'Zorro' Licensor, in Role Reversal, Faces Trial for Copyright Infringement

The Mask of Zorro Still 1940 Tyrone Power - Photofest - H 2017

For nearly 70 years, Zorro Productions Inc. has controlled rights to Zorro thanks to an intellectual property assignment from author Johnston McCulley, who wrote the first story about the masked avenger in 1919. First run by literary agent Mitchell Gertz, and later by his son John Gertz, ZPI has spent decades licensing Zorro to Hollywood studios making movies of the popular character who frees oppressed masses from tyrannical villains.

However, the Zorro licensor may have lost its grip. Thanks to a court decision on Friday that represents the latest in a two-decades-long feud between two men, ZPI appears headed to trial as a copyright defendant for allegedly infringing a Zorro work.

The story begins in 1996.

That year, playwright Robert Cabell published a musical titled Z – The Musical of Zorro about the masked avenger leading a double life. The musical was based on McCulley's first story as well as a 1920 film starring Douglas Fairbanks. Looking to get his musical off the ground, Cabell provided his script to John Gertz.

A short time after Cabell reached out to Gertz, the playwright had a change of heart. He did the math and realized that a story published in 1919 was no longer under copyright protection.

In a 1997 letter, Cabell wrote Gertz, "Though I appreciate your past support it seems in actuality, the only thing you are able to license to me is the Zorro logo, which I have absolutely no interest in. ... You must understand that I will continue this project under the rights of public domain."

Gertz wasn't happy.

"I understand clearly that you have decided that my company's rights are unnecessary for your project, and that you intend to proceed without our rights," responded Gertz. "[S]ince you seem determined to proceed onwards, I will simply inform you of the obvious; any attempt to produce your play before a paying audience will result in an immediate lawsuit."

What followed was a continued war of words. According to Cabell, Gertz interfered with various productions of his musical around the world including an early 2000s Broadway production that never materialized due to threats. Besides copyrights, Gertz also used trademarks to assert authority. That led Cabell to petition for cancellation of registered trademarks.

In 2004, the situation appeared to cool as Sony Pictures was set to release The Legend of Zorro, starring Antonio Banderas. As part of a "walk-away agreement" negotiated by Sony, Cabell withdrew his cancellation petition, and ZPI agreed not to challenge Cabell's works.

But, this only represented temporary peace.

Around that time, ZPI entered into a license agreement with author Isabelle Allende for a book that focused on a younger version of the character titled Zorro, A Novel. Then, in 2005, ZPI authorized a new musical by a London-based company. It premiered in 2008 and was performed internationally.

As both Cabell and Gertz had stakes in Zorro musicals, they would again cross swords, especially when a German producer in 2013 became interested in mounting Cabell's version.

Eventually, this would lead to a lawsuit from Cabell challenging ZPI's authority over Zorro. Cabell not only looked for a declaration that his own musical didn't infringe any copyrights and that ZPI's trademarks were registered fraudulently, he contended that ZPI used material from his script in both Allende's book and the follow-up musical.

On Friday, U.S. District Judge Edward Davila put a coda on one aspect of this fight.

"In his original motion, Plaintiff argued that he is entitled to summary judgment of non-infringement because his musical is just a composition of elements from the public domain, it does not infringe," writes the judge. "Defendants did not respond to these arguments. The Ninth Circuit has held that a plaintiff has ‘abandoned ... claims by not raising them in opposition to [the defendant’s] motion for summary judgment.’ Accordingly, the Court deems Defendants to have abandoned the position that Plaintiff does not infringe its copyrights on the merits."

That means that Z – The Musical of Zorro, after two decades of being under a legal cloud, is officially kosher. 

Now, the question is whether ZPI has infringed Cabell's work. Although Z – The Musical of Zorro is based on material that's in the public domain, copyright law entitles those who add original expression to what has come before to gain copyright on novel elements. That transforms Cabell from accused infringer into the aggressor and if he can show that ZPI's musical lifted his own imaginative flourishes, he wins the case. Ironically, Cabell is aided in his legal pursuits by the very fact that Gertz was provided the script in 1996 for a potential license.

As Davilla sums it, "Where, as here, there is no direct evidence of copying, copying can be proven circumstantially by showing a defendant had 'access' to a plaintiff’s copyrighted material and that the two works at issue are 'substantially similar.'"

The judge doesn't see access or striking similarity when it comes to the Allende novel and throws out a copyright claim directed there, accordingly.

But when it comes to the musical, Davilla writes, "First, a reasonable juror could find that the plot of the ZPI Musical is substantially similar to the plot of the Cabell Musical. Unlike the Allende Novel, the ZPI Musical focuses more on the adventures of a mature Zorro in Spanish California, which is similar to the focus of the Cabell Musical. As such, more similarities among the plots exist. For example, as Plaintiff points out in his supplemental briefing, both the Cabell Musical and the ZPI Scripts feature a female tavernkeeper who flirts with and seduces the sergeant. To be sure, there are also similarities between the Cabell Musical and the ZPI Scripts also appear in the Public Domain Works and thus, are not protectable. There are also a number of differences between the Cabell Scripts and the ZPI Scripts. Nevertheless, this is at least enough to create a triable issue of fact as to whether the plot of the ZPI Musical is substantially similar to the plot of the Cabell Musical."

The judge provides similar analysis with respect to characters, setting and themes of the two musicals. Ultimately, Zorro rights are headed to trial. But it won't be the company that spent years threatening a lawsuit on the offensive side.