Metropolitan News-Enterprise


Thursday, November 13, 2008


Page 3


Court: Widow of ‘Gone in 60 Seconds’ Star May Sue Over ‘Eleanor’ Replicas


By SHERRI M. OKAMOTO, Staff Writer


The Ninth U.S. Circuit Court of Appeals yesterday revived the copyright infringement claims by the widow of the original “Gone in 60 Seconds” star, H.B. “Toby” Halicki, over unauthorized replicas of the Ford Mustang known as “Eleanor” which appeared in the 2000 remake of the film.

Vacating the district court’s grant of summary judgment, the panel ruled that Denice Halicki had standing to pursue her copyright, trademark infringement, unfair competition, and declaratory relief claims against Carroll Shelby International Inc. and Unique Motorcars Inc.

The original 1974 version of “Gone in 60 Seconds” featured a yellow 1971 Fastback Ford Mustang, customized to appear as a Mach 1 Fastback Mustang, as Eleanor.

After Toby Halicki’s on-set death while filming a sequel, Denice Halicki obtained ownership of the 1971 Flashback Mustang used to portray Eleanor and all rights, title and interest, including copyrights, of the film owned by her late husband.

She later licensed the Eleanor name and likeness for a line of toy cars and exhibited the Flashback Mustang at car shows.

In 1995, Halicki sold the rights to produce a remake of “Gone in 60 Seconds” to Hollywood Pictures, but the agreement expressly provided that Halicki reserved the “right to manufacture, sell and distribute merchandise utilizing the car known as ‘Eleanor’ from the Original [film].”

The remake also featured a car named Eleanor which was customized to appear as a 1967 Shelby GT-500, a variant of the Ford Mustang developed by the Carroll Shelby company. Carroll Shelby subsequently applied for registration of the trademark “Eleanor” for automobiles, structural parts of automobiles, and model cars.

License Agreement

Carroll Shelby then entered into a license agreement with Unique Motorcars authorizing Unique Motorcars to use the trademarks “Shelby GT-500” and “Eleanor” in connection with the manufacture and sale of vehicles and merchandise relating to any 1960s Shelby automobiles, and Unique Motorcars began selling vehicles resembling Eleanor in the remake.

Halicki filed a complaint against Carroll Shelby and Unique Motorcars for creating unauthorized replicas of Eleanor, but U.S. District Judge S. James Otero of the Central District of California found that Halicki lacking standing to sue because she had assigned her rights to the remake Eleanor to Hollywood Pictures.

In his opinion for the appellate court, Senior Judge Roger J. Miner of the Second Circuit, sitting by designation, explained that the agreement between Halicki and Hollywood Pictures was reasonably susceptible to the interpretation that Halicki had reserved her rights to the remake Eleanor.

The use of the word “from” lent weight to Halicki’s proposed interpretation of the contract, Miner said. Citing Webster’s Third New International Directory, which defined “from” as “a function word to indicate the source or original or moving force of something: as…the source, cause, means, or ultimate agent of an action or condition,” Minor reasoned that the use of “from” indicated that “Eleanor” in a sequel or remake was still “Eleanor from the Original.”

Miner further reasoned that if the agreement meant to only refer to the original Eleanor, it would have granted a right to “continue to manufacture, sell, and distribute” merchandise depicting the character of Eleanor.

Noting other provisions of the contract specifically addressed Halicki’s merchandising rights for the original Eleanor, Miner concluded that the contested provision would be superfluous unless it was intended to reserve her rights to produce merchandise related to the remake Eleanor.

Conflicting Readings

But, Miner cautioned, the contract did not command such an interpretation. Because the contract was reasonably susceptible to conflicting readings Miner explained that extrinsic evidence could be examined to determine a definitive construction, and the trial court committed reversible error in failing to consider extrinsic evidence to aid in its interpretation of agreement.

In light of declarations from Halicki and Hollywood Pictures stating that the parties intended for the rights to the remake Eleanor to be reserved to Halicki, Miner said “the extrinsic evidence unequivocally supports Halicki’s interpretation…[that the contract] reserves to Halicki the rights to Remake Eleanor as well as Original Eleanor.”

On remand, Miner directed the trial court to conduct a fact-intensive inquiry into whether Eleanor is a character entitled to copyright protection, as Halicki argued, noting that the car displays consistent, widely identifiable traits and is especially distinctive, or “just a car,” as the defendants claimed.

The trial court was also directed to consider whether Halicki had established ownership of the “Eleanor” mark through prior use.

Judges Stephen Reinhardt and Marsha S. Berzon joined Miner in his opinion.

Jens B. Koepke and Timothy T. Coates of Greines, Martin, Stein & Richland LLP represented Halicki, who Koepke said was “very pleased” with the court’s ruling and was looking forward to “having a chance to present the case to a jury and show why the defendants sale of the knock-off Eleanor cars was a copyright and trademark violation that has damaged Ms. Halicki and the Eleanor name greatly.”

He claimed that the defendant had “sold hundreds if not more of these cars, grossing millions of dollars” from “hijacking” the Eleanor trademark and character.

Koepke also opined that the court, in dicta, had indicated that the Eleanor character was subject to copyright protection and that Halicki is the owner of the trademark.

Robert F. Helfing of Sedgwick, Detert, Moran, & Arnold LLP represented Carroll Shelby and Unique Motorcars. He could not be reached for comment.

The case is Halicki Films, LLC v. Sanderson Sales and Marketing, 06-55806 and 06-55807.


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