A California federal judge opted not to entirely dismiss a lawsuit from a playwright who believes the legendary character Zorro belongs in the public domain.

In 2013, Robert Cabell filed a complaint against Zorro Productions in the state of Washington to determine whether the company rightfully owned the intellectual property rights to Zorro, and sought cancellation of its trademarks related to the character, among other claims. According to Cabell’s lawsuit, in 1996 he published “Z—The Musical of Zorro,” based on Johnston McCulley’s 1919 Zorro story, believing that the work was in the public domain. Zorro Productions, which is owned by John Gertz, who inherited the rights, subsequently threatened litigation, if Cabell didn’t obtain a license to use the character.

After filing his lawsuit, Cabell amended his original complaint to include a copyright infringement claim, alleging that Zorro Productions had copied the original portions of his musical and used it for a book and musical of their own. In 2014, a Washington state federal judge granted Zorro Productions’ motion to dismiss, due to jurisdictional issues. That is, the Washington court didn’t have personal jurisdiction over the company. “Accordingly, the Court finds that Plaintiff has not shown a sufficient nexus between his claims and [Zorro Productions’] forum related activities to permit this Court to extend the long arm of its jurisdictional authority,” Judge Ricardo Martinez said in the order. Cabell asked the court to reconsider the ruling and argued that it should’ve just been transferred to the right venue instead. Martinez agreed, citing the copyright infringement claim, and transferred the case, which brings us to the present.

On May 30th, Judge Edward Davila granted Zorro Productions’ motion to dismiss in part and denied it in part, on the following claims:

a) Forum non conveniens: Cabell is also suing Zorro Productions in Germany for the same claims. Cabell licensed his musical to be performed there and that’s what led to Zorro Productions’ threats to sue. Defendants wanted Judge Davila to dismiss the claims that are also pending in Germany, and let them be resolved in Germany alone, but the court denied the motion on this ground because while Germany is an adequate alternative forum, the balance of public and private interest factors did not favor dismissal: both parties are located in the U.S. and U.S. courts has a strong interest in “resolving disputes between U.S. citizens and a U.S. company, and concerning intellectual property also protected under U.S. law.”

b) Sufficiency of plaintiff’s claim:

  • The copyright claim: The Court found that Cabell presented sufficient facts to support his claim that Zorro Productions copied “constituent elements” of his original work, and denied the motion on this issue.
  • Declaratory judgment of non-infringement: The Court also denied the motion here because Cabell asserted a “real and reasonable” apprehension that he would face copyright liability if he proceeded with his musical, and “that this apprehension is the result of the Defendants’ actions,” said the judge.

c) Cancellation of federal trademark registrations: Cabell wanted six of Zorro Productions’ trademarks canceled because they were “falsely and fraudulently” obtained. The defendants argued that this claim was barred by the statute of limitations and the doctrine of laches. The court granted the motion here.

d) Tortious interference with contract and business expectancy, and violation of California’s Business and Professions Code: The court granted the motion on the tortious interference issue because Cabell’s claimed Zorro Productions was interfering in negotiations and prospective business opportunities, but not with actual contracts and agreements. However, the court denied the motion with regards to the California Business and Professions Code issue because state law does not require the existence of an actual contract for a violation.

e) Fraud: The court granted dismissal of the fraud claim, finding that Zorro Productions made false statements to third parties, including Cabell’s customers, clients, licensees and prospective business partners, but not The court pointed out that fraud requires evidence of “justifiable reliance by the plaintiff.”

The court gave Cabell until June 26th to amend any dismissed claims.

The case is Robert W. Cabell v. Zorro Productions, Inc. et all, Northern District of California – San Jose Division, 5:15-cv-00771-EJD.

Stay tuned to The Fried Firm blog for updates on this case.