Mark of the 'Z' Meets Mark of the 'C' in Zorro Suit

 (Photo credit: Wikipedia)

Zorro ("The Fox"), the fictional heroic alter ego of foppish California nobleman Don Diego de la Vega battling oppressors in the Spanish colonial era, has entertained readers and viewers in stories, movies and television for nearly a century.

This month, the swashbuckling hero portrayed in film by actors including Douglas Fairbanks Sr., Tyrone Power, George Hamilton and Antonio Bandaras, and in a Disney tv series by Guy Williams, starred in a lawsuit filed in the United States District Court for the Western District of Washington. In Robert W. Cabell v. Zorro Productions, Inc. et al., the author of a musical based on the swordsman filed a complaint seeking declaratory judgment, cancellation of federal trademarks, injunctive relief and monetary damages.

Cabell alleges his 1996 musical tribute, Z--The Musical of Zorro, is based on Zorro creator Johnston McCulley's The Curse of Capistrano (1919) and Douglas Fairbanks Sr.'s silent classic The Mark of Zorro (1920).  According to his Complaint, reported by Courthouse News Service and THR, Esq., Cabell secured licensing for performance of his musical in Germany (nothing like multiple stabbings and shootings to get German audiences whistling as they leave the theater), but was purportedly confronted with threats of litigation by Zorro Productions, Inc. head John Gertz.

In support of its claim that Zorro has entered the public domain, Caball's Complaint cites a federal judge's footnote in a 2001 case from the United States District Court for the Western Division of the Central District of California, Sony Pictures v. Fireworks Entertainment (156 F.Supp.2d 1148 (2001)), that states: "It is undisputed that Zorro appears in works whose copyrights have already expired, such as McCulley's story, 'The Curse of Capistrano' and Fairbanks' movie, 'The Mark of Zorro.'"

The plaintiff's Complaint alleges the defendants have "fraudulently obtained federal trademark registrations" for various Zorro marks and "built a licensing empire out of smoke and mirrors." Long-time favorite fictional heroes, from Tarzan (see "TUOL" post 2/17/12) to Sherlock Holmes (see "TUOL" post 2/19/13) have been the subject of intellectual property lawsuits in recent times.

Rather than consume precious court time, "TUOL" suggests the parties settle their dispute with epees--the Z-Man would have wanted it that way.

Burberry Scores a Bogie in Federal Suit

(Photo credit: Wikipedia)Courtroom lawyers are accustomed to fighting in the trenches, but battling over trenchcoats is unusal.

In the United States District Court for the Southern District of New York, Judge Paul G. Gardephe is presiding over Burberry Ltd. & Burberry Group, PLC v. Bogart, LLC (Case No. 1:2012-cv-03491) in which the clothier is seeking declaratory judgment in a right of publicity and trademark infringement [15 U.S.C. sec. 1125] action involving the entity that owns the rights to Hollywood screen legend Humphrey Bogart.

As with seemingly every legal dispute nowadays, it all begins with Facebook. Burberry's Facebook page includes an historical timeline featuring famous people wearing its line of clothing, including actor Robert Mitchum, decked out in a trenchcoat worn in his tough-guy role from Out of the Past (1947) and actor Tyrone Power similarly attired from Razor's Edge (1946).

Currently missing is Humphrey Bogart wearing a trenchcoat that no doubt set Ingrid Bergman's heart aflame in Casablanca (1942). According to the plaintiffs' complaint, Bogart LLC allegedly fired off a cease & desist letter and sought damages for common law claims, right to publicity, a cousin of an invasion of privacy appropriation claim; and trademark infringement.

Presumably, the defendant's position would be that the clothier is capitalizing on Bogie's image without permission and that consumers would be confused over whether the since-removed image of the actor from the timeline constituted an endorsement of the product. As there is no specific line of "Bogiecoats" or ads marketing the actor, it would appear Burberry is asking the court for a ruling that it is within its First Amendment rights to acknowledge on its Web site that Bogart wore a trenchcoat in films, including Casablanca.

Under New York's right to publicity law, the nation's oldest, dating back as far as the Roberson case in 1902, a famous individual's image and persona may only be exploited commercially as a commodity during the famous person's lifetime. In California, however, where Bogart LLC is based, the right of publicity protection extends beyond the celebrity's death, so the case is no cakewalk for Judge Gardephe.  Fun fact: both Mitchum and Bogart donned their trenchcoats to play Raymond Chandler's detective creation Philip Marlowe in screen versions of The Big Sleep, though some 32 years apart. You're welcome.