Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Inga Lukauskiene, an Associated Partner, an Attorney-at-Law and a Patent Attorney in METIDA
The question about the possibility to use Zorro character in advertisement arose for California’s company Zorro Productions which applied to the court regarding company’s Cogedi International S.P.A., that produces refreshments, possible copyright infringement using a previously mentioned character. California’s company states that their rights were infringed in Cogedi’s TV and radio refreshments’ advertisements during which an actor was performing a well-known character created by writer Johnston McCulley in 1919. Other Zorro elements like a mask, a small sword and letter Z were also used in the advertisements.
Company Cogedi by replying in return has indicated that Zorro character and most stories about him had become a part of the public property of Italy. Court of Appeals in Rome agreed with these statements.
Assessing a possible protection of such characters, it is crucial to take into account several aspects: the right to the character as a whole and the right to a particular character’s visualization. Copyright and its protection in this case would be applied only to the particular character’s visualization. This implies that a certain character that is well-known and often mentioned in folklore can be used by various interested persons including trademark registrations, too.
Previously mentioned California’s company Zorro Productions has registered several trademarks containing Zorro element as Community trademarks to mark various goods and services:
Tadas Blinda, which is a Lithuanian character analogical to Zorro, has also been registered as a trademark for different classes of goods and services, e.g., ‘Tadas Blinda’s Inn’ or ‘The Newest Adventures of Tadas Blinda’.
This implies that exclusive rights of a character do not belong to any person, therefore, any interested person can use it for their own needs with a condition that this use will not infringe earlier copyright or the rights of an earlier trademark registered for identical or similar goods or services.