Judge Nixes Playwright's Bid to Free 'Zorro' From Intellectual Property Grip

Zorro Key Art - P 2013

Zorro Key Art - P 2013

What's the difference between masked vigilante Zorro and detective Sherlock Holmes? Answer: Tyranny and diligence.

In May 2013, Robert Cabell brought a lawsuit that aimed to free Zorro from the grip of intellectual property. The plaintiff had authored a work entitled "Z — The Musical of Zorro" and after striking a deal to mount a production in Germany, reported being on the receiving end of threats by Zorro Productions Inc (ZPI).

ZPI had inherited many rights deriving from Johnston McCulley's first Zorro story published in 1919 and made a business of licensing those rights. Among its endeavors was ushering in two movies starring Antonio Banderas as well as Isabel Allende's 2005 Zorro novel. A planned reboot by 20th Century Fox titled Zorro Reborn has apparently languished.

According to Cabell's complaint filed in Washington federal court, "Defendants have built a licensing empire out of smoke and mirrors," and that they "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."

Seeking a declaration of non-infringement, permanent injunctive relief and cancelation of trademarks, Cabell's lawsuit wasn't altogether that different than a legal effort by Leslie Klinger to free much of the Sherlock Holmes canon. But there are differences in how the two lawsuits played out.

The heirs of Sir Arthur Conan Doyle took their sweet time responding to the lawsuit over Sherlock Holmes, and once they did, they espoused an odd legal theory how works published after 1920 protected those published before that time, and that if a court denied this, it risked giving the detective character "multiple personalities." The theory was rejected by a federal judge and then an appeals court.

Meanwhile, John Gertz and his ZPI came forward with a more straightforward way to block to an intellectual property challenge. The claims, they argued, had no business being adjudicated in Washington.

Last week, U.S. District Judge Ricardo Martinez agreed, concluding that ZPI's licensing agreements weren't expressly aimed at Washington, that events like Allende's book being published there didn't confer personal jurisdiction over the defendants, and that cease and desist letters sent to Germany hardly hinged on contact with the state.

"Accordingly, the Court finds that Plaintiff has not shown a sufficient nexus between his claims and ZPI’s forum related activities to permit this Court to extend the long arm of its jurisdictional authority to ZPI," wrote the judge in dismissing the lawsuit.

Having decided this, the judge didn't even get to ZPI's other defenses, including ones arguing the claims were barred by the statute of limitations and that a work in the "public domain" didn't mean that a work couldn't be protected as a trademark.

The parties are currently involved in litigation in Germany, though the dispute there is unlikely to produce the result that Cabell had originally wanted. ZPI's legal efforts were led by David Aronoff at Lathrop & Gage.

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