Eleanor Licensing LLC v. Classic Recreations LLC

230 Cal. Rptr. 3d 511, 21 Cal. App. 5th 599
CourtCalifornia Court of Appeal, 5th District
DecidedMarch 21, 2018
DocketB275429; B279238
StatusPublished
Cited by10 cases

This text of 230 Cal. Rptr. 3d 511 (Eleanor Licensing LLC v. Classic Recreations LLC) is published on Counsel Stack Legal Research, covering California Court of Appeal, 5th District primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Eleanor Licensing LLC v. Classic Recreations LLC, 230 Cal. Rptr. 3d 511, 21 Cal. App. 5th 599 (Cal. Ct. App. 2018).

Opinion

PERLUSS, P. J.

*602Following a four-day bench trial, the court entered judgment in favor of Eleanor Licensing LLC and Denice Shakarian Halicki and against Classic Recreations, LLC, T & D Motor Company, Jason Engel and Tony Engel (collectively Classic), ordering that Eleanor Licensing retain possession of a vehicle identified as "Eleanor No. 1," which had been manufactured by Classic pursuant to a licensing agreement between the parties; quieting title to the vehicle in Eleanor Licensing; directing Classic to perform according to the terms of the licensing agreement and transfer legal title to Eleanor No. 1 to Eleanor Licensing; and awarding damages of $6,657.75 and attorney fees of $176,050. On appeal Classic contends the licensing agreement was unenforceable due to lack of consideration at the time of execution, the governing statutes of limitation barred Eleanor Licensing and Halicki's claims, and the findings that Jason Engel and Tony Engel are the alter egos of Classic Recreations and T & D Motor are not supported by substantial evidence. We reverse the judgment to the extent it is based on Eleanor Licensing and Halicki's causes of action for breach of contract, as well as the court's alter ego findings, and otherwise affirm the judgment and postjudgment order.

FACTUAL AND PROCEDURAL BACKGROUND

1. The Gone in 60 Seconds Films and the November 1, 2007 License Agreement

The 1974 motion picture Gone in 60 Seconds was written, directed and produced by H.B. "Toby" Halicki, who also *515starred in the film.1 The movie featured a yellow 1971 Fastback Ford Mustang, code named "Eleanor." H.B. Halicki died in 1989 while filming Gone in 60 Seconds 2. His widow, Denice Shakarian Halicki, acquired intellectual property rights relating to "Gone in 60 Seconds" and "Eleanor" from H.B. Halicki's estate.

A 2000 remake of Gone in 60 Seconds, released by Hollywood Pictures, a division of Walt Disney Company, pursuant to rights granted by Denice Shakarian Halicki in May 1995, starred Nicolas Cage and Angelina Jolie. Jerry Bruckheimer produced the remake; Halicki was an executive producer. The 2000 motion picture featured a customized 1967 Fastback Ford Mustang, which was also named "Eleanor." The vehicle was sometimes (erroneously) referred to in the film as a 1967 Shelby GT-500. In July 2007 Hollywood Pictures/Disney executed a quitclaim to confirm that Halicki retained the merchandising rights to "Gone in 60 Seconds" and "Eleanor."

*603Halicki formed Eleanor Licensing in 2007 and on October 31, 2007 granted the company a nonexclusive license to her intellectual property rights, merchandising rights, trademarks and copyrightable material relating to "Gone in 60 Seconds" and "Eleanor." As of November 1, 2007 Eleanor Licensing entered a license agreement with T & D Motor and Classic Recreations granting T & D Motor and Classic Recreations the right to use intellectual property rights, trademarks and copyrightable material relating to "Gone in 60 Seconds" and "Eleanor" to manufacture and sell 300 restored 1971, 1972 and 1973 Fastback Ford Mustangs fitted and detailed to replicate in appearance the 1974 Eleanor and 1,000 restored 1967 and 1968 Fastback Ford Mustangs fitted and detailed to replicate in appearance the 2000 Eleanor.

Pursuant to the license agreement T & D Motor and Classic Recreations agreed to pay Eleanor Licensing a one-time fee of $300,000, plus a royalty for each vehicle sold in accordance with a schedule set forth in the agreement (but no less than 15 percent of each vehicle's sale price).2 Paragraph 9.3 of the license agreement further provided, "Licensee agrees at Licensee's expense to give Licensor Number '1' unit, Number '48' unit and Number '60' unit of the original 'Gone in 60 Seconds' Eleanor vehicle and Number '1' unit, Number '47' unit and Number '60' unit of the Remake 2000 Eleanor vehicle. [¶] (a) Licensor agrees that the aforesaid samples of the Licensed Merchandise may be used by Licensee in the promotions and car events with Licensor's approval and will be fully insured during such use and during the transportation to and from such event."

Paragraph 14.1, "Licensor's Warranty," part of the section of the agreement entitled Warranties, Representations and Indemnification, provided, "Licensor represents and warrants that it has the right to enter into this Agreement: Should any third party assert a claim, demand, or cause of action against Licensee contesting Licensor's ownership of Licensed Properties in relation to this Agreement, Licensor shall undertake and conduct the defense of any such claim, demand or cause of action."

Paragraph 16.4(b) provided, in part, "Licensee is responsible for any and all legal fees, collections costs, and/or court costs incurred by Licensor in securing a remedy *516for any breach of this Agreement by Licensee...." Paragraph 23.5 required all disputes to be resolved by "binding, mandatory arbitration subject and pursuant to the rules and procedures of the American Arbitration Association." *6042. Delivery of the Sample Car

The Number 1 unit of the 2000 Eleanor replica described in the licensing agreement (Eleanor No. 1 or the sample car) was constructed in Yukon, Oklahoma, Classic's place of business, and moved from there to Halicki's residence in February 2008.3 Apparently neither license plates nor title documents were delivered with the vehicle. On September 16, 2009 Michael Leone, a consultant working with Halicki, emailed Jason Engel to "remind you to please find and send Denice's Eleanor title with her license plate." When the license plate, but not the title document, was sent, Leone again emailed Jason Engel, noting "Denice's title to Eleanor ... wasn't in the fedex [sic ] with Eleanor's License plate (tag). What happened? Please check into this." Jason Engel responded, "Mike it should have been. I'll find it and send it out."

3. The Shelby Litigation

In April 2004 the United States Patent and Trademark Office issued a certificate of registration to the Carroll Hall Shelby Trust (Shelby) for the trademark "Eleanor" for use with automobiles and structural parts of automobiles. Shelby thereafter licensed Unique Motorcars, Inc. to use the trademarks "Shelby GT-500" and "Eleanor" in connection with the manufacture and sale of vehicles and merchandise relating to any 1960's Shelby automobiles. Unique then began manufacturing and selling vehicles that resembled the 2000 remake version of Eleanor, which, as discussed, had been referred to in the movie as a 1967 Shelby GT-500. In May 2004 Halicki sued Unique and Shelby for copyright infringement, common law trademark infringement, unfair competition and other related torts. Halicki also sought cancellation of Shelby's registration of the "Eleanor" mark.

The Engels were aware of the Shelby litigation when they were negotiating the November 1, 2007 license agreement. Paragraph 11.5 of the agreement stated, "Shelby Matter.

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230 Cal. Rptr. 3d 511, 21 Cal. App. 5th 599, Counsel Stack Legal Research, https://law.counselstack.com/opinion/eleanor-licensing-llc-v-classic-recreations-llc-calctapp5d-2018.