United States District Court, N.D. California, San Jose Division
ROBERT W. CABELL, Plaintiff,
ZORRO PRODUCTIONS INC., et al., Defendants.
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDATNS' MOTION TO DISMISS Re: Dkt. No. 120
J. DAVILA, United States District Judge
Robert W. Cabell (“Plaintiff”) brings this action
for copyright infringement and related claims against Zorro
Productions, Inc. (“ZPI”) and ZPI's owner
John Gertz (collectively, “Defendants”), in
connection with a musical Plaintiff created based on the
fictional character “Zorro.” Presently before the
court is Defendants' Motion to Dismiss Plaintiff's
Second Amended and Supplemental Complaint under Federal Rules
of Civil Procedure 12(b)(2), 12(b)(6) and forum non
conveniens. Dkt. No. 120.
Court has subject matter jurisdiction over this case pursuant
to 28 U.S.C. §§ 1331 and 1338. Having carefully
reviewed the pleadings and briefs submitted by the parties in
this case, Defendants' Motion to Dismiss will be GRANTED
IN PART and DENIED IN PART for the reasons discussed below.
following is an overview of the factual and procedural
background relevant to the instant motion, and is taken
primarily from Plaintiff's Second Amended and
Supplemental Complaint (“SAC”). Dkt. No. 119.
discussed in this court's previous Order Granting
Plaintiff's Motion for Leave to File a Second Amended
Complaint (Dkt. No. 118), the character “Zorro”
is a familiar one to most people. He is “well-known as
the masked outlaw who defends the public against tyrannical
officials and other villains.” SAC at 1-2.
“Zorro” is the secret identity of Don Diego de la
Vega, a Spanish nobleman, who transforms into the freedom
fighter by wearing a black cape or cloak, a black sombrero,
and a black mask that covers the top of his head from eye
level upwards. Id. at ¶ 8. And as a fictional
character, “Zorro” has been around for a while;
the first “Zorro” story was written in 1919 by
Johnston McCulley, and the first movie featuring the
character was made in 1920 by Douglas Fairbanks, Sr.
Id. at ¶¶ 7, 9. Based on this history,
Plaintiff alleges that any copyright interest in the works of
McCulley and Fairbanks expired in 1975 and 1976 respectively.
Id. at ¶¶ 10, 11.
1996, Plaintiff published a musical entitled “Z - The
Musical of Zorro” (“Z Musical” or the
“Musical”) based “expressly” on
McCulley's 1919 story and Fairbanks' 1920 movie.
Id. at ¶ 13. Zorro is portrayed in
Plaintiff's musical as “a masked avenger leading a
double life, donned in a black mask, black sombrero, black
cape, and with a sword and whip.” Id. at
¶ 14. The musical was initially released on audio
cassette and then CD format, and a stage production premiered
in Eugene, Oregon in 2000. Id. at ¶¶
19-20. Plaintiff has registered his original and revised
scripts and the audio versions with the U.S. Copyright
Office, and his copyright interest “extends only to the
original, novel elements of his work and do not include those
elements present in any Zorro works that were in the public
domain as of 1996.” Id. at ¶¶ 16-18.
ZPI is a California business corporation located in Berkeley,
California. Id. ¶ 2. Plaintiff alleges on
information and belief that Defendant Gertz owns, operates,
and has control over ZPI, and also resides in Berkeley,
California. Id. ¶ 3. Plaintiff is a resident of
King County, Washington. Id. ¶ 1.
contends that ZPI, despite knowing that any copyright
interest in Zorro expired, has for years falsely asserted
that it owns worldwide trademarks and copyrights in the name
and visual likeness of Zorro. Id. at ¶¶
21-22. To that end, Plaintiff asserts that ZPI obtained
several registered trademarks between 1987 and 1997
concerning the use of the word mark “ZORRO” in
story and comic books, television shows, videos featuring
music and entertainment, and theater productions.
Id. at ¶¶ 27-34. According to Plaintiff,
Defendants “fraudulently obtained these federal
trademark registrations as a means to improperly extend the
copyright protection that has expired for early Zorro
works.” Id. at ¶ 34. Plaintiff highlights
that ZPI was unsuccessful in its prior attempt to assert
federal copyright and trademark infringement claims
concerning Zorro. Id. at ¶¶ 25-27 (citing
Sony Pictures Ent., Inc. et. al. v. Fireworks Ent. Grp.,
Inc. et al, 137 F.Supp.2d 1177, 1185 (C.D. Cal. 2001)
and Sony Pictures Ent., Inc. et. al. v. Fireworks Ent.
Grp., Inc. et al, 156 F.Supp.2d 1148, 1162-1163 (C.D.
connection with his own work, Plaintiff asserts that his
script and audio performances were successful, and that Z
Musical was “poised to become a Broadway hit.”
Id. at ¶ 38. In 1996, Plaintiff even met with
Defendant Gertz about producing the Musical, during which
time Plaintiff states that he provided Gertz with a copy of
the script. Id. ¶ 37. However, the
conversations ultimately broke down, at which point Plaintiff
alleges ZPI began, for the first time, aggressively asserting
that Plaintiff's script infringed ZPI's copyrights
and trademarks, and insisting that Plaintiff acquire a
license from ZPI to produce it. Id.
consultation with legal counsel, Plaintiff proceeded with the
commercial release of Z Musical without a license from
Defendants. Id. By 2001, he had retained well-known
choreographer and producer Wayne Cilento in anticipation of a
Broadway production, and engaged the William Morris agency to
represent his interests in connection the Musical.
Id. at ¶ 39. However, soon thereafter,
Plaintiff alleges that Mr. Cilento and the William Morris
agency were approached by Defendants and told that any
performance of Plaintiff's musical would require licenses
from Defendants, threatening that any unauthorized production
would result in litigation. Id. at ¶ 40. As a
result of this conduct, Mr. Cilento and the William Morris
agency ceased work on Plaintiff's behalf and Z Musical
did not appear on Broadway. Id. at ¶ 41. After
the Musical was commercially released, Plaintiff alleges that
Defendants also harassed and threatened litigation against
other vendor's of his work, and actively discouraged
third parties from producing the musical in the United
States, London, Brazil, Japan, Germany and Belgium.
Id. at ¶¶ 42, 45.
response to Defendants alleged interference and threats of
litigation, in 2002 Plaintiff filed a Petition for
Cancellation of ZPI's registered trademarks in the United
States Patent and Trademark Office. Id. at
¶¶ 35-36, 43. However, in 2004 Plaintiff
voluntarily withdrew the Petition without prejudice as part
of a “walk-away agreement” negotiated by Sony
Pictures out of concern for the dispute's impact on the
release of its upcoming film, “Legend of Zorro.”
Id. at ¶ 36. As part of the deal, Plaintiff
agreed to withdraw his cancellation petition, and ZPI agreed
not to challenge Plaintiff's Zorro-related copyrights and
early 2013, Plaintiff - through his agent, Gallissas
Theaterverlag und Mediaagentur GmbH (“Gallissas”)
- licensed Z Musical to affiliates in Germany so that it
could be performed in Clingenberg and Villa Fuchs, Germany.
Id. at 46. Soon thereafter, Plaintiff alleges ZPI
again began contacting his business affiliates - including
Gallissas and other licensees - making false statements
regarding ZPI's copyright and trademark rights in the
story and character of Zorro, and falsely claiming that
Plaintiff's musical violated such rights. Id. at
¶ 47. ZPI then filed lawsuits to that effect against the
Clingenberg and the Villa Fuchs productions in Germany,
neither of which were successful in enjoining the production
from going forward. Id. at ¶¶ 48, 50. When
the lawsuits failed, Plaintiff alleges that ZPI met with
Gallissas in San Francisco, California and
“induced” Gallissas to represent ZPI, in breach
of its contract with Plaintiff. Id. at ¶¶
of the disputes related to the German productions, Plaintiff
contends that Defendants further interfered with his
opportunities to license the production of his musical in the
United States on at least three occasions. Specifically,
Plaintiff alleges that in the fall of 2013, he was involved
in negotiations to have his musical presented at The 5th
Avenue Theatre in Seattle, Washington during the 2014 theatre
season. Id. at ¶ 57. Plaintiff claims that
Defendants intentionally and improperly interfered with the
success of the negotiations by threatening the theatre.
Id. Also in the fall of 2013, Plaintiff alleges that
he was involved in similar negotiations to have his musical
presented at The Philadelphia Shakespeare Theatre in
Philadelphia, Pennsylvania, as well as The American Theatre
Group in Rahway, New Jersey. Id. at ¶ 58.
Plaintiff alleges that the negotiations with both groups were
“discontinued” after the directors learned of
Defendants' intent to sue third-parties involved in the
production of the Musical, and Plaintiff lost both business
opportunities associated with The Philadelphia Shakespeare
Theatre and The American Theatre Group. Id.
Plaintiff alleges that ZPI financed and holds a copyright
interest in a 2005 book entitled “Zorro, ” which
was authored by Isabel Allende. Id. at ¶ 62.
Plaintiff claims that Allende's novel copies original
material from Plaintiff's script, which he alleges ZIP
had access to because Plaintiff had provided Gertz with
copies of the script during their 1996 discussions regarding
potential collaborations. Id. at ¶¶ 61-62,
64-67. Soon after the release of Allende's novel,
Plaintiff alleges that ZPI authorized and was responsible for
the production of a Zorro musical based on the novel.
Id. at ¶¶ 63-64. Plaintiff contends that
the similarities between his script, Allende's novel, and
ZPI's musical based on the novel include the use and
emphasis on gypsies and flamenco dancing, as well as the fact
that both stories are set as prequels to McCulley's 1919
original. Id. at ¶¶ 60, 62-66. Plaintiff
also alleges that Defendants copied elements of certain songs
from his musical, retitled them, and included them in
ZIP's musical production. Id. at ¶ 67.
ZPI's musical premiered in 2008 and has been performed in
various United States jurisdictions including Atlanta,
Georgia and Salt Lake City, Utah. Id. at ¶ 63.
March 13, 2013, Plaintiff filed a Complaint against ZPI,
Gertz, and Stage Entertainment Licensed
Productions in the United States District Court for
the Western District of Washington. Dkt. No. 1. Plaintiff
filed a First Amended Complaint on April 8, 2013 (Dkt. No.
8), and Defendants moved to dismiss the FAC on May 16, 2013,
pursuant to Federal Rules of Civil Procedure 12(b)(2) and
12(b)(6), and under the doctrine of forum non conveniens.
Dkt. No. 20. After Plaintiff conducted early discovery on
personal jurisdiction, the district court in Washington
granted the 12(b)(2) motion and dismissed the action with
respect to ZPI and Gertz. Dkt. Nos. 71, 72. In response,
Plaintiff moved the court to reconsider the dismissal in
favor of transfer. Dkt. Nos. 73. The court did so, reinstated
the claims against ZPI and Gertz, and transferred the action
to this court. Dkt. No. 84.
April 14, 2015, after the case was transferred to this
district, Defendants again moved to dismiss on grounds of
forum non-conveniens and for failure to state a claim under
Rule 12(b)(6). Dkt. No. 101. Plaintiff then filed a Motion
for Leave to File Second Amended and Supplemental Complaint
(Dkt. No. 105), which the court granted on September 23,
2016. Dkt. No. 118. Accordingly, the court also denied
without prejudice Defendants' first Motion to Dismiss.
September 26, 2016, Plaintiff filed his SAC, asserting the
following claims: (1) copyright infringement, (2) declaratory
judgment of non-infringement, (3) cancellation of federal
trademark registration; (4) tortious interference with
contract and business expectancy; (5) common law fraud; and
(6) unfair competition and unfair trade practices in
violation of California Business and Professions Code §
17200. SAC at 16-20. Plaintiff also seeks a preliminary and
permanent injunction against Defendants prohibiting them from
making claims that Plaintiff's musical infringes upon any
of Defendants' intellectual property rights. Id.
at 20, ¶ G. On October 14, 2016, Defendants moved to
dismiss the SAC under Federal Rules of Civil Procedure
12(b)(1) and 12(b)(6) and on grounds of forum non-conveniens.
Dkt. No. 120 (“Mot.”).
Rule of Civil Procedure 8(a) requires a plaintiff to plead
each claim with sufficient specificity to “give the
defendant fair notice of what the… claim is and the
grounds upon which it rests.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007). Although particular
detail is not generally necessary, the factual allegations
“must be enough to raise a right to relief above the
speculative level” such that the claim “is
plausible on its face.” Id. at 556-57. A
complaint which falls short of the Rule 8(a) standard may be
dismissed if it fails to state a claim upon which relief can
be granted. Fed.R.Civ.P. 12(b)(6). Dismissal of a claim under
Rule 12(b)(6) may be based on a “lack of a cognizable
legal theory or the absence of sufficient facts alleged under
a cognizable legal theory.” Balistreri v. Pacifica
Police Dep't, 901 F.2d 696, 699 (9th Cir. 1988);
see Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d
1097, 1104 (9th Cir. 2008).
motion to dismiss stage, the court must read and construe the
complaint in the light most favorable to the non-moving
party. Cahill v. Liberty Mut. Ins. Co., 80 F.3d 336,
337-38 (9th Cir. 1996). The court must accept as true all
“well-pleaded factual allegations.” Ashcroft
v. Iqbal, 556 U.S. 662, 664 (2009). However,
“courts are not bound to accept as true a legal
conclusion couched as a factual allegation.”
Twombly, 550 U.S. at 555. “In all cases,
evaluating a complaint's plausibility is a
context-specific endeavor that requires courts to draw on ...
judicial experience and common sense.” Levitt v.
Yelp! Inc., 765 F.3d 1123, 1135 (9th Cir. 2014) (quoting
Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011)).
deciding whether to grant a motion to dismiss, the court
generally “may not consider any material beyond the
pleadings.” Hal Roach Studios, Inc. v. Richard
Feiner & Co., 896 F.2d 1542, 1555 n. 19 (9th Cir.
1990). However, the court may consider material submitted as
part of the complaint or relied upon in the complaint, and
may also consider material subject to judicial notice.
See Lee v. City of Los Angeles, 250 F.3d 668, 688-89
(9th Cir. 2001). In the event that a motion to dismiss is
granted, “leave to amend should be granted
‘unless the court determines that the allegation of
other facts consistent with the challenged pleading could not
possibly cure the deficiency.'” DeSoto v.
Yellow Freight Sys., Inc., 957 F.2d 655, 658 (9th Cir.
1992) (quoting Schreiber Distrib. Co. v. Serv-Well
Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986)).
12(b)(1) motion challenges subject matter jurisdiction and
may be either facial or factual. Wolfe v. Strankman,
392 F.3d 358, 362 (9th Cir. 2004). A facial 12(b)(1) motion
involves an inquiry confined to the allegations in the
complaint, whereas a factual 12(b)(1) motion permits the
court to look beyond the complaint to extrinsic evidence.
Id. When a defendant makes a facial challenge, all
material allegations in the complaint are assumed true, and
the court must determine whether lack of federal jurisdiction
appears from the face of the complaint itself. Thornhill
Publ'g Co. v. General Tel. Elec., 594 F.2d 730, 733
(9th Cir. 1979).