IP Law Daily Publisher of Zorro musical survives dismissal on copyright infringement claim
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Wednesday, May 31, 2017

Publisher of Zorro musical survives dismissal on copyright infringement claim

By Robert Margolis, J.D.

The federal district court in San Jose, California, has denied Zorro Productions, Inc.’s motion to dismiss copyright claims that were brought by the publisher of the musical "Z—The Musical of Zorro." The court dismissed, however, the publisher’s claim for cancellation of six registered trademarks owned by Zorro Productions (Cabell v. Zorro Productions, Inc., May 30, 2017, Davila, E.).

Zorro. Robert W. Cabell sued Zorro Productions and its owner, John Gertz (collectively, "ZPI"), for copyright infringement, a declaratory judgment of non-infringement, cancellation of the defendants’ trademarks, and several state-law torts. The claims were related to Cabell’s 1996 musical based on the fictional character Zorro. In 1996, Cabell published "Z—The Musical of Zorro," which was based "expressly" on a 1919 story and 1920 movie that had entered the public domain after the copyrights had expired. Cabell’s musical was released on audio cassette and CD, and a stage production premiered in 2000. Cabell registered his original and revised scripts and the audio versions with the U.S. Copyright Office.

According to Cabell, ZPI knew that Zorro was in the public domain, but had for years falsely asserted that it owned worldwide trademarks and copyrights in the name and visual likeness of Zorro, in connection with story and comic books, television shows, videos featuring music and entertainment, and theater productions. Cabell alleged that the script and audio performances of his musical were successful, and that the musical was "poised to become a Broadway hit" until ZPI took steps to interfere with its production by asserting ZPI’s own Zorro-related trademarks and copyrights, and by threatening litigation against a producer and agency he was working with to produce the show. ZPI also allegedly harassed and threatened litigation against other vendors of Cabell’s work, and it actively discouraged others from producing the musical in the United States, London, Brazil, Japan, Germany, and Belgium.

Forum non conveniens. The court denied ZPI’s motion to dismiss for forum non conveniens, rejecting ZPI’s contention that Cabell’s claims were duplicative of parallel litigation that was pending between the same parties in Germany, over ZPI’s alleged interference with Cabell’s attempts to have his musical produced there.

Copyright infringement. The court denied ZPI’s motion to dismiss Cabell’s copyright infringement claim. ZPI argued that the claim failed under the Ninth Circuit’s two-part "extrinsic" and "intrinsic" test for determining whether a substantial similarity existed between two works. ZPI contended that Cabell did not allege sufficient facts to satisfy the extrinsic test, which objectively compares specific expressive elements of the works, focusing on "articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in two works," according to the court. However, a plaintiff did not need to establish the highly factual basis for passing the extrinsic test at the pleading stage, because that was more appropriately addressed at summary judgment. The court then found that Cabell had alleged sufficient facts to support its claim that ZPI had copied "constituent elements" of his original work, including substantially similar themes and plots, similar emphasis and incorporation of gypsies and flamenco dancing, and "highly similar" characters, general mood, and pace. Cabell also alleged that ZPI had copied substantial elements of the songs from his musical, and had retitled them, which further supported his infringement claim.

Declaration of non-infringement. ZPI moved to dismiss Cabell’s claim for a declaratory judgment that his musical did not infringe any of ZPI’s trademarks or copyrights, arguing that Cabell had not alleged a sufficiently ripe controversy between the parties. Pointing to the parties’ "contentious history, as well as [Cabell’s] numerous allegations" that ZPI had threatened litigation if the musical was produced, the court rejected ZPI’s argument. In fact, the court noted, Cabell alleged that he had a completed script ready for production, that ZPI had sued Cabell in Germany, and that ZPI continued to make threats that prevented Cabell from licensing his musical to other potential production companies in the United States.

Trademark cancellation. The court dismissed Cabell’s claim that six of ZPI’s trademarks should be cancelled. Cabell had alleged that ZPI’s registrations "were falsely and fraudulently obtained by ZPI." A three-year statute of limitations was applicable and the parties did not dispute that in 2002 Cabell had filed with the USPTO a petition for cancellation of five of the marks at issue. Cabell voluntarily dismissed that petition pursuant to an agreement with ZPI, but the prior filing established the untimeliness of Cabell’s claims, the court held.

The case is No. 5:15-cv-00771-EJD.

Attorneys: Adam Brett Wolf (Peiffer, Rosca, Wolf, Abdullah, Carr & Kane) for Robert W. Cabell. David Aronoff (Fox Rothschild LLP) for Zorro Productions Inc.

Companies: Zorro Productions, Inc.

MainStory: TopStory Copyright Trademark CaliforniaNews

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