Licensor of "Gone In 60 Seconds" Can Pursue Copyright and Trademark Claims for Retained Rights in the Character "Eleanor" the Car

Case: Halicki Films v. Sanderson Sales and Marketing, Carroll Shelby Int'l, 9th Cir. Nos. 06-55806, 06-55807 (11/12/08)

The One Sentence Summary: The licensor of remake rights for the movie "Gone in 60 Seconds" retained sufficient rights in the Eleanor car character to pursue trademark and copyright infringement claims on remand.



Ninth Circuit Holdings:

• The district court erred in interpreting a license agreement concerning the Eleanor car in a remake of the movie "Gone in Sixty Seconds." The license agreement and the extrinsic evidence supported plaintiff's position that she had retained the rights to market both the original and the remake Eleanor cars.
• On remand, the district court should consider whether the character Eleanor was sufficiently developed to qualify for copyright protection.
• Plaintiff potentially had standing to sue for trademark infringement (1) as the owner of the unregistered Eleanor mark and as the owner of merchandising rights in Remake Eleanor.
• With respect to the Gone in 60 Seconds mark, the district court erred in concluding that plaintiff's registered marks in toy cars were insufficient to create standing for an infringement claim regarding actual cars. "To establish standing under the Lanham Act, a plaintiff need only demonstrate that she is the registered owner of a mark for any class of products, even one that does not compete directly with the defendant’s products. See 15 U.S.C. § 1114." Non-competitive goods may still create confusion about the source or sponsorship of goods, and proximity or relatedness of goods is only one of eight factors in the likelihood of confusion analysis.
• Plaintiff had standing to seek cancellation of the "Eleanor" mark because she retained merchandising rights to Remake Eleanor and use of the mark "Eleanor" could create confusion.
• Plaintiff waived her challenge to summary judgment on her state law claims by inadequately briefing them in her appeal.
• The district court did not err in refusing to award attorneys' fees under 17 U.S.C. § 505 of the Copyright Act or 15 U.SC. § 1117(a) of the Lanham Act.