How Zorro in public domain can cause a copyright dispute

The fictional character of “Zorro” first debuted in 1919 in “The Curse of Capistrano” (“COC”), a serialized story by Johnston McCulley which was published in All-Story Weekly. In 1920, COC was adapted into a silent movie titled “The Mark of Zorro” by Douglas Fairbanks. In 1922, McCulley published a sequel to COC entitled “The Further Adventures of Zorro,” which also appeared as a serialized story in All-Story Weekly. COC has also since been re-published as a novel entitled “The Mark of Zorro.” All of these works are in the public domain.

On July 26, 1949, McCulley assigned “the absolute exclusive and unqualified right, license and privilege throughout the world… to radio, motion picture, phonograph, records…, comic strips advertising, dramatic and television rights to the character ‘Zorro,’ throughout the world forever” to Mitchell Gertz, the father of defendant John Gertz (ZPI). ZPI has licensed its rights in Zorro to a number of Hollywood companies for various Zorro-related works and paraphernalia. One of these was a musical stage production entitled “Zorro, The Musical,” which was written and directed by Ken Hill (“Hill Musical”). ZPI has not specifically identified the copyrights and trademarks it owns which it believes are relevant to this litigation.

In 1996, Plaintiff published a musical entitled “Z – The Musical of Zorro” (“Cabell Musical”) based “expressly” on McCulley’s 1919 story and Fairbanks’ 1920 movie. The musical was first produced as a staged reading at the Lamb’s Theatre in New York City in 1997, and was subsequently released on audio cassette and then CD format. A stage production by the Actors Cabaret of Eugene (“ACE”) premiered in Eugene, Oregon in 2000.

Plaintiff has registered various scripts and audio versions of the Cabell Musical with the U.S. Copyright Office, and his copyright interest “extends only to the original, novel elements of his work and do not include those elements present in any Zorro works that were in the public domain as of 1996. Of the copyrights Plaintiff owns, the following were at issue in this lawsuit: (1) Copyright, which relates to the original script of the Cabell Musical from 1996; (2) Copyright, which relates to a revised script of the Cabell Musical from 1997; (3) Copyright, which relates to a further revised script of the Cabell Musical from later in 1997; and (4) Copyrights, which relate to 1998 recordings of the Cabell Musical, after it was performed at Lamb’s Theatre.

In 1996, Plaintiff met with Gertz about producing the Cabell Musical, during which time Plaintiff provided Gertz with a copy of the 1996 Cabell Script. However, the conversations ultimately broke down. On April 1, 1997, Plaintiff sent Gertz a letter informing him that he “will continue this project under the rights of public domain”. That same day, Gertz replied: “any attempt to produce your play before a paying audience will result in an immediate law suit.” At that point, Plaintiff alleges that ZPI began, for the first time, aggressively asserting that Plaintiff’s script infringed ZPI’s copyrights and trademarks, and insisting that Plaintiff acquire a license from ZPI to produce it.

Plaintiff then proceeded to work on the commercial release of his musical without a license from Defendants. In the early 2000s, he engaged an agency and a choreographer/producer in anticipation of a Broadway production. However, according to Plaintiff, the Broadway production never materialized due to threats from Defendants. Plaintiff also alleged that, after the Cabell Musical was commercially released, Defendants harassed and threatened litigation against other vendors of his work, and actively discouraged third parties from producing the musical in the United States, London, Brazil, Japan, Germany, and Belgium.

On or about November 19, 2003, ZPI entered into a written license agreement with Isabelle Allende authorizing her to use McCulley’s characters, including Zorro and Don Diego, to write a full-length book telling the story of “Young Zorro” based on a summary written by Allende. Allende’s novel, titled “Zorro, A Novel,” (the “Allende Novel”) was published in 2005. According to Allende, the Allende Novel was “her own original story” and “none of the expressive content of the Allende Novel was created by any third party, including ZPI and Mr. Gertz. It is all my original expression.”

On or about January 1, 2005, ZPI entered into an agreement with Zorro London Limited (“ZLL”) for the development and production of a musical based on Zorro (the “ZPI Musical”). Christopher Renshaw, the director of the ZPI Musical, attests that he was “integrally involved in all steps of the development of the book (i.e., the script) and the lyrics of the musical in shoulder-to-shoulder collaboration with Stephen Clark who, is credited for writing both the book and lyrics, and Helen Edmundson, who is credited for co-writing the book of the ZPI Musical. Unfortunately, Mr. Clark passed away in 2016.” The ZPI Musical premiered in 2008 and has been performed in various United States jurisdictions including Atlanta, Georgia and Salt Lake City, Utah. It has also been performed internationally. According to Gertz, he has invested over $30 million worldwide to produce the ZPI Musical.

While ZPI made efforts to produce and promote its musical, Plaintiff made efforts to do the same. He retained Gallissas Theaterverlag und Mediaagentur GmbH (“Gallissas”) to serve as his international broker and agent. In early 2013, Gallissas licensed the Cabell Musical to affiliates in Germany so that it could be performed in Clingenberg and Villa Fuchs, Germany. Before the musicals were produced, ZPI initiated preliminary injunction proceedings against both theatres, alleging infringement of ZPI’s German copyrights and trademarks in the Zorro story and character.

In the Clingenburg case, the regional court set an oral hearing for May 22, 2013, at which time the parties entered into a settlement. The court in the Villa Fuchs case conducted an oral hearing on May 15, 2013, and later denied a preliminary injunction on the grounds that ZPI’s moving papers had not sufficiently proved ZPI’s rights in ZORRO. Subsequently, Plaintiff filed an independent action against ZPI for declaratory relief, and ZPI counterclaimed for infringement. Those actions are still pending. Meanwhile, Gallissas’ rights to license the Cabell Musical have expired. On June 24, 2014, Plaintiff “rescinded the worldwide rights granted to Gallissas” in a “Second Amendment” to his contract with Gallissas.

In addition to the German production efforts, Plaintiff contends that he has recently made efforts to produce his play commercially in the United States. In particular, he has engaged with the director/producer Rick Sordalet. However, according to Sordalet, “John Gertz made it clear to Mr. Cabell and his agent, Gallissas, that despite the rulings in Germany, he would continue to sue any theatre that produced Mr. Cabell’s musical.” “As a result of these continued threats, Gallissas refused to license Mr. Cabell’s musical. Since the 5th Avenue Theatre and Pennsylvania Shakespeare Festival could not obtain a license, all discussions and negotiations with those theatres ceased.”

On September 26, 2016, Plaintiff filed his second amended complaint, asserting copyright infringement, declaratory judgment of non-infringement and unfair competition and unfair trade practices in violation of California Business and Professions Code. Plaintiff also sought a preliminary and permanent injunction against Defendants prohibiting them from making claims that Plaintiff’s musical infringes upon any of Defendants’ intellectual property rights.

The parties did not appear to dispute that Plaintiff owns multiple copyright registrations for his script and related audio recordings. They did, however, dispute copying. Plaintiff contended that the ZPI Musical and Allende Novel (collectively, the “Accused Works”) copied the Cabell Musical, thereby infringing the copyrights he holds in his various scripts and audio recordings. The parties did not dispute that, in 1996, Cabell provided Gertz with a copy of the 1996 Cabell Script. Defendants also concede, for the purposes of this motion only, that Gertz had access to the 2000/ACE Cabell Script. The parties did not identify or provide evidence of any other instances where Plaintiff directly provided his works to anyone related to ZPI. Plaintiff also did not contend that his works were “widely disseminated.”

There is no evidence that any of the authors of the Accused Works – Isabel Allende (the author of the Allende Novel), Helen Edmundson (co-writer of the ZPI Musical), Stephen Clark (co-writer and co-composer of the ZPI Musical), John Cameron (co-composer of the ZPI Musical), the Gypsy Kings (co-composers of the ZPI Musical), and Christopher Renshaw (director of the ZPI Musical) – had direct access to the Cabell Musical. Instead, the only way any of these authors could have had “access” was through “a particular chain of events” that began with Gertz.

There is no material dispute that Gertz, as President and CEO of ZPI, the company that entered into a licensing arrangement with the authors of the infringing works, had some kind of supervisory authority over their creation. However, this, in and of itself, is not enough. Instead, there must be evidence that there was “some overlap in subject matter” in his dealings with the authors. Nevertheless, provided evidence does not completely preclude the possibility that Allende also had exchanges with Gertz which could have given her access to the substance of Plaintiff’s works. For example, Allende testified that at one point during a meeting with Gertz “the idea of writing how Don Diego becomes Zorro was expressed” and she did not “remember who proposed it.” Accordingly, construed in the light most favorable to Plaintiff, there is at least a triable issue of fact as to whether Allende had access to Plaintiff’s works.

In sum, taking the facts in the light most favorable to Plaintiff, the Court finds that there are genuine issues of material fact as to whether Defendants had access to the 1996 Cabell Script and the 2000/ACE Cabell Script. Plaintiff has not met his burden to show that there are any factual disputes as to whether Defendants had access to any of the other variants of the Cabell Musical, however.

Before turning to the issues of similarity, the Court clarifies the scope of comparison. Thus, to the extent that Plaintiff’s works contain elements that also appear in the Public Domain Works, he cannot use that as a basis for claiming substantial similarity. Second, there are only triable questions of fact as to whether Defendants had access to the 1996 Cabell Script and the 2000/ACE Cabell Script; thus, Plaintiff can only prove copying circumstantially by showing access and substantial similarity for those two scripts. Third, Plaintiff claims that both the Allende Novel and the ZPI Musical infringe his copyrights. As evidence, Plaintiff relies on four different scripts of the ZPI Musical – the 2005 AKA Script, the 2008 ZLL Script, 2012 ZLL Script, and 2013 ZLL Script. However, only the last three were publicly performed; thus, the Court will limit its analysis for the ZPI Musical to only those scripts.

First, the plot of the Allende Novel is markedly different from the Cabell Musical. While there may be some rough and/or isolated similarities here, this is not enough to counteract the bulk of the Allende Novel’s plot, which is new and different from the Cabell Musical. In addition, at least the element of gypsies is not original to the Cabell Musical, at they were also featured in the Hill Musical. Accordingly, no reasonable juror could find that the plots are substantially similar.

Second, the characters of the Allende Novel are different from the Cabell Musical. Third, the setting of the Allende Novel is different from the Cabell Musical. Fourth, the themes of the Allende Novel and the Cabell Musical are different. Fifth, there is no substantial similarity among dialogue. Finally, there is no substantial similarity among pace, mood, or tone. Putting all these observations together, no reasonable juror could find that there is substantial similarity between the Allende Novel and the Cabell Musical. Combining this with the insubstantial evidence of access, no reasonable juror could conclude that there is circumstantial evidence of copying. As such, there is no material dispute that the Allende Novel does not infringe Plaintiff’s copyrights. Defendants’ motion for summary judgment that it does not infringe is GRANTED as to the Allende Novel.

Turning to the ZPI Musical, a reasonable juror could find that the plot of the ZPI Musical is substantially similar to the plot of the Cabell Musical. There are also a number of differences between the Cabell Scripts and the ZPI Scripts. Second, a reasonable juror could find that certain characters of the ZPI Musical are substantially similar to the characters of the Cabell Musical. Third, a reasonable juror could find that the settings of the ZPI Musical and the Cabell Musical are substantially similar. Finally, a reasonable juror could find that the themes of the ZPI Musical and the Cabell Musical are substantially similar.

Putting all these observations together, there is at least a triable question of fact as to whether there is substantial similarity between the ZPI Musical and the Cabell Musical. Combining this with the stronger evidence of access, a reasonable juror could conclude that there is circumstantial evidence of copying. As such, material disputes remain as to whether Defendants infringe Plaintiff’s copyrights. Defendants’ motion for summary judgment that it does not infringe is DENIED as to the ZPI Musical and Copyright Nos. PA 2-113-089 and PA 2-171-672.

Because there is no evidence of access for Copyright Nos. PA 2-2226-359, SR 389-305, and PA 10-000-842 and the Cabell Musical is not strikingly similar to the Accused Works, there is no circumstantial evidence of copying. As such, Defendants do not infringe these copyrights. Defendants’ motion for summary judgment that it does not infringe is GRANTED as to Copyright Nos. PA 2-2226-359, SR 389-305, and PA 10-000-842. Plaintiff’s motion for partial summary judgment that he does not infringe Defendants’ copyrights is GRANTED.