Clark Hill & Irwin IP Announce Federal Court Finding on Eleanor Car, Denice Halicki Owns the Copyrights and Trademarks to Gone in 60 Seconds Movie Trilogy and All Merchandising Rights to Eleanor Car as She Appears in the Remake
As the District Court itself previously noted, the Ninth Circuit has twice strongly suggested that the Remake Eleanor car character is protectible as a copyrighted character.
Jason Keener of Irwin IP LLP and David Brandon of Clark Hill LLP represent Denice Shakarian Halicki, Eleanor Licensing, LLC, and Gone in 60 Seconds Motorsports, LLC in a federal lawsuit (case number 8:20-CV-01344) in the Central District of California. After a bench trial that occurred in March of 2023, on October 31, 2023, the District Court issued its opinion rejecting all of the claims of the Carroll Shelby Parties which essentially argued that the Halicki Parties’ enforcement activities against owners, auction houses, and car manufacturers of unlicensed Eleanor replicas breached an earlier settlement agreement or otherwise constituted unfair competition, false designation of origin, or trade libel, and reinforced the Denice Halicki’s ownership and rights to control the intellectual property related to the Eleanor car from the Gone in 60 Seconds movie and franchise, including all merchandising rights.
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Eleanor Car Character and Denice Halicki (Photo: Business Wire)
The District Court had previously granted Denice Halicki partial summary judgment and dismissed Shelby’s claim that Denice Halicki breached any express term of their prior settlement agreement.
Moreover, while the Court also dismissed counterclaims the Halicki Parties asserted against the Shelby Parties, the Court expressly refused to find that the Shelby Parties proved that the unauthorized Remake Eleanor replicas labeled GT500E (built by Unique Motors) or the GT500CR (built by Classic Recreations) do not infringe on the Halicki Parties’ intellectual property rights.
The District Court also found that nothing in the 2009 settlement between the Halicki and Shelby Parties prevents Denice Halicki and her entities from pursuing their claims against others who sell or attempt to sell or re-sell unlicensed Eleanor replicas.
Just as Disney, Universal Studios, Warner Bros., and DC Comics aggressively fight and sue infringers who copy their merchandise, Denice Halicki similarly protects her intellectual Eleanor property rights with Cease-and-Desist demand letters manufacturers and sellers of unlicensed, unauthorized Eleanor replicas.
Denice Halicki and her entities have set up an “Eleanor License” for these owners of unlicensed, unauthorized Eleanor cars to obtain an “Official Eleanor Tribute Edition Certificate, VIN Plates and Emblems.” The marketplace reflects the value of having an officially licensed Eleanor, as official Eleanor Tributes have sold at Barrett Jackson Auctions, and Mecum Auctions for up to $553,000.
With each of the Shelby Parties’ claims dismissed by the District Court, Denice Halicki and her companies are pleased to once again have confirmed their right to enforce their intellectual property rights. Moreover, with judgment being entered, the Halicki Parties can now appeal to the Ninth Circuit the District Court’s earlier copyright ruling with respect to protection of the Eleanor car character independently as a copyrighted character. As the District Court itself previously noted, the Ninth Circuit has twice strongly suggested that the Remake Eleanor car character is protectible as a copyrighted character.
Denice Halicki has previously prevailed in published appellate opinions in both State and Federal appellate courts. In addition to other findings on behalf of Denice Halicki and her Eleanor car character, these opinions reconfirmed that she owns the intellectual property and is the legal owner of all the merchandising rights to the Eleanor car character from both the Original and Remake copyrighted “Gone in 60 Seconds” movies. Timothy T. Coates of Greines, Martin, Stein & Richland LLP represented Denice Halicki and her entities in both appeals:
- Halicki Films, LLC et al. v. Carroll Shelby International, Inc., et al. (9th Circuit 2008) 547 F.3d 1213; and
- Eleanor Licensing LLC et al. v. Classic Recreations LLC et al. (2018) 21 Cal.App.5th 599.
Both of these decisions remain undisturbed.
The Eleanor and Gone In 60 Seconds brands and franchise are strong and growing, with some of the world’s most devoted and loyal fans. The market itself clearly acknowledges the value of having an officially licensed Eleanor car. Denice Halicki has three Official Eleanor Licensee that restore, build and sell Official Eleanor cars: “Fusion Motors”, “Eleanor Garage” and “Brand New Eleanor”.
“I agreed to settle my 2004 and 2007 Federal lawsuits against Carroll Shelby, his entities, including his heirs for infringement of my Eleanor car character, as long as it was agreed, it was over in any way shape or form. Eleanor in both the Remake and Original are not GT500’s and never have been. Carroll Shelby had nothing to do with Gone in 60 Seconds or Eleanor car from the Remake. Any erroneous use of Shelby trademarks in the Remake was dismissed by Judge Otero in the original lawsuits, a decision that is still in force today and remains undisturbed. It never brings me joy to have to deal with infringement and or theft of my Eleanor car merchandise. I will continue bringing great movies and Eleanor car merchandise from my Gone in 60 Seconds and Eleanor franchise and brands, which was created by my late husband H.B. “Toby” Halicki. I do have to protect my rights from those that have no rights, infringers who sell counterfeit goods to the public. I never feel infringers love the franchise that they had nothing to do with whatsoever, I have experienced they just want to take from it. Gone in 60 Seconds and the Eleanor car character franchise, brands, fan loyalty, merchandise and goodwill have been going strong for over 49 years with the Original and 23 years with the Remake. The Eleanor car character’s demand and popularity are greater than ever.” Denice Halicki
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