Judge Allows Zorro Copyright Claims to Move Forward Against Original Zorro Copyright Owner

Douglas Fairbanks protects his leading lady Marguerite De La Motte in The Mark of Zorro (1920).

On Friday, May 11th, U.S. District Judge Edward Davila entered an order deciding motions made in a copyright case involving competing musical productions based on the fictional story of the fictional folk hero Zorro. Judge Davila’s orders allows copyright infringement claims asserted by a writer who developed a Zorro musical in the 1990s to move forward against Zorro Productions, the entity which had licensed the Zorro character to entertainment companies going back to the late 1940s. This case is in the Northern District of California.

As the factual background of the order notes, the history of the character extends back to 1919, the year that the character debuted in a serialized story titled The Curse of Capistrano written by Johnston McCulley and originally published by All-Story Weekly. The character, which became famous through various depictions by the entertainment industry, is set in 19th Century Spanish California and is the alter-ego of a wealthy nobleman who protects the poor from corrupt government officials. In July 1949, McCulley transferred his worldwide rights in the character which became the property of Zorro Productions, the company which continued to license the character to Hollywood entities for related works and paraphernalia.

In 1996, Michael Cabell, the plaintiff asserting copyright infringement in the Northern California case, published a musical titled Z – The Musical of Zorro based upon both McCulley’s 1919 story and The Mark of Zorro, a silent film starring Douglas Fairbanks in 1920. The musical adaptation was first produced as a stage reading at Lamb’s Theatre in New York City in 1997 and was subsequently released in audio cassette and CD formats. Cabell registered copyrights with the U.S. Copyright Office covering the original, novel elements of his work and not including “those elements present in any Zorro works that were in the public domain as of 1996.”

Prior to the 1997 stage reading, Cabell had met with John Gertz, the owner of Zorro Productions, regarding a licensing arrangement for Cabell’s musical. Conversations continued through April 1997 when Cabell determined that the only property Gertz could transfer was the Zorro logo, in which he wasn’t interested. Gertz responded that a lawsuit would be filed if Cabell produced the musical for a paying audience. These legal threats ultimately prevented a Broadway production of Cabell’s musical, which was being mounted in the early 2000s.

During the early to mid-2000s, Zorro Productions developed a pair of works which ended up being the target of copyright infringement claims filed by Cabell in Northern California. The first of these was a novel published in 2005, the same year that Zorro entered into an agreement with a London production company to produce a musical based on Zorro; the author of the novel was not part of the London musical’s creative team. That musical premiered in 2008, has been performed in the United States and abroad, and into which Gertz has invested more than $30 million.

Cabell partnered with an international agent to explore foreign productions of his musical and two German productions were licensed in 2013. Before those productions, Zorro Productions filed for preliminary injunctions in German court asserting their German copyrights and trademarks in the Zorro character. One of those preliminary injunctions were denied as Zorro Productions failed to prove sufficient rights in Zorro; other actions remain pending in the German court case. Also in 2013, Cabell was working with a director/producer to line up performances of his musical in Seattle and Philadelphia but both of those productions never materialized after Gertz threatened to sue any theater producing Cabell’s musical.

Cabell first filed his complaint against Zorro Productions and Gertz in March 2013 and, in a second amended complaint, asserted claims of copyright infringement, declaratory judgment of non-infringement and cancellation of federal trademark registration. In October 2017, Cabell moved for summary judgment on the copyright infringement and declaratory judgment of non-infringement claims and Judge Davila’s order follows a hearing and supplemental briefing conducted in February and March of this year.

In assessing Cabell’s copyright infringement claims against the 2005 novel and Zorro Productions’ musical, Judge Davila determined that there were triable issues as to whether the creators of those works had access to scripts previously produced by Cabell. Applying the Court of Appeals for the Ninth Circuit’s test on substantial similarity, found various differences between Cabell’s script and the 2005 novel, which “is largely a fictional biography of Don Diego’s childhood,” the character who becomes Zorro. By contrast, Cabell’s musical begins with an adult Don Diego. Although Judge Davila noted that there were “isolated similarities” between the two works, the plot, characters, themes and settings of both works were differed. There was also no substantial similarity in dialogue or mood between the two works.

However, plaintiff Cabell’s claims against the Zorro Productions musical carried more weight. Judge Davila found that a reasonable juror could find that the plot, characters, setting and themes of both works were substantially similar. As examples, both works focus on the adventures of an adult Zorro in Spanish California and both works begin with a group of gypsies who serve as narrators for the story. Although Judge Davila did not find that the musicals were “strikingly similar,” dismissing some of Cabell’s copyright claims, it denied Zorro Productions’ motion that its musical does not infringe other copyright claims because material issues of infringement remained.

Judge Davila also granted Cabell’s motion for a declaration of non-infringement in response to the actual controversy taking place between the plaintiff and defendant. Zorro Productions had argued that, despite the ongoing German court case, there was no justiciable controversy regarding Cabell’s copyright infringement because copyright law is territorial in nature. Judge Davila, however, sided with Cabell’s claims that controversy existed because of legal threats made by Zorro against a U.S. production of his musical.

Although the statute of limitation on copyright claims is three years, which Zorro Productions alleged had elapsed between its copyright infringement claims in 1997 and Cabell’s filing of suit in 2013, Judge Davila did not bar Cabell’s claims as being outside the statute of limitations. “ If Plaintiff were to produce his musical tomorrow, the statute of limitations would not bar an infringement claim by Defendants,” Judge Davila wrote. “Accordingly, the statute of limitations also cannot bar the declaration that Plaintiff seeks.” Judge Davila also threw out a laches defense and found that the defendant had abandoned the position that the plaintiff does not infringe its copyrights on the merits.