Here is the original press release from Shelby American International…--------------------
BOSTON, Feb. 7, 2001 /PRNewswire/ -- Shelby American Inc. and automotive manufacturing and racing legend Carroll Shelby, have launched a second lawsuit in Massachusetts Federal Court against a Cobra replica car manufacturer. This second action is against Superformance Complete Replicars, and follows a similar action brought against Factory Five last year. Both actions have been filed in the same Federal court and assert trademark infringement, dilution and unfair competition claims.
The suit charges Superformance with unlawful use of Shelby trademarks and other intellectual property rights. As is the case with Factory Five, the suit alleges that Superformance has manufactured and sold counterfeit copies of the famous Shelby Cobra 427S/C.
In an effort to curtail the misuse of the Shelby(R), Cobra(R) and 427S/C(R) trademarks, Shelby has for years tried diplomacy and negotiation, and such previous efforts have resulted in numerous licensing agreements covering a wide range of products. However, Shelby contends that several large replica manufacturers, including Factory Five and Superformance, seem determined to continue their counterfeiting operations, unless they are stopped by the Federal Courts.
The suit claims that Superformance and others sell packages featuring bodies that copy Shelby's famous roadster. The companies then market their packages as "faithful reproductions" of the 427S/C while frequently marking the cars with the Shelby(R), Cobra(R) and 427S/C(R) trademarks. This increasingly artful deception misrepresents a counterfeit as if it is an original, the suit further states.
The action by Shelby challenges Superformance's operation as a willful deception and unfair competition in violation of the Lanham Act and the Massachusetts unfair trade practices law. The suit seeks damages and attorney fees, which may exceed $10 million. Of critical importance to Shelby, the suit seeks an order to seize and destroy Superformance's fiberglass molds, which it uses to fabricate the Cobra 427S/C knockoff.
Shelby states, "As I said before, credit should be given where credit is due, and these knock-off car guys don't deserve the credit or profit, for what my team and Ford accomplished in the 60's." Superformance's continuing violation of federal trademark laws is particularly brazen because of the extent to which it uses virtually all of the Shelby trademarks to misrepresent their knock-off cars.
This action comes after the conclusion of legal proceedings in 1997 in Los Angeles Federal Court, in which Ford obtained a judgment, which recognized the Cobra trademark as the sole and exclusive property of Ford Motor Company. As part of the final resolution of the case, Ford granted Shelby an exclusive worldwide license to use the Cobra trademark and snake designs in connection with all 1960s Cobra vehicles, which Ford acknowledged were created by Carroll Shelby and manufactured by Shelby American, Inc. -- the world recognized Manufacturer of Record. The Shelby(R) and 427S/C(R) trademarks are the exclusive property of Carroll Shelby and his licensing company, Carroll Shelby Licensing, Inc., whose offices are located in Los Angeles, California.
Superformance Press Release - February 9, 2001
The President of Superformance International Inc, James C Price, today announced that Superformance has filed counterclaims against Caroll Shelby requesting a court order that Caroll Shelby does not own any valid trademark rights which would permit him to prevent the manufacture of replicas of the original Cobra. These counterclaims are in response to a lawsuit filed in Boston by Shelby and his associated companies alleging trademark infringement, dilution and unfair competition relating to Superformance's manufacture and sale of replicas of Cobra cars. Superformance has denied all Shelby's allegations, and has also requested that the court cancel Shelby's alleged trademark registrations on the grounds of their invalidity. Mr. Price stated today:
"We have received a summons and have briefed counsel to defend the allegations, which we categorically deny and believe are spurious. We have already filed counterclaims against Shelby to cancel the registrations of his alleged marks. We have the resources to defend the case, whatever it takes, and we are confident that a court of law will not support Shelby's claims."
The original Shelby Cobra was manufactured from just 1962 to 1967. It was not until 1992, 25 years after ceasing manufacture, that Shelby American, Inc. began producing Cobra replicas. In the interim 25 year period, dozens of manufacturers produced and sold Cobra replicas with Shelby's knowledge. Today, the number of Cobra replicas on the market overwhelmingly exceed the number of original Cobras. In published interviews during the 1980's, Shelby stated that he didn't mind people making "copies of that old car" and that he considered the Cobra replica industry to be a "compliment."
The counterclaims filed by Superformance state that Shelby and Ford have long since abandoned any rights in the Cobra name, the shape of the Cobra automobile, or the designations associated with the Cobra models because of their failure to prevent the widespread use of those names and shapes by replica manufacturers. For more than 24 years Shelby did not produce or sell Cobras or Cobra replicas and stood silently by as an entire Cobra replica industry evolved with his knowledge and acquiescence.
Superformance manufactures a range of component vehicles, including replicas of the 1960's Cobra sports car in South Africa and exports them to North America, Europe and Australia. Superformance's Cobra replicas are produced with the permission of AC Cars, United Kingdom, the manufacturer of the original Cobra body shape since the 1950's. As a matter of fact, AC Cars own and still have the original jigs, bucks and tooling, which neither Shelby nor Ford has any claim to. AC Cars have been building and selling the AC Cobra sports car from the 1950's to this very day. For further information, please contact Ms Lynda Zadra-Symes at (949) 760-0404 or (949) 760-9502.
The Judgment - August 22, 2002 8:15pm
In the matter of.... CARROLL SHELBY LICENSING, INC., SHELBY AMERICAN, INC. and FORD MOTOR COMPANY vs SUPERFORMANCE INT'L, INC. d/b/a SUPERFORMANCE COMPLETE REPLICARS
Ford, Shelby Claim Against Replica Maker Dismissed
Ford, Shelby Claim Against Replica Maker Dismissed
Boston, Aug. 22 (Bloomberg) -- Ford Motor Co. and race-car designer Carroll Shelby's vintage 1960s Cobra sports car doesn't have a distinctive enough shape to stop a supplier from selling kits to make replicas of it, a federal judge in Boston ruled.
Ford and Shelby's company, Las Vegas-based Shelby American Inc., sued Superformance International Inc. in December 2000, saying the supplier of sports car kits was illegally using the design of Cobra cars built by Shelby in the 1960s. U.S. District Court Judge Rya Zobel dismissed Ford and Shelby's counterfeiting claims, saying that Shelby couldn't establish the Cobra shape was distinctive enough to merit protection. The judge didn't dismiss claims related to other Cobra trademarks.
Shelby failed to "present any evidence that consumers associate the Cobra design with Shelby, and Shelby alone,'' the judge wrote in a ruling released yesterday. Zobel also found that jurors couldn't reasonably find for Ford on its counterfeiting claims because Superformance, which does business as Superformance Complete Replicars, used the Cobra mark on products not covered by Ford's registration. In February, Zobel ruled Wareham, Massachusetts-based Factory Five Racing Inc. couldn't sell replicas of Shelby cars.
Kathleen Vokes, a spokeswoman at Dearborn, Michigan-based Ford didn't have an immediate comment on the ruling. Officials at Shelby American and Superformance, which is based in Newport News, Virginia, didn't immediately return calls seeking comment. Shares of Ford rose 22 cents to $12.17 in New York Stock Exchange composite trading.