Trademark

by Timothy Geigner


Filed Under:
europe, trademark, zorro



Europe Frees Zorro From Trademark Restrictions

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.


Reader Comments

Subscribe: RSS

View by: Time | Thread


  • icon
    That One Guy (profile), 14 Jul 2015 @ 1:38am

    Yet another nail in creativity's coffin

    If people dead for just under 60 years can't make money off of their creations, I just don't know why anyone would even bother creating anything at all.

    With this horrendous ruling, the creator of Zorro now has absolutely zero incentive to rise from his grave and create more works, which will obviously have serious repercussions on the creation of more Zorro related movies/books/comics, significantly harming both creativity, and culture as a whole.

    Sure I can hear you already, "But others can take the character and create new works around him", but such a claim is the very personification of absurdity. Without incentive for zombie Johnston McCulley to create new works, no real Zorro creations will be made, and given cultural works are only valid when made by the original creator, that means the character of Zorro(and any characters derived from, or inspired by him) is, and will forever more, remain as dead as zombie Johnston McCulley.

    Truly a sad day indeed for creativity everywhere.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 14 Jul 2015 @ 1:58am

      Re: Yet another nail in creativity's coffin

      Just needs a few mentions of "PaulT" and "stinky", and you'd basically have the perfect channeling of Whatever/Just Sayin'/horse with no name.

      reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 14 Jul 2015 @ 4:12am

      Re: Yet another nail in creativity's coffin

      I had to read who was commenting to notice it's a joke.

      I do expect Disney to build on top of Zorro and copyright into eternity.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 14 Jul 2015 @ 4:43am

        Re: Re: Yet another nail in creativity's coffin

        Does that mean we can expect to see Zorro appear in Season 25 of Once Upon A Time?

        reply to this | link to this | view in chronology ]

      • identicon
        mcinsand, 14 Jul 2015 @ 6:33am

        TOG

        I've learned to pay attention when TOG posts, and this is one of the best he's done.

        reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 14 Jul 2015 @ 7:43am

        Re: Re: Yet another nail in creativity's coffin

        "I do expect Disney to build on top of Zorro and copyright into eternity."

        Disney still maintains both trademarks (under the name "Disney's Zorro") and copyrights for their tv series version, which was released on DVD a couple of years ago.

        reply to this | link to this | view in chronology ]

      • icon
        Sheogorath (profile), 15 Jul 2015 @ 4:12am

        Re: Re: Yet another nail in creativity's coffin

        I had to read who was commenting to notice it's a joke.
        I didn't, the mention of Zorro's creator rising from his grave was sufficient to clue me in.

        reply to this | link to this | view in chronology ]

  • icon
    Ninja (profile), 14 Jul 2015 @ 4:14am

    Zorro going Public Domain is simply awesome (much like Bond) and I hope we'll see all kinds of developments in his world and character along with plenty of derivatives that can now build on top of it without fearing lawsuits. Notice that the only thing copyright did in this case was delay this and deprive culture of stuff to expand upon.

    reply to this | link to this | view in chronology ]

  • icon
    Spaceman Spiff (profile), 14 Jul 2015 @ 6:16am

    The big Z

    Of course, they'll probably claim a trademark on the big Z sword slash - Zorro's signature act and sign...

    reply to this | link to this | view in chronology ]

  • icon
    Derek Kerton (profile), 14 Jul 2015 @ 9:59am

    That's going to leave a mark.

    reply to this | link to this | view in chronology ]

  • icon
    Derek Kerton (profile), 14 Jul 2015 @ 9:59am

    That's going to leave a mark.

    reply to this | link to this | view in chronology ]

    • icon
      Derek Kerton (profile), 14 Jul 2015 @ 10:02am

      Re: That's going to leave a mark.

      How do I work these PC buttons?

      Son, come over here and show me how to delete this comment the computer made.

      No! I didn't click submit. It just went on its own. Dadgummed Internets!!

      What do you mean you can't delete it? No, all I see now is a set of solitaire cards.

      reply to this | link to this | view in chronology ]

  • icon
    Sheogorath (profile), 15 Jul 2015 @ 4:08am

    I'm in the UK

    Zorro books! Zorro films! Zorro pop! Zorro beer! Zorro crisps! Zorro cupcakes! Zorro! Zorro! Zorro! Zorro! Zorro! Zorro! Zorro! *gets back of head slapped* Thanks, mum.

    reply to this | link to this | view in chronology ]

  • icon
    Mason Wheeler (profile), 15 Jul 2015 @ 7:30am

    Maybe the Doyle estate needs to be taking notes...

    reply to this | link to this | view in chronology ]


Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Follow Techdirt
Techdirt Gear
Shop Now: Techdirt Logo Gear
Advertisement
Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Advertisement
Report this ad  |  Hide Techdirt ads
Recent Stories
Advertisement
Report this ad  |  Hide Techdirt ads

Close

Email This

This feature is only available to registered users. Register or sign in to use it.