Bloomberg BNA’s Patent Trademark & Copyright Journal® is the IP industry’s premier news service, offering customizable, objective, timely, and reliable news coverage and commentary from leading...
The estate of an author who brought a copyright infringement suit against Scholastic, publisher of the famous “Harry Potter” series of books, claiming one of the books copied the author's work, lost its case on Jan. 6 as the U.S. District Court for the Southern District of New York ruled that the two books were completely different (Allen v. Scholastic Inc., S.D.N.Y., No. 1:10-cv-05335-SAS, 1/6/11).
Granting Scholastic's motion to dismiss the complaint on the ground that no reasonable juror could find a substantial similarity between the two books, the court said that the contrast between the total concept and feel of the works was so stark that any serious comparison of the two strains credulity. The court said that the Potter book, Harry Potter and the Goblet of Fire, sold hundreds of millions of copies and was over 700 pages long, while the other book is merely 30 some pages long.
Adrian Jacobs wrote the book The Adventures of Willy the Wizard--No 1 Livid Land in 1987. It tells the story of an adult wizard who participates in the year of the wizards' contest.
J.K. Rowling wrote the best selling seven-book Harry Potter series, including the fourth book Goblet of Fire. The series follows the adventures of a famous young wizard from the time that he learns of his powers at age eleven until the end of his adolescence.
Jacobs died in 1997 and Paul G. Allen, in his capacity as the trustee of the estate of Adrian Jacobs, sued Scholastic Inc., which published Goblet of Fire, for copyright infringement alleging that Goblet of Fire unlawfully used protected expressions from Livid Land.
Scholastic moved to dismiss the complaint.
The operative question was whether a substantial similarity exists between Goblet of Fire and the protectable elements of Livid Land.
After inspecting a representative excerpt from each book to support her conclusion of no infringement, Judge Shira A. Scheindlin said that, because the works at issue are primarily created for children, the total concept and feel is the most important factor for purposes of establishing copyright infringement. She said:
Here, the contrast between the total concept and feel of the works is so stark that any serious comparison of the two strains credulity. As an initial matter, the dramatic difference in length between Goblet of Fire and Livid Land--734 pages and 16 pages of text, respectively--immediately undermines Allen's suggestion that the authors similarly “selected, coordinated and arranged the elements” of their work.
The works vary in structure, mood, details, and characterization. Livid Land progresses a series of fragmented and often tangential scenes, each of which summarily recounts Willy's various exploits without any supporting detail, contextual explanation, or suspenseful build-up. … [It is] entirely devoid of a moral message or intellectual depth.
In contrast, Goblet of Fire is a cumulative work, in which one scene builds upon and transitions to another. … [It has] a highly developed moral core, and conveys overarching messages through its plot.
Thus, Scheindlin said there was no overlap in the total concept and feel of the two works.
The estate argued that both works evince themes of “friendship, teamwork, … the value of personal ingenuity [and] the international scope and unity of the wizard community.”
The court disagreed, concluding that, because there was “scant basis upon which to extrapolate any theme from Livid Land,” there was no way to find substantial similarity in the works' themes.
The estate argued that the similarities between the Willy and Harry characters provided evidence of unlawful appropriation because both protagonists are famous male wizards initiated into wizarding, who receive formal education in wizardry, and are chosen to compete in a tournament.
“Even accepting [the estate's] dubious characterizations, they constitute a general prototype too indistinct to merit copyright protection,” the court said. The purported list of common attributes between the characters “evokes only a general sketch of a character, rather than a recognizable identity that can be linked to a particular figure.” Further, the court added that, because Willy's character does not display any creativity, it does not constitute protectable expression.
While both works tell the story of a wizard competition, and while the protagonist of each book is a wizard who takes part in--and ultimately wins--the competition, they share no similarities beyond this level of abstraction, the court said in determining that the plots and sequencing of the works were not similar.
Finally, the court said that the settings of both works did not indicate substantial similarity because Livid Land only mentions in passing the ideas of magical worlds based in Europe, wizard colleges, and magical versions of real-world transportation, and it does not transform them into protected expression through any creative effort.
“Mere commonality in subject-matter cannot establish infringement,” the court said. “As such, there can be no substantial similarity between the settings in the works at issue.”
Thus, the court ruled that the estate could not sustain its copyright infringement claim, and it dismissed the case in its entirety.
Allen was represented by Joseph A. Patella of Andrews Kurth, New York. Scholastic was represented by Claudia E. Ray of Kirkland & Ellis, New York.
In 2002, the U.S. District Court for the Southern District of New York summarily dismissed with sanctions of $50,000 an array of trademark and copyright infringement counterclaims against Scholastic and Rowling. Scholastic Inc. v. Stouffer, 221 F. Supp 2d 425, 64 USPQ2d 1075 (S.D.N.Y. 2002) (64 PTCJ 484, 10/4/02).
In that case, Scholastic and Rowling sued author Nancy Stouffer for a declaratory judgment that they were not infringing her copyright or trademark rights in her work The Legend of RAH and the Muggles, and Stouffer counterclaimed for trademark and copyright infringement, and for various other claims under the Lanham Act and state law.
The court granted Scholastic’s summary judgment motion, dismissing Stouffer’s six counterclaims. The similarities between the Stouffer books and the Harry Potterseries were so minimal and superficial, according to the court, that even when considered together they could not give rise to the requisite likelihood of confusion needed for Stouffer’s trademark infringement and unfair competition counterclaims, it ruled.
The court in that case ordered Stouffer to pay Scholastic’s attorneys fees and $50,000 in sanctions for committing a fraud upon the court by submitting seven pieces of falsified evidence to support her claims against Scholastic.
Allen v. Scholastic opinion at http://pub.bna.com/ptcj/1005335Jan6.pdf
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)