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`David L. Brandon, Esq., SBN 105505
`dbrandon@clarkhill.com
`CLARK HILL LLP
`555 South Flower Street, 24th Floor
`Los Angeles, CA 90071
`Telephone: 213-891-9100
`Fax: 213-487-1156
`
`Jason J. Keener, Esq., Admitted Pro Hac Vice
`Jkeener@irwinip.com
`IRWIN IP LLC
`150 North Wacker Drive, Suite 700
`Chicago, IL 60606
`Telephone: 312-667-6286
`
`Attorneys for Defendants and Counterclaimants
`Denice Shakarian Halicki, Eleanor Licensing, LLC, and Gone in 60 Seconds
`Motorsports, LLC
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Plaintiffs,
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`
`CARROLL SHELBY LICENSING,
`INC., a California Corporation, and the
`CARROLL HALL SHELBY TRUST,
`
`
`vs.
`
`DENICE SHAKARIAN HALICKI, an
`individual, ELEANOR LICENSING,
`LLC, a Delaware limited liability
`company, GONE IN 60 SECONDS
`MOTORSPORTS, LLC, a Delaware
`limited liability company, and DOES 1 –
`10,
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`
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`Defendants.
`
` Case No.: 8:20-cv-01344-MCS-DFMx
`Assigned to the Hon. Mark C. Scarsi,
`Courtroom 7C
`
`NOTICE OF MOTION AND
`MOTION OF HALICKI PARTIES
`TO CERTIFY ORDER FOR
`INTERLOCUTORY APPEAL;
`MEMORANDUM OF POINTS AND
`AUTHORITIES
`
`
`NO HEARING WITHOUT
`FURTHER COURT ORDER PER
`COURT’S ORDER OF DECEMBER
`12, 2022 (ECF N0. 354)
`
`
`DENICE SHAKARIAN HALICKI, an
`individual, ELEANOR LICENSING,
`LLC, a Delaware limited liability
`company, GONE IN 60 SECONDS
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`Counter-claimants,
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`MOTORSPORTS, LLC, a Delaware
`limited liability company
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`vs.
`
`CARROLL SHELBY LICENSING,
`INC., a California Corporation, and the
`CARROLL HALL SHELBY TRUST, a
`trust organized under Texas law,
`CLASSIC RECREATIONS, LLC, an
`Oklahoma limited liability company,
`JASON ENGEL, an individual, TONY
`ENGEL, an individual, SPEEDKORE
`PERFORMANCE GROUP, LLC, a
`Wisconsin limited liability company, and
`Roes 1 to 10,
`
`Counter-defendants.
`
`
`_________________________________
`
`TO ALL PARTIES AND TO THEIR ATTORNEYS OF RECORD:
`PLEASE TAKE NOTICE that Defendants and Counter-Claimants Denice
`Shakarian Halicki (“Denice Halicki”), Eleanor Licensing, LLC, and Gone in 60
`Seconds Motorsports, LLC (collectively “the Halicki Parties”) hereby move this Court,
`for certification of the Court’s November 29, 2022 Order (ECF No. 350) for
`interlocutory appeal on three issues:
`(1) Whether the District Court correctly interpreted the Halicki Films, DC
`Comics, and Daniels test regarding copyrightability of a character by
`requiring under prong 2 of that test an analysis of the character “whenever
`it appears” and a comparison for consistency based on every instance a
`character appears in media.
`(2) Whether the District Court correctly interpreted the Halicki Films, DC
`Comics, and Daniels test regarding copyrightability of a character by
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`denying copyrightability to a character based on its repeated appearance in
`one work, regardless of how sufficiently delineated the character appears
`in that work.
`(3) Whether the District Court correctly interpreted the Halicki Films, DC
`Comics, and Daniels test regarding copyrightability of a character by
`determining that an otherwise copyrightable character becomes
`uncopyrightable if a new iteration of the same character has traits and
`attributes varied with prior iterations.
`The Halicki Parties further request the court to stay these proceedings until
`disposition of the interlocutory appeal.
`This Halicki Parties’ Motion is made pursuant to 28 U.S.C. § 1292(b).
`This Halicki Parties’ Motion is based on this Notice, the attached Memorandum
`of Points and Authorities, and on such oral argument as the Court may permit.
`This Motion shall be heard without the filing of a reply brief and without a
`hearing pursuant to the Court’s order of December 12, 2022 (ECF N0. 354).
`This Motion is made following a conference of counsel pursuant to Local Rule
`7-3 which took place on January 6, 2023.
`Dated: January 13, 2023
`
`
`
`
`By: /s/ Jason J. Keener
`
`Jason J. Keener
`
`Irwin IP LLC
`
`David L. Brandon
`Clark Hill LLP
`
`Attorneys for Defendants and Counter-
`claimants DENICE SHAKARIAN HALICKI;
`ELEANOR LICENSING, LLC; GONE IN 60
`SECONDS MOTORSPORTS, LLC
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`TABLE OF CONTENTS
`I. INTRODUCTION…………………………………………………………………1
`II. PROCEDURAL HISTORY…………………………………………………….....4
`A. Most Remaining Claims and Counterclaims Implicate Copyright Issues.....4
`B. The Court’s November 29, 2022 Order……………………………………….5
`III. LEGAL STANDARD…………………………………………………………11
`IV. ARGUMENT…………………………………………………………………..11
`A. The Court’s Order Implicates Three “Controlling Question[s] of Law”….12
`1. Issue 1 is a “Controlling Question of Law”………………………………13
`2. Issue 2 is a “Controlling Question of Law”………………………………13
`3. Issue 3 is a “Controlling Question of Law”………………………………14
`B. There is “Substantial Ground for Difference of Opinion”…………………15
`C. An Immediate Appeal “May Materially Advance the Termination of the
`Litigation”……………………………………………………………………..18
`D. The Court Should Stay These Proceedings Until Disposition of the
`Interlocutory Appeal………………………………………………………….21
`V. CONCLUSION…………………………………………………………………...21
`
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`TABLE OF AUTHORITIES
`Beeman v. Anthem Prescription Mgmt., Inc.,
`No. 04-407, 2007 WL 8433884, (C.D. Cal. Aug. 2, 2007)………………...11, 18
`In re Cement Antitrust Litig.,
`673 F.2d 1020 (9th Cir. 1982)……………………………………………..passim
`In re Cintas Corp. Overtime Pay Litig.,
`06-01781, 2007 WL 1302496 (N.D. Cal. May 2, 2007)……………………….11
`Dalie v. Pulte Home Corp.,
`636 F. Supp. 2d 1025 (E.D. Cal. 2009)……………………………………...3, 19
`Daniels v. Walt Disney Co.,
`958 F.3d 767 (9th Cir. 2020)……………………………………………………..6
`DC Comics v. Towle,
`802 F.3d 1012 (9th Cir. 2015)…………………………………………………2, 4
`F.D.I.C. v. Anders,
`87cv430, 1991 WL 442874 (E.D. Cal. July 2, 1991)…………………………..19
`Filtrol Corp. v. Kelleher,
`467 F.2d 242 (9th Cir.1972)……………………………………………………21
`Halicki Films, LLC et al v. Sanderson Sales & Mktg. et al,
`547 F.3d 1213 (9th Cir. 2008)………………………………………………2, 4, 6
`Helman v. Alcoa Glob. Fasteners Inc.,
`09cv1353, 2009 WL 2058541(C.D. Cal. June 16, 2009) aff’d, 637 F.3d 986 (9th
`Cir. 2011)……………………………………………………………………….12
`Hoffman v. Citibank,
`No. 06-0571, 2007 WL 5659406 (C.D. Cal. Feb. 15, 2007)…………………...11
`Katz v. Carte Blanche Corp.,
`496 F.2d 747 (3d Cir. 1974)……………………………………………………12
`Kuehner v. Dickinson & Co.,
`84 F.3d 316 (9th Cir. 1996)………………………………………………...13, 18
`
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`Lopez v. Youngblood,
`1:07cv0474, 2009 WL 2062883 (E.D. Cal. July 15, 2009)…………………….12
`North v. Superior Hauling & Fast Transit, Inc.,
`18cv2564, 2019 WL 6794211 (C.D. Cal. July 10, 2019)………………………18
`Reese v. BP Expl. (Alaska) Inc.,
`643 F.3d 681 (9th Cir. 2011)………………………………………...2, 11, 15, 18
`Schoenberg v. Exportadora de Sal, S.A.,
`930 F.2d 777 (9th Cir. 1991)…………………………………………………...12
`U.S. v. Woodbury,
`263 F.2d 784 (9th Cir. 1959)…………………………………………………...11
`
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`I. INTRODUCTION
`The Court’s November 29, 2022 order granting in substantial part the Shelby
`Parties summary judgment and denying the Halicki and CR Parties summary judgment
`on the issue of copyrightability (the “Order”, ECF No. 350) warrants certification for
`interlocutory appeal under 28 U.S.C. § 1292(b) and a stay of these proceedings until its
`disposition.1 The Order resolved three threshold, controlling issues of law critical for
`this case to proceed:
`(1) Whether the District Court correctly interpreted the Halicki Films, DC
`Comics, and Daniels test regarding copyrightability of a character by
`requiring under prong 2 of that test an analysis of the character “whenever
`it appears” and a comparison for consistency based on every instance a
`character appears in media.
`(2) Whether the District Court correctly interpreted the Halicki Films, DC
`Comics, and Daniels test regarding copyrightability of a character by
`denying copyrightability to a character based on its repeated appearance in
`one work, regardless of how sufficiently delineated the character appears
`in that work.
`(3) Whether the District Court correctly interpreted the Halicki Films, DC
`Comics, and Daniels test regarding copyrightability of a character by
`determining that an otherwise copyrightable character becomes
`uncopyrightable if a new iteration of the same character has traits and
`attributes varied with prior iterations.
`The three requirements for certifying an order for interlocutory appeal under
`section 1292(b) are met: “(1) that there be a controlling question of law, (2) that there
`be substantial grounds for difference of opinion, and (3) that an immediate appeal may
`
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`1 The portions of the Order denying summary judgment on substantial similarity, and
`granting and denying in part summary judgment on the contract claims are not subject
`to the instant Motion.
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`materially advance the ultimate termination of the litigation.” In re Cement Antitrust
`Litig., 673 F.2d 1020, 1026 (9th Cir. 1982).
`First, each issue is a “controlling question[s] of law” because “resolution of
`[each] issue on appeal could materially affect the outcome of [the] litigation in the
`district court.” Cement, 673 F.2d at 1026. The first issue allows the copyrightability of
`the Eleanor car character to be evaluated with only reference to the original Gone in 60
`Seconds (the “Original Film”) and the 2000 Remake (the “Remake”). The second
`issue allows the copyrightability to be evaluated with reference only to the Remake.
`The third issue allows a finding of copyrightability based on the common traits and
`attributes irrespective of perceived varied traits between iterations of the Eleanor car
`character, providing a clear separation of traits used in prong 2 and prong 3 of the
`analysis.
` Second, there is “substantial ground for difference of opinion” on these issues
`because “reasonable jurists might disagree on [their] resolution.” Reese v. BP Expl.
`(Alaska) Inc., 643 F.3d 681, 688 (9th Cir. 2011). The Ninth Circuit has twice
`examined the Eleanor car character, identifying common traits and attributes across
`the franchise, most recently with an “implied yet strong suggestion that Eleanor is
`subject to [copyright] protection”. (Order at 6 citing Halicki Films, LLC et al v.
`Sanderson Sales & Mktg. et al, 547 F.3d 1213, 1225 (9th Cir. 2008) and DC Comics v.
`Towle, 802 F.3d 1012, 1019-20 (9th Cir. 2015)). In the Order, the Court acknowledged
`“some ambiguity in the Daniels test that might cast doubt on the propriety of this
`approach-or the wisdom of the test as articulated.” (Order at 9.) Despite its
`“reservations about the Daniels test”, the Court stated its lack of authority to modify or
`restate the test. (Order at 10.)
`Third, “an immediate appeal from the order may materially advance the ultimate
`termination of the litigation,” because each issue could result in a finding that the
`Eleanor car character is copyrightable as a matter of law. The Court acknowledges the
`copyright issue is “an issue central to this case.” (Order at 2.) A reversal on the
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`copyright issue would advance the termination of the litigation, because the Halicki
`Parties’ have uncontroverted expert testimony as to the distinct features of the Eleanor
`Car Character as she appears in the Remake and the copying of those features in the
`unauthorized merchandise replicas from the Shelby and CR Parties.2 Both the Halicki
`and Shelby Parties acknowledge this litigation cannot be resolved through settlement
`or otherwise unless and until the copyrightability of the Eleanor car character is
`resolved on appeal. (ECF No. 353 at 10.) As many of the remaining claims are
`intertwined with underlying copyright issues, an immediate appeal speeds the overall
`resolution of the case by resolving in advance critical threshold issues that could
`otherwise taint the remaining trial process with an error that could later require reversal
`on a post-judgment appeal. See, e.g., Dalie v. Pulte Home Corp., 636 F. Supp. 2d
`1025, 1030 (E.D. Cal. 2009).
`Section 1292(b) is designed to avoid the waste of judicial and party resources
`that results from proceeding to trial in such circumstances where there is a controlling
`threshold issue on which reasonable jurists could disagree and that requires reframing
`the fundamental legal standards under which the case can proceed.
`This Order also merits immediate review due to the sweeping policy
`consequences implicated in fundamentally—and, the Halicki Parties respectfully
`submit, improperly—overhauling the copyright framework regarding merchandising of
`characters. The Order precludes copyright protection for: (1) any character that does
`not have the same set of common traits in every instance the character has ever
`appeared in media, even if the character is still recognizable to the audience as the
`same character; (2) any character, no matter how well delineated in a movie, unless
`and until a sequel to the movie is released; and (3) varied character looks as any such
`change destroys copyright protection for those changes, regardless of how distinctive
`and creative either the original or updated look is. This potential merchandising
`
`2 The Court previously excluding, in entirety, all three of the Shelby/CR Parties’
`purported experts, leaving the Halicki Parties’ experts uncontroverted. (See ECF 232
`at 14-17).
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`nightmare, for both established and new characters, sanctions unchecked
`merchandising by parties with no involvement in the character’s creation or
`development. The Ninth Circuit has ruled that DC Comic’s merchandising rights
`related to the Batmobile protect against unauthorized replicas made for two specific
`but very different versions of the Batmobile. DC Comics, 802 F.3d at 1016. Similarly,
`the Ninth Circuit held the Halicki Parties own all of the merchandising rights related to
`the Eleanor car character, including from the Remake. Halicki Films, 547 F.3d at
`1222. Disney recently re-confirmed that the Halicki Parties own and Disney disclaims
`“any and all intellectual property rights and interests it has in the Eleanor car character
`[from the Remake].” (ECF No. 343-1.) The Halicki Parties respectfully submit the
`Order has improperly held the Eleanor car character to a higher standard than the
`Batmobile.
`Accordingly, the Halicki Parties request this Court amend its Order to include a
`certification that the Order is appropriate for immediate interlocutory review and stay
`proceedings until its disposition.
`II. PROCEDURAL HISTORY
`A. Most Remaining Claims and Counterclaims Implicate Copyright Issues
`The Halicki Parties have asserted copyright infringement (Counterclaim 6)
`against the Shelby and CR Parties for, among other things, their unauthorized
`manufacture, license, and sale of dozens of infringing replica Eleanors for $200,000-
`$300,000 each. The Halicki Parties have asserted other counterclaims that are
`intertwined with the copyright issues. Counterclaims 1, 2, 5 (breach of contract) are
`based, in part, on the Shelby and CR Parties’ contractual agreements not to infringe the
`copyright to the Eleanor car character as she appears in the copyrighted Remake.
`Counterclaim 4 (False Designation of Origin), Counterclaim 7 (California Business &
`Professions Code §17200), and Counterclaims 8 and 9 (Declaratory Relief) are based,
`in part, on the Shelby and CR Parties’ sale of replicas that improperly look like the
`Eleanor car character.
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`The Shelby Parties’ claims are also intertwined with the copyright issues. Claim
`2 (implied covenant of good faith and fair dealing) is based on the Halicki Parties’
`licensing of Eleanor replicas built before the prior settlement agreement. Claim 3
`(False Designation of Origin) is based on the Halicki Parties licensing Eleanor replicas
`to indicate that they are Eleanor replicas. Claim 5 (Trade Libel), Claim 6 (Common
`Law Unfair Competition), Claim 7 (California Business & Professions Code §17200),
`and Claim 8 (Declaratory Judgment) are based on alleged Halicki Parties’ statements
`that Eleanor replicas built by the CR Parties infringe the Halicki Parties’ copyrights.
`B. The Court’s November 29, 2022 Order
`As the copyrightability of the Eleanor car character is “an issue central to this
`case” (Order at 9), all parties moved for summary judgment on the issue. (ECF Nos.
`287, 291, and 294.) Oral argument occurred on June 13, 2022 (ECF. No. 328.) The
`Order held that “Eleanor is not entitled to standalone copyright protection as a matter
`of law” and “grant[ed] in substantial part the Shelby Parties’ motion for partial
`summary judgment on the issue of copyrightability and den[ied] the Halicki parties and
`CR Parties’ motions on the issue.” (Order at 23.)
`While the Halicki Parties do not agree with all of the findings made by the
`Court, the Court made the following relevant legal findings:3
`First, the Ninth Circuit has twice confronted the copyrightability of the Eleanor
`car character. In the first instance, the Ninth Circuit suggested Eleanor was a
`copyrightable character but remanded the issue. In the second instance, when
`examining the Batmobile, the Ninth Circuit gave an “implied yet strong suggestion
`that Eleanor is subject to [copyright] protection.” (Order at 4-5). The Court
`concluded the Ninth Circuit twice came to the wrong conclusion based on alleged
`factual inaccuracies. The Ninth Circuit stated that in both the Original Film and the
`Remake, “thefts of other cars go largely as planned, but whenever the main human
`
`3 This Motion is focused on the issues in the Order relevant to certification. The
`absence of discussion concerning other portions of the Order is not a concession that
`no other legal errors are present or a waiver of later appeal as to other issues.
`5
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`character tries to steal Eleanor, circumstances invariably become complicated.”
`Halicki Films, 547 F.3d at 1225.4 The Court found this conclusion “plainly false” as
`“several vehicle heists take left turns.” (Order at 6). In reaching this conclusion, the
`Court pointed to two thefts in the Original Film and three thefts in the Remake that
`went awry. (Id.) However:
` according to the storyline in the movies, excluding Eleanor, as only 2 out of
`48 (Original Film) and 5 out of 50 (Remake) thefts go awry, the Ninth Circuit
`was correct in saying the thefts went “largely as planned”;
` in none of these thefts identified by the Court was the main character trying
`to steal Eleanor; and
` the statement is correct that “whenever the main human character tries to
`steal Eleanor, circumstances invariably become complicated.”
`Second, the Court applied the three-prong test for copyrightability of a character
`as stated in Halicki Films, DC Comics, and Daniels v. Walt Disney Co., 958 F.3d 767,
`771 (9th Cir. 2020) (cleaned up):
`Although characters are not an enumerated copyrightable subject matter under
`the Copyright Act, there is a long history of extending copyright protection to
`graphically-depicted 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
`distinctive and contains some unique elements of expression.
`(Order at 8.)
`
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`4 In the Halicki Parties’ Motion for Summary Judgment on Copyrightability, counsel
`unartfully substituted “all” for “largely”. When asked about this change in terminology
`during oral argument, counsel for the Halicki Parties stated that the word “largely”
`should have been used instead.
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`Third, based on admissions, the Court found the first prong “readily met”
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`because “across all four works, Ford Mustang automobiles are given the designation
`Eleanor and assigned feminine pronouns.” (Id. at 8-9.)
`
`Fourth, regarding the second prong, while questioning “the wisdom” of the
`conclusion, the Court held Daniels requires “a character cannot be afforded
`independent copyright protection unless there are multiple works in which the
`character appears.” (Id. at 9.) This finding applies regardless of how often the
`character appears or how well delineated the character is in the movie. The Court held
`that a character receives no copyright protection unless and until it appears in “a
`collection of works.” (Id.)
`
`Fifth, regarding the second prong, the Court interpreted Daniels to mean if a
`work shows a character with traits varied with a prior iteration of the character, even a
`previously well-established character “could become uncopyrightable.” (Id. at 9-10.)
`The Court acknowledged reservations about this view of Daniels as it implies that the
`James Bond character may lose copyright protection if a woman was cast in the role.
`(Id. at 10.)
`Sixth, regarding the films, the Court made the following findings:
` Original Film: The “Eleanor designation [is used] to identify only 1973
`Ford Mustang fastbacks with yellow and black coloring”. (Order at 10 n.10.)
`While four Eleanors (with a “shared set of physical characteristics”) appear
`in the film, “the film spends the most screen time with the third Eleanor”
`which has a “home” at “International Towers in Long Beach,” is engaged in a
`police “chase sequence that lasts over 40 minutes” during which “the vehicle
`sustains significant damage” and where the main character escapes by having
`Eleanor perform a jump “through the air in a minute-long slow motion shot.”
`(Id. at 11-12.) At the end of the movie, the main character finds a fourth
`Eleanor and drives off. (Id. at 12.) The Court questioned whether the four
`Eleanors shared conceptual characteristics, even though they shared the
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`Eleanor name and the star and only character identified in the opening credits
`is “ELEANOR”. (Id.)
` The Junkman: The opening credits identify a “Special Guest” showing “a
`toy car, yellow and black Ford Mustang with damage mimicking that
`sustained to the vehicle in the chase scene from [Original Film]”. (Id. at 12-
`13.) The film shows a “single vehicle depicted similar to the vehicle the
`protagonist drives and severely damages in the chase sequence in the
`[Original Film]” with “Eleanor” painted on its side (among other things).
`(Order at 13.) Characters “argue about Eleanor’s present location” and the
`need to for her to be “transported to the location of the premiere of [Original
`Film]”. (Id.) The main character drives Eleanor to “evade a gunman”. (Id.)
`At the premiere, Eleanor is in the background of some shots, and “a stylized,
`painted depiction of a yellow Ford Mustang is featured on Gone in 60
`Seconds posters”. (Id.)
` Deadline Auto Theft: The movie mostly recycled and repurposed footage
`from the Original Film and The Junkman. (Id.)
` 2000 Remake: “Eleanor” refers to a 1967 Ford Mustang fastback that some
`characters identify as a Shelby GT500.5 (Id. at 14.) Eleanor is the main
`character’s “unicorn” for which he has “never successfully stolen.” (Id.) For
`most of the movie, Eleanor is a “gray and black” Ford Mustang “located at
`the International Towers in Long Beach.” (Id.) The main character “talks to
`this instance of Eleanor as if it is human on several occasions.” (Id.) Upon
`stealing Eleanor, the main character has a long police chase scene where
`Eleanor receives substantial damage and the main character escapes by
`having Eleanor perform a jump over a traffic jam. (Id.) At the end of the
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`5 Although some characters erroneously refer to Eleanor as a Shelby or GT500, it is
`undisputed that she is not a Shelby GT500 but a highly modified 1967 Ford Mustang
`fastback with numerous distinctive differences identified by unrebutted expert opinions
`and exhibits. The Court disregarded this evidence as the film portrays and the Court
`perceived Eleanor as a Shelby GT500. (Order at 14 n.13)
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`movie, the main character receives a second Eleanor that is rusted and
`stripped of paint and attempts to drive off. (Id.)
`Seventh, in evaluating consistent physical traits, the Court acknowledged
`Eleanor has always been a Ford Mustang fastback.6 (Order at 17.) Despite this
`consistent physical trait, the Court held that physical variations in different versions of
`Eleanor required a finding that the Eleanor character had a “lack of delineation” and
`was “lightly sketched.” (Id. at 16.) The Court noted Eleanor could be a 1973 (Original
`Film) or 1967 (Remake) Ford Mustang fastback; at the time of the Original Film a
`1973 car was not an old, rare car, but at the time of the Remake a 1967 car is an old,
`rare car; Eleanor could be in pristine condition, damaged condition, and/or have the
`words “Eleanor” painted on its side; and some modifications made to Eleanor in the
`Remake do not appear on Eleanor in the Original Film. (Id. at 16-19.)
`Eighth, in evaluating consistent conceptual traits, the Court held that in all four
`films the character is referred to as “Eleanor”, although in The Junkman, the name is
`only referenced in a single scene. (Order at 19.) The Court found “Eleanor”
`synonymous with “1973 Ford Mustang fastback” and “accepted for the purpose of
`argument that the Eleanor name is a consistent, identifiable trait”. (Id.) The Court
`found whenever the main character tried to steal Eleanor, she was difficult to keep
`stolen, but that the main character did not attempt to steal every Eleanor in every
`movie. (Id.) The Court found that when the main character drives Eleanor in chase
`scenes, Eleanor outmaneuvered police vehicles and executed long jumps, but not all
`Eleanors in all movies were involved in chase scenes. (Id. at 20.) The Court found
`while it was difficult for the main character to keep Eleanor stolen, it was only
`explicitly referred to as a “unicorn” or “elusive beauty” in the Remake. (Id.) Finally,
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`6 While Court did not dispute that Eleanor from the Remake was a highly modified
`Ford Mustang fastback, without any evidentiary support, the Court noted that in the
`Original Film, Eleanor was treated as an unexceptional Ford Mustang fastback. (Order
`at 17). The Court disregarded the undisputed declarations of Denice Halicki and
`Michael Leone that Eleanor from the Original Film was not a stock car, but a
`completely stripped car requiring over 250 hours of customization work and painted in
`a color scheme that could not be obtained from Ford.
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`the Court found that while the main human character drove Eleanor in the chase scenes
`skillfully and with talent, that reflected on the driver and not on any trait of Eleanor to
`“always save her leading man.” (Id.)
`Ninth, the Court disregarded the Halicki and Leone declarations (and exhibits)
`establishing the extent of fame, merchandising, and brand loyalty of Eleanor and the
`Gone in 60 Seconds franchise over the last 48 years and made a factual conclusion on
`summary judgment (without any supporting evidence) that a “Ford Mustang called by
`the name Eleanor” would not be recognized by the relevant audience as related to the
`Eleanor car character from the Gone in 60 Seconds franchise.7 (Id. at 21.) The Court
`concluded that the consistent physical and conceptual traits (a Ford Mustang fastback
`named Eleanor) are too lightly sketched to meet prong 2 of the Halicki Films, DC
`Comics, and Daniels test. (Id.)
`Tenth, regarding prong 3, the Court held only traits identified in prong 2 as
`appearing in every iteration of the character are relevant to prong 3. (Id. at 22.)
`Accordingly, despite unrebutted testimony of Michael Leone (and exhibits) of the
`distinctive modifications made to Eleanor in the Remake, the Court did not examine
`those distinctive modifications under prong 3 as they were not present in the Original
`Film. (Id.) The Court found the name Eleanor not distinctive as it is a standard
`feminine human name in the US, despite no evidence that any other car has ever been
`called Eleanor. (Id.) The Court made a factual finding on summary judgment, without
`any supporting evidence, that the name Eleanor applied to a car, let alone a Ford
`Mustang, would not evoke recognition as the character from the Gone in 60 Seconds
`franchise. (Id. at 23.)
`III. LEGAL STANDARD
`The requirements for certifying an order for interlocutory appeal under 28
`U.S.C. § 1292(b) are: “(1) that there be a controlling question of law, (2) that there be
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`7 As an example of fame, a Google search for the “moodsters character” from Daniels
`results in about 12,500 hits, many regarding the case, while a search for “Eleanor car
`character” results in about 8,600,000 hits.
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`substantial grounds for difference of opinion” about that question of law, and “(3) that
`an immediate appeal may materially advance the ultimate termination of the
`litigation.” Cement, 673 F.2d at 1026. “[A]ll that must be shown in order for a
`question to be ‘controlling’ is that resolution of the issue on appeal could materially
`affect the outcome of [the] litigation in the district court.” Id. at 1026; see also
`Beeman v. Anthem Prescription Mgmt., Inc., No. 04-407, 2007 WL 8433884, at *2
`(C.D. Cal. Aug. 2, 2007). The issue need not dispose of the entire case to qualify as
`“controlling.” See, e.g., U.S. v. Woodbury, 263 F.2d 784, 787 (9th Cir. 1959); Hoffman
`v. Citibank, No. 06-0571, 2007 WL 5659406, at *2 (C.D. Cal. Feb. 15, 2007).
`“A substantial ground for difference of opinion exists where reasonable jurists
`might disagree on an issue’s resolution . . . .” Reese, 643 F.3d at 688. Although
`conflicting decisions are