UPDATE: Who Owns That Car?
As previously noted, Denice Halicki filed an appeal before the Ninth Circuit U.S. Court of Appeals in her copyright dispute with the Shelby Trust. This dispute stems from a number of films made by Mrs. Halicki’s now-deceased husband, H.B. “Toby” Halicki that featured a black-and-yellow 1971 Ford Mustang code-named “Eleanor,” and the 2000 remake of “Gone in 60 Seconds” where the code name “Eleanor” was used to refer to a rare Shelby Mustang GT500 which was painted black and grey. Mrs. Halicki asserted that all these multiple cars referred to as “Eleanor” appearing across those movies comprised a single copyrightable character belonging to her.
The U.S. District Court for the Central District of California rejected the notion that the “Eleanor” vehicles could be granted “character” copyright protection, that the application of a human name to a car is not unique, that Eleanor is portrayed inconsistently across and within the films, and the asserted anthropomorphic characteristics are an invention of overzealous advocacy. The District Court further rejected that a settlement agreement prevented the Shelby Trust and its licensees from selling newly manufactured Shelby GT500s made under license to Carroll Shelby Licensing.
Recently the Ninth Circuit released its opinion with respect to Mrs. Halicki’s appeal, where the panel affirmed in part and reversed in part the District Court’s partial summary judgement and partial judgement after a bench trial. The Court of Appeals applied the Towle test to determine whether a character is entitled to copyright protection. The Towle test includes 3 factors:
The character must have “physical as well as conceptual qualities”
The character must be “sufficiently delineated to be recognizable as the same character whenever it appears” and display “consistent, identifiable character traits and attributes”
The character must be “especially distinctive” and contain “some unique elements of expression”
With respect to the different factors, the Court of Appeals found that (1) Eleanor lacks any conceptual qualities or anthropomorphic traits and never acts with agency or volition making Eleanor more akin to a prop than a character; (2) Eleanor lacks consistent traits, Eleanor’s physical appearance changes frequently throughout the various films, and that the proffered traits of “incurring severe damage,” being “hard to steal,” “good at evading the police,” and “surviving spectacular jumps,” were more readily attributable to the films’ protagonists; and (3) Eleanor is not especially distinctive, and nothing distinguishes Eleanor from any number of sports cars appearing in car-centric action films. Based on the factors, the Court of Appeals affirmed the judgement of the District Court that Eleanor is not entitled to character copyright protection.
With respect to the settlement agreement issue where Mrs. Halicki asserted that by licensing the GT-500CR, Shelby violated the parties’ settlement agreement, the Court of Appeals reviewed the question de novo and determined that California contract law controls in this case. The question was whether the settlement agreement prohibits Shelby from manufacturing or licensing cars copying (1) any of Eleanor’s distinctive features or (2) only Eleanor’s distinctive hood and inset lights. Both the Court of Appeals and the District Court agreed that the latter interpretation is correct.
The final issue decided by the Court of Appeals was the denial by the District Court of Shelby’s request for declaratory relief that the GT-500CR does not infringe any of Halicki’s rights. The Court of Appeals reviewed the denial de novo based on the test that declaratory relief is appropriate “(1) when the judgment will serve a useful purpose in clarifying and settling the legal relations in issue, and (2) when it will terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to the proceeding.” The Court of Appeals determined that the standard is met and that it would seem appropriate to declare that the GT-500CR does not infringe on Halicki’s copyright interests in Eleanor or contractual rights under the settlement agreement. However, because of the fact-intensive nature of declaratory relief, the case was remanded for full consideration by the District Court.
The Court of Appeals ruling provides some excellent guidance on when a character (even a vehicle) includes enough conceptual qualities to be considered a copyrightable character. Additionally, this case provides an excellent example of carefully preparing your licensing contracts to avoid narrow interpretations of what products are covered by the license. Accordingly, please feel free to reach out to attorneys at Renner Otto if you have any questions regarding copyright or licensing agreements.