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1 Adam Brett Wolf (215914)
Tracey B. Cowan (250053)
2 Peiffer Rosca Wolf Abdulla Carr & Cane, APLC
4 Embarcadero Center, Suite 1400
3 San Francisco, CA 94111
T: (415) 766-3454/F: (415) 402-0058
4 E-Mail: awolf@prwlegal.com
E-mail: tcowan@prwlegal.com
5
Greg Latham
6 Admitted Pro Hac Vice
Intellectual Property Consulting
7 201 St. Charles Avenue, Suite 2500
New Orleans, LA 70170
8 T:(504) 322-7166/F:(504) 322-7184
E-mail: glatham@iplawconsulting.com
9
Attorneys for Plaintiff Robert W. Cabell
10
11

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION

12

No. 5:15-cv-00771-EJD

13 ROBERT W. CABELL,
14
15

Plaintiff,
vs.

16 ZORRO PRODUCTIONS, INC., and JOHN
GERTZ,
17
Defendants.
18
19

SECOND AMENDED AND
SUPPLEMENTAL COMPLAINT FOR
DECLARATORY JUDGMENT,
COPYRIGHT INFRINGEMENT,
CANCELLATION OF FEDERAL
TRADEMARK REGISTRATIONS,
INJUNCTIVE RELIEF, AND
MONETARY DAMAGES

Plaintiff Robert W. Cabell submits this Second Amended and Supplemental Complaint

20 for Declaratory Judgment, Copyright Infringement, Cancellation of Federal Trademark
21 Registrations, Injunctive Relief and Monetary Damages against defendants Zorro Productions,
22 Inc. and John Gertz as follows:
23
24

NATURE OF ACTION
This is a dispute over intellectual property rights to the well-known fictional character

25 “Zorro.” In 1919, New York-based author Johnston McCulley wrote the first Zorro story, which
26
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was titled “The Curse of Capistrano.” The following year, 1920, McCulley’s story was adapted
2
into a silent movie titled “The Mask of Zorro” by Douglas Fairbanks, Sr. Nearly one hundred
3
years later, the character is well-known as the masked outlaw who defends the public against
4
tyrannical officials and other villains. The copyright interests in those works have long ago
5
expired and the works are now part of the public domain. In 1996, Plaintiff Robert Cabell (“Mr.
6
Cabell”) authored an original musical which incorporates certain material from the public
7
domain works. Although Mr. Cabell’s rights to use these public domain works is clear, the
8
Defendants have engaged in a campaign of intimidation and coercion aimed at preventing Mr.
9
Cabell (and any other third party) from the legitimate use of this public domain material.
10
Specifically, defendants have fraudulently obtained federal trademark registrations for
11
various “Zorro” marks and falsely assert those registrations to impermissibly extend intellectual
12
property protection over material for which all copyrights have expired.

Defendants also

13
fraudulently assert that copyrights for later-published material provide Defendants with exclusive
14
rights in the elements of the 1919 story and the 1920 film. By fraudulently asserting rights that
15
do not exist, and by threatening litigation against anyone who purportedly violates these non16
existent rights, the Defendants have built a licensing empire out of smoke and mirrors.
17
Defendants have recently threatened to sue Mr. Cabell and his licensees for trademark and
18
copyright infringement purportedly relating to Mr. Cabell’s musical – a work that is directly
19
based upon the 1919 Zorro book and the 1920 Zorro musical that are in the public domain.
20
Defendants’ threats are nothing more than an attempt to bully Mr. Cabell, hoping that he will
21
surrender without challenging defendants’ wrongful activities.
22
Defendants wrong-doing is not limited to their trademark and copyright misuse.
23
Ironically, while purporting to protect copyrights, defendants have willfully infringed Mr.
24
Cabell’s copyright interests in his musical. Although largely based on the pre-existing, public
25
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domain, Zorro works, Mr. Cabell’s works also contain significant original material. Defendants
2
have copied Mr. Cabell’s material and used it as the basis for a book and a musical of their own.
3
Mr. Cabell initiates this litigation to obtain (i) injunctive and monetary relief from
4
defendants’ infringement upon his copyright interests; (ii) a judgment that his musical does not
5
violate any intellectual property rights held by defendants; (iii) a preliminary and permanent
6
injunction against Defendants prohibiting them from making claims that Mr. Cabell’s musical
7
infringes upon any of Defendants’ intellectual property rights; (iv) cancellation of Defendants’
8
federal trademark registrations for the mark ZORRO as it relates to literary works, visual arts and
9
performing arts; and (v) monetary damages incurred by Mr. Cabell as a result of Defendants’
10
fraud, tortious interference and unfair competition.
11
PARTIES
12
1.

Robert W. Cabell is a resident of King County, Washington. Mr. Cabell is the

13
author of the 1996 musical “Z – The Musical of Zorro,” based upon the 1919 story authored by
14
Johnston McCulley and the 1920 film produced by Douglas Fairbanks, Sr.
15
2.

Defendant Zorro Productions, Inc. (“ZPI”), based on information and belief, is a

16
California corporation having a place of business Berkeley, California.
17
3.

Defendant John Gertz (“Gertz”), based on information and belief, is an individual

18
residing in Berkeley, California. Upon information and belief, Gertz owns, operates and has
19
control over ZPI.
20
JURISDICTION AND VENUE
21
4.

This action arises under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201

22
and 2202, et seq., the Lanham Act, 15 U.S.C. §§ 1051, et seq., and the Copyright Act, 17 U.S.C.
23
§§ 101, et seq. The Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
24
1338.
25
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5.

Venue in this judicial district is proper under 28 U.S.C. §§1391(b) and (c) in that

2
Defendants are domiciled in this District and done business in this District or a substantial part of
3
the events giving rise to Plaintiff’s claims occurred in this judicial district.
4
6.

Defendants are subject to the personal jurisdiction of this Court as Defendants are

5
domiciled in this District and have done business in this district. Defendants have purposefully
6
availed themselves of the benefits of doing business in the State of California.
7
8
FACTUAL BACKGROUND
9
A.

The Early Twentieth Century History of ZORRO

10
11
12
13
14
15
16
17
18
19
Zorro’s Debut –
McCulley’s 1919 story

20

The First Zorro film in 1920

21
7.

The fictional character Zorro debuted on August 6, 1919, in a publication

22
authored by New York-based Johnston McCulley.

McCulley’s story, titled “The Curse of

23
Capistrano,” was published as a five-part serialization in the magazine, All-Story Weekly (as
24
shown above, left).
25
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8.

In McCulley’s 1919 story, Zorro is the secret identity of Don Diego de la Vega, a

2
nobleman and master living in the Spanish colonial era. Diego becomes Zorro “to avenge the
3
helplessness, to punish cruel politicians,” and “to aid the oppressed.” The character’s motif
4
includes a black costume consisting of a black cape or cloak, a black sombrero, and a black mask
5
that covers the top of his head from eye level upwards. McCulley’s Zorro rides a horse and
6
fights with a whip and sword.
7
9.

McCulley’s 1919 story was adapted into the 1920 silent movie, “The Mark of

8
Zorro” by Douglas Fairbanks, Sr. (cover art shown above, right). The movie was a commercial
9
success.
10
10.

Under the Copyright Act, any copyright interest in McCulley’s story published in

11
1919 has expired.
12
11.

Under the Copyright Act, any copyright interest in the 1920 film, The Mark of

13
Zorro has expired.
14
12.

The United States Copyright Office’s official publication regarding the duration

15
of copyrights clearly states: “all works published in the United States before January 1, 1923, are
16
in the public domain.”
17
B.

Mr. Cabell’s Musical: Z – The Musical of Zorro

18
13.

In 1996, Plaintiff Robert Cabell authored a script for a musical titled “Z – The

19
Musical of Zorro” (“Mr. Cabell’s Musical”) expressly based upon the 1919 McCulley story and
20
the 1920 Fairbanks film.
21
14.

Mr. Cabell’s Musical stars Zorro as he is described in the earlier works now in the

22
public domain: a masked avenger leading a double life, donned in black mask, black sombrero,
23
black cape, and with a sword and whip.
24
15.

Although based on McCulley’s 1919 story, Mr. Cabell’s Musical contains a

25
number of original, novel elements that had never been incorporated into any other Zorro work
26
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including his unique expression of the Zorro origins for the hero’s alter ego and skills. In the
2
original works of “The Mask of Zorro” the reason for and origin of Don Diego’s creation of his
3
alter ego Zorro is summed up in one sentence, “In secret I practiced horsemanship, and learned
4
how to handle a blade--.”
5
16.

The script of Mr. Cabell’s Musical was registered with the United States

6
Copyright Office. Mr. Cabell owns U.S. Copyright Registration No. PA 2-113-089 covering his
7
script. Mr. Cabell’s copyright interest extends only to the original, novel elements of his work
8
and do not include those elements present in any Zorro works that were in the public domain as
9
of 1996.
10
17.

A revised edition of Mr. Cabell’s Musical script was registered with the U.S.

11
Copyright Office in 1997. Mr. Cabell was issued U.S. Copyright Registration No. PA 2-171-672
12
for his revised script. Again, in the fall of 1997, Mr. Cabell registered a revised script with the
13
U.S. Copyright Office and was issued U.S. Registration No. PA 2-226-359.
14
18.
15

Mr. Cabell’s Musical was performed in 1997 at the Producer’s Club Theatre at

358 W. 44th St, New York, NY in the heart of the Broadway Theatre District.

16
19.
17

In 1998, Mr. Cabell’s Musical was performed at the historic Lamb’s Theater at

130 W. 44th St, New York, NY in the heart of the Broadway Theatre District. Mr. Cabell’s

18
Musical recorded as a demo on audio cassette and then on compact discs in 1998 in the recording
19
studios in New York, Los Angeles, and Miami with celebrity cast that included pop icons
20
Deborah Gibson and Menudo’s Ruben Gomez as well as Broadway veterans such as Kaye
21
Ballard, Phyllis Newman, Marc Kudisch, Christiane Noll, Kevin McCarthy and Rob Evan. The
22

CD release in the USA was December 15th, 1999 and internationally January 15th, 2000. The

23
U.S. Copyright Office issued to Mr. Cabell U.S. Copyright Registration Nos. SR 389-305 and
24
PA 1-000-842 for these works.
25
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20.

The stage production of Mr. Cabell’s Musical premiered in Eugene, Oregon in the

2
year 2000. The performance was successful and widely acclaimed.
3
C.

Defendants’ Fraudulent Claims of Trademark and Copyright Ownership

4
21.

For years, Defendants have falsely asserted that ZPI owns the worldwide

5
trademarks and copyrights in the name, visual likeness and character of Zorro.
6
22.

For years, Defendants also have falsely asserted that the unauthorized use of the

7
name, character and/or likeness of Zorro is an infringement and a violation of state and federal
8
laws. Defendants have repeatedly sought to control the rights to Mr. Cabell’s musical version of
9
Zorro, but refused to provide Mr. Cabell with proof substantiating Defendants’ claims of
10
copyright ownership, and therefore Mr. Cabell has refused and continues to refuse any and all
11
demands to license his Zorro works from ZPI and or Gertz.
12
23.

In fact, Defendants know that any and all copyright interest arising out of the

13
1919 story “The Curse of Capistrano” and the 1920 silent movie “The Mark of Zorro” have
14
expired. Defendants know that as a result of the expiration of any copyright interests in those
15
works, those works are in the public domain. Defendants know there can be no valid copyright
16
interest in the name Zorro, the Zorro character and/or the likeness of Zorro as presented in the
17
1919 story and 1920 movie.

Because those works are in the public domain, any person,

18
including plaintiff, is free to use any aspect of those works.
19
24.

Besides these works being in the public domain, Defendants never attained

20
ownership of the copyright interests from McCulley or his heirs.
21
25.

Defendants know that their claims of exclusive copyright and trademark

22
ownership are false because defendants have been unsuccessful trying to enforce their claims. In
23
2001, ZPI filed suit against several defendants asserting their purported exclusive copyrights and
24
trademarks. During that litigation, the U.S. District Court for the Central District of California,
25
Honorable Judge Collins, found that:
26
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2

a.

“It is undisputed, however, that Zorro appears in works whose
copyrights have already expired, such as McCulley’s story “The
Curse of Capistrano” and the Fairbanks’ movie, “The Mark of
Zorro.” Sony Pictures Entertainment, Inc. et. al. v. Fireworks
Entertainment Group, Inc. et al, 137 F.Supp.2d 1177, 1185 (C.D.
Cal. 2001).

b.

“Notably, the initial term of the copyright for the silent picture,
‘The Mark of Zorro’ expired in 1948. No renewal was filed . .
.Therefore, all of the essential character elements of Zorro
expressed in ‘The Curse of Capistrano’ and the silent picture, ‘The
Mark of Zorro’ moved into the public domain when the renewal
terms of those copyrights expired.” Id. at 1198 n. 3.
“[ZPI] concede . . . they [it owns] no copyright in the character
Zorro.” Id. at 1998 n. 9.

3
4
5
6
7
8

c.

9
10

d.

“The Court notes 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.” Id. at 1198 n. 31.

e.

“To claim ownership of a trademark, however, [ZPI] must first
identify the mark they seek to protect. [ZPI] concede there is no
infringement of an actual mark.” Id. at 1196 (emphasis in
original).

11
12
13
14

26.

In a subsequent ruling, Judge Collins again ruled that ZPI’s trademark claims

15 failed as a matter of law because ZPI could not identify the existence of any protectable
16 trademark or trade dress related to Zorro. See, Sony Pictures Entertainment, Inc., et. al. v.
17 Fireworks Entertainment Group, Inc., 156 F.Supp.2d 1148, 1162-1163 (C.D. Cal. 2001).
18

27.

Despite the rulings of a U.S. District Court in 2001, ZPI continued to falsely and

19 fraudulently assert that it owned all copyright and trademark interests relating to Zorro and
20 fraudulently threatened to sue persons using the name, character or likeness of Zorro.
21

28.

The fraud perpetrated by ZPI and Gertz extends beyond threats to its competitors

22 and into the United States Patent and Trademark Office. On August 17, 1987, Defendant ZPI
23 filed an application with the United States Patent and Trademark Office (“USPTO”) to register
24 the word mark “ZORRO” as used in connection with story books.

When ZPI filed this

25 trademark application, ZPI knew that the term “ZORRO” had fallen into the public domain for
26
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use in connection with fictional stories. Nonetheless, when filing the trademark application, ZPI
2
fraudulently declared that it was exclusively entitled to use the “ZORRO” name. The USPTO,
3
unaware of ZPI’s fraudulent statements, issued U.S. Trademark Reg. No. 1,524,207 to ZPI.
4
29.

On September 16, 1991, Defendant ZPI filed an application with the USPTO to

5
register the word mark “ZORRO” as used in connection with television shows. When ZPI filed
6
this trademark application, ZPI knew that the term “ZORRO” had fallen into the public domain
7
for use in connection with these types of services, including movies and film. Nonetheless, when
8
filing the trademark application, ZPI fraudulently declared that it was exclusively entitled to use
9
the “ZORRO” name.

The USPTO, unaware of ZPI’s fraudulent statements, issued U.S.

10
Trademark Reg. No. 1.731,743 to ZPI.
11
30.

On January 13, 1993, Defendant ZPI filed an application with the USPTO to

12
register the word mark “ZORRO” as used in connection with comic books. When ZPI filed this
13
trademark application, ZPI knew that the term “ZORRO” had fallen into the public domain for
14
use in connection with fictional, printed stories.

Nonetheless, when filing the trademark

15
application, ZPI fraudulently declared that it was exclusively entitled to use the “ZORRO” name.
16
The USPTO, unaware of ZPI’s fraudulent statements, issued U.S. Trademark Reg. No. 1,912,515
17
to ZPI.
18
31.

On March 11, 1996, Defendant ZPI filed an application with the USPTO to

19
register the word mark “ZORRO” as used in connection with books regarding fictional
20
characters. When ZPI filed this trademark application, ZPI knew that the term “ZORRO” had
21
fallen into the public domain for use in connection with stories including fictional characters.
22
Nonetheless, when filing the trademark application, ZPI fraudulently declared that it was
23
exclusively entitled to use the “ZORRO” name. The USPTO, unaware of ZPI’s fraudulent
24
statements, issued U.S. Trademark Reg. No. 2,296,302 to ZPI.
25
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32.

On June 4, 1996, Defendant ZPI filed an application with the USPTO to register

2
the word mark “ZORRO” as used in connection with video discs featuring music and
3
entertainment. When ZPI filed this trademark application, ZPI knew that the term “ZORRO”
4
had fallen into the public domain for use in connection with entertainment, regardless of the
5
format. Nonetheless, when filing the trademark application, ZPI fraudulently declared that it was
6
exclusively entitled to use the “ZORRO” name. The USPTO, unaware of ZPI’s fraudulent
7
statements, issued U.S. Trademark Reg. No. 2,239,219 to ZPI.
8
33.

On September 16, 1997, Defendant ZPI filed an application with the USPTO to

9
register the word mark “ZORRO” as used in connection with entertainment, specifically theater
10
productions. When ZPI filed this trademark application, ZPI knew that the term “ZORRO” had
11
fallen into the public domain for use in connection with entertainment, regardless of format.
12
Nonetheless, when filing the trademark application, ZPI fraudulently declared that it was
13
exclusively entitled to use the “ZORRO” name. The USPTO, unaware of ZPI’s fraudulent
14
statements, issued U.S. Trademark Reg. No. 2,198,254 to ZPI.
15
34.

ZPI and Gertz fraudulently obtained these federal trademark registrations as a

16
means to improperly extend the copyright protection that has expired for early Zorro works. By
17
way of example, ZPI asserts that U.S. Trademark Reg. No. 2,198,254 prevents third parties from
18
promoting Zorro musicals, even if those musicals draw entirely from the 1919 McCulley story
19
and/or the 1920 Fairbanks movie that are in the public domain.
20
35.

For reasons discussed more fully below, in 2002, Mr. Cabell filed with the United

21
States Patent and Trademark Office a Petition for Cancellation of various trademarks held by
22
ZPI.
23
36.

In 2004, Mr. Cabell was contacted by counsel for Sony Pictures, who explained

24
that the film “Legend of Zorro” was scheduled for release in 2005. Sony’s counsel was
25
concerned with the pending cancellation petition and the threat it posed to ZPI’s claim to the
26
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ZORRO trademark. Sony’s counsel offered to negotiate a walk-away agreement whereby Mr.
2
Cabell agreed to withdraw his cancellation petition and ZPI agreed not to challenge Mr. Cabell’s
3
ZORRO copyrights and trademarks. After execution of the agreement, Mr. Cabell voluntarily
4
withdrew the trademark cancellation petition without prejudice as agreed.
5
D.

Defendants’ Recent Abuse of Trademark and Copyright Laws

6
37.

In 1996, Mr. Cabell conferred with Gertz about jointly producing his music. In

7
fact, Mr. Cabell provided Gertz with a copy of his script for his Musical. Later, the conversations
8
deteriorated when Gertz refused to corroborate ZPI’s claim of ownership of Zorro trademarks
9
and copyrights. After these negotiations broke down, ZPI became aggressive, asserting for the
10
first time that Mr. Cabell’s work infringed ZPI’s copyrights and trademarks and that Mr. Cabell
11
was required to have a license from ZPI. After consulting with counsel, Mr. Cabell released his
12
musical.
13
38.

Based on the success of his script, audio performances and stage production, Mr.

14
Cabell’s Musical was poised to become a Broadway hit.
15
39.

By 2001, Mr. Cabell had retained the services of well-known choreographer and

16
producer Wayne Cilento to direct the Broadway-bound musical. Additionally, Mr. Cabell had
17
engaged the William Morris agency to represent his interests relating to the musical.
18
40.

Upon information and belief, Defendants approached Mr. Cilento and the William

19
Morris agency and fraudulently informed them that any performance of Mr. Cabell’s Musical
20
would require licenses from defendants and, without such license, any performance would result
21
in litigation. Defendants knew that, in fact, no license was required because Mr. Cabell’s
22
Musical does not infringe upon any valid copyright or trademark interest held by Defendants.
23
Rather, Defendants interference with Mr. Cabell’s agents was knowingly intended to intimidate,
24
harass and coerce the agents so that they would cease working with Mr. Cabell.
25
41.

Indeed, as a direct result of Defendants’ fraudulent representations, Mr. Cilentro

26
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and the William Morris agency ceased its work on behalf of Mr. Cabell and Mr. Cabell’s
2
Musical did not appear on Broadway.
3
42.

In addition, after Mr. Cabell’s Musical was commercially released, ZPI began

4
harassing and directly threatening litigation against vendors of Mr. Cabell’s work.
5
43.

As a result of ZPI’s actions, Mr. Cabell filed the aforementioned TTAB petition

6
for cancellation of ZPI’s trademarks and, in 2004, withdrew his TTAB cancellation petition after
7
coming to the previously discussed agreement with ZPI.
8
44.

Despite the 2004 agreement where ZPI promised not to challenge Mr. Cabell’s

9
rights and where Mr. Cabell withdrew his TTAB cancellation petition against ZPI’s trademarks
10
in return for ZPI’s promise not to challenge, ZPI in late 2012 and early 2013 again began to
11
threaten legal actions against Mr. Cabell’s licensees.
12
45.

Mr. Cabell has been approached by third parties interested in producing his

13
musical in the United States, London, Brazil, Japan, Germany, and Belgium. In each instance,
14
Defendants have interfered with these prospective contracts by fraudulently representing that Mr.
15
Cabell’s Musical infringes upon Defendants’ purported intellectual property rights. These third
16
parties have, in each instance, been intimidated by Defendants’ threats of litigation. Upon
17
information and belief, in some instances Defendants have not only convinced third parties to
18
avoid Mr. Cabell’s Musical, but have diverted business to themselves by convincing these parties
19
to produce Defendants’ musical.
20
46.

In early 2013, Mr. Cabell through his agent, Gallissas Theaterverlag und

21
Mediaagentur GmbH (“Gallissas”), had licensed Mr. Cabell’s Musical to be produced in
22
Clingenberg and Villa Fuchs, Germany.
23
47.

ZPI and its agents engaged in a campaign to bully licensees, including contacting

24
Gallissas and other licensees making false statements regarding its intellectual property rights in
25
the story and character of ZORRO and making false statements regarding Mr. Cabell’s
26
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intellectual property rights in the story and character of ZORRO and stating that Mr. Cabell’s
2
Musical violated ZPI’s copyright and trademark rights in ZORRO.
3
48.

Moreover, Gallissas and Mr. Cabell’s licensees were threatened by ZPI with

4
litigation if they did not concede to ZPI’s demands.
5
49.

At first, Gallissas refused to acquiesce to ZPI’s fraudulent demands because ZPI’s

6
claims were obviously fraudulent; the character and stories of Zorro were introduced in 1919
7
and, as a matter of law, the material has fallen into the public domain, free for use by anyone.
8
50.

When ZPI’s threats were not enough, ZPI filed lawsuits against the productions in

9
Clingenberg and Villa Fuchs, Germany. Neither lawsuit was effective in stopping the
10
productions. Indeed, ZPI suffered a major downfall when one German court held, in a final and
11
binding decision, that ZPI and/or Mr. Gertz did not hold any copyright in the original Zorro
12
stories at all, thus dismissing the claims brought by ZPI against Mr. Cabell.
13
51.

Since ZPI’s bullying tactics were unsuccessful, ZPI’s strategies changed. In the

14
early fall of 2013, ZPI intentionally began to communicate with Gallissas about Gallissas
15
representing ZPI, knowing that Gallissas was contracted with Mr. Cabell.
16
52.

Indeed, ZPI met with Gallissas in San Francisco, California urging Gallissas to

17
begin representing ZPI in addition to Mr. Cabell.
18
53.

ZPI made false statements regarding its copyright and trademark rights in the

19
story and character of ZORRO and false statements about Mr. Cabell’s copyright in his Musical
20
in order to induce Gallissas to represent ZPI in breach of Gallissas contract with Mr. Cabell.
21
54.

ZPI induced Gallissas to breach its agreement with Mr. Cabell because ZPI

22
threatened that it would tie up all of Mr. Cabell’s productions in court.
23
55.

As a result of ZPI interference, Gallissas began representing ZPI and Gallissas

24
stopped performing under its contract with Mr. Cabell.
25
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56.

If that was not enough, ZPI and Gertz have interfered with other opportunities for

2
Mr. Cabell to license the production of his Musical.
3
57.

In the fall of 2013, Mr. Cabell was involved in negotiations to have his musical

4
presented at The 5th Avenue Theatre in Seattle, Washington during the 2014 theatre season. On
5
information and belief, Defendants knowingly, intentionally, and improperly interfered with Mr.
6
Cabell's opportunity by expressly or impliedly threatening the theatre if it presented Mr. Cabell's
7
musical. Moreover, because Defendants had improperly interfered with Mr. Cabell's relationship
8
with Gallissas, Gallissas refused to serve as Mr. Cabell's agent for the proposed production at
9
The 5th Avenue Theatre.
10
58.

In addition, in the fall of 2013, Mr. Cabell was involved in negotiations to have

11
his musical presented at The Philadelphia Shakespeare Theatre in Philadelphia, Pennsylvania and
12
by The American Theatre Group in Rahway, New Jersey. Negotiations with both groups were
13
discontinued after their director learned of Defendants expressed intent to sue all third-parties
14
involved in the production of Mr. Cabell's musical. As a result of Defendants' fraudulent
15
litigation scheme, as well as their express, public threats of litigation, Mr. Cabell lost the
16
business opportunity associated with The Philadelphia Shakespeare Theatre and The American
17
Theatre Group.
18
59.

Moreover, in the fall of 2013, Mr. Cabell was involved in negotiations to have his

19
musical presented by The American Theatre Group in Rahway, New Jersey. Negotiations with
20
the American Theatre Group were discontinued after its director learned of Defendants expressed
21
intent to sue anyone producing Mr. Cabell's musical. As a result of Defendants' fraudulent
22
litigation scheme, as well as their express, public threats of litigation, Mr. Cabell lost the
23
business opportunity associated with The American Theatre Group.
24
25
26
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E.

Defendants’ Copyright Infringement

2
60.

As set forth above, in 1996, Mr. Cabell authored the script for his musical which,

3
although based on the 1919 Johnston McCulley story and 1920 Douglas Fairbanks film, contains
4
a number of original, novel elements that had never been incorporated into any Zorro work. Mr.
5
Cabell's musical is a prequel to the original Zorro works, telling the story of a young Diego and
6
his journey to becoming "Zorro." Mr. Cabell's story introduces into Zorro's early history an
7
important relationship with gypsies; as a matter of setting, some gypsy characters serves as
8
narrators and the musical incorporates flamenco dance as an important element.
9
61.

Defendants had access to the script of Mr. Cabell’s Musical because Mr. Cabell

10
provided copies to Gertz in 1996 during discussions regarding potential collaborations between
11
Mr. Cabell and ZPI. Indeed, Defendants do not dispute having copies of multiple versions of
12
Mr. Cabell’s scripts and music for his Musical. In addition, Mr. Cabell’s Musical has been
13
widely available for purchase through well-known retail outlets such as Amazon.
14
62.

In 2005, a book titled “Zorro” was authored by Isabel Allende (“Ms. Allende’s

15
Book”). Ms. Allende’s Book was commissioned by ZPI and published by Harper Collins
16
pursuant to a contract that gives ZPI significant control over Ms. Allende's Novel. According to
17
the records of the United States Copyright Office, ZPI holds an interest in the copyright issued
18
for the book. Ms. Allende's Book is also a prequel, telling of the life of Zorro prior to that
19
described in the original Johnston McCulley works.
20
63.

Shortly after release of Ms. Allende's Book, ZPI authorized and was responsible

21
for the production of a Zorro musical with music by a band known as the Gipsy Kings.
22
Defendants contracted the group the “Gypsy Kings” and licensed some of their existing songs to
23
use in their musical in order to incorporate Mr. Cabell’s brand of “Gypsy and Flamenco infused
24
storyline” and mimic the style of his score. ZPI's musical premiered in 2008 and has been staged
25
in the United States, including Atlanta, Georgia and Salt Lake City, Utah.
26
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64.

The Allende Novel claims to be the inspiration for ZPI's musical with the Gipsy

2
Kings. In turn, ZPI's musical is promoted and marketed as being based on the Allende Novel.
3
65.

In the nearly ninety years since Johnston McCulley's first Zorro work, and the

4
publication of Ms. Allende’s Book, no author except Mr. Cabell had written about Zorro's early
5
life. No author except Mr. Cabell had incorporated gypsies as a significant presence in Zorro's
6
early life. No author except Mr. Cabell had introduced Zorro to flamenco dancing.
7
66.

However, ZPI’s Musical, based on the Allende Novel, copied these elements, and

8
many others, from Mr. Cabell's musical. The Allende Novel and ZPI's musical serve as prequels
9
to the early Johnston McCulley works - just as Mr. Cabell's musical does. The setting of the
10
story, the sequence of events, the themes and the plot are substantially similar. ZPI's musical
11
incorporates heavily gypsy characters and flamenco dancing - just as Mr. Cabell's musical
12
does. The characters, mood of the works and pace of the works are substantially similar.
13
67.

Defendants' copying of Mr. Cabell's musical is also evident in the musical works

14
that support the productions. For example, Mr. Cabell's musical contains a song titled "I've
15
Never Seen His Face." Defendants' copied elements of this song and similarly re-titled it as "Man
16
Behind the Mask." Mr. Cabell's musical contains a song titled "Time Enough for Love."
17
Defendants copied elements of this song and similarly re-tilted it "A Love We'll Never Live."
18
68.

The above allegations are illustrative examples of Defendants' copying of original

19
elements of Mr. Cabell's musical.
20
21

CAUSES OF ACTION

22

Claim 1
Copyright Infringement

23
24
25

69.

Mr. Cabell repeats and realleges the allegation set forth in paragraphs 1-68 above

as if fully set forth in this paragraph.

26
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70.

Mr. Cabell owns all right and title to the copyright interests in his 1996 musical

2
script and the 1998 audio performances of his musical.

Mr. Cabell owns United States

3
Copyright Registrations Nos. PA 2-113-089, PA 2-171-672, PA 2-2226-359, SR 389-305 and
4
PA 10-000-842 covering these works.
5
71.

Defendants have willfully and intentionally infringed Mr. Cabell’s copyright

6
interests in the 2005 book “Zorro” and the subsequent musical production also titled “Zorro.”
7
72.

Defendants’ copyright infringement has damaged Mr. Cabell in a sum not

8
presently known but believed to be significant.
9
73.

Mr. Cabell is entitled to preliminary and permanent injunctive relief, damages,

10
attorney fees and the destruction of Defendants’ infringing copies.
11
Claim 2
Declaration Judgment of Non-infringement

12
13

74.

Mr. Cabell repeats and re-alleges each of the allegations contained in paragraph 1

14 through 73 of this Complaint, as if fully set forth herein.
15

75.

A dispute has arisen between the parties, and an actual and justiciable controversy

16 exists, in that Defendants assert, and Mr. Cabell denies, that Mr. Cabell’s musical infringes ZPI’s
17 copyright and trademark interests.
18

76.

Mr. Cabell requests a judicial determination and declaration by this Court that his

19 musical does not infringe upon any copyright or trademark interest of ZPI.
20

77.

As Mr. Cabell has no other existing, speedy, adequate or proper remedy other

21 than a declaration of the parties’ rights as prayed for herein, Mr. Cabell requests a preliminary
22 and permanent injunction issue enjoining Defendants from making assertions that Mr. Cabell’s
23 Musical infringes upon any copyright, trademark, or other intellectual property right owned by
24 ZPI or any ZPI affiliate.
25
26

Claim 3
Cancellation of Federal Trademark Registration
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78.

Mr. Cabell repeats and re-alleges each of the allegations contained in paragraph 1

2
through 77 of this Complaint, as if fully set forth herein.
3
79.

The following federal trademark registrations were falsely and fraudulently

4
obtained by ZPI and/or Gertz: US. Reg. Nos. 1,524,207; 1,912,515; 1,731,743; 2,296,302;
5
2,239,219; and, 2.198,254.
6
80.

ZPI’s federal trademark registrations are used by ZPI as fraudulent and

7
inappropriate attempts to lengthen protection of works for which copyrights have already
8
expired.
9
81.

If ZPI is permitted to retain the registrations sought to be cancelled, and thereby,

10
the prima facie exclusive right to use in commerce the Zorro’s marks on items such as books,
11
films, plays and musicals, the purpose and policy of the Copyright Act will be thwarted and
12
frustrated.
13
82.

Mr. Cabell is, and will continue to be, damaged by ZPI’s trademark registrations.

83.

Mr. Cabell requests an Order from this Court cancelling U.S. Reg. Nos.

14
15
1,524,207; 1,912,515; 1,731,743; 2,296,302; 2,239,219; and 2,198,254.
16
Claim 4
Tortious Interference with Contract and Business Expectancy

17
18

84.

Mr. Cabell repeats and re-alleges each of the allegations contained in paragraph 1

19 through 83 of this Complaint, as if fully set forth herein.
20

85.

In New York, Mr. Cabell entered into an agreement Gallissas to produce or cause

21 to be produced Mr. Cabell’s Musical.
22

86.

Defendants were aware of Mr. Cabell’s contract with Gallissas to produce or

23 cause to be produced Mr. Cabell’s Musical “Z – The Musical of Zorro” as is evidence by the
24 communications from Gertz and ZPI to Gallissas.
25
26
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87.

The communications sent to Gallissas by Gertz and/or ZPI were neither accurate

2
nor justified in their factual statements. The communications were meant to intimidate and to
3
coerce or fraudulently induce Gallissas to license ZPI’s musical instead of Mr. Cabell’s.
4
88.

The communications of ZPI and/or Gertz with Gallissas constitute tortious

5
interference with a contractual relationship or business expectancy under California state law.
6
89.

As the direct and proximate result of Defendants’ tortious interference, Mr. Cabell

7
has suffered substantial financial damage.
8
Claim 5
Common Law Fraud

9
10

90.

Mr. Cabell repeats and re-alleges each of the allegations contained in paragraph 1

11 through 89 of this Complaint, as if fully set forth herein.
12

91.

The communications by ZPI and/or Gertz to Mr. Cabell’s customers, clients,

13 licensees and prospective business affiliates contained material, false statements of fact.
14

92.

At the time of the communications, ZPI and/or Gertz knew of the falsity of their

15 statements.
16

93.

ZPI and Gertz made the false, material statements with the intention that Mr.

17 Cabell’s customers, clients, licensees and prospective business affiliates would act on those
18 statements; namely, that they would cease doing business with Mr. Cabell and instead utilize
19 works owned by ZPI. In fact, upon information and belief, Mr. Cabell’s customers, clients,
20 licensees and prospective business affiliates have relied on the communications from ZPI and/or
21 Gertz, resulting in a diversion of business from Mr. Cabell to ZPI.
22

94.

As a direct and proximate result of the fraud committed ZPI and Gertz, Mr. Cabell

23 has suffered substantial financial damage.
24
25

Claim 6
Unfair Competition and Unfair Trade Practices in
Violation of California Business and Professions Code § 17200, et seq.

26
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95.

Mr. Cabell repeats and re-alleges each of the allegations contained in paragraph 1

2
through 94 of this Complaint, as if fully set forth herein.
3
96.

The communications by ZPI and Gertz to Mr. Cabell’s customers, clients,

4
licensees and prospective business affiliates are false, unfair and deceptive.
5
97.

The communications by ZPI and Gertz did (and do) occur in trade and commerce;

6
namely, Defendants’ false statements are made with the intent to divert trade and commerce
7
from Mr. Cabell to Defendants.
8
98.

The Defendants’ false claims to ownership of intellectual property related to

9
works that are clearly in the public domain negatively affect the public interest. Defendants’
10
false claims serve to chill creativity among those, including Mr. Cabell, desiring to build upon
11
the early Zorro works. As a result, the public is precluded from new works of art.
12
99.

As a direct and proximate result of Defendants’ actions, Mr. Cabell has suffered

13
significant injury to his business.
14
PRAYER FOR RELIEF
15
WHEREFORE, Plaintiff Robert W. Cabell prays that this Court grant him the following
16
relief:
17
A. A judgment against Defendants and their affiliates, agents, servants, employees,
18
representatives and all other persons, firms or corporations in active concert or participation with
19
them, preliminarily and permanently enjoining and restraining them from using, copying or
20
otherwise infringing Mr. Cabell’s works;
21
B. Ordering the seizure and destruction of any infringing materials;
22
C. Requiring Defendants to account for and pay to Mr. Cabell, all gains, profits, and
23
advantages derived from defendants’ infringement, or such alternative measure or measures of
24
damages, including statutory damages, as may be appropriate.
25
D. In view of Defendants’ willful infringement, treble or exemplary damages.
26
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E.

An award of attorney fees, interests and costs;

F.

A Declaratory Judgment that the musical, “Z – The Musical of Zorro,” does not

2
3
infringe any copyright, trademark, or other intellectual property right owned by Zorro
4
Productions, Inc. or John Gertz.
5
G. Preliminary and permanent injunctions enjoining defendants Zorro Productions, Inc.,
6
John Gertz, Stage Entertainment Licensed Productions and all those acting in concert with
7
Defendants from making claims that Robert W. Cabell’s musical, “Z – The Musical of Zorro,”
8
infringes any copyright or trademark interests of Zorro Productions, Inc. or John Gertz.
9
H. Judgment directing the United States Patent and Trademark Office to cancel U.S.
10
Trademark Registration Nos. 1,524,207; 1,912,515; 1,731,743; 2,296,302; 2,239,219; and,
11
2,198,254.
12
I.

Judgment in favor of Robert W. Cabell finding that Defendants have tortiously

13
interfered with Plaintiff’s business relationships and expectancies.
14
J.

Judgment in favor of Robert W. Cabell finding that Defendants have committed fraud

15
in their communications to Plaintiff and Plaintiff’s licensees.
16
K. Judgment in favor of Robert W. Cabell finding that Defendants are liable for unfair
17
competition and unfair trade practices in violation of California’s Business and Professions Code
18
§ 17200, et seq.
19
L.

Any and all ascertainable damages caused by the unlawful acts of Defendants, as to

20
be determined at trial.
21
22
23
24
25
26
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M. Reasonable attorney’s fees and costs of this action.
2
N. Any such other relief as the Court may deem proper.
3
DATED this 5th day of May, 2015.
4
5
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7
8
9
10
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12
13
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By /s/ Greg Latham
Greg Latham
Admitted Pro Hac Vice
Intellectual Property Consulting
201 St. Charles Avenue, Suite 2500
New Orleans, LA 70170
T:(504) 322-7166/F:(504) 322-7184
E-mail: glatham@iplawconsulting.com
and
By /s/ Adam Brett Wolf
Adam Brett Wolf (215914)
Tracey B. Cowan (250053)
Peiffer Rosca Wolf Abdulla Carr & Cane, APLC
4 Embarcadero Center
Suite 1400
San Francisco, CA 94111
T: (415) 766-3454/F: (415) 402-0058
E-Mail: awolf@prwlegal.com
E-mail: tcowan@prwlegal.com
ATTORNEYS FOR PLAINTIFF
ROBERT W. CABELL

18
19
20
21
22
23
24
25
26
SECOND AMENDED AND SUPPLEMENTAL
COMPLAINT -- 22