Kraut, Barbara Fox

English

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DePaul Journal of Art, Technology & Intellectual Property Law Volume 3 Issue 2 Spring 1993 Article 7 King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992) Barbara Fox Kraut Follow this and additional works at: https://via.library.depaul.edu/jatip Recommended Citation Barbara F. Kraut, King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992), 3 DePaul J. Art, Tech. & Intell. Prop. L. 80 (1993) Available at: https://via.library.depaul.edu/jatip/vol3/iss2/7 This Case Summaries is brought to you for free and open access by the College of Law at Via Sapientiae. It has been accepted for inclusion in DePaul Journal of Art, Technology & Intellectual Property Law by an authorized editor of Via Sapientiae. For more information, please contact digitalservices@depaul.edu. of recycling newspaper paper required the exemptionfor newspapers. Nevertheless, because the Depart-ment looked at the contents of a publication in deter-mining whether it was considered a newspaper fortaxation purposes, the statute was not narrowlydrawn for this interest either. 3 Stressing that themeans must be narrowly tailored to achieve the endgoal of recycling, the court implied in dicta that recy-cling would be a valid interest only if the DepartmentOf Revenue looked solely at the type of paper usedin determining whether a publication would betaxed. 4 The Florida Supreme Court held that the taxcould not pass muster under strict scrutiny."5In determining the appropriate remedy for thisviolation, the court applied state law. 6 The Floridastatute made it clear that between the imposition of atax or the granting of an exemption, the imposition ofa tax should prevail. Accordingly the Florida SupremeCourt reversed the trial court's invalidation of the taxand ordered it to strike the newspaper exemption sothat the Florida Department of Revenue would nowimpose the tax on magazines and newspapers equal-ly.CONCLUSIONThe Florida Supreme Court found the Florida taxscheme differentiated between newspapers and mag-azines based on their content and therefore appliedstrict scrutiny. Ultimately the court found the taxationscheme violated the First Amendment because it wasnot narrowly tailored to achieve a compelling govern-ment interest. Although the state had a compellinginterest in both literacy and recycling, the statute wasnot narrowly drawn toward either end.Sarah Joyce1. Leathers v. Medlock, -U.S.-, 111 S. Ct. 1438 (1991).2. Department of Revenue v. Magazine Publishers, 604So.2d 459, 461 (Fla. 1992).3. Id. ( citing, Leathers v. Medlock, -U.S.-, 111 S. Ct. at1443-44).4. Id.5. Department of Revenue v. Magazine Publishers, 604So.2d at 462.6. Leathers v. Medlock, -U.S.-, 111 S. Ct. 1438; ArkansasWriters' Project v. Raglund, 481 U.S. 221 (1987).7. Id. at 1447.8. Arkansas Writers' Project v. Raglund, 481 U.S. 221 n. 4.9. Department of Revenue v. Magazine Publishers, 604So.2d 459 at 461.10. FLA. ADMIN. CODE ANN. 12A-1.008(1)(b) provides:(b) In order to constitute a newspaper, the prin-cipal purpose of the publication must be to dis-seminate news and contain at least the followingelements.... 5. It must routinely contain reports ofcurrent events and matters of general interestwhich appeal to a wide spectrum of the generalpublic. If the publication is intended for generalcirculation to the public and is devoted primarilyto matters of specialized interests such as legal,mercantile, political, religious, or sporting mat-ters, and it contains in addition thereto generalnew of the day, information of current events,and news of importance and of current interestto the general public, it is entitled to be classedas a newspaper.11. Id. at 462.12. Id. at 463.13. Id.14. Id.15. Id.16. Id. at 463-4 (citing Texas Monthly v. Bullock, 489 U.S. 1(1989) (Supreme Court held "it is not for us to decide whether thecorrect response as a matter of state law to a finding that a state taxexemption is unconstitutional is to eliminate the exemption, to cur-tail it, to broaden it or to invalidate the tax altogether").King v. Innovation Books,976 F2d 824 (2d Cir. 1992).INTRODUCTIONStephen King ("King") sought to enjoin the pro-ducer and distributer of the motion picture "THELAWNMOWER MAN" from using a possessory creditor a "based upon" credit which associated King'sname with the motion picture. King claimed that theuse of his name in conjunction with the motion pic-ture falsely designated him as the originator of themovie in violation of section 43(a) of the Lanham Act.The Court of Appeals for the Second Circuit held thatKing was entitled to a preliminary injunction againstthe use of King's name "on or in connection with" themotion picture; however, King was not entitled to aninjunction against the use of a "based upon" credit.'FACTSKing is a famous horror writer. The defendantsare Allied, a British motion picture production compa-ny and New Line, an American motion picture distrib-ution company.In 1970, King wrote a short story called "TheLawnmower Man" (the "Short Story"). King assignedthe motion picture and television rights for the ShortStory to Great Fantastic Picture Corporation, whichlater transferred its rights to Allied. After the screen-play for the feature-length motion picture was com-pleted, Allied licensed the distribution rights to themotion picture in North America to New Line. Kingwas not involved in the creation of the screenplay orin the production of the motion picture. In February1991, the defendants began to market the motion pic-ture as "Stephen King's THE LAWNMOWER MAN,"and as "based upon" a short story by King.After King first learned about the motion picturein October 1991, King ordered his attorney to informthe defendants that he objected to the use of both thepossessory credit and "based upon" credit and that hewished to see a copy of the film. On March 3, 1992,just days before the release of the motion picture intheaters, the defendants allowed King to view the80 Journal of Art & Entertainment LawJournal of Art & Entertainment Law 1Kraut: King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992)Published by Via Sapientiae, 2016motion picture. In the meantime, the defendants werestill advertising "THE LAWNMOWER MAN" with bothpossessory and "based upon" credits.In May, 1992, King filed suit against the defen-dants in the United States District Court for theSouthern District of New York, seeking damages andan injunction for the use of the possessory and "basedupon" credits. King claimed that the credits violatedsection 43(a) of the Lanham Act because the creditswere false and misleading. 2 The district court granteda preliminary injunction against the defendants' use ofthe credits. The injunction prohibited the defendantsfrom using King's name "on or in connection with"the motion picture.' The defendants appealed.LEGAL ANALYSISKing argued that he was entitled tb a preliminaryinjunction against the use of possessory and "basedupon" credits since he was likely to succeed on themerits of his claim that the possessory and "basedupon" credits were false and misleading in violationof section 43(a) of the Lanham Act. On appeal, theCourt of Appeals for the Second Circuit analyzed thepossessory credit separately from the "based upon"credit.First, the Court of Appeals held that the possesso-ry credit was false and therefore the district court wascorrect to enjoin its use. The general rule is that afalse or misleading reference to the origin of a workis a violation of section 43(a) of the Lanham Act.' Apossessory credit is usually given to the director, pro-ducer or writer of a motion picture. At a minimum, apossessory credit acknowledges a person who hadsome involvement in or gave approval to a motionpicture or screenplay., The words "Stephen King'sTHE LAWNMOWER MAN" implies that King hadsome involvement in the screenplay or motion pic-ture. The court reasoned that King was neitherinvolved in "THE LAWNMOWER MAN" screenplay ormotion picture nor did King give his approval to themotion picture. Furthermore, the court stated, whenattribution is false on its face, as it is here, no evi-dence of public confusion is required in order togrant an injunction.6 Thus, the court held, the posses-sory credit is false and an injunction against its usewas proper.Second, the Court of Appeals held that since Kingwas not likely to succeed on the merits in his claimagainst the "based upon" credit, the district court wasincorrect to enjoin use of the "based upon" credit.Unlike the possessory credit, the "based upon" creditis proper when a work is derivative of an underlyingwork. Therefore, the "based upon" credit is givenmore "leeway" than the possessory credit.7The district court applied the incorrect standard inits determination of the "based upon" credit. The dis-trict court compared the motion picture as a whole tohow much protected material from the Short Storyappeared in the motion picture. Focusing on the pro-portion of the motion picture attributable to the ShortStory, the district court held that the "based upon"credit was misleading. However, the proper emphasisshould have been on the "proportion, in quantitativeand qualitative terms," of the Short Story appearing inthe motion picture.8 Generally, absent countervailingfacts and circumstances, a "based upon" credit is notmisleading when a motion picture takes materialrespects, both quantitatively and qualitatively, from aliterary work.9In applying this standard, the court found that thecore of the Short Story was used in the motion pic-ture. Although there were facets of the Short Storywhich did not appear in the motion picture and, like-wise, elements of the motion picture which wereindependent of the Short Story, the court believedthat the motion picture resembled in "sufficientlymaterial respects" the Short Story's qualitative andquantitative elements.Moreover, King did not offer any countervailingfacts or circumstances to prove that the "based upon"credit was misleading. There was no evidence thatthe "based upon" credit caused any industry or con-sumer confusion. Thus, since the "based upon" creditwas not misleading and, therefore, did not violatesection 43(a) of the Lanham Act, an injunction againstits use was not proper.CONCLUSIONThe Court of Appeals for the Second Circuitaffirmed the injunction against the use of King's namein a possessory credit in conjunction with the motionpicture "THE LAWNMOWER MAN". However, theprohibition against the use of King's name in a "basedupon" credit was reversed since a significant portion,both qualitative and quantitative, of King's Short Storyappeared in the motion picture. Thus, a "based uponcredit" was not misleading or confusing to the public.Barbara Fox Kraut1. King v. Innovation Books, 976 F.2d at 826 (2d Cir. 1992).2. Lanham Act, 15 U.S.C. § 1125(a) (1988).3. King v. Innovation Books, 807 F. Supp. 300, 307(S.D.N.Y. 1992).4. King, 976 F.2d at 828-29 (citing Gilliam v. AmericanBroadcasting Cos., 538 F.2d 14, 24-25 (2d Cir. 1976)).5. Id. at 829.6. id.7. Id. at 830.8. Id. at 829.9. Id. at 830.Spring, 1993 2DePaul Journal of Art, Technology & Intellectual Property Law, Vol. 3, Iss. 2 [2016], Art. 7https://via.library.depaul.edu/jatip/vol3/iss2/7

King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992)

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King v. Innovation Books, 976 F.2d 824 (2d Cir. 1992)

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