![](http://www.premierguitar.com/Stream/StreamImage.aspx?Image_ID=C368EA64-6433-4EF4-ADCF-33533CD75CF3&Image_Type=image")
Left: A 1959 Les Paul Standard owned by John Clardy. Photo by Billy Mitchell taken from
Electric Guitars & Basses: A Photographic History by George Gruhn and Walter Carter, ©
Gruhn Guitars, used by permission.
Right: A PRS SC 245. Photo courtesy of PRS Guitars.
One day in 2003, music attorney Ron Bienstock was doing some routine
background research for a guitar-making client when he came across something he
found troubling: Fender Musical Instrument Corp. (FMIC) had applied to the US government
for a trademark on the body shapes of three of its most famous and successful guitars:
the Stratocaster, the Telecaster, and the Precision bass.
For the previous 50 years, Fender had taken a mostly permissive attitude toward guitars built in
the Tele or Strat style. Of course, they fought outright counterfeits, but as any perusal of guitar
magazines from the ’70s and ’80s will attest, scores of makers were offering Strat and Tele doppelgangers—and there seemed to have been few cease-and-desist letters, few lawsuits. Why,
Bienstock wondered, would Fender suddenly be seeking trademarks for the body shapes? He
foresaw trouble for artisans like Tom Anderson Guitarworks or Roger Sadowsky of Brooklyn,
whose S-style and T-style guitars pay homage to the Strat and Tele, respectively, only with a master
luthier’s touch.
Trademarking those shapes “would have turned the entire guitar industry on its head,” the bass-playing
lawyer says. “You have companies that have been making guitars and basses in those
shapes since the late ’50s. There was a visceral reaction.” The worst-case scenario: a future in
which Fender could shut down models some builders had been making for 25 years or insist
on licensing fees. “None of these companies were saying these are shapes that they own,”
Bienstock adds. “They were just saying they are shapes [Fender] can’t stop me from making.”
So Bienstock, who has a long history of working on such cases, moved to block Fender’s hoped-for
trademarks on behalf of a consortium of independent guitar builders. Thus began one of the
more contentious cases involving guitars and the courts in recent years—the latest flare-up in the
guitar universe’s strange, decades-long battle over body snatching. The decision came down last
year (more on that later), and some say it marked the final word on guitar mimicry. But litigation
is forever, so one never knows.
Trademarks vs. Patents
Guitar copies and the legal wrangling around
them is one of those subjects that guitar aficionados
talk about from time to time with
more fascination than information. There is no
clear body of law defining how far one may go
in copying a design without exposing oneself
to a lawsuit. There’s no telling when or how
you’d get sued, because the originators of the
iconic guitar designs have historically been
inconsistent—even arbitrary—about when and
how aggressively they’ve challenged clones.
At a time when the music industry is obsessed
with copyrights and intellectual property, the
guitar industry operates in an environment
somewhat like the permissive shadow world
of hip-hop mix tapes. For most of the past 50
years, the guitar market has largely been a
free-for-all where guitar manufacturers—from
individual luthiers to assembly-line operations—
have imitated classic guitars almost at
will. In some cases, builders improved on the
iconic designs and charged premium prices.
In others, companies of dubious repute mass-manufactured
mediocre facsimiles and sold
them to players who covet the real thing but
can’t afford it. Of course Fender and Gibson,
the two guitar makers with the most at stake,
have introduced their own entry-level versions
of their key models, but one could ask reasonably
why should they have to compete with
other makers’ knockoffs of their own designs?
To get a handle on this issue, we’ll need to go
to law school for one paragraph so we can learn
the difference between
patents and
trademarks.
(In case you’re wondering where “copyright”
fits into the equation, it applies only to composed
or authored works and, therefore, has
no bearing on guitars or other manufactured
items.) Patents cover inventions—anything that
is functional, as opposed to aesthetic. One has
to apply for a patent through a rigorous process
in which you prove originality and describe your
design in detail. If you win a patent, you have
exclusive rights to make or license the invention
until the patent expires (these days, it lasts 20
years). Trademarks, on the other hand, cover
brands and nonfunctional design features (like
Nike’s swoosh or Fender’s logo and signature
headstock shape). Trademarks never expire.
However, trademark owners must consistently
protect and defend their trademarks. So for
example, Xerox couldn’t be lazy for 20 years
and let other companies claim they make a better
“Xerox” machine and then suddenly swoop
in after the term has become generic and sue
folks for using it.