Warner Bros. v. HP websites

Sun Dec 24 00:56:49 UTC 2000

No: HPFGUIDX 7702

The Wall Street Journal

THURSDAY, DECEMBER 21, 2000

Next Up for Wizard Fans: Harry Potter and the Contested Domains --- 
Warner Bros. Studio Cracks Down On Web Sites by Devotees; Fears of 
Diluted Copyrights

   To some fans of Harry Potter, the dark Lord Voldemort isn't the 
only threat to creative wizardry these days. There's also film studio 
Warner Bros.

    The Web has sprouted thousands of unofficial fan pages honoring 
the popular character from the children's book series. Now Warner 
Bros., which is making a Harry Potter film, is claiming many of the 
Web sites violate its intellectual-property rights and is demanding 
the domain names be surrendered, though it says the fans can continue 
to run the sites. Warner Bros., a unit of Time Warner Inc., purchased 
the character's film and merchandising rights, as well as the 
trademarks and copyrights, from the books' author, J.K. Rowling.

    Earlier this month, 15-year-old Claire Field of England received 
a letter from Warner Bros.'s London legal department asking her to 
turn over the name www.harrypotterguide.co.uk. Like her plucky idol, 
the girl rebelled. She sent an e-mail to the British newspaper the 
Mirror, which ran a story about her. A U.K.-based online news site 
picked up the story, which was soon posted on online fan-related 
newsgroups. Kids as well as adults around the world are now urging 
Miss Field to fight back.

    Despite the studio's statements that it has no plans to close the 
fan sites, some Harry Potter devotees seem to believe 
otherwise. "I've just read the news that the Evil Dark Arts experts 
aka Warner Brothers are trying to cast some dark charms and shut down 
this site. GOLLY! What total ROT. We have got to get some good charms 
and wand waving to seriously sort them out," wrote one Harry Potter 
fan on Miss Field's site. "Companies like these need to be taught a 
lesson," added another. "Good luck with your site and keep it up."

    Hollywood studios have a complicated relationship with fan Web 
sites. While they welcome the publicity they can generate, they fear 
the sites' potential for diluting their copyrights and trademarks -- 
particularly if a fan site's domain name incorporates a studio 
trademark. They also worry that the sites may damage the image of the 
studios' movies and characters. However, studios have in some 
instances allowed unauthorized use of their trademarks and copyrights 
as long as the sites are produced by friendly fans and aren't seeking 
to make a profit.

    Lawyers for Paramount Pictures, a unit of Viacom Inc., several 
years ago began sending warning letters to "Star Trek" fan sites 
informing them that they were violating copyright laws. The studio 
subsequently backed off some of its threats as long as the Web sites 
were run by fans helping to promote the movie and TV series and not 
part of a commercial venture.

    Lucasfilm Ltd., the producer of "Star Wars," for several years 
allowed many of the films' fan sites to flourish. But as the 
first "Star Wars" movie in 16 years was nearing release in 1999, 
Lucasfilm executives began reining in some of the more egregious 
copyright violators by demanding they remove such elements as audio 
clips from the sites.

    Nils Montan, a senior intellectual-property lawyer for Warner 
Bros., says the studio hires "watch services" that monitor the 
Internet for domain names that involve its intellectual property and 
trademarks. When such a domain name pops up, the studio contacts its 
owner, asserts its legal rights and requests that he or she transfer 
registration to the studio, although the studio says it won't 
compensate the person beyond the $30 to $50 registration fee 
initially incurred. Mr. Montan estimates that the studio 
has "recaptured" about 600 domain names.

    The studio has about 30,000 trademarks and copyrights, Mr. Montan 
says, of which about 3,500 have registered domain names. He says that 
no one has ever successfully challenged the studio in keeping a 
domain (in fact, most companies have won lawsuits or arbitrations in 
which their trademarks were used by others in domain names). But he 
admits that the studio doesn't pursue every potential 
infringement. "We'll try to get back ones that are important to us 
commercially," he explains. Recapturing domain names registered by 
fans is also important because that way the studio can monitor these 
sites.

    As the owner of the domain name, Warner Bros. would have the 
technical capability to shut down a site. It says there have been 
instances in which Web sites using domain names involving the 
studio's copyrights and trademarks were selling counterfeit products. 
In those cases, the studio says, it had the names transferred to the 
studio and then shut down the sites.

    Its legal rights notwithstanding, Warner Bros. has enraged many 
of Harry Potter's loyal fans. Hundreds of site creators in addition 
to Miss Field have received letters from the studio.

    Christie Chang, a 15 year old from Singapore, received two 
letters from Warner Bros.'s lawyers. One says that the fan site, to 
which she devotes at least an hour a day, violates copyright laws 
because it depicts various Harry Potter images. The other letter 
demands the domain name she registered, www.harrypotternetwork.net, 
and insists she promptly contact them. Miss Chang says she doesn't 
even use the domain name because she considers it "cheesy." Instead, 
she houses her fan site at www.hpnetwork.f2s.com. Still, she has 
removed most images from the site and is scared that one day she'll 
be forced to close it.

    Scott Allison, a 28-year-old Scottish computer technician, 
eventually agreed to transfer his domain name to Warner Bros., but 
not before casting some evil spells. He posted his plight on his Web 
site as well as on an online bulletin board for Harry Potter 
fans. "All I wanted to do was set up a site for fans of Harry Potter, 
like myself, and now I'm being attacked by a large corporation who 
know I don't have the financial means to defend myself," he wrote on 
the site, encouraging people to send e-mails to Warner Bros.

    Mr. Allison says he sent the studio a letter trying to persuade 
it to resolve the issue through a domain name dispute resolution 
service, but the studio didn't go along. In the end, Mr. Allison 
closed his site, but vowed to keep up the fight. His angry postings 
on fan chat sites have turned friendly discussions about favorite 
wizards into less pleasant musings about blue-chip ogres. "Corporate 
thinking s---- ," wrote one. Others suggested boycotting Harry Potter 
altogether. "I had an interest in buying Harry Potter books for my 
nephews as a holiday gift," wrote another. "Looks like Nintendo will 
get my money instead."

    In Warner Bros.' view, the letters are standard fare. Mr. Montan, 
the studio lawyer, says that of the hundreds of letters Warner sent 
regarding Harry Potter-related domain names, none previously have 
provoked such ire. He said he is sorry if fans misunderstand Warner 
Bros.'s intentions -- especially teenagers such as Miss Chang or Miss 
Field, whose lively Web site features a chat room, quizzes and a 
dictionary of spells and potions. But, he adds, the company has no 
way of knowing if the owners are age 10 or 40, or how their future 
plans using the domain names might affect the Harry Potter brand.

    Miss Field's Web site clearly states on its opening page that it 
is an unofficial Harry Potter site with no connections to author J.K. 
Rowling, Warner Bros., or the books' publishers, Bloomsbury 
Publishing PLC and Scholastic Inc. (Neither Bloomsbury nor Ms. 
Rowling, through her agent, would comment on the fan site dispute.) 
It then gives the Web addresses for each of these companies.

    But Mr. Montan says that in some cases the owners have turned out 
to be "cyber-squatters," individuals hoping to make a fast buck off a 
potentially valuable domain name. Already there is an action pending 
against someone who has registered nearly 60 domain names using 
various trademarks related to the series, he adds.

    Whatever the scenario, he says Warner Bros. can't afford not to 
act. It already has registered some 2,000 trademarks for made-up 
Potter words such as Quidditch, a game similar to hockey but played 
in the air by wizards on broomsticks. Legally speaking, if the 
company appears to look the other way now, it could have a weaker 
case in court later. Still, says Mr. Montan: "We try to be light-
handed. We don't always succeed, but that's our intent."

    Miss Field didn't see it that way. In fact, the terse letter the 
teenager received Dec. 2 from Warner Bros. terrified her. It said Ms. 
Rowling and Warner Bros. were concerned that Miss Field's domain name 
registration would likely cause consumer confusion and dilution of 
its intellectual property rights. It gave her 28 days to transfer the 
domain name to Warner Bros., offering to reimburse her for the 
registration fee. "If we do not hear from you by 15 December 2000 we 
shall put this matter into the hands of our solicitors," it concluded.

    After the Mirror, the London tabloid, wrote about the dispute, a 
Warner Bros. spokeswoman, Barbara Brogliatti, jumped in to smooth 
things over with Miss Field's father, Les Field. However, their 
correspondences have grown acrimonious, with Mr. Field accusing Ms. 
Brogliatti of vilifying him and his daughter in the press and Ms. 
Brogliatti saying the family never should have spoken to the Mirror 
and suggesting conversations continue through their lawyers. "We're 
trying to bend over backwards to come up with a unique arrangement to 
adapt our policy if we can," says Ms. Brogliatti, explaining that 
Warner Bros. has considered licensing the domain name to Miss Field 
free of charge. As long as the studio gets final say on content, Miss 
Field would be allowed to maintain the site and bring in the fans.

    Nevertheless, all this adult talk is leaving kids confused, and 
in some cases defiant. Fifteen-year-old Arne Tutschapsky of Germany, 
creator of fan site harrypotter-buch.de, hasn't heard from Warner 
Bros., but fears he will soon. "I think it's not fair because people 
who want to be a Harry Potter fan and create a fan site about this 
should be able to do it," he says.

    Says Miss Chang, who operates the site in Singapore, "No one will 
make me close my site, save maybe my parents."