March 14, 2013 9:59am PT by Eriq Gardner
'Zorro' Rights Challenged as Invalid and Fraudulent
For nearly a century, the masked outlaw Zorro has been a popular character who, in books and films, has been featured defending against tyrannical villains who seek to oppress the masses. Zorro has been played by Douglas Fairbanks, Antonio Banderas and others. Next year, 20th Century Fox is scheduled to release Zorro Reborn, starring Gael Garcia Bernal.
But now comes a big attempt to free Zorro from any intellectual property grip.
On Wednesday, a lawsuit was filed that asserts that Zorro is in the public domain, that trademarks on the character should be canceled and that the company currently professing rights on Zorro has perpetrated a fraud and that the masses should be able to exploit Zorro as they wish.
According to complaint, "Defendants have built a licensing empire out of smoke and mirrors."
The lawsuit, filed in Washington federal court, comes from Robert Cabell, who says that in 1996, he 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 Fairbanks film that was released the following year.
Cabell now says that he has been threatened with litigation after licensing his musical so that it can be performed in Germany this summer. The threats allegedly come from John Gertz, who owns Zorro Productions Inc.
As a result of the reported threats, Cabell has gone to court with a complaint that's similar to the one that was recently filed in an attempt to declare "Sherlock Holmes" in the public domain. Except this one goes even further by alleging fraud on Gertz' part.
"Specifically," says the lawsuit, "Defendants have fraudulently obtained federal trademark registrations for various Zorro marks and falsely assert those registrations to impermissibly extend intellectual property protection over material for which all copyrights have expired. Defendants also fraudulently assert that copyrights for later-published material provide defendants with exclusive rights in the elements of the 1919 story and the 1920 film."
In support of the claim, Cabell points to past litigation, including a lawsuit that was filed by Sony Pictures more than a decade ago against Paramount and others over the short-lived TV series, Queen of Swords. Sony made the 1998 film starring Banderas and is also reportedly working on a reboot.
In a 2001 decision, in a footnote, a federal judge said, "It is undisputed that Zorro appears in works whose copyrights have already expired, such as McCulley's story The Curse of Capistrano and Fairbanks's movie, The Mark of Zorro."
Cabell says that despite the ruling, Gertz and his company have fraudulently obtained multiple trademark registrations on Zorro and after allegedly duping the Trademark Office, have been using the registrations to prevent others like him from exploiting expired Zorro intellectual property.
He says that in February, the general counsel of Zorro Productions sent a letter threatening further action should the performance at a German festival proceed.
Cabell now seeks a declaration of non-infringement, permanent injunctive relief and cancellation of trademarks. He's also seeking damages for tortious interference, fraud and violation of the Consumer Protection Act. He's represented by Greg Latham, an attorney in New Orleans.
We've reached out to Gertz and will provide any response he gives.
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