Editing Zorro (section)

==Copyright and trademark disputes==
The [[copyright]] and [[trademark]] status of the Zorro character and stories have been disputed. At least five works are in the [[public domain]] in the United States because at least 95 years have passed after their first release: the 1919 novel ''The Curse of Capistrano'', the 1920 film ''The Mark of Zorro'', the 1922 novel ''The Further Adventures of Zorro'', the 1925 film ''Don Q, Son of Zorro'', and the 1926 film ''In the Way of Zorro''. Still, many later Zorro stories are still protected by copyright, and many of those copyrights are owned or controlled by Zorro Productions, Inc., which asserts it "controls the worldwide trademarks and copyrights in the name, visual likeness and the character of Zorro."<ref>[http://www.zorro.com/about.html "About Zorro Productions Inc."] page from the company's website </ref> It further states "[t]he unauthorized, unlicensed use of the name, character and/or likeness of 'Zorro' is an infringement and a violation of state and federal laws."<ref>[https://www.zorro.com/featured-products "Features Products"] page from the company's website.</ref>

In 1999, [[TriStar Pictures]], a division of [[Sony Pictures]], sued Del Taco, Inc., due to a fast-food restaurant advertising campaign that allegedly infringed Zorro Productions' claims to a trademark on the character of Zorro. Sony and TriStar had paid licensing fees to Zorro Productions, Inc. for the 1998 film ''[[The Mask of Zorro]]''. In an August 1999 order, the court ruled that it would not invalidate Zorro Productions' trademarks because the defendant argued that certain copyrights in Zorro were in the public domain or owned by third parties.<ref>{{cite web |title=TriStar vs Del Taco 1999 |work=Scribd |url=https://www.scribd.com/doc/239326856/TriStar-vs-Del-Taco-1999}}</ref>

[[File:The Queen of Swords 3.JPG|thumb|125px|[[Tessie Santiago]] as the Queen of Swords]]
A dispute took place in the 2001 case of ''Sony Pictures Entertainment v. Fireworks Ent. Group.''<ref>[https://scholar.google.com/scholar_case?case=17573994030226630518&hl=en&as_sdt=2&as_vis=1&oi=scholarr "Sony Pictures Entertainment v. Fireworks Ent. Group."] at [[Google Scholar]], retrieved December 4, 2010.</ref> On January 24, 2001, Sony Pictures, TriStar Pictures and Zorro Productions, Inc., sued [[Fireworks Entertainment]], [[Paramount Pictures]], and [[Debmar-Mercury|Mercury Entertainment]], claiming that the ''[[Queen of Swords (TV series)|Queen of Swords]]'' television series infringed upon the [[copyright]]s and [[trademark]]s of Zorro and associated characters. ''Queen of Swords'' is a 2000–2001 television series set in [[Alta California|Spanish California]] during the early 19th century and featuring a hero who wore a black costume with a red sash and demonstrated similarities to the character of Zorro, including the sword-fighting skills, use of a whip and [[bolas]], and horse-riding skills.

Zorro Productions, Inc. argued that it owned the copyright to the original character because Johnston McCulley assigned his Zorro rights to Mitchell Gertz in 1949. Gertz died in 1961, and his estate was transferred to his children, who created Zorro Productions, Inc. Fireworks Entertainment argued that the original rights had already been transferred to [[Douglas Fairbanks|Douglas Fairbanks, Sr.]] in 1920 and provided documents showing this was legally affirmed in 1929, and also questioned whether the copyright was still valid.

The court ruled that "since the copyrights in ''The Curse of Capistrano'' and ''The Mark of Zorro'' lapsed in 1995 or before, the character Zorro has been in the public domain".<ref>[https://scholar.google.com/scholar_case?case=17573994030226630518&hl=en&as_sdt=2&as_vis=1&oi=scholarr#r&#91;31&#93; Note 31] of ''Sony Pictures Entertainment v. Fireworks Ent. Group.''</ref> Judge Collins also stated, "Plaintiffs' argument that they have a trademark in Zorro because they licensed others to use Zorro, however, is specious. It assumes that ZPI had the right to demand licenses to use Zorro at all." Judge Collins subsequently vacated her ruling following an unopposed motion filed by Sony Pictures, TriStar Pictures, and Zorro Productions, Inc.<ref>Order Granting Unopposed Motion to Vacate Previous Interlocutory Orders Pursuant to Settlement – Sony Pictures Entertainment v. Fireworks Ent. Group, November 4, 2002, Case No 01-00723 (ABC) (JWJx), US District Court for the Central District of California.</ref>

In another legal action in 2010, Zorro Productions, Inc., sued [[Mars Inc.]], makers of [[M&M's]] chocolate candies, and ad agency [[BBDO|BBDO Worldwide]] over a commercial featuring a Zorro-like costume.<ref>{{cite web |title=Zorro Complaint |work=Scribd |url=https://www.scribd.com/doc/29031180/Zorro-Complaint}}</ref> The case was settled ("each party shall bear its own costs incurred in connection with this action, including its attorney's fees and costs") on August 13, 2010.<ref>{{Cite web |title=Zorro Productions, Inc v. Mars, Inc. et al |url=https://dockets.justia.com/docket/california/candce/3:2010cv01179/225493 |access-date=2023-10-10 |website=Justia Dockets & Filings |language=en}}</ref>

In March 2013, Robert W. Cabell, author of ''Z – the Musical of Zorro'' (1998), filed another lawsuit against Zorro Productions, Inc. The lawsuit asserted that the Zorro character is in the public domain and that the trademark registrations by Zorro Productions, Inc., are therefore fraudulent.<ref>http://de.scribd.com/doc/130370303/Zorro |Robert Cabell v. Zorro Productions, Inc.</ref> In October 2014, Cabell's lawsuit was dismissed, with the judge ruling that the state of Washington (where the case was filed) did not have jurisdiction over the matter.<ref>{{cite web |title=LEGAL 21178242v1 72 Judgment – Court |work=Scribd |url=https://www.scribd.com/doc/244018343/LEGAL-21178242v1-72-Judgment-Court}}</ref><ref>{{cite news |title=Judge Nixes Playwright's Bid to Free 'Zorro' From Intellectual Property Grip |magazine=The Hollywood Reporter |url=http://www.hollywoodreporter.com/thr-esq/judge-nixes-playwrights-bid-free-744883 |date=October 29, 2014}}</ref> However the judge later reversed his decision and had the case transferred to California.<ref>{{cite news |title=Judge Revives 'Zorro' Rights Fight After Reconsidering Earlier Ruling (Exclusive) |magazine=The Hollywood Reporter |url=http://www.hollywoodreporter.com/thr-esq/judge-revives-zorro-rights-fight-770477 |date=February 5, 2015}}</ref> In May 2017, U.S. District Judge Davila granted Zorro Productions, Inc.'s motion to dismiss Cabell's claim to cancel its federal trademark registrations.<ref>Order Granting in Part and Denying in Part Deffendant's Motion to Dismiss, Robert Cabell v. Zorro Productions, Inc., May 30, 2017, Case No. 5:15-cv-0071-EJD, US District Court, Northern District of California – San Jose Division</ref> Cabell did not appeal.

In June 2015, Robert W. Cabell's legal dispute with Zorro Productions, Inc. resulted in the [[European Union trade mark|Community Trade Mark]] for "Zorro" being declared invalid by the European Union's Office for Harmonization in the Internal Market for goods of classes 16 and 41.<ref>{{cite magazine |title="Zorro" Trademark Declared Invalid in Europe |magazine=[[The Hollywood Reporter]] |url=http://www.hollywoodreporter.com/thr-esq/zorro-trademark-declared-invalid-europe-806823 |date=July 6, 2015}}</ref> This follows the 'Winnetou' ruling of the Office's First Board of Appeal<ref>{{Cite web|url=https://www.scribd.com/document/293035053/Winnetou-Ruling|title=Winnetou Ruling|website=Scribd |last=ZPI125}}</ref> in which the Board of Appeal ruled that the name of famous characters cannot be protected as a trademark in these classes. Zorro Productions appealed the decision, and on December 19, 2017, the EUIPO Fourth Board of Appeal nullified the lower court's ruling, declaring the contested trademarks as valid, and required Cabell to pay the costs of the legal action, the appeal and Zorro Productions' legal fees and costs.{{Citation needed|date=January 2022}} Zorro Productions, Inc. owns approximately 1,300 other Zorro-related trademarks worldwide.{{Citation needed|date=May 2017}} In May 2018, Judge [[Edward Davila]] processed a complaint by Cabell to find Zorro Productions infringed copyright on his musical.<ref>{{Cite news |last=Gardner |first=Eriq |title='Zorro' Licensor, in Role Reversal, Faces Trial for Copyright Infringement |magazine=The Hollywood Reporter |url=https://www.hollywoodreporter.com/business/business-news/zorro-licensor-role-reversal-faces-trial-copyright-infringement-1111593/ |date=May 14, 2018 |access-date=July 19, 2021}}</ref>