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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.”