Monday, November 5, 2007

Harry Potter and the Trademark Infringement Lawsuit

I’m a few days late on this one because most published reports about the lawsuit have focused on the copyright infringement aspect of the case with little publicity about the accompanying trademark infringement allegations.

On October 31, 2007, J.K. Rowling (author of the widely popular Harry Potter series of books) along with Warner Brothers Entertainment Inc. (the producer of the Harry Potter movies) filed a lawsuit in U.S. District Court for the Southern District of New York against RDR Books (“RDR”), a book publisher, and John Does 1-10 for copyright and trademark infringement. See Warner Bros. Entertainment Inc. et al v. RDR Books et al, Case No. 1:2007-cv-09667 (S.D.N.Y.). A copy of the complaint can be downloaded here.

At issue is RDR’s plan to publish a 400 page book entitled the “Harry Potter Lexicon” which is apparently just a print version of the free-of-charge Harry Potter Lexicon fan website website ( The book is scheduled to be released in the United Kingdom on or about November 5, 2007, and in the United States on November 28, 2007. The author is Steve Vander Ark, the editor of the Harry Potter Lexicon fan website and a noted librarian of all things Harry Potter (even Rowling herself has admitted to occasionally perusing the website to check a fact while writing her books).

Despite the fan website having Rowling’s explicit endorsement, this repackaging of the website’s contents from a free website into a commercial book apparently goes against Rowling’s own plans to publish her own Harry Potter companion book, the proceeds of which would be donated to charity (as she has done with two other such companion books).

Much of the complaint is spent educating about the history of the Harry Potter books. (I can now say that I know what a Quidditch is.) The complaint also details the back and forth communications between Plaintiffs’ counsel and RDR over the pending publication of the book leading up to the filing of the lawsuit.

On September 18, 2007, counsel for Plaintiffs sent a cease and desist letter to RDR citing two federal court cases where companion books were found to be copyright infringement. RDR did not respond other than to indicate its own legal counsel was reviewing the issues raised. In an interesting turn, however, on October 11, 2007, RDR sent its own cease and desist letter to Warner Bros. claiming that a timeline appearing on some of the Harry Potter DVDs infringes on the copyrighted content of the Lexicon website.

While the complaint’s main count is the copyright infringement allegations, Plaintiffs also wield their magic trademarks to help fight this dastardly battle against the evil RDR. The complaint cites to the fact that, pursuant to an agreement between Warner Bros. and Rowling, Warner Bros. holds over 15 federal trademark registrations for the HARRY POTTER mark (along with several other registrations and pending applications based on the various titles of the Harry Potter books). The two most relevant registrations are Reg. Nos. 2,450,788 (word mark) and 2,685,932 (stylized), both for “Printed matter and paper goods” which covers books featuring characters from animated, action adventure, comedy and/or drama features, comic books, and children's books.

Plaintiffs allege Section 32(1) federal trademark infringement (15 USC §1114(1)) against RDR’s use of Plaintiff’s registered HARRY POTTER marks in connection with the sale of the Lexicon book. Plaintiffs further allege that RDR’s book, through its use of the HARRY POTTER marks and lack of adequate disclaimer, will create a likelihood of confusion as to the affiliation, connection, association, origin, source, and sponsorship of the book (amounting to Section 43(a) unfair competition and false designation of origin (15 USC §1125(a)(1)(A)) as well as a likelihood of confusion as to the nature, characteristics and qualities of the book (amounting to Section 43(a) false advertising (15 USC §1125(a)(1)(B))).

The complaint also includes allegations of deceptive trade practices under New York General Business Law §349 (New York Deceptive Trade Practices Act) and unfair competition under New York common law. Finally, Plaintiffs seek a declaratory judgment regarding Defendant’s allegations of copyright infringement over the timeline that Plaintiff Warner Bros. included in DVD versions of several Harry Potter films. The complaint requests a permanent injunction against RDR, actual damages, statutory damages (for the copyright infringement claim), treble damages, costs and attorneys fees.

It is interesting that the Plaintiffs explicitly state in the complaint that “Plaintiffs intend to donate any monetary award that may result from Defendant’s activities prior to an injunction being entered to charity.” This may be a preemptive measure on the part of Rowling and Warner Bros. to assuage any negative publicity arising from the lawsuit from fans who might be alienated by the impression of the big bad evil wizards (Rowling and Warner Bros.) going after a loyal Harry Potter fan.

If you are interested in commentary on the copyright aspects of the lawsuit, I recommend Prof. William Patry’s post (link here) on “The Patry Copyright Blog” as well as the comments by Sharmil McKee at the McKee Law Office Small Business Blog (link here).

As for the trademark aspects of the lawsuit, in addition to a fair use defense, which will also be claimed as part of RDR’s defense to the copyright infringement allegations, I would suspect RDR to claim laches on the part of the Plaintiffs who not only allowed the Lexicon website to use the HARRY POTTER marks in the same way that the alleged Lexicon book likely will, but also endorsed such use,

How effective a fair use defense may be will depend on the extent to which RDR attempts to prevent any likelihood of confusion (through a disclaimer on the cover, etc.). The complaint’s allegations that no such disclaimer will be on the cover of the book was based on information and believe since RDR apparently did not provide Plaintiffs with a copy of the book or its cover before the complaint was filed.

Regardless of where this case ends up, one wonders if Dumbledore would be happy or upset that this lawsuit has taken away from the media coverage surrounding the recent revelation by Rowling of his sexual orientation.

1 comment:

Anonymous said...

Here is an update from RDR Books on the latest developments in this case. It was issued by the company this evening.

RDR Books Agrees to Delay Publication of Harry Potter Lexicon

Earlier today, New York Federal Court Judge Robert Patterson accepted an order proposed by RDR Books, agreeing to temporarily withhold publication of Steve Vander Ark’s Harry Potter Lexicon.
The order delays the publication of this 400-plus-page book until Judge Patterson can preliminarly determine the merits of the lawsuit initiated by J.K. Rowling and Warner Bros. In a complaint filed on Halloween, the plaintiffs contend that the proposed Lexicon violates Ms. Rowling’s copyright, an allegation RDR Books denies.
Plantiffs' papers in support of its request for a preliminary injunction are due January 7. RDR’s response is due January 22. The hearing on the plantiff’s request for a preliminary injunction is set for February 6. The Lexicon, which is now in preparation, will not be published until the book is ready to be examined by the court, which will decide if it violates the rights of Ms. Rowling, one of the world’s best known authors. Ms. Rowling has suggested that the Lexicon could hurt the performance of her own encyclopedia, which she has not begun writing.
J.K. Rowling has given her fan site award to the seven-year-old Lexicon ( and praised it on her own website::
"This is such a great site that I have been known to sneak into an internet cafe 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."
The Lexicon is enthusiastically used by more than 25 million visitors annually including academics, critics and Harry Potter readers.
“It is ironic that publication of Steve Vander Ark's Lexicon is being threatened by Ms. Rowling after he has joined other librarians to fight organizations that have attempted to ban or curtail Ms. Rowling own work,” says RDR Books publisher Roger Rapoport. "It is our wish that Ms. Rowling join Mr. Vander Ark in his campaign for literary freedom and free expression by dropping her complaint against a book we are confident she would enjoy reading. We will continue to defend our author and the Lexicon in this David and Goliath battle with an eye toward protecting the rights of readers and writers everywhere.”