Big Court Battle Shaping Up Over Firms’ Cobra Knockoffs

When is a Cobra not a Cobra?

When someone other than Carroll Shelby makes it, according to lawsuits he, his company and Ford Motor Co. have filed against the two largest kit-car makers: Factory Five Performance of Wareham, Mass., and Superformance, which has several dealers nationwide, including one in Costa Mesa.

For their part, the kit-car makers claim that the name and shape of the Cobra car were abandoned long ago. Ford, which is a plaintiff in only the Factory Five case, and Shelby say that isn’t true.

The standpoint of the defendants is that the Cobra body itself is based on a previous car, the AC Ace. If that isn’t enough, they contend that the Cobra name and the shape of the 289 and 427 roadsters were abandoned when Shelby American Inc. ceased production in the 1960s.

The plaintiffs contend that all things Cobra essentially belong to Ford Motor Co. and that Shelby American has exclusive rights to use the Cobra name on any vehicle that looks like the trio of Cobra cars built by Shelby in the ‘60s.

Carroll Shelby sued Ford over the rights to the Cobra name in 1992. The judge initially ruled in Shelby’s favor on summary judgment. Ford appealed, and the U.S. 9th Circuit Court of Appeals, citing errors by the district court judge, set aside the judgment and sent the case back to the trial court to be reconsidered.

Before any resolution took place there, Shelby and Ford settled: Ford retained worldwide rights to the Cobra name, while Shelby obtained exclusive rights to use the name in association with the cars he developed in the 1960s and any reproductions of those vehicles.

Here’s where it gets complicated.

The plaintiffs base the current cases on that settlement. The defendants say that settlement isn’t binding on other parties because the trial court judge didn’t sign off on it.

Furthermore, Lynda Zadra-Symes, an attorney for Superformance, said Shelby’s contention in his 1992 suit against Ford that the Cobra name was generic was pinned to the fact that there were more than 35 companies making replica Cobras and using that name.

“If you have the shape coming from 35 different people for the last 20 years, then it’s not a trademark,” she said.

Shelby American said it has received U.S. Trademark Office recognition for the 289 and 427 S/C Cobra roadsters; a decision is pending on the Shelby-built Cobra Daytona Coupe race cars. Zadra-Symes said those applications were denied.

In trade dress [the shape of a product] cases, the governing point of law is that a particular shape must have a sole, direct connection to one manufacturer. Both sides agree on that.

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Legalities aside, there are strong emotions in both camps.

David Smith, co-founder of Factory Five, said the suit will harm Shelby’s legacy.

“The people who buy and build the replicas are some of his biggest fans,” he said in a telephone interview.

Messages posted on a Cobra discussion forum on the Web range from bewilderment to raw anger over the current legal wrangling.

“If he wins, he’ll have exclusive rights to the shape, which would disenfranchise over 50 companies and put a lot of people out of work.” Smith said. “I like and respect Carroll Shelby, but we have to defend our business.”

Replica owners and companies alike suggest that if Cobra knockoffs hadn’t been made starting nearly 30 years ago, the car would have passed into history.

Shelby, however, isn’t buying into that argument.

“How can I do this to them? They’ve kept the legend alive?” he said. “People died for it,” he said, referring to Ken Miles who was killed while testing a 427 S/C at Riverside International Raceway in 1966.

“We spent millions of dollars creating the name and the car and winning the world championship.”

“These knockoff-car guys don’t deserve the credit or the profit for what my team and Ford accomplished in the ‘60s.”

Shelby’s suits seek to end production by replica car makers.

The kit-car makers also wonder why Shelby waited so long to take action.

But Ed Dailey, Shelby American’s attorney in the cases, said action was taken long ago.

“Shelby had been going after the replica makers since 1982,” Daily said. “It’s clear from the record that Shelby American and Shelby were trying to pursue licensing agreements. Specifications were prepared for the cars, and licensees needed to comply with those.”

Said Shelby: “I couldn’t go after these people [replica makers] legally because I was told that Ford owned the name. I sold [Ford] trade dress rights to the car in 1964 and Ford has given it back to me.”

A hearing is scheduled for Oct. 26 in federal district court in Boston.