In a new precedential decision, the Ninth Circuit Court of Appeals held in Carroll Shelby Licensing, Inc. v. Halicki that “Eleanor,” a stable of Ford Mustangs that appears across four action films, is not a copyrightable character. This appeal was the latest proceeding in a long-running dispute between Denice Halicki, the widow of the director of “Gone in 60 Seconds” (the first film in which Eleanor appears) who sought copyright protection over Eleanor, and Carroll Shelby Licensing, the corporate entity that licenses the rights to produce various models of “GT500” Mustangs made famous by racing driver Carroll Shelby.
The dispute between Halicki and Shelby dates back to 2004, when Halicki first sued Shelby for copyright infringement, among other claims. Halicki owns the copyright to three films, “Gone in 60 Seconds” (1974), “The Junkman” (1982), and “Deadline Auto Theft” (1983), which feature Ford Mustangs referred to as “Eleanor.” Halicki also owns the merchandising rights to Eleanor as it appears in a 2000 remake of “Gone in 60 Seconds”. Following that remake, Halicki sued Shelby and a custom car shop for allegedly producing GT-500E Mustangs that allegedly copied Eleanor’s designs. In 2009, Halicki and Shelby entered into a settlement agreement. Soon after, however, Shelby licensed Classic Recreations to produce GT-500CR Mustangs, which Halicki considered a violation of the settlement agreement and told Classic Recreations as such. This time, Shelby sued, seeking declaratory judgment that the GT-500CR did not infringe Halicki’s rights. Halicki counterclaimed for copyright infringement. Both parties brought claims for breach of the settlement agreement.
The district court dismissed Halicki’s counterclaim of copyright infringement on summary judgment, finding that Eleanor was not entitled to character copyright protection. Later, after a bench trial, the district court denied Shelby’s request for declaratory relief and dismissed Halicki’s breach of contract claim.
The Ninth Circuit affirmed the district court’s dismissal of Halicki’s copyright and breach of contract claims, and it reversed and remanded the denial of Shelby’s request for declaratory relief.
On Halicki’s copyright claim, the court held that Eleanor failed all three prongs of the test it developed in DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015) to determine if a character is entitled to copyright protection.
First, Eleanor lacks any “conceptual qualities” like personality, agency, and emotion. Comparing Eleanor to other characters the court found copyrightable, it determined that Eleanor lacks the “anthropomorphic traits” that characters like Godzilla, Mickey Mouse, and even the Batmobile had since Eleanor “never acts with agency or volition” and “expresses no sentience, emotion, or personality.” The court specifically noted that the Batmobile was described as “loyal” to Batman, “an impatient steed” straining to “tear ... after the fleeing hoodlums,” and of “substantial intelligence,” going so far as to stop for passing children while driving itself to Batman’s aid. But Eleanor, the court found, “is more akin to a prop than a character” and is no different from any of the other cars that appeared in the four films.
Second, Eleanor lacks a core set of consistent traits across its appearances in the films. For example, the car appeared as different models of Mustang in different paint schemes and in varying levels of disrepair, sometimes such that the cars “are unrecognizable as Eleanor until introduced as Eleanor by the protagonists.” And other supposedly identifying traits Halicki pointed to, like “incurring severe damage,” being “hard to steal” and “good at evading police,” and “surviving spectacular jumps,” were inconsistent across the car’s appearances or contradicted outright across the films. As the court noted, “fewer than half of the Eleanors ever appeared damaged at all,” and many of the other traits “are more readily attributable to the films’ protagonists driving the cars, not to Eleanor.”
Finally, the court determined that Eleanor is not “especially distinctive” since it is indistinguishable from any other sports cars in car-centric action films. Thus, in contrast to more standout characters like the Batmobile, Godzilla, and James Bond that passed the Towle test, Eleanor was not entitled to copyright protection.
The court further affirmed the dismissal of Halicki’s breach of contract claim, holding that it did not violate the parties’ previous settlement agreement for Shelby to license custom car shops to produce variants of GT-500 Mustangs. Applying California contract law, the court interpreted the settlement agreement to prevent Shelby (or its licensees) from copying only Eleanor’s distinctive hood and headlight design, and not other features of GT-series Mustangs.
Last, the court reversed and remanded the district court’s denial of Shelby’s request for declaratory relief after reviewing the decision below de novo. It determined that declaratory relief would be appropriate here since it would clarify the legal relationship between the parties and provide certainty about the results of the proceedings. In particular, the court noted that a declaration would provide certainty given the long history of litigation between the parties.
This case is a direct contrast to Towle, where the Ninth Circuit determined that the Batmobile was protected by copyright law. Despite both the Batmobile and Eleanor being cars, the court determined that the Batmobile had enough identifiable qualities to be copyrightable, while Eleanor did not.
So, to ensure their characters are protected under copyright, creators can aim to develop characters that stay within the Ninth Circuit’s guardrails. The character should:
Creators should model their characters after the Batmobile, “which expressed personality and a demonstrated level of autonomy,” had a consistent appearance, and exhibited specific identifiable traits (i.e., its “bat-like appearance” and “jet engines and flame-shooting tubes”), rather than Eleanor, to avoid stalling out at the starting line of copyright protection.