02 November 2007

Accio Lawsuit!

As noted in many, many places, J.K. Rowling has had a suit filed in her name to enjoin publication of a Harry Potter "lexicon" by a third party. There is both more and less here than meets the eye. Although I sympathize with Professor Patry's frustration (and I withhold judgment on whether the "lexicon" constitutes fair use, because I haven't seen it), I can't agree with much of his analysis... primarily because I think that the real party driving this lawsuit has used Polyjuice Potion on the caption.

Compare the copyright notices in the front of the Harry Potter books in their US editions:

Harry Potter and the Sorceror's Stone (book 1):
Text copyright 1997 by J.K. Rowling
Illustrations copyright 1998 by Mary GrandPre
All rights reserved.
Harry Potter and the Deathly Hallows (book 7):
Text copyright 2007 by J.K. Rowling
Illustrations by Mary GrandPre copyright 2007 by Warner Bros.
HARRY POTTER & all related characters and elements are TM of and copyright WBEI
Harry Potter Publishing Rights copyright J.K. Rowling
All rights reserved.

I really don't think this lawsuit is being driven by Joanne Rowling.1 I think this is Warner. And I think is it being driven by trademark law's "rabid Rottweiler" nature: "defend against even fair uses or lose it."

It is also an artifact of two huge problems with copyright doctrine.

  1. The Second Circuit's dubious jurisprudence on copyright in "characters" during the 1920s through 1950s, particularly related to Tarzan (which is more relevant/damaging in this instance than the even-more-inexplicable Sam Spade cases); and
  2. The willful refusal of the publishing and film industries to acknowledge that the 1976 Act worked fundamental changes on the then-judge-made law of fair use that at least required a ground-zero rethinking of the Tarzan/Spade amoeba (it's too bloated and indistinct to call it a "line of cases"). IMNSHO, Air Pirates is no longer good law after the 1976 Act, let alone 2Live Crew, and therefore Dr Seuss v. Penguin is wrong, too... or, at least, the authority on which it was founded is no longer valid.2

Finally, it is also a problem in civil procedure more than it is in substantive IP law (whether copyright or trademark, or even some nebulous theory of "unfair competition" or "interference with contractual advantage"). If trademark is the better rubric — and is actually driving the plaintiffs' actions — why is it a copyright case? Primarily, because the remedies available are vastly better in copyright matters, due to civil procedure considerations. For one thing, it's a lot harder to get an award of attorney's fees in trademark actions (requires an "exceptional case") than in copyright actions (Fogerty factors... and if infringement was willful, then it's virtually a given). For another thing, the statutory damages available in a copyright action are a lot more generous than in a trademark action. Then, too, the standard of proof in a copyright action is a lot more favorable to a plaintiff: Strict liability as to copying, with fair use being a preponderence test (but defendant's burden of persuasion), versus preponderence of confusion requiring presentation of expert evidence in all but the clearest cases for trademark matters, which also cunningly shifts the burden of proof from the defendant to the plaintiff on the equivalent of a fair-use defense.

So, until we see some more pleadings, we cannot really judge what is going on here, or who is responsible for it. Or, as seems more likely, irresponsible, but that's a much longer digression indeed.

  1. And looking at the counsel list makes me think even less that this was Rowling... which is not an aspersion on counsel, but a comment concerning the pattern of the types of clients represented by counsel.
  2. Ordinarily, I'd put a link to my long compilation/essay on character copyrights from a couple of years ago. However, I'm in the process of substantially revising it for another medium, and I'm also changing over the domain on which it is hosted, so for the present you'll just have to search for it on Google to be certain of finding it.