Gibson threatening the mandolin and guitar luthier community

[MikeEdgerton]

...99 percent of mandolin luthiers make an exact copy of Gibson's patented design (the F5)...

Was the F body style design patented? Has anyone got a copy of the patent? A quick search doesn't turn up any F style patents.

Orville's patent isn't much like the Gibson mandolin turned out to be. I think that's part of the issue here.

I don't think they ever did anything to protect the F design. I seriously doubt they will be able to claim it after this much time being in the wind.

[DaveGinNJ]

Is this suggesting that Gibson will take action against dealer's that sell the other offending guitars? Why would any dealer call Gibson to report themselves?

[Bertram Henze]

I am so glad my own instrument is far enough from looking like a legend that I can play it in peace, without fear of the ghost of a designer haunting it.

[foldedpath]

quite similarly, but somehow opposite, 99 percent of mandolin luthiers make an exact copy of Gibson's patented design (the F5) and in total violation, but in this case......wait for it......yep, Gibson is the enemy for designing something great and wonderful......right??!!!

How many luthiers are making exact copies of the design? And how many are incorporating their own ideas and improvements? How many customers actually don't want a Loar copy, and want something a little different within the classic body shape? It's not in violation either, because Gibson never managed to trademark the body shape (AFAIK).

My Lebeda F5 has a redwood top. Lloyd Loar would be horrified. What, you can make an F-style body with redwood as the carved top instead of spruce? Sacrilege!

It also has fat frets, a radiused fingerboard, and an "S" shaped cutoff at the end of the fingerboard instead of a Florida extension. The archtop carving isn't even a straight Gibson copy, with a wider than usual recurve at the edge. The finish on the top is semi-transparent dark chocolate brown, not a sunburst. It doesn't even look like a Gibson from far away, let alone up close!

There may be mandolin players here in the Cafe playing near-as-dammit copies of a Loar F5 down to the millimeter, but it sure as heck isn't 99% of the non-Gibson "F-style" mandolins out in the wild. What a boring world that would be, if all our mandolins weren't so different, and made by so many different talented luthiers.

[Jim Hilburn]

What's clear to me is that some folks here will always think that if you make an F5 then you are ripping off Gibson and I've been here long enough to know they will never be convinced otherwise. So I'm not trying anymore.

[Bill McCall]

Patents and trademarks are an interesting subject. A thread regarding the history of the Coke bottle provides some insight: (from the Coca-Cola company website)

"Patents expire after 14 years (the bottle patent was renewed again in 1937,) by 1951, all patents on the shape had expired. The company approached the Patent Office that the bottles shape, “distinctively shaped contour,” was so well known that it should be granted Trademark status. While it was highly unusual for a commercial package to be granted that status, on April 12th, 1961, the Coca-Cola bottle was recognized as a trademark, in part bolstered by the fact that a 1949 study showed that less than 1% of Americans could not identify the bottle of Coke by shape alone."

It'll be hard to tell if Gibson will prevail and even then the question of 'should it prevail' will be unresolved to many.

Haven't heard anybody on this site not recognize the F body shape, oval or round hole, as not being a feature/style that Gibson developed. The dependency on that shape and its obvious commercial value to nonGibson makers, probably has contributed to a lack of innovation in body styles of mandolins. I don't think you can ascribe the F shape as a technical requirement to the mandolin sound so the shape has been used for its commercial value. How that use is viewed clearly is a highly personal decision.

And just wait until politicians weigh in, foreign competition/copying/unfair trade. It'll only get more interesting.....

But I'll play my Gibson F5 and my nonGibson F5 and enjoy them both.

YMMV

[DHopkins]

Haven't heard anybody on this site not recognize the F body shape, oval or round hole, as not being a feature/style that Gibson developed.

Can you patent or copyright a hole?

[stringsattached]

Can you patent or copyright a hole?

I think Tim Hortons has a patent on the hole.

[foldedpath]

I think Tim Hortons has a patent on the hole.

And Courtney Love...

[Marty Jacobson]

Was the F body style design patented? Has anyone got a copy of the patent? A quick search doesn't turn up any F style patents.

If it were patented, it would be guaranteed to be public domain by this point. That's the point of a patent - you get exclusive rights for a time, then it's free for anyone to use. Trade dress and trademarks can be defensible for as long as you are policing it. They didn't police it, they lose the right to claim ownership.

They're trying to use intimidation and cash, but it won't work in the long run. RIAA proved that pretty well a few years ago.

There's no way they even have a majority market share on instruments made in Gibson-like shapes. And where do you draw the line? Is a PRS SC shape easily confused with a Les Paul? Good luck with that.

This is textbook poor handling of intellectual property (by that I mean the last 50 years of Gibson's IP practices) -- I'm actually surprised any self-respecting lawyers would sign up to represent Gibson on this. But I guess they're getting paid either way.

Time to make some Les Pauls?

[MikeEdgerton]

I do know that. At least it would show that they tried to protect the IP. They did patent the harp guitar shape. I don't think they have to worry about that one.

That might be an oxymoron.

[Jim Hilburn]

Like this?

[Wolfboy]

Quote from the attorney representing these companies:

"The goodwill they may have had is over."

That works both ways.

[Wolfboy]

Ooh, this should be good…

https://guitar.com/news/dean-seeks-t...-interference/

DEAN SEEKS TRADEMARK CANCELLATIONS AGAINST GIBSON, ALLEGES DEALER INTERFERENCE

Armadillo responds to counterfeit lawsuit by seeking the cancellation of Flying V, Explorer and ES-335 shape trademarks, and accuses Gibson of threatening guitar stores selling Dean and Luna guitars with legal action.

BY GUITAR.COM - 9TH JULY 2019

Last month, Gibson Brands filed a lawsuit in Texas against the parent company of Dean Guitars alleging trademark infringement and counterfeiting. Now Armadillo Enterprises has formally responded to the suit, seeking to dismiss the case and filing a counterclaim that not only seeks to invalidate the US trademarks on Gibson’s Flying V, Explorer and ES-335 body shapes, but also accuses Gibson of interfering with its dealer relationships, and even threatening guitar stores that stock Dean and Luna guitars with legal action. […]

In the countersuit filed in US District Court for the Eastern District of Texas on 8 July, Armadillo alleges “tortious interference with Armadillo’s business relationships and/or contracts” on the part of Gibson in the months leading up to the suit’s filing on 6 June 2019.

“Prior to filing and/or service of Gibson’s Complaint, Gibson contacted guitar dealers (including Armadillo’s dealers), threatening legal action and demanding that dealers remove all Armadillo guitars with the V, Z, and/or semi-hollow guitar shapes,” the suit reads.

The suit cites the example of Carlino Guitars – a guitar shop in Medford, Massachusetts – which it claims was sent cease and desist letters by Gibson in April and May 2019. The letters allegedly demanded the removal of all Dean V and Z guitars from the shop’s website, accused them of being party to trademark infringement by stocking Dean instruments, and threatened the store with legal action if they didn’t comply.

The suit claims that based on “information and belief” that Gibson sent similar letters to other dealers and retailers, “with the intent of disruption Armadillo’s sales and contractual relationships.” […]

The counterclaim notes that many Armadillo dealers are also Gibson dealers and claims that these “threatening communications” led to numerous calls from dealers who were, “concerned and afraid to continue to deal with Armadillo,” and as such damaged its sales and business relationships.

The most potentially impactful aspect of the filings relates to the issue of the trademarks of the Flying V, Explorer and ES-335 body shapes. These marks were a key part of Gibson’s original counterfeiting claim, and as part of its defence, Armadillo is not only trying to prove that the claims are without merit, but crucially it also seeks to get the trademarks cancelled altogether.

“The above designs have been prominently used and promoted for years and, in some instances, decades,” the suit reads. “All the while, Gibson sat on its purported rights and failed to object.” The suit goes on to claim that Dean has invested millions of dollars promoting and marketing guitars with those shapes in that period, and as such, “some of Gibson’s accused trademarks are invalid because they are generic and/or incapable of serving as a source identifier for guitars.”

Back in 2009, Fender lost a similar case, which ruled that after 60 years of universal use, the Stratocaster, Telecaster and P-Bass body shapes were so commonplace they’d become generic (and as such could not be trademarked), while Gibson is already dealing with a suit relating to the ES-335 shape trademark that dates back to 2014.

In calling for the counterfeiting claim to be dismissed, Armadillo claims that its long history of making these guitars renders the notion that they could be counterfeits invalid – “Armadillo’s product shapes are commonplace and are all branded with its distinct, well-known Dean and/or Luna house marks and distinct-looking headstocks,” the motion reads. “To suggest that famous musicians like Michael Schenker, Eric Peterson, Christian Martucci, and John Connolly have openly promoted, played, and endorsed spurious, ‘counterfeit’ products on stages across the world is absurd.”

The counterclaim demands the cancellation of Gibson’s Flying V, Explorer and ES-335 body shape trademarks, and seeks the “maximum damages permitted by law” for the alleged interference caused by the company’s communication with Dean and Gibson dealers.

Guitar.com has contacted Gibson for comment on Armadillo’s counterclaims, and will update this story as it develops.

[MikeEdgerton]

Like this?

If you contact these guys you can probably put this signature on the headstock legally. It appears that his estate owns the signature.

[Simon DS]

Please Gibson, I don’t want any trouble!
I posted this on a joke thread -I like to keep jokes separate from serious threads.

I’m really sorry Gibson, just a joke.

[Wolfboy]

Was the F body style design patented? Has anyone got a copy of the patent? A quick search doesn't turn up any F style patents.

Patents expire after 14 years [...] It'll be hard to tell if Gibson will prevail and even then the question of 'should it prevail' will be unresolved to many.

If it were patented, it would be guaranteed to be public domain by this point. That's the point of a patent - you get exclusive rights for a time, then it's free for anyone to use. Trade dress and trademarks can be defensible for as long as you are policing it. They didn't police it, they lose the right to claim ownership.

They're trying to use intimidation and cash, but it won't work in the long run. RIAA proved that pretty well a few years ago.

There's no way they even have a majority market share on instruments made in Gibson-like shapes. And where do you draw the line? Is a PRS SC shape easily confused with a Les Paul? Good luck with that.

To the best of my knowledge (not being a lawyer), Gibson doesn't have either patents or trademarks on either the F5 body shape or headstock shape. They do have a trademark on the overall F5 headstock with their specific inlay pattern, but not the headstock shape by itself - any mandolin builder can use that shape as long as the inlay pattern is different (or there's no inlay at all). This point of knowledge comes from a well-known luthier I spoke with recently who has direct experience dealing with Gibson, and who also has very good legal counsel.

So even if Gibson turns their corporate ire away from electric guitar builders long enough to focus on mandolin builders, folks who make F5-style mandolins shouldn't have anything to worry about as long as they're not copying Gibson's specific inlay patterns, despite whatever huffing and puffing Gibson might do.

[Mandolin Cafe]

Bit of what has already been covered from a different angle courtesy musicradar.com:

Gibson threatened dealers with legal action unless they stopped selling Dean guitars, alleges Dean

[Bertram Henze]

The counterclaim demands the cancellation of Gibson’s Flying V, Explorer and ES-335 body shape trademarks, and seeks the “maximum damages permitted by law” for the alleged interference caused by the company’s communication with Dean and Gibson dealers.

Yeah, time to turn everything around.

[Wolfboy]

Maybe we should put these folks on the case: https://www.deanandgibson.com/

[Dillon]

[BradKlein]

Hopefully, the corporate might of Gibson will put an end to this commercial and its accompanying jingle. I'm not even sure that Kid can play guitar... ;-)

[tim noble]

How about the irony that Roger Siminoff was studying Loar F5s and making instruments and kits for sale to the public since the 1970s. His book included detailed drawings of all the features down to the fern inlay and headstock shape and profiles. He even sold precut fern inlays. Flash forward and he becomes a prime consultant for the reinvention of the Gibson F5L. So the guy primarily responsible for the companies renewed interest in the instrument and assisting in significant improvements thereby establishing Gibson mandolins as a viable alternative to small shop makers, was in fact blatantly infringing of their trademarks and patents. My 1976 F5 is being played by a top professional in the north west (his name withheld to protect the guilty) and my 1977 is now in hiding so as not to be discovered by their lawyers.

[Joe Dodson]

One point that's been left out of this discussion (or maybe not, since I haven't read anything like all 21 pages of this stuff) is a recognition that this is very likely coming from Gibson's new owners, KKR & Co. Inc., who basically assumed ownership last November as a result of the most recent pre-packaged bankruptcy. They've probably got a three- to five-year exit strategy that's based on maximizing brand value and flipping the company to the highest bidding successive owner.

The part of me that's spent 18 years practicing commercial litigation doesn't really care much about what these guys have to say about "Playing AuthenticTM." This is part of an investment strategy by people with no legitimate connection to Gibson's undeniable musical heritage. The "Director of Brand Experience" in the YouTube video looks like he changed out of a suit to film that dreck. These guys are barbarians. They'll be gone in 60 months. Hopefully they will do more good by preserving the company's future than harm to it's goodwill. But I think it's an error to treat them as truly speaking for the same "Gibson" that you and I think of when you think of Maybelle Carter, Bill Monroe, David Grisman, Les Paul and so many others.

[Russ Jordan]

Does anyone know of action taken by Gibson against other mandolin companies/builders?