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Thread: Gibson threatening the mandolin and guitar luthier community

  1. #551

    Default Re: Gibson threatening the mandolin and guitar luthier community

    Oooh, I really want to spend some quality time in Iowa City!
    Quality time in Iowa City includes going down to the Mill every second and fourth Wednesday of the month to hear Bob Black (yes that Bob Black) and some of his friends play the real genuine bluegrass music. The cover charge is really minimal.

    Not to mention Greg Brown and a few others who occasionally get scheduled there for concerts in a real up close setting. Greg Brown grew up around here.

    Also the first weekend in June they have a community arts festival where they close the downtown streets and have art, food and free concerts with people like Sam Bush, Aiofe O Donovan, Tim O' Brien, Darrell Scott and the like as headliners. There is a similar level jazz festival once a year.

    So it is not all bad.

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  3. #552
    Howling at the moon Wolfboy's Avatar
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    Aug 2007
    Black Mountain, NC

    Default Re: Gibson threatening the mandolin and guitar luthier community

    Interesting post here from a trademark lawyer:


    Armadillo Distribution Enterprises – the entity that owns Dean Guitars and Luna Guitars – has submitted its opening salvo in response to Gibson’s trademark infringement lawsuit. On July 8th, Armadillo filed a 49 page Answer and Counterclaims. It also filed a separate Motion to Dismiss the allegations of “counterfeiting” by Gibson. Both of these legal filings by Armadillo seek to document a series of factual and legal errors that were conveniently left out of Gibson’s claims.

    The highlights of Armadillo’s myriad responses are the following:

    - It is legally impossible for Dean’s V and Explorer guitars to be “counterfeits”
    - Armadillo has used the V and Z (Explorer) guitar shapes since at least 1976 and that Gibson “sat on its purported rights and failed to object”
    - Gibson’s alleged trademarks and trademark rights are “invalid” because they are generic and/or incapable of serving as source identifiers for guitars
    - Armadillo’s use of the term “Modern” to describe its guitars is Fair Use
    - Gibson has interfered with Armadillo’s business by unlawfully threatening distributors

    Of course, the Answer and Counterclaims filed by Armadillo are written in a way that is heavily slanted in its favor. This response, however, does introduce new facts and history that was absent from Gibson’s own lawsuit filings. As a trademark lawyer and a guitar player, this case remains absolutely fascinating to me and I wanted to provide a quick summary and high-level legal analysis of the parties’ positions as of today.

    Gibson’s Counterfeiting Claims

    Gibson’s lawsuit alleges that Armadillo (through Dean and Luna) used “counterfeit versions” of Gibson’s Flying V, Explorer, SG, and Dove Wing Headstock designs on both electric and acoustic guitars. Gibson is not required to provide substantial evidence in its original filings, but Armadillo’s Answer and Motion to Dismiss absolutely drops the hammer on Gibson’s counterfeiting claims.

    Under U.S. law, a counterfeit is a “spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” Essentially, a counterfeit “is something that purports to be something that it is not.” Gibson’s assertion that Dean and Luna guitars are counterfeits necessarily suggests to the court that these guitars are being passed off as genuine Gibson guitars and not just mere imitations or guitars with similar designs.

    Armadillo’s lawyers pounced on this claim for obvious reasons. Because Gibson previously tried this same argument just a few years ago and it failed spectacularly. On similar claims for counterfeiting by Gibson in 2016, a district court in California held the following:

    "[t]o the extent that Gibson allegedly relies on its body shape and headstock shape as a source identifier, no rational jury could find that a particular body shape or headstock stamped with a different guitar brand is a counterfeit of a Gibson trademark."

    Ouch. These prior counterfeiting claims were dismissed for good reason. The bar for proving a counterfeit is exceptionally high. The law governing counterfeits addresses a very narrow type of product, in that the majority of appropriately filed “counterfeit” cases “involve obviously identical marks.” In short, Armadillo’s lawyers assert (and I agree) that no reasonable guitar purchaser is going to think they are buying a genuine Gibson guitar when they walk out of the store with a Dean or Luna guitar. The headstocks clearly use DEAN or LUNA marks and logos. There is nothing on the label that would suggest that these are Gibson-branded products. Armadillo’s Motion to Dismiss included pages of side-by-side graphics demonstrating the different headstocks and descriptions that would negate any claims of “counterfeiting.”

    I anticipate that the Court will grant Armadillo’s Motion to Dismiss the counterfeiting claims.

    Generic and/or Invalid Trademarks

    The core of Armadillo’s Answer is that four of Gibson’s U.S. trademark registrations should be cancelled on grounds that the body designs are generic and/or invalid. I have previously written an analysis on this issue anticipating these very defenses. Legally speaking, by saying the body designs are “generic,” Armadillo is claiming that the Flying V, Explorer (Z), SG, and semi-hollow body styles are so commonly used in the industry by others that it no longer signifies one specific manufacturer to guitar players in the industry. In layman’s terms, Armadillo claims that Gibson’s allegedly distinctive body shapes are more like the use of the term ASPIRIN in the pharmaceutical industry. These shapes are too common to be associated with just one brand. They are generic. Generic marks are never enforceable as trademarks. Armadillo’s Answer provided pages and pages of examples of these substantial third-party uses.

    Now, before I continue, I want to make one thing very clear: there is a difference between a trademark and a “trademark registration.” Armadillo’s legal filings are seeking to cancel Gibson’s trademark registrations, which are effectively certificates issued by the USPTO recognizing that Gibson has claimed and demonstrated rights to certain trademarks. If Gibson’s trademark registrations are cancelled that does not mean that it loses the underlying trademarks. Gibson would still theoretically own and have legally enforceable rights to these trademarks, even without a registration, unless they are declared “generic.” (The registrations provide additional legal benefits and presumptions when you enforce trademarks in a legal proceeding.)

    Nevertheless, I tend to side with Armadillo on this issue too. It is possible that in the 1950s, Gibson’s Flying V and Explorer models were so distinctive and unique that any respectable guitar player inherently associated these models with the Gibson brand. But that is no longer the case. Dean Guitars claims to have used these models since the 1970s. I know other brands have been using the V and semi-hollow body shapes for many years as well. Gibson only recently began seeking to enforce these as “trademarks.” Gibson Brands, Inc. did not even file for registrations until the 1990s. Gibson’s failure to enforce its purported trademark rights until now dovetails with the claims of genericness. These are known as the legal doctrines of “laches” and “acquiescence” – both of which are explicitly asserted as defenses by Armadillo. These are the fancy lawyer words for “tough luck; you waited too long.”

    Overall, I think Armadillo has most of the facts and law on its side. This case is far from over though. Most trademark cases will involve substantial survey and customer impression evidence. There will be expert testimony. It is a long, expensive process unless the parties settle. Plus, the “Gibson” brand is likely more famous than the Dean and Luna brands to the average person. It is unlikely that the fact finder(s) will be familiar with the other various guitar brands in the industry, so Gibson’s name brand might sway the uninitiated to some degree.

    My personal opinion though? As a trademark lawyer and also as someone who has been playing guitar for over 20 years? I think that all of these body shapes are generic and no longer function as trademarks. I think Gibson is overstepping and it will backfire.

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