A Guitar by Any Other Name

Gibson guitars sues JHS, a British instrument manufacturer for using Gibson’s distinct and trademarked body shapes to confuse consumers into believing that they were purchasing genuine Gibson guitars
March 31, 2017

On March 7, 2017, attorneys for the guitar manufacturer Gibson began opening arguments against British instrument manufacturer John Hornby Skewes, Co. (JHS) alleging that JHS intentionally infringed on the design of four popular Gibson guitar shapes.[1] Per the complaint filed in January 2014, Gibson alleges that JHS used Gibson’s distinct and trademarked body shapes in print and online advertising with the intent of confusing consumers into the belief that they were purchasing genuine Gibson guitars.[2]

For many, the thought of an electric guitar brings to mind the guitar shapes of two iconic guitar manufacturers: Fender and Gibson.[3] However, in the world of guitar design, it is often difficult to distinguish the manufacturer of a guitar from the shape alone.[4]  Since their inception, the Les Paul and other shapes of guitars made by Gibson have been copied and re-branded by both boutique and mass market guitar manufacturers hoping to cash in on the popularity of the guitar’s shape and iconic presence in the music industry.[5] Although Gibson has a long history of vigorously defending the trademark on the unique “open book” design of the headstock on its guitars, the manufacturer did not seek trademark protection on the shapes of its guitar bodies until the late 1980s and early 1990s.[6] However, since the body styles of Gibson guitars have been copied extensively by others since their introduction in the 1950s and 60s, Gibson faces an uphill battle in defending their designs, particularly since Fender was denied similar trademark protection in the 2000s because of the ubiquity of their guitar shapes.[7]

In a similar lawsuit brought in 2000, Gibson claimed that high-quality guitar manufacturer Paul Reed Smith (PRS) had infringed upon Gibson’s trademarked Les Paul body style and Gibson brought sweeping allegations of unfair competition, fraud, and deceptive business practices against the U.S. manufacturer.[8] While Gibson succeeded at the district court level and banned PRS’ production of “single-cut” guitars for a year, the Sixth Circuit Court of Appeals overturned the injunction.[9] The Sixth Circuit found that that while the two guitar designs might look similar in a “smoky bar” from a distance, it was unlikely for a buyer to confuse the two at point of sale and that no attempt was being made by PRS to confuse consumers.[10] More recently, Gibson brought another lawsuit against JHS and Viacom over the trademarked “Flying V” shape of a SpongeBob SquarePants-themed ukulele manufactured by JHS.[11] Although the district court dismissed Gibson’s claims against JHS due to a lack of subject matter jurisdiction, and Viacom (who licensed the SpongeBob to JHS for certain products) for a failure to adequately prove vicarious liability, the Ninth Circuit disagreed with the lower court’s assessment of subject matter jurisdiction and remanded Gibson’s claim against JHS alone for reconsideration.[12]

The rulings in Gibson’s lawsuits against JHS are important not only for the manufacturers of budget “knockoff” guitars, but also for small-scale guitar builders who often use the generic shapes of popular guitars and improve upon different aspects of their “stock” design.[13] Particularly if Gibson is successful in its lawsuit, it will become much more difficult to determine how much guitar designers can legally “borrow” from their global counterparts before finding themselves knee-deep in lawsuits.[14] Despite the strong arguments in favor of protecting unique designs, the fact remains that decades of copying has played an enormous role in helping Gibson and Fender designs become synonymous with the idea of an electric guitar.[15] In any case, one can only hope that these lawsuits will lead to an outpouring of unique and unconventional designs from guitar builders both large and small.

[1] See Daniel Siegal, Gibson Tells Jury UK Co. Stole Its Iconic Guitar Designs, Law360 (Mar. 7, 2017, 10:12 PM), https://www.law360.com/articles/899423/gibson-tells-jury-uk-co-stole-its-iconic-guitar-designs.

[2] See Compl. ¶ 20-23, Gibson Brands, Inc. v. John Hornby Skewes & Co. Ltd., No. CV 14-00609-DDP (SSx), 2014 WL 358596 (C.D. Cal. Jan. 27, 2014).

[3] See Craig Havighurst, Shapes of Things: A Brief History of the Peculiar Behind-the-Scenes War Over Guitar Designs, Premier Guitar (Nov. 16, 2010), https://www.premierguitar.com/articles/print/Shapes_of_Things_A_Brief_History_of_the_Peculiar_Behind_the_Scenes_War_Over_Guitar_Designs_.

[4] Siegal, supra note 1.

[5] Havighurst, supra note 3.

[6] See Foley & Lardner LLP, A Familiar Riff: Gibson's Trade Dress Application Once Again Asks Whether a Guitar Body Shape Can Indicate Source, IP Litigation Current (Oct. 29, 2014), https://www.iplitigationcurrent.com/2014/10/29/a-familiar-riff-gibsons-trade-dress-application-once-again-asks-whether-a-guitar-body-shape-can-indicate-source.

[7] Havighurst, supra note 3. Although Gibson and Fender have struggled to establish strong trademarks over body shapes, other companies such as Rickenbacker have protected the design of their guitar bodies for decades and have been far more successful in defending their designs and keeping copies off of the market. See Jeffrey Davidson, Three Chords and a Lawsuit: A Brief History of Guitars and Trademarks, IP Registration & Enforcement Blog (Dec. 17, 2009), https://davidsontm.wordpress.com/2009/12/17/three-chords-and-a-lawsuit-a-brief-history-of-guitars-and-trademarks.

[8] Havighurst, supra note 3.

[9] Id.

[10] See Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 552-53 (6th Cir. 2005).

[11] See Matthew Heller, Viacom Beats Gibson's IP Suit Over SpongeBob Ukulele, Law360 (Mar. 8, 2013, 9:59 PM), https://www.law360.com/articles/422288/viacom-beats-gibson-s-ip-suit-over-spongebob-ukulele.

[12] See Gibson Brands, Inc. v. Viacom Int’l, Inc., 640 Fed. App’x. 677, 678-79 (9th Cir. 2016).

[13] Havighurst, supra note 3.

[14] Id.

[15] Id.