Dean Guitar Counter-Sues Against Gibson Guitars, Attempts To Invalidate Several Trademarks
from the dis-chord dept
Earlier this month, we discussed how Gibson Guitar CEO James Curleigh had recently announced a shift in its IP enforcement strategy to try to be more permissive. That has since calcified into an actual formal plan, but we’ll get into that more in a separate post because there is enough good and bad in it to be worth discussing. What kicked Curleigh’s reveal, however, was backlash from a recent lawsuit filed by Gibson against Armadillo Distribution Enterprises, the parent owner of Dean Guitars. Dean sells several guitars that Gibson claims are trademark violations of its famed “flying v” and “explorer” body shapes. There are differences in the designs, to be clear, but there are also similarities. Even as Curleigh’s plans for a more permissive IP attitude for Gibson go into effect, this lawsuit continues.
But not without Armadillo punching back, it seems. In response to the suit, Armadillo has decided to counter-sue with claims that Gibson’s designs are not only too generic to be worthy of trademark protection, but also that Gibson’s actions constitute interference with its legitimate business. We’ll start with the trademarks.
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”.
As the article points out, there is precedence for this. A decade ago, Fender lost the right to trademark several guitar designs that it had failed to protect, while Gibson itself fell victim to this same thing in the early 2000s. While some may point to this as being evidence that companies must aggressively protect their intellectual property, I would argue that such designs of guitars are not great source-identifiers for the public and probably shouldn’t have been afforded trademark protection to begin with. Regardless, if Gibson once again allowed others to use variations of these designs, that point is moot, as the designs would have become generic in the marketplace.
As to the interference with Dean’s business in the market, it seems that Gibson didn’t only contact Dean about the alleged infringement, but dealers of guitars as well.
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”.
This is fairly aggressive on the part of Gibson, as these guitar dealers are stocking Dean guitars with the good faith understanding that they aren’t selling counterfeit products. And, frankly, given Gibson’s failure to protect their supposedly valid trademarks in the past, it sure reads as though Gibson jumped the gun on sending out these legal notices to dealers before getting its own lawsuit over the trademark claims adjudicated. With that move, Dean’s counterclaim probably rests on how the court judges the trademark issue, which is an avenue of legal exposure that is unnecessary for Gibson to have endured. I’m a bit surprised the company’s legal team wasn’t more cautious.
In the end, because of Gibson’s aggressive enforcement stance, even as the company is proclaiming a new era of relaxed IP enforcement, there is now the very real risk of the company losing its trademarks and incurring costs.
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.
The outcome of this will be interesting, if only to see if Gibson will suffer one final blow for its previously aggressive trademark enforcement.