A 1959 P bass
owned by Clifford Antone.
Photo by Billy Mitchell taken from
Electric Guitars & Basses: A
Photographic History by George Gruhn
and Walter Carter, © Gruhn Guitars,
used by permission.
Clash of the Titans, Pt. 1
The earliest industry trademark dispute anyone
seems aware of actually pitted Fender
against Gibson in the mid 1960s. Gibson had
engaged automobile designer Roy Dietrich to
come up with the Firebird, a zig-zaggy electric
guitar that some have said evoked the era’s
oversized automobile tailfins. Fender decided
that it too closely resembled its Jazzmaster
and either sued or threatened to sue. By
today’s standards, Gibson would have had a
pretty easy time defending itself—the profiles
of the two instruments are quite different.
Nonetheless, Gibson voluntarily made dramatic
changes to the Firebird design and the
dispute became moot.
Fast-forward to the 1970s and the rise of the
Japanese manufacturing juggernaut. Besides
small, fuel-efficient cars, the Japanese were
making ever-better musical instruments. One
such company was Hoshino Gakki, maker
of Ibanez guitars. During that time, Hoshino
made several lines of instruments that were
clearly meant to evoke, if not outright copy,
the look and sound of Gibson Les Paul and ES
series guitars. According to a history of Ibanez
by Michael Wright, Gibson’s parent company
at the time (Norlin) filed suit in Federal
District Court in June of 1977 against the US
distributor of Hoshino instruments “to send
a message to all companies making copies”
of Gibson instruments. The suit wasn’t aimed
at cloned body styling per se, but at overly
similar headstock designs, which have always
had more weight in the guitar world’s code of
honor than body styling anyway.
Wright says Hoshino had been preparing
internally for such a challenge from US makers
for several years and that Ibanez was
moving away from copies to unique designs
anyway. So the suit was easily settled out of
court when Elger, the US distributor, pledged
to stop making any evocative headstocks or
using any confusing branding. Despite the
lack of legal bloodshed, today you can find
so-called “lawsuit” Ibanez guitars with Gibsonlike
headstocks from the mid-’70s fetching
anywhere from nearly a thousand dollars to
more than two grand.
Clash of the Titans, Pt. 2
More recently, Gibson made a major trademark
move on our own shores by suing
Paul Reed Smith Guitars, one of the most
esteemed craft builders in the country. Filed
in November of 2000, the suit claimed PRS
Singlecut solid-bodies infringed on Gibson’s
trademark of the Les Paul body shape, a
trademark it had secured seven years prior.
It was a sweeping, aggressive claim that
demanded massive damages and accused PRS
of unfair competition, fraud, and deceptive
business practices. It seemed almost surreal,
especially since a variety of companies around
the world had been making far more accurate
facsimiles of Les Pauls for years. Nevertheless,
in 2004 a district court ordered PRS to
stop making, distributing, and selling the
Singlecut—one of its best-selling guitars.
The ban lasted just about a year. Then the
Sixth Circuit Court of Appeals overturned the
injunction and in every possible way rebuked
the findings of the lower court. One key part
of the ruling hinged on one of the core criteria
by which trademark infringement is tested—the likelihood that a consumer will be confused
into purchasing an imitator brand while
thinking he’s buying the original. In assessing
whether PRS Singlecuts passed this particular
test, the appeals court cited the testimony of
guitar historian Walter Carter, an expert witness
called by Gibson, who famously said in
a deposition (much to Gibson’s dismay) that
even if there were a possibility that someone
could mistake a Singlecut for a Les Paul at
a distance or in a smoky bar, “only an idiot”
would confuse one for the other at the point
of sale. Given that the PRS Singlecut had
been such a hot seller before the court battle,
it comes as no surprise that the company
launched back into production of the single-cutaway
guitar designs immediately after the
court ruling. Current PRS guitars with that
shape now include several SE import versions,
US-made signature guitars such as the Mark
Tremonti model, and the new US-made SC 58.
Carter, who works for Gruhn Guitars in
Nashville, says the confusion test is too vague
to be worth much anyway. “First, you’ve got
to know enough about guitars to be even
able to confuse the two,” he says. “If you
don’t know anything about automobiles at all,
you’re not going to confuse a Volkswagen with
a Cadillac. And then you can’t have too much
knowledge, or you won’t be fooled for more
than a second.”
In the end, while Gibson failed to prove
that PRS had violated its trademark, Gibson
retained the trademark itself. So nothing rules
out the prospect that the company could go
after makers of more convincing Les Paul copies
in the future.