Petition for Writ of Certiorari — Denice Shakarian Halicki, et al., Petitioners v. Carroll Shelby Licensing, Inc., et al.

Supreme Court briefOct 9, 2025

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No. 25In the

Supreme Court of the United States

DENICE SHAKARIAN HALICKI, ELEANOR

LICENSING, LLC, GONE IN 60 SECONDS

MOTORSPORTS, LLC,

Petitioners,

CARROLL SHELBY LICENSING, INC., CARROLL

HALL SHELBY TRUST, CLASSIC RECREATIONS,

LLC, JASON ENGEL, TONY ENGEL,

Respondents.

On Petition for a Writ of Certiorari to the

United States Court of A ppeals for the Ninth Circuit

PETITION FOR A WRIT OF CERTIORARI

David L. Brandon

Clark Hill LLP

555 Flower Street,

24th Floor

Los Angeles, CA 90071

Timothy T. Coates

Counsel of Record

Gary J. Wax

Stefan C. Love

Greines, Martin, Stein

& Richland LLP

6420 Wilshire Boulevard,

Suite 1100

Los Angeles, CA 90048

(310) 859-7811

tcoates@gmsr.com

Counsel for Petitioners

Denice Shakarian Halicki, et al.

120666

(800) 274-3321 • (800) 359-6859

QUESTION PRESENTED

In the published opinion below, the Ninth Circuit

affirmed summary judgment in favor of respondents on

petitioners’ copyright infringement claims. The Ninth

Circuit held that the car character Eleanor, a uniquely

customized Fastback Mustang that is the centerpiece of

the Gone In 60 Seconds film franchise, is not entitled to

among other claims, copyright infringement, based on

respondents’ producing and selling full-scale reproductions

of the Eleanor car character from the Gone in 60 Seconds

remake. The Ninth Circuit’s holding limits copyright

protection to characters that display “anthropomorphic

qualities,” such as “sentience”; possess consistent,

identifiable traits; and are “especially distinctive.”

The question presented by this petition is:

Is copyright protection for characters limited

to only those characters that meet the Ninth

Circuit’s three-element test? Or, as the Second,

Seventh, and Eleventh Circuits have held, does

it is distinctive from a generic stock character?

See Silverman v. CBS Inc., 870 F.2d 40, 49–50

(2d Cir. 1989); Gaiman v. McFarlane, 360 F.3d

644, 659–61 (7th Cir. 2004); Herzog v. Castle

Rock Ent., 193 F.3d 1241, 1258–59 (11th Cir.

1999).

PARTIES TO THE PROCEEDINGS

AND RULE 29.6 STATEMENT

The parties to the proceeding in the Court whose

judgment is sought to be reviewed are:

• Denice Shakarian Halicki, an individual,

defendant and counter-claimant in the district

court, appellant and cross-appellee below, and

petitioner here;

• Eleanor Licensing, LLC, a Delaware LLC,

defendant and counter-claimant in the district

court, appellant and cross-appellee below, and

petitioner here;

• Gone In 60 Second Motorsports, LLC, a

Delaware LLC, defendant and counterclaimant in the district court, appellant and

cross-appellee below, and petitioner here;

• Carroll Shelby Licensing, Inc., a California

corporation, plaintiff and counter-defendant in

the district court, appellee and cross-appellant

below, and respondent here;

• Carroll Hall Shelby Trust, plaintiff and

counter-defendant in the district court, appellee

and cross-appellant below, and respondent here;

• Classic Recreations, LLC, an Oklahoma LLC,

counter-defendant in the district court, appellee

below, and respondent here;

iii

• Jason Engel, an individual, counter-defendant

in the district court, appellee below, and

respondent here;

• Tony Engel, an individual, counter-defendant

in the district court, appellee below, and

respondent here;

There are no publicly held corporations involved in

this proceeding.

RELATED PROCEEDINGS

• United States District Court, Central District of

California, Case No. 8:20CV01344, Carroll Shelby

Licensing, Inc., et al. v. Denice Shakarian Halicki

et al., summary judgment entered on November 29,

2022, final judgment entered October 31, 2023.

• United States Court of Appeals, Ninth Circuit, Case

Nos. 23-3731 & 234008, Carroll Shelby Licensing, Inc.,

et al. v. Denice Shakarian Halicki et al., opinion and

judgment entered May 27, 2025.

TABLE OF CONTENTS

Page

QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . i

PARTIES TO THE PROCEEDINGS AND

RULE 29.6 STATEMENT . . . . . . . . . . . . . . . . . . . . . ii

RELATED PROCEEDINGS . . . . . . . . . . . . . . . . . . . . . iv

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . v

TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . . ix

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . x

OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

BASIS FOR JURISDICTION IN THIS COURT . . . . 1

CONSTITUTIONAL AND STATUTORY

PROVISIONS AT ISSUE . . . . . . . . . . . . . . . . . . . . . 1

STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . . 3

A. Background Of The Action. . . . . . . . . . . . . . . . . . 3

B. The Lawsuit. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

REASONS WHY CERTIORARI IS

WARRANTED . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

Table of Contents

Page

THE CHARACTER-COPYRIGHT TEST

APPLIED BY THE DECISION BELOW

CONTRADICTS THE ORIGINALITY

S TA N DA R D E S TA BL I S H E D B Y

THIS COURT’S DECISION IN FEIST

AND THE COPYRIGHT ACT . . . . . . . . . . . . . 12

A. The Constitution, the Copyright Act,

and this Court’s Feist decision establish

that originality is the touchstone of

B. T h e d e c i s i o n b e l o w — a n d t h e

Ninth Circuit’s Towle test that it

applies — abandons the pr inciple

that copyrightability depends on

originality . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

The history of the three-element

Towle test explains its dysfunction . . . 15

a. Warner Bros. denies character

copyrightability; Air Pirates

limits Warner Bros . . . . . . . . . . . . 16

b. Olson and Rice add further

complications . . . . . . . . . . . . . . . . . . 18

Halicki Films lumps these

cases together . . . . . . . . . . . . . . . . . 21

vii

Table of Contents

Page

d. Towle and Daniels formalize

this disparate language into a

three-part test . . . . . . . . . . . . . . . . 22

2. The decision below demonstrates

that the Ninth Circuit’s character

from the Constitution’s originality

principle . . . . . . . . . . . . . . . . . . . . . . . . . 23

a. The decision holds that copyright

protection of characters is

limited to those that possess

“anthropomorphic qualities” . . . . 24

b. The decision illustrates that

the requirement of possessing

“consistent, identifiable traits”

is arbitrary and contrary to

originality . . . . . . . . . . . . . . . . . . . . 29

The decision illustrates the arbitrary nature of the “especially

distinctive” requirement . . . . . . . . 31

II. REVIEW IS NECESSARY TO SETTLE

A LONGSTANDING CIRCUIT SPLIT

REGARDINGTHETESTFORWHETHER

A CHARACTER IS ENTITLED TO

viii

Table of Contents

Page

A. The courts agree that characters are

copyrightable but disagree over the

standard . . . . . . . . . . . . . . . . . . . . . . . . . . . . .33

B. The Second, Seventh, and Eleventh

Circuits hold that characters warrant

they are distinctive from mere stock

characters . . . . . . . . . . . . . . . . . . . . . . . . . . . 35

C. The Court should adopt the

distinctiveness test . . . . . . . . . . . . . . . . . . . . 37

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39

TABLE OF APPENDICES

Page

APPENDIX A — OPINION OF THE UNITED

STATES COURT OF APPEALS FOR THE

NINTH CIRCUIT, FILED MAY 27, 2025 . . . . . . . 1a

APPENDIX B — ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA,

FILED NOVEMBER 29, 2022 . . . . . . . . . . . . . . . . 21a

APPENDIX C — BENCH VERDICT OF THE

UNITED STATES DISTRICT COURT FOR

THE CENTRAL DISTRICT OF CALIFORNIA,

FILED OCTOBER 31, 2023 . . . . . . . . . . . . . . . . . . . 73a

APPENDIX D — JUDGMENT OF THE UNITED

STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA,

FILED OCTOBER 31, 2023 . . . . . . . . . . . . . . . . . . 141a

A PPEN DI X E — OR DER OF T H E

UNITED STATES COURT OF APPEALS

FOR T HE NIN T H CIRCU I T, FILED

JULY 11, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144a

TABLE OF CITED AUTHORITIES

Cases

Page

Andy Warhol Found. for the Visual Arts, Inc. v.

Goldsmith,

598 U.S. 508 (2023) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Carroll Shelby Licensing, Inc. v. Halicki,

138 F.4th 1178 (9th Cir. 2025) . . . . . . . . . . . . . . . . . . . 1

Carroll Shelby Licensing, Inc. v. Halicki,

643 F. Supp. 3d 1048 (C.D. Cal. 2022) . . . . . . . . . . . . . 1

Clancy v. Jack Ryan Enters., Ltd.,

No. ELH-17-3371, 2021 WL 488683

(D. Md. Feb. 10, 2021) . . . . . . . . . . . . . . . . . . . . . . . . . 34

Conan Props. Int’l LLC v. Sanchez,

No. 17-cv-162, 2018 WL 4522099

(E.D.N.Y. June 8, 2018) . . . . . . . . . . . . . . . . . . . . . . . . 34

Culver Franchising Sys., Inc. v. Steak N Shake Inc.,

No. 16 C 72, 2016 WL 4158957

(N.D. Ill. Aug. 5, 2016) . . . . . . . . . . . . . . . . . . . . . . . . 34

Daniels v. Walt Disney Co.,

958 F.3d 767 (9th Cir. 2020) . . . . . 17, 22, 23, 24, 30, 34

Darden v. Peters,

488 F.3d 277 (4th Cir. 2007) . . . . . . . . . . . . . . . . . . . . 20

Cited Authorities

Page

DC Comics v. Towle,

802 F.3d 1012 (9th Cir. 2015) . . . 7-10, 12, 15-16, 18-20,

. . . . . . . . . . . . . . . . . . . . . . . 22-24, 26-28, 32-34, 36, 38

Detective Comics v. Bruns Publ’ns,

111 F.2d 432 (2d Cir. 1940) . . . . . . . . . . . . . . . . . . . . . 35

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,

499 U.S. 340 (1991) . . . . . . . . . . . 9, 11-14, 16-17, 25, 28,

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33-35, 37-38

Gaiman v. McFarlane,

360 F.3d 644 (7th Cir. 2004) . . . . . . . . . . . . . . 17, 35, 36

Google LLC v. Oracle Am., Inc.,

593 U.S. 1 (2021) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37

Halicki Films, LLC v. Sanderson Sales & Mktg.,

547 F.3d 1213 (9th Cir. 2008) . . . . 5, 6, 9, 21, 22, 23, 32

Halicki v. Carroll Shelby Int’l,

No. CV 04-8813, 2009 WL 10669478

(C.D. Cal. Aug. 12, 2009) . . . . . . . . . . . . . . . . . . . . . 6, 8

Harper & Row Publishers, Inc. v. Nation Enters.,

471 U.S. 539 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Herzog v. Castle Rock Ent.,

193 F.3d 1241 (11th Cir. 1999) . . . . . . . . . . . . . . . . . . 36

xii

Cited Authorities

Page

JB Oxford & Co. v. First Tennessee Bank Nat. Ass’n,

427 F. Supp. 2d 784 (M.D. Tenn. 2006) . . . . . . . . . . . 17

Klinger v. Conan Doyle Estate, Ltd.,

755 F.3d 496 (7th Cir. 2014) . . . . . . . . . . . . . . . . . . . . 36

Metro-Goldwyn-Mayer, Inc. v.

Am. Honda Motor Co., Inc.,

900 F. Supp. 1287 (C.D. Cal. 1995) . . . . . . . . . . . . . . 17

Nichols v. Universal Pictures Corp.,

45 F.2d 119 (2d Cir. 1930) . . . . . . . . . . . . . . . . . . . 35, 36

Olson v. National Broadcasting Co.,

855 F.2d 1446 (9th Cir. 1988) . . . . . . . . . . . . . 18, 19, 21

Paul Morelli Design, Inc. v. Tiffany & Co.,

200 F. Supp. 2d 482 (E.D. Pa. 2002) . . . . . . . . . . . . . 20

Rice v. Fox Broadcasting Co.,

330 F.3d 1170 (9th Cir. 2003) . . . . . . . 17, 18, 19, 20, 21

Silverman v. CBS Inc.,

870 F.2d 40 (2d Cir. 1989) . . . . . . . . . . . . . . . . . . . . . . 36

Star Athletica, L.L.C. v. Varsity Brands, Inc.,

580 U.S. 405 (2017) . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Tanksley v. Daniels,

902 F.3d 165 (3d Cir. 2018) . . . . . . . . . . . . . . . . . . . . . 15

xiii

Cited Authorities

Page

Walt Disney Prods. v. Air Pirates,

581 F.2d 751 (9th Cir. 1978) . . . . . . . 7, 16, 17, 18, 19, 21

Warner Bros. Ent., Inc. v. X One X

Prods., 644 F.3d 584 (8th Cir. 2011) . . . . . . . . . . . . . 36

Warner Bros. Pictures v.

Columbia Broadcasting System,

216 F.2d 945 (9th Cir. 1954) . . . . . 16, 17, 18, 19, 21, 24, 33

Wozniak v. Warner Bros. Ent. Inc.,

726 F. Supp. 3d 213 (S.D.N.Y. 2024) . . . . . . . . . . . . . 34

United States Constitution

Article I, Section 8, Clause 8 . . . . . . . . . . . . . . . . . 1, 12, 13

Statutes

17 U.S.C.

§ 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

§ 102 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 13, 14, 33, 37

§ 106 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

xiv

Cited Authorities

Page

Other Authorities

Caitlin E. Oh, Inside Out, Upside Down: Circuit Court

Confusion Over Character Copyrightability,

72 Emory L. J. 629 (2023) . . . . . . . . . . . . . . . . . . 37, 38

Deadline: Auto Theft (H.B. Halicki Mercantile Co.,

1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

Gone in 60 Seconds (H.B. Halicki Mercantile Co.,

1974) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3, 4, 31

Gone in 60 Seconds (Touchstone Pictures, Jerry

Bruckheimer Films, 2000) . . . . . . . . . . . 3, 4, 25, 26, 31

Jane C. Ginsburg, Creation and Commercial Value:

90 Colum. L. Rev. 1865 (1990) . . . . . . . . . . . . . . . 14, 15

The Junkman (H.B. Halicki 1982) . . . . . . . . . . . . . . . . . . 3

Zahr K. Said, Fixing Copyright in Characters:

Literary Perspectives on a Legal Problem,

35 Cardozo L. Rev. 768 (2013) . . . . . . . . . . . . . . . . . . 37

OPINIONS BELOW

The district court’s November 29, 2022 order granting

summary judgment to the respondents is reported, Carroll

Shelby Licensing, Inc. v. Halicki, 643 F. Supp. 3d 1048

(C.D. Cal. 2022), and it is reproduced in the appendix to

this petition (“App.”) at App.21a–72a. The Ninth Circuit’s

May 27, 2025 opinion affirming the judgment is published,

Carroll Shelby Licensing, Inc. v. Halicki, 138 F.4th 1178

(9th Cir. 2025), and it is reproduced in the appendix to

this petition at App.1a–20a. The Ninth Circuit’s July 11,

2025 order denying petitioners’ request for rehearing is

not published, and it is reproduced in the appendix to this

petition at App.144a–145a.

BASIS FOR JURISDICTION IN THIS COURT

This Court has jurisdiction to review the Ninth

Circuit’s May 27, 2025 decision on writ of certiorari under

28 U.S.C. § 1254(1). The petition is timely because it is filed

within 90 days of the order denying rehearing, issued on

July 11, 2025.

CONSTITUTIONAL AND STATUTORY

PROVISIONS AT ISSUE

The U.S. Constitution, Article I, Section 8 reads:

The Congress shall have Power … To promote

the Progress of Science and useful Arts, by

securing for limited Times to Authors and

Inventors the exclusive Right to their respective

Writings and Discoveries[.]

Petitioners brought the underly ing copy right

infringement claims under the Copyright Act, 17 U.S.C.

§ 101 et seq. At issue in this petition, § 102 reads:

(a) Copyright protection subsists, in accordance

with this title, in original works of authorship

fixed in any tangible medium of expression,

now known or later developed, from which they

can be perceived, reproduced, or otherwise

communicated, either directly or with the aid

of a machine or device. Works of authorship

include the following categories:

(1) literary works;

(2) mu s i c a l w o rk s , i n c l u d i n g a ny

accompanying words;

(3) d r a m at ic work s , i nclud i ng a ny

accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual

works;

(7) sound recordings; and

(8) architectural works.

(b) In no case does copyright protection for

an original work of authorship extend to any

idea, procedure, process, system, method of

operation, concept, principle, or discovery,

regardless of the form in which it is described,

explained, illustrated, or embodied in such

work.

17 U.S.C. § 106 reads: “[T]he owner of copyright

under this title has the exclusive rights … (2) to prepare

derivative works based upon the copyrighted work.”

STATEMENT OF THE CASE

A. Background Of The Action.

“Starring ELEANOR.” That is the sole credit at

the beginning of the 1974 film Gone in 60 Seconds (H.B.

Halicki Mercantile Co., 1974) (Gone (1974)). Eleanor is a

car character—a customized Mustang with a distinctive

personality. Eleanor returns in three other films, including

the 2000 remake of the same title. See The Junkman

(H.B. Halicki 1982); Deadline: Auto Theft (H.B. Halicki

Mercantile Co., 1983); Gone in 60 Seconds (Touchstone

Pictures, Jerry Bruckheimer Films, 2000) (Gone (2000)).

The remake was a blockbuster, grossing $101 million in

the U.S. and $232 million worldwide. 4ER835.

As depicted in the remake, Eleanor is a 1967 Ford

Fastback Mustang bearing a custom combination of 12

distinctive features. 4ER840, 897–903. These features

physically distinguish “Remake Eleanor” from any other

Fastback Mustang. 4ER897–903; 11ER2784–90.

Eleanor also displays a unique personality. In the

remake, Nicolas Cage’s character, Memphis Raines,

spends most of the film trying to steal Eleanor. The other

characters refer to the “rough history” between Eleanor

and Raines. Gone (2000), at 0:47:20–0:47:40.1 Eleanor is

Raines’s “unicorn” and has eluded him time and again.

Id. During the climactic police chase, after Raines knocks

off Eleanor’s mirror, her engine dies, and she won’t start

again until he implores, “I need you, Eleanor, I need you

now, now.” Id. at 1:34:30–1:34:58. Eleanor and Raines

manage to outrun and escape the police with a spectacular

jump, using the bed of a tow truck as a ramp. Id. at

1:38:40–1:39:13.

H.B. “Toby” Halicki produced, directed, and starred

in the original 1974 Gone in 60 Seconds, and made the two

subsequent films featuring Eleanor. 1ER9. Toby Halicki’s

widow Denice Halicki, petitioner here, obtained the rights

to these films after his death. 1ER9. Disney produced the

2000 remake of Gone in 60 Seconds under license from

Ms. Halicki and entities under her control, who reserved

the rights to Eleanor. 1ER9–10; 6ER1302–06; 11ER2895,

2905, 2954–55.

Petitioners, Ms. Halicki and entities under her control,

still own the intellectual property and merchandising

rights to Eleanor. 1ER9–10. Ms. Halicki has spent decades

building a business selling Eleanor merchandise, from

T-shirts to full-scale, functional replicas selling for more

than $500,000. 4ER840–45.

1. The films were lodged as DVDs with the Ninth Circuit in

Case No. 23-3731, Dkt. 58.

B. The Lawsuit.

Respondents are Carroll Shelby Licensing, which

owns the rights to a different Fastback Mustang, the

GT500; Classic Recreations, a custom car shop; and

related entities and individuals. It is undisputed that

the Shelby GT500 possesses none of Remake Eleanor’s

12 distinctive features. 4ER897–99; 11ER2784–90.

Respondents make another customized Fastback

Mustang called the GT500CR. App.5a. The GT500CR

looks like Remake Eleanor: it is undisputed that the

GT500CR copies all but two of Eleanor’s 12 distinctive

features. 4ER937–47; 9ER2313–15. In the proceedings

below, petitioners sued respondents for copyright

infringement (and other claims) on the theory that the

GT500CR infringes their Eleanor copyright. App.21a–

24a. 2

This was not the first such suit. Years earlier, just

after the remake was released, Carroll Shelby Licensing

made a different custom Fastback Mustang that copied

all of Remake Eleanor’s features, called the GT500E—

the “E” stands for Eleanor. 4ER920–22, 957; 11ER2741.

Petitioners sued Shelby for copyright infringement. See

Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d

1213, 1216–17 (9th Cir. 2008).

The district court granted summary judgment

against petitioners based on lack of standing. See id. The

2 . T he order on summa r y judg ment i nd icat es it was

“Provisionally Filed Under Seal,” App.21a, but it was unsealed in

the district court and filed unsealed in the Ninth Circuit. 1ER53–93.

Ninth Circuit reversed, and, while declining to decide

copyrightability, noted that Eleanor appeared to fit the

court’s precedents on copyrightable characters: she

resembles a comic book character in that she is “visually

depicted”; she “‘display[s] consistent, widely identifiable

traits’”; and she “is ‘especially distinctive.’” Id. at 1224–25

(brackets in original).

On remand, Shelby moved for summary judgment

on Halicki’s copyright claims. Halicki v. Carroll Shelby

Int’l, No. CV 04-8813, 2009 WL 10669478 (C.D. Cal.

Aug. 12, 2009). Shelby did not argue that Eleanor lacked

“originality”; instead, Shelby argued “the design of the

‘Eleanor’ character” was not “independently created by

Plaintiffs or their predecessors-in-interest,” but by Shelby.

Id. at *9.

The court rejected Shelby’s argument and denied

summary judgment. Noting that petitioners’ evidence

established the unique design elements of Remake

Eleanor, the district court concluded that it could not

“say as a matter of law that the originality required

for copyright protection is lacking.” Id. at *10. The case

settled. App.5a; 11ER2730–42.

In this suit, however, the district court ruled against

petitioners at summary judgment on the copyright claims.

The court applied the Ninth Circuit’s three-element test

for character copyright, developed since the 2008 Halicki

Films decision. App.29a–33a. The court found that

Eleanor satisfied the first element, possessing “‘physical

as well as conceptual qualities.’” App.30a–31a. But the

court denied copyright protection based on the other two

elements. It concluded that Eleanor was not “‘sufficiently

delineated to be recognizable as the same character

whenever it appears’” and not “‘especially distinctive.’”

App.40a–51a.

Petitioners sought leave to file an interlocutory

appeal to decide several issues implicated by the district

court’s decision, issues not settled by the Ninth Circuit’s

test. 6ER1272–99. The district court denied the request.

5ER1232–40.

The district court action proceeded to judgment

after a bench trial on the other claims. App.73a–143a. 3

Petitioners appealed to the Ninth Circuit.

In a published opinion, the Ninth Circuit affirmed

summary judgment against petitioners on copyright

infringement, agreeing with the district court that

Eleanor was not a character protected by copyright.

App.3a–13a. The opinion applied the same three-element

test for character copyright as the district court, but

interpreted it in new ways.

Previous Ninth Circuit decisions held that visually

depicted characters like Eleanor always satisfy the

first element, possessing “physical as well as conceptual

qualities.” See, e.g., Walt Disney Prods. v. Air Pirates,

581 F.2d 751, 755 (9th Cir. 1978); DC Comics v. Towle,

802 F.3d 1012, 1019–21 (9th Cir. 2015). The district court

below agreed. App.31a. The opinion, however, said that

3. Those other claims include various contract claims between

the parties, some related to copyright, some not. See App.76a–78a.

The district court entered judgment of no liability on all claims.

App.141a–143a.

qualities,” but specifically “anthropomorphic qualities”:

“agency and volition, displaying sentience and emotion,

expressing personality, speaking, thinking, or interacting

with other characters or objects.” App.8a–9a.

Petitioners petitioned for rehearing and rehearing

en banc. The petition argued that (1) the opinion was

inconsistent with prior Ninth Circuit decisions, most

specifically Towle, 802 F.3d 1012, in which the court,

citing the earlier Halicki decision, held the Batmobile was

a copyrightable character; and (2) the opinion deepened

an existing split between the Ninth Circuit’s approach to

character copyright and other Circuits’ approach.

On July 11, the Ninth Circuit denied the petition.

App.144a–145a.

REASONS WHY CERTIORARI IS WARRANTED

On the third floor of the Petersen Automotive Museum

in Los Angeles, there is Eleanor. Her body and look are

one-of-a-kind: sleek and gray, dual black racing stripes,

nitrous oxide canister visible in the rear compartment—

still ready to outrun a platoon of police.

This Eleanor starred in the 2000 film Gone in 60

Seconds alongside Nicolas Cage and Angelina Jolie. That

film was a remake of the 1974 cult classic of the same name,

which had two spin-off films in the 1980s.

In the Gone in 60 Seconds films, a team of thieves has

a few days to steal 50 or so cars, culminating in a high

speed, heart-stopping police chase as the protagonist

steals Eleanor. Her performance has made Eleanor the

centerpiece of a half-century old film franchise. Her

devoted fans buy a wide range of Eleanor merchandise,

from mugs and T-shirts to functional replicas costing

hundreds of thousands of dollars.

Despite this, the Ninth Circuit has held that Eleanor

is not a copyrightable character. Its holding depends on an

essentially standardless three-part test that contradicts

an on-point decision of this Court and is at odds with the

test applied by three other Circuit Courts.

This Court has held that “originality” is the “sine

qua non of copyright,” the fundamental basis for

copyrightability, and requires only “independent creation

plus a modicum of creativity.” Feist Publ’ns, Inc. v. Rural

Tel. Serv. Co., 499 U.S. 340, 345 (1991). The Court has

emphasized that the “vast majority of works make the

grade quite easily, as they possess some creative spark,

‘no matter how crude, humble or obvious’ it might be.”

Id. The decision below, and the line of cases from which

it descends, have replaced this simple standard with

an ad hoc, arbitrary test, that is incongruent with the

Constitution’s low bar for copyrightability.

Indeed, Eleanor is emblematic of the Ninth Circuit’s

scattershot approach to character copyright. In 2008,

a Ninth Circuit panel strongly suggested in dicta that

Eleanor was copyrightable, because she has “physical as

well as conceptual qualities,” “display[s] consistent, widely

identifiable traits,” and is “especially distinctive.” Halicki

Films, 547 F.3d at 1224–25. In 2015, the Ninth Circuit,

citing that case, held that the Batmobile was copyrightable

because it satisfied these same three elements. Towle,

802 F.3d at 1021–23. Yet the decision below—purportedly

applying the same standard—held that Eleanor failed

these same three elements.

The decision found that she does not have the

right kind of conceptual qualities: “anthropomorphic

qualities”—a requirement invented by this panel, and

based on no case law or statute. Indeed, in holding that

the Batmobile was a copyrightable character in Towle, the

Ninth Circuit expressly stated that “sentient attributes”

were not required for character protection. Towle, 802

F.3d at 1021. The result is confusion and an invitation to

hairsplitting and subjective parsing of whether a character

is “human” enough for protection.

This rule also undermines protection for the economic

value of originality that is the foundation of copyright

law. Under the Ninth Circuit’s standard, no inanimate

object in a blockbuster film, including, for example, the

distinctive Death Star or Millennium Falcon from Star

Wars, can be protected by copyright, no matter how

original, recognizable and valuable they may be.

The panel also denied Eleanor protection because

she purportedly does not “display consistent, widely

identifiable traits.” This is because she changes appearance

between films, and because within the Remake, she begins

in pristine condition, gradually incurs serious damage, and

reappears at the end in the ironic guise of a fixer-upper. Yet

the audience always knows when the car character on the

screen is Eleanor—just as the audience of a James Bond

film recognizes 007 no matter whether he wears a tuxedo

or bathing suit, and even when he appears disheveled after

a fight. The panel’s conclusion on this point underscores

that whether a trait is “consistent” or “widely identifiable”

is flatly subjective, and contrary to the standard that

Finally, in rejecting copyright protection for Eleanor,

the panel did not deny that she is distinctive, i.e., has

some modicum of creativity, which should have foreclosed

any further inquiry under Feist. It instead imposed a

higher bar, concluding she is not “especially distinctive.”

App.8a–13a (emphasis added). Although the difference

between “distinctive” and “especially distinctive” is

not explained, the panel’s assertion that “[n]othing

distinguishes Eleanor from any number of sports cars

appearing in car-centric action films,” App.12a, beggars

belief. The opinion acknowledges that Eleanor is a highly

customized Ford Mustang, and it identifies no other film

car that has her attributes. Her fans do not consider her

just another “sports car.” That is why respondents copied

all but two of her 12 unique features, hoping to capitalize

on her cachet and value—the very sort of free-riding that

The Ninth Circuit’s decision requires the intervention

of this Court. First, the decision is the culmination of the

Ninth Circuit’s gradual abandonment of “originality”

as the standard for copyrightability—the standard

established in the Constitution, the Copyright Act, and

this Court’s Feist decision. It is difficult to overstate the

commercial consequences of copyright law in the Ninth

Circuit, home of Hollywood and Silicon Valley. Yet the

Circuit’s stringent, dysfunctional, ad hoc approach to

character copyright jeopardizes protection, encourages

free riding, inhibits originality and spawns litigation.

Review is therefore necessary to align the Ninth Circuit

with copyright’s purpose and policy aim as articulated

in Feist.

Second, the decision below deepens a split between the

Ninth Circuit’s approach to this issue and the approach

of the Second, Seventh, and Eleventh Circuits. The latter

Circuits hold that a character is protected by copyright to

the extent it is distinctive from a generic stock character.

This standard is simple, predictable, and consonant

with the principle of “originality”: everything the Ninth

Circuit’s standard is not. These divergent approaches

mean that whether a character is copyrightable depends

mainly on where its copyright is challenged.

Media production and consumption is expanding in

unpredictable ways, driven by new technologies such as

artificial intelligence. Copyright law remains the most

important policy tool to ensure these developments

“promote the Progress of Science and useful Arts.”

U.S. Const. art. I, § 8, cl. 8. Clear, consistent copyright

protection for characters is an issue of growing importance.

It is essential that the Court grant review.

THE CHARACTER-COPYRIGHT TEST APPLIED

BY THE DECISION BELOW CONTRADICTS

THE ORIGINALITY STANDARD ESTABLISHED

BY THIS COURT’S DECISION IN FEIST AND

THE COPYRIGHT ACT.

The Ninth Circuit established its three-element test

for character copyright in Towle, 802 F.3d 1012. The

decision below takes the same test to a new extreme. The

decision has severed any connection the Towle test may

have had with copyright law principles. The Court should

grant review.

The Constitution, the Copyright Act, and this

Court’s Feist decision establish that originality

is the touchstone of copyright protection.

Originality separates what is protected by copyright

from what is not. The elements of a copyright infringement

claim are “(1) ownership of a valid copyright, and (2)

copying of constituent elements of the work that are

original.” Feist, 499 U.S. at 361. Others may copy elements

of a work that are not original. Harper & Row Publishers,

Inc. v. Nation Enters., 471 U.S. 539, 548 (1985).

Originality is therefore “[t]he sine qua non of

independent creation plus a modicum of creativity.” Id. at

346. A modicum, not a lot: “the requisite level of creativity

is extremely low; even a slight amount will suffice. The

vast majority of works make the grade quite easily, as

they possess some creative spark, ‘no matter how crude,

humble or obvious’ it might be.” Id. at 345.

This line has been drawn by the Constitution,

this Court’s early copyright decisions, and the 1976

Constitution authorizes Congress to “secur[e] for

limited Times to Authors … the exclusive Right to their

respective Writings.” This Court’s early decisions “made

it unmistakably clear” that the terms “authors” and

“writings” “presuppose a degree of originality.” Feist, 499

U.S. at 346. The Copyright Act says that “copyrightable

subject matter” includes “‘original works of authorship

fixed in any tangible medium of expression.’” Star

Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405, 411

(2017) (emphasis added) (quoting 17 U.S.C. § 102(a)). Under

the Act, originality “remains the touchstone of copyright

protection today,” “the very ‘premise of copyright law.’”

Feist, 499 U.S. at 347.

To cross the line of originality is not difficult. For

example, mere facts are not original and not protected by

the author has arranged them with “a minimal degree of

creativity,” crosses the line and “meets the constitutional

minimum for copyright protection.” Id. at 348. Copyright

protects “those components of a work that are original to

the author” (the arrangement, in the example), but does

not protect “the underlying facts,” id., or mere ideas, 17

U.S.C. § 102(b).

Congress and the courts have set the originality

standard to serve “the goal of copyright”: to “provide

an economic incentive to create original works.” Andy

Warhol Found. for the Visual Arts, Inc. v. Goldsmith,

598 U.S. 508, 535 (2023). “[T]he question of copyright has

always been joined with that of commercial value.” Jane

C. Ginsburg, Creation and Commercial Value: Copyright

Protection of Works of Information, 90 Colum. L. Rev.

1865, 1866 (1990) (Ginsburg).

This standard strikes a balance. “Protection depends

on whether the work manifests authorial personality,” id.,

that is, Feist’s “modicum of creativity,” 499 U.S. at 345–46.

The standard encourages originality by protecting it, and

by punishing and discouraging would-be free riders.

Just as important, the standard does not call upon

courts to serve as critics. Copyright protection does

not depend on whether the authorial “personality

demonstrates either taste or talent.” Ginsburg, supra, at

1866. Instead, the standard puts all authors on an equal

playing field and allows market forces to determine critical

and commercial success.

The low threshold for copyrightability, that is, bare

originality, gets an author through the courthouse door.

The heart of an infringement claim is in comparing the

protected work with the defendant’s work, through the

objective, fact-based substantial similarity test. See

Tanksley v. Daniels, 902 F.3d 165, 172–75 (3d Cir. 2018)

(explaining test).

B. The decision below—and the Ninth Circuit’s

Towle test that it applies—abandons the

principle that copyrightability depends on

originality.

The history of the three-element Towle test

explains its dysfunction.

As formulated in Towle, the Ninth Circuit’s approach

to character copyright has the guise of a legal standard:

three elements, each necessary to establish a character’s

copyrightability. In reality, the Towle test was cobbled

together to reconcile disparate precedent, untethered to

Feist’s modicum of creativity standard, and it leads to

unpredictable, ad hoc decisions.

Towle lays out “a three-part test for determining

whether a character in a comic book, television program,

or motion picture is entitled to copyright protection”:

1. “the character must generally have ‘physical

as well as conceptual qualities’”;

2. “ the cha racter must be ‘su ff iciently

delineated’ to be recognizable as the

same character whenever it appears”;

“[c]onsidering the character as it has

appeared in different productions, it must

display consistent, identifiable character

traits and attributes, although the character

need not have a consistent appearance”;

3. “the character must be ‘especially distinctive’

and ‘contain some unique elements of

expression.’”

Towle, 802 F.3d at 1021. Towle applies this test to hold that

the Batmobile is protected by copyright. Id. at 1021–23.

The origins of the test belie any foundation in the

standards set by the Copyright Act and this Court in Feist

as a basis for copyright protection.

Warner Bros. denies cha racter

copyrightability; Air Pirates limits

Warner Bros.

In Warner Bros. Pictures v. Columbia Broadcasting

System, 216 F.2d 945 (9th Cir. 1954), the Ninth Circuit held

that an author (Dashiell Hammett) could sell the copyright

to one of his stories (The Maltese Falcon) and then reuse

the characters from that story (such as Sam Spade) in

other stories without infringing the copyright. Id. at 946,

950. More generally, the court held that characters within

a work are not protected by copyright. “The characters

of an author’s imagination and the art of his descriptive

talent … are always limited and always fall into limited

patterns,” and as a result, it would be “unreasonable” to

allow copyright in a character, and it would run contrary

to copyright’s purpose of “encourag[ing] the production of

the arts.” Id. at 950. In the language of Feist, this decision

effectively held that, with rare exceptions, originality in

characters is categorically impossible.4

The Ninth Circuit sought to limit Warner Bros. in

its next decision addressing this issue. In Walt Disney

Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978),

the Ninth Circuit held that Disney’s cartoon characters

were protected by copyright. Unable to overrule Warner

Bros., the decision limited Warner Bros.’ extreme position

to “literary characters.” Air Pirates, 581 F.2d at 755; cf.

Gaiman v. McFarlane, 360 F.3d 644, 660 (7th Cir. 2004)

(Posner, J.) (saying of Warner Bros., “That decision is

wrong”).

The decision subtly recast Warner Bros.’ categorical

rejection of character copyright into something milder.

Air Pirates read Warner Bros. to mean that “it is difficult

to delineate distinctively a literary character”; “many

literary characters may embody little more than an

unprotected idea.” Air Pirates, 581 F.2d at 755 (emphasis

added). Thus, while Warner Bros. appeared to say that no

4. The decision made an exception for a case in which “the

character really constitutes the story being told,” Warner Bros.,

216 F.2d at 950, which has become the alternative, “‘story being

told’ test” for character copyright. See Daniels, 958 F.3d at 773–74;

Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1176 (9th Cir. 2003);

Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., Inc., 900 F.

Supp. 1287, 1296–97 (C.D. Cal. 1995); cf. JB Oxford & Co. v. First

Tennessee Bank Nat. Ass’n, 427 F. Supp. 2d 784, 798 (M.D. Tenn.

2006) (referring to test).

characters are copyrightable, Air Pirates read it to say

that literary characters are usually not copyrightable.

This limit allowed Air Pirates to hold that the Disney

characters at issue were protected by copyright. Air

Pirates reasoned that copyrightability comes more easily

“[w]hen the author can add a visual image”: “a comic

book character, which has physical as well as conceptual

qualities, is more likely to contain some unique elements

of expression.” Air Pirates, 581 F.2d at 755 (emphasis

added). The italicized phrases would become elements of

the Towle test.

This language hints at an originality standard. It

suggests that “some unique elements of expression”—a

standard roughly equivalent to “a modicum of creativity”—

legally suffice to establish copyrightability. It suggests

that a character possessing physical qualities is “more

likely” to cross that threshold. But it never actually states

a standard for character copyrightability. The Ninth

Circuit’s approach evolved in a different direction.

Olson and Rice add fur ther

complications.

The Ninth Circuit’s next two decisions on character

In Olson v. National Broadcasting Co., 855 F.2d 1446

(9th Cir. 1988), the court held that the defendant’s show

“The A-Team” did not infringe on the copyright of the

plaintiff’s pilot screenplay and treatment for a series called

“Cargo.” The decision compared the shows’ characters.

See id. at 1451– 53. It relied on Warner Bros. and

distinguished Air Pirates. It cited Warner Bros. for the

rule that “characters ordinarily may not be copyrighted,”

but it recognized that some “cases subsequent to Warner

Bros.,” including Air Pirates, “have allowed copyright

protection for characters,” so long as the characters were

“especially distinctive.” Id. (emphasis added).

The italicized phrase would become an element of

the Towle test. The phrase implies that for copyright

protection, a character needs something more than a

modicum of creativity. Not just distinctive from what came

before, but especially distinctive.

Like Air Pirates, however, Olson never actually

stated a standard for character copyrightability. It

resisted drawing a clear line. After citing Warner Bros.

and seeming to rely on it, it backed away, acknowledging

that “the statements in Warner Bros. concerning the

unprotectability of characters” might be “considered

to be dicta.” Id. at 1452. Then it held for the defendant

because it found that the plaintiff’s characters would

be unprotected “even under the more lenient standards

adopted elsewhere,” specifically the Second Circuit’s

distinctiveness test, which we discuss below. Id. at

1452–53.

Next, in Rice v. Fox Broadcasting Co., 330 F.3d 1170

(9th Cir. 2003), the Ninth Circuit held that a masked

magician character appearing in a home video was not

copyrightable. Id. at 1175–76. It found that the magician

was not “sufficiently delineated to warrant copyright

protection.” Id. (emphasis added). It contrasted the

magician with Godzilla, James Bond, and Rocky Balboa—

characters “that have received copyright protection” in

district court decisions because they “have displayed

consistent, widely identifiable traits.” Id. (emphasis

added). These italicized phrases would become part of the

Towle test, though Rice did not present them as general

requirements for character copyrightability. The court

found that the magician, in contrast to those characters,

“appeared in only one home video that sold approximately

17,000 copies,” he “is dressed in standard magician garb,”

“and his role is limited to performing and revealing the

magic tricks.” Rice, 330 F.3d at 1175.

This reasoning mixes originality with fame. It may

be that the magician’s stereotypical clothing and actions

made him insufficiently delineated—insufficiently

original—to warrant copyright protection. But the

decision also discusses the commercial performance of

his video. This should not affect his copyrightability. See

Darden v. Peters, 488 F.3d 277, 287 (4th Cir. 2007) (“a work

is copyrightable at the time of its creation or not at all,”

and evidence of a work’s “commercial success over time”

does not tend to show “originality”), citing Paul Morelli

Design, Inc. v. Tiffany & Co., 200 F. Supp. 2d 482, 487–89

(E.D. Pa. 2002) (“commercial success,” like the “‘sweat

of the [author’s] brow,’” does not have “anything to do

with whether an author’s work is original” and therefore

copyrightable).

Conversely, it may be that Godzilla, James Bond, and

Rocky Balboa, in addition to their fame, display original

traits; Rice doesn’t say. Instead, the decision says their

traits are “consistent” and “widely identifiable,” which

would seem mainly to reflect the number of works in

which they appear and their commercial success. Rice,

330 F.3d at 1175.

These two decisions thus shifted the Ninth Circuit

away from the originality standard that was implied but

not adopted in Air Pirates. The decisions introduced other

potential requirements: especial distinctiveness; sufficient

delineation (which, on its own, resembles originality); and

consistent, widely identifiable traits, which seem to depend

in part on fame and exposure.

Halicki Films lumps these cases

together.

The Ninth Circuit first brought together Warner

Bros., Air Pirates, Olson, and Rice in the appeal from

the petitioners’ prior copyright suit against the Shelby

respondents, based on the GT500E, an exact copy of

Remake Eleanor. In discussing whether “the Eleanor

character” qualifies “for copyright protection,” Halicki

Films cited and quoted all these decisions, using the same

language that would make its way into the Towle test.

Halicki Films, 547 F.3d at 1224. Halicki Films did not

present this language as elements of a test.

Although Halicki Films did not ultimately decide the

copyrightability issue, it noted that Eleanor appeared to

satisfy the prior decisions’ criteria for a copyrightable

character: “The Eleanor character can be seen as more

akin to a comic book character than a literary character,”

that is, she possesses physical as well as conceptual

characteristics, per Air Pirates; “Eleanor ‘display[s]

consistent, widely identifiable traits,’ see Rice, 330 F.3d at

1175”; and Eleanor “is ‘especially distinctive,’ see Olson,

855 F.2d at 1452.” Halicki Films, 547 F.3d at 1224–25.

Gone is any connection to originality as the basis for

copyrightability. Instead, starting with Halicki Films,

the Ninth Circuit takes guidance only from the jumble of

its own prior decisions.

Towle and Daniels formalize this

disparate language into a three-part

test.

Towle relied heavily on Halicki Films in formalizing

the disparate language of Ninth Circuit precedent into

its “three-part test for determining whether a character

in a comic book, television program, or motion picture is

entitled to copyright protection.” Towle, 802 F.3d at 1021.

The court reiterated this test in Daniels v. Walt Disney

Co., 958 F.3d 767 (9th Cir. 2020).

Towle held that on this test, the Batmobile was

protected by copyright. Towle, 802 F.3d at 1022. Towle

cited Halicki Films for the premise “that an automotive

character can be copyrightable.” Towle, 802 F.3d at 1019.

The Batmobile satisfied the first element, “physical as

well as conceptual qualities,” because it “has appeared

graphically in comic books, and as a three-dimensional car

in television series and motion pictures.” Id. at 1021. It is

not merely a literary character. The Batmobile satisfied

the second element—its traits are sufficiently delineated,

consistent and identifiable, and it is recognizable—

because, for example, it effectively helps Batman fight

crime, and it features advanced weapons and technology.

Id. at 1021–22. It satisfied the third element, especial

distinctiveness, because of these same traits, along with

“its unique and highly recognizable name.” Id. at 1022.

Daniels, conversely, applied the same test to hold that

the plaintiff’s cartoon characters The Moodsters were not

protected by copyright. Daniels, 958 F.3d at 771–73. The

Moodsters satisfied the first element because they “are not

mere literary characters.” Id. at 771. But they failed the

second element because their traits in early works differ

from their traits in later works. Id. at 771–73.

These same changes from earlier to later works made

The Moodsters not “especially distinctive,” the third

element: the court considered only their traits that had

remained consistent across all works, and found those

insufficient. Id. at 773.

With these two decisions, then, the Ninth Circuit

locked itself into a convoluted, ad hoc test for character

of copyrightability: originality.

The decision below demonstrates that the

Ninth Circuit’s character copyright test in

Towle is unmoored from the Constitution’s

originality principle.

This line of cases set the stage for the decision below.

In it, the concept of originality plays no role. The word

“originality” does not appear. The decision uses the word

“original” only to distinguish the 1974 original version of

Gone In 60 Seconds from the 2000 remake. See App.1a–

20a.

The decision disagrees with Halicki Films and

holds that under the Towle test, Eleanor “is not entitled

to copyright protection.” App.13a. The decision does

not address whether Eleanor possesses a modicum of

creativity. It holds only that Eleanor does not possess the

various elements the Ninth Circuit has come to demand

of copyrightable characters.

The decision holds that copyright

protection of characters is limited to

those that possess “anthropomorphic

qualities.”

Towle and Daniels had treated the first element like

a rubber stamp: the Batmobile appears on TV and in a

film; The Moodsters are cartoons; therefore, they possess

physical as well as conceptual qualities and are not bound

by Warner Bros.’ rejection of copyright for literary

characters. Indeed, the district court here found likewise

regarding Eleanor, because she appears in films: “The

parties do not dispute the first element, which is readily

met.” App.31a (footnote omitted).

The decision below, however, abstracts the phrase

“conceptual qualities” from its origins and inverts its

meaning. The decision uses the phrase to divide visually

depicted characters into two kinds: those that possess

only physical qualities, and those that also possess certain

special conceptual qualities “that all [copyrightable]

characters inherently possess”: “anthropomorphic

qualities.” App.8a. These qualities include “acting with

agency and volition, displaying sentience and emotion,

expressing personality, speaking, thinking, or interacting

with other characters or objects.” App.8a.

We know of no district court or Circuit Court decision

before the decision below deciding copyrightability based

on “anthropomorphic qualities.” The decision cites none.

Instead, the decision relied on an amicus brief of “20

Professors of Law and Public Knowledge.” See App.10a. 5

That the decision adopted this rule from an academic

amicus brief confirms what was already apparent. The

analysis of “sentience and emotion” as aspects of character

belongs in university classrooms, not courtrooms. It is an

unworkable basis for a legal standard, disconnected from

any other point of copyright law in any statute or court

decision.

The problems with the rule are clear from how the

decision applies it—and the facts that the decision ignores.

The decision holds that Eleanor lacks anthropomorphic

qualities because she “is always driven by the film’s

protagonists” and “expresses no sentience, emotion, or

personality.” App.10a. To the latter point, the remake of

Gone in 60 Seconds includes two obvious counterexamples.

First, Eleanor stalls mid-chase after Raines knocks

off her mirror. The decision outright ignores this example.

Raines himself, however, attributes it to Eleanor’s

feelings, assuring Eleanor that the mirror can be fixed

and begging her to start again because he “need[s]”

her—and she starts again. Gone (2000), at 1:34:58. He

himself, the main human character, treats Eleanor like

5. Citing Br. 20 Professors Law Public Knowledge Amici

Curiae Supporting Appellants, ECF No. 46. Though the signatories

are law professors, their brief cites scholarly sources mainly from

the fields of English and literary studies, not law. See id. at v–viii

(citing works titled “Willful Parts: Problem Characters or the

Problem of Character”; “Elements of Fiction Writing: Characters

and Viewpoint”; etc.). The amicus brief does not cite Feist. Id. The

ultimate thrust of the brief is that characters should not be protected

by copyright, id. at 20—a position no federal appellate court has

taken.

another character who possesses sentience, emotion, and

personality—not just a car—and she responds.

Second, Eleanor stalls again at the end of the film

after Raines climbs in with his girlfriend (Angelina Jolie).

Gone (2000), at 1:51:22. The decision skews the context of

this example, asserting, “A reasonable viewer attributes

the breakdown to the car’s poor condition, not Eleanor’s

feelings.” App.10a n.4. But Raines and the other characters

have been discussing Eleanor in anthropomorphic terms

throughout the film.6 By the end, a reasonable viewer would

far more likely view Eleanor’s stalling as an expression

of jealousy rather than a mechanical coincidence. Raines

certainly does: the film closes with his pleading to her,

“Don’t do this to me.” Gone (2000), at 1:51:22.

The decision’s disregard for these displays of

Eleanor’s “anthropomorphic” qualities underscores

the unpredictable way this standard will be applied.

How obvious must an anthropomorphic feature be for

a character to qualify for copyright protection? And how

is an author to know whether their work will be protected,

when their subtle means of characterization, however

original, will be second-guessed by jurists whose literary

tastes may dispose them toward only the most obvious

“personality” traits?

The decision tries to suggest an origin for this rule in

Towle, asserting that the Batmobile is “‘an autonomousdriving car with substantial intelligence.’” App.10a. But

6. E.g., Gone (2000), at 0:22:58 (detective asks Raines, “Eleanor

tell you that?”), 0:47:30 (character says Raines is “[t]rying to get

reacquainted” with Eleanor), 1:27:45 (Raines tells Eleanor, “you

take care of me, I’ll take care of you”).

only the professors’ amicus brief describes this purported

trait of the Batmobile—not Towle. See id. To the contrary,

Towle all but rejected a requirement of “anthropomorphic

qualities.”

Towle expressly held that a character can be protected

even if the character “lacks sentient attributes and

does not speak,” Towle, 802 F.3d at 1021—two of the

anthropomorphic qualities listed by the decision below.

App.8a. The decision below does not overrule Towle, but

it does not explain how to reconcile its rule with Towle’s.

The decisions are in direct conflict. Per Towle, 802 F.3d

at 1021, a character does not need “sentient attributes”

or the ability to speak to receive copyright protection;

per the decision below, App.8a, a character does need

“anthropomorphic qualities” such as “sentience” and

“speaking.”

The decision’s analysis of this point also departs from

Towle’s description of the Batmobile. Towle describes the

Batmobile as a tool for Batman to drive and use, not as an

entity with independent agency or thought. The Batmobile

has “sleek and powerful characteristics that allow

Batman to maneuver quickly while he fights villains”;

its “gadgets and weaponry” are “used to aid Batman

in fighting crime.” Towle, 802 F.3d at 1021 (emphasis

added). These traits supported Towle’s conclusion that

the Batmobile is protected by copyright; yet the decision

below denied protection to Eleanor in part because some

of Eleanor’s traits had to be brought out by the human

protagonist—like the Batmobile’s.

Towle also describes the Batmobile metaphorically.

Thus, the Batmobile is “ready to leap into action to assist

Batman in his fight against Gotham’s most dangerous

villains”; it is “waiting ‘[l]ike an impatient steed’”

“before it ‘tears after the fleeing hoodlums.’” Id. at

1015, 1021 (emphasis added). But this language ascribes

“anthropomorphic qualities” to the Batmobile only in an

imaginative way, no different from how Eleanor is elusive,

temperamental, or good at evading police.

The opinion’s rule about “anthropomorphic qualities”

is unpredictable and unworkable. It also sharply limits

the range of “characters” that might qualify for copyright

protection. On the one hand, Towle said that copyright

protects all of a work’s “‘distinctive’ elements,” not just

characters. Towle, 802 F.3d at 1019. This follows from the

second part of a copyright infringement claim, “copying of

constituent elements of the work that are original.” Feist,

499 U.S. at 361 (emphasis added). On the other hand, the

decision below reserves protection for “elements” that

are sentient or clearly display other human-like traits. If

governed by this rule, many highly original, distinctive

elements of films and other works can never receive

vehicles of Star Wars, or animal characters central to a

story but insufficiently human-like.

Eleanor herself illustrates the problem with this

requirement. She is a uniquely customized car character

central to the story of both Gone in 60 Seconds films.

That is why her fans will pay six-figure prices for accurate

replicas. Her originality carries commercial value. To

reserve that value for her author or the author’s assignee

is the very purpose of copyright law. The decision below,

however, denies that value and allows others to copy her

without compensation—because she is not sentient, or not

sentient in the right ways. This cannot be right.

In short, the requirement of “anthropomorphic

qualities” has nothing to do with originality or any other

a character is sufficiently “anthropomorphic” to merit

The decision illustrates that the

requirement of possessing “consistent,

identifiable traits” is arbitrary and

contrary to originality.

Second, Eleanor is purportedly not “‘sufficiently

delineated to be recognizable as the same character

whenever it appears’” and does not “‘display[] consistent,

identifiable character traits and attributes.’” App.11a–13a.

The decision notes, for example, that Eleanor sometimes

appears undamaged, but sometimes appears with “damage

rang[ing] from body damage incurred by a police chase, to

cosmetic damage, to being entirely shredded for scrap.”

App.12a. She does not display all her traits in every scene.

App.11a–12a. And in some scenes Eleanor is recognizable

only because the other characters discuss her by name.

App.11a. The decision does not deny that the viewer

recognizes Eleanor in each appearance. Instead, the

decision finds that Eleanor fails to exceed some arbitrary,

undefinable hurdle of consistency and recognizability.

The muddle of this element allows the decision below,

and any court confronting character copyrightability, to

draw the line where it likes. Like any other character,

Eleanor is not perfectly consistent: she appears in various

guises as the context of the film demands. The decision

identifies supposed “inconsistencies” and finds against her.

App.11a–12a. But the problem is not with Eleanor, it is

with the standard itself, in its failure to draw an objective,

predictable line.

Many characters’ appearance changes significantly

from scene to scene, without in any way undermining

their recognizability or delineation. James Bond can

change from a tuxedo into swim trunks, or get bruised

or bloodied in a fight. He remains James Bond. The

Batmobile’s appearance changes significantly, both from

damage it incurs during a film and from one work to

another. As Towle recognized, it remains the Batmobile.

These changes should not undermine copyrightability.

As for underlying personality traits, it is common,

even expected, for characters to undergo a change in the

course of a work. A cowardly character becomes brave; a

selfish character learns the value of generosity; a prideful

character is brought low by misfortune. The decision

below suggests these changes put a character’s copyright

protection in jeopardy. Its rule limits copyright protection

to flat, unchanging characters.

Indeed, the requirement of consistency cuts against

the originality standard. For example, in Daniels, the court

concluded that The Moodsters were not copyrightable in

part because in some works, The Moodsters “have an

insect-like appearance, with skinny bodies, long ears, and

tall antennas that act as ‘emotional barometers’ to form

a distinctive shape and glow when an emotion is strongly

felt”; but in other works, “The Moodsters look like small,

loveable bears. They are round and cuddly, have small

ears, and each dons a detective’s hat and small cape.”

Daniels, 958 F.3d at 772. From these descriptions, these

characters sound highly original in each iteration. But the

requirement of consistency causes their different ways

of being original to cancel each other out. This approach

cannot be squared with the principle that copyright law

should promote originality.

Likewise here, the decision below reasoned that

because Eleanor in the original Gone in 60 Seconds

looks different from Remake Eleanor (though each is

distinctive), and because Remake Eleanor undergoes

changes w ithin the course of the film (a mark of

originality), Eleanor is somehow insufficiently consistent

for copyrightability, App.11a–12a—even though the

audience always recognizes her when she appears.7

The decision illustrates the arbitrary

nature of the “especially distinctive”

requirement.

Third, Eleanor is purportedly “not especially

distinctive.” App.12a. The decision discusses several of

Eleanor’s defining features, including her feminine name;

her appearance as a customized Mustang with “black

stripes”; her traits of being stolen repeatedly, incurring

7. Consider also the decision’s conclusion that being hard to

steal is not one of Eleanor’s character traits because “most [Eleanors]

were stolen with little difficulty.” App.11a–12a. In the original Gone

in 60 Seconds, it takes five attempts to steal Eleanor and recover

her undamaged. Gone (1974), at 0:13:08, 0:19:41, 0:27:00, 0:46:20,

0:52:47, 1:29:35. In the remake, characters refer to many failed past

attempts, and the only on-screen attempt leaves Eleanor severely

damaged. Gone (2000), at 0:22:38, 0:47:20, 1:20:41, 1:27:38, 1:38:40.

One wonders what level of difficulty the panel would have considered

sufficient to establish this trait.

damage while “driven in a climactic police chase,” and

(with her driver) being “‘good at evading police’ and

‘surviving spectacular jumps.’” App.4a, 12a. The decision

does not mention any other car that possesses this set of

features. But the decision ultimately concludes, “Nothing

distinguishes Eleanor from any number of sports cars

appearing in car-centric action films.” App.12a. According

to this Ninth Circuit panel, Eleanor is distinctive, to some

degree, but not distinctive enough.

This is an arbitrary, undefinable standard. Eleanor

herself provides the clearest illustration of this. The

previous panel found her “especially distinctive,” Halicki

Films, 547 F.3d at 1225; this panel did not, App.12a.

This arbitrary line-drawing should not matter. It is

clear that Remake Eleanor is sufficiently distinctive to

possess commercial value: respondents have decided to

copy nearly all of her features in the GT500CR. Copyright

law ought to recognize and protect Eleanor’s originality

and prevent this copying.

Eleanor is a poster child for the failure of the Ninth

Circuit’s approach to character copyright. Based on its

own prior decisions, in 2008, the Ninth Circuit concluded

in dicta that Eleanor probably is copyrightable. Halicki

Films, 547 F.3d at 1224–25. Based on those same decisions,

and on Halicki Films itself, the Ninth Circuit in Towle

formally adopted a test for character copyright. Yet here

we are almost twenty years later, litigating the very same

issue, under what purports to be the same standard, and

the district court and Ninth Circuit have come up with

the opposite answer.

No wonder. The Towle test is arbitrary, and the

decision below has cut any connection it ever had to other

copyrightability standard laid out in the Constitution,

Feist, and the Copyright Act: originality.

The Ninth Circuit’s approach to character copyright

creates uncertainty and spawns litigation. It is as good as

no standard at all. Even worse, it is the governing standard

of the Circuit that probably sees more copyright cases

than any other, and it therefore has major commercial

and economic consequences.

The Ninth Circuit has strayed far from the originality

standard. The Court should grant review.

II. REV IEW IS N ECES SA RY TO SET T LE A

LONGSTANDING CIRCUIT SPLIT REGARDING

THE TEST FOR WHETHER A CHARACTER IS

ENTITLED TO COPYRIGHT PROTECTION.

T he cou r ts ag ree that cha ract er s a re

copyrightable but disagree over the standard.

The Copyright Act does not specify whether characters

are copyrightable. Instead, the Act affords protection to

“original works of authorship fixed in any tangible medium

of expression,” and it lists eight categories of works, many

of which can include characters as elements. 17 U.S.C.

§ 102(a). As a result, every Circuit Court to consider the

issue has acknowledged that characters can be protected

by copyright. (The Ninth Circuit’s early Warner Bros.

decision was an outlier, which the Circuit’s own subsequent

decisions all but overrule. See pp. 12–16, supra.)

It makes sense for characters to be copyrightable.

Characters can manifest g reat orig inality, often

outshining and outliving the works in which they appear

and carrying substantial economic value. Protecting them

encourages this originality.

Though the courts uniformly recognize characters’

copyrightability, they do not apply a uniform standard.

As noted, the Ninth Circuit applies the Towle test, which

petitioners submit is completely detached from the

standard of originality. 8 See pp. 11–24, supra. In contrast,

the Second, Seventh, and Eleventh Circuit Courts of

Appeal apply a rule that fits Feist’s “originality” standard.

In these Circuits, copyrightability of an independently

created character, as of any work of authorship, requires

only a modicum of creativity. See Feist, 499 U.S. at

345–46. A character need only be distinctive from a stock

character. Remake Eleanor easily satisfies this rule.

The Court should grant review to resolve this

acknowledged Circuit split, adopt the Second, Seventh, and

Eleventh Circuits’ rule to make character copyrightability

follow the same standard as other copyrightability

questions, and ultimately hold that Remake Eleanor

satisfies this standard.

8. We know of no Circuit Court decision outside the Ninth

Circuit that has cited Towle or Daniels. A handful of district court

decisions outside the Ninth Circuit have cited Towle and Daniels on

character copyright, but never to formally adopt the Towle test. See

Wozniak v. Warner Bros. Ent. Inc., 726 F. Supp. 3d 213, 230 (S.D.N.Y.

2024); Clancy v. Jack Ryan Enters., Ltd., No. ELH-17-3371, 2021

WL 488683, at *38–39 (D. Md. Feb. 10, 2021); Conan Props. Int’l

LLC v. Sanchez, No. 17-cv-162, 2018 WL 4522099, at *13 (E.D.N.Y.

June 8, 2018); Culver Franchising Sys., Inc. v. Steak N Shake Inc.,

No. 16 C 72, 2016 WL 4158957, at *7 (N.D. Ill. Aug. 5, 2016).

B. The Second, Seventh, and Eleventh Circuits

hold that characters warrant copyright

protection to the extent that they are distinctive

from mere stock characters.

The Second, Seventh, and Eleventh Circuits apply

a standard to character copyright that follows Feist’s

originality standard.

Their standard originates with Judge Learned Hand,

writing for the Second Circuit. In Nichols v. Universal

Pictures Corp., 45 F.2d 119 (2d Cir. 1930), Judge Hand

hypothesized that two plays, “quite independently of

the ‘plot’ proper,” may correspond closely enough “as to

the characters” to constitute infringement: “If Twelfth

Night were copyrighted, it is quite possible that a second

comer might so closely imitate Sir Toby Belch or Malvolio

as to infringe.” Id. at 121. However, “it would not be

enough” to constitute infringement “that for one of his

characters he cast a riotous knight who kept wassail to

the discomfort of the household, or a vain and foppish

steward who became amorous of his mistress.” Id. That

would copy only the ideas behind those characters. “It

follows that the less developed the characters, the less

they can be copyrighted; that is the penalty an author

must bear for marking them too indistinctly.” Id.; see also

Detective Comics v. Bruns Publ’ns, 111 F.2d 432, 433 (2d

Cir. 1940) (defendant’s “Wonderman” comics infringed on

the plaintiff’s “Superman” comics; because the plaintiff’s

Superman character “involves more than the presentation

of a general type he may copyright it”).

Judge Posner addressed character copyrightability

on behalf of the Seventh Circuit in Gaiman, 360 F.3d 644.

Citing Nichols, the Seventh Circuit adopted the Second

Circuit’s approach: a character attains copyright protection

by being “distinctive” from a generic “stock character,”

and to the extent that it is distinctive. Gaiman, 360 F.3d at

659–61. Gaiman says one “could not copyright a character

described merely as an unexpectedly knowledgeable old

wino.” Id. at 660. But give that character “a specific name

and a specific appearance,” and the result is different. Id.

For example, regarding a certain comic book character,

Gaiman holds that his “age, obviously phony title (‘Count’),

what he knows and says, his name, and his faintly Mosaic

facial features combine to create a distinctive character.

No more is required for a character copyright.” Id. at 660

(emphasis added).9

The Eleventh Circuit has cited Nichols and adopted

this same standard. See Herzog v. Castle Rock Ent., 193

F.3d 1241, 1258–59 (11th Cir. 1999) (citing Nichols, 45 F.2d

119, and holding that the characters at issue are similar

only with respect to an “uncopyrightable idea”).10 Under

the rule of these decisions, characters obtain copyright

9. See also Silverman v. CBS Inc., 870 F.2d 40, 49–50 (2d Cir.

1989) (“Amos ‘n’ Andy” “were sufficiently delineated in the pre-1948

radio scripts” to be recognized by copyright law); Klinger v. Conan

Doyle Estate, Ltd., 755 F.3d 496, 503 (7th Cir. 2014) (“Holmes and

Watson were distinctive characters” and “therefore copyrightable.”).

10. In its decision, pre-Towle, on the issue of character

decision in Silverman, 870 F.2d 40, and the Seventh Circuit’s

decision in Gaiman, 360 F.3d 644—but also cited and relied on the

Ninth Circuit’s decision in Rice, 330 F.3d 1170, for its “consistency”

requirement. See Warner Bros. Ent., Inc. v. X One X Prods., 644

F.3d 584, 597–602 (8th Cir. 2011). It is unclear what approach the

Eighth Circuit would take now.

protection if “sufficiently delineated”—beyond mere stock

characters.

In addition to distinguishing the original from the

derivative, these decisions map the boundary between

unprotected ideas and protected expression. See 17 U.S.C.

§ 102(b) (copyright protection does not extend to ideas).

“[C]opyrights protect ‘expression’ but not the ‘ideas’ that

lie behind it.” Google LLC v. Oracle Am., Inc., 593 U.S.

1, 18 (2021). A stock character is an idea; an author’s

additional, individual delineation is the expression that

Remake Eleanor easily satisfies this standard. She

is not a stock car. No car from before the Gone in 60

Seconds remake possesses her unique combination of

physical features; no car from before the remake possesses

her unique combination of character traits. See pp. 2–3,

supra. She manifests the “modicum of creativity,” and

then some, that Feist requires for copyright protection.

Feist, 499 U.S. at 345.

The Court should adopt the distinctiveness

test.

This split between the Circuit Courts of Appeal is

real, deep, and disruptive. The split leaves “the standard

for character copyrightability fractured.” Caitlin E. Oh,

Inside Out, Upside Down: Circuit Court Confusion Over

Character Copyrightability, 72 Emory L. J. 629, 634

(2023) (Oh).11 “[N]ew content is constantly uploaded” to the

11. See also Zahr K. Said, Fixing Copyright in Characters:

Literary Perspectives on a Legal Problem, 35 Cardozo L. Rev. 768,

783–87 (2013) (lamenting this Circuit split).

internet, much of it including novel, original characters.

Id. But “disparate and heightened standards for an author

to achieve copyright protection may leave an immense

amount of work unprotected.” Id. at 634–35.

Because of the Circuit split, the outcome of a character

original character embodying a modicum of creativity

is protected by copyright in the Second, Seventh, and

Eleventh Circuits. It is not protected in the Ninth Circuit

unless it also possesses anthropomorphic qualities and

crosses arbitrary thresholds of consistency and especial

distinctiveness.

character copyrightability.” Oh, supra, at 635. Feist tells

us that copyright protects what is original: the result

of “independent creation plus a modicum of creativity.”

Feist, 499 U.S. at 345–46. The distinctiveness test makes

character copyright follow the originality standard. The

Ninth Circuit’s Towle test does not. The Court should

resolve the split and adopt the distinctiveness test.

CONCLUSION

For the foregoing reasons, petitioners respectfully

submit that the petition for writ of certiorari should be

granted.

Respectfully submitted,

David L. Brandon

Clark Hill LLP

555 Flower Street,

24th Floor

Los Angeles, CA 90071

Timothy T. Coates

Counsel of Record

Gary J. Wax

Stefan C. Love

Greines, Martin, Stein

& Richland LLP

6420 Wilshire Boulevard,

Suite 1100

Los Angeles, CA 90048

(310) 859-7811

tcoates@gmsr.com

Counsel for Petitioners

Denice Shakarian Halicki, et al.

APPENDIX

TABLE OF APPENDICES

Page

APPENDIX A — OPINION OF THE UNITED

STATES COURT OF APPEALS FOR THE

NINTH CIRCUIT, FILED MAY 27, 2025 . . . . . . . 1a

APPENDIX B — ORDER OF THE UNITED

STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA,

FILED NOVEMBER 29, 2022 . . . . . . . . . . . . . . . . 21a

APPENDIX C — BENCH VERDICT OF THE

UNITED STATES DISTRICT COURT FOR

THE CENTRAL DISTRICT OF CALIFORNIA,

FILED OCTOBER 31, 2023 . . . . . . . . . . . . . . . . . . . 73a

APPENDIX D — JUDGMENT OF THE UNITED

STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA,

FILED OCTOBER 31, 2023 . . . . . . . . . . . . . . . . . . 141a

A PPEN DI X E — OR DER OF T H E

UNITED STATES COURT OF APPEALS

FOR T HE NIN T H CIRCU I T, FILED

JULY 11, 2025 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144a

Appendix

APPENDIX A — OPINION

OF THE

UNITED STATES

COURT OF APPEALS FOR THE NINTH CIRCUIT,

FILED MAY 27, 2025

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 23-3731

D.C. No. 8:20-cv-01344-MCS-DFM

CARROLL SHELBY LICENSING, INC.,

A CALIFORNIA CORPORATION;

CARROLL HALL SHELBY TRUST,

Plaintiff-ctr-defendants-Appellees,

DENICE SHAKARIAN HALICKI,

AN INDIVIDUAL; ELEANOR LICENSING, LLC,

A DELAWARE LIMITED LIABILITY COMPANY;

GONE IN 60 SECONDS MOTORSPORTS, LLC,

A DELAWARE LIMITED LIABILITY COMPANY,

Defendant-ctr-claimants-Appellants,

CLASSIC RECREATIONS, LLC;

JASON ENGEL; TONY ENGEL; SPEEDKORE

PERFORMANCE GROUP, LLC,

Counter-defendants-Appellees.

Appendix A

No. 23-4008

D.C. No. 8:20-cv-01344-MCS-DFM

CARROLL SHELBY LICENSING, INC.;

CARROLL HALL SHELBY TRUST,

Plaintiff-ctr-defendants-Appellants,

DENICE SHAKARIAN HALICKI;

ELEANOR LICENSING, LLC; GONE IN

60 SECONDS MOTORSPORTS, LLC,

Defendant-ctr-claimants-Appellees,

CLASSIC RECREATIONS, LLC; JASON ENGEL;

SPEEDKORE PERFORMANCE GROUP, LLC;

TONY ENGEL,

Counter-defendants-Appellees.

Appeal from the United States District Court for the

Central District of California

Mark C. Scarsi, District Judge, Presiding

Argued and Submitted March 24, 2025,

Pasadena, California

Filed May 27, 2025

Appendix A

OPINION

KERNODLE, District Judge:

The central question in this case is whether “Eleanor”

is a copyrightable character. Eleanor is a collection of Ford

Mustangs featured across four films, most recently in

Gone in 60 Seconds (2000). Appellants argue that Eleanor

is copyrightable under this Court’s test for independent

character copyright protection. See DC Comics v. Towle,

802 F.3d 1012, 1021 (9th Cir. 2015).

But Appellants’ argument stalls at the starting line:

we hold that Eleanor is not a character, much less a

copyrightable one. As explained below, we affirm in part

and reverse in part.

Background

The Films

At the heart of this case are four films: Gone in 60

Seconds (1974), The Junkman (1982), Deadline Auto Theft

(1983), and the remake of Gone in 60 Seconds (2000). The

films feature several Ford Mustangs called “Eleanor.”

A summary of each film is helpful to the forthcoming

analysis.

In the original Gone in 60 Seconds, the film’s

protagonist and his team are tasked with stealing fortyeight types of cars. To discuss the targets discreetly, each

type of vehicle is assigned a common, feminine codename

Appendix A

such as “Donna” or “Karen.” One target, a yellow Fastback

Ford Mustang with black stripes, is designated “Eleanor.”

The protagonist encounters four “Eleanors” throughout

the film, stealing all of them and driving one in a climactic

police chase.

In a meta turn, The Junkman features a protagonist

who is the fictional director of Gone in 60 Seconds—a film

within the film. The plot involves the protagonist evading

an assassination attempt before the fictional premiere of

Gone in 60 Seconds. “Eleanor” is made to look like the

vehicle that the protagonist drove and severely damaged in

the climactic police chase in Gone in 60 Seconds. The side

of the car is painted with the message: “‘Eleanor’ from the

movie Gone in 60 Seconds,” and a pull quote exclaiming,

“The most hair raising chase scene ever filmed!”

Deadline Auto Theft recycles and repurposes footage

from the first two films in service of a slightly revised plot

of the original Gone in 60 Seconds. Accordingly, Eleanor’s

appearances are largely the same as in the original.

The Gone in 60 Seconds remake features a familiar

plot. The protagonist must steal fifty cars within a few

days to save his brother’s life from a gangster. Again, a

common, feminine codename is designated for each type

of car targeted. This time, “Eleanor” is the codename for

a Shelby GT-500 Ford Mustang. Two versions of Eleanor

appear in the film. The first is gray with black stripes and

is stolen by the protagonist and driven in a climactic police

chase. The second is rusty and stripped of paint, gifted to

the protagonist at the film’s conclusion.

Appendix A

B. Preceding Litigation

This case is not the beginning of the parties’

disagreement.1 Halicki owns the copyrights to the first

three films and the merchandising rights to Eleanor

as it appears in the remake film. After the remake’s

release in the early 2000s, Shelby licensed a custom car

shop to produce “GT-500E” Mustangs. Believing that

the car unlawfully copied Eleanor’s design, Halicki filed

suit against Shelby and the car shop for several claims,

including copyright infringement. Halicki and Shelby

ultimately settled the lawsuit in 2009.

The peace did not last. Shortly after the settlement,

Shelby licensed CR to produce “GT-500CR” Mustangs.

Halicki interpreted this as a violation of the settlement

agreement. Accordingly, Halicki contacted GT-500E

owners and auction houses to assert a copyright interest

in the vehicles, and also contacted CR to demand they

cease and desist in the production of GT-500CRs.

Shelby thereafter initiated this lawsuit, asserting

several claims against Halicki, including for breach

1. Appellants and Cross-Appellees are Denice Halicki and

her corporate entities Eleanor Licensing, LLC, and Gone in 60

Seconds Motorsports, LLC. For brevity, we collectively refer to

these parties as “Halicki.” Appellees and Cross-Appellants are

Carroll Shelby Licensing, Inc., and Carroll Hall Shelby Trust.

For brevity, we collectively refer to these parties as “Shelby.” The

remaining Appellees are Classic Recreations, LLC, and its sole

members Jason Engel and Tony Engel. For brevity, we collectively

refer to these parties as “CR.”

Appendix A

of the settlement agreement and declaratory relief.

Halicki brought counterclaims, including for copyright

infringement and breach of the settlement agreement.

Halicki also named CR as a third-party defendant

and asserted several claims, including for copyright

infringement.

Three holdings by the district court are relevant in

this appeal. First, in resolving cross motions for summary

judgment, the district court held that Eleanor was not

entitled to character copyright protection. Second, after

a bench trial, the district court dismissed Halicki’s breach

of contract claim against Shelby based on the settlement

agreement. Third, also after a bench trial, the district

court denied Shelby’s request for a declaration that the

GT-500CR does not infringe any of Halicki’s rights.

We affirm on all grounds except as to the denial of

declaratory relief, which we reverse and remand for

further proceedings.

II. Character Copyrightability

We begin with the question of whether Eleanor is

entitled to character copyright protection. 2 We review

questions of character copyrightability de novo. Towle, 802

2. Another panel of this court previously suggested that

Eleanor could be a character entitled to copyright protection. See

Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213,

1225 (9th Cir. 2008). But this was dicta. The court acknowledged it

was a “fact-intensive issue [that] must be remanded to the District

Court” to address in the first instance. Id.

Appendix A

F.3d at 1019. However, because “the district court here

addressed this question in detail, we consider its factual

findings in analyzing this issue.” Id. at 1021.

Towle Test

Federal copyright law enumerates several categories

of protected subject matter, such as literary works, motion

pictures, and more. See 17 U.S.C. § 102(a). Although the

statute is silent as to the protection of the characters

within these enumerated works, “there is a long history

of extending copyright protection to graphically-depicted

characters.” Daniels v. Walt Disney Co., 958 F.3d 767,

771 (9th Cir. 2020). But “not every comic book, television,

or motion picture character is entitled to copyright

protection.” Id. (quoting Towle, 802 F.3d at 1021) (cleaned

up).

In Towle, we established a test to determine whether

a character is entitled to copyright protection: (1) the

character must have “physical as well as conceptual

qualities,” (2) the character must be “sufficiently

delineated to be recognizable as the same character

whenever it appears” and display “consistent, identifiable

character traits and attributes,” and (3) the character

must be “especially distinctive” and contain “some unique

elements of expression.” Daniels, 958 F.3d at 771 (quoting

Towle, 802 F.3d at 1021) (cleaned up).

As we explain below, Eleanor fails at each prong of

the Towle test. Accordingly, Eleanor is not entitled to

character copyright protection.

Appendix A

B. Application of the Towle Test to Eleanor

1. We first ask whether Eleanor is a character

with “physical as well as conceptual qualities.” Id. Our

precedent has primarily focused on “physical” qualities.

See, e.g., id. (finding that characters satisfie prong one

of Towle “[b]ecause they have physical qualities . . . [and

thus] are not mere literary characters”); Towle, 802 F.3d

at 1021 (finding the Batmobile satisfied prong one because

it “appeared graphically in comic books, and as a threedimensional car in television series and motion pictures,

. . . and is thus not a mere literary character”); Walt

Disney Producs. v. Air Pirates, 581 F.2d 751, 755 (9th

Cir. 1978) (explaining the importance of “a visual image”

for character copyrightability).

But equally important are the “conceptual” qualities

that all characters inherently possess. These include

anthropomorphic qualities, acting with agency and

volition, displaying sentience and emotion, expressing

personality, speaking, thinking, or interacting with other

characters or objects. See Daniels, 958 F.3d at 770-71

(finding “anthropomorphic emotions” to be characters

that satisfy prong one); Moonbug Entm’t Ltd. v. BabyBus

(Fujian) Network Tech. Co., Ltd., 2023 U.S. Dist. LEXIS

242005, 2023 WL 11922845, at *7 (N.D. Cal. Mar. 7, 2023)

(listing as “conceptual elements” of a character: feeling

emotion, acting with agency, talking, moving, interacting

with objects, and thinking); Daniels v. Walt Disney Co.,

2018 U.S. Dist. LEXIS 252110, 2018 WL 4849700, at

*6 (C.D. Cal. Jan. 31, 2018) (listing as character traits:

speaking, interacting with other characters, acting with

Appendix A

agency, and personality), aff’d, 958 F.3d 767 (9th Cir. 2020);

Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206,

1216 (C.D. Cal. 1998) (noting the morality, sentience, and

actions of Godzilla’s character); Metro-Goldwyn-Mayer,

Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1296 (C.D.

Cal. 1995) (noting the particular personality, emotions,

and behaviors of James Bond’s character).

Of course, these conceptual qualities are by no means

limited to human characters. Animals, objects, or even

anthropomorphized emotions may possess the conceptual

qualities of a character. See, e.g., Air Pirates, 581 F.2d

at 753 & n.5, 755 (finding several animal characters

“endowed with human qualities” to be copyrightable,

including “Mickey and Minnie Mouse, Donald Duck, the

Big Bad Wolf, the Three Little Pigs, and Goofy”); Toho,

33 F. Supp. 2d at 1215 (finding Godzilla is a copyrightable

character); Towle, 802 F.3d at 1022 (finding the Batmobile

is a copyrightable character); Daniels, 958 F.3d at 770-71

(noting “anthropomorphic emotions” were characters).

Indeed, we have found a car to be a copyrightable character

where it expressed personality and a demonstrated level

of autonomy. 3 Towle, 802 F.3d at 1022 (describing the

Batmobile as “loyal” to Batman); id. at 1021 (describing

the Batmobile as “waiting like an impatient steed straining

at the reins shivering as its super-charged motor throbs

with energy before it tears after the fleeing hoodlums”

3. We noted in Towle that a character can still be protectable

even if it “lacks sentient attributes and does not speak (like a car).”

802 F.3d at 1021. This remains true. Sentience and the ability

to talk are just two of many conceptual qualities of a character

already discussed.

10a

Appendix A

(cleaned up)); see also Brief of 20 Professors of Law and

Public Knowledge as Amici Curiae Supporting Appellants,

at 15 (explaining that the Batmobile is “an autonomousdriving car with substantial intelligence—for example,

politely stopping for passing children while driving itself

“ to Batman’s aid).

Eleanor, however, lacks any such conceptual qualities.

Indeed, Eleanor has no anthropomorphic traits. The car

never acts with agency or volition; rather, it is always

driven by the film’s protagonists. Eleanor expresses no

sentience, emotion, or personality. 4 Nor does Eleanor

speak, think, or otherwise engage or interact with the

films’ protagonists. Instead, Eleanor is just one of many

named cars in the films. In this way, Eleanor is more akin

to a prop than a character. Accordingly, Eleanor fails at

prong one of the Towle test. 5

4 . Ha l ick i sugge st s t h at Ele a nor do e s h ave some

anthropomorphic qualities. For example, Halicki notes that in

the remake, “Eleanor’s engine sputters and dies—suggesting

possible jealousy, because [the protagonist’s] girlfriend is in

the car.” But this is pure speculation. Halicki is referring to the

Eleanor gifted to the protagonist at the end of the remake. This

version of Eleanor was rusty, old, and in clear need of maintenance

work. A reasonable viewer attributes the breakdown to the car’s

poor condition, not Eleanor’s feelings.

5. Halicki briefly argues that Eleanor as it appears only in

the remake is also independently copyrightable under Towle. But

Halicki cites no case where a character appeared in multiple works,

and a court found the character to be copyrightability based on

only a limited subset of those works. And our precedent suggests

that if a character appears in multiple works, we consider all

such works. See Daniels, 958 F.3d at 770, 773 (considering “every

11a

Appendix A

2. Turning to prong two of Towle, we ask whether

Eleanor is “sufficiently delineated to be recognizable as

the same character whenever it appears” and “display[s]

consistent, identifiable character traits and attributes.”

Daniels, 958 F.3d at 771 (quoting Towle, 802 F.3d at 1021).

“Although a character that has appeared in multiple

productions or iterations ‘need not have a consistent

appearance,’ it ‘must display consistent, identifiable

character traits and attributes’ such that it is recognizable

whenever it appears.” Id. (quoting Towle, 802 F.3d at 1021).

“By contrast, a character that lacks a core set of consistent

and identifiable character traits and attributes is not

protectable, because that character is not immediately

recognizable as the same character whenever it appears.”

Id. Indeed, the “key” analysis is the “persistence” of those

core traits. Towle, 802 F.3d at 1020.

Here too, Eleanor fails. Across four films and eleven

iterations in those films, Eleanor lacks consistent traits.

For example, Eleanor’s physical appearance changes

frequently throughout the various films, appearing

as a yellow and black Fastback Mustang, a gray and

black Shelby GT-500 Mustang, and a rusty, paintless

Mustang in need of repair. Indeed, the latter Eleanors

are unrecognizable until introduced as Eleanor by the

protagonists. Halicki’s proffered Eleanor traits, moreover,

iteration” of the Moodsters including a pitchbook, a television

episode, and a line of toys and books); Towle, 802 F.3d at 1016

(considering the Batmobile “since its creation,” including in comic

books, TV shows, and films). In any event, for the same reasons

already discussed, “remake Eleanor” similarly fails prong one of

Towle and is not entitled to copyright protection.

12a

Appendix A

only serve to further highlight Eleanor’s inconsistencies.

Halicki claims Eleanor is always “incurring severe

damage” and is “hard to steal.” But fewer than half of

the Eleanors ever appear damaged at all, and the damage

ranges from body damage incurred by a police chase, to

cosmetic damage, to being entirely shredded for scrap.

And of the Eleanors stolen by the films’ protagonists,

most were stolen with little difficulty. Halicki also claims

that Eleanor is “good at evading police” and “surviving

spectacular jumps.” But these traits are more readily

attributable to the films’ protagonists driving the cars,

not to Eleanor. In sum, Eleanor is too “lightly sketched”

to satisfy prong two of the Towle test. See Daniels, 958

F.3d at 771.

3. Finally, under prong three of Towle, we consider

whether Eleanor is “especially distinctive” and “contain[s]

some unique elements of expression.” Id. at 773 (quoting

Towle, 802 F.3d at 1021). To meet prong three, a character

“cannot be a stock character such as a magician in

standard magician garb.” Towle, 802 F.3d at 1021. Nor

is a character especially distinctive if it “fit[s] general,

stereotypical categories” like “an older scholar,” a “loyal

friend,” or a “military leader.” McCormick v. Sony

Pictures Entm’t, 2009 U.S. Dist. LEXIS 155611, 2009 WL

10672263, at *14 (C.D. Cal. July 20, 2009), aff’d, 411 Fed.

App’x 122 (9th Cir. 2011).

Eleanor is not especially distinctive. Nothing

distinguishes Eleanor from any number of sports cars

appearing in car-centric action films. Cf. Towle, 802 F.3d

at 1021-22 (highlighting the Batmobile’s distinct “bat-like

13a

Appendix A

appearance,” “jet engines and flame-shooting tubes,”

and “ability to maneuver that far exceeds that of an

ordinary car”). Nor is the name Eleanor unique; rather,

it is a common female name—the normalcy of which was

the entire point of codenaming vehicles in the films. Cf.

id. at 1022 (noting the Batmobile’s “unique and highly

recognizable name”). Eleanor is a “stock” sports car and

fails prong three of Towle. See id. at 1021.

***

In sum, Eleanor is not really a character. And even

if Eleanor were a character, it is not entitled to copyright

protection under Towle. Accordingly, we AFFIRM the

judgment of the district court that Eleanor is not entitled

to character copyright protection.6

III. Settlement Agreement

We next consider Halicki’s claim that by licensing

the GT-500CR, Shelby violated the parties’ settlement

agreement. Contract interpretation is a question of law

that we review de novo. Schertzer v. Bank of Am., NA, 109

F.4th 1200, 1208 (9th Cir. 2024).

California contract law controls here. A contract’s

language governs its interpretation so long as it is clear,

explicit, and does not involve an absurdity. Cal. Civ.

6. The parties raise additional issues that are contingent

upon a finding that Eleanor is a copyrightable character. Because

Eleanor is not copyrightable, we need not reach these issues.

14a

Appendix A

Code § 1638. California law provides several principles

of contract interpretation to guide a court’s analysis:

(1) terms receive their ordinary and popular meaning

unless a technical or special meaning should apply; (2) an

interpretation giving effect to all provisions is favored over

an interpretation rendering some provisions superfluous;

(3) contracts should be read as a whole; and (4) absurd

interpretations should be avoided. Schertzer, 109 F.4th

at 1208-11.

Under California law, courts also consider extrinsic

evidence if it supports a proffered interpretation of

a disputed term. Id. at 1212. Extrinsic evidence is

admissible if “the offered evidence is relevant to prove

a meaning to which the language of the instrument is

reasonably susceptible.” Id. (quoting Dore v. Arnold

Worldwide, Inc., 39 Cal. 4th 384, 391, 46 Cal. Rptr. 3d

668, 139 P.3d 56 (2006)).

The dispositive issue here is whether the settlement

agreement prohibits Shelby from manufacturing or

licensing cars copying (1) any of Eleanor’s distinctive

features or (2) only Eleanor’s distinctive hood and inset

lights. The district court held that the latter interpretation

was correct. We agree.

A natural reading of the settlement agreement

supports this interpretation. Section 4 of the agreement

prohibits Shelby from manufacturing or licensing the

“exaggerated, raised hump feature of the Eleanor hood”

or the “specific design of the Eleanor small dual headlights

[‘Eleanor inset lights’].” This is the only provision

15a

Appendix A

prohibiting Shelby from copying any specific Eleanor

features. Because the text means what it says, we find

the settlement agreement prohibits Shelby from copying

only Eleanor’s distinct hood and inset lights.

We are unpersuaded by Halicki’s counterargument,

which attempts to rewrite the settlement agreement and

broaden the prohibition to include additional distinct

Eleanor features. To do so, Halicki draws on §§ 8 and 17

of the agreement.

Halicki first cherry-picks § 8’s use of the term “Eleanor.”

Section 8 of the agreement is an acknowledgement by

Shelby that Halicki may continue to license “Eleanors.”

Both parties agreed not to file suit against each other, and

Shelby specifically agreed not to sue Halicki for licensing

“Eleanors . . . as embodied in the photograph attached”

to the agreement—a photograph that includes a list of

eleven distinct Eleanor features. The term “Eleanor,”

Halicki argues, must be interpreted to include that list of

features every time it is used throughout the agreement—

including § 17.

Halicki then relies on § 17 of the agreement. Section

17 is a narrow provision explaining how Shelby was to

finish fulfilling its pre-existing “Eleanor contracts” with

outstanding customers. It required Shelby to use its “best

efforts to convince the customers to choose a different

car that doesn’t have the Eleanor hood and Eleanor inset

lights,” as prohibited by § 4. Halicki argues that § 17

creates two paths for these customers: (1) the customer

is not persuaded by Shelby—therefore they receive a car

16a

Appendix A

with all Eleanor features including the hood and inset

lights; or (2) the customer is persuaded by Shelby—

therefore they receive a car with all distinctive Eleanor

features except the hood and inset lights.

Having set up this false dichotomy, Halicki proceeds

to another sentence in § 17 to complete the interpretive

maneuver. Section 17 states: “Other than as set forth above,

Shelby . . . shall not manufacture or sell any Eleanors.”

The phrase “as set forth above,” Halicki argues, refers to

both “Eleanors” in the two paths above; that is, Shelby is

prohibited from manufacturing cars mimicking (1) all of

Eleanor’s distinctive features including the Eleanor hood

and lights; and (2) all of Eleanor’s distinctive features

other than the hood and lights. The effect of Halicki’s

interpretation, then, is that the agreement prohibits

Shelby from producing cars copying any of Eleanor’s

distinctive features, not just the hood and lights.

We will not adopt this expansive reading of the

settlement agreement. Halicki’s use of § 8 to define

“Eleanor” in the agreement is unavailing. The parties

knew how to define terms because they did so in § 1.

They did not do so for “Eleanor.” And this makes sense

because “Eleanor” is used in different ways throughout

the agreement, including as a character, a trademark, an

idea embodied in appended photographs, and a type of

contract. As such, the use of “Eleanor” in § 17 should be

interpreted within the context it is used. And § 17 makes

clear in context that “Eleanor” refers to a car with the

prohibited Eleanor hood or inset lights.

17a

Appendix A

Halicki’s reading of § 17, moreover, suffers from several

problems. First, Halicki’s interpretation relies on a flawed

assumption: that customers who “choose a different car”

simply redesign their cars to exclude the Eleanor hood

and inset lights but retain all other distinctive Eleanor

features. But the text makes no such assumption, and we

decline to read it into the agreement. See Cal. Civ. Proc.

Code § 1858 (explaining that when interpreting contracts,

judges are “simply to ascertain and declare” its meaning,

“not to insert what has been omitted, or to omit what has

been inserted”). Second, Halicki’s interpretation renders

§ 4 superfluous. If § 17 prohibits Shelby from making cars

copying any of Eleanor’s distinctive features, then § 4’s

specific prohibition regarding Eleanor’s hood and inset

lights need not exist. See Schertzer, 109 F.4th at 1209

(“An interpretation which gives effect to all provisions

of the contract is preferred to one which renders part of

the writing superfluous, useless or inexplicable.” (quoting

Carson v. Mercury Ins. Co., 210 Cal. App. 4th 409, 420,

148 Cal. Rptr. 3d 518 (2012))). Third, and in the same vein,

Halicki’s interpretation foregoes common sense. Why

would the parties explicitly prohibit Shelby from copying

the Eleanor hood and inset lights in § 4 only to bury a far

broader prohibition deep within § 17? Halicki cannot say.

Finally, Halicki offers extrinsic evidence that the

settlement agreement was meant to create “permanent

peace” and “completely resolve” the parties’ Eleanor

issue. But we need not consider such evidence as it sheds

no light on the agreement’s meaning. See Schertzer, 109

F.4th at 1212 (explaining “we consider extrinsic evidence if

it supports a proffered interpretation” (emphasis added)).

18a

Appendix A

And it is rather unremarkable given that every settlement

agreement is meant to create lasting peace.

Accordingly, we AFFIRM the judgment of the district

court that Halicki fails to establish a breach of contract

claim against Shelby based on the settlement agreement.

IV. Declaratory Relief

Finally, we consider Shelby’s cross appeal seeking

a declaration that the GT-500CR does not infringe any

of Halicki’s rights. After a bench trial, the district court

denied Shelby’s requested declaratory relief.

We begin by addressing the appropriate standard

of review on appeal. This Court’s precedent is difficult

to square. One line of cases says to review the denial of

declaratory relief de novo. See Oregon Coast Scenic R.R.,

LLC v. Oregon Dep’t of State Lands, 841 F.3d 1069, 1072

(9th Cir. 2016); United States v. Washington, 759 F.2d

1353, 1356-57 (9th Cir. 1985) (en banc). Other cases say

we review for abuse of discretion. See Rigsby v. GoDaddy

Inc., 59 F.4th 998, 1010 (9th Cir. 2023); Arizona v. City of

Tucson, 761 F.3d 1005, 1009-10 (9th Cir. 2014).

We apply a de novo standard here for two reasons.

First, the parties agree it is the proper standard. Second,

it appears that our precedent applying an abuse of

discretion standard may have been an error.7

7. To begin with, Rigsby cites Arizona to establish that

an abuse of discretion standard applies. Then, Arizona cites

19a

Appendix A

Here, review ing the district court’s denial of

declaratory relief de novo, we reverse and remand. The

Declaratory Judgment Act permits “any court” to “declare

the rights and other legal relations of any interested party

seeking such declaration.” 28 U.S.C. § 2201(a). Declaratory

relief is appropriate “(1) when the judgment will serve a

useful purpose in clarifying and settling the legal relations

in issue, and (2) when it will terminate and afford relief

from the uncertainty, insecurity, and controversy giving

rise to the proceeding.” Small v. Allianz Life Ins. Co. of N.

Am., 122 F.4th 1182, 1201 (9th Cir. 2024) (quoting Guerra

v. Sutton, 783 F.2d 1371, 1376 (9th Cir. 1986)).

This standard is met here. First, a declaration will

clarify and settle the legal relations at issue between

Shelby and Halicki. Indeed, the briefing makes clear that

the parties disagree as to which claims remain unresolved

after the district court proceedings. Second, a declaration

will afford Shelby relief from the uncertainty giving rise

to this proceeding. For example, Halicki issued a press

release following the district court’s bench verdict making

it appear that she will likely continue to hassle Shelby

going forward based on the denial of declaratory relief.

Halicki, moreover, has a history of mischaracterizing this

Court’s opinions.

Having determined Shelby is entitled to declaratory

relief, we offer brief guidance on the proper scope. Shelby

California Ass’n of Rural Health Clinics v. Douglas, 738 F.3d

1007 (9th Cir. 2013). The problem, however, is that Douglas clearly

states that we “review de novo a grant of declaratory relief.”

Douglas, 738 F.3d at 1011. Accordingly, Arizona’s citation to

Douglas appears to be an error.

20a

Appendix A

is entitled to a declaration that is consistent with what

has been adjudicated in this case. Accordingly, it would

seem appropriate to declare that the GT-500CR does

not infringe on Halicki’s copyright interests in Eleanor

or contractual rights under the settlement agreement.

In considering the latter, the district court denied relief

because Shelby failed to prevail on its own breach of

contract claim. But that conflated Shelby’s affirmative

breach of contract claim (arguing that Halicki breached

the settlement agreement) with its declaratory relief claim

(seeking a declaration that Shelby did not breach the

settlement agreement). Finally, we would also be inclined

to grant Shelby’s request for declarative relief as to the

trademark and trade dress rights for the reasons stated

in Shelby’s briefing.

Sensitive to the fact-intensive nature of declaratory

relief, however, we conclude that it is appropriate to remand

the issue for full consideration by the district court in the

first instance. Accordingly, we REVERSE the district

court’s denial of declaratory relief and REMAND for the

narrow purpose of issuing the appropriate declaration.

V. Conclusion

We REVERSE and REMAND only as to the district

court’s denial of declaratory relief to Shelby. We AFFIRM

on all other grounds.

21a

Appendix

B UNITED STATES

APPENDIX B — ORDER

OF THE

DISTRICT COURT FOR THE CENTRAL DISTRICT

OF CALIFORNIA, FILED NOVEMBER 29, 2022

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

Case No. 8:20-cv-01344-MCS-DFM

CARROLL SHELBY LICENSING, INC. et al.,

Plaintiffs,

DENICE SHAKARIAN HALICKI et al.,

Defendants.

AND RELATED COUNTERCLAIMS.

Filed November 29, 2022

ORDER RE: MOTIONS FOR SUMMARY

JUDGMENT (ECF NOS. 287, 290-91, 294, 296)

(PROVISIONALLY FILED UNDER SEAL)

Carroll Shelby Licensing, Inc. and Carroll Hall

Shelby Trust (collectively, “Shelby Parties”); Denice

Shakarian Halicki, Eleanor Licensing, LLC, and Gone

in 60 Seconds Motorsports, LLC (collectively, “Halicki

Parties”); and Classic Recreations, LLC, Jason Engel,

and Tony Engel (collectively, “CR Parties”) separately

22a

Appendix B

move for summary judgment on an issue central to this

case: whether “Eleanor,” the designation used to refer

to a series of automobiles across four feature films, is a

character subject to copyright protection. (Shelby CMSJ,

ECF No. 287; Halicki CMSJ, ECF No. 294; CR CMSJ,

ECF No. 291.) The motions are fully briefed.

The Shelby Parties and Halicki Parties also filed

motions for partial summary judgment concerning other

issues. (Shelby MPSJ, ECF No. 296; Halicki MPSJ, ECF

No. 290.) These motions are also fully briefed.

The Court heard oral argument on the motions on June

13, 2022. (Mins., ECF No. 328.) Based on the discussion at

oral argument and arguments in the papers concerning

ownership of the intellectual property interests at issue,

the Court ordered the joinder of Hollywood Pictures

and denied the motions without prejudice to renewal on

July 1, 2022. (Order Requiring Joinder, ECF No. 336.)

On August 7, 2022, after Hollywood Pictures submitted

additional information, the Court vacated the joinder

order, reopened the motions, and took the motions under

submission. (Order Vacating Joinder Order, ECF No. 345.)

BACKGROUND

This case concerns the 1974 film Gone in 60 Seconds,

the 1982 film The Junkman, the 1983 film Deadline Auto

Theft, and the 2000 remake of Gone in 60 Seconds.1 All

1. For disambiguation, the Court refers to the 2000 film as

the remake.

23a

Appendix B

four films feature Ford Mustang cars given the designation

“Eleanor.” The Halicki Parties own the copyrights to the

first three films (the “trilogy”), and the Court assumes for

the purpose of this Order that they own any intellectual

property rights and interests in Eleanor as it2 appears in

the remake. Over a decade ago, the Halicki Parties and

related entities initiated litigation against the Shelby

Parties and related entities, 3 claiming that the Shelby

Parties were licensing improperly obtained trademarks

relating to Eleanor for manufacture of imitation vehicles

labeled GT500E. After years of litigation, including a

trip to the circuit court and back, the parties entered a

settlement agreement purporting to resolve the dispute.

The détente did not last. Under license from the

Shelby Parties, the CR Parties make a series of cars

with the designation GT500CR that the Halicki Parties

claim infringes their rights in the Eleanor character. The

Halicki Parties demanded that the CR Parties cease and

desist, and they also began contacting GT500E owners

and an auction house to assert their purported intellectual

property interests in those vehicles and effectively

prevent their resale. The Shelby Parties initiated this suit

thereafter, claiming, inter alia, that the Halicki Parties’

conduct breaches the settlement agreement. The Halicki

2. The Court uses gender-neutral pronouns for Eleanor in

this Order. See Chicago Manual of Style § 8.118 (17th ed. 2017).

3. W hich particular entities were party to the prior

proceedings is immaterial to the parties’ arguments and the

Court’s analysis. For ease of reference, the Court refers to the

parties to the previous litigation as the Shelby Parties and the

Halicki Parties.

24a

Appendix B

Parties maintain counterclaims against the Shelby Parties

and CR Parties for, inter alia, copyright infringement and

breach of the settlement agreement.

II. LEGAL STANDARD

Summary judgment is appropriate where there is

no genuine issue of material fact and the moving party

is entitled to judgment as a matter of law. Fed. R. Civ. P.

56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct.

2548, 91 L. Ed. 2d 265 (1986). A fact is material when,

under the governing law, the resolution of that fact might

affect the outcome of the case. Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202

(1986). A dispute is genuine “if the evidence is such that a

reasonable jury could return a verdict for the nonmoving

party.” Id. The burden of establishing the absence of a

genuine issue of material fact lies with the moving party,

see Celotex, 477 U.S. at 322-23, and the court must view

the facts and draw reasonable inferences in the light most

favorable to the nonmoving party, Scott v. Harris, 550

U.S. 372, 378, 127 S. Ct. 1769, 167 L. Ed. 2d 686 (2007).

To meet its burden,

[t]he moving party may produce evidence

negating an essential element of the nonmoving

party’s case, or, after suitable discovery, the

moving party may show that the nonmoving

party does not have enough evidence of an

essential element of its claim or defense to carry

its ultimate burden of persuasion at trial.

25a

Appendix B

Nissan Fire & Marine Ins. Co., Ltd. v. Fritz Cos., Inc.,

210 F.3d 1099, 1106 (9th Cir. 2000). Once the moving party

satisfies its burden, the nonmoving party cannot simply

rest on the pleadings or argue that any disagreement

or “metaphysical doubt” about a material issue of fact

precludes summary judgment. Matsushita Elec. Indus.

Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106

S. Ct. 1348, 89 L. Ed. 2d 538 (1986). There is no genuine

issue for trial where the record taken as a whole could

not lead a rational trier of fact to find for the nonmoving

party. Id. at 587.

III. DISCUSSION

Evidentiary Issues

The Halicki Parties submitted requests for judicial

notice of certain documents. (RJN ISO Halicki MPSJ,

ECF No. 290-5; RJN ISO Halicki Opp’ns, ECF Nos.

300-32, 301-32, 302-32.) The Shelby Parties objected to

judicial notice of some of the documents on the basis of

relevance. (Shelby Objs. to RJN ISO Halicki Opp’ns, ECF

No. 324-1.) The Halicki Parties do not explain why the

documents are judicially noticeable and which adjudicative

facts they seek to extract from them. The Halicki Parties

appear to rely on some of these documents, including

judicial opinions and legal briefs, in support of their legal

rhetoric. (E.g., Halicki Opp’n to Shelby CMSJ 16, ECF

No. 300 (citing appeal briefs of which they requested

notice).) The Court has considered these documents for

those limited argumentative purposes, see Fed. R. Evid.

201 advisory committee’s note (discussing judicial use of

26a

Appendix B

nonadjudicative facts), but does not need to take judicial

notice of adjudicative facts in these documents to resolve

the motions. The requests are denied accordingly.

The parties submitted voluminous evidentiary

objections. (Halicki Objs. to Rhee Decl. ISO Shelby MSJs,

ECF Nos. 300-33, 302-33; Shelby Objs. to Halicki & Leone

Decls. ISO Halicki MSJs, ECF No. 308-1; Halicki Objs.

to Cummings Decl. ISO Shelby Opp’ns, ECF No. 314;

Halicki Objs. to Rhee Decl. ISO Shelby Opp’ns, ECF No.

315; Shelby Objs. to Halicki & Leone Decls. ISO Halicki

Opp’ns, 324-2.) The Court need not resolve many of the

objections to adjudicate these motions. See Burch v.

Regents of Univ. of Cal., 433 F. Supp. 2d 1110, 1118-19 (E.D.

Cal. 2006) (lamenting overuse of evidentiary objections in

motions for summary judgment). To the extent the Court

relies on objected-to evidence in this Order, the relevant

objections are overruled.

B. Copyrightability Claims

The parties dispute whether Eleanor is a character

subject to copyright protection.4 Long have the parties

4. As a threshold issue, the Halicki Parties assert that the

Shelby Parties should be estopped from contesting Eleanor’s

copyrightability because they agreed to transfer any copyright

in Eleanor to the Halicki Parties in the parties’ settlement

agreement. (E.g., Halicki CMSJ 20; Halicki Opp’n to Shelby CMSJ

18.) The Court rejects this argument for the same reasons the

Court has rejected it twice before: “contract law cannot resolve

a question that is reserved to federal copyright law.” (Order Re:

Mots. for Summ. J. 9, ECF No. 232 (citing Kabehie v. Zoland,

102 Cal. App. 4th 513, 523, 125 Cal. Rptr. 2d 721 (2002)); accord

27a

Appendix B

skirmished over this issue, but no court has definitively

resolved it. In one of the leading cases in this circuit on

character copyrightability, an appellate panel examining

the Eleanor character suggested that Eleanor might be

protectable but ultimately remanded “this fact-intensive

issue . . . to the District Court for a finding in the first

instance as to whether Eleanor is entitled to copyright

protection.” Halicki Films, LLC v. Sanderson Sales &

Mktg., 547 F.3d 1213, 1225 (9th Cir. 2008). The parties

settled the matter (or at least attempted to) before

the issue could be conclusively resolved on remand.

Unfortunately, this did not stop another Ninth Circuit

panel from reviewing Halicki Films, recharacterizing

its facts, and advancing a discussion of copyrightability

with the implied yet strong suggestion that Eleanor is

subject to protection. See DC Comics v. Towle, 802 F.3d

1012, 1019-20 (9th Cir. 2015). 5

Order Re: Mots. In Limine 8, ECF No. 256.) In any event, the

settlement agreement resolves questions of ownership of the

Eleanor intellectual property, not its validity. (See Settlement

Agreement §§ 1-2, ECF No. 289-6.) The Shelby Parties are not

estopped from taking a position on the validity of the property.

5. Curiously, the DC Comics panel concluded that “Eleanor’s

ability to consistently disrupt heists by her presence was more

pertinent to [their] analysis of whether the car should qualify as a

sufficiently distinctive character than Eleanor’s make and model.”

802 F.3d at 1020 (citing Halicki Films, 547 F.3d at 1225). But

neither Eleanor’s supposed heist-foiling presence nor its make and

model were discussed at much length in the Halicki Films panel’s

reasoning and, given the disposition of remand, what discussion

there was amounted to no more than dicta. 547 F.3d at 1225.

28a

Appendix B

Much of the Ninth Circuit panel’s commentary on the

copyrightability issue appears to have stemmed from an

unfortunate practice on the part of the Halicki Parties to

embellish facts in their briefing. Due to space limitations

or inadvertence, several of these exaggerations were left

unchallenged and made their way into court orders when

this matter was before prior judicial officers. From there,

factual inaccuracies made their way into a published Ninth

Circuit opinion that likely assumed the facts were true.

Unfortunately, they were not. For example, the Ninth

Circuit in Halicki Films stated that in the original and

remake Gone in 60 Seconds films, “thefts of the other

cars go largely as planned, but whenever the main human

character tries to steal Eleanor, circumstances invariably

become complicated.” 547 F.3d at 1225. The Halicki

Parties’ briefs parrot a similar conclusion. (Halicki CMSJ

6 (“All cars are ‘Gone in 60 Seconds’ (boosted) as planned,

but not Eleanor. . . .”).) This conclusion is plainly false. In

the original film, several vehicle heists take left turns,

as one thief is surprised by a live tiger in the back seat

of a vehicular mark, and others debate what to do after

discovering bricks of heroin in another stolen vehicle. In

the remake, one thief is surprised to discover a snake in a

vehicle with license plate SNAKE, the apparent owners of

one vehicle interrupt a heist by getting intimate in view of

the vehicle, and keys for three vehicles must be retrieved

from the bowels of a canine by feeding it laxatives. While

the Court recognizes the importance of zealous advocacy,

parties need always be mindful of their obligations to be

candid with the Court and to fulfill their obligations under

Rule 11(b).

29a

Appendix B

Accordingly, in connection with the copyrightability

motions, the Cou r t d ispenses w ith the pa r ties’

argumentative characterizations of the facts (and other

judicial officers’ recitations of them). Instead, the Court

has independently scrutinized the four feature films in

which Eleanor appears. See 17 U.S.C. § 102(a) (conferring

fixed in any tangible medium of expression”—that is, not

from commentary on such works); Walker v. Time Life

infringement cases the works themselves supersede and

control contrary descriptions of them. As the finally

released version of the film was the best and most relevant

evidence on substantial similarity, the judge was not

required to consider the voiceover version in deciding

the motion for summary judgment.”); cf. Litchfield v.

Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984) (engaging in

an “independent review of the works” on de novo review

of summary judgment on issue of substantial similarity,

noting limited usefulness of party’s proffered list of

similarities between copyrighted works as “inherently

subjective and unreliable”).6 Having done so, the Court

concludes as a matter of law that Eleanor is not subject

to copyright protection.7 The Ninth Circuit has adopted a

6. On this basis, the Court sustains the parties’ objections

to the portions of the Halicki, Leone, and Rhee declarations

characterizing facts about the films’ depictions.

7. To the extent the Court’s order resolving an earlier round

of summary judgment motion practice conflicts with this one,

the prior order (ECF No. 232) is abrogated. After the Court

resolved the prior motions, the Shelby Parties and Halicki Parties

convincingly argued that the question of copyrightability could be

30a

Appendix B

three-element test to resolve whether a character featured

in a work is independently copyrightable. 8 As stated by

the most recent Ninth Circuit panel to articulate the test:

Although characters are not an enumerated

copy r ightable subject matter under the

extending copyright protection to graphicallydepicted characters. However, not every comic

book, television, or motion picture character is

entitled to copyright protection. A character

is entitled to copyright protection if (1) the

character has physical as well as conceptual

qualities, (2) the character is sufficiently

delineated to be recognizable as the same

character whenever it appears and displays

consistent, identifiable character traits and

attributes, and (3) the character is especially

resolved in summary judgment proceedings because the Court

may determine the issue as a matter of law given the limited

and undisputed universe of works in which a car named Eleanor

appears. (See generally Apr. 18, 2022 Hr’g Tr. 15-47, ECF No.

284.) Cf. DC Comics, 802 F.3d at 1022-23 (“Neither party disputes

the relevant facts regarding the Batmobile here. Accordingly, we

are well-equipped to determine whether, as a matter of law, these

undisputed facts establish that the Batmobile is an ‘especially

distinctive’ character entitled to copyright protection.”).

8. Copyright protection also extends to characters under an

alternative “story being told” test. Daniels v. Walt Disney Co.,

958 F.3d 767, 773-74 (9th Cir. 2020). Because the parties do not

advance a theory of copyrightability under the test, the Court

assumes that Eleanor does not meet it. See Indep. Towers of Wash.

v. Washington, 350 F.3d 925, 929-30 (9th Cir. 2003).

31a

Appendix B

distinctive and contains some unique elements

of expression.

Daniels v. Walt Disney Co., 958 F.3d 767, 771 (9th Cir.

2020) (cleaned up); accord DC Comics, 802 F.3d at 1021;

Halicki Films, 547 F.3d at 1224. The parties do not

dispute the first element,9 which is readily met: across

all four works, Ford Mustang automobiles are given the

designation Eleanor and assigned feminine pronouns.

Accordingly, the Court focuses its analysis on the second

and third elements of the test.

In this analysis, the Court has considered the four

films together as a closed, cohesive universe of works,

which is consistent with how Ninth Circuit panels

have applied the test. See Daniels, 958 F.3d at 772-73

(evaluating “every iteration” of the claimed characters);

DC Comics, 802 F.3d at 1021 (noting characteristics of the

Batmobile comprising “a consistent theme throughout the

comic books, television series, and motion picture, even

though the precise nature of the . . . characteristics have

changed from time to time”). The Court acknowledges

some ambiguity in the Daniels test that might cast doubt

on the propriety of this approach—or the wisdom of the

9. The Shelby Parties conceded the first element at oral

argument in a prior summary judgment proceeding. (Oct. 18, 2021

Hr’g Tr. 10, ECF No. 193.) The Court assumes that, by declining

to discuss the first element in their brief opposing the Halicki

Parties’ motion or respond to the Halicki Parties’ assertion that

they conceded the point, the CR Parties also do not dispute that

the element is met. (See Halicki CMSJ 20-21; Halicki CMSJ CR

Opp’n 11-13, ECF No. 304.)

32a

Appendix B

test as articulated. The second prong requires courts

to consider whether a character is “recognizable as the

same character whenever it appears” and emphasizes the

consistency of character traits and attributes. Daniels,

958 F.3d at 771 (emphasis added). This suggests, as

the Carroll Shelby parties submit, (June 27, 2022 Hr’g

Tr. 46-47, ECF No. 334), that a character cannot be

afforded independent copyright protection unless there

are multiple works in which the character appears, given

that measuring consistency and recognizability across

appearances would be fatuous without a collection of works

to evaluate.

Further, the consistency inquiry raises the question

of whether a character could become uncopyrightable, or

whether the copyrightable interest in a character could

mutate, upon the publication of a work or works featuring

a copyrightable character with traits and attributes

inconsistent with prior iterations. For example, the Ninth

Circuit has long approved of a district court decision

finding a copyrightable interest in the character of James

Bond. Daniels, 958 F.3d at 771 (citing with approval MetroGoldwyn-Mayer, Inc. v. Am. Honda Motor Corp., 900

F. Supp. 1287 (C.D. Cal. 1995)); DC Comics, 902 F.3d at

1020 (same); Rice v. Fox Broad. Co., 330 F.3d 1170, 1175

(9th Cir. 2003) (same). Under the Daniels framework, the

Court wonders how the interest in Bond might be affected

(and whether it should be affected) if the next actor to be

cast in the role were a woman. Cf. Metro-Goldwyn-Mayer,

900 F. Supp. at 1296 (identifying “his overt sexuality” as

one of the claimed “character traits that are specific to

Bond” (emphasis added)). These reservations about the

33a

Appendix B

Daniels test, however, fall outside the scope of what this

Court is asked, and has authority, to do here. The Court

applies the test as best as it can be interpreted.

First, however, the Court briefly summarizes its

observations from films depicting cars designated as

Eleanor as relevant to the Daniels analysis.

Appearances in the Works

Gone in 60 Seconds (1974)

In Gone in 60 Seconds, the primary characteristic

of cars with the Eleanor designation is their fungibility.

In the film, protagonist Maindrian Pace and his team

are assigned by an unnamed, apparently disreputable

individual to steal 48 different automobiles of various

makes and models within a limited amount of time. Pace

asks his associate to assign each type of vehicle to be stolen

a common, feminine given name as a codename, and he

instructs his team to use only the codenames. The Eleanor

designation apparently refers to a Ford Mustang.10 That

is, the Eleanor designation primarily serves a taxonomic

10. Although the characters in the film use the Eleanor

designation to identify only 1973 Ford Mustang fastbacks

with yellow and black coloring, it is unclear whether the name

designation is so specific. As depicted in one shot, the name

designations may simply refer to makes or models. For example,

“Judy” is a “Ferrari” of unknown model, and “Nancy” is an “El

Dorado” of unstated (though implied) make. (App. fig. 1.) That said,

Pace recounts that Eleanor is “the last of the Mustangs,” implying

that multiple Ford Mustangs were on the list of cars to be stolen.

34a

Appendix B

or classificatory, rather than appellative, function.

Accordingly, the heist team in the film refer to four

different vehicles by the name Eleanor to denote that they

fit the description of the car they must steal.

The gang of thieves encounters the first Eleanor at the

airport. After Pace and his associate identify the vehicle as

an Eleanor, the associate approaches the driver-side door

to steal the vehicle only to encounter a woman with glasses

and curlers apparently asleep in the driver’s seat. (App. fig.

2.) Saving face, the associate explains, “I thought it was

my car,” and retreats with a heckling Pace. Having taken

notice of the license plate, Pace locates the vehicle and

steals it from the driveway of its owners, the woman with

glasses and curlers and a man later identified as Harold

Dwight Smith. Smith and a police vehicle pursue Pace.

The police arrest Smith, who explains he was pursuing

his stolen “yellow Mustang.” The police return Smith to

his house to find the Mustang in the driveway. Pace later

explains that he returned the car to spite Smith, whom he

dislikes for his mishandling of insurance claims.

The second Eleanor appears only briefly. A woman

parks her Ford Mustang at a residence in Gardena,

California. Pace pulls up to the residence and uses a tool

to disengage the vehicle’s lock and enter it. (App. fig. 3.)

Later, Pace’s ally alerts him to a classified advertisement

in the newspaper indicating the vehicle is uninsured.

Having sworn not to boost uninsured vehicles, Pace

abandons the Mustang on a dirt road.

35a

Appendix B

The film spends the most screen time with the

third Eleanor. Pace and an accomplice first encounter

a Ford Mustang on the road after stealing the second.

Pace remarks, “When you don’t need ‘em, they’re all

over the place. . . . Never know, we might need another

Eleanor.” He takes note of the vehicle’s apparent home,

the International Towers in Long Beach. (App. fig. 4.)

After abandoning the second vehicle, Pace steals the third

from the International Towers. Having been tipped off

by a disloyal member of Pace’s team, the police engage

Pace in a chase sequence that lasts over 40 minutes.

Over the course of the sequence, Pace’s vehicle sustains

significant damage to its body. In the climax of the chase,

Pace’s vehicle careens over an overturned vehicle and flies

through the air in a minute-long slow motion shot. (App.

fig. 5.) Having lost his pursuers, Pace leaves the vehicle

with an attendant at a car wash.

Pace discovers the fourth Ford Mustang at the car

wash. He convinces its owner to leave him with the vehicle

under false pretenses. He drives off, replaces the license

plate, and is allowed to drive off at a police checkpoint.

(App. fig. 6.) No character refers to the fourth vehicle as

an Eleanor.

In short, Eleanor in Gone in 60 Seconds is a

taxonomical idea the protagonists apply to vehicles with

a shared set of physical characteristics—apparently, their

make and model. But each instance of Eleanor featured

in the film has unique conceptual characteristics, such as

ownership, provenance, and insurance status, and physical

characteristics, such as distinct license plate numbers

36a

Appendix B

and, particularly in the case of the vehicle driven in the

chase sequence, damage. Although “ELEANOR” is billed

as the star of the film in its opening credits sequence, it is

unclear to which instance of Eleanor, if any in particular,

the credits refer. (App. fig. 7.) Further, although people in

the film often refer to Eleanor instances by name and use

feminine pronouns to discuss cars fitting the designation,

no human addresses an Eleanor car as if it is human.

The Junkman (1982)

In contrast with the first film, Eleanor’s name in The

Junkman serves an appellative function. In a meta turn,

The Junkman is set against the backdrop of the fictionalized

production of a film featuring car stunts and the premiere of

Gone in 60 Seconds. Harlan Hollis, the fictional director of

Gone in 60 Seconds, is targeted for assassination before the

film’s premiere. A yellow and black Ford Mustang appears

in four new sequences, one nondiegetic and three diegetic,

and in clips from the first film.11 In a single shot of the

nondiegetic opening credit sequence, a toy car, a yellow and

black Ford Mustang with damage mimicking that sustained

to the vehicle in the chase scene from Gone in 60 Seconds,

sits in a diorama and takes credit as a “Special Guest.” The

vehicle is unnamed. (App. fig. 9.)

11. One clip depicts part of the chase scene within a video

screen as Hollis directs the editing of Gone in 60 Seconds. (App.

fig. 8.) Another displays images from the chase scene in quick

succession as Hollis views footage from the film through a film

camera. The slow-motion jump sequence from the first film

intercuts shots featuring film crew names during the closing

credits sequence.

37a

Appendix B

In the three diegetic scenes, the physical appearance

of the single vehicle depicted is similar to that of the

vehicle the protagonist drives and severely damages in

the chase sequence in Gone in 60 Seconds. The damage

to the body of the car matches the damage to the car from

the prior film, but the car in The Junkman is painted

with messages written across its side: “‘Eleanor’ from the

movie Gone in 60 Seconds,” and a pull quote exclaiming,

“The most hair raising chase scene ever filmed!” In the

first scene, two people in a studio warehouse collection

of vehicles, toys, and memorabilia argue over Eleanor’s

present location. Referring to the vehicle by the name

Eleanor, one directs the other to have the automobile

transported to the location of the premiere of Gone in 60

Seconds. Neither talks to the vehicle. (App. fig. 10.) In the

second scene, Hollis evades a gunman on foot through the

warehouse. Eventually, Hollis locates the Mustang, drives

it through a wall, and uses it to climb over another wall to

escape the gunman. The people in the scene do not name

the car or talk to it. (App. fig. 11.) In the third sequence,

the climactic action sequence at the premiere of Gone in

60 Seconds, a stylized, painted depiction of a yellow Ford

Mustang is featured on Gone in 60 Seconds posters, and

Eleanor appears in the background of certain shots. The

vehicle is depicted only fleetingly in frame. (App. fig. 12.)12

12. The Halicki Parties aver that this scene features “Eleanor

at her world premiere . . . surrounded by her various posters and

with the lead reporter wearing an Eleanor t-shirt.” (Halicki CMSJ

7.) This representation is an embellishment, to say the least. The

Court has searched diligently for a depiction of reporter character

Susan Clark wearing an Eleanor shirt and has not found one.

38a

Appendix B

In The Junkman, Eleanor appears as a film prop or

an objet d’art. As demonstrated by Eleanor’s diegetic

appearances in a warehouse collection location and at

the fictional premiere of the original film, its functions

as a vehicle are secondary to its symbolic meaning as an

emblem or relic of Gone in 60 Seconds.

Deadline Auto Theft (1983)

Deadline Auto Theft recycles and repurposes footage

from Gone in 60 Seconds and The Junkman in service of

a revised plot echoing the first film featuring protagonist

Maindrian Pace. There are minimal differences between

the original film and Deadline Auto Theft relevant to

the analysis here: the scene at the airport with the first

Eleanor is left on the cutting room floor, some dialogue

is changed or removed, and Eleanor is not billed in any

credits sequence.

Gone in 60 Seconds (2000)

In the remake, the codename Eleanor again serves

a taxonomic function. Retired car thief Memphis Raines

must steal 50 cars within a limited amount of time; else,

a gangster will kill his brother. Raines assembles a team

and assigns each type of vehicle to be stolen a feminine

codename so the team may discuss their marks without

garnering the attention of law enforcement. In this film,

the Eleanor designation refers to a 1967 Ford Mustang

Shelby GT500,13 an uncommon vehicle within the narrative.

13. The Halicki Parties submit that the vehicle portrayed on

screen in the film is not a Ford Mustang Shelby GT500 in reality.

39a

Appendix B

The film establishes that Raines has never successfully

stolen an Eleanor, notwithstanding multiple attempts.

Raines describes Eleanor as a “unicorn.”

The film visually depicts two instances of cars of the

Eleanor designation. The first is a vehicle painted gray

and black located at the International Towers in Long

Beach. (App. fig. 13.) The vehicle is the only auto fitting

the Eleanor description in the area. Raines talks to this

instance of Eleanor as if it is human on several occasions:

“We’re going to get through this this time, right?” “I know

we’ve got a history, Eleanor. . . . You take care of me, I’ll

take care of you.”

This Eleanor is the last of the 50 vehicles to be stolen.

At the International Towers, Raines uses tools to break

into the car and start it. Upon his exit, he encounters law

enforcement, beginning a chase that serves as the film’s

climax. During the chase sequence, Raines skillfully

drives the Eleanor through an urban area. Pursued

by multiple police vehicles and a helicopter on the Los

Angeles River, Raines engages the vehicle’s nitrous oxide

system for a burst of speed. Raines breaks the Eleanor’s

(Halicki CMSJ 4.) This point is irrelevant to the copyrightability

analysis. Nicolas Cage is not a car thief named Memphis Raines in

reality. What matters here is how the purported character appears

in the works. See Daniels, 958 F.3d at 771; Walker, 784 F.2d at

52. The CR Parties offer evidence showing that the filmmakers

intended the vehicles in the remake to appear as GT500s, which

is how the film portrays them and the Court perceives them. (See

CR Parties’ Resp. to Halicki Parties’ Statement of Uncontroverted

Facts ISO Halicki CMSJ ¶¶ 9-10, ECF No. 304-1.)

40a

Appendix B

side mirror, the vehicle’s engine stops, and Raines pleads

for it to restart. Raines circumvents a traffic jam by using

the bed of a tow truck as a ramp and flying over the jam,

resulting in further damage to the Eleanor. (App. fig.

14.) Upon delivery, the antagonist orders the vehicle to

be destroyed.

During the film’s denouement, Raines’s brother

presents Raines with keys to the second instance of

Eleanor. Raines’s brother explains that he lawfully

purchased the vehicle. The car is rusting and stripped of

paint, and its engine sputters and struggles. (App. fig. 15.)

The Eleanor designation in the remake serves a

similar purpose to the designation used in the original

film: it is a taxonomic identifier used to refer to cars of

a similar physical description. The designation again

describes any vehicle of a certain phenotype regardless

of other physical and conceptual characteristics such

as provenance, color, and operability. Notably, the car

described by the Eleanor moniker here is different from

the car described by the name in the trilogy.

Having reviewed the films, the Court now applies

the Daniels test to the purported Eleanor character the

Halicki Parties seek to protect.

Sufficient Delineation and Consistent,

Identifiable Traits and Attributes

In the second prong of the character copyrightability

test, courts examine whether “the character is sufficiently

41a

Appendix B

delineated to be recognizable as the same character

whenever it appears and displays consistent, identifiable

character traits and attributes.” Daniels, 958 F.3d at 771

(cleaned up). “Although a character that has appeared

in multiple productions or iterations ‘need not have

a consistent appearance,’ it ‘must display consistent,

identifiable character traits and attributes’ such that it

is recognizable whenever it appears.” Id. (quoting DC

Comics, 802 F.3d at 1021). “By contrast, a character that

lacks a core set of consistent and identifiable character

traits and attributes is not protectable, because that

character is not immediately recognizable as the same

character whenever it appears.” Id.

According to the Halicki Parties, Eleanor is “a highly

customized Ford Fastback Mustang” “continually referred

to with the unique name ‘Eleanor.’” (Halicki CMSJ 21.)

Eleanor is “hard to steal, and is a ‘unicorn’ or elusive

beauty, sensitive, temperamental, and exhibits strength,

talent, and endurance.” (Id.) Eleanor is “able to outrun

and outmaneuver police,” “save[s] her leading man,” and

is “capable of performing . . . death defying jumps and . . .

hair raising long chase scenes.” (Halicki CMSJ Reply 2,

ECF No. 319.) Eleanor also “breaks down” and “doesn’t

start,” and “people talk to her.” (June 27, 2022 Hr’g Tr. 23.)

As should be evident from the summary above,

most of these traits and attributes are not consistently

or identifiably exhibited by the character in the works.

Some are never exhibited. The Court acknowledges that

a character may be protectable despite some level of

inconsistency among depictions. See DC Comics, 802 F.3d

42a

Appendix B

at 1021 (concluding the second prong analysis favored

protection of the Batmobile “even though the precise

nature of the bat-like characteristics have changed from

time to time”). Still, “the persistence of a character’s

traits and attributes” are “key to determining whether

the character qualifies for copyright protection.” Id.

(emphases added). Here, the volume and primacy of the

inconsistencies erode much of what the Halicki Parties

claim is fundamental to the Eleanor character. In short,

“changes across each iteration” of Eleanor illustrate the

lack of delineation and “[l]ightly sketched” nature of the

character. Daniels, 958 F.3d at 772-73 (internal quotation

marks omitted). The Court considers each asserted

characteristic in turn.

Physical appearance plays a role in the secondprong inquiry but “alone is not decisive.” Id. The films

consistently depict cars of the Eleanor designation with

the physical characteristics of Ford Mustangs (and, of

course, attendant conceptual characteristics attaching

to that make and model). However, the films’ inconsistent

depictions of vehicles called Eleanors undercut any other

delineating physical characteristics.

First, the type of Ford Mustang described by the

Eleanor codename changes between the trilogy and the

remake. In the trilogy, Eleanors are 1973 Ford Mustang

fastbacks. They are modern vehicles common enough

on the road that the heist teams in Gone in 60 Seconds

and Deadline Auto Theft encounter multiple instances

of such vehicles without actively searching for them.

The unexceptional nature of the Eleanors in the trilogy

43a

Appendix B

is most apparent in Gone in 60 Seconds, where one of

Pace’s accomplices avoids the suspicion of an owner of a

Ford Mustang he attempted to steal by explaining that he

thought it was his car. The plausibility of the explanation

rests on the premise that yellow Ford Mustangs are

common enough to be mistaken for one another. In

contrast, the Eleanors in the remake are 1967 Ford

Mustang Shelby GT500s, which are classic, uncommon

cars. One character in the remake remarks that this

type of vehicle is one of the rarest on the list of vehicles

to be stolen, and that there is only one such vehicle in the

area. The contrasting makes, models, and years of the

vehicle classes described by the Eleanor designations in

the trilogy and the remake not only diminish the physical

similarities between the depictions, but they also weaken

any conceptual connotations about the vehicles that might

be shared between depictions, such as value, rarity, and

style.

Second, the physical condition and appearance of the

Eleanors is not consistent among and within the films. In

Gone in 60 Seconds, Deadline Auto Theft, and the remake,

one instance of Eleanor appears first in pristine condition

and, over the course of the film, sustains increasing

amounts of damage during chase sequences. Other

Eleanors have static physical appearances: three of the

Eleanors in Gone in 60 Seconds and Deadline Auto Theft

maintain an undamaged appearance, and the Eleanor in

the diegetic scenes in The Junkman maintains a damaged

appearance with cleanly painted messages printed along

its body. The other depictions of a Ford Mustang in The

Junkman are a toy in a diorama and an illustration on a

44a

Appendix B

poster. This physical appearance issue is most apparent

in the remake. The vehicle gifted to the protagonist at the

conclusion of the film is not immediately recognizable as

an Eleanor by virtue of its physical characteristics as a

Ford Mustang Shelby GT500. The Eleanor with the most

screen time in the film is a sleek, shiny, fast car, whereas

the Eleanor at the conclusion is rusty, decrepit, and slow.

Had the vehicle not been identified as an Eleanor in spoken

dialogue, a viewer might not recognize the vehicle as an

Eleanor by physical appearance alone. Thus, the Eleanor

character cannot be delineated on the basis of its physical

condition, old or new, damaged or undamaged.

Third, physical customizations or modifications to the

Ford Mustangs are not consistent or identifiable.14 The

Halicki Parties submit that the Eleanors in the trilogy

are “highly customized” and featured “a custom color that

was not offered by Ford (or Shelby).” (Halicki CMSJ 6.)

14. At oral argument, counsel for the Halicki Parties

suggested the modifications to Eleanor go to its originality in

the third prong, not to considerations in the second prong. (June

27, 2022 Hr’g Tr. 26-27.) But the Court must examine which

characteristics of Eleanor are identifiable and consistent such that

the character is sufficiently delineated so as to be recognizable.

Car modifications play a role here insofar as they are traits or

attributes of the character. For example, in the second prong

inquiry, a Ninth Circuit panel observed that part of what made the

Batmobile sufficiently delineated was its nonstandard equipment

with “high-tech gadgets and weaponry.” DC Comics, 802 F.3d at

1021 (internal quotation marks omitted). Analogously, the alleged

“highly customized” nature of Eleanor should be considered at

the second step if the Halicki Parties assert it as a defining trait

of the character.

45a

Appendix B

There is nothing particularly identifiable about the color

of the vehicles portrayed; it reads as a standard yellow car

color and, within the context of the narrative of Gone in

60 Seconds and Deadline Auto Theft at least, is implied to

be a standard car color. Any other customizations to the

Eleanors in the trilogy are not readily identifiable in the

works themselves. In any event, these characteristics are

not shared with either of the Eleanors portrayed in the

remake. The apparent modifications to the first Eleanor

portrayed in the remake, such as the nitrous oxide switch

with a button labeled “GO-BABY-GO” and unique inset

lights, (see Halicki Parties’ Statement of Uncontroverted

Facts ¶ 11, ECF No. 294-1), in turn are inconsistent with

the identifiable modifications, if any, to the Eleanors in

the trilogy. No set of modifications or customizations

is consistently portrayed in connection with Eleanor

vehicles. In short, the only consistent and identifiable

physical attributes of automobiles designated Eleanor are

their make and model.

The strongest conceptual link common to the cars

named Eleanor across the films and within each film is the

Eleanor designation itself. Not every Ford Mustang that

appears on screen is called by the Eleanor designation,

particularly in The Junkman, in which Eleanor’s name is

not spoken except in a single scene of dialogue between

two ancillary characters. But the vehicles in the other

three films fitting the respective Eleanor descriptions

are almost uniformly referred to by the Eleanor name.

Notwithstanding, the use of the Eleanor designation

in those three films to classify vehicle phenotypes, as

opposed to naming specific vehicles, undermines the

46a

Appendix B

delineation of the purported character. For example,

in Gone in 60 Seconds and Deadline Auto Theft, each

instance of Eleanor is fungible, as only one must be stolen

to complete the ordered heist. The taxonomic codename

system in these films leads the viewer to conclude that each

new Ford Mustang that appears on screen in a sequence

is a different vehicle from the others that appeared in

the film.15 In other words, because Eleanor is effectively

synonymous with “1973 Ford Mustang fastback” in these

films, its value as a delineating characteristic of any given

instance of the class of vehicles is diminished. Regardless,

the Court accepts for the purpose of argument that the

Eleanor name is a consistent, identifiable trait.

The conceptual characteristics consistent among

depictions of Eleanor virtually end there. Eleanor is not

particularly “hard to steal”; Raines is able to secure the

first Eleanor in the remake, and Pace is able to get behind

the driver’s wheel of all four Eleanors depicted in Gone in

60 Seconds and Deadline Auto Theft, within a matter of

seconds (i.e., 60). To the extent these depictions of Eleanor

are hard to keep stolen, whether due to a police chase or

15. Eleanor’s fungibility apparently gave rise to an error in

the Shelby Parties’ briefing. The Shelby Parties took the position

that five instances of Eleanor appeared in Gone in 60 Seconds.

(Shelby CMSJ 11.) Their counsel apparently did not recognize

that the Eleanor Pace’s team encountered at the airport was the

same Eleanor Smith pursues. Only through close attention to

the dialogue and recognition of the woman with curlers in both

sequences could a viewer understand that the vehicles depicted in

these scenes are the same. That experienced counsel entrenched

in the facts of this case could make this error lays bare the lack

of delineation of the purported character name here.

47a

Appendix B

insurance status or else, other depictions of Eleanor are

not portrayed as particularly easy or hard to steal because

they are not subject to pilfering at all. No depiction of

Eleanor in The Junkman is the target of theft, and the

second Eleanor in the remake was lawfully purchased.

Many of the other conceptual characteristics identified

by the Halicki Parties—that Eleanor can outmaneuver

police vehicles, execute death-defying jumps, and endure

long chases—apply only to the instances of Eleanor in

Gone in 60 Seconds, Deadline Auto Theft, and the remake

that are involved in the films’ chase sequences. Other

vehicles designated Eleanor in those films do not exhibit

those characteristics, and the Eleanor in The Junkman

does not exhibit them at all. Other claimed conceptual

characteristics apply to only the first instance of Eleanor

depicted in the remake. Only that vehicle (or vehicle class)

is described or portrayed as a “unicorn” with a certain

“elusive beauty,” “mystique,” and “aura.” (Halicki CMSJ 5.)

Only that vehicle exhibits any remotely human conceptual

characteristics, such as sensitivity and temperament. Only

that vehicle is spoken to by the protagonist as if it were

human, contrary to representations made by the Halicki

Parties. (CMSJ 8 (claiming characters in The Junkman

“talked to” Eleanor “as a character in the movie”).) Only

that vehicle breaks down and doesn’t start—and even

then, one would be hard pressed to extrapolate from the

single scene in which the vehicle malfunctions that the

vehicle’s proclivity to break down is a character trait.

Finally, the Halicki Parties assign anthropomorphic

characteristics to the character, such as strength,

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Appendix B

talent, endurance, and a tendency to “always sav[e] her

leading man.” (Halicki CMSJ 6.) In the Court’s view,

these characteristics are an invention of overzealous

advocacy. Eleanor vehicles may have human names and

feminine pronouns, but their anthropomorphic features

begin and end there. Eleanor vehicles feature no more

anthropomorphic traits than an ordinary automobile. The

skillfulness and talent exhibited in the chase and action

sequences in the films are more appropriately attributed

to the human protagonists that drive the Eleanors, not

metonymically to the vehicles themselves.

In short, at most, the Eleanor character’s consistent

and identifiable traits and attributes that make it

recognizable are that it is a Ford Mustang called by the

name Eleanor. These characteristics hardly amount to a

“core set” of traits rendering the character “immediately

recognizable.” Daniels, 958 F.3d at 771. For example,

anointing a 2023 Ford Mustang Mach-E w ith the

name Eleanor would not make the vehicle immediately

recognizable as an homage to, let alone an iteration of, the

vehicles that appear in the Gone in 60 Seconds franchise.

The characteristics shared by the automobiles depicted

in the films are too lightly sketched to meet the second

prong of the Daniels test.

Special Distinctiveness and Unique

Elements of Expression

In the third prong of the test, courts consider whether

the character is especially distinctive and contains some

unique elements of expression. Daniels, 958 F.3d at 771.

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Appendix B

Characters do not meet this element if they are a “stock

character” like a magician in standard magician garb,

DC Comics, 802 F.3d at 1021, or a character that “fit[s]

general, stereotypical categories” like a loyal friend or

older scholar, McCormick v. Sony Pictures Ent., No. CV

07-05697 MMM (RCx), 2009 U.S. Dist. LEXIS 138561,

2009 WL 10672263, at *14 (C.D. Cal. July 20, 2009), aff’d,

411 F. App’x 122 (9th Cir. 2011).

For the sake of argument, the Court assumes the

second prong is met on the basis of Eleanor’s consistent

and identifiable characteristics—that is, its name,

make, and model. Given these characteristics, the Court

examines whether Eleanor is especially distinct and

exhibits unique elements of expression.

“[T]he mere delineation of a character name” is not

“sufficient to satisfy the distinctiveness requirement.” See

Conan Props. Int’l LLC v. Sanchez, No. 17-CV-162 (FB),

2018 U.S. Dist. LEXIS 98631, at *31 (E.D.N.Y. June 8,

2018) (applying analogous Second Circuit test), adopted as

modified, 2018 U.S. Dist. LEXIS 138203 (E.D.N.Y. Aug.

15, 2018). The case at bar makes this principle obvious, as

the Eleanor name is not especially distinctive or unique. In

Gone in 60 Seconds, Deadline Auto Theft, and the remake,

the heist teams use the car codename system to avoid

arousing suspicion by law enforcement. That is, within

the narrative of the films, the thieves employ common,

feminine given names because they are indistinct.

Eleanor is a common spelling of a standard feminine name

frequently used in the United States. Assigning a human

name and gendered pronouns to a car or other inanimate

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Appendix B

vehicle is not particularly unique,16 and certainly not

unique enough to justify intellectual property protection.

Cf. Daniels, 958 F.3d at 773 (“Developing a character

as an anthropomorphized version of a specific emotion

is not sufficient, in itself, to establish a copyrightable

character.”). Unlike the Batmobile, Eleanor is not a

“unique and highly recognizable name” that would evoke

recognition as the character from the Gone in 60 Seconds

franchise. DC Comics, 802 F.3d at 1022.

It should be equally obvious that Eleanor’s make and

model do not make it especially distinctive. Even within

the narrative of the Gone in 60 Seconds, Deadline Auto

Theft, and the remake, Ford Mustang cars fitting the

Eleanor designation are not unique. The name describes

a class of vehicles. In Gone in 60 Seconds and Deadline

Auto Theft, Eleanors are practically a dime a dozen. The

Ford Mustang characteristics of Eleanor make it no more

than a stock Ford Mustang. See DC Comics, 802 F.3d at

1021 (to be protectable, a character “cannot be a stock

character such as a magician in standard magician garb”

(citing Rice, 330 F.3d at 1175)).

16. For example, popular media is littered with named,

gendered vehicles, see generally, e.g., Sentient Vehicle, TV Tropes,

https://tvtropes.org/pmwiki/pmwiki.php/Main/ SentientVehicle

(last visited Nov. 28, 2022), and gendering vessels is common

enough for grammatical rules to be constructed around the

practice, Chicago Manual of Style § 5.43 (“Pronouns enhance

personification when a feminine or masculine pronoun is used as

if the antecedent represented a female or male person (as was

traditionally done, for example, when a ship or other vessel was

referred to with the pronoun she or her).”).

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Appendix B

Considered together or alone, Eleanor’s consistent

and identifiable characteristics do not make the character

distinct enough for independent copyright protection. The

third prong of the Daniels test is unmet.

Conclusion

For the reasons discussed above, the Shelby Parties’

motion for partial summary judgment on the issue of

copyrightability is granted in substantial part, and the

Halicki Parties’ motion on the issue is denied. Eleanor is

not entitled to standalone copyright protection as a matter

of law. On this basis, the Court dismisses the Halicki

Parties’ fourth, sixth, seventh, and ninth counterclaims

in their entirety.17

Because Eleanor is not subject to copyright protection,

the Shelby Parties’ motion for partial summary judgment

on the issue of substantial similarity, which assumes that

Eleanor is copyrightable, (Shelby MPSJ 3), is moot. The

Court denies that motion accordingly. In their motion for

partial summary judgment on the issue of copyrightability,

17. The Shelby Parties also requested judgment in their

favor on the Halicki Parties’ second and fifth claims for breach

of contract, (see Shelby CMSJ Proposed Order, ECF No. 287-15),

but for the reasons described infra, the copyrightability issue

is not entirely dispositive of these claims. Although the Shelby

Parties did not request judgment in favor of the CR Parties as

relief, (see id.), the claims against the CR Parties may be dismissed

on the same basis the Court dismisses the claims against the

Shelby Parties, i.e., the lack of a copyright interest in Eleanor,

see Abagninin v. AMVAC Chem. Corp., 545 F.3d 733, 742-43 (9th

Cir. 2008).

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Appendix B

the CR Parties raise arguments separate from the Daniels

test. (See CR CMSJ 11-17.) Because the Daniels analysis

here disposes of the copyrightability issue, the Court also

denies the CR Parties’ motion as moot.

Contract Claims

The Halicki Parties move for a finding that they

are not liable on the Shelby Parties’ claims for breach

of contract and breach of the implied covenant of good

faith and fair dealing and for a finding that the Shelby

Parties and CR Parties are liable on the Halicki Parties’

counterclaims for breach of contract. (Halicki MPSJ 2-3.)

The Court examines each claim in turn.

Shelby Parties’ Claim for Breach of

Contract

The Shelby Parties claim that the Halicki Parties

breached the settlement agreement that ended the

previous federal action. (FAC ¶¶ 42-46, ECF No. 13;

see generally Settlement Agreement, ECF No. 289-6.)

The settlement agreement is governed by California

law. (Id. § 20.) Under California law, a claim for breach

of contract requires a plaintiff to show (1) the existence

of a contract, (2) the plaintiff’s performance or excuse

for nonperformance, (3) the defendant’s breach of a

contractual obligation, and (4) damages. Oasis W. Realty,

LLC v. Goldman, 51 Cal. 4th 811, 821, 124 Cal. Rptr. 3d

256, 250 P.3d 1115 (2011). The Shelby Parties claim the

Halicki Parties breached the agreement by:

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Appendix B

a. Denying the Shelby Parties’ trademark,

trade dress and other rights in the GT500

vehicles by contending that the Shelby Parties’

business partners and licensees are not

permitted to manufacture, market or sell

GT500 vehicles;

b. Asserting claims against the Shelby

Parties’ business partners and licensees for

using the SHELBY Marks and trade dress of

the GT500; and

c. Asserting claims against the Shelby

Parties’ customer, which claims had been

released by Defendants pursuant to the

Settlement Agreement.

(FAC ¶ 44.)18 “The Halicki Parties acknowledge that they

have asserted claims against the GT500E customers,

as well as the Shelby Parties’ licensees who are

manufacturing the GT500CR vehicles. . . .” (Halicki MPSJ

26.) Notwithstanding, the Halicki Parties argue that the

18. In their brief, the Shelby Parties assert that the Halicki

Parties breached the settlement agreement by authorizing their

licensee to rebadge a Shelby GT500 to be sold as an Eleanor.

(Shelby Opp’n to Halicki MPSJ 9, 16-17, ECF No. 307.) The Shelby

Parties did not advance this theory in their pleading, (see FAC

¶¶ 42-52), and the deadline to amend the pleadings has long since

passed, (see Order Re: Jury Trial § I, ECF No. 64). To the extent

the Shelby Parties seek leave to amend their pleading to assert

a new theory at this late stage of the case, the Court denies such

leave for lack of good cause. See Fed. R. Civ. P. 16(b)(4); Zivkovic

v. S. Cal. Edison Co., 302 F.3d 1080, 1087 (9th Cir. 2002).

54a

Appendix B

text of the settlement agreement does not preclude them

from asserting or threatening to assert claims against

nonparties concerning the GT500E vehicles that were the

subject of the prior litigation. (Id. at 23-26.) Citing section

17, the Shelby Parties contend that the Halicki Parties

released any claims against innocent past, present, and

future owners and vendors of GT500Es, so their conduct

violates that provision of the agreement. (See Shelby Opp’n

to Halicki MPSJ 9-11, ECF No. 307.)19

The Court determines as a matter of law that the

settlement agreement is not reasonably susceptible to

the Shelby Parties’ interpretation of section 17. Contract

interpretation generally presents a question of law for the

trial court. Yi v. Circle K Stores, Inc., 258 F. Supp. 3d 1075,

1082-83 (C.D. Cal. 2017) (citing Parsons v. Bristol Dev.

Co., 62 Cal. 2d 861, 865, 44 Cal. Rptr. 767, 402 P.2d 839

(1965)). Courts apply a two-step approach when parties

disagree about contractual meaning:

First, the court asks whether, as a matter of law,

the contract terms are ambiguous; that is, the

court considers extrinsic evidence to determine

19. The Shelby Parties apparently abandon any theories

of breach resting on other provisions of the agreement, such as

the Halicki Parties’ release of trade dress claims concerning the

GT500. (See Shelby Opp’n to Halicki MPSJ 20 (“[T]rade dress

. . . is not an issue in this case.”).) See also USA Petroleum Co. v.

Atl. Richfield Co., 13 F.3d 1276, 1284 (9th Cir. 1994) (“It is a wellsettled rule that a party opposing a summary judgment motion

must inform the trial judge of the reasons, legal or factual, why

summary judgment should not be entered.” (quoting Liberles v.

County of Cook, 709 F.2d 1122, 1126 (7th Cir. 1983))).

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Appendix B

whether the contract is reasonably susceptible

to a party’s proffered interpretation. Second, if

ambiguity persists, the court admits extrinsic

or parol evidence to help interpret the contract.

Yi, 258 F. Supp. 3d at 1083 (citation omitted). In the first

step, courts decide “whether the language is ‘reasonably

susceptible’ to the interpretation urged by the party”; if

it is not, the analysis ends. Dore v. Arnold Worldwide,

Inc., 39 Cal. 4th 384, 393, 46 Cal. Rptr. 3d 668, 139 P.3d 56

(2006) (internal quotation marks omitted). If the language

is reasonably susceptible to more than one meaning, but

there is no material conflict in the extrinsic evidence, a

court may interpret the contract as a matter of law. But

if there is a conflict in the extrinsic evidence, the conflict

must be resolved by the factfinder. Wolf v. Walt Disney

Pictures & Television, 162 Cal. App. 4th 1107, 1127, 76

Cal.

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