A federal jury mostly sided with Gibson Brands on Friday (May 27) in a lawsuit that accused rival Dean Guitars of copying the shape of the company’s guitars like the Flying V, though the jurors awarded Gibson just $4,000 in damages.
The verdict came after more than three years of litigation and two weeks of trial over whether Dean’s parent company Armadillo Enterprises infringed trademark-protected design elements of several Gibson guitars, including the Flying V, Explorer, ES, SG, and the Dove Wing.
In a key win for Gibson, the jurors rejected arguments by Dean that those designs had become so commonplace that they’re now “generic” and free for all to use. And with that finding, the jurors also said Dean had infringed those designs by selling look-alike guitars.
But the jury also found that Gibson had legally waited too long to sue Dean over several of the designs, including the Flying V and the Explorer. And the jury said Gibson had suffered no actual harm as a result of any of Dean’s infringement, resulting in an award of just $4,000 in so-called statutory damages.
Big damages or not, the ruling still means that Gibson could potentially win an injunction barring Dean from selling the designs that jurors said were infringed and hadn’t been delayed. The ruling will likely be appealed, first to the judge the oversaw the trial and then to a federal appeals court.
The jury also found the Dean marketed counterfeits of the Explorer, Flying V, SG body shapes, as well as the Gibson Hummingbird. It is not guilty of marketing a counterfeit of the Dove Wing headstock shape.
The 27 May rulings in Gibson’s favor come at the end of a two-week trial concerning the US trademarks for the Flying V body shape, the Explorer body shape, the ES body shape, and the SG body shape. Gibsons retains the trademark for these in the US.
Following the admissions of hundreds of pieces of evidence and a number of industry witnesses taking the stand, a jury found that Dean had infringed on Gibson’s trademarks for guitar body shapes concerning the Flying V, Explorer, and SG models
In addition, it ruled in Gibson’s favor on trademarks for the Dove Wing headstock and the hummingbird acoustic guitar.
”Gibson’s guitar shapes are iconic, and now are firmly protected for the past, present, and future,” Gibson concluded in its statement following the rulings. “From a broader perspective, this court decision is also a win for Gibson Fans, Artists, Dealers, and related Partners who expect and deserve authenticity. Not to mention all of the iconic American brands that have invested in meaningful innovation and continued protection, only to see it diluted with unauthorized and often illegitimate knockoffs.
“Gibson can now focus attention on continuing to leverage its iconic past, and invest in future innovation, with confidence.”
This case is in contrast to Europe where Gibson had a Flying V trademark appeal rejected by the EU General Court in 2019.
The legal focus for Gibson now switches to the BandLab-owned Heritage Guitars’ legal action against Gibson, in response to threats issued by the US company over alleged trademark infringement.
Heritage’s history as a brand dates back to Kalamazoo in the 1980s. Following Gibson’s factory move from Michigan to Nashville in 1984, Heritage Guitars was formed in Kalamazoo, Michigan by a small group of former Gibson employees. The firm then continued to make Gibson-style guitars.
Relations between the two companies appeared to sour after the 2016 acquisition in part by BandLab Technologies, a Singapore-based conglomerate run by Meng Ru Kuok, the son of billionaire palm-oil trader Kuok Khoon Hong.
“To be clear, Gibson has not sued Heritage and has been proactive towards a solution,” Gibson said in a statement in 2020.
In a statement following the verdict, Gibson said it was “very pleased with the outcome after years of simply trying to protect their brand.” The company said its guitar shapes are “iconic, and now are firmly protected for the past, present, and future.”
This is another blow to Armadillo under the leadership of Evan Rubinson.