Guest editorial by Ron Bienstock
Over the last thirty years, there have been several major legal decisions involving intellectual property concerning guitars and basses. Having been a part of most of these cases, what still amazes me is the amount of misinformation and mythology that has arisen around these actions. Almost daily, I am asked about “lawsuit guitars” in one case or another, as the accounts of what actually happened in those cases become twisted and mangled. These mistaken interpretations require a re-set as to their practical meaning and importance to a builder or a fan.
The actual decisions in the cases (which are not as numerous as claimed or thought), have become fodder for conspiracy theorists, press spin by the losing company, incorrect assumptions by guitar collectors and fans, and subject to misinterpretation by the “players” on the blogs and chat rooms. Usually the first step down the slippery slope to myth is confusing the essential area of intellectual property that was in question in a particular case. Generally, it can only be one of the following: copyright, trademark, or patent. Copyright applies to written and visual works (yes, that includes songs and sound recordings), trademarks to the names, logos and/or product configurations (yes, it can be a color or even a sound), patents apply to the utility function of a device or a methodology (a utility patent, which lasts for 20 years) or an ornamental look or design (a design patent, which lasts for 14 years).
With that stated, copyright is almost never the issue – so, please stop saying, “copyrighted headstocks or body designs.” Headstocks and body shapes typically serve as trademarks. Alternatively however, one can have a design patent on a body shape and headstock if it is purely decorative (and, yes, this goes even for objects with some functional aspects). However, that design patent only lasts for 14 years, whereas trademarks may last indefinitely as long as they are renewed properly and continually used in commerce. Theoretically, one could have a trademark and a design patent run concurrently; however, this seldom occurs because of the duplicative boots, galoshes, suspenders, and belts, and expense overkill theory. Therefore, when we are speaking about guitar body shapes and headstocks, we are usually speaking about trademarks.
So I would like to set the record straight on a few MI trademark myths…
MI Myth #1. “I can copy someone else’s headstock as long as I maintain a 5 – 10 percent difference.”
The legal standard is that a trademark may not be “confusingly similar” to another. Accordingly, this concept clearly cannot be accurate. If we had measurements involving calculators and calipers that could tell the difference between headstocks for us, then we would not need to engage the court system. Issues considered “confusingly similar,” along with theories that may apply to trademarks, are issues that come before a judge or jury if the parties cannot work out an resolution on their own. Most of the major headstock cases began in the 1980s and are public record. Many cases do not even lead to a decision because they are settled out of court. Thus ….
MI Myth #2. “I heard that XYZ company lost big on that case.”
I can say with great certainty that most cases settle. So precedential decisions (decisions that can later be used to support or undermine a position in a later case), are not issued by the courts in those situations. In Federal Court, 95-98 percent of all cases settle. Even if a case does not settle, it may still not result in a precedential decision. This can occur in the Trademark Trials and Appeals Board where the parties often go to fight it out over the registration and maintenance of trademarks.
One thing I must make clear: A settlement is not a win or a loss, but is rather the result of negotiation. Therefore, most parties in a lawsuit walk away with a practical business solution.
MI Myth #3. “Well if he can get away with it, so can I.”
Eventually there is a day of reckoning in the MI business. The wakeup call may come from something someone else notices in an ad, a display at a NAMM show, on a website, or even a press release photo. Sooner or later, some company, rightly or wrongly, is going to say, “Your headstock/body-shape/logo… looks like mine.” While “looks like mine” is not a legal standard, it stands for the concept that if “Billy Joe Bob Guitars” is getting away with it, then why can’t someone else be able to do so as well? This is consequently followed by “Why did they send me the cease-and-desist letter and not him?” Which leads us to…
MI Myth #4. “I just got a letter from XYZ and I am being sued by those #%@$&!…”
Although a cease and desist letter from a third party or their attorney concerning a trademark matter should be taken most seriously, it is not a lawsuit. On the other hand, if someone serves you with a complaint, then that is different. You are then involved with some form of legal action with a third party.
Almost anyone now can source guitars from an offshore factory. The days of having to purchase full container loads are for the most part a thing of the past. If you have a design in mind, someone can source it, and someone will build it for you. In addition, there are many fine builders working by themselves or with one other person in shops in their garages and small workshops. This has given rise to a whole new series of guitar companies. However, before you start that line or build those guitars, it is imperative that you take the time to know if the designs (and names) are yours to use. Do the right and prudent thing and find someone on a professional level to help you ascertain if you are about to ask for a trouble-free order or just trouble.
Ronald S. Bienstock is the senior partner in the leading law firm Bienstock & Michael where he represents clients in the MI industry. He has been a part of all the major intellectual property cases in the music instrument business since 1985. He has been a guest lecturer, instructor, and panel moderator for BMI, ASCAP, CMJ, NEMO, SXSW, NAMM, PMA, RPMDA, Berklee College of Music, St. John’s School of Law, Rutgers School of Law, Seton Hall Law School, Ithaca College, New Jersey City University, and many other organizations and universities.
Prior to forming Bienstock & Michael, P.C. in 1987, Ron was editor-in-chief and publisher of International Musician & Recording World and served as General Counsel to Hoshino, U.S.A. He teaches entertainment law at New York University. He’s been a performing and recording musician since 1972.
