You may have seen the news that Zorro Productions is suing Mars
, the makers of M&M's, over a trademark infringement claim, concerning an M&Ms commercial that apparently involves some sort of Zorro costume. But wait a second... just like Sherlock Holmes
, it appears that at least some of Zorro should be in the public domain by now. Pamela Chestek
writes in to give her very thorough analysis of this particular case
, noting that, in some ways, it may be setting up some future lawsuits concerning the difference between trademark and copyright in characters. This is an issue that is going to get increasingly important -- since (assuming Disney doesn't pull another copyright extension out of its magic bag) some characters created in the last century may start hitting the public domain with their copyrights, even as their trademarks remain. But what does that mean when it comes to using those characters? Well, with Sherlock Holmes, it means that the estate holding the rights still pretends you can't do anything, even if that's not quite true. And it looks like Zorro Productions is doing the same thing. But it's not that easy:
According to the Copyright Office, all works published before January 1, 1923 are in the public domain. So if the copyright in the original Zorro character is in the public domain, the public may also exploit the character. But how far does the right extend? As a matter of legal doctrine, in general copyright and trademark can happily co-exist. Therefore, even if Zorro was in the public domain, to the extent that Zorro has source-identifying significance (like Mickey Mouse does), Mars may use Zorro only as long as doing so isn't likely to cause confusion as to the affiliation, connection, or association of Zorro with Mars, and Mars doesn't suggest that Zorro sponsors or approves of Mars' goods. (That's an abridged version of the statutory language, don't blame me because it's almost unintelligible).
We can't know whether this might be happening without knowing what the accused work is, but the complaint may be squarely in doctrinal conflict territory. There is no suggestion that Mars used the word "Zorro"; it instead appears that ZPI is alleging that use of a Zorro character in any form is infringing. ZPI describes its proprietary character as dressed in black, wearing a flat Cordoba hat, a mask and a cape, and you can see that the registered logos of Zorro and the Zorro costume are both quite similar to the public domain Zorro.... So to the extent that the claim of proprietary rights in the Zorro character is co-extensive with the copyright in the character, which gives?
In the end, Chestek gives the edge to Mars, but isn't entirely sure because it's not entirely clear what the actual infringement is. Many of the news stories show an image of an M&M candy in a sorta-Zorro-like outfit, but Chestek notes that the lawsuit describes someone in a Halloween costume, which implies it may be something different. Assuming that it is a person in a Halloween costume, Chestek suggests that Mars has a strong case, and Zorro may be missing the mark:
My vote right now is that the mere use of a character in the public domain, particularly when it appears to be someone simply wearing a Halloween costume representing the character, isn't going to be perceived as an endorsement in the first instance.
However, that could change, depending on the specific use, and if there is some impression of "endorsement." Ah, the public domain. It isn't quite what it used to be.