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
Overview
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Reference Works
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U.S. IP Origins
The U.S. “Bundle of Rights”
Fair Use Overview
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What are they?
The Internet’s Impact
What problems do they pose?
What is Fair Use?
Why is it Important?
How is Fair Use Determined?
Background of the Lexicon Lawsuit
Overview
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Judicial Fair Use Interpretations
Collectors Guides
 Trivia Books
 Online Movie Previews
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Public Commentary on the Lexicon
 Comparative Fair Use
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How would the Lexicon fare in the U.K.?
 The E.U.?
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Predictions and Conclusion
Reference Works
What are they?
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Guides, summaries, compendiums, handbooks,
dictionaries
Compilation of information for the purpose of easy
reference
US copyright protection is afforded to compilations
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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
Reference Works
Literally thousands of such works are available
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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
Reference Works
The Internet’s Impact on Reference Works
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Anyone can publish online
It seems the internet has done nothing but increased
the availability of such guides
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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
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
U.S. Intellectual Property Origins
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IP rights officially recognized in the U.S. as federal
law when the Constitution was adopted in 1787
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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
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Includes the right to prepare derivative works
Note on Derivative Works
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17 USC § 101 Defines Derivative Work
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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?
Fair Use Overview
What is Fair Use?
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17 USC § 107 – codified in 1976
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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.
Fair Use Overview Cont.
Why is Fair Use Important?
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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
Fair Use Overview Cont.
Folsom v. Marsh, 9 F.Cas. 342 (1841)
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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.”
Background:
The Harry Potter Lexicon
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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
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Four movies have been released by Warner Brothers;
the rest are in production
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She has published seven Harry Potter books
Warner is a licensee of Rowling
Dubbed by Forbes as the “Billion Dollar Brand”
Background:
The Harry Potter Lexicon
Countless spin-off publications have been published, with
and without permission
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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
Background:
The Harry Potter Lexicon
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Countless websites revolving around the world of
Harry Potter have been created, both sanctioned and
not
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mugglenet.com
www.darkmark.com
www.harrypotterorderofthephoenix.com
www.the-leaky-cauldron.org
www.harrypotterfanzone.com
www.veritaserum.com
www.harrypotterrealm.com
Background:
The Harry Potter Lexicon
The Harry Potter Lexicon
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In July 2000, Steve Vander Ark started the Harry
Potter Lexicon website
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“The most amazing and complete reference anywhere to
the world of Harry Potter.”
Includes things like
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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
Background:
The Harry Potter Lexicon
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Rowling was openly supportive of the Lexicon
and posted about it on her own website:
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“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.”
Background:
The Harry Potter Lexicon
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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
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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
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
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Background:
The Harry Potter Lexicon
The Complaint
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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
Background:
The Harry Potter Lexicon
The Complaint
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“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-ofcharge, 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.”
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Rowling has said she plans to write an authoritative
reference guide and donate the proceeds to charity
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
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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
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The 7th Circuit reversed the lower court’s
summary judgment in favor of Ty
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.”
Judicial Fair Use Interpretations
Ty and The Lexicon
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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?
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:
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“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.”
Judicial Fair Use Interpretations
Castle Rock Entertainment, Inc. cont.
 Surprising decision
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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:
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“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.”
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
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Under Castle Rock, such an argument lacks merit
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
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.”
Judicial Fair Use Interpretations
Video Pipeline, Inc. cont.
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“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.”
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
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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
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
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Public Commentary
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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.”
Public Commentary
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Tim Wu, a Columbia Law School professor and
freelance writer
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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.”
Public Commentary
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User Comments on the William Patry blog’s
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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 nontransformative. 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.”
Public Commentary
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User comments on the Slate.com article “J.K.
Rowling’s Dark Mark”
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“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.”
Comparative Fair Use:
How would the Lexicon fare in the U.K.?
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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
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”
Comparative Fair Use:
How would the Lexicon fare in the U.K.?
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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.”
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The online Lexicon does not use quotation marks around
direct quotations, and it is reported that the print version
did not use them either
Comparative Fair Use:
How would the Lexicon fare in the U.K.?
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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”
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The purpose of the Lexicon is essentially to organize and
“anthologize” information in Rowling’s books for
“illustrative purposes"
Comparative Fair Use:
How would the Lexicon fare in the U.K.?
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The UK Intellectual Property Office, official
government body responsible for granting IP rights in
the UK, said:
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“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, noncommercial research or private study, criticism or review,
reporting current events, and so on.”
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
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Comparative Fair Use:
How would the Lexicon fare in the E.U.?
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All European Union Member States are parties
to the:
Berne Convention
 TRIPS (Trade-related Aspects Of Intellectual
Property Rights)
 WIPO Copyright Treaty
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Comparative Fair Use:
How would the Lexicon fare in the E.U.?
Berne Convention
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Gives authors the exclusive the right to make adaptations,
arrangements, other alterations and collections of the work
“Free Use Concept”
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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
Comparative Fair Use:
How would the Lexicon fare in the E.U.?
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Pursuant to the European Directive of May 22,
2001 permitted limitations include:
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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
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
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Does the Lexicon “unreasonably prejudice” the legitimate
interests of Rowling as the author? Does it conflict with
normal exploitation of the work?
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
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Predictions, Comments & Conclusions
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The internet has made it easy for anyone and
everyone to create derivative works, post them online,
and benefit from them commercially
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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
Predictions, Comments & Conclusions
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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
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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