US law mag Law 360 reports that, in court, Gibson's lawyer claimed that JHS decided at “the highest level” to rip off Gibson Brands' iconic guitar designs, during opening statements, drawing a response from JHS that Gibson can't use trademark law to monopolise “standard shapes” for the instrument.
During the first day of the trial in downtown Los Angeles, Gibson attorney Kurt Schuettinger of Bates & Bates LLC gave his opening statement to an eight-person jury in front of a backdrop of about 10 guitars, some of which were made by JHS, and several blown-up posters of Gibson's registered trademarks. Gibson is alleging trademark infringement and unfair competition in its suit, which was filed in California's Central District in 2014
The guitar maker alleges that JHS knowingly and intentionally infringed six trademarks covering four guitar models: the Flying V, the ES, the trapezoidal Explorer, and the SG.
Schuettinger said that Gibson has spent millions of dollars to promote these particular guitar lines since the company first made them — in 1961 for the SG and 1958 for the others — and as a result, has built a reputation that includes books and museum pieces on the instruments. He added that the evidence will show that JHS' top directors went on the U.S. Patent & Trademark Office's website and actually looked up Gibson's trademark registrations,
“The decision to sell the guitars you see here was made at the highest level of JHS,” he said. “JHS and their distributor agreed they would rather beg for forgiveness than ask for permission, and you will see that quote in the emails in this case.”
Schuettinger said that JHS had lied to Gibson about when it started selling the alleged copies and when it stopped. “This is a simple case of trademark infringement and unfair competition,” Schuettinger.
Brent Davis of Scarinci and Hollenbeck LLC, representing JHS, told the jury during his opening statement that the evidence will actually show that many companies have used the allegedly unique trademarked guitar shapes over the decades — and that guitar customers know to look at the brand name on the headstock of a guitar to know who made it and not rely just on its shape.
“The problem here is that these outlines of body shapes and headstocks of guitars have been used by so many different companies for the last half century that they don’t belong to anyone. They’re just standard shapes used by the industry,” he said.
Davis said that Gibson's own representatives, when deposed, admitted that even they couldn't identify who made a guitar simply from looking at an outline of its shape, which is all the trademarks cover.
“This is a simple case. Lots of companies make something — it can’t possibly be an indicator of one company,” he said.
He added that the purportedly sinister USPTO website search Schuettinger had mentioned occurred in 2010, well after JHS had already designed and started selling its allegedly infringing guitars.
Gibson then called its first witness, Jason Davidson, the company's senior director of customer service, to the stand. The trial continues on Wednesday.
In 2012, Gibson brought a similar suit against JHS and Viacom International Inc., accusing Viacom of secondary infringement, alleging JHS distributed a Spongebob Squarepants-branded ukulele that infringed on Gibson’s "Flying V" trademark.
In February, a three-judge Ninth Circuit panel dismissed the claims against Viacom, saying Gibson didn't allege Viacom had the required amount of control over U.K.-based John Hornby Skewes & Co. Ltd.'s production and sale of the instrument to trigger liability. The appellate court did, however revive Gibson’s trademark infringement claim against JHS. That case is still pending.
UPDATE: On the evening of March 10th, Gibson issued the following press release:
Gibson Brands, Inc. is pleased to announce that the company has successfully confirmed the exclusive rights to their trademarked body and headstock designs of the iconic ES, SG, Flying V and Explorer guitar models as the result of a legal dispute and settlement with John Hornby Skewes and Co. Ltd. (JHS).
As part of the agreement, John Hornby Skewes and Co. Ltd. acknowledges Gibson’s exclusive rights to these products and designs after being sued for trademark infringement. Other specific terms of the agreement are confidential. Gibson is pleased with the result.
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