Farmers Branch link in battle over 'Eleanor' name Movie producer's widow files suit alleging improper use of legendary Ford Mustang's nickname David Giddens - Staff Writer What's in a nickname? According to the widow of cult-movie producer H.R. "Toby" Halicki, the nickname Eleanor -- at least as applied to the legendary Ford Mustang -- could mean millions of dollars in copyright, trademark and licensing fees. Denice Halicki, whose late husband produced, directed and starred in the original 1974 movie version of "Gone in 60 Seconds," has filed a trademark and copyright infringement lawsuit against racing and muscle-car design legend Carroll Shelby and the parent company of Farmers Branch-based Unique Performance, Unique Motorcars Inc. The suit, filed Oct. 25 in a California U.S. District Court, alleges Shelby and Unique Performance have improperly used the nickname "Eleanor" in marketing retrofitted, high-horsepower 1965-67 Ford Mustangs, which command between $99,000 to $198,000 each, depending on options (see "Money from Mustangs," Dallas Business Journal, Oct. 22-28). Trademark debate Halicki's attorney, Jeffrey Kravitz, says his client owns a "common-law trademark applied to use" for the name "Eleanor." However, according to a statement issued Nov. 1 by Shelby in response to the suit, he owns the trademark to "Eleanor," and it is filed with the U.S. Patent and Trademark Office and applies to automobiles, engines for automobiles and structural parts for automobiles -- even "Eleanor" die-cast-metal model cars. The dispute stems from the 2000 movie remake of "Gone in 60 Seconds," a car-chase extravaganza based on the original 1974 release that starred both Halickis. In the original film, which reportedly earned $40 million during its initial release, "Eleanor" appears as a 1971 fastback Mustang targeted by a gang of car thieves, leading police in a chase that lasts 40 minutes on screen. The same car also appeared as "Eleanor" in two of Toby Halicki's subsequent films, "The Junkman" and "Deadline Auto Theft," and was due to appear in "Gone in 60 Seconds 2." A self-described "king of crashes," Toby Halicki was killed in 1989 during the filming of "Gone in 60 Seconds 2" when he was crushed by a falling utility pole. Denice Halicki subsequently licensed the rights to the original movie to Touchstone Pictures, Kravitz said, while retaining the rights to the character "Eleanor" and "Gone in 60 Seconds," as well obtaining the role of executive producer of the remade film. That 2000 release, which starred Nicholas Cage, Robert Duvall and Angelina Jolie, also featured a gang of car thieves out to steal some four dozen, high-end vehicles, including a 1967 Ford Mustang Shelby Cobra that is given the code name "Eleanor." It was the remade version that inspired Doug Hasty to begin restoring a 1967 Mustang GT 500 three years ago, which eventually caught the attention of Shelby and led to the formation of Unique Performance, a custom muscle-car builder which Hasty runs with two partners. The company, which operates under a licensing agreement with Shelby, expects to earn between $8 million and $10 million in revenue this year. Hasty said he has seen the lawsuit and that it is being reviewed by his attorneys, as well as those representing Carroll Shelby Licensing Inc. and called it a "malicious attack," but declined further comment. In the statement released by Shelby, he acknowledged that Unique Performance has referenced the movie title "Gone in 60 Seconds" in some of its advertising for the Shelby GT-500E, but that the reference was in a "historical context" and that the advertising noted that the car is "similar" to the one seen in the movie. Shelby's statement also said the Shelby car design and name trademarks used in the most recent version of "Gone in 60 Seconds" were never authorized by him, and that he intends to pursue a counter-suit against Denice Halicki, calling her lawsuit "frivolous and malicious." Phone calls to Shelby's attorneys for comment were not returned. Kravitz denied that the Mustang used in the latest movie is a Shelby version, adding that Shelby's and Unique Performance's marketing of their vehicle in conjunction with the movie is improper. "There aren't casual references to the movie -- it's all over the Internet, and he posed on the cover of Mustang Monthly under the title 'An Eleanor for the masses.' " He said Shelby and Halicki are acquainted with each other and have socialized during auto shows where Halicki's "Eleanor" has been on exhibit, and alleged that Shelby knew of Halicki's plans to expand the "Eleanor" name to other areas, such as motorcycles. Damages Halicki's suit does not list what amount of damages she is seeking, and Kravitz said that will be determined once the discovery process begins. "Part of what we're seeking is any damages to the iconic value of 'Eleanor' and her ability to license that name," Kravitz said, adding that Halicki has been trying to resolve her complaints with Shelby since February. "Frankly, we were interested in making this a win-win situation for both parties," Kravitz said, "but the other side was not willing to come to the table. As long as he's marketing these cars as 'Eleanors,' he's taking Ms. Halicki's intellectual property." dgiddens@bizjournals.com © 2004 American City Business Journals Inc. http://dallas.bizjournals.com/dallas/stories/2004/11/08/story6.html
