, constituting more than one third of their work, and imparting to its greatest, nay, its essential value.“

In Folsom v. Marsh, Justice Story set forth the factors that have served as the foundation of the Fair Use doctrine, and have been incorporated into the Copyright Act:

In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.

Recently, the ghosts of Justice Story and Lord Langdale appear to have paid a visit to Judge Robert Patterson as he considered the facts in Warner Bros. Ent. v. RDR Books, commonly referred to as the Harry Potter Encyclopedia case.    A major fan of the Harry Potter series, Steven Vander Ark, compiled materials from the Harry Potter books and ancillary materials to create the Harry Potter Lexicon.  His publisher, RDR Books, marketed the book as the “definitive” Harry Potter encyclopedia.

The Lexicon purported to be an “A-to-Z guide to the creatures, characters, objects, events and places that exist in the world of Harry Potter.”  The manuscript, according the decision, was more than 400 pages long, with close to 2,500 entries.   The entries culled information from the entire series, and ancillary works, to create the encyclopedic feel to the book.

However, according to the evidence and testimony presented during the trial, the judge found it “difficult to quantify how much of the language in the Lexicon is directly lifted from the Harry Potter novels and companion books.”  In fact, Ms. Rowling testified that “if Mr. Vander Ark had put quotation marks around everything he has lifted, most of the Lexicon would be in quotation marks.”   Judge Patterson provides a number of examples where Vander Ark lifted a definition directly from one of Rowling’s works.

The defendants claimed that they were not liable for the use of the Harry Potter materials because they had made a fair use of the works.  Applying the fair use factors codified in the Copyright Act, Judge Patterson considered whether the use qualified as fair.

(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.

Here, the judge paid particular attention to the transformative nature of the use of the Harry Potter materials. He found that the primary purpose of the use of the works was not to “add some new insight, of whatever value,” to Harry Potter. Additionally, the use was not consistently transformative as Vander Ark “often lack[ed] restraint in using Rowling’s original expression for its inherent entertainment and aesthetic values.”

Similarly, the amount and substantiality of the works used was a concern to the judge. He found that the “verbatim copying and close paraphrasing of language from the Harry Potter works” was beyond an amount reasonably necessary.  The defendant would “retell parts of the storyline rather than report fictional facts and where to find them.”   Judge Patterson provided:

While it is difficult to draw the line at each entry that takes more than is reasonably necessary from the Harry Potter series to serve its purposes, there are number of places where the Lexicon engages in the same sort of extensive borrowing that might be expected of a copyright owner, not a third party author.

Judge Patterson rejected the defendants’ fair use claim, finding that their use of Rowling’s works was not transformative and used an unreasonable amount of the original materials.  He held that:

In striking the balance between the property rights of original authors and the freedom of expression of secondary authors, reference guides of works of literature should generally be encouraged by copyright law as they provide a benefit [to] readers and students; but to borrow from Rowling’s overstated views, they should not be permitted to ‘plunder’ the works of original authors ‘without paying the customary price’ lest original authors lose incentive to create new works that will benefit the public interest.

Or, as Lord Langdale provided way back in 1839:

it appearing to me, under these circumstances, that if the parts affected with the character of piracy were taken away, there would be left, I cannot say nothing but a few broken sentences, but there would be left an imperfect work, which could not, to any useful extent, serve the purposes of a gazetter…