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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.