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Fair Use (Fiction <-> Non-Fiction)
  • 1 Rowling v. RDR

    What commercial, non-creative use of a creative work is permissible under the fair use doctrine?

    Notes: This case deals with the book, The Harry Potter Lexicon, the publication of which was not authorized by J.K. Rowling and the contents of which drew on the Harry Potter series. Note how the attorneys for Ms. Rowling distinguish between the not-for-profit online version of this work and the commercial publication thereof.
    1
    (2008)
    2
    WARNER BROS. ENTERTAINMENT INC. and J.K. Rowling, Plaintiffs,
    v.
    RDR BOOKS and Does 1-10, Defendants.
    3
    No. 07 Civ. 9667 (RPP).
    4

    United States District Court, S.D. New York.

    5
    September 8, 2008.
    6

     

    7
    OPINION & ORDER
    8

    ROBERT P. PATTERSON, JR., District Judge.

    9

    On October 31, 2007, Plaintiffs Warner Bros. Entertainment Inc. and J.K. Rowling commenced this action against Defendant RDR Books, alleging copyright infringement pursuant to 17 U.S.C. §§ 101 et seq., as well as several other federal and state claims, and seeking both injunctive relief and damages. By order dated March 5, 2008, the Court consolidated the scheduled evidentiary hearing on Plaintiffs' motion for a preliminary injunction[1] with a trial on the merits pursuant to Federal Rule of Civil Procedure 65(a)(2). By their pretrial orders, the parties narrowed the claims and defenses to be tried: Plaintiffs pursued only their claims for copyright infringement and statutory damages under 17 U.S.C. §§ 101 et seq. of the Copyright Act; Defendant pursued only its defenses and affirmative defenses of copyright fair use under 17 U.S.C. § 107, copyright misuse, and unclean hands. The Court held a bench trial on the merits from April 14, 2008 to April 17, 2008. This opinion constitutes the Court's findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).

    10
    FINDINGS OF FACT
    11
    I. The Copyrighted Works
    12

    Plaintiff J.K. Rowling ("Rowling") is the author of the highly acclaimed Harry Potter book series. (Tr. (Rowling) at 43:6-7, 47:17-20; Pl. Ex. 25 (Rowling Decl.) at ¶ 1.) Written for children but enjoyed by children and adults alike, the Harry Potter series chronicles the lives and adventures of Harry Potter and his friends as they come of age at the Hogwarts School of Witchcraft and Wizardry and face the evil Lord Voldemort. (Pl. Ex. 25 (Rowling Decl.) at ¶ 2.) It is a tale of a fictional world filled with magical spells, fantastical creatures, and imaginary places and things. (Tr. (Vander Ark) at 346:1-6; 371:1-22; id. (Sorensen) at 513:6-14.)

    13

    Rowling published the first of seven books in the series, Harry Potter and the Philosopher's Stone, in the United Kingdom in 1997. (Tr. (Rowling) at 46:12-16; id. (Vander Ark) at 363:19-20.) In 1998, the first book was published in the United States as Harry Potter and the Sorcerer's Stone. (Pl. Ex. 25 (Rowling Decl.) at ¶ 2.) Over the next ten years, Rowling wrote and published the remaining six books in the Harry Potter series (Id.): Harry Potter and the Chamber of Secrets (1998), Harry Potter and the Prisoner of Azkaban (1999), Harry Potter and the Goblet of Fire (2000), Harry Potter and the Order of the Phoenix (2003), and Harry Potter and the Half-Blood Prince (2005). (Pl. Exs. 5-9.) The seventh and final book, Harry Potter and the Deathly Hallows was released on July 21, 2007. (Pl. Ex. 10). Rowling owns a United States copyright in each of the Harry Potter books. (Pl. Ex. 12 (Blair Decl.) at ¶ 4; Pl. Ex. 12A; Tr. (Rowling) at 43:8-9.)

    14

    The Harry Potter series has achieved enormous popularity and phenomenal sales. (Tr. (Murphy) at 432:20-433:3; id. (Harris) at 443:16-18). The books have won numerous awards, including children's literary awards and the British Book Award. (Id. (Rowling) at 47:17-20). Most gratifying to Rowling is that the Harry Potter series has been credited with encouraging readership among children. (Id. (Rowling) at 103:8-22.)

    15

    As a result of the success of the Harry Potter books, Plaintiff Warner Bros. Entertainment Inc. ("Warner Brothers") obtained from Rowling the exclusive film rights to the entire seven-book Harry Potter series. (Pl. Ex. 26 (Williams Decl.) at ¶ 3.) Warner Brothers is the exclusive distributor for worldwide distribution of these films. (Id. at ¶ 4.) To date, Warner Brothers has released five Harry Potter films, and the sixth is scheduled for a worldwide release in November 2008. (Id. at ¶¶ 3, 4.) Each of the Harry Potter films is the subject of a copyright registration. (Id. at ¶ 3.) Warner Brothers licensed certain rights to Electronic Arts to create video games based on the Harry Potter books and films, which included a series of "Famous Wizard Cards" that Rowling created and which are the subject of U.S. copy-right registrations jointly owned by Warner Brothers and Electronic Arts. (Tr. (Rowling) at 76:15-17; Pl. Post-trial Br., Ex. B.)

    16

    Early on in the publication of the Harry Potter series, Rowling wrote a short series of fictional newspapers entitled "The Daily Prophet," which were published and distributed to fans in the United Kingdom. (Tr. (Rowling) at 73:17-74:1.) Rowling owns a U.K. copyright in "The Daily Prophet" newsletters. (Tr. (Rowling) at 74:6-7; see Pl. Post-trial Br., Ex. A.)

    17

    In addition, Rowling wrote two short companion books to the Harry Potter series (the "companion books"), the royalties from which she donated to the charity Comic Relief. (Tr. (Rowling) at 49:12-50:10.) The first, Quidditch Through the Ages (2001), recounts the history and development of "quidditch," an imaginary sport featured in the Harry Potter series that involves teams of witches and wizards on flying broomsticks. (Pl. Ex. 2.) The second, Fantastic Beasts & Where to Find Them (2001), is an A-to-Z encyclopedia of the imaginary beasts and beings that exist in Harry Potter's fictional world. (Pl. Ex. 3.) Both appear in the Harry Potter series as textbooks that the students at Hogwarts use in their studies, and the companion books are marketed as such. Neither of the companion books is written in narrative form; instead each book chronicles and expands on the fictional facts that unfold in the Harry Potter series. (Tr. (Vander Ark) at 396:21-25; see Pl. Exs. 2-3.) The companion books are both registered with the United States Copyright Office. (Pl. Ex. 12 (Blair Decl.) at ¶ 4.) Although the market for the companion books is not nearly as large as the market for the Harry Potter series, Rowling's companion books have earned more than $30 million to date. (Tr. (Rowling) at 49:25-50:10; Pl. Ex. 25 (Rowling Decl.) at ¶ 6; Pl. Ex. 12 (Blair Decl.) at ¶ 3.)

    18

    Rowling has stated on a number of occasions since 1998 that, in addition to the two companion books, she plans to publish a "Harry Potter encyclopedia" after the completion of the series and again donate the proceeds to charity. (Tr. (Rowling) at 50:25-51: 15,55: 1-5; Pl. Ex. 25 (Rowling Decl.) at ¶ 6; Pl. Ex. 12 (Blair Decl.) at ¶ 17.) Rowling intends that her encyclopedia contain alphabetical entries for the various people, places and things from the Harry Potter novels. (Tr. (Rowling) at 53:11-13.) While she intends to add new material as well, her encyclopedia is expected to reflect all of the information in the Harry Potter series. (Tr. (Vander Ark) at 387:20-388:16; Pl. Ex. 25 (Rowling Decl.) at ¶ 7; Pl. Ex. 32 (Suppl. Rowling Decl.) at ¶ 5.)

    19

    Rowling already has begun preparations for work on the encyclopedia by assembling her materials and requesting from her U.K. publisher its "bible" of Harry Potter materials. (Tr. (Rowling) at 52:1-24.) The publisher's "bible" is a catalogue of the people, places, and things from the Harry Potter books. (Pl. Ex. 23 (Odedina Decl.) ¶ 2; Pl. Ex. 23A.) Rowling's U.S. publisher has compiled a similar catalogue of elements from the Harry Potter books which Rowling has requested and intends to draw on in creating her encyclopedia. (Tr. (Rowling) at 52:25-53:10; Pl. Ex. 25 (Rowling Decl.) at ¶ 7; Pl. Ex. 18 (Klein Decl.) at ¶¶ 2-3; Pl. Ex. 18A.) Rowling plans on using an A-to-Z format for her encyclopedia. (Tr. (Rowling) at 53:11-13.)

    20
    II. The Allegedly Infringing Work
    21

    Defendant RDR Books is a Michigan-based publishing company that seeks to publish a book entitled "The Lexicon," the subject of this lawsuit. (Tr. (Rapoport) at 150:19-151:2.) Steven Vander Ark, a former library media specialist at a middle school in Michigan (Tr. (Vander Ark) at 248:4-6), is the attributed author of the Lexicon (Def. Ex. 502 (Vander Ark Decl.) at ¶ 1). He is also the originator, owner, and operator of "The Harry Potter Lexicon" website (id.), a popular Harry Potter fan site from which the content of the Lexicon is drawn (id. at ¶ 30).

    22
    A. The Origins of the Lexicon
    23

    An immediate fan of the Harry Potter novels, Vander Ark began taking personal notes to keep track of the details and elements that unfold in the Harry Potter world while reading the second book in the series in 1999. (Tr. (Vander Ark) at 335:2-17.) After joining an online discussion group about the Harry Potter books, Vander Ark expanded his notes to include descriptive lists of the spells, characters, and fictional objects in Harry Potter to share with fellow fans. (Id. at 335:20-336:9.) These lists included brief descriptions or definitions of the terms. (Id. at 336:8-11.)

    24

    Vander Ark began work on his website, "The Harry Potter Lexicon" (the "website" or "Lexicon website"), in 1999 and opened the website in 2000. (Id. at 336:23.) His purpose in establishing the website was to create an encyclopedia that collected and organized information from the Harry Potter books in one central source for fans to use for reference. (Id. at 338:6-21; Def. Ex. 502 (Vander Ark Decl.) at ¶ 13.) At its launch, the website featured Vander Ark's descriptive lists of spells, characters, creatures, and magical items from Harry Potter with hyperlinks to cross-referenced entries. (Tr. (Vander Ark) at 337:7-10, 336:4-7.) In response to feedback from users of the website, Vander Ark developed an A-to-Z index to each list to allow users to search for entries alphabetically. (Id. at 343:2-21.)

    25

    The website presently features several indexed lists of people, places, and things from Harry Potter, including the "Encyclopedia of Spells," "Encyclopedia of Potions," "Wizards, Witches, and Beings," "The Bestiary," and "Gazetteer of the Wizarding World." (Pl. Exs. 14 (Bradley Decl.) at ¶ 5, 14C.) In addition to these reference features, the website contains a variety of supplemental material pertaining to Harry Potter, including fan art, commentary, essays, timelines, forums, and interactive data. (Pl. Exs. 14 (Bradley Decl.) at ¶ 3, 14A.) The website is currently run by a staff of seven or eight volunteers, including four primary editors (Tr. (Vander Ark) at 340:14-16), all of whom were recruited to help update and expand the website's content after the publication of the fifth book in the Harry Potter series. (Id. at 339:18-340:24.) The website uses minimal advertising to offset the costs of operation. (Id. at 349:24-350:10.) Use of the website is free and unrestricted. (Id. at 293:8-12; 351:25-352:4.)

    26

    The content of the encyclopedia entries on the Lexicon website is drawn primarily from the Harry Potter series, the companion books, "The Daily Prophet" newsletters, the "Famous Wizard Cards," and published interviews of Rowling. (Tr. (Vander Ark) at 348:7-13; Def. Ex. 502 (Vander Ark Decl.) at ¶ 14). According to Vander Ark, some additional content is drawn from outside reference sources, including Bullfinch's Mythology, Field Guide to Little People, New Shorter Oxford English Dictionary, and online encyclopedias such as Encyclopedia Mythica. (Tr. (Vander Ark) at 346:12-348:19; Def. Ex. 502 (Vander Ark Decl.) at ¶ 14.) Frequently, these sources are not cited in the website's encyclopedia entries. Vander Ark's purpose in including additional information from outside sources or from his own knowledge was to enrich the experience of readers of the Harry Potter series by illuminating "the incredibly rich world and hidden meanings" contained within them. (Tr. (Vander Ark) at 345:21-346:6.)

    27

    Vander Ark has received positive feedback, including from Rowling and her publishers, about the value of the Lexicon website as a reference source. In May 2004, Vander Ark read a remark by Rowling posted on her website praising his Lexicon website as follows: "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." (Tr. (Rowling) at 118:2-119:2). In July 2005, Vander Ark received a note from Cheryl Klein, a Senior Editor at Scholastic Inc., American publisher of the Harry Potter series, thanking him and his staff "for the wonderful resource [his] site provides for fans, students, and indeed editors & copyeditors of the Harry Potter series," who "referred to the Lexicon countless times during the editing of [the sixth book in the series], whether to verify a fact, check a timeline, or get a chapter & book reference for a particular event." (Def. Ex. 502 (Vander Ark Decl.) at ¶ 39; Def. Ex. 502A.) In September 2006, Vander Ark was invited by Warner Brothers to the set of the film The Order of the Phoenix, where he met David Heyman, the producer of all the Harry Potter films. Heyman told Vander Ark that Warner Brothers used the Lexicon website almost every day.[2] (Tr. 386:8-20; Def. Ex. 502 (Vander Ark Decl.) ¶ 39.) Finally, in July 2007, Vander Ark visited the studios of Electronic Arts, the licensed producer of the Harry Potter video games, where he observed printed pages from the Lexicon covering the walls of the studio. (Tr. at 387:3-13; Def. Ex. 502 (Vander Ark Decl.) ¶ 39.)

    28

    Prior to any discussions with RDR Books about publishing portions of the Lexicon website as a book, Vander Ark was aware of Rowling's public statements regarding her intention to write a Harry Potter encyclopedia upon completion of the seventh book in the series. (Tr. (Vander Ark) at 247:10-12, 250:21-251:13; Def. Ex. 502 at ¶ 37.) In June 2007, just before the release of the seventh book, Vander Ark emailed Christopher Little Literary Agency, Rowling's literary agent in the United Kingdom, and suggested that he would be "a good candidate for work as an editor, given [his] work on the Lexicon," should Rowling start working on an encyclopedia or other reference to the Harry Potter series. (Pl. Ex. 12C.) The literary agency advised him that Rowling intended to work alone and did not require a collaborator. (Tr. (Vander Ark) at 250:14-20; Pl. Ex. 12 (Blair Deck) at ¶ 12; Pl. Ex. 12C.)

    29
    B. RDR Books' Acquisition and Marketing of the Lexicon
    30

    Roger Rapoport is the president of Defendant RDR Books. Rapoport learned of Vander Ark and the Lexicon website when he read an article in his local newspaper dated July 23, 2007, profiling Vander Ark as a well known figure within the Harry Potter fan community and the proprietor of the Lexicon website who "holds the key to all things `Harry Potter.'" (Tr. (Rapoport) at 153:2-154:15; Pl. Ex. 77.) Recognizing a publishing opportunity, Rapoport contacted Vander Ark on August 6, 2007 about the possibility of publishing a Harry Potter encyclopedia based on some of the materials from the Lexicon website. (Tr. (Vander Ark) at 357:10-19.) Rapoport denies seeing any coverage by national news outlets of Rowling's appearance on NBC's Today Show on July 25, 2007 (Tr. (Rapoport) at 156:10-158:4), where Rowling stated that she intended to write a Harry Potter encyclopedia. (Def. Ex. 506a; Tr. (Rapoport) at 155:20-156:5.)

    31

    At his first meeting with Rapoport in August 2007, Vander Ark raised his concerns regarding the permissibility of publishing the Lexicon in view of Rowling's plan to publish an encyclopedia and her copyrights in the Harry Potter books. (Tr. (Vander Ark) at 251:14-22, 358:2-4). Prior to August 2007, Vander Ark had developed and circulated the opinion that publishing "any book that is a guide to [the Harry Potter] world" would be a violation of Rowling's intellectual property rights. (Pl. Ex. 20 (Lares Decl.) at ¶ 3, Pl. Ex. 21 (Lawliss Decl.) at ¶ 3); see also Tr. (Vander Ark) at 251:20-22. Vander Ark had even stated on a public internet newsgroup that he would not publish the Lexicon "in any form except online" without permission because Rowling, not he, was "entitled to that market." (Pl. Ex. 27 (Blumsack Corrected Supp. Decl.) at ¶ 12; Pl. Ex. 27G). Vander Ark changed his mind about publishing the Lexicon after Rapoport reassured him that he had looked into the legal issue and determined that publication of content from the Lexicon website in book form was legal. (Tr. (Vander Ark) at 357:10-359:5.) Rapoport agreed to stand by this opinion by adding an atypical clause to the publishing contract providing that RDR would defend and indemnify Vander Ark in the event of any lawsuits. (Tr. (Vander Ark) 359:6-10, 360:8-21; Def. Ex. 502 (Vander Ark Decl.) at ¶ 28; Pl. Ex. 14J.)

    32

    Rapoport and Vander Ark agreed that the content of the book would be limited to the encyclopedia sections of the Lexicon website that presented descriptions of the persons, places, spells, and creatures from the Harry Potter works. (Tr. (Vander Ark) at 359:14-21; Def. Ex. 502 (Vander Ark Decl.) at ¶ 28.) They conceived of the book as an encyclopedia organized in the A-to-Z format, rather than by topic as the Lexicon website is organized, to allow the user to find information as quickly as possible. (Tr. (Vander Ark) at 366:25-367:24.) The idea was to publish the first complete guide to the Harry Potter series that included information from the seventh and final Harry Potter novel. (Id. at 361:12-24.) Vander Ark believed that there was an advantage to being the first reference guide on the market to cover all seven Harry Potter books. (Id. at 255:7-14, 361:9-15). He also believed that by virtue of its completeness, the Lexicon would be most useful for the purpose it sought to serve, namely helping readers and fans to find information from the Harry Potter novels. (Id. at 361:17-362:6.)

    33

    RDR Books intended to have a manuscript of the Lexicon completed within two-to-three weeks of execution of the publishing contract. (Tr. (Vander Ark) at 255:15-18.) The plan was to rush the book to market by late-October 2007, in part, to capitalize on the interest generated by the last Harry Potter book and the surge in sales during the holiday season. (Tr. (Rapoport) at 165:14-165:21, 167:10-17.) RDR Books initially planned a print-run of 10,000 copies of the Lexicon, but would undertake subsequent print-runs if the book was successful. (Tr. at (Rapoport) 238:22-239:20.)

    34

    Even before his initial meeting with Vander Ark, Rapoport began working to secure foreign publishers for the proposed Lexicon project and had contacted Methuen Publishing in the United Kingdom to gauge their interest in doing such a project. (Tr. (Rapoport) at 160:18-161:18.) He marketed the Lexicon to foreign publishers, as well as to U.S. bookstores and book sellers, as the "definitive" Harry Potter encyclopedia. (Tr. (Rapoport) at 160:18-161:15, 213:5-214:4; Tr. (Vander Ark) at 361:9-16; see also Pl. Exs. 114, 117.) Some of Rapoport's marketing communications mischaracterized Rowling's statements about the Lexicon website, giving the impression that she supported the publication of the Lexicon book. (Tr. at (Rapoport) 175:2-176:5; Pl. Ex. 89.) One marketing flyer for the Lexicon prominently displayed Rowling's 2004 statement praising the Lexicon website. (Tr. (Rapoport) at 171:3-6; Pl. Ex. 14 (Bradley Decl.) at ¶ 17; Pl. Ex. 22 (Murphy Decl.) at ¶ 15; Pl. Ex. 22A). As a result of Rapoport's marketing efforts, RDR Books secured oral contracts with foreign publishers for rights to the Lexicon in England, Canada, France, Australia, New Zealand, and China, and an order from Borders bookstore[3] in the United States. (Tr. (Rapoport) at 187:2-11; 240:15-241:4; Pl. Ex. 137).

    35
    C. Plaintiffs' Objections to Publication of the Lexicon
    36

    Rowling's literary agent, Neil Blair of the Christopher Little Literary Agency, first learned of the Lexicon book when he saw an advertisement on www.Publishers Marketplace.com announcing that RDR Books would be publishing the Lexicon, scheduled for release in late October 2007. (Pl. Exs. 12 (Blair Decl.) at ¶ 14, 12D). On September 18, 2007, counsel for Rowling and Warner Brothers forwarded a letter to Vander Ark by email, copying Rapoport, notifying them that the Lexicon appeared to infringe Rowling's copyrights and requesting that RDR Books cease publication of the book. (Tr. at (Rapoport) 190:7-13; Pl. Ex. 15 at ¶ 3). Rapoport replied to Plaintiffs' counsel that he intended to study the various issues with RDR Books' legal advisers (Pl. Ex. 15 (Cendali Decl.) at ¶ 5) and that his work had been interrupted by personal circumstances (id. ¶ 7). Meanwhile he continued to market the Lexicon book domestically and abroad. (Tr. (Rapoport) at 193:2-25, 194:4-14, 208:3-17; Pl. Exs. 110-130, 133-140.)

    37

    On October 3, 2007, after receiving no substantive response from RDR Books, Plaintiffs' counsel wrote again to Rapoport emphasizing their clients' concerns and asking for a prompt substantive response. (Pl. Ex. 15 (Cendali Decl.) at ¶ 6.) On October 5, 2007, when pitching the Lexicon to a Brazilian publisher, Rapoport asked for confirmation that the agent would not speak with the local publisher of the Harry Potter novels about the Lexicon. (Pl. Ex. 120.) On October 8, 2007, despite having received a cease-and-desist letter and a subsequent letter from Plaintiffs' counsel, Rapoport told a German publisher who raised copyright concerns that a lawsuit was unlikely. (Tr. (Rapoport) at 198:6-19; Pl. Ex. 121.)

    38

    On October 11, 2007, RDR Books sent the chairman of Warner Brothers a cease-and-desist letter claiming that Warner Brothers had violated Vander Ark's rights in the "Hogwarts Timeline" of events from the Harry Potter novels that was featured on the Lexicon website. (Pl. Ex. 14 (Bradley Decl.) at ¶ 12; Pl. Ex. 14H). RDR Books also stated that it was seeking "tangible rewards" for Vander Ark in exchange for Warner Brothers' purported use of the timeline as an extra feature of the DVD versions of the first three Harry Potter films. (Id.) On October 19, 2007, Warner Brothers responded to RDR Books' letter regarding the timeline with a request for a copy of the "print version" of the Lexicon website referred to by RDR Books to aid its evaluation of any potential claims. (Pl. Ex. 15 (Cendali Decl.) at ¶¶ 8-9). RDR Books refused, stating that Warner Brothers could print the material from the Lexicon website. (Tr. (Rapoport) at 205:21-206:13; Pl. Ex. 15 (Cendali Decl.) at ¶ 9.)

    39

    On October 19 and 24, 2007, Plaintiffs' counsel sent two more letters to RDR Books, asking for a substantive response to their clients' concerns regarding the Lexicon and for confirmation that RDR Books would not publish the Lexicon until it attempted to resolve the matter in good faith. (Pl. Ex. 15 (Cendali Decl.) at ¶¶ 9, 11.) RDR Books' responses deflected the inquiries (id. ¶ 10) and stated that Plaintiffs' objections were "unwarranted" (id. ¶ 12). On October 31, 2007, Plaintiffs called Rapoport to offer a last chance to agree to cease publication, or at least delay publication, and to provide Plaintiffs with a copy of the manuscript and proposed cover, in effort to resolve the matter. (Id. ¶ 13.) RDR refused to delay publication and refused to provide a copy of the manuscript. (Id.) Plaintiffs filed suit on October 31, 2007, at which time they also moved by order to show cause for a preliminary injunction. (Id. ¶ 13; Compl.)

    40

    Since the filing of this lawsuit, RDR Books has revised the front and back covers of the Lexicon. Specifically, RDR Books removed the quotation of Rowling's 2004 statement about her use of the Lexicon website from the back cover of the Lexicon after Plaintiffs presented a survey in this litigation demonstrating that 38% of respondents believed that the appearance of the quote on the proposed book cover meant that Rowling endorsed the book. (Tr. (Rapoport) at 237:6-13; Pl. Ex. 13C (Blumsack Deck); Pl. Ex. 16 (Helfgott Decl.) at ¶ 2). RDR Books changed the title from "The Harry Potter Lexicon" to "The Lexicon: An Unauthorized Guide to Harry Potter Fiction and Related Materials." Additionally, the final revision of the front cover of the Lexicon displays the following disclaimer:

    41
    Harry Potter and the names of fictitious people and places in the Harry Potter novels are trademarks of Warner Bros. Entertainment, Inc. This book is not written, prepared, approved, or licensed by Warner Bros. Entertainment, Inc., Scholastic Corporation, Raincoast Books, Bloomsbury Publishing Plc, or J.K. Rowling, nor is the author, his staff members, www.HP-Lexicon.org or the publisher in any way affiliated with Warner Bros. Entertainment, Inc., Scholastic Corporation, Raincoast Books, Bloomsbury Publishing Plc, J.K. Rowling, or any other person or company claiming an interest in the Harry Potter works.
    42

    (Def. Ex. 501a.) RDR Books maintains, however, that the original cover was truthful and did not infringe any rights of Plaintiffs. (Def. Ex. 501 (Rapoport Decl.) at ¶ 6.)

    43
    D. The Content of the Lexicon
    44

    The Lexicon is an A-to-Z guide to the creatures, characters, objects, events, and places that exist in the world of Harry Potter. As received by the Court in evidence, the Lexicon manuscript is more than 400 type-written pages long and contains 2,437 entries organized alphabetically. The first few pages contain a list of abbreviations used throughout the Lexicon to cite to the original sources of the material.

    45

    The Lexicon manuscript was created using the encyclopedia entries from the Lexicon website. (Tr. (Vander Ark) at 365:1-5; Def. Ex. 502 (Vander Ark Decl.) ¶ 30.) Because of space limitations for the printed work, which seeks to be complete but also easy to use, about half of the material from the website was not included in the Lexicon manuscript. (Tr. 365:1-11, 366:9-18; Def. Ex. 502 (Vander Ark Decl.) ¶¶ 30, 31, 33.) The Lexicon itself makes clear that the only source of its content is the work of J.K. Rowling. The first page of the Lexicon manuscript states: "All the information in the Harry Potter Lexicon comes from J.K. Rowling, either in the novels, the `schoolbooks,' from her interviews, or from material which she developed or wrote herself." (Pl. Ex. 1 at 1). While Vander Ark claims that the Lexicon uses material from outside reference sources, such as Bullfinch's Mythology, Field Guide to Little People, New Shorter Oxford English Dictionary, and online encyclopedias (Tr. (Vander Ark) at 346:12-348:19; Def. Ex. 502 (Vander Ark Decl.) at ¶ 14), it is not possible to confirm this claim because, aside from four dictionary citations, no other citations to third-party works appear in the Lexicon. (Tr. (Vander Ark) at 295:13-296:13).

    46

    The Lexicon entries cull every item and character that appears in the Harry Potter works, no matter if it plays a significant or insignificant role in the story. The entries cover every spell (e.g., Expecto Patronum, Expelliarmus, and Incendio), potion (e.g., Love Potion, Felix Felicis, and Draught of Living Death), magical item or device (e.g., Deathly Hallows, Horcrux, Cloak of Invisibility), form of magic (e.g., Legilimency, Occlumency, and the Dark Arts), creature (e.g., Blast-Ended Skrewt, Dementors, and Blood-Sucking Bugbears), character (e.g., Harry Potter, Hagrid, and Lord Voldemort), group or force (e.g., Aurors, Dumbledore's Army, Death Eaters), invented game (e.g., Quidditch), and imaginary place (e.g., Hogwarts School of Witchcraft and Wizardry, Diagon Alley, and the Ministry of Magic) that appear in the Harry Potter works. The Lexicon also contains entries for items that are not explicitly named in the Harry Potter works but which Vander Ark has identified, such as medical magic, candle magic, wizard space, wizard clothing, and remorse. Some of the entries describe places or things that exist in the real world but also have a place in the Harry Potter works, such as moors, Greece, and Cornwall.

    47

    Each entry, with the exception of the shortest ones, gathers and synthesizes pieces of information relating to its subject that appear scattered across the Harry Potter novels, the companion books, The Daily Prophet newsletters, Famous Wizard Cards, and published interviews of Rowling. The types of information contained in the entries include descriptions of the subject's attributes, role in the story, relationship to other characters or things, and events involving the subject. Repositories of such information, the entries seek to give as complete a picture as possible of each item or character in the Harry Potter world, many of which appear only sporadically throughout the series or in various sources of Harry Potter material.

    48

    The snippets of information in the entries are generally followed by citations in parentheses that indicate where they were found within the corpus of the Harry Potter works. The thoroughness of the Lexicon's citation, however, is not consistent; some entries contain very few citations in relation to the amount material provided. (See, e.g., Pl. Ex. 1, entry for "Dumbledore, Albus Percival Wulfric Brian" (containing no citations in a five-page entry); entry for "Granger, Hermione Jean" (containing no citations in a three-page entry); entry for "Chamber of Secrets" (containing one citation for nearly two pages of material); entry for "Crouch, Bartemius `Barty', Sr." (containing one citation for nearly a full page of material).) When the Lexicon cites to one of the seven Harry Potter novels, the citation provides only the book and chapter number. Vander Ark explained that page numbers were excluded from the citations because the various editions of the Harry Potter books have different pagination, but the chapter numbers remain consistent. (Tr. (Vander Ark) at 277:19-278:1.) The Lexicon neither assigns a letter to each edition nor specifies a standard edition while providing a conversion table for other editions, practices which Plaintiffs' expert Jeri Johnson testified were common for reference guides. (Tr. (Johnson) at 594:11-16, 594:20-595:3.)

    49

    While not its primary purpose, the Lexicon includes commentary and background information from outside knowledge on occasion. For example, the Lexicon contains sporadic etymological references, (e.g., Pl. Ex. 1, entries for "Colloportus," "Lupin, Remus," "Alohamora," "Fidelius Charm"), analogies to characters outside the Harry Potter world such as Merlin, and observations of Rowling's allusions to other works of literature such as "the weird sisters" from Shakespeare's Macbeth. The Lexicon also points to the very few "flints," or errors in the continuity of the story, that appear in the Harry Potter series. (See Tr. (Vander Ark) at 297:15-298:4.)

    50

    While there was considerable opining at trial as to the type of reference work the Lexicon purports to be and whether it qualifies as such (no doubt in part due to its title), the Lexicon fits in the narrow genre of non-fiction reference guides to fictional works. As Defendant's expert testified, the Harry Potter series is a multi-volume work of fantasy literature, similar to the works of J.R.R. Tolkien and C.S. Lewis. Such works lend themselves to companion guides or reference works because they reveal an elaborate imaginary world over thousands of pages, involving many characters, creatures, and magical objects that appear and reappear across thousands of pages. (Tr. (Sorensen) at 504:16-23; id. at 507:1-5 (testifying that she found 19 or 20 companion guides to J.R.R. Tolkien's works, and about 15 guides to C.S. Lewis's works).) Fantasy literature spawns books having a wide variety of purposes and formats, as demonstrated by the books about Harry Potter that Plaintiffs entered into evidence. (Pl. Exs. 73, 74, 75, 192; 13E-13G.) The Lexicon, an A-to-Z guide which synthesizes information from the series and generally provides citations for location of that information rather than offering commentary, is most comparable to the comprehensive work of Paul F. Ford, Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis's The Chronicles of Narnia (Pl. Ex. 62), or the unauthorized A-to-Z guide by George W. Beahm, Fact, Fiction, and Folklore in Harry Potter's World: An Unofficial Guide (Pl. Ex. 192).[4]

    51

    At trial, Rowling testified that the Lexicon took "all the highlights of [her] work, in other words [her] characters' secret history, the jokes certainly, certain exciting narrative twists, all the things that are the highlights of [her] stories." (Tr. (Rowling) at 647:6-10). She compared this taking of her work to plundering all of the "plums in [her] cake." (Tr. (Rowling) at 647:3-6). At trial, the testimony of Rowling and the expert opinion of Johnson focused at length on the Lexicon's verbatim copying of language from the Harry Potter works. Johnson testified that in particular, entries that deal with invented terms, creatures, places and things from the Harry Potter books use "again and again the specific, very colorful, idiosyncratic ... nouns and phrases of Ms. Rowling." (Tr. (Johnson) at 619:7-9.)

    52

    Although it is difficult to quantify how much of the language in the Lexicon is directly lifted from the Harry Potter novels and companion books,[5] the Lexicon indeed contains at least a troubling amount of direct quotation or close paraphrasing of Rowling's original language.[6] The Lexicon occasionally uses quotation marks to indicate Rowling's language, but more often the original language is copied without quotation marks, often making it difficult to know which words are Rowling's and which are Vander Ark's. (Tr. (Rowling) at 57:6-15, 58:24-59:12, 59:19-60:2; Tr. (Johnson) at 619:3-12.)

    53

    For example, in the entry for "armor, goblin made," the Lexicon uses Rowling's poetic language nearly verbatim without quotation marks.[7] The original language from Harry Potter and the Deathly Hallows reads:

    54
    "Muggle-borns," he said. "Goblinmade armour does not require cleaning, simple girl. Goblins' silver repels mundane dirt, imbibing only that which strengthens it."
    55

    (Pl. Ex. 10 at 303.)[8] The Lexicon entry for "armor, goblin made" reads in its entirety:

    56
    Some armor in the wizarding world is made by goblins, and it is quite valuable. (e.g., HBP20) According to Phineas Nigellus, goblin-made armor does not require cleaning, because goblins' silver repels mundane dirt, imbibing only that which strengthens it, such as basilisk venom. In this context, "armor" also includes blades such as swords.
    57

    Although the Lexicon entry introduces Rowling's language with the phrase, "According to Phineas Nigellus," it does not use quotation marks.

    58

    The Lexicon entry for "Dementors" reproduces Rowling's vivid description of this creature sometimes using quotation marks and sometimes quoting or closely paraphrasing without indicating which language is original expression. The original language appears in Chapters 5 and 10 of Harry Potter and the Prisoner of Azkaban as follows:

    59
    . . . Its face was completely hidden beneath its hood. . . . There was a hand protruding from the cloak and it was glistening, grayish, slimy-looking, and scabbed, like something dead that had decayed in water. . . .
    60
    And then the thing beneath the hood, whatever it was, drew a long, slow, rattling breath, as though it were trying to suck something more than air from its surroundings.
    61
    * * *
    62
    "Dementors are among the foulest creatures to walk this earth. They infest the darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and happiness out of the air around them. Even Muggles feel their presence, though they can't see them. Get too near a dementor and every good feeling, every happy memory will be sucked out of you. If it can, the dementor will feed on you long enough to reduce you to something like itself . . . soulless and evil. . . ."
    63

    (Pl. Ex. 6 at 83, 187.) The Lexicon entry for "Dementors" reads in its entirety:

    64
    Dementors are some of the most terrible creatures on earth, flying tall black spectral humanoid things with flowing robes. They "infest the darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and happiness out of the air around them," according to Lupin (PA10). Dementors affect even Muggles, although Muggles can't see the foul, black creatures. Dementors feed on positive human emotions; a large crowd is like a feast to them. They drain a wizard of his power if left with them too long. They were the guards at Azkaban and made that place horrible indeed. The Ministry used Dementors as guards in its courtrooms as well (GF30, DH13). There are certain defenses one can use against Dementors, specifically the Patronus Charm. A Dementor's breath sounds rattling and like it's trying to suck more than air out of a room. Its hands are "glistening, grayish, slimy-looking, and scabbed". It exudes a biting, soulfreezing cold (PA5).
    65

    Another example of verbatim copying and close paraphrase can be found in the Lexicon entry for "Mirror of Erised." The original language from Harry Potter and the Sorcerer's Stone reads:

    66
    It was a magnificent mirror, as high as the ceiling, with an ornate gold frame, standing on two clawed feet. There was an inscription carved around the top: Erised stra ehru oyt ube cafru oyt on wohsi.
    67
    * * *
    68
    . . . "It shows us nothing more or less than the deepest desire of our hearts. You [Harry Potter], who have never known your family, see them standing around you. Ronald Weasley, who has always been overshadowed by his brothers, sees himself standing alone, the best of all of them. However, this mirror will give us neither knowledge or truth. Men have wasted away before it, entranced by what they have seen, or been driven mad, not knowing if what it shows is real or even possible."
    69

    (Pl. Ex. 4 at 207, 213). The first paragraph of the Lexicon entry reads:

    70
    A magnificent mirror, as high as a classroom ceiling, with an ornate gold frame, standing on two clawed feet. The inscription carved around the top reads "Erised stra ehru oyt ube cafru oyt on wohsi," which is "I show you not your face but your heart's desire" written backwards (that is, in what is called `mirror writing'). When you look into the mirror you see the deepest, most desperate desire of your heart. The mirror has trapped people who can't bear to stop staring into it, unsure if what they see is going to actually happen. Harry sees his family in the Mirror; Ron sees himself as Head Boy and Quidditch champion (PS12).
    71

    The Lexicon entry for "Boggart" takes strands of dialogue from Harry Potter and the Prisoner of Azkaban and closely paraphrases it in the third person. The original work contains the following bits of dialogue:

    72
    "Boggarts like dark, enclosed spaces."
    73
    "It's a shape-shifter .... It can take the shape of whatever it thinks will frighten us most."
    74
    "Nobody knows what a boggart looks like when he is alone, but when I let him out, he will immediately become whatever each of us most fears."
    75

    (Pl. Ex. 6 at 133.) The Lexicon entry begins as follows:

    76
    A shape shifter that prefers to live in dark, confined spaces, taking the form of the thing most feared by the person it encounters; nobody knows what a boggart looks like in its natural state.
    77

    An example of particularly extensive direct quotation is found in the Lexicon entry for "Trelawney, Sibyll Patricia," the professor of Divination at the Hogwarts School who tells two important prophecies in the story. The Lexicon not only reproduces her prophecies word-for-word in their entirety, but in doing so, reveals dramatic plot twists and how they are resolved in the series. For example, the first prophecy reads:

    78
    "The one with the power to vanquish the Dark Lord approaches. . . . Born to those who have thrice defied him, born as the seventh month dies . . . and the Dark Lord will mark him as his equal, but he will have power the Dark Lord knows not . . . and either must die at the hand of the other for neither can live while the other survives. . . . The one with the power to vanquish the Dark Lord will be born as the seventh month dies. . . ."
    79

    (Pl. Ex. 8 at 841 (ellipses in original).) The Lexicon entry reproduces this prophecy exactly but in italics and indented. (Pl. Ex. 1, entry for "Trelawney, Sibyll Patricia.") The Lexicon entry continues by discussing what happens as a result of this prophecy: "Severus Snape was eavesdropping on this conversation and he reported the first part of the Prophecy to the Dark Lord. Voldemort immediately began searching for this threat, and centered his attention on the child of Lily and James Potter. (OP 37)." The entry then quotes the second prophecy, but without a citation to where it appears in the Harry Potter series.

    80

    A number of Lexicon entries copy Rowling's artistic literary devices that contribute to her distinctive craft as a writer. For example, the Lexicon entry for "brain room," uses Rowling's evocative literary device in a very close paraphrase. The original language from Harry Potter and the Order of the Phoenix reads:

    81
    For a moment it seemed suspended in midair, then it soared toward Ron, spinning as it came, and what looked like ribbons of moving images flew from it, unraveling like rolls of film.
    82

    (Pl. Ex. 8 at 798.) The Lexicon entry reads in part:

    83
    . . . When Summoned, the brains fly out of the tank, unspooling ribbons of thought like strips of film, which wrap themselves around the Summoner and cause quite a bit of damage (OP35). . . .
    84

    The Lexicon entry for "Clankers" copies a vivid simile created by Rowling and reproduces a thought in the mind of Harry Potter as a factual statement using nearly identical wording. The original language from Harry Potter and the Deathly Hallows reads:

    85
    Ron passed the bag to Griphook, and the goblin pulled out a number of small metal instruments that when shaken made a loud, ringing noise like miniature hammers on anvils. . . .
    86
    ... Harry could see [the dragon] trembling, and as they drew nearer he saw the scars made by vicious slashes across its face, and guessed that it had been taught to fear hot swords when it heard the sound of the Clankers.
    87

    (Pl. Ex. 10 at 536). The Lexicon entry reads:

    88
    A number of small metal instruments, which when shaken make a loud, ringing noise like tiny hammers on anvil [sic]. Anyone visiting one of the high-security vaults at Gringotts must carry one of these, shaking it to make noise. The dragon guarding those vaults has been conditioned to back away at the sound, apparently by being taught to fear hot swords whenever it hears the Clankers (DH26).
    89

    Similarly, the Lexicon entry for "Marchbanks, Madam Griselda" uses an artful simile from the original works to describe this character. Rowling's language in Harry Potter and the Order of the Phoenix reads:

    90
    . . . Harry thought Professor Marchbanks must be the tiny, stooped witch with a face so lined it looked as though it had been draped in cobwebs; Umbridge was speaking to her very deferentially.. . .
    91

    (Pl. Ex. 8 at 710.) The Lexicon entry reads in part:

    92
    ... Madam Marchbanks in June 1996 was tiny and stooped, her face so lined it appeared draped in cobwebs. . . .
    93

    The Lexicon's close paraphrasing is not limited to the seven Harry Potter novels, but can be found in entries drawn from the companion books as well. For example, the entry for "Montrose Magpies" uses language from Quidditch Through the Ages. The original language reads:

    94
    The Magpies are the most successful team in the history of the British and Irish League, which they have won thirty-two times. Twice European Champions . . . . The Magpies wear black and white robes with one magpie on the chest and another on the back.
    95

    (Pl. Ex. 2 at 35-36.) The Lexicon entry reads:

    96
    The most successful Quidditch team in history, which has won the British and Irish league thirty-two times and the European Cup twice. Their robes are black and white, with one magpie on the chest and another on the back (QA7).
    97

    (See also Pl. Ex. 1, entry for "Woollongong Shimmy.")

    98

    The same close paraphrasing takes place in the Lexicon entries drawing from Rowling's other companion book, Fantastic Beasts & Where to Find Them. For example, the entry for "Chinese Fireball" closely tracks the original language, which reads:

    99
    The only Oriental dragon. Scarlet and smooth-scaled, it has a fringe of golden spikes around its snub-snouted face and extremely protuberant eyes. The Fireball gained its name for the mushroom-shaped flame that bursts from its nostrils when it is angered. . . . Eggs are a vivid crimson speckled with gold....
    100

    (Pl. Ex. 3 at 11.) The Lexicon entry reads:

    101
    A species of dragon native to China. The Fireball is a scarlet dragon with golden spikes around its face and protruding eyes. The blast of flame from a fireball forms a distinctive mushroom shape. Eggs of a Fireball are vivid crimson, flecked with gold (FB).
    102

    (See also Pl. Ex. 1, entry for "Fire Crab.")

    103

    Instances of such verbatim copying or close paraphrasing of language in the Harry Potter works occur throughout the Lexicon. (See, e.g., Pl. Ex. 1, entries for "Apparition," "Bubtotuber," "Pince, Madam Irma," "Twycross, Wilkie," "Lovegood, Luna," "third-floor corridor," "Slytherin common room") Rowling provides numerous examples in Plaintiffs' Exhibit 47, "a chart [she] made to show what [she] felt was the constant pilfering of [her] work." (Tr. (Rowling) at 57:23-24.)

    104

    Aside from verbatim copying, another factual issue of contention at trial was the Lexicon entries that contain summaries of certain scenes or key events in the Harry Potter series. Most frequently, these are the longer entries that describe important objects, such as the "Deathly Hallows," or momentous events, such as the "Triwizard Tournament," or that trace the development of an important character, such as Harry Potter, Lord Voldemort, Severus Snape, and Albus Dumbledore. Plaintiffs' expert testified at length that in her opinion these entries constitute "plot summaries," (Tr. (Johnson) at 592:14-22, 611:13-22, 623:4-624:11), while Defendant's expert characterized them as character studies or analysis.

    105

    Neither of these characterizations is exactly apt. Without endorsing one characterization or another, such entries in the Lexicon do encapsulate elements of the very elaborate and wide ranging plot (sometimes in chronological order, sometimes not) confined to the subject of the entry. In the entries for significant characters, these plot elements are occasionally used to support an observation about the character's nature or development. For instance, the three-and-a-half page entry for "Lovegood, Luna" contains the following paragraph:

    106
    Luna came into her own during her sixth year at Hogwarts. With Harry, Ron, and Hermione gone from school, she joined Ginny and Neville to revive the D.A. and resist the Death Eaters' influence at Hogwarts. She was kidnapped on the Hogwarts Express on her way home for the Christmas holidays (DH25) because of what Mr. Lovegood had been writing in The Quibbler, and imprisoned in the cellar at the Malfoy Mansion along with Ollivander. She was helpful in their efforts to escape the Malfoy Mansion, and then fought bravely, again, at the Battle of Hogwarts (DH31).
    107

    (See also, e.g., Pl. Ex. 1, entry for "Malfoy, Draco," ¶ ¶ 5, 6, 7.) But other times, the presentation of plot details, in effect, summarizes a vignette or portion of a scene. In the same entry for "Lovegood, Luna," the Lexicon summarizes a scene on the Hogwarts Express found on pages 185 to 188 of Chapter 10 of Harry Potter and the Order of the Phoenix:

    108
    Harry met Luna for the first time aboard the Hogwarts Express on September 1, 1995. He, Ginny, and Neville shared a compartment with her on the train (OP 10). She was reading a copy of The Quibbler magazine upside down. She informed the others that her father is the editor of The Quibbler, a magazine which most in the Wizarding World consider a joke. She laughed a little too loud; she stared at the other kids, and generally made an odd traveling companion. Harry privately thought, when Cho happened by their compartment to say hello, that he would much rather have been sitting with "cooler" kids than Luna and Neville.
    109

    (Compare Pl. Ex. 8 at 185-88.)

    110

    The entries for the hero and the villain of the Harry Potter series (Harry Potter and Lord Voldemort) present the closest thing to "plot summaries," but are more aptly characterized as synopses or outlines of the narrative revolving around those characters. Because Harry Potter and Lord Voldemort drive the narrative and because they appear in nearly every chapter of the series, an encapsulation of the events surrounding them ultimately yields a synopsis of the primary narrative thread in the Harry Potter series. The Lexicon entry for "Potter, Harry James" is eleven pages long and chronicles each year of Harry Potter's life at the fictional Hogwarts School, providing the reader with all of the main events of the story through all seven of Rowling's novels, leading up to Harry Potter's final battle with Lord Voldemort. (Pl. Ex. 11 (Birchall Decl.) at ¶ 5). The nine-page entry for "Voldemort, Lord" begins by providing the pre-story for the character, which is included in the sixth Harry Potter novel, giving background into the character as a child. (Tr. (Rowling) at 146:10-13). The entry then proceeds to describe chronologically all of the events surrounding this character in the Harry Potter story from books one through seven, and also gives an account of this character's death in the last Harry Potter novel. (Tr. (Rowling) at 62: 12-20; Tr. (Johnson) at 623:6-624:11). Although the entries proceed chronologically and do not use the same plot structure as do the Harry Potter novels (which structure the plot so as to create an interesting drama), the entries do provide a skeleton of the plot elements that hold the story together.

    111

    Finally, Plaintiffs established the Lexicon's extensive copying from Rowling's companion books, Quidditch Through the Ages and Fantastic Beasts & Where to Find Them, the schoolbooks used by the students attending the Hogwarts School. These two books are very short, fifty-six and fifty-nine pages,[9] respectively. They are written in non-narrative form (Tr. (Vander Ark) at 396:21-25) and present fictional facts without commentary (id. (Rowling) at 63:18-20), in a similar way to the Lexicon. When questioned about his use of these books in creating the Lexicon, Vander Ark testified:

    112
    . . . Fantastic Beasts and Quidditch [Through] the Ages had sections of them which were essentially encyclopedias already which presented quite a problem. We wanted to be complete, but we certainly didn't want to replace Ms. Rowling's encyclopedia content which presented us with quite a challenge of how to do that, how to include information, but not to include all of it. And that was what we decided to do. We said we'll intentionally leave things out and put a very clear note, Please go read her books, which is what we did.
    113

    (Id. (Vander Ark) 287:20-288:4.) Although the Lexicon sporadically leaves out material, such as some material from the introductory chapters of Quidditch Through the Ages, it essentially takes wholesale from the companion books. (Tr. (Rowling) at 65:3-8, 62:25-63:1.) When questioned about the Lexicon entry for "Chudley Cannons" and whether there was anything about this quidditch team in Quidditch Through the Ages that he did not put in the Lexicon, Vander Ark admitted, "In that particular case, it looks like we pretty much caught it all." (Id. at 288:15-22.)[10] Vander Ark later admitted that although he left out some of the first half of Quidditch Through the Ages, "[w]hen it comes to descriptions of specific things, a Quidditch f[oul], for example, there's not a lot of information there to condense, and so there would be more of that included and referenced." (Id. at 290:3-6.)[11] Similarly, the Lexicon copies a large part of the descriptions of each beast in the A-to-Z section of Fantastic Beasts & Where to Find Them.

    114
    CONCLUSIONS OF LAW
    115
    I. Copyright Infringement
    116

    To establish a prima facie case of copyright infringement, a plaintiff must demonstrate "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); Arica Institute. Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992). The element of copying has two components: first, the plaintiff must establish actual copying by either direct or indirect evidence; then, the plaintiff must establish that the copying amounts to an improper or unlawful appropriation. Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998); Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-140 (2d Cir.1992). The plaintiff demonstrates that the copying is actionable "by showing that the second work bears a `substantial similarity' to protected expression in the earlier work." Castle Rock, 150 F.3d at 137 (citing Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997)); see Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 74-75 (2d Cir.1997) (explaining the distinction between actionable copying and factual copying); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A] (2007) [hereinafter Nimmer].

    117
    A. Ownership
    118

    There is no dispute regarding Plaintiff Rowling's ownership of valid copyrights in the seven Harry Potter novels and two companion books, Quidditch Through the Ages and Fantastic Beasts & Where to Find Them. With respect to those works, Plaintiffs introduced evidence of copyright ownership in the form of registration certificates from the U.S. Copyright Office (Pl. Ex. 12-A), which constitute prima facie evidence of the works' copyrightability and the validity of the copyrights. 17 U.S.C. § 410(c). Plaintiffs also introduced the declarations and testimony of Rowling concerning her creation of the works and ownership of the copyrights in them. (Pl. Exs. 25, 32; Tr. (Rowling) at 43:8-9.)

    119

    Defendant disputes, however, that Plaintiffs have established Rowling's ownership of copyrights in "The Daily Prophet" newsletters and Warner Brothers' beneficial ownership of copyrights in the Harry Potter video games that contain the allegedly infringed "Famous Wizard Cards." The only evidence offered at trial to establish Plaintiffs' ownership of these copyrights was Rowling's testimony. Plaintiffs attached to their post-trial brief documents demonstrating Rowling's U.K. copyright in the "The Daily Prophet" (Pl. Post-Trial Br., Ex. A) and Warner Brothers' joint ownership with Electronic Arts Inc. of U.S. copyrights in Harry Potter videogames (id., Ex. B). Having taken judicial notice of these documents as public records as permitted by the Federal Rules of Evidence, see Fed.R.Evid. 201(b)(2); Island Software & Computer Serv. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir.2005), the Court concludes that Plaintiffs have established ownership of copyrights in "The Daily Prophet" and the "Famous Wizard Cards." Plaintiffs cannot establish infringement of these works, however, because neither work was entered into evidence,[12] and they are not before the Court. Accordingly, Plaintiffs' claims of copyright infringement will be addressed only with respect to the seven Harry Potter novels and two companion guides.

    120
    B. Copying
    121

    There is no dispute that the Lexicon actually copied from Rowling's copyrighted works. Vander Ark openly admitted that he created and updated the content of the Lexicon by taking notes while reading the Harry Potter books and by using without authorization scanned, electronic copies of the Harry Potter novels and companion books. (Tr. (Vander Ark) at 335:9-17, 259:5-9, 16-23.) While acknowledging actual copying, Defendant disputes that the copying amounts to an improper or unlawful appropriation of Rowling's works. Defendant argues that Plaintiffs fail to establish a prima facie case of infringement because they have not shown that the Lexicon is substantially similar to the Harry Potter works.

    122

    The appropriate inquiry under the substantial similarity test is whether "the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred."[13] Ringgold, 126 F.3d at 75; accord Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 70 (2d Cir.1999); Castle Rock, 150 F.3d at 138. The quantitative component addresses the amount of the copyrighted work that is copied, while the qualitative component addresses the copying of protected expression, as opposed to unprotected ideas or facts. Ringgold, 126 F.3d at 75.

    123

    In evaluating the quantitative extent of copying in the substantial similarity analysis, the Court "considers the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work." Castle Rock, 150 F.3d at 140 n. 6. As the Second Circuit has instructed, "[i]t is not possible to determine infringement through a simple word count," which in this case would be an insuperable task; "the quantitative analysis of two works must always occur in the shadow of their qualitative nature." Nihon Keizai, 166 F.3d at 71. Where, as here, the copyrighted work is "wholly original," rather than mixed with unprotected elements, a lower quantity of copying will support a finding of substantial similarity. Nihon Keizai, 166 F.3d at 71.

    124

    Plaintiffs have shown that the Lexicon copies a sufficient quantity of the Harry Potter series[14] to support a finding of substantial similarity between the Lexicon and Rowling's novels. The Lexicon draws 450 manuscript pages worth of material primarily from the 4,100-page Harry Potter series.[15] Most of the Lexicon's 2,437 entries contain direct quotations or paraphrases, plot details, or summaries of scenes from' one or more of the Harry Potter novels. As Defendant admits, "the Lexicon reports thousands of fictional facts from the Harry Potter works." (Def's Post-trial Br. at 35). Although hundreds of pages or thousands of fictional facts may amount to only a fraction of the seven-book series, this quantum of copying is sufficient to support a finding of substantial similarity where the copied expression is entirely the product of the original author's imagination and creation. See Castle Rock, 150 F.3d at 138 (concluding that a Seinfeld trivia book that copied 643 fragments from 84 copyrighted Seinfeld episodes "plainly crossed the quantitative copying threshold under Ringgold"); Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1372 (2d Cir.1993) (upholding the district court's conclusion that "the identity of 89 lines of dialogue" between Twin Peaks teleplays and a guide to the television series constituted substantial similarity); see also Harper & Row v. Nation Enterprises, 471 U.S. 539, 548-49, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985) (stating that "lifting verbatim quotes of the author's original language totaling between 300 and 400 words and constituting some 13% of [the defendant's] article" was sufficient to constitute copyright infringement).

    125

    The quantitative extent of the Lexicon's copying is even more substantial with respect to Fantastic Beasts and Quidditch Through the Ages. Rowling's companion books are only fifty-nine and fifty-six pages long, respectively. The Lexicon reproduces a substantial portion of their content, with only sporadic omissions, across hundreds of entries. (Tr. (Vander Ark) at 287:20-288:4) (testifying that to overcome the problem of copying the companion books, "which were essentially encyclopedias already," in their entirety, the Lexicon intentionally leaves some things out).

    126

    As to the qualitative component of the substantial similarity analysis, Plaintiffs have shown that the Lexicon draws its content from creative, original expression in the Harry Potter series and companion books. Each of the 2,437 entries in the Lexicon contains "fictional facts" created by Rowling, such as the attributes of imaginary creatures and objects, the traits and undertakings of major and minor characters, and the events surrounding them. The entry for "Boggart," for example, contains the fictional facts that a boggart is "[a] shape shifter that prefers to live in dark, confined spaces, taking the form of the thing most feared by the person it encounters; nobody knows what a boggart looks like in its natural state," and that "Lupin taught his third year Defence Against the Dark Arts class to fight [a boggart] with the Riddikulus spell (PA7), and used a boggart as a substitute for a Dementor in tutoring Harry (PA12)." (Pl. Ex. 1.) In Castle Rock Entertainment Inc. v. Carol Publishing Group, Inc., the Second Circuit explained that such invented facts constitute creative expression protected by copyright because "characters and events spring from the imagination of [the original] authors." 150 F.3d at 139; see also Paramount Pictures Corp. v. Carol Publ'g Group, 11 F.Supp.2d 329, 333 (S.D.N.Y.1998) (stating that "[t]he characters, plots and dramatic episodes" that comprise the story of the "fictitious history of Star Trek" are the story's "original elements," protected by copyright). The Castle Rock court held that a trivia book which tested the reader's knowledge of "facts" from the Seinfeld series copied protected expression because "each `fact' tested by [the trivia book] is in reality fictitious expression created by Seinfeld's authors." Id. It follows that the same qualitative conclusion should be drawn here, where each "fact" reported by the Lexicon is actually expression invented by Rowling.

    127

    Seeking to distinguish Castle Rock, Defendant argues that the qualitative similarity between the Lexicon and the Harry Potter works is significantly diminished because "the Lexicon uses fictional facts primarily in their factual capacity" to "report information and where to find it," unlike the Seinfeld trivia book, which used fictional facts "primarily in their fictional capacity to entertain and `satisfy' the reader's `craving' for the Seinfeld television series." (Def. Post-trial Br. at 36 (quoting Castle Rock, 150 F.3d at 142-43).) While this distinction is important, Defendant's argument goes to the fair use question of whether the Lexicon's use has a transformative purpose, not to the infringement question of whether the Lexicon, on its face, bears a substantial similarity to the Harry Potter works. The court in Castle Rock addressed these two inquires separately and found that the Seinfeld trivia book not only bore a substantial similarity to the Seinfeld series but also lacked a transformative purpose. See Castle Rock, 150 F.3d at 138-39, 141-43. What matters at the infringement stage of this case is that the copied text is expression original to Rowling, not fact or idea, and therefore is presumptively entitled to copyright protection. See Harper & Row, 471 U.S. at 547, 105 S.Ct. 2218; Feist, 499 U.S. at 344-46, 111 S.Ct. 1282. Even if expression is or can be used in its "factual capacity," it does not follow that expression thereby takes on the status of fact and loses its copyrightability.

    128

    Defendant also argues that while a substantial similarity may be found where invented facts are "reported and arranged in such a way as to tell essentially the same story" as the original, "the order in which the fictional facts are presented in the Lexicon bears almost no resemblance to the order in which the fictional facts are arranged to create the story of Harry Potter and the universe he inhabits." (Def. Post-trial Br. at 34, 36). Reproducing original expression in fragments or in a different order, however, does not preclude a finding of substantial similarity. See Castle Rock, 150 F.3d at 139 (finding a substantial similarity even though the allegedly infringing trivia book rearranged fragments of expression from Seinfeld in question-and-answer format); Paramount Pictures, 11 F.Supp.2d at 333-34 (finding that a book containing brief synopses of major plot lines, histories of major characters, and descriptions of fictional alien species in Star Trek was substantially similar to the Star Trek series even though "the fictitious history is presented in a different order than that in which it appeared in the [original works]"). Regardless of how the original expression is copied, "`the standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is "substantially similar" to the former.'" Castle Rock, 150 F.3d at 141 (quoting Horgan v. Macmillan, Inc., 789 F.2d 157, 162 (2d Cir.1986)). Here, the Lexicon's rearrangement of Rowling's fictional facts does not alter the protected expression such that the Lexicon ceases to be substantially similar to the original works.[16]

    129

    Furthermore, the law in this Circuit is clear that "the concept of similarity embraces not only global similarities in structure and sequence, but localized similarity in language." Twin Peaks, 996 F.2d at 1372 (endorsing the taxonomy of "comprehensive nonliteral similarity" and "fragmented literal similarity" from the Nimmer treatise, 4 Nimmer § 13.03[A][2]); see also Ringgold, 126 F.3d at 75 n. 3; Arica Institute, 970 F.2d at 1073. In evaluating fragmented literal similarity, or "localized similarity in language," the Court examines the copying of direct quotations or close paraphrasing of the original work. Castle Rock, 150 F.3d at 140; Paramount Pictures, 11 F.Supp.2d at 333 ("Fragmented similarity refers to exact copying of a portion of a work"). As determined in the Findings of Fact, the Lexicon contains a considerable number of direct quotations (often without quotation marks) and close paraphrases of vivid passages in the Harry Potter works. Although in these instances, the Lexicon often changes a few words from the original or rewrites original dialogue in the third person, the language is nonetheless substantially similar. See Salinger v. Random House, Inc., 811 F.2d 90, 97 (2d Cir.1987) (indicating that protected expression is infringed whether it is "quoted verbatim or only paraphrased"); Craft v. Kobler, 667 F.Supp. 120, 124 (S.D.N.Y. 1987) (stating that protected writing is infringed by "direct quotation" or "by paraphrase which remains sufficiently close that, in spite of changes, it appropriates the craft of authorship of the original"); see also 4 Nimmer § 13.03[A][1] ("The mere fact that the defendant has paraphrased rather than literally copied will not preclude a finding of substantial similarity. Copyright `cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.'") (footnote omitted) (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930)).

    130

    Notwithstanding the dissimilarity in the overall structure of the Lexicon and the original works, some of the Lexicon entries contain summaries of certain scenes or key events in the Harry Potter series, as stated in the Findings of Fact. These passages, in effect, retell small portions of the novels, though without the same dramatic effect. In addition, the entries for Harry Potter and Lord Voldemort give a skeleton of the major plot elements of the Harry Potter series, again without the same dramatic effect or structure. Together these portions of the Lexicon support a finding of substantial similarity. To be sure, this case is different from Twin Peaks, where forty-six pages of the third chapter of a guidebook to the Twin Peaks television series were found to constitute "essentially a detailed recounting of the first eight episodes of the series. Every intricate plot twist and element of character development appear[ed] in the Book in the same sequence as in the teleplays." 996 F.2d at 1372-73 (supporting the Second Circuit's finding of comprehensive nonliteral similarity). Those "plot summaries" were far more detailed, comprehensive, and parallel to the original episodes than the so-called "plot summaries" in this case. Nonetheless, it is clear that the plotlines and scenes encapsulated in the Lexicon are appropriated from the original copyrighted works. See Paramount Pictures, 11 F.Supp.2d at 334 (noting that Twin Peaks was distinguishable but nonetheless applying its broader holding that "a book which tells the story of a copyrighted television series infringes on its copyright"). Under these circumstances, Plaintiffs have established a prima facie case of infringement.

    131
    C. Derivative Work
    132

    Plaintiffs allege that the Lexicon not only violates their right of reproduction, but also their right to control the production of derivative works. The Copyright Act defines a "derivative work" as "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" 17 U.S.C. § 101 (emphasis added). A work "consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represents an original work of authorship" is also a derivative work. Id.

    133

    A work is not derivative, however, simply because it is "based upon" the preexisting works.[17] If that were the standard, then parodies and book reviews would fall under the definition, and certainly "ownership of copyright does not confer a legal right to control public evaluation of the copyrighted work." Ty, Inc. v. Publ'ns Int'l Ltd., 292 F.3d 512, 521 (7th Cir.2002). The statutory language seeks to protect works that are "recast, transformed, or adapted" into another medium, mode, language, or revised version, while still representing the "original work of authorship." See Castle Rock, 150 F.3d at 143 n. 9 (stating that "derivative works that are subject to the author's copyright transform an original work into a new mode of presentation"); Twin Peaks, 996 F.2d at 1373 (finding a derivative work where a guidebook based on the Twin Peaks television series "contain[ed] a substantial amount of material from the teleplays, transformed from one medium to another"). Thus in Ty, Inc. v. Publications International Ltd., Judge Posner concluded, as the parties had stipulated, that a collectors' guide to Beanie Babies was not a derivative work because "guides don't recast, transform, or adapt the things to which they are guides." 292 F.3d at 520 (emphasis added).

    134

    Plaintiffs argue that based on the Twin Peaks decision "companion guides constitute derivative works where, as is the case here, they `contain a substantial amount of material from the underlying work.'" (Pl. Post-trial Br. ¶ 288, at 88-89.) This argument inaccurately states the holding of Twin Peaks and overlooks two important distinctions between the Lexicon and the guidebook in Twin Peaks. First, as mentioned earlier, the portions of the Lexicon that encapsulate plot elements or sketch plotlines bear no comparison with the guidebook in Twin Peaks, whose plot summaries giving "elaborate recounting of plot details" were found to constitute an "abridgement" of the original work. See Twin Peaks, 996 F.2d at 1373 n. 2 (reproducing an excerpt of the infringing book containing a high degree of detail). Given that the Lexicon's use of plot elements is far from an "elaborate recounting" and does not follow the same plot structure as the Harry Potter novels, Plaintiffs' suggestion that these portions of the Lexicon are "unauthorized abridgements" is unpersuasive. Second, and more importantly, although the Lexicon "contain[s] a substantial amount of material" from the Harry Potter works, the material is not merely "transformed from one medium to another," as was the case in Twin Peaks. Id. at 1373. By condensing, synthesizing, and reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does not recast the material in another medium to retell the story of Harry Potter, but instead gives the copyrighted material another purpose.[18] That purpose is to give the reader a ready understanding of individual elements in the elaborate world of Harry Potter that appear in voluminous and diverse sources. As a result, the Lexicon no longer "represents [the] original work[s] of authorship." 17 U.S.C. § 101. Under these circumstances, and because the Lexicon does not fall under any example of derivative works listed in the statute, Plaintiffs have failed to show that the Lexicon is a derivative work.

    135
    II. Fair Use
    136

    Defendant contends that even if Plaintiffs have shown a prima facie case of infringement, the Lexicon is nevertheless a fair use of the Harry Potter works. An integral part of copyright law, the fair use doctrine is designed to "fulfill copyright's very purpose, `To promote the Progress of Science and useful Arts,'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const. art. I, § 8, cl. 8), by balancing the simultaneous needs "to protect copyrighted material and to allow others to build upon it." Id. As the Second Circuit has observed, there is an

    137
    inevitable tension between the property rights [that copyright law] establishes in creative works, which must be protected up to a point, and the ability of authors, artists, and the rest of us to express them—or ourselves by reference to the works of others, which must be protected up to a point. The fair-use doctrine mediates between the two sets of interests, determining where each set of interests ceases to control.
    138

    Blanch v. Koons, 467 F.3d 244, 250 (2d Cir.2006). At stake in this case are the incentive to create original works which copyright protection fosters and the freedom to produce secondary works which monopoly protection of copyright stifles— both interests benefit the public. See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1109 (1990) (noting that on one hand "[t]he monopoly created by copyright . . . rewards the individual author in order to benefit the public," and on the other "[m]onopoly protection of intellectual property that impeded referential analysis and the development of new ideas out of old would strangle the creative process").

    139

    The common law doctrine of fair use is codified at Section 107 of the Copyright Act of 1976 as follows:

    140
    The fair use of a copyrighted work. . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
    141
    (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    142
    (2) the nature of the copyrighted work;
    143
    (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and
    144
    (4) the effect of the use upon the potential market for or value of the copyrighted work.
    145

    17 U.S.C. § 107. The evaluation of these factors is "an open-ended and context-sensitive inquiry," Blanch, 467 F.3d at 244; accord Campbell, 510 U.S. at 577, 114 S.Ct. 1164 (stating that "the statute, like the doctrine it recognizes, calls for a case-bycase analysis"), and the examples listed in the statute (i.e., criticism, comment, news reporting, and teaching) are illustrative rather than limiting, Campbell, 510 U.S. at 577-78, 114 S.Ct. 1164. The four statutory factors may not "be treated in isolation, one from another"; instead they all must "be explored, and the results weighed together, in light of the purposes of copyright." Id. at 578, 114 S.Ct. 1164. "The ultimate test of fair use, therefore, is whether the copyright law's goal of `promoting the Progress of Science and useful Arts,' U.S. Const., art. I, § 8, cl. 8, `would be better served by allowing the use than by preventing it.'" Castle Rock, 150 F.3d at 141 (quoting Arica Inst., 970 F.2d at 1077).

    146
    A. Purpose and Character of the Use
    147

    Most critical to the inquiry under the first fair-use factor is "whether and to what extent the new work is `transformative.'" Campbell, 510 U.S. at 579, 114 S.Ct. 1164; see also Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir.2006); Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 628 (9th Cir.2003). Specifically, the court asks "whether the new work merely `supersede[s] the objects' of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Campbell, 510 U.S. at 579, 114 S.Ct. 1164. The fair use doctrine seeks to protect a secondary work if it "adds value to the original—if [copyrightable expression in the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings," because such a work contributes to the enrichment of society. Castle Rock, 150 F.3d at 141 (alteration in original) (quoting Leval, supra, at 1111). Courts have found a transformative purpose both where the defendant combines copyrighted expression with original expression to produce a new creative work, see, e.g., Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Blanch, 467 F.3d at 251-51; Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir.2001), and where the defendant uses a copyrighted work in a different context to serve a different function than the original, see, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir.2007); Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir.2006).

    148

    The purpose of the Lexicon's use of the Harry Potter series is transformative. Presumably, Rowling created the Harry Potter series for the expressive purpose of telling an entertaining and thought provoking story centered on the character Harry Potter and set in a magical world. The Lexicon, on the other hand, uses material from the series for the practical purpose of making information about the intricate world of Harry Potter readily accessible to readers in a reference guide. To fulfill this function, the Lexicon identifies more than 2,400 elements from the Harry Potter world, extracts and synthesizes fictional facts related to each element from all seven novels, and presents that information in a format that allows readers to access it quickly as they make their way through the series. Because it serves these 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. See Elvis Presley Enters., 349 F.3d at 629 (stating that new works are described as transformative "when the works use copyrighted materials for purposes distinct from the purpose of the original material"); see also Bill Graham Archives, 448 F.3d at 609 (concluding that the use of artistic images as historical artifacts is "transformatively different from the original expressive purpose").

    149

    The Lexicon's use of Rowling's companion books, however, is transformative to a much lesser extent. Although there is no supporting testimony, the companion books can be used for a reference purpose. Their packaging demonstrates an entertainment purpose: bringing to life the fictional schoolbooks they represent in the Harry Potter novels, the companion books have fictional authors, forewords written by Albus Dumbledore, handwritten notes to Harry from his friends, a game of tictac-toe sketched on one page, a library log and warning by the Hogwarts librarian, and a "Property of Hogwarts Library" stamp. In this regard, the companion books serve as playful accessories to the Harry Potter series. At the same time, 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." (Tr. (Vander Ark) at 287:21-22.) Fantastic Beasts describes the attributes and origins of each beast listed in the alphabetical guide, defines "beast," and explains the place of beasts in the "muggle" and wizard worlds. Quidditch Through the Ages describes the history and development of quidditch, the rules of the game, the teams, and the spread of quidditch internationally. Neither book, however, makes reference to where the beasts or quidditch facts appear in the Harry Potter novels. Although the Lexicon does not use the companion books for their entertainment purpose, it supplants the informational purpose of the original works by seeking to relate the same fictional facts in the same way. Even so, the Lexicon's use is slightly transformative in that it adds a productive purpose to the original material by synthesizing it within a complete reference guide that refers readers to where information can be found in a diversity of sources.

    150

    The best evidence of the Lexicon's transformative purpose is its demonstrated value as a reference source. See Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, (2d Cir.1994) (stating that the "transformative use concept assesses the value generated by the secondary use and the means by which such value is generated"); Leval, supra, at 1111 (stating that for a use to be transformative, "[t]he use must be productive and must employ the quoted matter in a different manner or for a different purpose than the original"). The utility of the Lexicon, as a reference guide to a multi-volume work of fantasy literature, demonstrates a productive use for a different purpose than the original works. The Lexicon makes the elaborate imaginary world of Harry Potter searchable, item by item, and gives readers a complete picture of each item that cannot be gleaned by reading the voluminous series, since the material related to each item is scattered over thousands of pages of complex narrative and plot. The demand for and usefulness of this type of reference guide is evidenced by the publication of similar works such as Paul F. Ford's Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis's The Chronicles of Narnia. (Pl. Ex. 62; see also Def. Ex. 503 (Sorensen Decl. ¶ 12.)) The utility of the Lexicon as a reference guide has been demonstrated to Vander Ark by way of responses to his Lexicon website. This feedback included a remark by Rowling that she has "been known to sneak into an internet café while out writing and check a fact" on the Lexicon website, a remark by David Heyman of Warner Brothers that he used the Lexicon website almost every day while shooting the fifth Harry Potter film, and a glimpse of the walls of the Electronic Arts studios covered with printed pages from the Lexicon website. (Tr. 386:8-20, 387:3-13; Def. Ex. 502 (Vander Ark Decl.) ¶ 39.) This feedback supports Defendant's claim that it had good reason to believe that a print version of the Lexicon would serve as a valuable reference source to readers and fans of Harry Potter.

    151

    Its function as a reference guide distinguishes the Lexicon from the secondary work at issue in Castle Rock, a 132-page book of trivia about the events and characters depicted in Seinfeld. Despite its specious claims to critique and expose the Seinfeld series, the trivia book served no purpose but "to satiate Seinfeld fans' passion" for the series and simply "repackage[d] Seinfeld to entertain Seinfeld viewers." Castle Rock, 150 F.3d at 142. A statement by the book's creators on the back cover, urging readers to "open this book to satisfy [their] between-episode [Seinfeld] cravings," belied its transformative purpose. Id. By contrast, the Lexicon seeks not to entertain but to aid the reader or student of Harry Potter by providing references about the elements encountered in the series.[19]

    152

    The Lexicon's purpose as a reference guide also distinguishes it from the books at issue in Twin Peaks and Paramount Pictures. Those books sought to retell the fictional stories of the Twin Peaks series and the Star Trek series in abridged versions. See Twin Peaks, 996 F.2d at 1372-73, 1375-76 (finding that the book at issue was an "abridgment" because it recounted "precisely the plot details" of television episodes "in the same sequence" as they appeared in the original series); Paramount Pictures, 11 F.Supp.2d at 335 (finding that the work at issue "simply retells the story of Star Trek in a condensed version"). Because the books in those cases merely recast the originals in abridged versions, they were held to be derivative works. The Lexicon, on the other hand, has a "further purpose or different character," Campbell, 510 U.S. at 579, 114 S.Ct. 1164, that alters the original aesthetic of the Harry Potter series from an intricate narrative to an alphabetized catalogue of elements from the Harry Potter world.

    153

    Plaintiffs argue that the Lexicon's use of Rowling's works cannot be considered transformative because the Lexicon does not add significant analysis or commentary. In the opinion of Plaintiffs' expert, the Lexicon contributes nothing new other than occasional facetious phrases and facile jokes that are condescending to children (Pl. Ex. 28 (Suppl. Johnson Decl.) ¶ 9; Tr. (Johnson) at 633:8-634:7), sporadic and often wrong etymological references demonstrating "no real linguistic understanding" (Pl. Ex. 28, ¶ 11), and conclusions that would be obvious to any child reading Harry Potter (id. ¶ 7). The Lexicon, however, does not purport to be a work of literary criticism or to constitute a fair use on that basis; and its lack of critical analysis, linguistic understanding, or clever humor is not determinative of whether or not its purpose is transformative.[20] Cf. Bill Graham Archives, 448 F.3d at 610 (concluding that the defendant's use of copyrighted images "is transformative both when accompanied by referencing commentary and when standing alone" because in either case the images are used as "historical artifacts" for the transformative purpose of "enhancing the biographical information" in the allegedly infringing book). Focusing on what the Lexicon fails to add by way of analysis misses the point that the Lexicon's chief contribution is the function it serves.

    154

    Nonetheless, despite Plaintiffs' criticisms, the Lexicon occasionally does offer "new information, new aesthetics, new insights and understandings," Castle Rock, 150 F.3d at 141 (internal quotation marks omitted), as to the themes and characters in the Harry Potter works. The Lexicon's discussion of certain characters, while perhaps not rigorous analysis, contain some reflections on the character, observations of his or her nature, and examples of how that nature is exhibited in the story. For example, the Lexicon observes that "Draco [Malfoy] was constantly frustrated by the attention given to Harry," and gives anecdotal examples from the novels to support this conclusion. (See also Pl. Ex. 1, entry for "Longbottom, Neville" (containing observations about the nature of his bravery and leadership); entry for "Lovegood, Luna" (containing observations about her social awkwardness and dignity)). Moreover, in some instances, the Lexicon yields insights about an element of the Harry Potter world simply by encapsulating all the fictional facts related to that element in a single entry. When all the fictional facts related to "Hallowe'en" are collected, for example, the entry reveals that this occasion is "an eventful day in Harry's life; on Hallowe'en 1981 his parents were killed (DH17) and his subsequent years included knocking out a troll (PS10), the opening of the Chamber of Secrets (CS8), Sirius Black's first break-in to Hogwarts (PA8), and Harry's name coming out of the Goblet of Fire (GF 16)." Finally, the Lexicon's etymological references, while occasionally inaccurate, offer one possible interpretation of the meaning and derivation of characters' names, even if not the meaning intended by Rowling. Thus, while not its primary purpose, the Lexicon does add some new insight, of whatever value, as to the Harry Potter works.

    155

    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 use lacks transformative character where the Lexicon entries fail to "minimize[] the expressive value" of the original expression. See Bill Graham Archives, 448 F.3d at 611 (finding evidence of transformative use where the defendant "minimized the expressive value of the reproduced images by combining them with a prominent timeline, textual material, and original graphical artwork to create a collage of text and images on each page of the book"). A finding of verbatim copying in excess of what is reasonably necessary diminishes a finding of a transformative use. See Campbell, 510 U.S. at 587, 114 S.Ct. 1164 (observing that "whether a substantial portion of the infringing work was copied verbatim from the copyrighted work . . . may reveal a dearth of transformative character" (internal quotation marks omitted)). As discussed more fully in analyzing the "amount and substantiality" factor, the Lexicon copies distinctive original language from the Harry Potter works in excess of its otherwise legitimate purpose of creating a reference guide. Perhaps because Vander Ark is such a Harry Potter enthusiast, the Lexicon often lacks restraint in using Rowling's original expression for its inherent entertainment and aesthetic value. See Elvis Presley Enters., 349 F.3d at 629 (finding that where a film biography of Elvis Presley showed the plaintiffs' copyrighted clips of Elvis's television appearances without much interruption, "[t]he purpose of showing these clips likely goes beyond merely making a reference for a biography, but instead serves the same intrinsic entertainment value that is protected by Plaintiffs' copyrights").

    156

    The Lexicon also lacks transformative character where its value as a reference guide lapses. Although the Lexicon is generally useful, it cannot claim consistency in serving its purpose of pointing readers to information in the Harry Potter works. Some of the longest entries contain few or no citations to the Harry Potter works from which the material is taken. (See supra Findings of Fact; PI. Ex. 28 (Suppl. Johnson Decl.) ¶ 16.) In these instances, the Lexicon's reference purposes are diminished.

    157

    While the transformative character of the secondary work is a central inquiry, the commercial or nonprofit nature of the secondary work is an explicit part of the first fair-use factor. 17 U.S.C. 107(1); Blanch, 467 F.3d at 253. Given that even the statutory examples of fair use are generally conducted for profit, courts often "do not make much of this point." Castle Rock, 150 F.3d at 141. The real concern behind the commercial nature inquiry is "the unfairness that arises when a secondary user makes unauthorized use of copyrighted material to capture significant revenues as a direct consequence of copying the original work." Blanch, 467 F.3d at 253. Courts will not find fair use when the secondary use "can fairly be characterized as a form of commercial exploitation," but "are more willing to find a secondary use fair when it produces a value that benefits the broader public interest." Id. In this case, Defendant's use of the copyrighted works is certainly for commercial gain. As the testimony of Rapoport and Vander Ark make clear, one of the Lexicon's greatest selling points is being the first companion guide to the Harry Potter series that will cover all seven novels. Seeking to capitalize on a market niche does not necessarily make Defendant's use non-transformative, but to the extent that Defendant seeks to "profit at least in part from the inherent entertainment value" of the original works, the commercial nature of the use weighs against a finding of fair use. Elvis Presley Enters., 349 F.3d at 628. To the extent that Defendant seeks to provide a useful reference guide to the Harry Potter novels that benefits the public, the use is fair, and its commercial nature only weighs slightly against a finding of fair use.

    158

    Finally, in evaluating the purpose and character of a secondary use of a copyrighted work, courts will consider the "subfactor" of whether the defendant acted in good or bad faith. NXIVM Corp. v. Ross Inst., 364 F.3d 471, 478 (2d Cir.2004); see also Harper & Row, 471 U.S. at 562-63, 105 S.Ct. 2218. Plaintiffs point to several facts in the record to support their argument that Defendant acted with willfulness and bad faith. The Court is not persuaded, however, that the acts of RDR Books, which do not amount to more than intentional delays in responding to Plaintiffs' communications from counsel, constitute acts of bad faith.[21] Based on the reasonable belief that its use of the Harry Potter works constituted fair use, Defendant was entitled to proceed with marketing the Lexicon domestically and abroad and preparing it for publication before competitors released similar books. Vander Ark's use of unauthorized electronic copies of Rowling's works, obtained by improperly scanning each of those works, in preparing the Lexicon manuscript is insufficient proof for the Court to make a finding of bad faith, particularly because Vander Ark did not obtain any material that was not already available to the public. Compare NXIVM Corp., 364 F.3d at 478 (weighing this factor slightly in favor of plaintiffs because defendants knew they had obtained unauthorized access to the copyrighted manuscript, which was unpublished in the sense it was not available to the general public). In any event, as the Second Circuit has concluded, "a finding of bad faith is not to be weighed very heavily within the first fair use factor and cannot be made central to fair use analysis." Id. at 479 n. 2. This subfactor weighs only slightly in favor of Plaintiffs, as the Court finds that Defendant reasonably believed its use was ultimately fair.

    159
    B. Amount and Substantiality of the Use
    160

    Plaintiffs contend that the Lexicon's actual use of Plaintiffs' original works far surpasses any purpose as a reference source. They argue, in other words, that the Lexicon takes too much original expression for the use to be fair use. Here, the transformative purpose of Defendant's use and the third statutory factor of fair use—the amount and substantiality of the use—must be "explored, and the results weighed together." Campbell, 510 U.S. at 577-78, 114 S.Ct. 1164. The question is whether the amount and value of Plaintiffs' original expression used are reasonable in relation to the Lexicon's transformative purpose of creating a useful and complete A-to-Z reference guide to the Harry Potter world. See Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (stating that the third factor asks whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole "are reasonable in relation to the purpose of the copying"); Blanch, 467 F.3d at 257 ("The question is whether `the quantity and value of the materials used,' are reasonable in relation to the purpose of the copying."); see also Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 629 (7th Cir.2003) (stating that "the fair use copier must copy no more than is reasonably necessary ... to enable him to pursue an aim that the law recognizes as proper"). This inquiry requires the Court to examine not only "the quantity of the materials used, but their quality and importance, too." Campbell, 510 U.S. at 587, 114 S.Ct. 1164; Nihon Keizai Shimbun, 166 F.3d at 73. Blanch, 467 F.3d at 257 ("The question is whether `the quantity and value of the materials used,' are reasonable in relation to the [transformative] purpose of the copying.").

    161

    In undertaking this inquiry, the Court bears in mind that "room must be allowed for judgment, and judges must not police criticism," or other transformative uses, "with a heavy hand." Chicago Bd. of Educ., 354 F.3d at 629. The Court is hesitant to substitute its own judgment for that of an author in determining how much copying of original material is "reasonably necessary" to create a useful and complete reference work. Nonetheless, the fair use test calls for a court determination on this issue.

    162

    To fulfill its purpose as a reference guide to the Harry Potter works, it is reasonably necessary for the Lexicon to make considerable use of the original works. As Vander Ark testified, for a reference work to be valuable and useful, it must be as complete as possible. (Tr. (Vander Ark) at 281:20-21, 369:23-25.) Similarly, in Ty, Inc. v. Publications International Ltd., the Seventh Circuit recognized that for a collectors' guide to have enough value "to compete in the marketplace, [it] has to be comprehensive." 292 F.3d at 521. At trial, Plaintiffs questioned Vander Ark and Defendants' expert about whether it was possible to create a reference book that took less of Rowling's work and gave shorter descriptions. (Id. (Vander Ark) at 281:10-282:6; id. (Sorensen) at 543:23-546:316-20.) While it is possible to describe "Albus Dumbledore"[22] or "Bertie Bott's Every Flavor Beans,"[23] for example, in a few phrases, such a short entry would not fulfill the Lexicon's purpose of serving as a useful reference guide that provides the reader or student with as complete a picture as possible of the entry's subject.

    163

    Weighing most heavily against Defendant on the third factor is the Lexicon's verbatim copying and close paraphrasing of language from the Harry Potter works. In many instances, the copied language is a colorful literary device or distinctive description, as in the Lexicon entries for "Clankers," "Marchbanks, Madam Griselda," "Brain room," and "Dementors." See supra Findings of Fact. This type of langauge is of great quality and importance; these phrases are, as Rowling testified, the "plums in [her] cake." (Tr. (Rowling) at 647:3-6). The Lexicon's verbatim copying of such 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. 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 the third factor against a finding of fair use in view of the expressive value of the language. See Harper & Row, 471 U.S. at 564-66, 105 S.Ct. 2218 (finding that defendant's verbatim copying, constituting "an insubstantial portion" of the copyrighted work and only 13% of the infringing magazine article, was a substantial appropriation in view of the expressive value of the excerpts and their key role in the infringing work); Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir.1987) (finding that defendant's biography, in which plaintiff identified 59 instances of verbatim quoting or close paraphrasing (constituting just 40%) of defendant's 192-page book), to be so quantitatively significant a taking so as to tip the third factor in favor of plaintiff; Craft v. Kobler, 667 F.Supp. 120, 128-29 (S.D.N.Y. 1987) (concluding that defendant's takings, which constituted approximately 3% of the infringing biography and "the liveliest and most entertaining part" of it, were "far too numerous and with too little instructional justification to support the conclusion of fair use").

    164

    Defendant argues that it is impossible to describe an imaginary object that exists only in a fictional world without using some of the language that invented it. Certainly, the Lexicon must be permitted to refer to an object by its invented name and describe some of its invented attributes to fulfill its purpose as a reference work; but again, the use must be reasonable in light of that purpose. The imaginary objects "clankers," for example, can be successfully described without using the original literary device ("like miniature hammers on anvils") and the original turn of phrase ("a number of small metal instruments that when shaken made a loud, ringing noise") that brought them into existence. As the Second Circuit noted in Salinger v. Random House, Inc., a copier is not entitled to copy the vividness of an author's description for the sake of accurately reporting expressive content. 811 F.2d at 96-97. Moreover, in some entries, the Lexicon copies original expression verbatim even when describing objects that are ordinary and exist in the real world. For example, the Lexicon entry for "Mirror of Erised" replicates Rowling's original language from Harry Potter and the Sorcerer's Stone to describe a mirror: "A magnificent mirror, as high as a classroom ceiling, with an ornate gold frame, standing on two clawed feet." (See supra Findings of Fact.) Verbatim copying of this nature demonstrates Vander Ark's lack of restraint due to an enthusiastic admiration of Rowling's artistic expression, or perhaps haste and laziness as Rowling suggested (Tr. (Rowling) at 62:18-20), in composing the Lexicon entries.

    165

    Determining how much copying of fictional facts and plot elements from the Harry Potter series is reasonably necessary to create a useful and complete reference guide presents a difficult task. As Vander Ark testified, "[a] reference work of th[is] kind has to have value based on how much information it gives, and so it is difficult sometimes to figure out the balance. And we tried to do the best we could to find a balance between" creating shorter descriptions that take less copyrighted material and creating a valuable entry that is as complete as possible. (Tr. (Vander Ark) at 281:20-23.) As to the Harry Potter series, the Lexicon often does demonstrate a significant condensation of narrated events in the novels to bare fictional facts. For example, the entry for "Boggart" encapsulates Professor Lupin's Defense Against the Dark Arts lesson on how to use the Riddikulus spell to defeat a boggart, spanning seven pages of lively narration and dialogue (see Pl. Ex. 6 at 133-39), in one colorless phrase: "Lupin taught his third year Defence Against the Dark Arts class to fight this with the Riddikulus spell (PA7)." (Compare also Pl. Ex. 6 at 236-42, with Pl. Ex. 1, entry for "Boggart" (stating that Lupin "used a boggart as a substitute for a Dementor in tutoring Harry (PA12)").) Other times, however, the Lexicon disturbs the balance and takes more than is reasonably necessary to create a reference guide. In these instances, the Lexicon appears to retell parts of the storyline rather than report fictional facts and where to find them. For example, the Lexicon entry for "Trelawney, Sibyll Patricia" not only copies exactly the Divination professor's prophecies about the fates of Voldemort, Harry Potter, and Peter Pettigrew, it then tells how the prophecies are fulfilled, including events that do not involve Trelawney. (Compare also Pl. Ex. 10 at 714-720, with Pl. Ex. 1, entry for "Deathly Hallows, The," ¶ 5 (retelling the story that Dumbledore tells Harry about his own quest for the Hallows with Grindelwald in Chapter 35 of the seventh novel).) 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 a number of places where the Lexicon engages in the same sort of extensive borrowing that might be expected of a copyright owner,[24] not a third party author.

    166

    The Lexicon's use of copyrighted expression from Rowling's two companion books presents an easier determination. The Lexicon takes wholesale from these short books. See supra Findings of Fact. Depending on the purpose, using a substantial portion of a work, or even the whole thing, may be permissible. See, e.g., Perfect 10, 508 F.3d at 1167-68; Bill Graham Archives, 448 F.3d at 613; Nunez v. Caribbean Int'l News Corp., 235 F.3d 18, 24 (1st Cir.2000). In this case, however, the Lexicon's purpose is only slightly transformative of the companion books' original purpose. As a result, the amount and substantiality of the portion copied from the companion books weighs more heavily against a finding of fair use.

    167
    C. Nature of the Copyrighted Work
    168

    The second statutory fair use factor, the nature of the copyrighted work, recognizes that "some works are closer to the core of intended copyright protection than others." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. It is well settled that creative and fictional works are generally more deserving of protection than factual works. Stewart v. Abend, d/b/a Authors Research Co., 495 U.S. 207, 237, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990) ("In general, fair use is more likely to be found in factual works than in fictional works."); Harper & Row, 471 U.S. at 563, 105 S.Ct. 2218 ("The law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy."); Castle Rock, 150 F.3d at 143-144 (finding that the second factor favored plaintiff given the fictional nature of the copyrighted work); Twin Peaks, 996 F.2d at 1376 (stating that the second factor "must favor a creative and fictional work, no matter how successful"); Ty, Inc. v. Publ'ns Int'l, Ltd., 333 F.Supp.2d 705, 713 (N.D.Ill.2004) (recognizing that "creative works are deemed more deserving of protection than works that are more of diligence than of originality or inventiveness." (internal quotation marks omitted)). In creating the Harry Potter novels and the companion books, Rowling has given life to a wholly original universe of people, creatures, places, and things. (Tr. (Sorensen) at 504:7-15). Such highly imaginative and creative fictional works are close to the core of copyright protection, particularly where the character of the secondary work is not entirely transformative. See Castle Rock, 150 F.3d at 144; Twin Peaks, 996 F.2d at 1376; Paramount, 11 F.Supp.2d at 336. As a result, the second factor favors Plaintiffs.

    169
    D. Market Harm
    170

    The fourth statutory factor considers "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4). Courts must consider harm to "not only the primary market for the copyrighted work, but the current and potential market for derivative works" as well. Twin Peaks, 996 F.2d at 1377 (finding that fourth factor favored plaintiff where book about television series "may interfere with the primary market for the copyrighted works and almost certainly interferes with legitimate markets for derivative works"); see also Harper & Row, 471 U.S. at 568, 105 S.Ct. 2218. Potential derivative uses "include[] only those that creators of original works would in general develop or license others to develop." Campbell, 510 U.S. at 592, 114 S.Ct. 1164. The fourth factor will favor the copyright holder "if she can show a `traditional, reasonable, or likely to be developed' market for licensing her work." Ringgold, 126 F.3d at 81. In addition to evaluating the particular actions of the alleged infringer, the fourth factor examines "whether unrestricted and widespread conduct of the sort engaged in by the defendant. . . would result in a substantially adverse impact on the potential market for the original." Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (omission in original) (internal quotation marks and citations omitted).

    171

    Plaintiffs presented expert testimony that the Lexicon would compete directly with, and impair the sales of, Rowling's planned encyclopedia by being first to market. (Tr. (Murphy) at 413:2-416:6, 417:21-418:9.) Defendant rebutted this evidence with its own expert who testified that publication of the Lexicon is "extremely unlikely" to affect the sales of any encyclopedia that Rowling might one day publish. (Id. (Harris) at 442:9-16.) This testimony does not bear on the determination of the fourth factor, however, because a reference guide to the Harry Potter works is not a derivative work; competing with Rowling's planned encyclopedia is therefore permissible. 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. See Twin Peaks, 996 F.2d at 1377 ("The author of `Twin Peaks' cannot preserve for itself the entire field of publishable works that wish to cash in on the `Twin Peaks' phenomenon"). The market for reference guides does not become derivative simply because the copyright holder seeks to produce or license one. Ty, Inc., 292 F.3d at 521; see also Castle Rock, 150 F.3d at 145 n. 11 ("[B]y developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work, a copyrighted owner plainly cannot prevent others from entering those fair use markets"); Twin Peaks, 996 F.2d at 1377.

    172

    Furthermore, there is no plausible basis to conclude that publication of the Lexicon would impair sales of the Harry Potter novels. Plaintiffs' expert Suzanne Murphy, vice president and publisher of trade publishing and marketing at Scholastic, testified that in her opinion a child who read the Lexicon would be discouraged from reading the Harry Potter series because the Lexicon discloses key plot points and does not contain "spoiler alerts." (Tr. (Murphy) at 409:12-411:7.) Children may be an elusive market for book publishers, but it is hard to believe that a child, having read the Lexicon, would lose interest in reading (and thus his or her parents' interest in purchasing) the Harry Potter series. Because the Lexicon uses the Harry Potter series for a transformative purpose (though inconsistently), reading the Lexicon cannot serve as a substitute for reading the original novels; they are enjoyed for different purposes. The Lexicon is thus unlikely to serve as a market substitute for the Harry Potter series and cause market harm. Campbell, 510 U.S. at 591, 114 S.Ct. 1164 (stating that when "the second use is transformative, market substitution is at least less certain and market harm may not be so readily inferred"); see also Castle Rock, 150 F.3d at 145; Bill Graham Archives, 448 F.3d at 614-15. It seems unlikely that a publisher like HarperCollins would produce the Companion to Narnia (Pl. Ex. 62), which reveals storylines, plot twists, and the ultimate fates of the characters in C.S. Lewis's original works, if it expected the publication would reduce sales and enthusiasm for the original works. Accordingly, the Lexicon does not present any potential harm to the markets for the original Harry Potter works. See Bill Graham Archives, 448 F.3d at 614; Castle Rock, 150 F.3d at 145.

    173

    On the other hand, publication of the Lexicon could harm sales of Rowling's two companion books. Unless they sought to enjoy the companion books for their entertainment value alone, consumers who purchased the Lexicon would have scant incentive to purchase either of Rowling's companion books, as the information contained in these short works has been incorporated into the Lexicon almost wholesale. (Tr. (Murphy) at 419:10-19; id. (Rowling) at 104:2-11.) Because the Lexicon's use of the companion books is only marginally transformative, the Lexicon is likely to supplant the market for the companion books. See Campbell, 510 U.S. at 591, 114 S.Ct. 1164 (stating that "when a commercial use amounts to mere duplication of the entirety of an original, it clearly `supersede[s] the objects' of the original and serves as a market replacement for it, making it likely that cognizable harm to the original will occur" (citation omitted)). At trial, Vander Ark himself recognized that although "[t]here's no way that someone's going to take an encyclopedia of [the Harry Potter novels] and think of it as a replacement" (Tr. (Vander Ark) at 287:14-16), using the companion books without "replac[ing] Ms. Rowling's encyclopedia content" presents "quite a challenge" (id. at 287:22-25). In view of the market harm to Rowling's companion books, the fourth factor tips in favor of Plaintiffs.

    174

    Additionally, the fourth factor favors Plaintiffs if publication of the Lexicon would impair the market for derivative works that Rowling is entitled or likely to license. Ringgold, 126 F.3d at 81. Although there is no supporting testimony, one potential derivative market that would reasonably be developed or licensed by Plaintiffs is use of the songs and poems in the Harry Potter novels. Because Plaintiffs would reasonably license the musical production or print publication of those songs and poems, Defendant unfairly harms this derivative market by reproducing verbatim the songs and poems without a license.

    175
    * * *
    176

    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. The first factor does not completely weigh in favor of Defendant because although the Lexicon has a transformative purpose, its actual use of the copyrighted works is not consistently transformative. Without drawing a line at the amount of copyrighted material that is reasonably necessary to create an A-to-Z reference guide, many portions of the Lexicon take more of the copyrighted works than is reasonably necessary in relation to the Lexicon's purpose. Thus, in balancing the first and third factors, the balance is tipped against a finding of fair use. The creative nature of the copyrighted works and the harm to the market for Rowling's companion books weigh in favor of Plaintiffs. In striking the balance between the property rights of original authors and the freedom of expression of secondary authors, reference guides to works of literature should generally be encouraged by copyright law as they provide a benefit readers and students; but to borrow from Rowling's overstated views, they should not be permitted to "plunder" the works of original authors (Tr. (Rowling) at 62:25-63:3), "without paying the customary price" Harper & Row, 471 U.S. at 562, 105 S.Ct. 2218, lest original authors lose incentive to create new works that will also benefit the public interest (see Tr. (Rowling) at 93:20-94:13).

    177
    III. Injunctive and Statutory Relief
    178

    The Copyright Act provides that courts "may" grant injunctive relief "on such terms as it may deem reasonable to prevent or restrain infringement of a copyright." 17 U.S.C. § 502(a). In eBay Inc. v. MercExchange, LLC, the Supreme Court made clear that an injunction does not automatically follow a determination that a copyright has been infringed. 547 U.S. 388, 392-93, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). A copyright plaintiff seeking a permanent injunction still must satisfy the traditional four-factor test before the district court may use its equitable discretion to grant such relief. The plaintiff must demonstrate: (1) that it will suffer an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. See Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-13, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982); Amoco Production Co. v. Gambell, 480 U.S. 531, 542, 107 S.Ct. 1396, 94 L.Ed.2d 542 (1987).

    179
    A. Irreparable Injury
    180

    Under the law of this Circuit, "generally when a copyright plaintiff makes out a prima facie showing of infringement, irreparable harm may be presumed." ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 66 (2d Cir.1996). Because Plaintiffs have demonstrated a case of copyright infringement, and because Defendant has failed to establish its affirmative defense to copyright infringement, irreparable injury may be presumed in this case. In view of eBay, which applied the traditional four-part test for injunctive relief in the context of a patent claim, there is some question of whether the presumption of irreparable harm still applies. District courts, however, have continued to apply the presumption post-eBay. See, e.g., Warner Bros. Entm't, Inc. v. Carsagno, No. 06 Civ. 2676, 2007 WL 1655666, *6 (E.D.N.Y. June 4, 2007) (finding irreparable harm where plaintiff had demonstrated that without an injunction, its copyrighted work would be subject to continued copyright infringement); UMG Recordings, Inc. v. Blake, No. 06 Civ. 00120, 2007 WL 1853956, *3 (E.D.N.C. June 26, 2007) (stating that irreparable injury is presumed when plaintiff succeeds on the merits).

    181

    Regardless, even if irreparable injury is not presumed, Plaintiffs have presented sufficient evidence that such injury would result from Defendant's infringement in the absence of relief. First, Plaintiffs have established that publication of the Lexicon will cause irreparable injury to Rowling as a writer. Rowling testified that if the Lexicon is published, it would destroy her "will or heart to continue with [writing her own] encyclopedia." (Tr. (Rowling) at 54:9-12.) She further testified that if the Lexicon is published—giving "carte blanche to ... anyone who wants to make a quick bit of money" by drawing freely from her works and opening the doors to "a surfeit of substandard so-called lexicons and guides"—she would have much less incentive to write her own book. (Tr. (Rowling) at 54:4-12.) By deterring Rowling from writing her planned encyclopedia, publication of the Lexicon would also result in harm to the charitable organizations that would receive the royalties from the sale of the book and the reading public who would be unable to enjoy such a book. (Tr. (Rowling) at 55:1-5.)

    182

    More concretely, publication of the Lexicon would cause irreparable harm to the sales of Rowling's companion books, all the elements of which are replicated in the Lexicon for a similar purpose. Readers would have no reason to purchase the companion books since the Lexicon supersedes their value. (Tr. (Rowling) at 101:25-102:12.) Additionally, because the Lexicon engages in considerable verbatim copying of the Harry Potter works, publication of the Lexicon would diminish Rowling's copyright in her own language. Based on evidence of Vander Ark's vigorous claim to his rights in the Lexicon website (Tr. (Rowling) at 100:18-101:7; id. (Vander Ark) at 312:6-313:13), publication of the Lexicon may result in conflicting assertions of copyright over the same material by Rowling on one hand and Vander Ark or RDR Books on the other. (See Tr. (Rowling) 96:10-11, 14-23 (noting her concern that if she published her own encyclopedia, RDR Books would sue her for copyright infringement, claiming that her "paraphrase ran a little too close to [Vander Ark's] paraphrasing").)

    183
    B. Inadequate Remedies at Law
    184

    If an injunction is not issued, Defendant is likely to continue infringing Plaintiffs' copyright in the future. RDR Books has actively marketed the Lexicon domestically and abroad (see supra Findings of Fact) and might gain considerable commercial success as the first Harry Potter reference guide to hit the market after Rowling's completion of the series. (Tr. (Vander Ark) at 255:7-14, 361:9-15; id. (Murphy) at 413:24-414:24; see Pl. Ex. 14N.) In view of the irreparable harm that would flow from Defendant's continuing infringement, including lost sales of Rowling's companion books and the injury to Rowling as a writer, Plaintiffs have shown that money damages alone are an insufficient remedy. See Lauratex Textile Corp. v. Allton Knitting Mills Inc., 519 F.Supp. 730, 732 (S.D.N.Y.1981) (finding that money damages would not suffice where there was a strong probability that the defendant would continue to infringe plaintiff's copyright).

    185
    C. Balance of Hardships
    186

    While Plaintiffs have identified their hardships if an injunction were not granted, Defendant identifies no hardship it would suffer if publication of the Lexicon were enjoined. The only possible harm to Defendant is the loss of the chance to sell an infringing book, but the law does not protect this type of hardship. See My-T Fine Corp. v. Samuels, 69 F.2d 76, 78 (2d Cir.1934) (Hand, J.); see also Concrete Mach. Co. v. Classic Lawn Ornaments, 843 F.2d 600, 612 (1st Cir.1988); Apple Computer Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1255 (3d Cir.1983). Thus, the balance of the hardships weighs in favor of Plaintiffs.

    187
    D. Public Interest
    188

    Issuing an injunction in this case both benefits and harms the public interest. While the Lexicon, in its current state, is not a fair use of the Harry Potter works, reference works that share the Lexicon's purpose of aiding readers of literature generally should be encouraged rather than stifled. As the Supreme Court suggested in Campbell, "[b]ecause the fair use enquiry often requires close questions of judgment as to the extent of permissible borrowing" in cases involving transformative uses, granting an injunction does not always serve the goals of copyright law, when the secondary use, though edifying in some way, has been found to surpass the bounds of fair use. Campbell, 510 U.S. at 578 n. 10, 114 S.Ct. 1164. On the other hand, to serve the public interest, copyright law must "prevent[] the misappropriation of the skills, creative energies, and resources which are invested in the protected work." Apple Computer, 714 F.2d at 1255. Ultimately, because the Lexicon appropriates too much of Rowling's creative work for its purposes as a reference guide, a permanent injunction must issue to prevent the possible proliferation of works that do the same[25] and thus deplete the incentive for original authors to create new works.

    189

    In addition to injunctive relief, Plaintiffs seek statutory damages in this case. Under the Copyright Act, a plaintiff may elect to recover an award of statutory damages for each infringed work "in a sum of not less than $750 or more than $30,000 as the court considers just." 17 U.S.C. § 504. In awarding statutory damages, courts have broad discretion to set the amount of the award within the statutory limits. Fitzgerald Publ'g Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1116-17 (2d Cir.1986). Since the Lexicon has not been published and thus Plaintiffs have suffered no harm beyond the fact of infringement, the Court awards Plaintiffs the minimum award under the statute for each work with respect to which Plaintiffs have established infringement. Plaintiffs are entitled to statutory damages of $750.00 for each of the seven Harry Potter novels and each of the two companion books, for a total of $6,750.00.

    190
    CONCLUSION
    191

    For the foregoing reasons, Plaintiffs have established copyright infringement of the Harry Potter series, Fantastic Beasts & Where to Find Them, and Quidditch Through the Ages by J.K. Rowling. Defendant has failed to establish its affirmative defense of fair use. Defendant's publication of the Lexicon (Doc. No. 22) is hereby permanently enjoined, and Plaintiffs are awarded statutory damages of $6,750.00.

    192

    IT IS SO ORDERED.

    193

    [1] Prior to the Court's present ruling, Defendant was under a temporary restraining order issued by the Court, with consent of the parties' attorneys, on November 8, 2007. Pursuant to that order, Defendant was temporarily restrained from completing the typesetting of the allegedly infringing book, from printing the book and distributing the same to the public for sale, and from advertising, promoting, soliciting, licensing, or accepting orders for the book in the United States of America and abroad.

    194

    [2] This testimony was ruled admissible over Plaintiffs' hearsay objection for the purpose of showing that Vander Ark was told by Warner Brothers that it had used the Lexicon almost every day, and not for the truth of the statement. (Tr. at 386:24-387:1.) Regardless of whether or not Warner Brothers in fact used the Lexicon website every day during the production of the film, Vander Ark had reason to believe based on this statement that the website was serving its intended purpose as a reference guide to the Harry Potter novels.

    195

    [3] Rapoport admitted that Borders' order was cancelled because of the instant lawsuit. (Tr. (Rapoport) at 241:15-23).

    196

    [4] The Companion to Narnia, however, is far more erudite and informative than the Lexicon. The Harry Potter guide by Beahm does not provide citations for the sources of its information and is less comprehensive than the Lexicon in that it covers only certain categories of information (e.g., Fabulous Beasts, Wizards, Magical Spells, etc.).

    197

    [5] Rowling went so far as to say that "if Mr. Vander Ark had put quotation marks around everything he has lifted, most of the Lexicon would be in quotation marks." (Tr. (Rowling) at 64:19-21.)

    198

    [6] Some of the most extensive direct quotation occurs where the Lexicon reproduces a song or poem that appears in the novels, such as the "Hogwarts' School Song," the Sorting Hat Song, and the poem, "His Eyes are as Green as a Fresh Pickled Toad." (Pl. Ex. 11 (Birchall Decl.) at ¶ 8, Pl. Ex. 11E-11G.) During his testimony at trial, Vander Ark conceded that these entries took too much and offered to remove the poems and songs from the Lexicon. (Tr. (Vander Ark) at 397:1-3.) In its post-trial brief, Defendant acknowledged this testimony (Def. Post-trial Br. ¶ 51, at 17), but did not confirm that Vander Ark's proposal would be adopted by RDR Books.

    199

    [7] Italics are used in the block quotations to highlight the original language that is copied or paraphrased. The italics do not appear in the originals.

    200

    [8] Having determined that the charts introduced by Plaintiffs (Pl. Exs. 47, 48, 43, and 44) do not consistently represent the language from the Lexicon with accuracy, the Court relies not on the charts but on the underlying texts themselves for its comparisons.

    201

    [9] Fantastic Beasts & Where to Find Them is fifty-nine pages including the introductory material.

    202

    [10] The passage describing the Chudley Cannons from Quidditch Through the Ages reads in full as follows:

    203

    The Chudley Cannons' glory days may be considered by many to be over, but their devoted fans live in hope of a renaissance. The Cannons have won the League twenty-one times, but the last time they did so was in 1892 and their performance over the last century has been lackluster. The Chudley Cannons wear robes of bright orange emblazoned with a speeding cannon ball and a double "C" in black. The club motto was changed in 1972 from "We shall conquer" to "Let's all just keep our fingers crossed and hope for the best."

    204

    (Pl. Ex. 2 at 33-34.) The Lexicon entry for "Chudley Cannons" reads in part as follows:

    205

    ... The Cannons wear orange robes with a speeding black cannon ball and a double letter C on them. They hail from Chudley.

    206

    The Cannons have won the league twenty-ojne [sic] times, but the last time was in 1892. As a result of this endless losing streak, the club motto, which used to be "We shall conquer", was changed in 1972 to `Let's all just keep our fingers crossed and hope for the best (QA7)....

    207

    [11] Quidditch Through the Ages contains a chart of all the fouls in quidditch and their description. (Pl. Ex. 2, at 29-30.) The Lexicon reproduces the descriptions from this chart in the entries for each of the fouls.

    208

    [12] At trial, Exhibits 45 and 46, which contain charts comparing text from the Famous Wizard Cards and The Daily Prophet with text from the Lexicon, were admitted as demonstrative exhibits, but the underlying works were not introduced.

    209

    [13] The post-trial briefs of the parties both suggest that Ringgold's quantitative/qualitative approach is the applicable test for substantial similarity in this case, and the Court agrees. Since the original and secondary works are of different genres, the question of substantial similarity is difficult to examine using the other tests applied in this Circuit. See Castle Rock, 150 F.3d at 139 ("Because in the instant case the original and secondary works are of different genres and to a lesser extent because they are in different media, tests for substantial similarity other than the quantitative/qualitative approach are not particularly helpful to our analysis.").

    210

    [14] The Court analyzes the amount of expression copied from the Harry Potter series in the aggregate, rather than from each individual novel in the series, following the Second Circuit's reasoning in Castle Rock, 150 F.3d at 138 (observing that "[o]ur precedents ... tend to support the aggregate analysis," and resolving to "treat Seinfeld—a discrete, continuous television series—as a single work"). Cautioning against the aggregate approach used in Castle Rock, the Nimmer treatise warns that the "broader the series, the more all-encompassing plaintiff's copyright becomes, thereby squelching new expression in direct defiance to copyright's mandate of stimulating the production of new works." 4 Nimmer § 13.03[A][3]. In this case, however, because the Harry Potter novels tell one coherent narrative in a series, rather than tell discrete tales, the danger identified by Nimmer is less likely to exist.

    211

    [15] Not included in the Court's quantitative analysis is the small amount of information appearing in these 450 pages that is taken from other sources, common knowledge, or Vander Ark's contribution.

    212

    [16] Moreover, the Lexicon's arrangement of fictional facts, although far more extensive, is not so different from that of Fantastic Beasts, which organizes descriptions of creatures in alphabetical order, and Quidditch Through the Ages, which contains individual descriptions of quidditch fouls, teams, and countries where quidditch is played.

    213

    [17] The law in this Circuit has recognized that "even when one work is `based upon' another, `if the secondary work sufficiently transforms the expression of the original work such that the two works cease to be substantially similar, then the secondary work is not a derivative work and, for that matter, does not infringe the copyright of the original work.'" Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 117 (2d Cir.2003) (quoting Castle Rock, 150 F.3d at 143 n. 9).

    214

    [18] This distinction is critical to the difference between derivative works, which are infringing, and works of fair use, which are permissible. See Castle Rock, 150 F.3d at 143 ("Although derivative works that are subject to the author's copyright transform an original work into a new mode of presentation, such works—unlike works of fair use—take expression for purposes that are not "transformative.""); Twin Peaks, 996 F.2d at 1375-76 (suggesting that whether an abridgement is a fair use rather than a derivative work may depend on whether it serves "a transformative function and elaborates in detail far beyond what is required to serve any legitimate purpose"). But see Blanch v. Koons, 467 F.3d 244, 252 n. 4 ("A derivative use can certainly be complementary to, or fulfill a different function from, the original.").

    215

    [19] Also, unlike the defendants in Castle Rock who used the cachet of Seinfeld on the cover of the trivia book to entice fans, RDR Books has changed the title of the Lexicon to bear no reference to Harry Potter and at Plaintiffs' request added a prominent disclaimer on the book's cover.

    216

    [20] In its original motion papers, Defendant argued that the Lexicon was a work of scholarship. In his testimony at trial, Roger Rapoport maintained this position. Defendant's fair use defense has since changed its angle and no longer characterizes the Lexicon as a scholarly work. Defendant's expert Janet Sorensen admits that the Lexicon book is not a work of scholarship (Tr. (Sorensen) at 538:14-15), and Vander Ark testified that commentary and analysis are not the purpose of the Lexicon (Tr. (Vander Ark) at 283:8-14).

    217

    [21] Nor does the Court find Defendant's allegations of Plaintiffs' copyright misuse and unclean hands to amount to more than aggressive protective actions permitted by copyright law. Defendant apparently agreed, as it abandoned these defenses by the end of trial.

    218

    [22] To demonstrate that "Albus Dumbledore" could be described without using Rowling's words or details from the novels, Plaintiffs use the testimony of Defendant's expert, identifying Dumbledore as "the master of Hogwarts in Harry's time there and for decades before that. He's one of the main characters. He's sort of very wise, almost a kind of father figure to Harry. He is the leader of the sort of good force in the novel." (Tr. (Sorensen) at 514:13-18.)

    219

    [23] Plaintiffs suggest that the Lexicon could have described "Bertie Bott's Every Flavor Beans" as follows: "A favorite candy in the wizarding world, similar to jellybeans but with unexpected and sometimes disgusting flavors." (Pl. Post-trial Br. at 42.)

    220

    [24] In fact, the Lexicon borrows from the Harry Potter works with approximately the same liberty that the Companion to Narnia (Pl. Ex. 62), written by third-party author Paul F. Ford and published by copyright holder HarperCollins, borrows from C.S. Lewis's The Chronicles of Narnia.

    221

    [25] See Tr. (Murphy) at 419:24-2 (stating her opinion that publication of the Lexicon would open the doors to widespread creation of works that copy too much from the Harry Potter works).

  • 2 Nash v. CBS, Inc.

    Is it copyright infringement to include the central thesis of a non-fiction book in a work of fiction?

    Notes: Author Jay Robert Nash wrote non-fiction books about famed criminal John Dillinger, imagining that he did not die at the hands of the <span class="caps">FBI</span> but instead lived to a ripe age in California. An episode of the <span class="caps">CBS</span> police procedural Simon and Simon used this premise and Nash sued for copyright infringement. (Circuit Opinion)
    1

    [p. 1537]

    2
    899 F.2d 1537
    3
    1990 Copr.L.Dec. P 26,563, 14 U.S.P.Q.2d 1755,
    17 Media L. Rep. 1798
    4
    Jay Robert NASH, Plaintiff-Appellant,
    v.
    CBS, INC., et al., Defendants-Appellees.
    5
    No. 89-1823.
    6
    United States Court of Appeals,
    Seventh Circuit.
    7
    Argued Jan. 24, 1990.
    Decided April 23, 1990.
    8

            Martin S. Agran, Agran & Agran, E. Leonard Rubin, Willian, Brinks, Olds, Hofer, Gilson & Lione, Chicago, Ill., Harvey C. Gordon, Glenview, Ill., for plaintiff-appellant.

    9

    [p. 1538]

    10

            William G. Schopf, Jr., Paula Litt, Schopf & Weiss, Chicago, Ill., for defendants-appellees.

    11

            Before FLAUM and EASTERBROOK, Circuit Judges, and GRANT, Senior District Judge. *

    12

            EASTERBROOK, Circuit Judge.

    13

            John Dillinger, Public Enemy No. 1, died on July 22, 1934, at the Biograph Theater in Chicago. He emerged from the air conditioned movie palace into a sweltering evening accompanied by two women, one wearing a bright red dress. The "lady in red", Anna Sage, had agreed to betray his presence for $10,000. Agents of the FBI were waiting. Alerted by Polly Hamilton, the other woman, Dillinger wheeled to fire, but it was too late. A hail of bullets cut him down, his .45 automatic unused. William C. Sullivan, The Bureau 30-33 (1979). Now a national historic site, the Biograph bears a plaque commemorating the event. It still shows movies, and the air conditioning is no better now than in 1934.

    14

            Jay Robert Nash believes that Dillinger did not die at the Biograph. In Dillinger: Dead or Alive? (1970), and The Dillinger Dossier (1983), Nash maintains that Dillinger learned about the trap and dispatched Jimmy Lawrence, a small-time hoodlum who looked like him, in his stead. The FBI, mortified that its set-up had no sting, kept the switch quiet. Nash points to discrepancies between Dillinger's physical characteristics and those of the corpse: Dillinger had a scar on his upper lip and the corpse did not; Dillinger lacked a tooth that the corpse possessed; Dillinger had blue eyes, the corpse brown eyes; Dillinger's eyebrows were thicker than those of the corpse. Although Dillinger's sister identified the dead man, Nash finds the circumstances suspicious, and he is struck by the decision of Dillinger's father to encase the corpse in concrete before burial. As part of the cover-up, according to Nash, the FBI planted Dillinger's fingerprints in the morgue. After interviewing many persons connected with Dillinger's gang and the FBI's pursuit of it, Nash tracked Dillinger to the west coast, where Dillinger married and lay low. Nash believes that he survived at least until 1979. The Dillinger Dossier contains pictures of a middle-aged couple and then an elderly man who, Nash believes, is Dillinger in dotage. Nash provides capsule versions of his conclusions in his Bloodletters and Badmen: A Narrative Encyclopedia of American Criminals from the Pilgrims to the Present (1973), and his expose Citizen Hoover (1972). **

    15

            Nash's reconstruction of the Dillinger story has not won adherents among historians--or the FBI. Someone in Hollywood must have read The Dillinger Dossier, however, because in 1984 CBS broadcast an episode of its Simon and Simon series entitled The Dillinger Print. Simon and Simon featured brothers Rick and A.J. Simon, private detectives in San Diego. The district court summarized the episode, 704 F.Supp. 823, 828-29 (N.D.Ill.1989):

    16

            The opening scene of The [Dillinger] Print shows Ty Becker, a retired FBI agent, telling his grandchildren about Dillinger's life and the shooting outside the Biograph Theater on July 22, 1934. Ty also mentions that he doubts Dillinger was the man who was shot that night and vows to track him down some day. After the grandchildren leave with his daughter Addie, an intruder breaks into Ty's home, steals an old gun which once belonged to Dillinger, and kills Ty with the gun.

    17

            Concerned that the police would regard Ty's death as a typical murder incident to burglary rather than related to moonlighting [p. 1539] she suspected he was performing for the FBI, Addie hires the Simons. Next, Addie goes to the bank to remove her father's safety deposit box. While she is in the vault, a masked man, wearing 1930s-style spectator shoes, shoots tear gas into the bank and steals Ty's safety deposit box. The Simons arrive at the bank soon thereafter and pick up the thief's gun, which turns out to be the Dillinger gun stolen from Ty's house. Police investigation later reveals that the gun bears the fresh fingerprint of John Dillinger.

    18

            The Simons are next seen purchasing newspapers which are carrying the story that Dillinger may be alive. As the Simons discuss the case, A.J. reads from a book entitled "Twentieth Century Desperadoes." He implies that some evidence supports the idea Dillinger is alive and relates to Rick several physical discrepancies between Dillinger and the corpse described in the 1934 autopsy. Nash cites the same discrepancies in his books.

    19

            Numerous Dillinger impostors soon come forward, and the FBI enters the case. However, FBI Agent Kinneman, who is a friend of A.J.'s, informs the Simons that Ty Becker was not working for the FBI at the time of his death.

    20

            The scene then switches to a health club. As A.J. and Kinneman are playing racquetball, a man wearing a trench coat and spectator shoes enters the club and, from the viewing area, sprays a salvo of bullets over A.J. and Kinneman. Afterwards, A.J. solemnly swears revenge against Dillinger or whoever tried to shoot him.

    21

            The next day, the Simons visit the police station and discover that "leads" regarding Dillinger's whereabouts have poured in from all over the world. They agree to check out a few leads, including one that takes them to a dentist in San Diego. The dentist rejects the Simons' suggestion that Dillinger lives in his house and attributes the police tip to a crazy woman who lives across the street.

    22

            The Simons and Addie then pay a visit to Ty Becker's old secretary, who informs them that Ty was working on an internal FBI investigation at the time he was killed. Immediately thereafter, the Simons and Addie receive a call from Kinneman, who tells them that "there is more truth to this" Dillinger affair than anyone had imagined and that the Simons should meet him at a closed-down theater.

    23

            When the Simons and Addie enter the theater, a gangster documentary is playing. Kinneman and a man wearing spectator shoes shoot at the trio. The Simons eventually kill the man in spectator shoes. They then subdue Kinneman, who admits to killing Ty Becker in order to stop the internal investigation which, it turns out, was directed at Kinneman, and to leaving the fake Dillinger fingerprint on the gun at the bank.

    24

            In the penultimate scene, the FBI thanks the Simons for their help in arresting Kinneman and solving the Dillinger mystery. Rick nevertheless insists Dillinger may be alive and perhaps living in Oregon.... The episode closes with a teaser: the dentist, one of the leads whom the Simons had interviewed earlier in the program, is seen pushing his elderly father in a wheelchair and admonishing him to refrain from discussing the "old days in Chicago" anymore.

    25

            Nash filed this suit seeking damages on the theory that The Dillinger Print violates his copyrights in the four books setting out his version of Dillinger's escape from death and new life on the west coast. The district court determined that the books' copyrighted material consists in Nash's presentation and exposition, not in any of the historical events. 691 F.Supp. 140 (N.D.Ill.1988). CBS then moved for summary judgment, conceding for this purpose both access to Nash's books and copying of the books' factual material. The court granted this motion, 704 F.Supp. 823, holding that The Dillinger Print did not appropriate any of the material protected by Nash's copyrights.

    26

            CBS's concession removes from this case two questions that bedevil copyright litigation. See Selle v. Gibb, 741 F.2d 896, 901-[p. 1540] 02 (7th Cir.1984). It leaves the questions whether the copier used matter that the copyright law protects and, if so, whether it took "too much" (that is, more than allowed by the "fair use" doctrine codified in 17 U.S.C. Sec. 107). See Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 614-17 (7th Cir.1982); Toksvig v. Bruce Pub. Co., 181 F.2d 664 (7th Cir.1950). These latter questions have proven especially difficult when, as in this case, the copier works in a medium different from the original.

    27

            Learned Hand, whose opinions still dominate this corner of the law, observed in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930), that all depends on the level of abstraction at which the court conceives the interest protected by the copyright. If the court chooses a low level (say, only the words the first author employed), then a copier may take the plot, exposition, and all other original material, even though these may be the most important ingredients of the first author's contribution. As a practical matter this would mean that anyone could produce the work in a new medium without compensating the original author, despite the statute's grant to the author of the privilege to make "derivative works". If on the other hand the court should select a high level of abstraction, the first author may claim protection for whole genres of work ("the romantic novel" or, more modestly, any story involving doomed young lovers from warring clans, so that a copyright on Romeo and Juliet would cover West Side Story too). Even a less sweeping degree of abstraction creates a risk of giving copyright protection to "the idea" although the statute protects only "expression". 17 U.S.C. Sec. 102(b); Holmes v. Hurst, 174 U.S. 82, 86, 19 S.Ct. 606, 607, 43 L.Ed. 904 (1899); Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954); Rockford Map Publishers, Inc. v. Directory Service Co., 768 F.2d 145 (7th Cir.1985); Miller v. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir.1981); United Telephone Co. v. Johnson Publishing Co., 855 F.2d 604, 608-09 (8th Cir.1988).

    28

            Sometimes called the "abstractions test", Hand's insight is not a "test" at all. It is a clever way to pose the difficulties that require courts to avoid either extreme of the continuum of generality. It does little to help resolve a given case, even when melded with Hand's further observation, in cases such as Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960), that one may ask what the "ordinary observer" would think are the essential parts of the two works' "aesthetic appeal". See also Selle, 741 F.2d at 903-05. Who is the "ordinary" observer, and how does this person choose the level of generality? Ordinary observers, like reasonable men in torts, are fictitious characters of the law, reminders that judges must apply objective tests rather than examine their own perceptions. They do not answer the essential question: at what level of generality? After 200 years of wrestling with copyright questions, it is unlikely that courts will come up with the answer any time soon, if indeed there is "an" answer, which we doubt.

    29

            Hand returned again and again to the opposing forces that make the formulation of a single approach so difficult. Intellectual (and artistic) progress is possible only if each author builds on the work of others. No one invents even a tiny fraction of the ideas that make up our cultural heritage. Once a work has been written and published, any rule requiring people to compensate the author slows progress in literature and art, making useful expressions "too expensive", forcing authors to re-invent the wheel, and so on. Every work uses scraps of thought from thousands of predecessors, far too many to compensate even if the legal system were frictionless, which it isn't. Because any new work depends on others even if unconsciously, broad protection of intellectual property also creates a distinct possibility that the cost of litigation--old authors trying to get a "piece of the action" from current successes--will prevent or penalize the production of new works, even though the claims be rebuffed. Authors as a group therefore might prefer limited protection for their writings--they gain in the ability to use others' works [p. 1541] more than they lose in potential royalties. See William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Legal Studies 325, 332-33, 349-59 (1989).

    30

            Yet to deny authors all reward for the value their labors contribute to the works of others also will lead to inefficiently little writing, just as surely as excessively broad rights will do. The prospect of reward is an important stimulus for thinking and writing, especially for persons such as Nash who are full-time authors. Before the first work is published, broad protection of intellectual property seems best; after it is published, narrow protection seems best. At each instant some new works are in progress, and every author is simultaneously a creator in part and a borrower in part. In these roles, the same person has different objectives. Yet only one rule can be in force. This single rule must achieve as much as possible of these inconsistent demands. Neither Congress nor the courts has the information that would allow it to determine which is best. Both institutions must muddle through, using not a fixed rule but a sense of the consequences of moving dramatically in either direction.

    31

            If Nash had written a novel that another had translated into a screenplay, this would be a difficult case. Although The Dillinger Print is substantially original, it does not matter that almost all of the second author's expression is new. "[N]o plagiarist can excuse the wrong by showing how much of his work he did not pirate." Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936) (L. Hand, J.). The TV drama took from Nash's works the idea that Dillinger survived and retired to the west coast, and employed many of the ingredients that Nash used to demonstrate that the man in the Cook County morgue was not Dillinger. CBS even used one of Nash's books as a prop: "Twentieth Century Desperadoes" in The Dillinger Print is a ringer for Nash's Bloodletters and Badmen. To see that The Dillinger Print is in a sense a "derivative work", we need only imagine how we would react if Nash had written a short story based on the premise that Dillinger was really a woman masquerading as a man, and CBS had used a switch in sex roles as the centerpiece of a drama. In such an event we would need to decide, as Hand did in Sheldon, whether the portions CBS took over were qualitatively so important that the original author's market would be diminished excessively by a rule allowing similar appropriations in the regular course.

    32

            Nash does not portray The Dillinger Dossier and its companion works as fiction, however, which makes all the difference. The inventor of Sherlock Holmes controls that character's fate while the copyright lasts; the first person to conclude that Dillinger survived does not get dibs on history. If Dillinger survived, that fact is available to all. Nash's rights lie in his expression: in his words, in his arrangement of facts (his deployment of narration interspersed with interviews, for example), but not in the naked "truth". The Dillinger Print does not use any words from The Dillinger Dossier or Nash's other books; it does not take over any of Nash's presentation but instead employs a setting of its own invention with new exposition and development. Physical differences between Dillinger and the corpse, planted fingerprints, photographs of Dillinger and other gangsters in the 1930s, these and all the rest are facts as Nash depicts them. (Nash did not take the photographs and has no rights in them; The Dillinger Print used the photos but not Nash's arrangement of them.)

    33

            The cases closest to ours are not plays translated to the movie screen (as in Sheldon ) but movies made from speculative works representing themselves as fact. For example, Universal made a motion picture based on the premise that an idealistic crewman planted a bomb that destroyed the dirigible Hindenburg on May 6, 1937. The theory came straight from A.A. Hoehling's Who Destroyed the Hindenburg? (1962), a monograph based on exhaustive research. The motion picture added sub-plots and development, but the thesis and the evidence adduced in support of it could be traced to Hoehling. Nonetheless, the [p. 1542] Second Circuit concluded that this did not infringe Hoehling's rights, because the book placed the facts (as opposed to Hoehling's exposition) in the public domain. Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (1980). See also Miller v. Universal City Studios (facts about a notorious kidnapping are not protected by copyright). Cf. Musto v. Meyer, 434 F.Supp. 32 (S.D.N.Y.1977) (idea for The Seven Per Cent Solution derived from article in medical journal).

    34

            Hoehling suggested that "[t]o avoid a chilling effect on authors who contemplate tackling an historical issue or event, broad latitude must be granted to subsequent authors who make use of historical subject matter, including theories or plots". 618 F.2d at 978. As our opinion in Toksvig shows, we are not willing to say that "anything goes" as long as the first work is about history. Toksvig held that the author of a biography of Hans Christian Andersen infringed the copyright of the author of an earlier biography by using portions of Andersen's letters as well as some of the themes and structure. Hoehling rejected Toksvig, see 618 F.2d at 979, concluding that "[k]nowledge is expanded ... by granting new authors of historical works a relatively free hand to build upon the work of their predecessors." Id. at 980 (footnote omitted). With respect for our colleagues of the east, we think this goes to the extreme of looking at incentives only ex post. The authors in Hoehling and Toksvig spent years tracking down leads. If all of their work, right down to their words, may be used without compensation, there will be too few original investigations, and facts will not be available on which to build.

    35

            In Toksvig the first author, who knew Danish, spent three years learning about Andersen's life; the second author, who knew no Danish, wrote her biography in less than a year by copying out of the first book scenes and letters that the original author discovered or translated. Reducing the return on such effort, by allowing unhindered use, would make the initial leg-work less attractive and so less frequent. Copyright law does not protect hard work (divorced from expression), and hard work is not an essential ingredient of copyrightable expression (see Rockford Map ); to the extent Toksvig confuses work or ideas with expression, it has been justly criticized. Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 310 (2d Cir.1966); Miller v. Universal City Studios, 650 F.2d at 1371; William F. Patry, The Fair Use Privilege in Copyright Law 65-70 (1985). See also Eisenschiml v. Fawcett Publications, Inc., 246 F.2d 598, 604 (7th Cir.1957) (recognizing both that any two treatments of the same historical subject will be similar because the facts limit the author's freedom, and that a scholar is entitled to use a predecessor's work). We need not revisit Toksvig on its own facts to know that it is a mistake to hitch up at either pole of the continuum between granting the first author a right to forbid all similar treatments of history and granting the second author a right to use anything he pleases of the first's work. Cf. New Era Publications v. Henry Holt & Co., 873 F.2d 576 (2d Cir.), rehearing en banc denied, 884 F.2d 659 (1989).

    36

            Authors of fiction do not (necessarily) need greater incentives than authors of non-fiction. Users of and elaborators on works of non-fiction are not (necessarily) more easily dissuaded than are those who use or elaborate on works of fiction. Decisions such as Hoehling do not come straight from first principles. They depend, rather, on the language of what is now 17 U.S.C. Sec. 102(b): "In no case does copyright protection for an original work ... extend to any idea, ... or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." Long before the 1976 revision of the statute, courts had decided that historical facts are among the "ideas" and "discoveries" that the statute does not cover. International News Service v. Associated Press, 248 U.S. 215, 234, 39 S.Ct. 68, 71, 63 L.Ed. 211 (1918). This is not a natural law; Congress could have made copyright broader (as patent law is). But it is law, which will come as no surprise to Nash. His own books are largely fresh [p. 1543] expositions of facts looked up in other people's books. Consider the introduction to the bibliography in Murder, America: Homicide in the United States from the Revolution to the Present 447 (1980):

    37

    The research for this book was done in libraries and archives throughout the United States, in addition to interviews and lengthy correspondence. The author's own files, exceeding more than a quarter of a million separate entries and a personal crime library of more than 25,000 volumes, were heavily employed.

    38

            The producers of Simon and Simon used Nash's work as Nash has used others': as a source of facts and ideas, to which they added their distinctive overlay. As the district court found, CBS did no more than Sec. 102(b) permits. Because The Dillinger Print uses Nash's analysis of history but none of his expression, the judgment is

    39

            AFFIRMED.

    40

    ---------------

    41

    * The Honorable Robert A. Grant, of the Northern District of Indiana, sitting by designation.

    42

    ** Nash's other works include Darkest Hours: A Narrative Encyclopedia of Worldwide Disasters from Ancient Times to the Present (1976); Murder, America: Homicide in the United States from the Revolution to the Present (1980); Look for the Woman: A Narrative Encyclopedia of Female Prisoners, Kidnappers, Thieves, Extortionists, Terrorists, Swindlers and Spies from Elizabethan Times to the Present (1981); and Murder Among the Mighty: Celebrity Slayings that Shocked America (1983). The record does not reveal whether he is the life of the party wherever he goes.

  • 3 Nash v. CBS, INC.

    Is it copyright infringement to include the central thesis of a non-fiction book in a work of fiction?

    Notes: Author Jay Robert Nash wrote non-fiction books about famed criminal John Dillinger, imagining that he did not die at the hands of the <span class="caps">FBI</span> but instead lived to a ripe age in California. An episode of the <span class="caps">CBS</span> police procedural Simon and Simon used this premise and Nash sued for copyright infringement. (District Opinion)
    1

    704 F. Supp. 823

    Jay Robert NASH, Plaintiff,
    v.
    CBS, INC., MCA, Inc.; MCA Television, Ltd.; Universal City Studios, Inc.; William WhiteHead; Harry Butler, Logan Clarke, Bill Dial, Richard Chapman, GEORGE Geiger, Michael Pillar, Defendants.

    No. 86 C 511.

    United States District Court, N.D. Illinois, E.D.

    January 10, 1989.

    3

    [704 F. Supp. 824]

    4

            COPYRIGHT MATERIAL OMITTED

    5

    [704 F. Supp. 825]

    6

    Martin S. Agran, Agran & Agran, Chicago, Ill., Harvey C. Gordon, Glenview, Ill., E. Leonard Rubin, William Brinks Olds Hofer Gilson & Lione, Ltd., Chicago, Ill., for plaintiff.

    7

            William G. Schopf, Jr., Paula Litt, Schopf & Weiss, Chicago, Ill., for defendants.

    8
            MEMORANDUM OPINION
    9

            GRADY, Chief Judge.

    10

            This copyright case comes before us on two motions: (1) the defendants' motion for summary judgment on Count I, and (2) the defendants' motion to dismiss or, in the alternative, for judgment on the pleadings with respect to Counts II and III. We grant the first motion. We grant in part and deny in part the second motion.

    11
            COUNT I: COPYRIGHT INFRINGEMENT
    12

            In order to recover for copyright infringement, plaintiff Jay Robert Nash ("Nash") must prove (1) that he owns a valid copyright in the subject material and (2) that the defendants copied such material. In our previous opinion, Nash v. CBS, 691 F.Supp. 140 (N.D.Ill.1988), we addressed only Nash's ability to prove the first element of a copyright cause of action. We concluded that Nash's books contain his "copyrightable" Dillinger Story and that, assuming he possesses all other necessary attributes of copyright ownership,1 he holds a valid copyright on the Dillinger Story. On this motion, the defendants switch their focus and challenge Nash's ability to prove the second element of his copyright infringement claim. Defendants argue that there is no genuine issue of material fact as to whether they copied Nash's Dillinger Story. Specifically, they assert that "The Dillinger Print" ("The Print") episode of their television series "Simon and Simon" is not substantially similar to Nash's Dillinger Story.

    13
            Background
    14

            Before we consider the similarity, if any, between The Print and Nash's books, a brief review of copyright doctrine may be helpful. The parties devote much of their briefs to doctrinal arguments, and a review of the law should clear up these arguments. Moreover, a review should clarify where our decision fits within the overall framework of copyright law.

    15

            As we noted, in order to prove copyright infringement, a plaintiff must prove (1) ownership of a valid copyright and (2) copying. Atari v. North American, 672 F.2d 607, 614 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982). Because direct evidence of copying is rare, the plaintiff normally proves this element by circumstantial evidence. Id. Under Seventh Circuit case law, there appear to be at least two recognized methods to prove copying circumstantially. Under the first method, the plaintiff proves (1) that the defendant had "access" to the copyrighted material and (2) that the accused material is "substantially similar" to plaintiff's copyrighted expression. Id. The second method is a variation on the first. If the plaintiff shows that his material is "strikingly similar" to the defendant's, then he has a reduced burden in proving "access." See Selle v. Gibb, 741 F.2d 896 (7th Cir.1984).

    16

            How much the second method reduces the plaintiff's burden in showing access is unclear under current case law. However, it is certain that the plaintiff must produce some evidence from which a reasonable inference of "access" can be drawn, no matter how "strikingly similar" [704 F. Supp. 826] the works are. Id. at 901. In the words of the Seventh Circuit, a plaintiff must show more than a "bare possibility," "conjecture" or "speculation" of "access." Id. at 902-903. Conversely, the Seventh Circuit has suggested that where evidence of access is strong, the plaintiff's burden in showing "striking similarity" may be reduced. See Id. at n. 4. Fortunately, this case does not require us to parse the distinctions between these relative burdens of proof. See Nimmer, Nimmer on Copyright, § 13.023 (criticizing the Seventh Circuit's reasoning in Selle). The Seventh Circuit and all commentators agree that, even if a plaintiff utilizes this second method of circumstantial proof, he must show that his copyrighted expression is "substantially similar" to the defendant's accused work. Id. at 900-901; Nimmer, Nimmer on Copyright,§ 13.02B, § 13.03A. Therefore, if Nash cannot show, as the defendants contend, that The Print is "substantially similar" to the Dillinger Story, he cannot prove "copying" by means of either recognized method of circumstantial proof.

    17

            The standard for determining "substantial similarity," is somewhat nebulous. The Seventh Circuit has framed the inquiry as a two-part test: "(1) whether the defendant copied from the plaintiff's work and (2) whether the copying, if proven, went so far as to constitute an improper appropriation." Atari, 672 F.2d at 614. At first blush, it appears that the first prong of this test is simply a restatement of the second element of a copyright cause of action, i.e., "copying." Indeed, the Seventh Circuit has not clearly described the nature of the first prong inquiry. See e.g., Scott v. WKJG, 376 F.2d 467 (7th Cir.), cert. denied, 389 U.S. 832, 88 S.Ct. 101, 19 L.Ed.2d 91 (1967). Other circuits have suggested alternative formulations for this inquiry. See Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946) (holding that dissection and expert testimony is proper) and Sid and Marty Krofft Television v. McDonald's Corp., 562 F.2d 1157, 1164 (calling for "extrinsic-intrinsic test"). Fortunately, we can again dodge the bullet on a tough question of copyright law. As the defendant has agreed to assume "copying" (as that term is used in the first prong of the "substantial similarity" test), Defendants' Memorandum Supporting Motion for Summary Judgment on Issue of Substantial Similarity at 3, we need not address this issue.

    18

            Therefore, our focus on this motion is the second prong of the "substantial similarity" test, i.e. "unlawful appropriation." Courts have developed a "test" for assessing unlawful appropriation. The Seventh Circuit refers to it as the "lay observer test" and defines the inquiry as "whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value." Atari, 672 F.2d at 614.

    19

            Nash argues that, in making this determination, the trier of fact should compare the "total concept and feel" of his books with that of The Print. He would thus have us consider similarities between his books in their entirety, including their unprotected portions, and The Print. We disagree. The Seventh Circuit has clearly stated that "the ordinary observer test, in application, must take into account that the copyright laws preclude appropriation of only those elements of the work that are protected by the copyright." Id. Thus, Nash cannot show unlawful appropriation on the basis that his books and The Print share unprotected expression, e.g., "ideas" and "facts." As we have already held that the only relevant copyrightable material in Nash's books is his Dillinger Story, we look only to whether a reasonable trier of fact could find that The Print "unlawfully appropriated" Nash's Dillinger Story.

    20

            We need to discuss only one more legal issue before turning to our comparison of The Print and The Dillinger Story. Because "unlawful appropriation" can be such an elusive concept, courts have suggested numerous approaches by which to compare a copyrighted work and allegedly infringing material. With respect to literary works, the Seventh Circuit has approved the "abstractions test" and its "refinement," the so-called "pattern test." [704 F. Supp. 827] Atari,672 F.2d at n. 8. Judge Learned Hand described the abstractions test as follows:

    21
    "Upon any work ... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.... There is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas," to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.... As respects plays, the controversy chiefly centers upon the characters and sequence of incident, these being the substance."
    22

            Atari, 672 F.2d at 615-16, quoting Nichols v. Universal Pictures, 45 F.2d 119, 121 (2d Cir.1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931) (emphasis added).

    23

            Building on Judge Hand's analysis, Professor Chafee articulated his pattern test: "No doubt the line does lie somewhere between the author's idea and the precise form in which he wrote it down.... Protection covers the "pattern" of the work ... the sequence of events, and the development of the interplay of characters." Atari, 672 F.2d at n. 8, quoting Chafee, Reflections on the Law of Copyright, 45 Colum.L.Rev. 503, 513 (1945).2

    24

            In sum, on this motion we must examine whether a reasonable trier of fact could find that The Print unlawfully appropriated The Dillinger Story. To do so, we will compare the works at issue by using the abstractions and pattern tests approved by the Seventh Circuit. We now turn to the works at issue.

    25
            THE WORKS AT ISSUE
    26
            1. Nash's Books
    27

            Nash contends that his Dillinger Story appears in four of his books: Dillinger: Dead or Alive? ("DDOA"), The Dillinger Dossier ("TDD"), Citizen Hoover ("CH"), and Bloodletters and Badmen ("BAB"). Indeed, each book contains passages asserting that Dillinger did not die outside the Biograph Theater in 1934.

    28

            In BAB, Nash's encyclopedia of famous criminals, the short biographical section on Dillinger contains an outline of Nash's theory that Dillinger did not die in 1934. CH also gives a brief description of Nash's contention that the FBI killed the wrong man outside the Biograph Theater. Further, it includes Nash's belief that J. Edgar Hoover participated in a cover-up of the mistaken shooting. By contrast, TDD and DDOA3 are 200-plus page accounts of how Nash's investigative reporting uncovered the "truth" about Dillinger. The books contain exhaustive expositions of Nash's theory regarding Dillinger. In both books, Nash switches back and forth between several formats: first-person narration of his reporting, biographical discussions of Dillinger and his compatriots, and accounts of interviews Nash conducted with certain figures in Dillinger's life.

    29

            Despite differences in format and style, all four books make the same argument: that Dillinger was not shot outside the Biograph Theater on July 22, 1934. According to Nash, on that night in 1934, the [704 F. Supp. 828] FBI killed Jimmy Lawrence, a small-time hoodlum who was posing as Dillinger. After 1934, Nash believes that Dillinger moved to the West Coast, where he remained until at least 1979. In support of his theory, Nash points to numerous discrepancies between the physical characteristics of Dillinger and the corpse described in the 1934 autopsy, the FBI's alleged "planting" of Dillinger's fingerprints in the Cook County morgue, the supposedly unreliable identification of the corpse made by Dillinger's sister, the decision of Dillinger's father to encase the coffin in cement, and many other facts. Nash also recounts numerous interviews which purportedly support his theory.

    30

            In our earlier opinion, we held that the only relevant copyrightable material in Nash's books is what we called his Dillinger Story. In other words, we found that the way in which Nash employs certain facts and evidence to create his own story about Dillinger is copyrightable. However, as our earlier opinion emphasized, this protection is limited: "Our holding is very narrow. We hold only that Nash's interpretative Dillinger Story is copyrightable. Neither the idea that Dillinger did not die in 1934 nor the historical facts cited by Nash in support of the Dillinger Story are protected." See Jay Robert Nash v. CBS, Inc., et al., 691 F.Supp. at 143. Thus, we must look to whether The Print appropriated The Dillinger Story, the copyrightable element of Nash's works.

    31
            2. The Dillinger Print
    32

            The Print is an episode of "Simon and Simon," a weekly television series featuring two brothers, Rick and A.J. Simon, who work together as private detectives in San Diego. The opening scene of The Print shows Ty Becker, a retired FBI agent, telling his grandchildren about Dillinger's life and the shooting outside the Biograph Theater on July 22, 1934. Ty also mentions that he doubts Dillinger was the man who was shot that night and vows to track him down some day. After the grandchildren leave with his daughter Addie, an intruder breaks into Ty's home, steals an old gun which once belonged to Dillinger, and kills Ty with the gun.

    33

            Concerned that the police would regard Ty's death as a typical murder incident to burglary rather than related to moonlighting she suspected he was performing for the FBI, Addie hires the Simons. Next, Addie goes to the bank to remove her father's safety deposit box. While she is in the vault, a masked man, wearing 1930s-style spectator shoes, shoots tear gas into the bank and steals Ty's safety deposit box. The Simons arrive at the bank soon thereafter and pick up the thief's gun, which turns out to be the Dillinger gun stolen from Ty's house. Police investigation later reveals that the gun bears the fresh fingerprint of John Dillinger.

    34

            The Simons are next seen purchasing newspapers which are carrying the story that Dillinger may be alive. As the Simons discuss the case, A.J. reads from a book entitled "Twentieth Century Desperadoes." He implies that some evidence supports the idea Dillinger is alive and relates to Rick several physical discrepancies between Dillinger and the corpse described in the 1934 autopsy. Nash cites the same discrepancies in his books.

    35

            Numerous Dillinger impostors soon come forward, and the FBI enters the case. However, FBI Agent Kinneman, who is a friend of A.J.'s, informs the Simons that Ty Becker was not working for the FBI at the time of his death.

    36

            The scene then switches to a health club. As A.J. and Kinneman are playing racquetball, a man wearing a trench coat and spectator shoes enters the club and, from the viewing area, sprays a salvo of bullets over A.J. and Kinneman. Afterwards, A.J. solemnly swears revenge against Dillinger or whoever tried to shoot him.

    37

            The next day, the Simons visit the police station and discover that "leads" regarding Dillinger's whereabouts have poured in from all over the world. They agree to check out a few leads, including one that takes them to a dentist in San Diego. The dentist rejects the Simons' suggestion that Dillinger lives in his house and attributes [704 F. Supp. 829] the police tip to a crazy woman who lives across the street.

    38

            The Simons and Addie then pay a visit to Ty Becker's old secretary, who informs them that Ty was working on an internal FBI investigation at the time he was killed. Immediately thereafter, the Simons and Addie receive a call from Kinneman, who tells them that "there is more truth to this" Dillinger affair than anyone had imagined and that the Simons should meet him at a closed-down theater.

    39

            When the Simons and Addie enter the theater, a gangster documentary is playing. Kinneman and a man wearing spectator shoes shoot at the trio. The Simons eventually kill the man in spectator shoes. They then subdue Kinneman, who admits to killing Ty Becker in order to stop the internal investigation which, it turns out, was directed at Kinneman, and to leaving the fake Dillinger fingerprint on the gun at the bank.

    40

            In the penultimate scene, the FBI thanks the Simons for their help in arresting Kinneman and solving the Dillinger mystery. Rick nevertheless insists Dillinger may be alive and perhaps living in Oregon, as Nash contends in DDOA. The episode closes with a teaser: the dentist, one of the leads whom the Simons had interviewed earlier in the program, is seen pushing his elderly father in a wheelchair and admonishing him to refrain from discussing the "old days in Chicago" anymore.

    41
            3. Comparison
    42

            At the outset, we note that an eyeball comparison of Nash's Dillinger Story and The Print shows that they are similar in only the slightest way. The plot, characters, tone, time period and mood of the works have almost nothing in common. In our view, the only arguable similarities between The Print and Nash's books are (1) A.J.'s relating to Rick some of the same physical discrepancies between Dillinger and the autopsy report that Nash cites in his books, and (2) Rick's suggestion that Dillinger moved to Oregon. However, these slight similarities are hardly "substantial" enough to support an infringement claim. Thus, in our eyeball comparison between the books and The Print, it is difficult to see any similarities which a trier of fact could regard as "substantial."

    43

            Applying the Seventh Circuit's preferred approaches for comparing copyrighted and allegedly infringing materials, we reach the same conclusion. Under Judge Hand's abstraction test, we look to the level of abstraction shared by Nash's works and The Print. Other than the premise that Dillinger did not die in 1934 and that some evidence supports this belief, The Print and the books are completely dissimilar.4 In our view, this level of similarity is far too "high" on the abstraction "scale" to constitute "substantial similarity." This level of similarity is only slightly more particular than the idea that Dillinger did not die in 1934, which we have already held is uncopyrightable. Although it is often difficult to point to the level of abstraction at which similarities become actionable under copyright law, this is not a close case. We hold that the shared premise that Dillinger did not die and that evidence supports this belief is a very high level of abstraction and that Nash cannot show unlawful appropriation on this basis.

    44

            Professor Chafee's pattern test yields the same result. Neither the "sequence of events" nor "the interplay and development of the characters" of the works at issue are vaguely similar, much less "substantially similar".5

    45

            Nash, of course, disagrees with our assessment that there are no actionable similarities in these works. In his memorandum, he cites seven "major similarities" between his books and The Print. We [704 F. Supp. 830] quote Nash's description of each major similarity and discuss each in turn:

    46

            

    47
         Nash's Books                        The Print1. The FBI realized after         1. The FBI realized afterthe shooting that they had        the shooting that they hadkilled the wrong man and          killed the wrong man andhad to cover up their error       had to cover up their errorto the public.                    to the public.
    48

            Nash's contention is simply wrong. The Print does not touch upon whether the FBI covered up the fact its agents had mistakenly killed Jimmy Lawrence, or any other person.

    49

            

    50
         Nash's Books                         The Print2. Dillinger's fingerprints       2. Dillinger's fingerprintswere "planted" in                 were planted by athe Cook County Morgue            killer at the scene of theto deceive authorities, the       murder of an FBI agentpublic and the press as to        to throw off investigatorsthe identity of the person        and to deceive the publickilled.                           and the press.
    51

            Nash's works include an alleged "planting" of fingerprint records, rather than an actual fingerprint, as occurred in The Print. Moreover, the planting which took place in Nash's works occurred in the 1930s while all the action in The Print was set in the 1980s.

    52

            

    53
         Nash's Books                         The Print3. Dillinger was falsely          3. Dillinger is falselyblamed for the robbery of         blamed for a murder andthe First National Bank of        bank robbery he had nothingEast Chicago, Indiana and         to do with.the killing of a policeman(Patrick O'Mally) in 1934.
    54

            This is not a similarity; the murders and robberies took place decades apart and involved completely different circumstances and motives.

    55

            

    56
         Nash's Books                        The Print4. Certain photographs            4. Four key photographswere creatively selected          from Nash's Works appearto be included in Nash's          including (in alteredWorks to help support his         form) the one that followsDillinger theory.                 page 76 of Dillinger:                                  Dead or Alive?, which was                                  attached to the original                                  Story Outline submitted                                  by Defendants Butler and                                  Clarke to Universal. Another                                  Stop-Action shot                                  from an old newsreel appears,                                  showing the exact                                  frame Nash chose in his                                  Works to demonstrate the                                  absence of one of Dillinger's                                  teeth. The only photographs                                  in the Episode                                  are ones included in                                  Nash's Works.
    57

            In our earlier opinion, we held that the "selection and compilation" of photographs contained in Nash's books may be copyrightable. At 827, n. 3. However, even assuming the defendants utilized four of the photographs which appear in Nash's books, the simple use of the photographs does not appropriate Nash's "selection and compilation." In The Print, the photographs did not appear together or in the same order as they did in Nash's works. Further, the defendants did not use the photographs for the same purpose Nash did, i.e., to support the theory that Dillinger did not die. In sum, while the defendants may have used the same photographs Nash did, this similarity does not infringe upon Nash's copyrightable interest in the pictures, i.e. their selection and arrangement.

    58

            

    59
         Nash's Books                        The Print5. Certain incidents,             5. These incidents,events and possible occurrences   events and possible occurrenceswere selected or                  appear:created by Nash to makehis Works more interestingand entertaining, including: a. persons, including             a. two imposters from two from the Los Angeles          Southern California coming area, coming forward              forward claiming to claiming to be Dillinger;         be Dillinger; b. the characterization           b. characterizations of of these persons as               these imposters as "lunatics" "crackpots";                      and "Whackos"; c. a large number of              c. the statement by the leads as to Dillinger's           police that lots of leads whereabouts from people           have come in from California across the country with a         and other parts of good portion of the leads         the country; coming from California; d. a lead from one person         d. a lead from a woman claiming that Dillinger           claiming that Dillinger is a nearby neighbor;             was living with one of                                   her neighbors.... e. the suggested possibility      e. the suggestion that that Dillinger may                the dentist's father is still be alive;                   Dillinger (and hence                                   alive); f. a strong possibility           f. the statement by that Dillinger ended up           Rick that Dillinger died living in Oregon after he         of old age in Oregon. escaped from Chicago.
    60

            As far as No. 5a-d are concerned, the fact that leads came in from all over the world and that wacky Dillinger impostors came forward are very general similarities. None of the specific leads or impostors were the same. The similarity rests only on the most abstract level: that Dillinger impostors exist and that far-reaching leads regarding Dillinger's whereabouts would result from a publicized investigation of Dillinger. With respect to No. 5e, we have [704 F. Supp. 831] already held that Nash cannot rely upon the idea that Dillinger did not die in order to show substantial similarity. With regard to No. 5f, we agree that this is a similarity. However, Rick's statement is almost a throwaway line which has little bearing upon the story. In itself, this cannot constitute substantial similarity.

    61

            

    62
         Nash's Books                        The Print6. There was a possible           6. Near the end, an FBIrelationship between Dillinger    man states that Kinnemanand organized                     is selling names and addressescrime, which was behind           of relocated witnessesthe faking of Dillinger's         "to the underworld."death.
    63

            With respect to No. 6, it is difficult to understand Nash's point. In essence, Nash is arguing that, because The Print contains a character with underworld ties, it is similar to his books which suggest that Dillinger may have been connected with organized crime. Under Nash's theory, The Godfather would also be similar to his works. The fact that organized crime is referred to in defendants' television program is not actionable similarity.

    64

            

    65
         Nash's Books                        The Print7. Bloodletters and Badmen        7. A.J. Simon reads astates that a lost autopsy        passage from the fictitiousreport disproves the              book Twentieth Centuryvictim's corpse as being          Desperadoes (whichDillinger's due to the victim's   is almost identical in design,eye color, height,                graphics, size andweight, heart condition           thickness to Bloodlettersand scars.                        and Badmen) which refers                                  to the physical discrepancies;                                  there is a later reference                                  to the victim's eye                                  color as a physical discrepancy.
    66

            As we noted above, the defendants do rely upon some of the same physical discrepancies between Dillinger and the autopsy report that Nash does. However, we have already held that no reasonable trier of fact could find substantial similarity on this basis.

    67

            To summarize, after reviewing Nash's books and The Print, we have concluded that the similarities between Nash's Dillinger Story and The Print are so slight that no reasonable trier of fact could conclude that they are "substantially similar." Because no genuine question of fact exists as to the material issue of "substantial similarity," we grant summary judgment in favor of the defendants on Count I.6

    68
            COUNTS II AND III: UNFAIR COMPETITION AND UNFAIR TRADE PRACTICES
    69

            Counts II and III of Nash's complaint state claims for "unfair competition" and "unfair trade practices," respectively. In their motion to dismiss or, in the alternative, for judgment on the pleadings, the defendants argue that both counts are preempted by § 301 of the Copyright Act, 17 U.S.C. § 301.

    70

            Before discussing preemption, we note Nash argues that Count II includes a federal claim under the Lanham Act, 15 U.S.C. § 1125. To the extent that Count II raises a Lanham Act claim (we intimate no opinion as to the sufficiency of Nash's allegations),7 we hold that it is not preempted by § 301.

    71

            Section 3018 sets forth

    72
    ... two conditions that both must be satisfied for preemption of a right under [704 F. Supp. 832] state law: First, the work in which the right is asserted must be fixed in tangible form and come within the subject matter of copyright as specified in § 102. Second, the right must be equivalent to any of the rights specified in § 106.
    73

            Baltimore Orioles v. Major League Baseball Players, 805 F.2d 663, 674 (7th Cir. 1986), cert. denied, 480 U.S. 941, 107 S.Ct. 1593, 94 L.Ed.2d 782 (1987).

    74

            With respect to the first condition, Nash's books clearly meet the requirement that the "work ... be fixed in a tangible form." Id. Furthermore, as "literary works," 17 U.S.C. § 102(a)(1), Nash's books come within the "subject matter of copyright." Nash misses the point when he argues that, because Counts II and III seek, in part, recovery for the appropriation of facts, ideas, research, and other uncopyrightable material, they escape preemption. The critical point is that Nash's books are materials within the subject matter of copyright. State law claims do not avoid preemption simply because they are based upon the improper use of uncopyrightable material contained in works properly subject to copyright. See Baltimore Orioles, 805 F.2d at 676; Rand McNally v. Fleet Management Systems, 591 F.Supp. 726 (N.D.Ill.1983) (Getzendanner, J.); Nimmer, Nimmer on Copyright, § 1.01B. If the rule were otherwise, states would be free to regulate materials Congress has assigned to the public domain. Baltimore Orioles, 805 F.2d at n. 23. Therefore, Counts II and III satisfy the first condition of the Baltimore Orioles test.

    75

            The second condition of the Baltimore Orioles test is met if the state law right is "equivalent" to one of the rights granted by the Copyright Act. A state law right is "equivalent" if: "(1) it is infringed by the mere act of reproduction, performance, distribution, or display, or (2) it requires additional elements to make out a cause of action, but the additional elements do not differ in kind from those necessary for copyright infringement." Baltimore Orioles, 805 F.2d 678 n. 26 (7th Cir.1986) (emphasis added). Nash asserts that Counts II and III are not preempted because they contain elements "additional to" and "different in kind from" his copyright cause of action. We examine each count in turn.

    76

            First, from the text of the complaint, it is difficult to determine under what theory Nash seeks recovery in Count II. He vaguely titles Count II "unfair competition" and includes no statutory citations. However, in his memoranda, he styles Count II as an action under the Uniform Deceptive Trade Practices Act ("UDTPA"), Ill.Rev.Stat. § 121½, ¶ 311 et seq.9

    77

            The UDTPA prohibits a wide variety of deceptive commercial practices and requires the person seeking recovery to show that the proscribed conduct resulted in "likelihood of confusion." Id. at ¶ 312. By contrast, confusion is not an essential element of an infringement action under the Copyright Act; the copying of protected expression, without more, constitutes infringement. Atari, 672 F.2d at 614. Thus, Nash's UDTPA claim does contain an "element" not present in his copyright action.

    78

            However, the existence of an "extra" element is not enough. We must determine whether the "confusion" element is different "in kind," or "qualitatively different" from the elements of copyright infringement. In discussing what is meant [704 F. Supp. 833] by "different in kind," the Seventh Circuit has approvingly cited cases which held that the elements of "scienter," "intent," and "commercial immorality" required for state law actions for wrongful appropriation are not sufficiently "different in kind" to preclude preemption. Baltimore Orioles,805 F.2d at n. 26.

    79

            For example, in Mayer v. Josiah Wedgwood, 601 F.Supp. 1523 (S.D.N.Y.1985), the court held that the extra element of "commercial immorality" in the plaintiff's state law misappropriation claim was not sufficiently "qualitatively" different to preclude preemption. As the court viewed it, "commercial immorality" is:

    80
    ... an extra element in the same sense that awareness and intent are: it alters the scope of the action but not its nature. That is, it would permit the action to go forward when the infringing conduct is immoral. The basic act which constitutes the infringement of plaintiff's rights, however, is the same as that of copyright.
    81

            Id. at 1535.

    82

            Therefore, under the Mayer court's view, "consumer confusion" would not be a "qualitatively different" element because it limits only the scope, not the nature, of Nash's claim. That is, the UDTPA would prohibit only those copyright infringements which cause confusion in the marketplace.

    83

            Although it cited Mayer, the court in Baltimore Orioles seemed to utilize a somewhat different analysis when addressing the precise issue before it: whether a state law publicity claim was preempted. In its discussion, the court emphasized that "the right of publicity is closely analogous to the goals of patent and copyright law." Baltimore Orioles, 805 F.2d at 679. Furthermore, in distinguishing between the right of publicity and the right of privacy, which is not preempted, the court noted:

    84
    It is true that the rights of publicity and of privacy evolved from similar origins; however, whereas the right of privacy protects against intrusions on seclusion, public disclosure of private facts, and casting an individual in a false light in the public eye, the right of publicity protects against the unauthorized exploitation of names, likenesses, personalities, and performances that have acquired value for the very reason that they are known to the public.
    85

            Baltimore Orioles, 805 F.2d at 678, n. 26 (7th Cir.1986). Thus, under Baltimore Orioles, it seems that we should compare the goal of the state law with the purpose of the Copyright Act.

    86

            Applying this "goal" analysis, we note that the UDTPA seeks both to prevent unfair competition between suppliers and to protect consumers in the marketplace. On the other hand, the central mission of the Copyright Act is to secure authors' intellectual property rights. It is true that the goals of these statutes are very similar in that they regulate unfair use of another's property. However, the UDTPA, unlike the Copyright Act, directly protects consumers, and we believe the goal of consumer protection renders the UDTPA sufficiently "different" from the Copyright Act. Therefore, under the "goal" analysis used in Baltimore Orioles, Nash would be able to pursue his UDTPA claim. Although we acknowledge that the case law is far from clear, we choose to follow the method of analysis actually employed in Baltimore Orioles, and hold that § 301 does not preempt Count II.10

    87

            Count III on its face is as unclear as Count II, and we must again look to Nash's memoranda for clarification. According to Nash, Count III states a claim for common law misappropriation. Nash correctly explains [704 F. Supp. 834] that the tort of misappropriation was first recognized in International News Service v. Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918), and that the Supreme Court of Illinois subsequently adopted it. Board of Trade v. Dow Jones, 98 Ill.2d 109, 74 Ill.Dec. 582, 456 N.E.2d 84 (1983). The Supreme Court of Illinois has not defined the tort precisely, but it appears to permit the owner of intellectual property to state a claim for wrongful taking or appropriation of the property. Id.74 Ill.Dec. at 586-87, 456 N.E.2d at 88-89.

    88

            However, we find no support in the case law for Nash's assertion that a person must show "likelihood of confusion, misrepresentation of source, or deception of the public" in order to bring a misappropriation claim. Plaintiff's Answering Memorandum at 7. The parties have cited no case which mentions the requirement of "confusion." As far as the elements of misrepresentation and deception, the seminal International News case stressed that a plaintiff need not show the "palming off" of goods in order to state a claim. International News, 248 U.S. at 241-42, 39 S.Ct. at 73. The Court also explicitly stated that evidence of misrepresentation only "accentuates" a misappropriation claim and is not the "essence" of such an action. Id. at 242, 39 S.Ct. at 73.

    89

            Case law does not clearly delineate when one's use of another's work becomes "misappropriation." The Supreme Court of Illinois suggests that the line is crossed when the policy of protecting individuals who expend labor and effort outweighs the "freedom to imitate and duplicate that is vital to our free market economy." Board of Trade, 74 Ill.Dec. at 587, 456 N.E.2d at 89. Although this distinction appears to be a restatement of the policy balance underlying the law of intellectual property, some courts have identified it as "commercial immorality" and regarded it as an additional element of the tort of misappropriation. See Rand McNally, 591 F.Supp. at 739. As we noted above, though, courts which have considered the issue do not regard "commercial immorality" as an element sufficiently "different" to prevent preemption. See Rand McNally, 591 F.Supp. at 126; Mayer, 601 F.Supp. at 1535. While those courts did use different analyses, we reach the same conclusion using the Seventh Circuit's methodology in Baltimore Orioles. The "goal" underlying copyright law is the same as that driving the tort of misappropriation: balancing the need to provide economic incentives for authorship against the preservation of the freedom to imitate. Given the identical goals of the tort of misappropriation and the Copyright Act, we would be inclined to hold that § 301 always preempts the tort of misappropriation.

    90

            We hesitate to go so far, though, because Congress clearly intended to preserve some form of the tort of misappropriation. The House Judiciary Committee Report on the 1976 Amendments to the Copyright Act states as follows:

    91
    "Misappropriation" is not necessarily synonymous with copyright infringement and thus a cause of action labeled as "misappropriation" is not preempted if it is in fact based neither on a right within the general scope of copyright as specified by section 106 section 106 of this title nor on a right equivalent thereto. For example, state law should have the flexibility to afford a remedy (under traditional principles of equity) against a consistent pattern of unauthorized appropriation by a competitor of the facts (i.e., not the literary expression) constituting "hot" news, whether in the traditional mold of International News Service v. Associated Press, 248 U.S. 215 (1918) 39 S.Ct. 68, 63 L.Ed. 211, or in the newer form of data updates from scientific, business, or financial data bases. Likewise, a person having no trust or other relationship with the proprietor of a computerized data base should not be immunized from sanctions against electronically or cryptographically breaching the proprietor's security arrangements and accessing the proprietor's data. The unauthorized data access which should be remediable might also be achieved by the [704 F. Supp. 835] intentional interception of data transmissions by wire, microwave or laser transmissions, or by the common unintentional means of "crossed" telephone lines occasioned by errors in switching.
    92
    The proprietor of data displayed on the cathode ray tube of a computer terminal should be afforded protection against unauthorized printouts by third parties (with or without improper access), even if the data are not copyrightable. For example, the data may not be copyrighted because they are not fixed in a tangible medium of expression....
    93

            H. Report No. 1476, reprinted at 17 U.S.C. A. § 301.

    94

            We do not believe the House report reflects Congress's intent to preserve all misappropriation actions. If all misappropriation claims escaped § 301 preemption, a plaintiff could always challenge the use of his copyrighted material under both federal copyright law and the state law tort of misappropriation. This, in turn, would emasculate § 301. Congress considered § 301 as "one of the bedrock provisions" of the 1976 amendments to the Copyright Act and enacted § 301 in order to "establish a single system of federal statutory copyright." Id. If we interpreted the House Report to preclude preemption of all misappropriation claims, we would assure that pendent claims could be asserted in almost all infringement actions. We do not believe that Congress intended this, and, therefore, we hold that all misappropriation claims, except those similar to the examples cited in the House Report, are preempted. Here, Count III does not involve the "systematic" appropriation of "hot news" or valuable stored information. Nor does it allege a special relationship between the parties. Therefore, we hold that § 301 preempts Count III of Nash's complaint.11

    95
            CONCLUSION
    96

            We grant the defendants' motion for summary judgment on Count I. We grant their motion to dismiss as to Count III, but deny it as to Count II. However, plaintiff should amend Count II to make clear what statutes or common law theories he claims under, and to set forth clearly the ultimate facts which he believes entitled him to recover. If he invokes more than one statute or common law theory, he should set forth his claims in separate counts. The amendment should be filed by January 31, 1989.

    97

            

    98

    --------

    99

    Notes:

    100

            1 The necessary attributes of ownership are: "(1) originality in the author, (2) copyrightability of subject matter, (3) citizenship status of the author such as to permit a claim of copyright, (4) compliance with applicable statutory formalities, and (5) if plaintiff is not the author a transfer of rights...." Nimmer, Nimmer on Copyright, § 13.014.

    101

            2 We note that the abstraction and pattern tests can produce paradoxical results when the material at issue is a work of historical nonfiction. As one moves down the levels of "abstractions," under Judge Hand's analysis, or closer to the author's "precise form," under Professor Chafee's theory, one would expect increasingly greater copyright protection. However, describing a piece of historical nonfiction with ever greater specificity and particularity brings one closer to simply relating the facts of the subject matter of the piece, e.g., the actual events in the life of the subject of a biography. Of course, these facts are not copyrightable. Therefore, where the protected expression is an explanation or interpretation of facts, such as the Dillinger Story, the plaintiff cannot rely upon the lowest level of abstraction to show "substantial similarity," as he would with a work of fiction. He must make his "substantial similarity" showing at a somewhat higher level of abstraction. In spite of this paradox and of Nash's conclusory argument that the abstractions and pattern tests are somehow "inappropriate" here, they seem to be the approved analytical methods which best "fit" the facts of this case.

    102

            3 DDOA and TDD are not really two different books. TDD is a reprint of DDOA that includes new material allegedly explaining what happened to Dillinger after 1934.

    103

            4 Nash contends that the number of dissimilarities are irrelevant, if the similarities are substantial. This may be true, but our point is that the similarities are not substantial.

    104

            5 As we find no similarity under the abstractions and pattern approaches, we need not address the scenes a faire doctrine. We note only that, because there are so few similarities between the works, it is difficult to see how the works shared stock devices or characters.

    105

            6 Granting summary judgment on Count I does not destroy our subject matter jurisdiction. There appears to be complete diversity between the parties. See Complaint at ¶ 4-14; MCA Defendants Answer at ¶ 4-14; Defendants' 12(e) statement at 3, n. 2; Answer of Whitehead at ¶ 8; Answer of Butler at ¶ 9; Answer of Clarke at ¶ 10; Answer of Dial at ¶ 11; Answer of Chapman at ¶ 12; Answer of Geiger at ¶ 13; Answer of Piller at ¶ 14.

    106

            7 In their reply, the defendants challenge the sufficiency of Nash's federal claim. However, we cannot dismiss Nash's Lanham Act claim without hearing from him. Though his ability to state such a claim seems unlikely because he does not allege that The Print is his product or that it contains any false designation of origin, we must assume he can do so for the purposes of this motion.

    107

            8 Section 301 provides:

    108

            Preemption with respect to other laws

    109

            (a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date, whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law statutes of any State.

    110

            (b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to —

    111

            (1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or

    112

            (2) any cause of action arising from undertakings commenced before January 1, 1978; or

    113

            (3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.

    114

            9 As the UDTPA apparently applies only to "goods and services," it is difficult to see how Nash could state a claim under this statute. As the parties have addressed only the preemption issue on this motion, we assume that Nash can state a claim. See note 4, supra.

    115

            10 We acknowledge the defendants' argument that "reverse passing off" claims under the UDTPA are very similar to misappropriation actions, which we find preempted in the following section. However, on this motion the critical differences are that the UDTPA requires "confusion" as an additional element of the claim and that UDTPA serves the additional "goal" of consumer protection.

    116

            11 Nash cites Rand McNally, 591 F.Supp. 726 (N.D.Ill.1983), supra at 832, for the proposition that his misappropriation claim is not preempted. It is true that the Rand McNally court held, without addressing First Amendment issues, that an action for use of factual data is outside the "subject matter of copyright" and therefore not preempted. We cannot determine from Nash's memoranda and pleadings whether he is making this specific claim here, i.e., that defendants used certain facts he uncovered regarding Dillinger and that he has some state law interest in those facts. See Complaint at ¶ 31 ("unlawfully appropriating for defendants' own commercial advantage the fruits of Plaintiff's original research, thus leading the public to believe that The Print was somehow approved and endorsed or participated in by Plaintiff"). If Nash intends to assert such a state law claim (we intimate no opinion as to whether he can do so), he should amend his complaint accordingly. Such a claim may not be preempted under § 301, but it could raise serious First Amendment issues which we will not consider without the benefit of the parties' views.

    117

    --------

  • 4 Castle Rock Entertainment, Inc. v. Carol Pub. Group, Inc.

    Does the fair use doctrine protect a commercial, non-fiction book which non-critically uses information from a copyrighted work? How do we measure substantial similarity?

    Notes: Beth Golub wrote and Carol Publishing published a book of Seinfeld trivia called the Seinfeld Aptitude Test using information, including quotes, from the television show Seinfeld. Castle Rock Entertainment, owner of the copyright to the tv show Seinfeld, sued Carol Publishing and Golub for copyright infringement, trademark infringement, and state law unfair competition.
    1
    150 F.3d 132 (1998)
    2
    CASTLE ROCK ENTERTAINMENT, INC., Plaintiff-Appellee,
    v.
    CAROL PUBLISHING GROUP, INC., Defendant-Cross Claimant-Appellant,
    Beth B. Golub, Defendant-Cross Defendant-Appellant.
    3
    No. 97-7992.
    4

    United States Court of Appeals, Second Circuit.

    5
    Argued January 8, 1998.
    6
    Decided July 10, 1998.
    7

     

    8

    [133] [134] Melvin L. Wulf, Beldock, Levine & Hoffman, LLP, New York City, for Defendants-Appellants.

    9

    David Dunn, Davis, Weber & Edwards, P.C., New York City, for Plaintiff-Appellee.

    10

    Before: VAN GRAAFEILAND and WALKER, Circuit Judges, and RAKOFF, District Judge.[*]

    11

    [135] JOHN M. WALKER, Jr., Circuit Judge:

    12

    This case presents two interesting and somewhat novel issues of copyright law. The first is whether The Seinfeld Aptitude Test, a trivia quiz book devoted exclusively to testing its readers' recollection of scenes and events from the fictional television series Seinfeld, takes sufficient protected expression from the original, as evidenced by the book's substantial similarity to the television series, such that, in the absence of any defenses, the book would infringe the copyright in Seinfeld. The second is whether The Seinfeld Aptitude Test (also referred to as The SAT) constitutes fair use of the Seinfeld television series.

    13

    Defendants-appellants Carol Publishing Group, Inc. and Beth B. Golub appeal from the July 23, 1997 judgment of the United States District Court for the Southern District of New York (Sonia Sotomayor, District Judge) granting, pursuant to Fed.R.Civ.P. 56, plaintiff-appellee Castle Rock Entertainment, Inc.'s ("Castle Rock") motion for summary judgment; denying defendants' cross-motion for summary judgment; awarding Castle Rock $403,000 for defendants' copyright infringement; and permanently enjoining defendants from publishing The Seinfeld Aptitude Test.

    14

    We conclude that The SAT unlawfully copies from Seinfeld and that its copying does not constitute fair use and thus is an actionable infringement. Accordingly, we affirm the judgment in favor of Castle Rock.

    15
    Background
    16

    The material facts in this case are undisputed. Plaintiff Castle Rock is the producer and copyright owner of each episode of the Seinfeld television series. The series revolves around the petty tribulations in the lives of four single, adult friends in New York: Jerry Seinfeld, George Costanza, Elaine Benes, and Cosmo Kramer. Defendants are Beth Golub, the author, and Carol Publishing Group, Inc., the publisher, of The SAT, a 132-page book containing 643 trivia questions and answers about the events and characters depicted in Seinfeld. These include 211 multiple choice questions, in which only one out of three to five answers is correct; 93 matching questions; and a number of short-answer questions. The questions are divided into five levels of difficulty, labeled (in increasing order of difficulty) "Wuss Questions," "This, That, and the Other Questions," "Tough Monkey Questions," "Atomic Wedgie Questions," and "Master of Your Domain Questions." Selected examples from level 1 are indicative of the questions throughout The SAT:

    17
    1. To impress a woman, George passes himself off as
    18
    a) a gynecologist
    19
    b) a geologist
    20
    c) a marine biologist
    21
    d) a meteorologist
    22
    11. What candy does Kramer snack on while observing a surgical procedure from an operating-room balcony?
    23
    12. Who said, "I don't go for those nonrefundable deals ... I can't commit to a woman ... I'm not committing to an airline."?
    24
    a) Jerry
    25
    b) George
    26
    c) Kramer[2]
    27

    The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of the [136] time The SAT was published. Although Golub created the incorrect answers to the multiple choice questions, every question and correct answer has as its source a fictional moment in a Seinfeld episode. Forty-one questions and/or answers contain dialogue from Seinfeld. The single episode most drawn upon by The SAT, "The Cigar Store Indian," is the source of 20 questions that directly quote between 3.6% and 5.6% of that episode (defendants' and plaintiffs calculations, respectively).

    28

    The name "Seinfeld" appears prominently on the front and back covers of The SAT, and pictures of the principal actors in Seinfeld appear on the cover and on several pages of the book. On the back cover, a disclaimer states that "This book has not been approved or licensed by any entity involved in creating or producing Seinfeld."[3] The front cover bears the title "The Seinfeld Aptitude Test" and describes the book as containing "[h]undreds of spectacular questions of minute details from TV's greatest show about absolutely nothing." The back cover asks:

    29
    Just how well do you command the buzz-words, peccadilloes, petty annoyances, and triflingly complex escapades of Jerry Seinfeld, Elaine Benes, George Costanza, and Kramer — the fabulously neurotic foursome that makes the offbeat hit TV series Seinfeld tick?
    30
    ....
    31
    If you think you know the answers — and really keep track of Seinfeld minutiae — challenge yourself and your friends with these 550 trivia questions and 10 extra matching quizzes. No, The Seinfeld Aptitude Test can't tell you whether you're Master of Your Domain, but it will certify your status as King or Queen of Seinfeld trivia. So twist open a Snapple, double-dip a chip, and open this book to satisfy your between-episode cravings.
    32

    Golub has described The SAT as a "natural outgrowth" of Seinfeld which, "like the Seinfeld show, is devoted to the trifling, picayune and petty annoyances encountered by the show's characters on a daily basis." According to Golub, she created The SAT by taking notes from Seinfeld programs at the time they were aired on television and subsequently reviewing videotapes of several of the episodes, as recorded by her or various friends.

    33

    The SAT's publication did not immediately provoke a challenge. The National Broadcasting Corporation, which broadcasted Seinfeld, requested free copies of The SAT from defendants and distributed them together with promotions for the program. Seinfeld's executive producer characterized The SAT as "a fun little book." There is no evidence that The SAT's publication diminished Seinfeld's profitability, and in fact Seinfeld's audience grew after The SAT was first published.

    34

    Castle Rock has nevertheless been highly selective in marketing products associated with Seinfeld, rejecting numerous proposals from publishers seeking approval for a variety of projects related to the show. Castle Rock licensed one Seinfeld book, The Entertainment Weekly Seinfeld Companion, and has licensed the production of a CD-ROM product that includes discussions of Seinfeld episodes; the CD-ROM allegedly might ultimately include a trivia bank. Castle Rock claims in this litigation that it plans to pursue a more aggressive marketing strategy for Seinfeld-related products, including "publication of books relating to Seinfeld."

    35

    In November 1994, Castle Rock notified defendants of its copyright and trademark infringement claims. In February 1995, after defendants continued to distribute The SAT, Castle Rock filed this action alleging federal copyright and trademark infringement and state law unfair competition. Subsequently, both parties moved, pursuant to Fed.R.Civ.P. 56, for summary judgment on both the copyright and unfair competition claims.

    36

    The district court granted summary judgment to Castle Rock on the copyright claim. It held that defendants had violated plaintiff's copyrights in Seinfeld and that such copying did not constitute fair use. See Castle Rock Entertainment v. Carol Publ'g Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y. 1997). The district court did not grant summary [137] judgment to either party on the unfair competition claim. See id. The parties then stipulated to damages and attorneys' fees on the copyright infringement claim and, presumably to facilitate the appeal, to the dismissal without prejudice of all remaining claims. Carol Publishing's cross-claims against Golub were dismissed with prejudice. The district court entered final judgment on the copyright infringement claim, awarded Castle Rock $403,000 with interest, permanently enjoined defendants from publishing or distributing The SAT, and ordered defendants to destroy all copies of The SAT in their custody or control. Defendants now appeal.

    37
    Discussion
    38
    Standard of Review
    39

    Summary judgment is appropriate only if the moving party can show that there is "no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The court "must draw all reasonable inferences and resolve all ambiguities in favor of the non-moving party." Garza v. Marine Transp. Lines, Inc., 861 F.2d 23, 26 (2d Cir.1988). Although "[f]air use is a mixed question of law and fact," Harper & Row, Publishers, Inc. v. Nation Enter., 471 U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985), this court has on a number of occasions "resolved fair use determinations at the summary judgment stage" where, as here, there are no genuine issues of material fact. Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir.1991); Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir.1998) (affirming summary judgment awarded to defendants on basis of fair use defense); Harper & Row, 471 U.S. at 560, 105 S.Ct. 2218. We review the district court's legal conclusions de novo and its findings of fact for clear error. See American Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d Cir.1994).

    40
    Copyright Infringement
    41

    The Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. §§ 101-803, grants copyright owners a bundle of exclusive rights, including the rights to "reproduce the copyrighted work in copies" and "to prepare derivative works based upon the copyrighted work." Id. § 106. "Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying." Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997); see Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). There are two main components of this prima facie case of infringement: "a plaintiff must first show that his work was actually copied .... [and] then must show that the copying amounts to an improper or unlawful appropriation." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-40 (2d Cir.1992) (quotation marks and citations omitted). Actual copying may be established "either by direct evidence of copying or by indirect evidence, including access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. at 140. As we have noted before, "probative," rather than "substantial" similarity is the correct term in referring to the plaintiff's initial burden of proving actual copying by indirect evidence. See Webber, 132 F.3d at 889 n. 1; Laureyssens, 964 F.2d at 140. "It is only after actual copying is established that one claiming infringement" then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears "substantial similarity" to protected expression in the earlier work. Webber, 132 F.3d at 889; Laureyssens, 964 F.2d at 140.

    42

    In the instant case, no one disputes that Castle Rock owns valid copyrights in the Seinfeld television programs and that defendants actually copied from those programs in creating The SAT. Golub freely admitted that she created The SAT by taking notes from Seinfeld programs at the time they were aired on television and subsequently reviewing videotapes of several of the episodes that she or her friends recorded. Since the fact of copying is acknowledged and undisputed, the critical question for decision is whether the copying was unlawful or improper in that it took a sufficient amount of protected expression from Seinfeld as evidenced by its substantial similarity to such expression.

    43

    [138]

    44

     

    45
    Substantial Similarity
    46

    We have stated that "substantial similarity"

    47
    requires that the copying [be] quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred. The qualitative component concerns the copying of expression, rather than ideas [, facts, works in the public domain, or any other non-protectable elements].... The quantitative component generally concerns the amount of the copyrighted work that is copied,
    48

    which must be more than "de minimis." Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir.1997) (emphasis added).

    49

    As to the quantitative element, we conclude that The SAT has crossed the de minimis threshold. At the outset, we observe that the fact that the copying appears in question and answer form is by itself without particular consequence: the trivia quiz copies fragments of Seinfeld in the same way that a collection of Seinfeld jokes or trivia would copy fragments of the series. In order to determine the quantitative extent of the defendants' copying, we must then decide whether to analyze separately the amount of expression copied from each individually copyrighted Seinfeld episode, or to analyze in the aggregate the amount copied from the eighty-four Seinfeld episodes. As defendants observe, 17 U.S.C. § 106 speaks throughout in the singular, referring to the allegedly infringed "work," thus bolstering an individual-episode analysis. Our precedents, however, tend to support the aggregate analysis. See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1372-73, 1381 (2d Cir.1993) (finding substantial similarity between infringing book and 8 episodes of Twin Peaks weekly television series seen as a whole, but awarding statutory damages on per-episode basis); Wainwright Secs. Inc. v. Wall St. Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977) (abstracts of a number of research reports treated cumulatively in fair use analysis); see also Craft v. Kobler, 667 F.Supp. 120, 124-25 (S.D.N.Y.1987) (passages taken from 15 separate books of copyright holder treated cumulatively in finding infringement); cf. New Era Publications Int'l, ApS v. Carol Publ'g Group, 904 F.2d 152, 158 (2d Cir.1990) (in analyzing whether critical biography was fair use of 48 original writings, court noted that biography "uses overall a small percentage of [plaintiff's] works" but also noted that percentage of copying taken from each individual work was not "unfair") (emphasis added); but see Salinger v. Random House, Inc., 811 F.2d 90, 98 (2d Cir.1987) (copying of Salinger letters not fair use because, among other factors, secondary work copied one-third of 17 letters and 10 percent of 42 letters).

    50

    As in Twin Peaks, for the purposes of the quantitative copying analysis we shall treat Seinfeld — a discrete, continuous television series — as a single work.[4] Where the secondary work focuses on an entire continuous television series such as Seinfeld, there is no basis for looking in isolation at the amount copied from each separately copyrighted episode. Although 17 U.S.C. § 106 speaks in terms of a singular copyrighted "work," it would elevate form over substance to conclude that The SAT's copying of 643 fragments from 84 individually copyrighted Seinfeld episodes is indistinguishable from a case in which a 634-question trivia quiz book poses a few questions from each of 84 unrelated television programs, books, movies, or any combination of creative works that do not constitute a discrete series of works. Had The SAT copied a few fragments from each of 84 unrelated television programs (perhaps comprising the entire line-up on broadcast television), defendants would have a stronger case under the de minimis doctrine. By copying not a few but 643 fragments from the Seinfeld television series, however, The SAT has plainly crossed the quantitative copying threshold under Ringgold.

    51

    As to Ringgold's qualitative component, each SAT trivia question is based directly upon original, protectable expression in Seinfeld. As noted by the district court, The SAT did not copy from Seinfeld unprotected [139] facts, but, rather, creative expression. Cf. Feist, 499 U.S. at 364, 111 S.Ct. 1282 (finding no infringement where defendant produced a multi-county phone directory, in part, by obtaining names and phone numbers from plaintiffs' single-county directory). Unlike the facts in a phone book, which "do not owe their origin to an act of authorship," id. at 347, 111 S.Ct. 1282, each "fact" tested by The SAT is in reality fictitious expression created by Seinfeld's authors. The SAT does not quiz such true facts as the identity of the actors in Seinfeld, the number of days it takes to shoot an episode, the biographies of the actors, the location of the Seinfeld set, etc. Rather, The SAT tests whether the reader knows that the character Jerry places a Pez dispenser on Elaine's leg during a piano recital, that Kramer enjoys going to the airport because he's hypnotized by the baggage carousels, and that Jerry, opining on how to identify a virgin, said "It's not like spotting a toupee." Because these characters and events spring from the imagination of Seinfeld's authors, The SAT plainly copies copyrightable, creative expression.[5] See Feist, 499 U.S. at 347, 111 S.Ct. 1282 (discussing distinction between discovered facts, which do not "owe their origin to an act of authorship" and therefore are not protected by copyright, and created facts, which constitute original, protected expression).

    52

    We find support for this conclusion in a previous case in which we held that a series of still photographs of a ballet may in some cases infringe the copyright in an original choreographic work. See Horgan v. Macmillan, Inc., 789 F.2d 157, 163 (2d Cir.1986). The defendants in Horgan claimed that still photographs could not "capture the flow of movement, which is the essence of dance," that "the staged performance could not be recreated from the photographs," and thus, that the photographs were not substantially similar to the choreographic work. Id. at 161-62 (quotation marks omitted). Although noting that the issue "was not a simple one," this court rejected that argument, holding that "the standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is substantially similar to the former." Id. at 162 (quotation marks omitted). That observation applies with equal force to the trivia quiz fragments in this case. Although Seinfeld could not be "recreated" from The SAT, Castle Rock has nevertheless established both the quantitative and qualitative components of the substantial similarity test, establishing a prima facie case of copyright infringement.

    53
    Other Tests
    54

    As defendants note, substantial similarity usually "arises out of a claim of infringement as between comparable works .... [where] because of the equivalent nature of the competing works, the question of similarity can be tested conventionally by comparing comparable elements of the two works." Because in the instant case the original and secondary works are of different genres and to a lesser extent because they are in different media, tests for substantial similarity other than the quantitative/qualitative approach are not particularly helpful to our analysis.

    55

    Under the "ordinary observer" test, for example, "[t]wo works are substantially similar where `the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same.'" Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L.Hand, J.) (comparing dress designs)) (alterations in original). Undoubtedly, Judge Hand did not have in mind a comparison of aesthetic appeal as between a television series and a trivia quiz and, in the usual case, we might [140] question whether any "ordinary observer" would "regard [the] aesthetic appeal" in a situation-comedy television program as being identical to that of any book, let alone a trivia quiz book, about that program. Cf. Laureyssens, 964 F.2d at 132, 141 (applying "ordinary observer" test to compare two sets of foam rubber puzzles). We note here, however, that plaintiff has a plausible claim that there is a common aesthetic appeal between the two works based on The SAT's plain copying of Seinfeld and Golub's statement on the back cover that the book was designed to complement the aesthetic appeal of the television series. See The SAT ("So twist open a Snapple, double-dip a chip, and open this book to satisfy your between episode cravings.").

    56

    Under the "total concept and feel" test, urged by defendants, we analyze "the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting" of the original and the allegedly infringing works. Williams v. Crichton, 84 F.3d 581, 588 (2d Cir.1996) (comparing children's books with novel and movie); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.1976) (comparing children's book with story in Sesame Street Magazine). Defendants contend that The SAT and the Seinfeld programs are incomparable in conventional terms such as plot, sequence, themes, pace, and setting. For example, The SAT has no plot; "[t]he notion of pace ... cannot be said even to exist in the book"; The SAT's "sequence has no relationship to the sequences of any of the Seinfeld episodes, since it is a totally random and scattered collection of questions relating to events that occurred in the shows"; and The SAT's only theme "is how much a Seinfeld fan can remember of 84 different programs." The total concept and feel test, however, is simply not helpful in analyzing works that, because of their different genres and media, must necessarily have a different concept and feel. Indeed, many "derivative" works of different genres, in which copyright owners have exclusive rights, see 17 U.S.C. § 106, may have a different total concept and feel from the original work.

    57

    Finally, we do not apply the "fragmented literal similarity" test,[6] which focuses upon copying of direct quotations or close paraphrasing, or the "comprehensive nonliteral similarity" test, which examines whether "the fundamental essence or structure of one work is duplicated in another." 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][1], at 13-29, § 13.03[A][2], at 13-45 (1997) (hereafter "Nimmer"); Twin Peaks, 996 F.2d at 1372-73(applying Nimmer test); Warner Bros. Inc. v. American Broad. Cos., 720 F.2d 231, 240, 242 (2d Cir.1983) (applying Nimmer test to compare Superman and The Greatest American Hero). In the instant case, because the direct quotations or close paraphrases that The SAT copied from the Seinfeld series are few and almost irrelevant to The SAT, undue focus upon these isolated quotations could improperly distract us from inquiring as to whether substantial similarity exists between Seinfeld and The SAT.

    58

    Castle Rock's comprehensive nonliteral similarity argument — that the defendants "literally constructed the SAT with 643 fragments of Seinfeld's creative whole" — is also unhelpful to our analysis and unnecessary to our determination that The SAT is substantially similar to Seinfeld. Without having viewed Seinfeld itself, no SAT reader could plausibly "construct" in his or her mind the plot of any Seinfeld episode, nor any of Seinfeld's settings (the Seinfeld and Kramer apartments, the foursome's restaurant hangout, George Steinbrenner's office, etc.), nor even the four principal Seinfeld characters. Nor does The SAT "[duplicate] the fundamental essence or structure" of Seinfeld. 4 Nimmer § 13.03[A][1], at 13-29; cf. Twin Peaks, 996 F.2d 1372-73 (finding "substantial similarity through comprehensive nonliteral similarity" where chapter of infringing book "is essentially a detailed recounting of the first eight episodes of the [television] series" and "[e]very intricate plot twist and element of character development appear in the Book [141] in the same sequence as in the teleplays"). However, "[t]he standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is `substantially similar' to the former," Horgan, 789 F.2d at 162, and in copying a sufficient amount of protected expression from the Seinfeld television series, The SAT easily passes the threshold of substantial similarity between the contents of the secondary work and the protected expression in the original.

    59
    Fair Use
    60

    Defendants claim that, even if The SAT's copying of Seinfeld constitutes prima facie infringement, The SAT is nevertheless a fair use of Seinfeld. "From the infancy of copyright protection," the fair use doctrine "has been thought necessary to fulfill copyright's very purpose, `[t]o promote the Progress of Science and useful Arts.'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const., art. I, § 8, cl. 8). As noted in Campbell, "in truth, in literature, in science and in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before." Id. (quotation marks omitted). Until the 1976 Copyright Act, the doctrine of fair use grew exclusively out of the common law. See id. at 576, 114 S.Ct. 1164; Folsom v. Marsh, 9 F.Cas. 342, 348 (C.D.Mass.1900) (CCD Mass. 1841) (Story, J.) (stating fair use test); Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1105 (1990) ("Leval").

    61

    In the Copyright Act, Congress restated the common law tradition of fair use:

    62
    [T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —
    63
    (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    64
    (2) the nature of the copyrighted work;
    65
    (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
    66
    (4) the effect of the use upon the potential market for or value of the copyrighted work.
    67

    17 U.S.C. § 107. This section "intended that courts continue the common law tradition of fair use adjudication" and "permits and requires courts to avoid rigid application of the copyright statute, when, on occasion, it would stifle the very creativity which that law is designed to foster." Campbell, 510 U.S. at 577, 114 S.Ct. 1164 (quotation marks omitted). Fair use analysis, therefore, always "calls for case-by-case analysis." Id. The fair use examples provided in § 107 are "illustrative and not limitative" and "provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses." Id. at 577-78, 114 S.Ct. 1164. Similarly, the four listed statutory factors in § 107 guide but do not control our fair use analysis and "are to be explored, and the results weighed together, in light of the purposes of copyright." Id.; see 4 Nimmer § 13.05[A], at 13-153 ("[T]he factors contained in Section 107 are merely by way of example, and are not an exhaustive enumeration."). The ultimate test of fair use, therefore, is whether the copyright law's goal of "promot[ing] the Progress of Science and useful Arts," U.S. Const., art. I, § 8, cl. 8, "would be better served by allowing the use than by preventing it." Arica, 970 F.2d at 1077.

    68
    Purpose/Character of Use
    69

    The first fair use factor to consider is "the purpose and character of the [allegedly infringing] use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). That The SAT's use is commercial, at most, "tends to weigh against a finding of fair use." [142] Campbell, 510 U.S. at 585, 114 S.Ct. 1164 (quotation marks omitted); Texaco, 60 F.3d at 921. But we do not make too much of this point. As noted in Campbell, "nearly all of the illustrative uses listed in the preamble paragraph of § 107, including news reporting, comment, criticism, teaching, scholarship, and research ... are generally conducted for profit in this country," 510 U.S. at 584, 114 S.Ct. 1164 (quotation marks omitted), and "no man but a blockhead ever wrote, except for money," id. (quoting 3 Boswell's Life of Johnson 19 (G. Hill ed.1934)). We therefore do not give much weight to the fact that the secondary use was for commercial gain.

    70

    The more critical inquiry under the first factor and in fair use analysis generally is whether the allegedly infringing work "merely supersedes" the original work "or instead adds something new, with a further purpose or different character, altering the first with new ... meaning [] or message," in other words "whether and to what extent the new work is `transformative.'" Id. at 579, 114 S.Ct. 1164 (quoting Leval at 1111). If "the secondary use adds value to the original — if [copyrightable expression in the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings — this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society." Leval at 1111. In short, "the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works." Campbell, 510 U.S. at 579, 114 S.Ct. 1164.

    71

    Defendants claim two primary "transformative" qualities of The SAT. First, as noted by the district court, "a text testing one's knowledge of Joyce's Ulysses, or Shakespeare's Hamlet, would qualify as `criticism, comment, scholarship, or research,' or such. The same must be said, then, of a text testing one's knowledge of Castle Rock's Seinfeld." Castle Rock, 955 F.Supp. at 268 (citing Twin Peaks, 996 F.2d at 1374 ("A comment is as eligible for fair use protection when it concerns `Masterpiece Theater' and appears in the New York Review of Books as when it concerns `As the World Turns' and appears in Soap Opera Digest.")). In other words, the fact that the subject matter of the quiz is plebeian, banal, or ordinary stuff does not alter the fair use analysis. Criticism, comment, scholarship, research, and other potential fair uses are no less protectable because their subject is the ordinary.

    72

    Second, defendants style The SAT as a work "decod[ing] the obsession with ... and mystique that surround[s] `Seinfeld,'" by "critically restructur[ing] [Seinfeld's mystique] into a system complete with varying levels of `mastery' that relate the reader's control of the show's trivia to knowledge of and identification with their hero, Jerry Seinfeld." Citing one of their own experts for the proposition that "[t]he television environment cannot speak for itself but must be spoken for and about," defendants argue that "The SAT is a quintessential example of critical text of the TV environment .... expos[ing] all of the show's nothingness to articulate its true motive forces and its social and moral dimensions." (Quotation marks omitted). Castle Rock dismisses these arguments as post hoc rationalizations, claiming that had defendants been half as creative in creating The SAT as were their lawyers in crafting these arguments about transformation, defendants might have a colorable fair use claim.

    73

    Any transformative purpose possessed by The SAT is slight to non-existent. We reject the argument that The SAT was created to educate Seinfeld viewers or to criticize, "expose," or otherwise comment upon Seinfeld. The SAT's purpose, as evidenced definitively by the statements of the book's creators and by the book itself, is to repackage Seinfeld to entertain Seinfeld viewers. The SAT's back cover makes no mention of exposing Seinfeld to its readers, for example, as a pitiably vacuous reflection of a puerile and pervasive television culture, but rather urges SAT readers to "open this book to satisfy [their] between-episode [Seinfeld] cravings." Golub, The SAT's author, described the trivia quiz book not as a commentary or a Seinfeld research tool, but as an effort to "capture Seinfeld's flavor in quiz book fashion." Finally, even viewing The SAT in the light most favorable to defendants, we find scant [143] reason to conclude that this trivia quiz book seeks to educate, criticize, parody, comment, report upon, or research Seinfeld, or otherwise serve a transformative purpose.[7] The book does not contain commentary or analysis about Seinfeld, nor does it suggest how The SAT can be used to research Seinfeld; rather, the book simply poses trivia questions. The SAT's plain purpose, therefore, is not to expose Seinfeld's "nothingness," but to satiate Seinfeld fans' passion for the "nothingness" that Seinfeld has elevated into the realm of protectable creative expression.

    74

    Although a secondary work need not necessarily transform the original work's expression to have a transformative purpose, see, e.g., 4 Nimmer § 13.05[D][2], at 13-227-13-228 (discussing reproduction of entire works in judicial proceedings), the fact that The SAT so minimally alters Seinfeld's original expression in this case is further evidence of The SAT's lack of transformative purpose. To be sure, the act of testing trivia about a creative work, in question and answer form, involves some creative expression. While still minimal, it does require posing the questions and hiding the correct answer among three or four incorrect ones.[8] Also, dividing the trivia questions into increasing levels of difficulty is somewhat more original than arranging names in a telephone book in alphabetical order. See Feist, 499 U.S. at 362-63, 111 S.Ct. 1282. The SAT's incorrect multiple choice answers are also original. However, the work as a whole, drawn directly from the Seinfeld episodes without substantial alteration, is far less transformative than other works we have held not to constitute fair use. See, e.g., Twin Peaks, 996 F.2d at 1378 (book about Twin Peaks television series that discusses show's popularity, characters, actors, plots, creator, music, and poses trivia questions about show held not to be fair use).

    75

    Finally, we note a potential source of confusion in our copyright jurisprudence over the use of the term "transformative." A "derivative work," over which a copyright owner has exclusive control, is defined as

    76
    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.
    77

    17 U.S.C. §§ 101, 106(2) (emphasis added). Although derivative works that are subject to the author's copyright transform an original work into a new mode of presentation, such works — unlike works of fair use — take expression for purposes that are not "transformative."[9] In the instant case, since The SAT has transformed Seinfeld's expression into trivia quiz book form with little, if any, transformative purpose, the first fair use factor weighs against defendants.

    78
    Nature of the Copyrighted Work
    79

    The second statutory factor, "the nature of the copyrighted work," 17 U.S.C. § 107(2), "calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. Defendants concede that the scope of fair use is somewhat narrower with respect to fictional works, such as Seinfeld, than to factual works. See Stewart v. Abend, 495 U.S. 207, 237, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990) ("In general, fair use is more [144] likely to be found in factual works than in fictional works"); Twin Peaks, 996 F.2d at 1376 (second factor "favor[s] ... creative and fictional work"). Although this factor may be of less (or even of no) importance when assessed in the context of certain transformative uses, see, e.g., Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (creative nature of original "Pretty Woman" song "not much help" to fair use analysis "since parodies almost invariably copy ... expressive works"), the fictional nature of the copyrighted work remains significant in the instant case, where the secondary use is at best minimally transformative. Thus, the second statutory factor favors the plaintiff.

    80
    Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole
    81

    As a preliminary matter, the district court held that its determination that The SAT is substantially similar to Seinfeld "`should suffice for a determination that the third fair use factor favors the plaintiff.'" Castle Rock, 955 F.Supp. at 269-70 (quoting Twin Peaks, 996 F.2d at 1377). However, because secondary users need invoke the fair use defense only where there is substantial similarity between the original and allegedly infringing works, and thus actionable copying, the district court's analysis is of little if any assistance. Under the district court's analysis, the third fair use factor would always and unfairly favor the original copyright owner claiming no fair use. See 4 Nimmer § 13.05[A], at 13-152 ("[F]air use is a defense not because of the absence of substantial similarity but rather despite the fact that the similarity is substantial.").

    82

    In Campbell, a decision post-dating Twin Peaks, the Supreme Court clarified that the third factor — the amount and substantiality of the portion of the copyrighted work used — must be examined in context. The inquiry must focus upon whether "[t]he extent of ... copying" is consistent with or more than necessary to further "the purpose and character of the use." 510 U.S. at 586-87, 114 S.Ct. 1164; see Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449-50, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) (reproduction of entire work "does not have its ordinary effect of militating against a finding of fair use" as to home videotaping of television programs); Harper & Row, 471 U.S. at 564, 105 S.Ct. 2218 ("[E]ven substantial quotations might qualify as fair use in a review of a published work or a news account of a speech" but not in a scoop of a soon-to-be-published memoir.). "[B]y focussing [sic] on the amount and substantiality of the original work used by the secondary user, we gain insight into the purpose and character of the use as we consider whether the quantity of the material used was reasonable in relation to the purpose of the copying." Texaco, 60 F.3d at 926 (quotation marks omitted). In Campbell, for example, the Supreme Court determined that a "parody must be able to `conjure up' at least enough of [the] original [work] to make the object of its critical wit recognizable" and then determined whether the amount used of the original work was "no more than necessary" to satisfy the purpose of parody. 510 U.S. at 588-89, 114 S.Ct. 1164.

    83

    In the instant case, it could be argued that The SAT could not expose Seinfeld's "nothingness" without repeated, indeed exhaustive examples deconstructing Seinfeld's humor, thereby emphasizing Seinfeld's meaninglessness to The SAT's readers. That The SAT posed as many as 643 trivia questions to make this rather straightforward point, however, suggests that The SAT's purpose was entertainment, not commentary. Such an argument has not been advanced on appeal, but if it had been, it would not disturb our conclusion that, under any fair reading, The SAT does not serve a critical or otherwise transformative purpose. Accordingly, the third factor weighs against fair use.

    84
    Effect of Use Upon Potential Market for or Value of Copyrighted Work
    85

    Defendants claim that the fourth factor favors their case for fair use because Castle Rock has offered no proof of actual market harm to Seinfeld caused by The SAT. To the contrary, Seinfeld's audience grew after publication of The SAT, and Castle Rock has evidenced no interest in publishing Seinfeld [145] trivia quiz books and only minimal interest in publishing Seinfeld-related books.

    86

    The Supreme Court has recently retreated from its earlier cases suggesting that the fourth statutory factor is the most important element of fair use, see Harper & Row, 471 U.S. at 566, 105 S.Ct. 2218, recognizing instead that "[a]ll [factors] are to be explored, and the results weighed together, in light of the purposes of copyright," Campbell, 510 U.S. at 578, 114 S.Ct. 1164; see Texaco, 60 F.3d at 926 (applying Campbell approach). Under this factor, we "consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant ... would result in a substantially adverse impact on the potential market for the original." Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (quotation marks and citation omitted). The fourth factor must also "take account ... of harm to the market for derivative works," id., defined as those markets "that creators of original works would in general develop or license others to develop," id. at 592, 114 S.Ct. 1164.

    87

    In considering the fourth factor, our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps or substitutes for the market of the original work. Id. at 593, 114 S.Ct. 1164. The more transformative the secondary use, the less likelihood that the secondary use substitutes for the original. Id. at 591, 114 S.Ct. 1164. As noted by the district court, "[b]y the very nature of [transformative] endeavors, persons other than the copyright holder are undoubtedly better equipped, and more likely, to fill these particular market and intellectual niches." Castle Rock, 955 F.Supp. at 271. And yet the fair use, being transformative, might well harm, or even destroy, the market for the original. See Campbell, 510 U.S. at 591-92, 114 S.Ct. 1164 ("[A] lethal parody, like a scathing theater review, kills demand for the original, [but] does not produce a harm cognizable under the Copyright Act."); New Era Publications, 904 F.2d at 160 ("a critical biography serves a different function than does an authorized, favorable biography, and thus injury to the potential market for the favorable biography by the publication of the unfavorable biography does not affect application of factor four").[10]

    88

    Unlike parody, criticism, scholarship, news reporting, or other transformative uses, The SAT substitutes for a derivative market that a television program copyright owner such as Castle Rock "would in general develop or license others to develop." Campbell, 510 U.S. at 592, 114 S.Ct. 1164.[11] Because The SAT borrows exclusively from Seinfeld and not from any other television or entertainment programs, The SAT is likely to fill a market niche that Castle Rock would in general develop. Moreover, as noted by the district court, this "Seinfeld trivia game is not critical of the program, nor does it parody the program; if anything, SAT pays homage to Seinfeld." Castle Rock, 955 F.Supp. at 271-72. Although Castle Rock has evidenced little if any interest in exploiting this market for derivative works based on Seinfeld, such as by creating and publishing Seinfeld trivia books (or at least trivia books that endeavor to "satisfy" the "between-episode [146] cravings" of Seinfeld lovers), the copyright law must respect that creative and economic choice. "It would ... not serve the ends of the Copyright Act — i.e., to advance the arts — if artists were denied their monopoly over derivative versions of their creative works merely because they made the artistic decision not to saturate those markets with variations of their original." Castle Rock, 955 F.Supp. at 272; see Salinger, 811 F.2d at 99 ("The need to assess the effect on the market for Salinger's letters is not lessened by the fact that their author has disavowed any intention to publish them during his lifetime."). The fourth statutory factor therefore favors Castle Rock.

    89
    Other Factors
    90

    As we have noted, the four statutory fair use factors are non-exclusive and serve only as a guide to promote the purposes underlying the copyright law. One factor that is of no relevance to the fair use equation, however, is defendants' continued distribution of The SAT after Castle Rock notified defendants of its copyright infringement claim, because "[i]f the use is otherwise fair, then no permission need be sought or granted.... [B]eing denied permission to use a work does not weigh against a finding of fair use." Campbell, 510 U.S. at 585 n. 18, 114 S.Ct. 1164; see Wright, 953 F.2d at 737 (rejecting as irrelevant to fair use analysis argument that defendant failed to get plaintiff's permission to create work).

    91

    We also note that free speech and public interest considerations are of little relevance in this case, which concerns garden-variety infringement of creative fictional works. See 4 Nimmer § 13.05[B][4], at 13-205 ("The public interest is also a factor that continually informs the fair use analysis."); cf. Time Inc. v. Bernard Geis Assocs., 293 F.Supp. 130, 146 (S.D.N.Y.1968) (discussing importance of access to information about President Kennedy assassination in fair use analysis of home video of assassination).

    92
    Aggregate Assessment
    93

    Considering all of the factors discussed above, we conclude that the copyright law's objective "[t]o promote the Progress of Science and useful Arts" would be undermined by permitting The SAT's copying of Seinfeld, see Arica, 970 F.2d at 1077, and we therefore reject defendants' fair use defense. Finally, we note that defendants do not assert that Castle Rock abandoned, forfeited, or misused copyrights in Seinfeld, and that defendants have asserted no defense on appeal other than that of fair use.

    94
    Conclusion
    95

    Undoubtedly, innumerable books could "expose" the "nothingness" or otherwise comment upon, criticize, educate the public about, or research Seinfeld and contemporary television culture. The SAT, however, is not such a book. For the reasons set forth above, the judgment of the district court is affirmed.[12]

    96

    [*] The Honorable Jed S. Rakoff, of the United States District Court for the Southern District of New York, sitting by designation.

    97

    [2] An example of the trivia quiz book's matching questions (entitled "Family Trees") is as follows:

    98

    1. Cousin Jeffrey 2. Uncle Leo 3. Manya 4. Isaac 5. Mr. Seinfeld 6. Mrs. Seinfeld 7. Mr. Benes 8. Mr. Costanza 9. Mrs. Costanza 10. Mrs. Kramer.

    99

    (a) Former condo association president

    100

    (b) Drinks Colt 45 in the nude

    101

    (c) Arm-grabbing, loquacious garbage can picker

    102

    (d) Leaves a rent-controlled New York City apartment for the Phoenix sunshine

    103

    (e) Gruff-talking, well-known novelist

    104

    (f) New York City employee who watches the Nature Channel

    105

    (g) Wears sneakers in the swimming pool and has to "get the good spot in front of the good building in the good neighborhood"

    106

    (h) Enjoys the heat and never uses air conditioning

    107

    (i) Elderly immigrant whose beloved pony was "the pride of Krakow"

    108

    (j) Nagging, shrill-voiced Glamour magazine reader who was hospitalized for a back injury

    109

    [3] As noted later, this opinion does not address issues of trademark or unfair competition.

    110

    [4] Because the parties have stipulated to damages, we need not address, as did Twin Peaks, whether damages should be assessed on a perepisode basis.

    111

    [5] We appreciate that the line between unprotected fact and protected creative expression may in some instances be less clear. Where a "fictional" single mother in a popular television series engages in real political discourse with a real Vice-President of the United States, for example, it is less clear whether the television "script" is fiction — in the sense that it is only a television script, or fact — in the sense that it is a real dialogue with a real political figure about contemporary issues. Whatever the line between historical fact and creative expression, however, Seinfeld is securely on the side of creative expression.

    112

    [6] We do not understand Ringgold's quantitative analysis to be the same as a fragmented similarity analysis. The former considers the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work.

    113

    [7] Had The SAT's incorrect answer choices attempted to parody Seinfeld, for example, defendants would have a stronger case for fair use. See Campbell, 510 U.S. at 588, 114 S.Ct. 1164.

    114

    [8] In the time it took to write this last sentence, for example, one could have easily created the following trivia question about the film trilogy Star Wars: "Luke Skywalker was aghast to learn that Darth Vader was Luke's (a) father (b) father-in-law (c) best friend (d) Jerry Seinfeld," and innumerable other such trivia questions about original creative works.

    115

    [9] Indeed, if the secondary work sufficiently transforms the expression of the original work such that the two works cease to be substantially similar, then the secondary work is not a derivative work and, for that matter, does not infringe the copyright of the original work. See 1 Nimmer § 3.01, at 3-3 (stating that "a work will be considered a derivative work only if it would be considered an infringing work" if it were unauthorized).

    116

    [10] By the same token, because a "film producer's appropriation of a composer's previously unknown song that turns the song into a commercial success" is a market substitute, that use is not made fair because it increases the market for the original work. Campbell, 510 U.S. at 591 n. 21, 114 S.Ct. 1164.

    117

    [11] Just as secondary users may not exploit markets that original copyright owners would "in general develop or license others to develop" even if those owners had not actually done so, copyright owners may not preempt exploitation of transformative markets, which they would not "in general develop or license others to develop," by actually developing or licensing others to develop those markets. Thus, 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. See 4 Nimmer § 13.05[A][4], at 13-181-13-182 (recognizing "danger of circularity" where original copyright owner redefines "potential market" by developing or licensing others to develop that market); Texaco, 60 F.3d at 930 ("Only an impact on potential licensing revenues for traditional, reasonable, or likely to be developed markets" is relevant to fourth factor.).

    118

    [12] For any reader of this opinion still possessed by post-Seinfeld "cravings," the answers to the trivia questions posed supra, at 3-4 & n. 2, are: 1-c, 11-"Junior Mints," 12-a; matching: 1-f, 2-c, 3-i, 4-d, 5-a, 6-h, 7-e, 8-g, 9-j, 10-b.

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