There’s a somewhat puzzling complaint newly filed in the Northern District of California. Zorro Productions, Inc. (ZPI) filed an unfair competition suit against Mars, Inc., maker of M&M’s candies, and its advertising agency, BBDO Worldwide, Inc. The complaint alleges that
|ZPI is the owner of all rights, including without limitation, trademarks and trade dress, both registered and unregistered, associated with “Zorro,” the well-known fictitious character who has been widely popularized by ZPI and its licensees through depictions in, among other media, feature films, television programs, novels and comic books. ZPI and its licensees have extensively marketed, publicized and promoted “Zorro” through the use of distinctive depictions featuring “Zorro” as a masked fighter for justice, dressed in black, wearing a flat Cordoba hat and a cape, and brandishing a sword by which he generates the distinctively and separately trademarked “Z” and/or “Zorro.”|
The complaint alleges that Mars is showing an M&M’s television commercial that incorporates a “Zorro” character, but there’s no exhibit to the complaint and I couldn’t find an M&M’s “Zorro” commercial online. (Let me know if you can find one.) News outlets use this image to illustrate their stories:
But it’s not entirely clear that the above character is the accused infringement. The first count of the complaint, under section 43(a) of the Lanham Act, claims that Mars is
|using an actor wearing a trademarked “Zorro” Halloween costume in the commercial. Defendants have also falsely and without authorization placed on the unauthorized “Zorro” character in the television commercial Defendant Mars, Inc.’s claim of ownership by placing its own trademark or other symbol of registration over the actor wearing the trademarked “Zorro” Halloween costume. [ed. – the “M” on an M&M perhaps?] Defendants’ conduct of using the Zorro Halloween costume and placing its own registration mark over it in the television commercial is confusingly similar to ZPI’s protected “Zorro” character, trademark and trade dress.|
The complaint also has a count under section 32 of the Lanham Act for infringement of a registered trademark, alleging infringement of this registration for the word mark “Zorro” for Halloween costumes. The complaint therefore also alleges that the “Zorro” mark is
|found on its and its licensees’ Halloween costumes . . . includ[ing] the hang tag on the “Zorro” Halloween costume used without authorization by defendants in their television commercial.|
Perhaps like this, available here:
ZPI also alleges generally that it has trademark registrations “pertaining” to Zorro, “including pictorial depictions of ‘Zorro,’ dressed in black, wearing a flat Cordoba hat, a mask and a cape such as that used by the defendants in their television commercial.” These are presumably what the plaintiff is referring to, which are variously registered for publications, toys and games, but nothing close to candy (use this query in the TESS free form search ):
Notably, nothing was mentioned about this one, a registration for antenna balls:
So lets assume charitably that the commercial had a real actor wearing a costume licensed by Zorro Productions, Inc. (Indeed, BBDO did an M&M’s campaign with commercials showing humans turning into M&Ms, like this one.) We have now entered the territory of direct conflict between copyright law and trademark law.
According to Wikipedia, the work originating the Zorro character is in the public domain, a situation fast creeping up on Mickey Mouse. Zorro was created in 1919 in a pulp fiction novel called
The story became “The Mark of Zorro,” a 1920 silent film starring Douglas Fairbanks:
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 it’s 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 (notably, the M&M – if that is the accused character – is not wearing a Cordoba hat or a cape). 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?
Dastar held that unfair competition law did not trump copyright in its factual scenario:
|To hold otherwise would be akin to finding that §43(a) created a species of perpetual patent and copyright, which Congress may not do.|
So score one for Mars. But, perhaps when we see the commercial in context there’s some colorable theory that the fictional character Zorro is seen to be endorsing M&M’s, the theory that worked for the fictional characters Conan the Barbarian (albeit a case involving use of the character name, too) and the Naked Cowboy (albeit a living person’s character). ZPI also has a Tiger Woods problem that it will have to finesse, “as a general rule, a person’s image or likeness cannot function as a trademark.”
I don’t think the ZPI claim improves even if an actor is wearing an authorized “Zorro” costume; I’m having a hard time following a leap from “it has the word Zorro on the tag” to infringement of a registered trademark when Mars apparently never used the word “Zorro.” It reads as an awkward way to get a claim for infringement of a registered trademark in the complaint. I suppose the theory is that the costume, because it’s authorized, somehow is a source identifier for ZPI, but there was no separate claim of secondary meaning in the costume apart from the general allegation that the character as a whole is the property of ZPI. Perhaps if Mars had just used the “Bandido” costume instead it could have avoided the whole complaint.
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. If there is a perception of endorsement though, it will be interesting to see whether our right to exploit fictional characters in the public domain trumps ZPI’s endorsement rights in the character as suggested by Dastar.
Steamboat Willie is still safe for awhile; he doesn’t much resemble the current version of Mickey Mouse, so anyone trying to use Steamboat Willie to leverage into Disney’s blockbuster territory will have a hard go of it. But this case is an interesting test bed.
Zorro Prods., Inc. v. Mars, Inc., No. C10-01179 (N.D. Cal. March 22, 2010).
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