Click here to download a PDF of the full decision.

In copyright infringement case over competing musicals and novels based on story of Zorro, district court dismissed plaintiff’s copyright infringement claim with respect to Zorro novel written under license from defendants, finding novel was not substantially similar to plaintiff’s Zorro musical; declined to dismiss plaintiff’s infringement claim with respect to defendants’ Zorro musical, finding triable issue of fact as to substantial similarity of works; and held that plaintiff’s Zorro musical did not infringe defendants’ copyrights or trademarks.

The character of Zorro originated in several works written by Johnston McCulley between 1919 and 1922. The original story was adapted into a silent movie in 1920. All of these stories are now in the public domain. Plaintiff Robert Cabell is the author of a musical based on the public domain Zorro stories. Defendant Zorro Productions Inc. is the assignee of the worldwide rights in the character Zorro.

In 1949, the creator of Zorro assigned to ZPI the worldwide rights to the character in all forms of media. ZPI licensed those rights in Zorro to a number of Hollywood companies over the years for various Zorro-related works and merchandise. In 1996, Cabell created a musical titled “Z –The Musical of Zorro,” which he claimed to base expressly on the public domain works. Cabell registered various scripts and audio versions of his musical with the U.S. Copyright Office, but acknowledged that his copyright interests extended only to the “original, novel elements of his work,” but not those elements that were in the public domain as of 1996.

Cabell met with ZPI about producing his Zorro musical and, though the conversations ultimately broke down, he informed ZPI that he intended to continue the project “under the rights of public domain.” Cabell claimed that, at that point, ZPI began aggressively asserting that Cabell’s script infringed its copyrights and trademarks, and threatening litigation if Cabell produced the musical without a license. In the early 2000s, Cabell was engaged on a potential Broadway production that he claimed never materialized because of alleged threats from ZPI. He later retained an international broker and agent, but the agent allegedly refused to license the musical in the United States under the threat of litigation by ZPI. Meanwhile, ZPI licensed use of the Zorro character to author Isabelle Allende for use in a 2005 novel telling the story of “Young Zorro” and in a separate musical production that premiered in 2008 and was performed in various U.S. locations. Cabell filed suit in March 2013, claiming that the Allende novel and the ZPI Musical infringed his musical, and seeking a declaration that his musical did not infringe on any of ZPI’s rights.

Cabell moved for summary judgment on his declaratory judgment claim, and ZPI cross-moved for summary judgment on Cabell’s infringement claims. To establish copyright infringement, Cabell must establish both ownership and copying. ZPI did not dispute ownership, but disputed copying. In order to prove copying, Cabell must show either access and substantial similarity or, if there is no evidence of access, striking similarity such that it precludes the possibility of independent creation. With respect to access, the parties did not dispute that Cabell had provided the owner of ZPI with a copy of his script when the two met in 1996 to discuss a license for Cabell’s musical, although no evidence existed that either Allende or the authors of the ZPI Musical had direct access to that copy. Since ZPI entered into a licensing arrangement with the authors of those works and had some kind of supervisory authority over their creation, and since the evidence did not completely preclude the possibility that the authors had exchanges with ZPI that could have given them access to Cabell’s script, the court determined that a triable issue of fact existed as to the authors’ access to Cabell’s work.

With respect to substantial similarity, the court noted that the Ninth Circuit follows a two-pronged approach, but that only the extrinsic test — which focuses on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events” in the two works — was important at the summary judgment stage. Applying the extrinsic test, the court determined that the Allende novel was not substantially similar to Cabell’s musical script. The plot of the novel was “markedly different” from Cabell’s script, since the novel focused on the character Zorro’s childhood and adoption of the hero persona, while plaintiff’s script lacks such detail and begins with Zorro as an adult who has already established his double life.

The court likewise found enough differences in the settings, theme, pace, mood and tone of the two works to weigh heavily against a finding of substantial similarity. No extended similarity of dialogue between the two works existed either. Finally, while Cabell claimed that three characters from his script were sufficiently developed and original to be protectable, the court found that these characters were not substantially similar to their alleged analogs in the novel, which treated those characters differently in terms of age, personality and role within the story. Finding no triable issue as to access or substantial similarity, the court granted summary judgment to ZPI dismissing Cabell’s copyright claim with regard to the novel.

With respect to the ZPI Musical, however, the court concluded that a reasonable juror could find substantial similarity between the plots of the ZPI Musical and the Cabell Musical. Both musicals focused on the adventures of a mature Zorro in Spanish California. Moreover, the alleged analogs of Cabell’s protectable characters in ZPI’s production were much closer to Cabell’s versions in their descriptions and plot roles . The court also found that the settings of the two musicals were sufficiently similar; both, for example, utilized the specific narrative device of a group of gypsies telling the story of Zorro, and the two also shared common themes, such as “good conquers evil” in the adventures of a mature Zorro. As a result, the court found a triable issue of fact as to whether substantial similarity existed between the two musicals, precluding a grant of summary judgment.

Finally, the court also granted summary judgment on Cabell’s declaratory judgment claim that his musical did not infringe upon any of ZPI’s intellectual property. Cabell argued that he was entitled to summary judgment because his musical was a composition of elements from the public domain and thus did not and could not infringe on ZPI’s intellectual property. ZPI failed to respond to this argument, but asserted that the declaratory judgment claim failed due to a lack of justiciable case or controversy (because there was no infringement action), and statute of limitations (because it told Cabell in 1997 that the Cabell Musical infringed its intellectual property) and laches. The court disagreed with ZPI. It found that there was a justiciable case because ZPI had consistently threatened litigation against Cabell and theaters that sought to produce the Cabell Musical; that there was no statute of limitations problem because Cabell could produce his musical the next day and ZPI could sue for infringement then; and that laches does not apply because the declaratory relief is legal and not equitable in nature. Then, applying the doctrine that a party abandons claims by not raising them in opposition to a summary judgment motion, the court reasoned that ZPI had abandoned the position that plaintiff infringed its copyrights, and granted summary judgment to Cabell on this declaratory judgment claim.