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Will Zorro, the masked avenger character popularized in Douglas Fairbanks and Antonio Banderas films, emerge from the shadows of Hollywood’s past to limit the reaches of intellectual property?
Late last month, the cancelation division of the office that manages community trademarks within the European Union issued a ruling declaring that a “Zorro” trademark was invalid in the categories of printed matter and entertainment. According to a just-released English version of the ruling, when the average consumer sees “Zorro,” he or she will assume the story of the character is being told, but not recognize “Zorro” as an indicator of origin. As such, it’s deemed to be merely descriptive and not sufficiently distinctive.
The decision is a blow to Zorro Productions Inc, which claims to have inherited intellectual property rights deriving from Johnston McCulley‘s first Zorro story, published in 1919. The company is run by John Gertz, who has assigned Zorro rights to Sony Pictures, which according to documents leaked in the hack, has been in discussions with Quentin Tarantino about doing a Django Unchained/Zorro crossover film.
Gertz‘ company, though, has been engaged in a big legal war with Robert Cabell, the author of a work entitled “Z — The Musical of Zorro.”
In order to beat back threats and have the right to mount productions of his Zorro musical, Cabell has been attacking both the copyright and trademarks associated with Zorro. With respect to the former, Cabell has asserted that McCulley’s 1919 story and Fairbanks’ 1920 film were owned by the publisher and now are in the public domain. As to trademarks, Cabell alleges they were registered fraudulently.
Now, in pressing for the invalidity of “Zorro” trademarks, Cabell has won a decision at the EU’s Office for Harmonization in the Internal Market. The ruling seems to limit how film titles and literary characters can serve as trademarks.
“If a title in question is famous enough to be truly well known to the relevant public where the mark can be perceived in the context of the goods/services as primarily signifying a famous story or book title, a mark may be perceived as non-distinctive,” states the decision. “A finding of non-distinctiveness in this regard will be more likely where it can be shown that a large number of published version of the story have appeared and/or where there have been numerous television, theatre and film adaptations reaching a wide audience.”
Zorro, which has resulted in 38 films, fits this description, says the Office for Harmonization, which adds that “although it is possible for titles of books or names of fictional characters to function as indicators of trade origin, it is dependent on the particular goods and services which they are applied for.”
The Office for Harmonization doesn’t rule out “Zorro” paint, pencils or fruit, but says it is incapable of performing a distinctive role in relation to printed matter, entertainment, cultural activities and sporting activities.
The question of copyright is another matter as copyright law protects works of authorship while trademark law protects the sourcing of goods and services. (Put another way, copyright is to artistic expression as trademarks are to branding.) There is some crossover, which leads to considerable confusion, and the Office for Harmonization notes that “Zorro” may still be protected on copyright grounds. That will be decided by courts in both Germany and the United States. In 2013, a German judge refused ZPI’s demanded injunction on Cabell’s musical by expressing doubts over Gertz‘s copyright authority. The matter is still pending, however. In the United States, the intellectual property associated with “Zorro” is being considered by a California judge after the case was revived this past February.
Here’s the full decision ordering cancelation of the “Zorro” trademark.
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