Federal Judge Dismisses Lawsuit against Shelby and Unique Performance

Denice Halicki Sues Carroll Shelby International, Inc. and Carroll Shelby for Alleged Violation of Her Rights to the Film "Gone in 60 Seconds'' and Its Feature Character "Eleanor''

LOS ANGELES--(BUSINESS WIRE)--Oct. 27, 2004--Denice Halicki filed suit in Los Angeles Federal Court on Monday, October 25, 2004 against Carroll Shelby International, Inc. (OTCBB:CSBI) and Carroll Shelby for copyright infringement and trademark infringement of Ms. Halicki's rights to the film "Gone in 60 Seconds" and its feature character, a 1971 Fastback Ford Mustang named "Eleanor". Plaintiff alleges that, without right or license, Defendants have been manufacturing, marketing and selling three motor vehicle versions of "Eleanor" as featured in "Gone in 60 Seconds", ranging in price from $90,000 to $150,000. Ms. Halicki is represented by Jeffrey S. Kravitz with the Los Angeles office of Lord, Bissell & Brook, LLP. Halicki vs. Carroll Shelby International, Inc., Case No. CV04-8813 SJO (PJWx).

Ms. Halicki seeks damages and punitive damages; and alleges unfair competition and intentional interference with prospective economic advantage, among other claims. Co-defendants in the case include: Carroll Shelby Licensing, Inc., Carroll Shelby Engineering, Inc., Carroll Shelby Motors, Inc., Carroll Shelby Distribution International, Inc., Carroll Hall Shelby Trust, Unique Motorcars, Inc., and Sanderson Sales & Marketing.

As alleged in the complaint, Denice Halicki is the widow of deceased movie and performance car personality H.B. "Toby" Halicki (Halicki). In 1974, Halicki wrote, produced, acted in, financed, directed and marketed the original film "Gone in 60 Seconds" and which starred a 1971 Fastback Mustang customized by Halicki to play "Eleanor," a 1973 Mach 1 Ford Mustang. "Eleanor" is a key part of the plot and is featured in a 40-minute chase scene widely praised by movie critics. An international box office success, "Gone in 60 Seconds" spawned "The Junkman" and "Deadline Auto Theft" which also feature "Eleanor."

Per the complaint, Halicki was killed on August 20, 1989 during a stunt sequence while filming "Gone in 60 Seconds 2" and which was to feature "Eleanor." In 1994, Ms. Halicki obtained all right, title and interest in the film "Gone in 60 Seconds" and "Eleanor." In 1995, she contracted to remake "Gone in 60 Seconds" and specifically retained her rights to the character "Eleanor" and received an executive producer credit. In 2000, Touchstone Pictures released the remake of "Gone in 60 Seconds" starring Nicholas Cage, Angelina Jolie and "Eleanor." Also in 2000, Ms. Halicki released the original "Gone in 60 Seconds" film and its sequels on DVD and VHS through her film and entertainment company, Halicki Films.

Toby and Denice Halicki, as described in the complaint, consistently maintained protection over the "Eleanor" character and marketed goods, including replicas of "Eleanor" and other "Eleanor"-branded merchandise. "Eleanor" was toured across the United States to promote the initial release of "Gone in 60 Seconds," and appeared at the first Long Beach Grand Prix. For four-months, "Eleanor" was featured as part of a Peterson Automotive Museum exhibit entitled "Great Cars of the Movies" and was one of the star attractions at the "California Classic Car Rally" and the "L.A. 2000 NASCAR Street Race." Carroll Shelby socialized with Denice Halicki at various car shows where she was exhibiting "Eleanor," and he was aware of Ms. Halicki's various activities to promote and market her legacy in "Eleanor," "Gone in 60 Seconds" and the other films.

In February 2004, Ms. Halicki alleges that she first became aware of the fact that Carroll Shelby and his co-Defendants were manufacturing and marketing unauthorized motor vehicles that are copies of "Eleanor" as featured in the "Gone in 60 Seconds" film, and were promoting the sale of three versions of "Eleanor" at prices ranging from $90,000 to $150,000. Ms. Halicki contacted Mr. Shelby to try and resolve the matter out of court, but he ignored her efforts.

"My late husband Toby Halicki made films about car thieves as a form of entertainment, not as a way of life," explained Denice Halicki. "His movies and "Eleanor" catapulted him to international fame and cult status as The Car Crash King. I was absolutely shocked to discover that someone who knows me would even dream of taking my intellectual property rights in 'Eleanor' and 'Gone in 60 Seconds,' but that's exactly what Carroll Shelby has done."

Added Ms. Halicki: "Carroll Shelby blatantly posed on the cover of Mustang Monthly, using the cachet and mystique of 'Eleanor' and 'Gone in 60 Seconds' to market and sell his cars, never once asking for my permission. Mr. Shelby should not be allowed to profit from his actions. I've filed this lawsuit to protect the integrity of Toby's legacy and to put a stop to his pirating of my intellectual property rights."

"Carroll Shelby has consciously engaged in a pattern of unfair and unlawful acts," stated Jeffrey S. Kravitz, "by misappropriating Denice Halicki's rights and property in 'Eleanor' and the 'Gone in 60 Seconds' film. Mr. Shelby's actions have clearly impacted Ms. Halicki's plans to expand her 'Eleanor' and 'Gone in 60 Seconds'-based business. We've filed this lawsuit against Carroll Shelby and his co-defendants to protect Ms. Halicki's intellectual property rights and to prevent the defendants from enriching themselves at her expense."

Editor's Note:
Plaintiff Denice Halicki is CEO of Halicki Films (www.gonein60seconds.com) and is based in Los Angeles, CA. She is represented by Jeffrey S. Kravitz with the Los Angeles office of Lord, Bissell & Brook, LLP (www.lordbissell.com); Tel: 213.485.1500.

Defendant Carroll Shelby's (www.carrollshelby.com) legal interests are represented by M. Neil Cummings of Los Angeles, CA; Tel. 310.914.1849.

 

Re: Denice Halicki Sues Carroll Shelby International, Inc.

Any thoughts???

Unique Performance makes the cars. There is obviously a licensing agreement between Unique and Carroll Shelby Licensing, Inc. that puts the Shelby name on the cars. Foose designed the "Eleanor" (Shelby GT 500) for the latest "Gone in 60 Seconds" movie. The Shelby name and GT500 is spread throughout the movie. Lots of entities involved. It should be interesting to follow.

 

Re: Eleanor Trademark

Eleanor

http://tess2.uspto.gov/bin/showfield?f=doc&state=5givr7.2.2
Word Mark ELEANOR
Goods and Services IC 028. US 022 023 038 050. G & S: toy model cars and toy model car kits. FIRST USE: 20010701. FIRST USE IN COMMERCE: 20010701
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78391782
Filing Date March 26, 2004
Current Filing Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) Denice Shakarian Halicki INDIVIDUAL UNITED STATES 16830 Ventura Boulevard Suite 300 Encino CALIFORNIA 91436
Attorney of Record Paul D. Supnik
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

http://tess2.uspto.gov/bin/showfield?f=doc&state=5givr7.2.4
Word Mark ELEANOR
Goods and Services IC 012. US 019 021 023 031 035 044. G & S: VEHICLES, NAMELY, AUTOMOBILES, ENGINES FOR AUTOMOBILES, AND STRUCTURAL PARTS FOR AUTOMOBILES. FIRST USE: 20030801. FIRST USE IN COMMERCE: 20030801
Mark Drawing Code (1) TYPED DRAWING
Serial Number 78159706
Filing Date August 30, 2002
Current Filing Basis 1A
Original Filing Basis 1B
Published for Opposition May 13, 2003
Registration Number 2837333
Registration Date April 27, 2004
Owner (REGISTRANT) Carroll Hall Shelby Trust, comprising Carroll Hall Shelby, a U.S. citizen TRUST TEXAS 11150 W. OLYMPIC BLVD., SUITE 1050 LOS ANGELES CALIFORNIA 900641817
Attorney of Record EDWARD A. SOKOLSKI
Type of Mark TRADEMARK
Register PRINCIPAL
Other Data The name in the mark does not identify a living individual.
Live/Dead Indicator LIVE

http://tess2.uspto.gov/bin/showfield?f=doc&state=5givr7.2.6
Word Mark ELEANOR
Goods and Services (ABANDONED) IC 012. US 019 021 023 031 035 044. G & S: AUTOMOBILES. FIRST USE: 20020801. FIRST USE IN COMMERCE: 20020801
Mark Drawing Code (1) TYPED DRAWING
Serial Number 78160266
Filing Date September 3, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) DOUGLAS S. HASTY INDIVIDUAL UNITED STATES 8925 STERLING STREETSUITE 150 IRVING TEXAS 75063
Attorney of Record JERRY L. JONES
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Abandonment Date February 17, 2003

http://tess2.uspto.gov/bin/showfield?f=doc&state=5givr7.2.7
Word Mark ELEANOR
Goods and Services IC 028. US 022 023 038 050. G & S: TOYS, NAMELY, DIE-CAST METAL MODEL CARS
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76317913
Filing Date September 28, 2001
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition October 8, 2002
Owner (APPLICANT) CARROLL HALL SHELBY TRUST, comprising Carroll Hall Shelby, a U.S. citizen REVOCABLE TRUST TEXAS 11150 W. OLYMPIC BLVD., SUITE 1050 LOS ANGELES CALIFORNIA 900641817
Attorney of Record EDWARD A SOKOLSKI
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

This is what is listed in the US Patent and Trademark Office. Not being a lawyer, I won't even come close to guessing about the legality of this information or any other parameters of this case...I'm just posting what is registered.

 

Re: Denice Halicki Sues Carroll Shelby International, Inc.

Unique Performance Responds to Egregious Allegations by Denise Halicki against Carroll Shelby Licensing
Publish Date : 11/2/2004 10:08:00 AM Source : Technology News Onlypunjab.com

The frivolous lawsuit filed by Ms. Denise Halicki on Monday, Oct. 25, 2004, in Los Angeles Federal Court against Carroll Shelby Licensing, Inc. (a wholly owned subsidiary of Carroll Shelby International, Inc., (OTCBB:CSBI)) and Unique Motorcars, the parent company for Unique Performance, is without merit. The unfounded claims of copyright and trademark infringement stem from Ms. Halicki's unauthorized representation of a 1967 Shelby G.T.500 car in the movie "Gone in 60 Seconds" that she co-produced during 2000.

Contrary to the egregious claims made by Ms. Halicki, Carroll Shelby Licensing owns the trademark for "Eleanor(R)" as well as the trademarks for "G.T.500," "G.T.350" and "G.T.500E." The company was granted Reg. trademark #2,837,333 by the United States Patent and Trademark Office for the name "Eleanor." This clearly grants rights to the name for Class 12 products, which include automobiles, engines for automobiles and structural parts for automobiles. Shelby also owns the trademark for "Eleanor" toys, namely die-cast metal model cars.

The "Eleanor" vehicle is currently marketed and sold by Shelby licensee Unique Motorcars as the Shelby G.T.500E. Shelby licenses the "Eleanor" and "G.T.500E" trademarks to Unique Motorcars.

With respect to the movie title "Gone in 60 Seconds," Unique Motorcars referenced the movie title in some of its advertising for the Shelby G.T.500E. However, this use was strictly in an historical context that noted that a car "similar to" the Shelby G.T.500 was seen in the movie.

Shelby's right to market and sell the vehicle is clear and such actions do not constitute infringement of any alleged common law trademark rights which Ms. Halicki may have to the "Eleanor" name in connection with the production or sale of the movie "Gone in 60 Seconds."

Shelby will vigorously pursue a counter-suit for trademark infringement and damages and considers Ms. Halicki's lawsuit frivolous and malicious. In the 1974 version of the film by the same name, Ms. Halicki's company used a 1971 Ford Mustang; in the remake co-produced by Ms. Halicki, a 1967 Shelby G.T.500 replaced the 1971 Ford Mustang. This car was referred to in the movie verbally and in writing numerous times as a "Shelby" and "G.T.500," both of which are protected trademarked names owned by Shelby Licensing.

M. Neil Cummings and Associates, PLC, of Los Angeles represents Carroll Shelby Licensing.

About Unique Performance

Unique Performance was founded to restore and build premium classic cars including the Shelby continuation cars for an exclusive clientele. Adept in all aspects of fabrication, restoration, racing preparation and development, the company's team has created trucks and automobiles for customers worldwide that have capture awards at prestigious auto shows and races. The Unique Performance team of craftsmen fulfills the dreams of discerning collectors and enthusiasts at a North Texas state-of-the-art facility. Additional information about Unique Performance, products and services is available at www.uniqueperformance.com .

 

Federal Judge Dismisses Lawsuit against Shelby and Unique Performance

DALLAS -- United States District Court Judge S. James Otero granted a Summary Judgment on November 15, 2005, bringing an end to the lawsuit filed by Denise Halicki and some of her business entities against Unique Motorcars, the parent company of Unique Performance, Carroll Shelby Licensing, Inc., a wholly owned subsidiary of Carroll Shelby International, Inc.

(Pink Sheets:CSBI) and Carroll Shelby. Unique Performance manufactures Shelby continuation G.T.500E and G.T.350SR cars at their state-of-the-art facility in North Texas.

"We're pleased that the court agreed that there was no merit to Ms. Halicki's claims," stated Douglas Hasty, President of Unique Performance. "Everyone on our team is satisfied with the outcome. We'll continue to build genuine Shelby automobiles, as we have for years, without having to divert our attention to the defense of Ms. Halicki's false accusations of wrongdoing."

The lawsuit claimed that Ms. Halicki, not Shelby, owned the trademark for "Eleanor(R)" as well as other trademarks. Judge Otero agreed that none of the claims made by Ms. Halicki against Unique Motorcars, or Shelby, including her claims of copyright and trademark infringement, were supported by the evidence. The Court also agreed that none of her legal theories were supportable and that she has no rights with respect to the automobiles built by Unique under license from Shelby, including the G.T.500E "Eleanor(R)" automobile.

"We feel that we have been vindicated by the court's decision and are glad to have this behind us," said Carroll Shelby, Chairman and Chief Executive Officer of Shelby Automobiles Inc.

Unique's trial attorney, Danny T. Morin, a partner at Parker Mills & Patel LLP, Los Angeles, Calif., was impressed with the depth of the analysis of Judge Otero's 28 page Order granting Unique Performance's Motion for Summary Judgment in its entirety.

"This is a perfect example of how well our court system can work if you are fortunate enough to have a thorough jurist, " added Mr. Morin. "The Court took the time to analyze and apply the law to the undisputed facts, saving untold hours and dollars on a matter that cried out for dismissal on a summary basis, without the need for trial."

"We never understood how or why Ms. Halicki thought she had legal claims against Shelby or Unique, and we're pleased that Judge Otero has put an end to this," said M. Neil Cummings, Counsel for Carroll Shelby and Carroll Shelby Licensing Inc.

About Carroll Shelby International, Inc. (Pink Sheets:CSBI)
Carroll Shelby International, Inc. is the parent company of Carroll Shelby Licensing and Shelby Automobiles. Carroll Shelby Licensing Inc., founded in 1988, is the exclusive holder of automotive manufacturer and entrepreneur Carroll Shelby's trademarks and vehicle design rights, which include some of the world's most famous muscle cars and high-performance vehicles. It also holds trademark rights for Shelby-branded apparel, accessories and collectibles. For additional information, call 310-914-1843 or visit www.carrollshelbyinternational.com or www.carrollshelby.com.

About Unique Performance, Inc.
Douglas Hasty, Chris Layne and Richard Kearby founded Unique Performance to create performance vehicles, including the Shelby continuation cars and limited edition American muscle cars designed by Chip Foose. Adept in all aspects of fabrication, restoration, racing preparation and development, the company's team has created award-winning vehicles for customers worldwide.

In 2004, the company founded Unique Performance Products, which offers high performance automotive parts for 1960s era muscle cars. Additional information about Unique Performance, products and services is available at www.uniqueperformance.com.
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