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Appeals Court Ruling Signals End to Shelby Lawsuits Over Cobra Shape.
An important ruling that affects the Cobra Replica industry was recently handed down from the United States Court of Appeals for the First Circuit, January 18, 2006. The decision is great news for the custom car/replica industry in that it eliminates any possible future lawsuits over the reproduction of the shape (trade-dress) of the famous and often copied 1965 427 AC and Shelby Cobra.
The ruling and its impact are easier to understand with a brief summary of the history the legal wranglings between Shelby, Factory Five Racing, and other replica makers. These legal fights have been primarily focused on two things. First at issue has been the use of the word COBRA and related badges (COBRA is a registered trademark of the Ford Motor company). The second dispute has been over the shape (trade-dress) of the car and the accompanying rights to manufacture modern day versions of it.
The recent ruling by the First Circuit Court of Appeals denies a request by Shelby and Superformance International, Inc. (a manufacturer of a Cobra replica kit cars) to vacate a previous ruling (Superformance v Shelby 2002) whereby Superformance won a partial summary judgement victory against Shelby with respect to the shape (trade dress) of the Cobra. The summary judgement addressed the shape issues but left several other trademark issues open. The relevant part of the 2002 ruling by Judge Rya Zobel, of the U.S. First District court, was that the shape of the 427 Cobra was not the protected trade dress of Carroll Shelby.
Shortly thereafter, Shelby and Superformance entered into an agreement and requested the remaining issues be closed and the original decision regarding trade-dress, or shape, be vacated. The agreement with Superformance whereby Superformance would be a licensee of the shape and name from Shelby among other things was enacted, but the court declined to vacate the original judgement which established that Shelby had no trade dress rights to the car.
Shelby and Superformance then appealed the decision of the court NOT to vacate the trade-dress ruling. It is this denial of appeal that was recently (Jan 18, 2006) ruled on. Had the appeal succeeded, it would have vacated the standing ruling that determined the shape of the car was not protected. This may have enabled Shelby to potentially seek damages against still other replica companies.
A small group of replica makers filed what is called an “Amicus Brief”. This is a brief filed on behalf of affected parties. It was successfully argued that the outcome of the pending appeal could have a direct bearing on replica makers. Based on the evidence in the amicus brief, the Shelby-Superformance petition was denied, leaving stand the original ruling that the 427 Cobra shape is not Shelby’s intellectual property.
Why would Superformance, a kit car/replica maker seek to vacate a ruling that proved Shelby had no rights to the shape? Reasonable people could assume that Superformance was seeking a competitive advantage against its replica competitors, in contradiction to its previous legal contention that the shape was not protected.
The denial of the appeal sets in stone the final ruling that the shape of the 427 Cobra is not protectable and eliminates the possibility that Shelby can seek further action against other replica makers based on the shape of the car. The final ruling also makes it unlikely in the extreme that Shelby will be granted a patent on the shape of the car from the US Patent and Trademark office (something he is at last check, still attempting to do).
Without a doubt, this is the end of litigation with respect to the shape of the car. It is now a matter of settled law that the shape of the famous 427 Cobra has passed into the public domain and become a true genre of car.
Note: The Superformance-Shelby agreement was difficult for us here at Factory Five to understand. Following a three year battle between Factory Five Racing, Inc. and Shelby, in 2001 we reached an agreement whereby Factory Five agreed to not use the word “COBRA” but was free to make the shape of the car without prosecution. Following the agreement, we made our complete volume of evidence freely available to other kit car companies in an effort to protect the industry from further legal action. Soon afterwards, Superformance was victorious against Shelby regarding trade dress, based almost exclusively on the amassed evidence that was provided by us at no cost to them. This evidence and consumer survey data provided to at no charge to Superformance by Factory Five Racing, Inc. cost more than $300,000!
After winning in court with this evidence, it was hard for us to understand why Superformance would proceed to form an alliance with Shelby (to the apparent detriment of the rest of the industry) when they had received help in their time of need. Today’s ruling means that the Superformance license with Shelby is an agreement to license something that is public domain. Karma indeed.
· Click here to read The United States Court of Appeals Ruling, Jan 18, 2006 (PDF file) |