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The Gibson vs. Dean lawsuit #2995613 06/24/19 03:54 PM
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GP: Gibson Sues Dean, Luna Guitars for Trademark Infringement

I'm surprised this hasn't been posted here since it's all anybody is talking about (and arguing over) in facebook groups, etc.

In the multimillion dollar suit, the storied guitar manufacturer reportedly states that the companies violated its Flying V, Explorer, ES and SG, "Dove Wing" headstock design, "Hummingbird" name and "Moderne" trademarks.

Gibson is said to be seeking Armadillo’s profits, damages sustained by Gibson and the costs of the action. The company can also pursue statutory damages of up to and including $14 million—$2 million for each of the seven violations.

So will it stop with Dean? Isn't Hamer just as "guilty?" And ESP? And Schecter? And Jackson? And anybody else who ever made a guitar in the shape of a V, Explorer, ES (? Double or single cutaway?) and SG?

I, personally, suspect the creditors that took over the company saw millions or billions to be made in "patent trolling," moreso than from the sale of guitars.

And that Mark Agnesi video that Gibson posted to youtube "warning" people to "play authentic" was cheesy.

GP Island
Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995624 06/24/19 05:05 PM
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The question about everyone else is kinda the point. If Gibson prevails, the others will be next in the crosshairs. But I don’t think they will, given the results of the previous lawsuits n what is and what is not trademarkable in guitar design.

They MIGHT win on the headstock design, but I doubt they’ll get any other victories.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995629 06/24/19 05:17 PM
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Haven't looked into this case yet but I'd point out a couple things:
1 / Designs are not (TM)
The general shape of an item (car, bottle, etc) may not fall into a protected class.

2 / Long waits before addressing intellectual property issues can subvert a claim.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995648 06/24/19 06:36 PM
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Danny, you're a lawyer, right? d, are you one, also?

The first story I saw about it mentioned in the first sentence that Gibson had filed a lawsuit "In the East Texas Circuit Court"... which... well, that's the cottage industry patent troll court... red flag right there, though I thought it had been curtailed a little bit because it had gotten so ridiculous

Bloomberg: The Town that Patent Trolls Built

Texas Monthly: Patently Unfair
Barack Obama and Antonin Scalia agree on one thing: the small East Texas town of Marshall may be the worst thing that ever happened to intellectual property law.

Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995654 06/24/19 06:59 PM
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Yep. I did some Entertainment Law/Copyright stuff for years, but never touched patent or trademark professionally. Watched some of it, though.

Gibson has sued a few times, with a poor track record. They lost on appeal in 2009 vs PRS over singlecut bodystyles. They lost to Fernandes in 2005 over several bodysyles. They won in 1977...on the limited issue of copied headstocks,

Fender likewise tried to get Strat and Tele bodies trademarked in the USA & Europe...and failed.

It’s like they’ve never heard of “legal precedent”.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995679 06/24/19 09:32 PM
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Originally Posted by p90jr
Danny, you're a lawyer, right? d, are you one, also?

The first story I saw about it mentioned in the first sentence that Gibson had filed a lawsuit "In the East Texas Circuit Court"... which... well, that's the cottage industry patent troll court... red flag right there, though I thought it had been curtailed a little bit because it had gotten so ridiculous

Bloomberg: The Town that Patent Trolls Built

Texas Monthly: Patently Unfair
Barack Obama and Antonin Scalia agree on one thing: the small East Texas town of Marshall may be the worst thing that ever happened to intellectual property law.


I'm not an atty but I've paid attn to, as Joe Friday said, "The Facts....".
The statement I made above is based on general interpretation of what seem to be the pertinent facts.
1 / General design (the shape of a common object) is not exclusive----& even were it, it's not a (TM) issue nor one of patent (as, e.g. software or wiring might be).
2 / Long term neglect of protections often negates their invocation at a later date.

However, here, let's just see where it goes...............



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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995681 06/24/19 09:40 PM
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Headstock shapes, corporate names, and model names are protected under trademarks. As long as the company actively uses them, the trademarks do not expire.

Body shape of guitars cannot be trademarked, they are patented. Patents expire 14 years after a patent is awarded. You can't just patent a product unless it has novel feature(s) that benefits society. The body shapes of Explorers, Flying Vs, Modernes, Strats, et al have lost their patent protection long ago. Only their model names can be trademarked.

The "crown" of the Gibson headstock, like on Les Pauls, is trademarked because it is the standard design used on almost all Gibson guitars and its visual appearance uniquely identifies it as a Gibson product. Trademarks are intended to prevent brand name confusion. I don't think Gibson has a trademark on headstocks of Explorer/Flying V/Moderne because of the very limited use of the design in their product range, that's why they patented them.

Anybody can build and sell a guitar shaped like a Gibson Les Paul. As long as they don't call it a "Les Paul" (protected by trademark), don't use the name "Gibson" (some tried to evade with a slight change of spelling and lost), and don't copy the headstock shape (protected by trademark), they are free and clear.

There can be trademarks for the same name of different companies but their market is totally unrelated. A good example is Moog the synthesizer company, there is also a Moog company that manufactures auto parts. Both are trademarked and neither company is ever going to find brand name confusion from their products.

Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995682 06/24/19 09:45 PM
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That may be true in general but in fact the design of most Gibson gtr heads is very trad &, I'd suspect, not protected as described.
Again, the lapse of action (over what---1/2 C?) may affect decisions.
....but let's see.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995686 06/24/19 10:08 PM
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If the Flying V is not trademarked, no case. If they haven't pursued an infringement case in the many decades people have been copying Flying V shapes, no case. What is there to argue?


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995708 06/25/19 01:00 AM
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This is kind of like an animal’s threat display. Even if there’s no actual danger behind it, it may still be effective in warding off what the critter fears. But the threat has to be believable, and I don’t think anyone in the biz thinks Gibson can ultimately prevail.

However, unless this gets tossed quickly- like a summary judgement in the initial trial- it may be too expensive for some companies to defend their rights against Gibson, so they’ll just capitulate.

OTOH, if Dean’s attorneys do a really good job convincing the trial judge as to their position, it’s possible that Gibson & their attorneys get slapped with sanctions for bringing a frivolous lawsuit.

Get your popcorn ready!


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995744 06/25/19 04:27 AM
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It can be fun and profitable to go after the deep pockets when attacking the larger companies...It's not so fun, when they come after you LOL! I read on the Warmoth guitar parts site that they have a license to duplicate Strats, Teles, etc., necks headstocks and all. They know better than to put the Fender or Gibson logo on them though. I think Dean and other smaller companies would be wise to follow Warmoths lead, settle out of court, get licensed and share the wealth...just a thought. cool


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995747 06/25/19 05:20 AM
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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995763 06/25/19 10:47 AM
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Gibson the guitar company that will do everything to protect its Mismanaged Legacy but get down to the business of being a guitar company.

Lok

PS I will be buying anouther Dean flying Vee over the next year in support of Dean Guitars(i really hate that winged headstock, but that can be fixxed).

Last edited by Lokair; 06/25/19 10:49 AM. Reason: spelling

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Re: The Gibson vs. Dean lawsuit [Re: Lokair] #2995775 06/25/19 01:37 PM
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I'm sure someone else in the Forum can elaborate on this, but in copyright law, there's a principle called "Primary Estoppel". (Yeah, I know, it doesn't quite look or sound like any language people really speak.) It means if you don't go after everybody who may conceivably be violating your trademark, you can't go after the most profitable targets. Why am I bringing this up? Because Dean Guitars have been out for a long damned time, and using that headstock design for quite a while. You think Gibson just noticed this last week, or when the new management team came in, saw Gibson bleeding $$$, and decided that the quickest way to grab some fast cash was to sue somebody.

If Gibson saw a serious trademark violation, it seems like it would have merited a lawsuit as soon as the violation took place, like Gibson essentially shutting down the first run of PRS Singlecuts, because they looked too much like Les Pauls. I think they'll be hard-pressed to make their case in court, because they may have waited to long to bring what seems to me like a weak case.

I wonder who's next on their hit list? Hamer, ESP, maybe The Heritage?


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995782 06/25/19 02:09 PM
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+1 Winsston, And there is "laches"...another legal term for waiting too long or lack of activity and diligence in making a legal claim. +1 Dean didn't start using the headstock design last week... but there is always a 50/50 chance of winning or losing if it goes to court. Sometimes it's less costly if you can reach an agreement and settle out of court. cool


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995791 06/25/19 03:10 PM
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Each branch of IP Law is similar and overlapping, but with enough unique doctrines and requirements that things don’t necessarily translate across the divide.

Here’s a little Trademark Law that applies here:
Quote
To establish the affirmative defense of estoppel, which may bar all relief on a claim, a respondent must demonstrate: (1) that the trademark owner has engaged in some misconduct that leads the alleged infringer to reasonably believe that the trademark owner will not assert a claim; (2) that the respondent relied on the trademark owner’s misconduct; and (3) that the respondent has been materially prejudiced based on its reliance. Aukerman, 960 F.2d at 1040. The trademark owner’s misconduct “may include specific statements, action, inaction or silence where there was an obligation to speak.” Id. If a respondent points to a complainant’s silence or inaction as the basis for its estoppel defense, such “inaction must be combined with other facts respecting the relationship or contacts between the parties to give rise to the necessary inference that the claim against the defendant is abandoned.” Id., at 1042; accord Hemstreet v. Computer Energy Sys. Corp., 972 F.2d 1290, 1295 (Fed. Cir. 1992). However, “[e]ven where the three elements of equitable estoppel are established, the court must also ‘take into consideration any other evidence and facts respecting the equities of the parties in exercising its discretion and deciding whether to allow the defense of equitable estoppel to bar the suit.”’ Certain Sortation Systems, Parts Thereof, And Products Containing Same, Inv. No. 337-TA-460, Commission Opinion at 10 (February 3, 2003) (Sortation Systems), citing Aukerman, 960 F.2d at 1043


TL; DR: Estoppel is a legal defense that could completely bar a claim from going forward.

Estoppel is an affirmative defense, meaning the entity relying on it* has the burden of proof. That burden is a 3-prong test of IP holder misconduct, reliance on the misconduct, and that reliance greatly impeding the ability of the defendant to defend themselves against the claim.

But even if that burden is met, it isn’t an auto-win: the court still has to weigh other considerations.

All that combined with the previous results in similar cases tells me Gibson isn’t winning this one.

My guess is that- as suggested- new management saw this as a way to regain some control in the market. That they’re proceeding makes me feel they either got bad legal advice or aren’t listening to the advice they got.


* In a case like this, that would be Dean.


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Re: The Gibson vs. Dean lawsuit [Re: Lokair] #2995829 06/25/19 06:28 PM
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Originally Posted by Lokair
Gibson the guitar company that will do everything to protect its Mismanaged Legacy but get down to the business of being a guitar company.


There's some merit to that but when Gibson has tried to update it's gear there seemed to be little interest.
Folks seemed to just want them to make their standard 1950s gtrs, not a gtr w/self-adjusting tuning or various digital age innovations.
There's by no means anything wrong w/sticking to a great design but eventually all that gets overtaken by others making similar, less expensive items.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995832 06/25/19 06:37 PM
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The classic Gibsons are very fine guitars, I think they should find a way to reasonably price them, manufacture them, and market them.

A company should not rest on their laurels and charge huge markups. Just because it is a classic guitar, they should like every other business price their product to meet market demand, instead of trying to sell at triple the cost of manufacturing costs.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995912 06/26/19 01:02 AM
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Aren't these or some of these guitars, models that my friend Dean Zelinsky began to producein the 70s? It seems like Gibson's biggest legal hurdle is they allowed 40 years to pass without filing a suit.

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Re: The Gibson vs. Dean lawsuit [Re: Dannyalcatraz] #2995941 06/26/19 04:15 AM
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Originally Posted by Dannyalcatraz
This is kind of like an animal’s threat display. Even if there’s no actual danger behind it, it may still be effective in warding off what the critter fears. But the threat has to be believable, and I don’t think anyone in the biz thinks Gibson can ultimately prevail.

However, unless this gets tossed quickly- like a summary judgement in the initial trial- it may be too expensive for some companies to defend their rights against Gibson, so they’ll just capitulate.

OTOH, if Dean’s attorneys do a really good job convincing the trial judge as to their position, it’s possible that Gibson & their attorneys get slapped with sanctions for bringing a frivolous lawsuit.

Get your popcorn ready!


I think I read that Gibson has requested a Jury Trial... in East Texas Circuit Court... which...

Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995942 06/26/19 04:41 AM
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Also... I mean there was "low level patent trolls"... people who'd get a patent on something like "windows" and then file suit against every company that manufactures windows...

But then "legit" business types got in on it, seeking out small companies that had never gone after competitors or other businesses that had long used things they had a patent or claim on and buying them JUST to file suits and make money.

An example of this actually crosses into the music world: The band Men At Work's flutist had subconsciously put a bit of the melody of the Australian children's song "Kukaburro" into the flute riff in "Down Under" without realizing it and it was a while before anybody noticed the similarity. The woman who wrote the song - who wrote it for a contest for their version of the Girl Scouts long ago - when informed of it thought it was a nice tribute and had no interest in suing them. She died in the late 90s, a company approached her family and offered them what seemed like a lot of money for a song that had never made much in royalties from formal recordings and was a few years away from entering the public domain so they took it. That company instantly sued Men at Work for millions for the similarity... and won... and the flutist killed himself in his resulting depression.

Re: The Gibson vs. Dean lawsuit [Re: CEB] #2995994 06/26/19 01:58 PM
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Originally Posted by CEB
Aren't these or some of these guitars, models that my friend Dean Zelinsky began to producein the 70s? It seems like Gibson's biggest legal hurdle is they allowed 40 years to pass without filing a suit.


See back to my point about "Primary Estoppel". If they wanted to sue, they should have filed way back when . . . I can't imagine that no one from Gibson ever saw a Dean Guitar at a trade show, a concert, or wherever, in the last 40+ years.

As Dannyalcatraz points out - many thanks to Dannyalcatraz & Larryz for illuminating some of the fine points of the law, BTW - if Dean chooses Primary Estoppel as a defense, the burden is on Dean to prove that Gibson was aware of the alleged trademark infringements, and did nothing to protect their trademark until now. I think 40+ years worth of ads in Guitar magazines, 40+ years of Dean Guitars hanging on the same store racks as Gibsons, essentially 40+ years of Gibson ignoring the issue, gives Dean a strong defense, or conversely, leaves Gibson without a legal leg to stand on. Even speaking as a life-long Gibson player, and one who hopes the company will finally rise above itself, I'd throw this case out in a New York minute, and give Gibson hell for wasting the Court's time.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2995995 06/26/19 01:58 PM
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Originally Posted by p90jr

I think I read that Gibson has requested a Jury Trial... in East Texas Circuit Court... which...


@ P90, This is what Dean does not want to see happen and why they should try for some sort of settlement. You never know what monetary damages a jury may level upon you. They are most likely not going to be a jury of our peers (i.e. knowledgeable and sympathetic guitar players LOL!). They may fall for Gibson's patent trolling. I can see guarding your logo and even your headstock design as part of that logo on different models. As I pointed out in an earlier post, Warmoth has a license to duplicate all of the vintage model Gibson and Fender headstocks. Dean could do something similar and avoid the trial by offering a compromise. We'll see... snax

+1 Winston, Dean better hope the judge throws the case out and prevents it from going to a jury (if that's possible?). thu

Last edited by Larryz; 06/26/19 02:05 PM.

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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2996007 06/26/19 03:22 PM
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The damages would be statutorily capped.

Even if Gibson gets a win in district court, Dean is probably big enough to bankroll at least one appeal.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2996014 06/26/19 03:55 PM
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I was curious about other companies and looked at their websites... Hamer seems to have stopped making the Standard (Explorer) and Vector (Flying V) models this year, after making them as part of the re-launched import line. I wonder if they adhered to a cease and desist?

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@P90:

Is Hamer back in business?

They used to make some nice guitars like the Monaco and the Newport.


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2996026 06/26/19 04:52 PM
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Hamer was resurrected after being gone just a couple of years, but only the South Korean-made imports, not the USA-made models... which, as in the case of Guild, seems wrong to me for some reason considering the legacy.

http://www.hamerguitars.com/

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Originally Posted by p90jr
Hamer was resurrected after being gone just a couple of years, but only the South Korean-made imports, not the USA-made models... which, as in the case of Guild, seems wrong to me for some reason considering the legacy.

http://www.hamerguitars.com/


Agreed.


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Re: The Gibson vs. Dean lawsuit [Re: Fred_C] #2996075 06/26/19 09:36 PM
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Just wondering, at what point does the phrase, "Frivolous lawsuit" come into play?


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Re: The Gibson vs. Dean lawsuit [Re: p90jr] #2996099 06/27/19 12:51 AM
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When the judge says so...

I mean, there may be speculation behind the scenes, the press or even on a forum like this, but it don’t mean squat if the judge thinks the allegations have merit.

Last edited by Dannyalcatraz; 06/27/19 12:53 AM.

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