IP Law Daily, TRADEMARK NEWS: Author of “Zorro” Musical Based on Public Domain Works Seeks Cancellation of ZORRO Marks, Declaration of Copyright and Trademark Noninfringement, (Mar 14, 2013)

By Cheryl Beise, J.D.

Robert W. Cabell, author of a 1996 musical titled “Z—The Musical of Zorro,” has filed a lawsuit against the owner of six ZORRO trademark registrations. Zorro Productions, Inc. and its owner (John Gertz) allegedly fraudulently obtained the ZORRO registrations in order to prevent others from creating works based on the well-known fictional masked avenger character “Zorro,” which passed into the public domain in the 1970s, when copyrights expired for the original “Zorro” story and movie. The complaint in Cabell v. Zorro Productions, Inc. was filed March 13 in the federal district court in Seattle.

Cabell asserts that his musical is expressly based upon the fictional character “Zorro,” created in 1919 by New York-based author Johnston McCulley in a story titled “The Curse of Capistrano,” which was published as a five-part serialization in the magazine, All-Story Weekly. McCulley’s story was so popular that the following year it was adapted into a silent movie titled “The Mask of Zorro” produced by and starring Douglas Fairbanks, Sr. Cabell’s production “stars Zorro as he is described in the earlier works now in the public domain: a masked avenger leading a double life, donned in black mask, black sombrero, black cape, and with a sword and whip,” according to the complaint. The complaint also states that all copyright interest arising out of the 1919 story “The Curse of Capistrano” and the 1920 silent movie “The Mark of Zorro” expired no later than 1975 and 1976, respectively.

Cabell’s musical, which premiered in Eugene, Oregon in 2000, is scheduled to be performed this summer in Germany under license from Cabell as part of the Clingenburg Festspiele (festival). Cabell has licensed rights to the musical to his affiliates in Germany and is entitled to receive royalty payments or licensing fees in connection with the performances.

The complaint alleges that on February 20, 2013, Gertz sent an email to the Director of the Clingenburg Festspiele, Marcel Krohn, falsely claiming that ZPI “owns all right, title and interest in ZORRO…” and that Cabell’s musical infringes upon ZPI’s copyrights and trademarks. The email allegedly urged the festival to “avoid an inevitable lawsuit” by refusing to produce Mr. Cabell’s musical and instead, to produce a ZPI’s musical version of Zorro. The next day, ZPI’s general counsel sent a similar email to the festival’s director, claiming that “the name, visual likeness, and character of ZORRO is controlled by” ZPI. Two days later, Willem Metz, General Manager for Stage Entertainment Licensed Productions (“SELP”), sent an email to legal counsel for the festival, threatening to “undertake all necessary legal actions to stop the Clingenburg production” SELP, based in the Netherlands, is also named as a defendant in the suit.

“The real purpose of the defendants’ communications to Mr. Cabell’s licensees was to convince the Clingenburg Festival—through bullying and scare tactics—to cancel production of Mr. Cabell’s musical and, instead, produce an event based on a musical purportedly owned by ZPI,” the complaint states.

The complaint alleges ZPI has falsely asserted ownership rights in worldwide trademarks and copyrights in the name, visual likeness, and character of Zorro. Specifically, the defendants “fraudulently assert that copyrights for later-published material provide defendants with exclusive rights in the elements of the 1919 story and the 1920 film” and they “fraudulently obtained federal trademark registrations for various ‘Zorro’ marks” in order to “impermissibly extend intellectual property protection over material for which all copyrights have expired.”

Declaration of noninfringement. The complaint seeks a declaration that Cabell’s musical does not violate any of the defendant’s intellectual property rights, a preliminary and permanent injunction against the defendants prohibiting them from making claims that Cabell’s musical infringes upon their intellectual property rights, and monetary damages.

Cancellation of trademark registrations. The complaint requests an order for cancellation of trademark registrations issued to ZPI by the USPTO for the term ZORRO as it relates to literary works, visual arts, and performing arts: (1) Reg. No. 1,524,207 for story books; (2) Reg. No. 1.731,743 for television shows; (3) Reg. No. 1,912,515 for comic books; (4) Reg. No. 2,296,302 for books regarding fictional characters; (5) Reg. No. 2,239,219 for video discs, featuring music and entertainment; and (6) Reg. No. 2,198,254 for entertainment, specifically theater productions.

State law claims. Cabell also asserts claims for fraud, tortious interference with contract and business expectancy under Washington law, and violations of the Washington Consumer Protection Act arising out of the emails sent by ZPI, Gertz, and SELP to the Clingenburg Festival director.

The case is No. 2:13-cv-00449.

Attorneys: Greg Latham (Intellectual Property Consulting) and Michael G. Atkins (Atkins Intellectual Property, PLLC) for Robert W. Cabell.

Companies: Zorro Productions, Inc.; Stage Entertainment Licensed Productions

News: Copyright Trademark WashingtonNews