King v. Innovation Books, a Div. of Innovative Corp.

• Decision Date: 01 October 1992
• Docket Number: D,2170,Nos. 2169,s. 2169
• Citation: 976 F.2d 824
• Parties: , 20 Media L. Rep. 1809 Stephen KING, Plaintiff-Appellee, v. INNOVATION BOOKS, A DIVISION OF INNOVATIVE CORPORATION, Defendant, Allied Vision, Ltd., New Line Cinema Corporation, Defendants-Appellants. ockets 92-7713, 92-7731.
• Court: U.S. Court of Appeals — Second Circuit

Page 824

976 F.2d 824

24 U.S.P.Q.2d 1435, 20 Media L. Rep. 1809

Stephen KING, Plaintiff-Appellee, v. INNOVATION BOOKS, A DIVISION OF INNOVATIVE CORPORATION, Defendant,

Allied Vision, Ltd., New Line Cinema Corporation,

Defendants-Appellants.

Nos. 2169, 2170, Dockets 92-7713, 92-7731.

United States Court of Appeals, Second Circuit.

Argued Aug. 10, 1992.

Decided Oct. 1, 1992.

James P. Clark, New York City (Wesley G. Howell, Jr., Robert F. Serio, Mary Lee Wegner, Colleen D. Duffy, Gibson, Dunn & Crutcher, of counsel), for defendant-appellant Allied Vision, Ltd.

Joseph J. Santora, New York City (Michael S. Allen, Santora & Allen, of counsel), for defendant-appellant New Line Cinema Corp.

Paul R. Levenson, New York City (Peter A. Herbert, Sheri L. Rosenfeld, Alasdair J. McMullan, Cowan, Liebowitz & Latman, P.C., of counsel), for plaintiff-appellee.

Before: WINTER, MINER and McLAUGHLIN, Circuit Judges.

MINER, Circuit Judge:

Defendants-appellants, Allied Vision, Ltd. and New Line Cinema Corporation, appeal from an order of the United States District Court for the Southern District of New York (Motley, J.) granting a preliminary injunction in favor of plaintiff-appellee Stephen King in connection with King's claims under the Lanham Act and New York law. King, who is the author of such best-selling horror thrillers as The Shining, Carrie and Salem's Lot, contended that Allied and New Line falsely designated him as the originator of the motion picture "The Lawnmower Man," which was produced by Allied and distributed in North America by New Line. The injunction, which prohibits any use of King's name "on or in connection with" the movie, encompasses two forms of credit to which King objected: (i) a possessory credit, describing the movie as "Stephen King's The Lawnmower Man," and (ii) a "based upon" credit, representing that the movie is "based upon" a short story by King. For the reasons that follow, we affirm the district court's order to the extent that it prohibits use of the possessory credit, but reverse the order to the extent that it prohibits use of the "based upon" credit.

BACKGROUND

In 1970, King wrote a short story entitled "The Lawnmower Man" (the "Short Story"). The Short Story, published in 1975 and running about ten printed pages in length, involves Harold Parkette, a homeowner in the suburbs. Parkette begins to neglect his lawn after an incident in which the boy who usually mows his lawn mows over a cat. By the time Parkette focuses his attention again on his overgrown lawn, the boy has gone away to college. Parkette therefore hires a new man to mow his lawn. The lawnmower man turns out to be a cleft-footed, obese and vile agent of the pagan god Pan. The lawnmower man also is able to move the lawnmower psychokinetically--that is, by sheer force of mind.

After starting the lawnmower, the lawnmower man removes his clothing and crawls after the running mower on his hands and knees, eating both grass and a mole that the mower has run over. Parkette, who is watching in horror, phones the police. Using his psychokinetic powers, however, the lawnmower man directs the lawnmower after Parkette, who is chopped up by the lawnmower's blades after being chased through his house. The Short Story ends with the discovery by the police of Parkette's entrails in the birdbath behind the home.

In 1978, King assigned to Great Fantastic Picture Corporation the motion picture and television rights for the Short Story. The assignment agreement, which provided that it was to be governed by the laws of England, allowed the assignee the "exclusive right to deal with the [Short Story] as [it] may think fit," including the rights

(i) to write film treatments [and] scripts and other dialogue versions of all descriptions of the [Short Story] and at all times to add to[,] take from[,] use[,] alter[,] adapt ... and change the [Short Story] and the title[,] characters[,] plot[,] theme[,] dialogue[,] sequences and situations thereof....

(ii) to make or produce films of all kinds ... incorporating or based upon the [Short Story] or any part or parts thereof or any adaptation thereof.

In return, King received an interest in the profits of "each" film "based upon" the Short Story.

In February 1990, Great Fantastic transferred its rights under the assignment agreement to Allied, a movie production company organized under the laws of the United Kingdom and having offices in London. In May 1990, Allied commissioned a screenplay for a feature-length film entitled "The Lawnmower Man." The screenplay was completed by August 1990, and pre-production work on the movie began in January 1991. By February 1991, Allied began to market the forthcoming movie by placing advertisements in trade magazines and journals. The picture generally was described as "Stephen King's The Lawnmower Man," and as "based upon" a short story by King. Actual filming of the movie King learned of the forthcoming movie in early October 1991, from an article in a film magazine. He then contacted Rand Holston, an agent handling King's film rights, in an attempt to gather information about the film; asked Chuck Verrill, his literary agent, to obtain a "rough cut" of the movie; and instructed Jay Kramer, his lawyer, to inform Allied that King did not like the idea of a possessory credit (a form of credit apparently portended by the article).

                began in May 1991.   About one month later, Allied, through its United States subsidiary, licensed New Line, a domestic corporation with offices in New York and California, to distribute the movie in North America.   The licensing agreement was concluded in California, and a press release announcing the distribution deal was issued from that state as well.   New Line initially paid $250,000 for the distribution rights, with an additional $2.25 million to be paid thereafter
                

By letter dated October 9, 1991, Kramer advised Allied that King "d[id] not want" a possessory credit to appear on the film. Kramer also requested a copy of the movie and the tentative movie credits King was to receive. In another letter to Allied dated October 21, 1991--written after Kramer secured a copy of the movie's screenplay--Kramer advised that "we emphatically object" to the possessory credit contained in the screenplay, and noted that he had yet to receive a copy of the tentative credits.

It appears that King learned of New Line's involvement with the film in November 1991. On King's direction, Verrill contacted New Line for a copy of the film. Verrill was informed that a copy would not be available until January 1992. Verrill contacted New Line again on February 6, 1992, but this produced no copy of the film either. Kramer and Holston shortly advised New Line, in a February 18, 1992 telephone call with New Line's President of Production Sara Risher, that King was "outraged" that the movie was being described as "Stephen King's The Lawnmower Man."

In a February 28, 1992 letter, Kramer again insisted to Risher that the possessory credit was a "complete misrepresentation," and attached copies of the October 1991 letters sent to Allied. As of this time, New Line had paid the balance of the price due to Allied for purchase of the distribution rights, had expended about $7.5 million in advertising and marketing costs, and had become committed to release the movie in theaters throughout North America.

On March 3, 1992--four days or so before release of the movie in theaters--King viewed a copy of the movie in a screening arranged by Allied and New Line. The protagonist of the two hour movie is Dr. Lawrence Angelo. Experimenting with chimpanzees, Dr. Angelo develops a technology, based on computer simulation, known as "Virtual Reality," which allows a chimp to enter a three-dimensional computer environment simulating various action scenarios. Dr. Angelo hopes to adapt the technology for human use, with the ultimate goal of accelerating and improving human intelligence.

Eventually, Dr. Angelo begins experimenting with his technology on Jobe, who mows lawns in Dr. Angelo's neighborhood and is referred to as "the lawnmower man." Jobe, a normal-looking young man, is simple and possesses a childlike mentality. Dr. Angelo is able greatly to increase Jobe's intellect with Virtual Reality technology. However, the experiment spins out of control, with Jobe becoming hostile and violent as his intelligence and mental abilities become super-human. In the build-up to the movie's climax, Jobe employs his newly acquired psychokinetic powers to chase Dr. Angelo's neighbor (a man named Harold Parkette) through his house with a running lawnmower, and to kill him. The police discover the dead man's remains in the birdbath behind his home, and, in the climax of the movie, Dr. Angelo destroys Jobe.

The film and advertising seen by King contained both possessory and "based upon" credits. On the evening of March 3, after viewing the film, King wrote to Holston I think The Lawnmower Man is really an extraordinary piece of work, at least visually, and the core of my story, such as it is, is in the movie. I think it is going to be very successful and I want to get out of the way. I want you to make clear to [the] trolls at New Line Pictures that I am unhappy with them, but I am shelving ^* any ideas of taking out ads in the trades or trying to obtain an injunction to stop New Line from advertising or exploiting the picture. I would like to talk to you late this week or early next about doing some brief interviews which will make my lack of involvement clear, but for the time being, I am just going to step back and shut up.

In a March 23, 1992 letter, Kramer again advised Allied of King's "long standing objection" to the possessory credit, and also took note of "the apparent failure of [Allied] to inform New Line of Mr. King's objection until the movie was about to be released." However, no objection to the "based upon" credit ever was registered until May 20, 1992. From...