Gone in 60 seconds? Not so fast, says the Ninth Circuit

United States of America

In Halicki Films LLC v Sanderson Sales and Marketing (Cases 06-55806 and 06-55807, November 12 2008), the US Court of Appeals for the Ninth Circuit has reversed and remanded to the district court, giving new life to the plaintiff's claims. 

The case revolved around two trademarks stemming from the action movie Gone in 60 Seconds, which was first released in 1974 and remade in 2000. Both incarnations are action thrillers that follow the story of a car theft ring as it attempts to steal numerous cars for an important client. The ring gives each car model a code name and refers to cars only by those names in order to avoid tipping off the police. In both the original and the remake, the prize car is named Eleanor. For the original movie, Eleanor was a 1971 Ford Mustang, and in the remake it was a 1967 Shelby GT-500. In each, Eleanor was the star of the film because it was the car that the ring had the most trouble stealing and eventually the last car stolen in the film.
The original film was written and starred in by HB Halicki. After his death, his widow, Denice Halicki, continued to market the film and related products. She went to car shows with the original Eleanor car, licensed the name Eleanor for a line of toy cars and sold hats branded with 'Gone in 60 Seconds'. However, she was not the only one trying to make money from the film. After the remake gave attention to the Shelby GT-500, the Carroll Hall Shelby Trust registered the mark ELEANOR for automobiles and structural parts of automobiles. The Shelby Trust used the registration to license Unique Motorcars Inc to produce vehicles that resembled the Shelby GT-500 under the name Eleanor and with references to the Gone in 60 Seconds film.
While Halicki never registered the mark ELEANOR (even though she was licensing others to use the mark), she registered the mark GONE IN 60 SECONDS for baseball hats. She then brought suit against the Shelby Trust for its use of the marks ELEANOR and GONE IN 60 SECONDS. The suit alleged a variety of claims, including trademark infringement, copyright infringement and unfair competition. 
The US District Court for the Central District of California found that Halicki did not have standing to challenge either of the marks. With regard to the ELEANOR mark, the court held that because Halicki was not the registered owner of the mark, she did not have standing to sue for infringement. With regard to the GONE IN 60 SECONDS mark, the court held that because Halicki’s registration for the mark was in a different class than the Shelby Trust’s use (Halicki’s registration was for toy cars and apparel, while the Shelby Trust’s use was in connection with automobiles and automobile parts), Halicki had no standing to sue for infringement.
The Ninth Circuit reversed and remanded the case. Reviewing the standing requirements in 15 USC § 1114(1), the court stated that there are three bases for a plaintiff to have standing to sue for trademark infringement under the Lanham Act, and only one is necessary. The plaintiff must show that it is:

  • the owner of a federal mark registration;
  • the owner of an unregistered mark; or
  • a non-owner with a “cognizable interest in the allegedly infringed trademark”.
The district court’s opinion did not take these three bases into account. For both ELEANOR and GONE IN 60 SECONDS, the district court eliminated certain standing options and added additional requirements. It was these deviations that the Ninth Circuit highlighted in reversing the district court’s ruling.
First, the district court rejected Halicki’s standing claims on the grounds that she was not the registered owner of the trademark ELEANOR, while the Shelby Trust was a registered owner of the ELEANOR mark for automobiles. However, the Ninth Circuit held that being the owner of a registered mark is not a requirement for standing - instead, it is one of three ways that a plaintiff can obtain standing. By not analyzing Halicki’s claim to standing with respect to the other two bases, the court incorrectly rejected her claim to standing. In this case, Halicki claimed standing through both of those bases. First, she claimed that she had rights as the owner of the unregistered mark ELEANOR through her prior use of the mark. The Ninth Circuit stated that if she could prove such use, she would have standing. The court stated that “ownership of an unregistered trademark, like ownership of a registered mark, is sufficient to establish standing under the Lanham Act”.
Halicki also asserted that she had standing through the third basis - her commercial interest in the allegedly infringed trademark. The Ninth Circuit did not look to Halicki’s assertion of interest, but instructed the district court on remand - if they found that Halicki’s ownership in the unregistered mark insufficient for standing - to analyze Halicki’s claim to standing via her commercial interest in the mark.
The district court also rejected Halicki’s standing claims to challenge the GONE IN 60 SECONDS mark because, while Halicki owned the registered trademark GONE IN 60 SECONDS, the registration was in a different class than the Shelby Trust’s use. However, the Ninth Circuit held that while the district court did apply the first basis for Lanham Act standing, the court had added a non-existent requirement. The Ninth Circuit pointed out that:
to establish standing under the Lanham Act, a plaintiff need only demonstrate that he is the registered owner of a mark for any class of products, even one that does not compete directly with the defendant’s products.” 
While the registrations being in different classes was an element that applied to the merits of Halicki’s infringement claim, it was irrelevant when determining her standing. Because it was “undisputed” that Halicki was the registered owner of the GONE IN 60 SECONDS mark, she had standing under the Lanham Act to bring an infringement claim.
Howard Shire and Aaron Johnson, Kenyon & Kenyon LLP, New York

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