Back to the Future (2003, That Is)
The case pitting Fender against Ron
Bienstock’s consortium of guitar builders was
different. While Gibson had been trying to
defend a trademark it already owned, Fender
was applying for trademarks it had never had
before. The obvious question was, after five
decades of making Teles, Strats, and P basses,
why then? The company’s chief legal officer
Mark Van Vleet says it was a response to a
growing threat to the integrity of Fender’s
designs. “With the advent of the internet and
with manufacturing in China being so prevalent,
our primary concern was trying to deal
with counterfeits and infringements—companies
and people who are clearly trying to
ride on Fender’s history, Fender’s place in the
industry, and Fender’s iconic status to sell their
goods by confusing consumers.” Van Vleet
also says Ron Bienstock was being premature
and speculative in his assertions that Fender
was going to use its new trademark to musclein
on small luthiers.
A 1954 Strat 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.
“Our position is not that we were trying to
monopolize anything,” says Van Vleet. “We
simply believed that we had the rights to
these designs and, therefore, were trying to
obtain rights that we were entitled to, just like
we have in the past and like many other companies
in the industry have done. We certainly
were not trying to do something to the disadvantage
of the industry.”
Nevertheless, Fender fought for six years
before the United States Patent and
Trademark Office’s Trademark Trial and Appeal
Board (TTAB) rendered its final decision in
March 2009. The trademarks were denied.
Quite simply, the TTAB said, the claim came
too late in the history of guitar building:
Fender, they concluded, “never policed the
body shape, only the word marks and headstock
profiles. In addition, they never claimed
trademark rights in the body outlines publicly
through, for example, the catalogues, until
2004. In the meantime, many other guitar
manufacturers sold guitars with the identical
body shapes for at least 30 years, either
as complete guitars or in the form of kits. In
view of the above, we find that opposers have
proven their claim that the applied-for configurations
are generic.”
Fender’s Van Vleet says the company “respectfully
disagrees” with the ruling. “In our opinion,
the issue before the court was whether
or not consumers or prospective consumers
associate Fender being the source of those
two-dimensional shapes. And we had boxes
and boxes and roomfuls of evidence indicating
that, when consumers saw those designs, they
associated Fender as being the source.” Van
Vleet won’t specify any actions the company is
currently involved in against guitar makers for
other trademarks they do own, only that, in
general, “We will go after companies who we
believe are infringing—somebody who’s trying
to confuse the consumer out there between
what they’re doing and what we’re doing.”
The Right Stuff
Victorious attorney Bienstock spins last year’s
decision on the Fender case as an important
ruling on behalf of creative lutherie. “I fully
believed in the righteousness of the cause,”
he says. “We needed to have this result. This
was the right thing.”
But it still doesn’t seem that clear-cut. When
it comes to building upon other companies’
or individuals’ designs, luthiers are still bound
to ask “What’s safe, legally?” Writer types are
raised to believe plagiarism is pretty close to
the worst nonviolent offense on the books.
But guitar building is an art as much as it is a
business. And art allows for—indeed
depends
on—creative borrowing and license. So the
question then becomes whether one can bring
an artist’s eye to a copy. Is making your own
“Strat” like covering a great song—that is, is
it more of an homage—or is it a selfish move
more akin to ripping an album you didn’t buy
and serving it on BitTorrent?
Gruhn Guitars’ Walter Carter, who sees
luthier-made tributes to Strats and Teles come
through the famous Nashville shop all the
time, says honorable builders “try to make
some kind of improvement, cosmetic or functional—
whether it’s a beautiful top or a different
kind of contour . . . almost always a different
headstock . . . different pickups. That’s the
line between integrity and copy.”