Judge Revives 'Zorro' Rights Fight After Reconsidering Earlier Ruling (Exclusive)

Could a battle over whether the masked character is in the public domain impact Quentin Tarantino's future film plans?

A lawsuit that could free the masked avenger character Zorro from the intellectual property grip of Zorro Productions Inc. (ZPI), and by extension Sony Pictures Entertainment, is back on after a federal judge on Tuesday changed his mind on dismissing it. The reinstated case, now being transferred from Washington to California, could impact Sony's plans to re-ignite the franchise.

The plaintiff in the case is Robert Cabell, who in 1996, published a musical entitled "Z – The Musical of Zorro," that's based upon author Johnston McCulley's first Zorro story published in 1919 and the Douglas Fairbanks film that was released the following year.

ZPI, owned by John Gertz, inherited the Zorro rights from his father, who got it from McCulley, and threatened Cabell for licensing his musical in Germany.

In reaction to the threats, Cabell sued ZPI in March 2013, asserting that Zorro is in the public domain, that ZPI "built a licensing empire out of smoke and mirrors," and that ZPI's trademarks on the character should be canceled.

The following month, Cabell amended his lawsuit to add that although his musical was based on material in the public domain, it also contained significant original material and that ZPI "have copied Mr. Cabell’s material and used it as the basis for a book and a musical of their own."

But unlike the outcome of a lawsuit to free much of the Sherlock Holmes canon, Cabell's attempted incursion on Zorro rights failed on the first go-around when U.S. District Judge Ricardo Martinez ruled that the dispute had no business taking place in Washington.

After the decision, Cabell's attorney Greg Latham urged reconsideration on the basis that the judge should have decided to transfer the case instead of dismissing it.

Judge Martinez now agrees, and ironically in a lawsuit that aims to establish that a character created nearly a century ago is in the public domain, it's Cabell's amended claim that his musical was infringed upon that provided salvation for the plaintiff.

According to the latest opinion, "Because the Copyright Act bars recovery for any damage claim that accrued more than three years before commencement of the suit, dismissal will preclude Plaintiff from seeking recovery for alleged infringement from March 2010 through February 2012, a substantial interval. Dismissal will also waste private and judicial resources by forcing Plaintiff to revisit already trodden ground in order to initiate a new action in California."

So the judge is just having the case transferred to a California district, where the defendant will likely seek to have the lawsuit dismissed again on alternative grounds previously offered. Namely, that Cabell's claims are barred by the statute of limitations and that a work in the public domain — if it's really there — doesn't mean it can't be protected as a trademark.

As the dispute continues, Sony Pictures will be watching closely. According to documents leaked in the hack, Sony has spent a good amount of money on this very case, has been assigned rights to Zorro by Gertz' company, and has had discussions with Quentin Tarantino about doing a Django Unchained/Zorro crossover film with a tentative 2017 release date.

Email: Eriq.Gardner@THR.com
Twitter: @eriqgardner

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