No magic needed for Harry Potter's victory in trademark battle

In JK Rowling v Stouffer, the plaintiff has successfully sought a declaratory judgment that her popular Harry Potter books did not violate another author's trademarks and copyrights in the term 'Muggles' and other fictional characters.

The defendant, Nancy Stouffer, is the author of several fictional children's books. Her works include characters called 'Muggles', 'Larry Potter', 'Lilly', 'Nimbus', 'Nevils' and 'Keeper of the Gardens'. Rowling's Harry Potter books include the character names 'Muggles', 'Harry Potter', 'Lily Potter', 'Nimbus 2000', 'Neville' and 'Keeper of the Keys'.

Rowling sought a declaratory judgment that her Harry Potter books did not infringe on Stouffer's copyrights and trademarks, and sought injunctive relief barring Stouffer from claiming that her trademarks and copyrights had been violated. Stouffer asserted counterclaims for the following:

• federal trademark infringement;
  
  
• trademark infringement under New York state law;
  
  
• false designation of origin in violation of federal law;
  
  
• unfair competition under state law;
  
  
• dilution and tarnishment; and
  
  
• copyright infringement.

Stouffer's first four counterclaims required her to show that Rowling used the contested intellectual property in a manner likely to cause consumer confusion. The US district court noted that while courts often look to eight factors enumerated in Polaroid v Polarad Elecs Corp, 287 F2d 492 (2d Cir 1961), to decide on IP infringement, a court "should focus on the ultimate question of whether consumers are likely to be confused as to the source of the two parties' merchandise." It determined that it need not address each of the Polaroid factors, but instead compared the Harry Potter books to Stouffer's works, and analyzed the alleged similarities cited by Stouffer.

The court concluded that "no reasonable juror could find a likelihood of confusion as to the source of the two parties' works." It analyzed the two author's differing uses of the allegedly infringing terms and found that the similarities between Stouffer's books and the Harry Potter books were "minimal and superficial". Even when the similarities were considered in the aggregate, they could not give rise to a likelihood of confusion. Accordingly, the court granted Rowling's motion for summary judgment seeking to dismiss Stouffer's first four counterclaims.

With respect to the dilution and tarnishment counterclaims, the court found that Stouffer did not possess sufficient trademark rights in the 'Muggles' term for purposes of a state law dilution claim - a prerequisite for which is the ownership of "an extremely strong mark" that is "distinctive" or has acquired secondary meaning.

In conclusion, the court:

• granted Rowling's motion for summary judgment in its entirety;
  
  
• declared that Rowling's publication of the Harry Potter books did not violate any of Stouffer's IP rights; and
  
  
• permanently enjoined Stouffer from indicating that Rowling had violated her IP rights.

Liz Stewart Bradley, Morgan Lewis & Bockius LLP, Washington DC