No One Owns ‘Zorro,’ Playwright Says

SEATTLE (CN) - The author of a "Zorro" musical claims in court that the character is in the public domain, but Zorro Productions and others have threatened his stage play by fraudulently claiming a trademark for the masked avenger.

Robert W. Cabell sued Zorro Productions, John Gertz and Stage Entertainment Licensed Productions, in Federal Court.

"Mr. Cabell is the author of the 1996 musical 'Z - The Musical of Zorro,' based upon the 1919 story authored by Johnston McCulley and the 1920 film produced by Douglas Fairbanks, Sr.," the complaint states.

Cabell claims the 1919 story by McCulley, "The Curse of Capistrano," was "the first Zorro story."

(The success of the story in the pulp mag "All Story Weekly" led McCulley to write at least 60 more Zorro stories, featuring a disguised Don Diego de la Vega as the masked crusader during the Californio era.)

"Nearly one hundred years later, the character is well-known as the masked outlaw who defends the public against tyrannical officials and other villains," the complaint states. "The copyright interests in those works have long ago expired and the works are now part of the public domain. In 1996, plaintiff Robert Cabell authored a musical based on the public domain works. Although Mr. Cabell's rights to use these public domain works is clear, the defendants have engaged in a campaign of intimidation and coercion aimed at preventing Mr. Cabell (and any other third party) from the legitimate use of this public domain material.

Specifically, 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. By fraudulently asserting rights that do not exist, and by threatening litigation against anyone who purportedly violates these nonexistent rights, the defendants have built a licensing empire out of smoke and mirrors.

Defendants have recently threatened to sue Mr. Cabell and his licensees for trademark and copyright infringement purportedly relating to Mr. Cabell's musical - a work that is directly based upon the 1919 Zorro book and the 1920 Zorro musical that are in the public domain. Defendants' threats are nothing more than an attempt to bully Mr. Cabell, hoping that he will surrender without challenging defendants' wrongful activities.

"Mr. Cabell initiates this litigation to obtain (i) a judgment that his musical does not violate any intellectual property rights held by defendants; (ii) a preliminary and permanent injunction against defendants prohibiting them from making claims that Mr. Cabell's musical infringes upon any of defendants' intellectual property rights; (iii) cancellation of defendants' federal trademark registrations for the mark Zorro as it relates to literary works, visual arts and performing arts; and, (iv) monetary damages incurred by Mr. Cabell as a result of defendants' fraud, tortious interference and unfair competition."

Defendant Gertz owns and operates defendant Zorro Productions. Defendant Stage Entertainment Licensed Productions is based in The Netherlands.

A similar lawsuit was filed one month ago dealing with rights to the Sherlock Holmes character. Writers who wish to publish an anthology of new Holmes stories sued the Conan Doyle estate, claiming the fictional detective is in the public domain.

Cabell seeks declaratory judgment, an injunction, cancellation of Zorro trademarks, costs and damages for tortious interference, consumer law violations, and common law fraud.

He is represented by Michael Atkins of Seattle and Greg Latham in New Orleans.

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