Zorro, the Public Domain, and Derivative Works

The other day I was thinking about Zorro. Frankly, I love stories about Zorro and The Three Musketeers. I have only recently started playing Dungeons and Dragons, and when I created my character, I decided that he should be a fighter with high dexterity and speed. He also gets a cloak and a wide-brimmed hat. B-)

Anyway, I was thinking about the possibility of making a game based on Zorro. If Zorro was created recently, then the copyright might prevent me from making such a game, but if it was an old creation, then it might be in the public domain, which means that I would be perfectly within my rights to create a game based on the stories of the masked legend.

So I searched online and found out that the earliest copyright date for Zorro was 1919 for the pulp fiction serial called The Curse of Capistrano. Shortly afterwards, a movie adaptation followed, and the successful silent film The Mark of Zorro brought the hero to the big screen for the first time. That link will take you to a page that will let you watch the film as it is in the public domain.

So the original story and the first movie are definitely in the public domain. So, anyone has the right to make a movie, video game, or story based on Zorro, right? I would think so, but apparently I might be wrong. I found a post at derivative work which linked to a BBC News report that Sony sent a cease & desist letter to Sobini Films for trying to make a movie about Zorro. Sobini sued and I haven’t been able to find anything about it being resolved, although imdb.com does list Zorro 2110 as being in production.

And I would totally go see it, too. It would probably be like seeing the remake of Planet of the Apes for my birthday…shut up.

Anyway, the point is, how does Sony think that it has the right to tell someone NOT to make a film based on a public domain work? And where does Sobini Films get off talking as if it has aquired the rights to a book in the public domain? EVERYONE has aquired those rights. That’s what the public domain means!

But is Zorro in the public domain? Is there anything about Zorro that isn’t?

I’m not the only one who has these questions. You can’t just trust that Wikipedia has it right, but Zorro is on the list of public domain characters. But what exactly does it mean that Zorro is in the public domain, especially when Zorro Productions exists solely to license the trademarks and copyrights in the name, visual likeness, and character? How can this group exist when Zorro is in the public domain?

I learned that the character of Zorro may have been inspired by people or stories that ARE in the public domain. The Scarlet Pimpernel is an older story that pretty much set the stage for the super hero genre. The hero was a rich person hiding his true identity with disguises. Zorro, Batman, and a number of other characters, especially in comic books, would follow this archetype.

But history also has some influence on the character of Zorro. Joaquin Murrieta was considered the Robin Hood (another legendary hero in the public domain) of Mexico, and “the fictional character of Zorro was in part inspired by the stories about Murrieta”. Now, Murrieta the person may have existed, but the legend surrounding him may be more fiction than fact. His story resembles Batman’s in that circumstances in his life charge him with fighting back against what he considered evil and protecting others from those same evils.

Can I create a game based on the original story of Zorro which is known to be in the public domain? I obviously can’t make a game that was inspired with recently created films, but couldn’t I make my own interpretation of the original story? Couldn’t Sobini Films create a Zorro of the future without a Sony coming after them? Why does Sony believe it has this ability, or specifically why does Zorro Productions believe it has exclusive rights to Zorro?

I did find this San Francisco Business Times article detailing the family behind Zorro Productions. It seems that if they control nothing else other than the trademarks for merchandising, movies, books, games, slot machines, etc, then they pretty much control new creations based on Zorro, even if the copyright status of older works has expired. I had emailed the company, and President and CEO John Gertz responded to say that even if some works are public domain in the United States, the copyright may still be valid in other nations. Interestingly, I learned that a number of the trademarks for things such as video games, board games, role playing games, candy, and all sorts of merchandising were registered fairly recently. Some trademarks have expired, but others have apparently replaced them. Trademark searches are definitely not for those with weak hearts.

So, what’s the status of Zorro? Is he in the public domain, or does some company actually have the exclusive rights to him? It seems that an indie game developer might be taking on a lot of legal liability by trying to make a game based on Zorro. Besides the existing trademarks, the copyright status in the country of a customer might turn that sale into an infringement that costs you big. Unless you are prepared to discuss the matter with a lawyer (and pay for such a discussion!), it might be easier creating your own characters and building up a following. I imagine it might be possible to create your own version of a character like Zorro, but then you would have to step around trademarks that simply use the text “ZORRO” on a video game. Batman is pretty much a Zorro-like character, but he is different enough that he can become his own trademark. No one really owns Robin Hood as far as I know. And there are plenty of other famous legends that are probably not locked away from the public through exclusive rights such as copyright and trademark.

16 comments to Zorro, the Public Domain, and Derivative Works

  • Copyright and trademark are two different things, and I don’t pretend to understand all the laws concerning them.

    Sounds to me like you’d be on legally solid ground to reprint the earliest stories and the film and sell them. But creating original IP based on the character? Definitely thorny legal ground there.

  • barry

    Hi there -
    Theres a chap at indiegamer who is making a game based on Les Mis ( http://www.lesmisgame.com/faq.htm ) who discusses some similar issues. AFAIK, the book is public domain, but there are trademarks and copyrights relating to the musical (+movies?) which he has to be wary of. The fact there is no previous game helps.

    BigFish released a casual game based on the Wizard of Oz recently too.

    Personally, I don’t understand the rules, but if there were already movies and games based on some book, I’d be pretty scared of being hit by some law suit, even if the law is strictly speaking on my side :-( Life is tough enough already as an indie!

  • Coyote: why would “new IP”, if it was based on the original stories or not, be a legal issue? As long as it didn’t infringe A. existing trademarks – and I haven’t done any research on what trademarks they actually have but say you named it something like “Zorro Origins” or something completely different – it shouldn’t be covered by a trademark of just the Z in a specific style or Zorro… or B. their copyrighted stories – and not just a verbatim copying of it but any distinctive characteristics of their story that is outside of the work that’s in the public domain. That’s certainly tricky but shouldn’t be impossible.

    I’m not a freakin’ lawyer… I’m just curious.

    I would agree that it’s potentially dangerous as one minor resemblance to anything that is copyrighted or trademarked and you’d step into a serious gray area. So maybe that’s what you were saying.

    One thing I’d be very interested in working on in the future is hashing out a licensing arrangement with, say, a sci-fi author for possibly a lesser known work. You can probably get the licensing pretty inexpensively at least in terms of up front cost but it gives you a well defined universe and characters to play with. New IP always struggles to get name recognition and visibility… but the best part is that you’ve got a professional writer who’s essentially already written the script! :)

    Another option is looking into the comic’s scene as they can also provide the foundation for the artwork/art style as well. This is probably not going to be as cheap unless you can find a starving artist type who hasn’t really made it yet.

  • I wasn’t saying it was right or wrong or even if it was defendable or not. Just that it’s treacherous. You’d have to REALLY toe the line, potentially – and then still possibly defend yourself in court because a character is wearing a yellow shirt, and that same character wore a yellow shirt in the broadway musical from 1991-1993. Or that you have a character named Miguel in Zorro that was CLEARLY based on some dude named Miguel in the movie… (even though he’s only named in the credits).

    I just don’t trust lawyers NOT to do the wrong thing where money is involved.

  • Coyote: Actually, redistributing the original story and film would be fine, but only in nations in which the copyright has already expired. It is tough enough to find out the copyright status in the United States, especially since there is no requirement to register the works.

    I would love to make a game based on Zorro, even if it was limited to the original story, but then I wouldn’t know if I could redistribute it everywhere, and you can’t realistically limit where digital assets go in the world. Even if you could, the legal barrier to entry can be too high for an indie’s budget.

    While a completely new property would be hard to build up, you aren’t increasing the risk nearly as much for your business.

  • It’s not the copyright on Zorro that would get you in trouble, but rather the trademarks on Zorro. Even with the Copyright Term Extension Act (see http://en.wikipedia.org/wiki/Sonny_Bono_Copyright_Term_Extension_Act), I believe the copyright is expired. The act changed this to the life of the author, plus 70 years, so I’d have to do more research to make sure. However the trademarks for Zorro are held by Zorro Productions, Inc. (see http://en.wikipedia.org/wiki/Zorro_Productions,_Inc.), so creating new IP based on this Trademark will get you into trouble. I seem to remember a story some years back how Taco Bell was being sued for using a “Zorro like” character in one of their commercials, so it seems they are very much “protecting their IP”.

    Here’s an interesting article on one copyright/tradmark fight (see http://copyfight.corante.com/archives/026595.html). In one of the comments (namely http://www.corante.com/copyfight/archives/026595.html#15273), it mentions this:

    “The next comment has to do with the comment about the Conan Doyle estate. In point of fact, there is no trademark protection for Sherlock Holmes. That’s why the Doyle estate was so incensed at the use of Holmes on Star Trek: TNG, and the Holmes spoof Without a Clue. They didn’t like it, but there wasn’t anything they could do to stop it. Nor did they get any monetary compensation.”

    “The opposite is true for Edgar Rice Burroughs Tarzan stories. While most, if not all of them are in public domain, Burroughs had the foresight and business acumen to TRADEMARK the character name. Copyright and trademark and not even remotely similar, in terms of what they cover and how they do it. One of the most important superficial differences is that copyright expires, and trademarks live forever.”

  • Greg: You’re right, and I suppose I didn’t emphasize it as much as I could have, but the main barrier is trademark. Technically a game could be made based off of the original story, but as I understand it, the original story did not include a lot of description in terms of what Zorro looked like, nor did it feature a lot of the major characters that people would expect to see. It would be difficult to create a Zorro that would look like what people would expect Zorro to look like, and if he is too different, how well would a customer receive it?

    Still, even if you could avoid the issues with trademark, is there a way to absolutely KNOW that the copyright has expired in all of the countries you wish to sell the game?

    The main point is that it seems legally risky for an indie to try to use an existing work if you can’t know for certain that it is in the public domain AND has no trademarks associated with it. I am sure that a game could be made about the original story of Zorro, using a name other than the trademark, and using graphics that aren’t similar to any trademarks. It just seems like a lot more work for someone to go through than to just come up with an original character and story.

  • Best to talk to an IP lawyer… $200 – $300 is well worth avoiding a potential lawsuit in the future when attempting to create a game based off of “public domain” items.

  • [...] blackest night. cooool! [i am such a dork]) That said, there’s a discussion on the subject here: &nbsp Zorro, the Public Domain, and Derivative Works GBGames – Thoughts on Indie Game Developmen… I think Disney is in the clear if they keep within the bounds of the public domain material and [...]

  • Lenore

    Here’s an idea that might get you around the tight nooze of the copyright: make a game based on public domain legend Joaquin Murrieta.

    Not only does that piggy back your game to the Spielberg production and its pricey ad campaign, but it takes advantage of the notoriety his Zorro films has rekindled in the public’s imagination.

    You can’t argue in court against Golliath, even if you are right – and they know it!

    Lenore

  • You’re wrong about the copyrights regarding Zorro’s look and many of the classic characters.

    Most of that would be covered, Public Domain, by the excellent Mark Of Zorro movie from 1920. It’s got pretty much all of the setting, the characters, and the look of Zorro is pat down to the iconic all black outfit with the mask and characteristic hat.

    I’d say the only thing that’s holding you back is using the actual NAME Zorro. He can still be Don Diego De Lavega, could still be a nobleman fighting the oppressive Spanish Government, could still have his trusty mute servant Bernardo, could still be pretending to be a rich decadent nobleman by day, yet defender of the oppressed by night.

    So I ask you… WHAT is it that you are missing? ‘Cause I can’t find a god-damn thing except the actual name of Zorro.

    The one solution would then be to use the word of “the Fox”, or perhaps some native american word for Fox, indigenous to California. ( Kniy is one such word.)

    Hopefully this case here, the Dastar Corp vs. 20th Century Fox is of some even further help in this case:
    http://en.wikipedia.org/wiki/Dastar_v._Twentieth_Century_Fox

    “n the USA, the Supreme Court decision Dastar v. Twentieth Century Fox (2003) ruled that a public domain work doesn’t violate the trademark of the underlying work. The specific ruling was a narrow one that dealt with “reverse passing off”, rather than using a trademarked name. The ruling is generally believed to apply to using names as well, in which case it would indeed be legal to use a trademarked name on a public domain story, but no case that confirms this has reached the Supreme Court yet. “

  • Shiftyweb

    Hi GB

    Really interesting article. I was asking myself the exact same and was really surprised to find a long and detailed article on the subject.

    Do tou had any update since the last comment back in 2010 ?

  • Well, recently the Supreme Court has ruled that the public domain isn’t permanent and that Congress could remove a work from it at its whim, which sounds a bit dangerous to me.

  • That explains why the list of public domain characters doesn’t exist anymore …

    But what about the comment of Predabot ? Using a character looking ust like Zorro is ok if you don’t use the name/brand Zorro …

    It sounds to be the only “safe” solution.

  • Zorro

    Hehe, look at my name :)

    In any case, from what I understand, both the novel “The curse of Capistrano” and “The Mark of Zorro” 1920 movie are declared out of copyright. But they also both clearly use inside their fiction the name Zorro! So, that means the Zorro name is free to use as well.

    I also understand that Johnston McCulley sold to Mitchell Gertz the rights for production of the movies, not the books or other derivative art! MOVIES!!!

    Or is there anywhere available for all to see the original contract to say otherwise??

    So, I think (and Common Sense dictates, too :) ) anyone should be allowed to write a book or create a game about Zorro, using the name, altering the story etc. As long as it is not a movie and such producers don’t claim further rights on the character and the universe itself…

    In any case, personal opinion, I think it is plainly stupid to go into court for such things. Intellectual Property should naturally expire the moment the original author is no longer among the living, and all their works should automatically become public domain. Everybody should freely benefit from them. Then no confusions would ever arise and justice would be done!

    Z :)

  • jason

    okay i have a limited knowledge of public domain and trademark but my simple understanding is that zorro may be copyrighted. trademarks keep you from using like a name that is owned like captain marvel from dc cant be called captain marvel on the cover of a book but inside he can be because marvel owns the name.and the big boys have so much money they can make it a hassle to fight even if they are wrong.

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