For eight years Steven Vander Ark has published The Harry Potter
Lexicon, a website cataloguing the details of the fictional world
created by JK Rowling in her seven Harry Potter books.
He and RDR Books planned a print version of the lexicon but
Potter and Warner Brothers, the producers of the films of the
books, took the publishers to court to prevent publication,
claiming the work infringed their copyright.
Judge Robert Patterson in the US District Court for the Southern
District of New York has banned the publication of the book
because, he said, it does not qualify for the protection of the
'fair use' exceptions to copyright law.
The ruling will not outlaw all such fiction-related reference
works, though. Judge Patterson found that the book did in many ways
make fair use of the seven Harry Potter novels because the use to
which it put the information was transformative.
"Because it serves … reference purposes, rather than the
entertainment or aesthetic purposes of the original works, the
Lexicon’s use is transformative and does not supplant the objects
of the Harry Potter works," said the ruling.
Rowling also had copyrights in two companion books she wrote in
aid of charity Comic Relief, though. Quidditch Through the Ages and
Fantastic Beasts & Where to Find Them are real life versions of
textbooks that appear in the novels. They were published in 2001
and written by Rowling.
Vander Ark used material from these books and this represented a
much clearer cut infringement, Judge Patterson said.
"The Lexicon’s use of Rowling’s companion books, however, is
transformative to a much lesser extent," he wrote. "The content of
the companion books takes on the informational purpose of the
schoolbooks they represent in the novels. As Vander Ark testified,
the companion books are 'essentially encyclopedias already'."
While conceding that the Lexicon represented significant use of
material that is protected by copyright, Vander Ark and RDR argued
that theirs was fair use of the material. Other fictional works
have had legal guides to them published, particularly those works
which create a fictional fantasy universe, such as CS Lewis's
Narnia novels.
The Court observed that fair use depended not just on the amount
of material copied but on the nature of the copying and use. It
found that though some of the use of material from the novels was
transformative, and therefore permitted, some of it copied too much
of Rowling's literary language to qualify.
"The transformative character of the Lexicon is diminished,
however, because the Lexicon’s use of the original Harry Potter
works is not consistently transformative.
"The Lexicon’s verbatim copying of … highly aesthetic expression
raises a significant question as to whether it was reasonably
necessary for the purpose of creating a useful and complete
reference guide," said the ruling.
"While the exact quantity of verbatim copying and paraphrasing
in the Lexicon is difficult to assess, the instances identified by
Plaintiffs amount to a substantial enough taking to tip [one of the
four factors to be considered by the court] against a finding of
fair use argument in view of the expressive value of the language,"
ruled Judge Patterson.
Citing another ruling, he added, "a copier is not entitled to
copy the vividness of an author’s description for the sake of
accurately reporting expressive content."
Judge Patterson said that the Court also took into account the
fact that the Lexicon was a commercial product designed to be
profitable. "The commercial nature of the use weighs against a
finding of fair use," he said.
He rejected, though, Rowling's claim that the book should be
banned because she had planned her own encyclopaedia. Such
reference works were not derivative works so were not in themselves
banned by copyright law.
"A reference guide to the Harry Potter works is not a derivative
work; competing with Rowling’s planned encyclopedia is therefore
permissible," he wrote. "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."
He also said that the publication was unlikely to damage the
sales of the novels themselves, but that it could harm the sales of
the companion books, which weighed against Vander Ark and RDR.
The judge also said that copyright law should be applied
differently according to the kind of work claiming its protection.
Entirely fictional works such as the Harry Potter novels, he said,
deserve the strongest kind of protection.
"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," he said.
The judge issued a permanent injunction on the publication of
the book and awarded damages to Rowling and Warner Brothers of
$6,750.
Intellectual property law specialist Iain Connor of Pinsent
Masons, the law firm behind OUT-LAW.COM, said that a UK court might
issue a similar ruling.
"As with all cases it would turn on the facts as to whether or
not a substantial part of the original work has been taken," he
said. "On the facts here, clearly extracting substantial parts of
the Harry Potter books to form a lexicon is a step too far under US
law and a UK court may well take a similar approach which would be
very reassuring for rights holders."
