'Zorro' Lawsuit Parries Past Motion to Dismiss

A playwright has another swipe at proving Zorro should be in the public domain.
Photofest
'The Mask of Zorro' (1940)

En garde! A legal duel over whether Zorro is in the public domain continues, after a California federal judge on Tuesday declined to dismiss a copyright infringement lawsuit that could declare the iconic character free for all to use. 

Robert Cabell sued Zorro Productions Inc. and its owner, John Gertz, in 2013 claiming it "built a licensing empire out of smoke and mirrors" and Zorro should be in the public domain. Cabell says he published Z — The Musical of Zorro in 1996 based on author Johnston McCulley's 1919 story The Curse of Capistrano. The legal fight began when Cabell licensed his musical to be performed in Germany and Gertz threatened litigation, but it was the playwright who lunged first with this suit.

Cabell was seemingly defeated in 2014 when U.S. District Judge Ricardo Martinez tossed the suit on jurisdictional grounds — because it was initially filed in Washington, D.C. — but Martinez reconsidered his decision and revived the suit by transferring it to California

The playwright argues that the copyright in McCulley's story expired in 1975 and Douglas Fairbanks' rights in the first 1920 film expired in 1976. Cabell claims that ZPI knows those rights expired and is falsely asserting trademarks and copyrights in the name and likeness of Zorro anyway. He filed a petition to cancel ZPI's "Zorro" trademark in 2002, but voluntarily withdrew it as part of a "walk-away agreement" negotiated by Sony Pictures in an effort to avoid impacting its release of Legend of Zorro. Cabell agreed to back off the trademark petition, while ZPI agreed not to challenge the playwright's own copyrights and trademarks. 

The peace didn't last long, though, as Cabell claims ZPI repeatedly interfered with his ability to license his musical for performances in the U.S. and abroad — and that ZPI used material from his script, which he had provided to Gertz in 1996, in a musical based on Isabel Allende's 2005 book Zorro. Specifically, he asserts that both the book and the play copied his incorporation of gypsies and flamenco dancing into a story about young Don Diego de la Vega before he becomes Zorro. 

U.S. District Judge Edward Davila on Tuesday granted in part and denied in part ZPI's latest motion to dismiss Cabell's suit. He dismissed the claims for cancellation of federal trademark registration and fraud, and some portions of his claim for tortious interference, with leave to amend. (The full decision is posted below.)

As to Cabell's copyright claims, Davila held that neither side disputes access to the works and that it is premature to evaluate substantial similarity as a matter of law. "This case lacks the kind of comprehensive factual record and undisputed facts that would allow the court to apply the 'extrinsic test' at this stage, and there is no support for Defendants’ argument that doing so is required for the purposes of a motion to dismiss," the judge writes. 

Next, Davila addresses Cabell's claim for a declaratory judgment of non-infringement that would allow him to license his musical without the threat of litigation from ZPI, which the judge declined to dismiss. 

"Multiple legal disputes have already arisen between the Parties in the United States and elsewhere, none of which have fully resolved the issues, and the parties appear willing and likely to continue such disputes going forward should their issues not be resolved," writes Davila. "[T]he court finds that Plaintiff has asserted a “real and reasonable” apprehension that he will be subject to copyright liability if he endeavors to produce his Musical, and that this apprehension is the result of Defendants’ actions." 

Davila granted dismissal of Cabell's claim for cancellation of ZPI's trademark on the grounds that the statute of limitations has passed, and the judge did not offer specific facts to support his argument that the "walk-away agreement" paused the clock on those claims. He also granted dismissal of the fraud claim, finding his basis for the claim appears to be misrepresentations ZPI made to third parties when "fraud requires a showing of 'justifiale reliance by the plaintiff.'" The court is giving the playwright leave to amend, so he'll get another shot at advancing those points.  

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