Copyright and trademark disputes
Tessie Santiago as the Queen of Swords
The Mark of Zorro, starring Douglas Fairbanks, is out of copyright
The copyright and trademark status of the Zorro character and stories are disputed. Zorro Productions, Inc., asserts that it "controls the worldwide trademarks and copyrights in the name, visual likeness and the character of Zorro."[35] 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."[36]
In 1999, TriStar Pictures Inc. 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. In an August 1999 order, the court ruled that it would not invalidate Zorro Productions’ trademarks as a result of the defendant's arguments that certain copyrights in Zorro being in the public domain or owned by third parties.[37]
A dispute took place in the 2001 case of Sony Pictures Entertainment v. Fireworks Ent. Group.[38] On January 24, 2001, Sony Pictures, TriStar Pictures and Zorro Productions, Inc. sued Fireworks Entertainment, Paramount Pictures, and Mercury Entertainment, claiming that the Queen of Swords television series infringed upon the copyrights and trademarks of Zorro and associated characters. Sony and TriStar had paid licensing fees to Zorro Productions, Inc., related to the 1998 film The Mask of Zorro. Queen of Swords was a 2000–2001 television series set in 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 transferred to his children, who created Zorro Productions, Inc. Fireworks Entertainment argued that the original rights had already been transferred to 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".[39] Judge Collins also stated that: "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."
In another legal action in 2010, Zorro Productions, Inc., sued Mars, Incorporated, makers of M&M's chocolate candies, and ad agency BBDO Worldwide over a commercial featuring a Zorro-like costume.[40] The case was settled with "each party shall bear its own costs incurred in connection with this action, including its attorney’s fees and costs" on August 13, 2010.[41]
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.[42] 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.[43][44] However the judge later reversed his decision and had the case transferred to California.