Will the “Mark” of Zorro Defeat Court’s Public Domain Ruling?

Stephen Carlisle May 17, 2018

With hallmark examples of thrust and parry that create a great swordfight on the movie screen, the nearly twenty year dispute over a musical about the fictional character “Zorro” just got a little clearer. On May 11, 2018, a Federal District Court in California issued a ruling that held ¹:

• The character “Zorro” was in the public domain
• Nothing in the Plaintiff’s rival musical infringed the Zorro rights holder’s copyrights
• A newly commissioned Zorro novel did not infringe on Plaintiff’s musical, BUT
• A newly commissioned Zorro musical might have infringed on the Plaintiff’s copyrights

The character of Zorro first appeared in the serialized story “The Curse of Capistrano” by Johnston McCulley in 1919. ² A movie adaptation “The Mark of Zorro” starring Douglas Fairbanks followed in 1920, ³ and a second serialized story by McCulley, “The Further Adventures of Zorro,” was published in 1922. ⁴ Since all were published in the United States prior to 1923, all are in the public domain. ⁵

Yet, as with all characters who, like Zorro (and Sherlock Holmes ⁶), are enduringly popular, every effort is expended to continue legal control over them through a variety of methods, starting off with the threat of litigation. ⁷

The Plaintiff here is Robert Cabell. He is the author of a Zorro musical titled “Z – The Musical of Zorro” which was first published in 1996. ⁸ The Zorro material used was limited to that from “The Curse of Capistrano” and the motion picture “The Mark of Zorro.” Original material was also added, and in the registrations filed with the Copyright Office he limited his claim “only to the original, novel elements of his work and do not include those elements present in any Zorro works that were in the public domain as of 1996.” ⁹

In 1996, Cabell entered into negotiations with Defendant Zorro Productions, Inc., the successor in interest to McCulley, to secure a license. ¹⁰ Needless to say, the negotiations broke down, and threats of litigation by ZPI stymied Cabell’s efforts for many years to come. ¹¹

This eventually led to Cabell filing suit in 2013, ultimately seeking a declaratory judgement that his musical did not infringe any of ZPI’s copyrights, and that ZPI had in fact commissioned other works that had infringed on his musical. ¹²

Now, the early Zorro works are clearly in the public domain. How did ZPI respond to the demand for declaratory judgement on the issue of non-infringement?

Surprise! It didn’t.

This was a tactical decision to pull the rug out from under the Plaintiff by contending that there was no active case or controversy for the Court to decide. “Defendants point out that they have undertaken no efforts to interfere with any productions of the Cabell Musical in the U.S. for over 15 years, and Plaintiff has not undertaken any efforts—i.e., ‘completed all preparatory work’—to stage such productions.” ¹³ Further, the Court noted that ZPI failed to file a counter-claim for copyright infringement against Cabell, which is a compulsory counterclaim in a declaratory action for non-infringement. ¹⁴

In essence, they gave up. Yet, by failing to defend, ZPI argued that this prevented the Court from ruling on the issue at all. It didn’t work.

“Defendants’ position is not compelling in light of the parties’ contentious history, as well as evidence that Defendants threatened Plaintiff and other third parties with litigation if they produced the Cabell Musical.” ¹⁵

Faced with a case where ZPI basically “rolled over and played dead” with regard to the copyright issue, the Court found it very easy to rule in favor of Cabell, holding the material, and presumably including the Zorro character, were in the public domain. ¹⁶

But of course, the case does not end there. Because once again, there’s the whole trademark gambit to effectively do an end run around the copyright act.

Like Tarzan before him, Zorro’s owners have registered a slew of trademarks for the mark of “Zorro,” including t-shirts and “statuettes of porcelain.” ¹⁷

“Statuettes of porcelain”? Really?

But I digress.

The main weapon here is registration number 2198254. This is the registration for the “Zorro” mark for “entertainment in the nature of theater productions.” Yet, the timing of this registration indicates that the true purpose is to keep Zorro out of the public domain.

Rewind back to 1996, when Cabell first approached ZPI about obtaining a license. Talks broke down for good on April 1, 1997.

“Plaintiff sent [ZPI] a letter informing him that ‘[t]hough I appreciate your past support it seems in actuality, the only thing you are able to license to me is the Zorro logo, which I have absolutely no interest in…. You must understand that I will continue this project under the rights of public domain….’” ¹⁸

The response of ZPI was swift.

“That same day, [ZPI] replied ‘I understand clearly that you have decided that my company’s rights are unnecessary for your project, and that you intend to proceed without our rights…. [S]ince you seem determined to proceed onwards, I will simply inform you of the obvious: any attempt to produce your play before a paying audience will result in an immediate law suit.’” ¹⁹

A little more than four months later, September 16, 1997 to be precise, ZPI files a trademark application with the USPTO for use of the Zorro mark with “entertainment in the nature of theater productions.” In the application, it asserts that the first use of the mark in this fashion was May 19, 1993, more than four years earlier. Plus, there had also been an authorized Zorro Musical that premiered in London in February of 1995. ²⁰ Why wait so long? It seems rather obvious that the threat of a competing Zorro stage production is the true motivating factor for the filing.

Present in the suit, but not made a subject of the motion for summary judgment, is Cabell’s action to cancel the Zorro trademark registrations. ²¹ We have been down this road before. ²²

Back on June 16, 2015, the European Union’s Office for Harmonization in the Internal Market, in ruling on Cabell’s petition, declared Zorro to be partially invalid as a trademark for “entertainment.” ²³

Back then they wrote:

“Because of the fame of the fictional character Zorro, and his particular characteristics, the relevant public will consider the trade mark “ZORRO” as simply a description of the content of the goods and services…If the relevant public understands the name of a novel character as a synonym for a certain character, in view of its well-known nature, it is devoid of any distinctive character…In light of the above, the trade mark “ZORRO” will not be recognised [sic] as an indicator of trade origin, but rather a non-distinctive name for, and subject matter of the goods and services.” ²⁴

Remember, in order for a character to achieve trademark status, it must directly point to the source of the goods or services in the mind of the public. This is the essence of “secondary meaning.” As I have written previously, while this is probably true with the case of Mickey Mouse, ²⁵ it is much less certain for other characters.

Put more simply, the public knows instinctively that Mickey Mouse points to Disney. Does the general public know that “Zorro” points to Zorro Productions, Inc.? Doubtful.

But perhaps the bitterest pill for ZPI to swallow was the Court’s ruling that there was sufficient evidence of substantial similarity supporting Cabell’s claim for infringement by ZPI’s own musical. This prevented summary judgment and the case must now go to a jury. ²⁶

Also for the future is the claim to cancel ZPI’s Zorro trademarks. If the Court fails to cancel ZPI’s trademarks, will this mean the Court will rule that the “mark of Zorro” prevents Cabell’s musical from going forward?

Stay tuned.