Europe Frees Zorro From Trademark Restrictions

Trademark

from the z dept

Zorro, the masked vigilante who wields justice in the form of a sword, was first brought to the world in 1919 by Johnston McCulley. As such, some portion of the Zorro existence is now in the public domain in many jurisdictions. That hasn’t stopped Zorro Productions Inc. from claiming all kinds of intellectual property rights on all things Zorro, of course. A few years back, there was a lawsuit between Zorro Production and Mars over a depiction of the hero in a commercial for M&Ms. That was a trademark claim, the rights for which Zorro Productions claims for itself, and one of the interesting questions in the case was whether such a trademark claim could be made upon a character that had entered into the public domain. Put another way: can the expiration of copyright law on a fictional character be circumvented through a trademark claim. One of the keys to answering that question, as is discussed in the above post, is whether a specific use of the character would confuse the public as to the source of the original creation, or if it might be misconstrued as any kind of endorsement. Mickey Mouse, for instance, equals Disney. Does Zorro equal Zorro Productions? Of course not.

And now the European Union has recognized that fact, actually going so far as to invalidating the Zorro trademark entirely for that very reason.

Late last month, the cancellation division of the office that manages community trademarks within the European Union issued a ruling declaring that a “Zorro” trademark was invalid in the categories of printed matter and entertainment. According to a just-released English version of the ruling, when the average consumer sees “Zorro,” he or she will assume the story of the character is being told, but not recognize “Zorro” as an indicator of origin. As such, it’s deemed to be merely descriptive and not sufficiently distinctive.

This was sparked after Zorro Productions had waged a legal war with Robert Cabell, who created a theatrical production entitled Z – The Musical of Zorro. Cabell had responded to the attack by trying to get the EU to acknowledge that the character was in the public domain from a copyright perspective and that the trademarks held by Zorro Productions had been registered fraudulently. The EU concurred.

“If a title in question is famous enough to be truly well known to the relevant public where the mark can be perceived in the context of the goods/services as primarily signifying a famous story or book title, a mark may be perceived as non-distinctive,” states the decision. “A finding of non-distinctiveness in this regard will be more likely where it can be shown that a large number of published version of the story have appeared and/or where there have been numerous television, theatre and film adaptations reaching a wide audience.”

Zorro, which has resulted in 38 films, fits this description, says the Office for Harmonization, which adds that “although it is possible for titles of books or names of fictional characters to function as indicators of trade origin, it is dependent on the particular goods and services which they are applied for.”

And so Zorro has been freed from the EU prison of intellectual property, at least in these respects. And, more importantly, this is a good thing. I have no idea of the quality of Cabell’s musical about the masked vigilante, but I damn well know that a character created a century ago, whose author is long-dead, ought not be denied in the use of the public in the aims of creating more art simply because a corporate interest wants to sell non-existent rights to Hollywood.

Filed Under: europe, trademark, zorro