What’s At Stake In the Harry Potter Lawsuit

By Ron Hogan on November 15, 2007 11:27 AM

Here’s another take on J.K. Rowling‘s lawsuit to suppress a fan-created reference book: “I really don’t think this lawsuit is being driven by Joanne Rowling,” C.E. Petit wrote on his blog when the suit was first filed. “I think this is Warner. And I think is it being driven by trademark law’s ‘rabid Rottweiler’ nature: ‘defend against even fair uses or lose it.’”

So why, he asks rhetorically, “if trademark is the better rubric—and is actually driving the plaintiffs’ actions—why is it a copyright case? Primarily, because the remedies available are vastly better in copyright matters, due to civil procedure considerations.”

“For one thing,” he explains, “it’s a lot harder to get an award of attorney’s fees in trademark actions (requires an “exceptional case”) than in copyright actions… For another thing, the statutory damages available in a copyright action are a lot more generous than in a trademark action. Then, too, the standard of proof in a copyright action is a lot more favorable to a plaintiff: Strict liability as to copying, with fair use being a preponderence test (but defendant’s burden of persuasion), versus preponderence of confusion requiring presentation of expert evidence in all but the clearest cases for trademark matters, which also cunningly shifts the burden of proof from the defendant to the plaintiff on the equivalent of a fair-use defense.”

In addition, Petit explained in an email guiding me to the article, trademark law, as it pertains to character protection, is “a complete mess. largely thanks to misguided law from the Second Circuit (New York) relating to film adaptations in the 1930s through 1950s… but not entirely. The Ninth Circuit hasn’t gotten it right, either, but it’s at least more coherent and aware of creative process issues than is the Second.”

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