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.