Gibson Loses $8 Million Counterfeiting Claim Case in the USA

Discussion in 'The Backstage' started by Kemper59, Sep 30, 2017.

  1. Kemper59

    Kemper59 Senior Member

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    "The Court found that:…guitars in question cannot be deemed identical or substantially indistinguishable from each other. Aside from certain visual distinctions between the guitars, as both [John Hornby Skewes] and Gibson acknowledge, guitars are typically identified by the branding on the headstock. Here, [John Hornby Skewes]’s guitars are marked with the “Vintage” branding on the front".

    https://scarincihollenbeck.com/news/congratulations/guitar-counterfeiting-claim-dismissed/
     

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  2. filtersweep

    filtersweep Senior Member

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    I'd be fine with them getting spanked for using such a stupid brand name. They copy all the Gibson and Fender designs- call them reissues or have an AFD LP.

    It is pure cheesiness.
     
  3. Who

    Who are you? Who who who who.... Premium Member

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    Thanks for posting.

    I never knew that Gibson holds a trademark on the SG body shape, but only filed for the trademark in the 90s, long after millions of similar guitars were on the market.
     
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  4. thrashmetl

    thrashmetl Senior Member

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    Doesn’t Trevor Wilkinson have something to do with Vintage?
     
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  5. nigelthebald

    nigelthebald Member

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  6. Who

    Who are you? Who who who who.... Premium Member

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    The article in the OP is a year old. It mentions further action scheduled for Feb 2017.

    I couldn't find the details online of how that went.
     
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  7. SingeMonkey

    SingeMonkey Senior Member

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    Gibson's profit-by-lawsuit business model doesn't seem to be going too well given news of their imminent debt default.
     
  8. GBLEV

    GBLEV Senior Member

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    Gibson could turn it around if they would offer reasonable prices for their guitars. You get a far better bang for the buck buying a good MIJ guitar.
     
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  9. Gold_topped

    Gold_topped Senior Member

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    Most of these vintage brand guitars are made in China.

    Ironically people were payi g more for these recently thinking they'd no longer be sold.

    I've played a lemon drop and a afd from vintage. I wasn't that impressed for the price.
     
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  10. dspelman

    dspelman Senior Member

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    If someone actually challenged them in court on that trademark, they'd lose it. Gibson's lawyers rely heavily on having deeper pockets than the people they try to bully, but they really haven't had a lot of wins when it's been an even contest.
     
  11. J-Dizzle

    J-Dizzle Senior Member

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    Gibson waited 20 years to sue Fernandes (Burny) for copying les pauls for the Japan market. Interesting that they didn't sue Tokai or Greco. They lost that case too.

    http://www.mylespaul.com/threads/article-gibson-v-fernandes-court-case-edwards-review.235458/
     
  12. warmachine

    warmachine Senior Member

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    I realize in some foreign markets back in the 1950s to 1960s it was tough to get Fenders and Gibsons so the alternative was to get a lookalike copy brand. I love my mij copy era guitars but, c'mon, nowadays I wish modern brands would just make original models and not just another Gibson or Fenderesque lookalike plank!
     
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  13. 21stcsm

    21stcsm Senior Member

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    They have had ZERO wins

    The closest they came was against PRS and their lower court win was overturned on appeal.

    There is not a single case of a successful suit, let alone criminal charges for trademark infringement for any guitar SHAPE.

    Back in the 'lawsuit era' some companies 'volunteered' to modify shape (headstock etc) for guitars slotted to be exported to US but that was not by COURT order

    Gibson scares people with cease and desist orders but NO court has upheld their claim to own the open book headstock or body shape

    ZERO

    and they got destroyed in court in Japan btw
     
  14. Kemper59

    Kemper59 Senior Member

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    Interesting.

    The law firm Scarinci Hollenbeck intellectual property attorneys that won this case also represented the 17 guitar companies that opposed Fenders trademark applications for the Strat, Tele and P-Bass body shapes in 2004.
    We know how that case ended, the US Trademark Trial and Appeal court ruled in favour of the 17 "Opposers" stating that the body shapes had been in the market place for over 50 years and are now considered "generic" in the guitar world....thus Fender has no trademarks.
    http://ttabvue.uspto.gov/ttabvue/v?pno=91161403&pty=OPP&eno=246

    Even more interesting, check what I found.
    Once again, Scarinci Hollenbeck intellectual property attorneys are representing the same 17 "Opposers" in an opposition to Gibson's current application for a trademark of the "335" body shape.
    Fender & Gretch have also opposed the "335" trademark application but they're using their own Attorneys.

    Scroll down, read all 16 pages, interesting stuff.
    https://static1.squarespace.com/sta...13dc/1413946536449/ttabvue-91218879-OPP-1.pdf
     
  15. Ph03n1x

    Ph03n1x Senior Member

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    Can someone forward this to the Precision Guitar Kit guys? They apparently modified their body shapes on their kits after such a letter. Once I heard that, I had no interest in them.
     
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  16. pheederphish

    pheederphish Member

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    Here's an update. Not sure I can post the article.

    Gibson Settles Guitar Design TM Tiff With UK Co. Mid-Trial




    By Daniel Siegal


    Law360, Los Angeles (March 17, 2017, 9:46 PM EDT) -- Gibson has settled trademark claims against British instrument manufacturer John Hornby Skewes, ending a California federal jury trial over whether Skewes ripped off Gibson's iconic guitar designs, with Gibson saying Skewes will be blocked from selling certain guitars in the U.S. and Skewes saying the deal was “mutually satisfactory.”

    Only days after commencing trial in downtown Los Angeles, Gibson Brands Inc. and John Hornby Skews & Co. held a settlement conference with U.S. District Judge Dean D. Pregerson that resulted in a settlement being entered into the record on March 10, according to the case docket. The settlement, which is confidential, resolves Gibson's claims that Skewes had infringed its trademarks for the designs of four guitars.

    Gibson touted the deal in an announcement that same day, saying it had “successfully confirmed the exclusive rights” to the trademarked body and headstock designs of its four “iconic” guitar models, and said the company was pleased with the result. Gibson spokeswoman Maureen O'Connor told Law360 on Friday that the settlement does mean that Skewes will have to stop selling the models at issue in the trial in the United States.

    Skewes' lead trial counsel, Brent Davis of Scarinci and Hollenbeck LLC, however, told Law360 on Friday that, “the parties reached a mutually satisfactory settlement and both parties are pleased.”

    Gibson filed suit in California's Central District in 2014, alleging that Skewes knowingly and intentionally infringed six trademarks covering four guitar models: the Flying V, the ES, the trapezoidal Explorer, and the SG, which is famed as the weapon of choice for guitarists in legendary rock bands AC/DC, The Who and Black Sabbath.

    During opening statements on March 7, Gibson attorney Kurt Schuettinger of Bates & Bates LLC told and eight-person jury that Gibson has spent millions of dollars to promote these particular guitar lines since the company first made them — in 1961 for the SG and 1958 for the others — and as a result, has built a reputation that includes books and museum pieces on the instruments. He added that the evidence will show that Skewes' top directors went on the U.S. Patent & Trademark Office's website and actually looked up Gibson's trademark registrations,

    Davis, representing Skewes, told the jury during his opening statement that the evidence will actually show that many companies have used the allegedly unique trademarked guitar shapes over the decades — and that guitar customers know to look at the brand name on the headstock of a guitar to know who made it and not rely just on its shape.

    On March 9, Judge Pregerson ruled that Gibson's consumer survey expert, Kenneth Hollander, could not testify, excluding him under Daubert, and ruling that his report – which Schuettinger had said during openings would show that consumers associated the guitar shapes in question with Gibson – could not be used as evidence because it contained a technical error, according to Gibson's motion for reconsideration of that ruling, filed on March 10.

    Also on March 10, the parties settled, ending the trial.

    The instant suit isn't the first time Gibson has tangled with Skewes over trademark infringement. In 2012, Gibson brought a similar suit against Skewes and Viacom International Inc., accusing Viacom of secondary infringement, alleging Skewes distributed a Spongebob Squarepants-branded ukulele that infringed on Gibson’s "Flying V" trademark.

    In February, a three-judge Ninth Circuit panel dismissed the claims against Viacom, saying Gibson didn't allege Viacom had the required amount of control over U.K.-based John Hornby Skewes & Co. Ltd.'s production and sale of the instrument to trigger liability. The appellate court did, however revive Gibson’s trademark infringement claim against Skewes. That case also settled on March 10, according to the case docket.

    Gibson Brands Inc. is represented by Andrea E. Bates, Jonathan M. Bates and Kurt Walker Schuettinger of Bates & Bates LLC.

    John Hornby Skewes & Co. Ltd is represented by John K. Buche of Buche & Associates PC and by Brent M. Davis and Ronald S. Bienstock of Scarinci and Hollenbeck LLC,

    The case is Gibson Brands Inc. v. John Hornby Skewes & Co. Ltd., et al., number 2:14-cv-00609, in the U.S. District Court for the Central District of California
     
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  17. Who

    Who are you? Who who who who.... Premium Member

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    Thanks for finding that.
     
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  18. moreles

    moreles Senior Member

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    Having these classic shapes now enter the public domain, after ages, seems OK with me, but what do I know. I think most consumer do indeed recognize different brands even when the basic form of the guitars are similar. If Gibson offered better value for money (not cheaper guitars -- better quality for the buck) then they wouldn't need to use the courts to try to control the market. Unfortunately for Gibson, much cheaper products are increasingly seen as good, and economical. Regardless, Vintage is a stupid, sucker-oriented name for new products. And Trevor Wilkinson may be a great guy for all I know but he's made a career out of taking existing designs and changing them a bit (improvements, often) and then cashing in, and that always seemed cheesy to me.
     
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  19. vintageguitarz

    vintageguitarz Member

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    Gibson needs to take some points from "profit-by-lawsuit business model" CrApple the worlds greatest sue-happy Patent Trolls.
     
  20. Donal

    Donal ¯\_(ツ)_/¯ Premium Member

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    OK , the settlement is confidential and the outcome is he can`t sell these models in the USA.

    So much for confidentiality :laugh2:

    And still leaves him 194 other countries where he could sell them. :hmm:
     

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