Halicki Films, LLC. v. Carroll Shelby International, Inc.

I. Background

In 1974, H.B. “Toby” Halicki directed, produced, acted in, and marketed the original motion picture Gone in 60 Seconds (the “Original GSS”). Toby Halicki registered a copyright for the Original GSS. The Original GSS featured “Eleanor,” a yellow 1971 Fastback Ford Mustang, customized to appear as 15312 HALICKI FILMS v. CARROLL SHELBY INT. a Mach 1 Fastback Mustang. Several years after Toby Hal- icki’s death, plaintiff Denice Halicki, Toby Halicki’s widow, obtained ownership of the 1971 Ford Fastback Mustang used to portray Eleanor and “all right, title and interest, including copyrights, of the film ‘Gone in 60 Seconds’ which were owned by [Toby Halicki] . . . .” See Halicki v. Carroll Shelby Int’l, Inc., No. CV-04-8813, 2005 WL 5253338, at *1 (C.D. Cal. Nov. 14, 2005). Halicki then began marketing the Origi- nal GSS on DVD and VHS. She set up a “Gone in 60 Sec- onds” website; sold “Gone in 60 Seconds” branded baseball caps; licensed the “Eleanor” name and likeness for a line of toy cars; and exhibited “Eleanor” from the Original GSS (the “Original Eleanor”) at car shows. Id.

On May 17, 1995, Halicki entered into an agreement (the “Agreement”) with…