Gibson Loses Its Firebird Guitar Body Shape Trademark in The EU

[OldBenKenobi]

I dunno. For example, most mid-engine cars, Ferrari, Lambo, Audi, and the new C8 Vette all follow a similar body style. Only so much you can do with a mid-engine and aerodynamics. One could say form and function work closely here.

On the other hand, guitar bodies relative to performance are completely independent of shape one could claim. May not actually be the case, but the claim could be made. So the difference in appearance and performance with the mid-engine car (not really any options) versus the 6 string electric is totally different.

This is why Gibson and Fender want to have the body shapes they designed trademarked, as is the Mercedes star.

But it's not really any different than the car shapes you describe. In 60+ years it's shaken out that there are really only a handful of basic body shapes that are practical to build and play and have remained popular, with different companies riffing on them. A Flying V is a popular, iconic, stock design. There are a lot of Flying V variations out there. Why should the Gibson variation in particular be trademarked (or for that matter the Jackson variant)?

In this particular case, the Firebird is a blatant ripoff of the Fender Jazzmaster designed to cash-in on the offset trend. The Jazzmaster isn't trademarked, why should the Firebird be?

It is different with headstocks, since they do act as a de facto logo for the manufacturer and there is far less of a functional aspect to their design.

 

[CB91710]

"Interestingly, the EUIPO put forward the idea in its judgment that even though guitarists may be able to identify a guitar's outline, it's more relevant whether a non-player can. And it doesn't consider this to be the case for the Firebird."

I wonder how this logic would apply to all trademarks. Any non-driver can use the Mercedes Benz logo? Any non-burger eater can use the Golden Arches?

On the one hand, every performer on stage with a clone is providing free advertising for Gibson.
The "small market" of musicians can spot the clone from 50 rows up, but Joe Schmoe in the 1st row sees a Les Paul regardless of the name or shape of the headstock.
Ask "Joe Schmoe" to freehand draw a Les Paul headstock and it's more likely to look more like a Martin than it is an "open book"

OTOH, Joe Schmoe is not going to buy a guitar, and if he does, it's going to be something in the $150 to $400 range. Unless Joe is wealthy and looking for a wall hanging prize, he's not going to buy a Gibson.
And... the performer is being recognized as playing a "Les Paul" while Gibson has not made money on the sale of a product that is a copy of their intellectual property.

 

[oicu812]

But it's not really any different than the car shapes you describe. In 60+ years it's shaken out that there are really only a handful of basic body shapes that are practical to build and play and have remained popular, with different companies riffing on them. A Flying V is a popular, iconic, stock design. There are a lot of Flying V variations out there. Why should the Gibson variation in particular be trademarked (or for that matter the Jackson variant)

But it is very different. As stated, there is only one way to go with a mid-engine example. All the cars are very similar with a "wedge shape" due to where the engine sits. That is the way it is.

Guitars on the other hand vary in design/shape. Gibson and Fender both have various iconic designs that are not necessarily based on where pickups, bridge, ect. sit on the guitar. They are all pretty similar. So the SHAPE of the guitar as a design for this discussion has no affect on the performance. We are only speaking about a recognizable shape that is attributed to a company (that came up with that shape) and ultimately is to this day.

You pretty much made the argument for me. These are "iconic" designs from many decades ago. That should count for something.

In this particular case, the Firebird is a blatant ripoff of the Fender Jazzmaster designed to cash-in on the offset trend. The Jazzmaster isn't trademarked, why should the Firebird be?

It is different with headstocks, since they do act as a de facto logo for the manufacturer and there is far less of a functional aspect to their design.

I don't believe the Firebird is part of the case. I believe it is the Explorer.

From Gibson Electrics: The Classic Years by A. R. Duchossoir (page 106). 8776

"The original Firebird was the non-reverse model, which is the more familiar one. In the mid sixties, they changed the entire design to the less well known reverse model - basically a different guitar. That was their response to the Fender lawsuit threats. Oddly enough, the reverse models look more "Fender-like" than the non-reverse ones... but by that time CBS had swallowed Fender and both versions of the Firebird had bombed in the marketplace, so nobody cared any more. When Gibson started reissuing them, they went with the original (non-reverse) design."


The problem is Gibson wasn't gonna win in the EU. The fact that Gibson waited so long to claim the body shapes may be seen an issue legally, but should it be?

 

[OldBenKenobi]

But it is very different. As stated, there is only one way to go with a mid-engine example. All the cars are very similar with a "wedge shape" due to where the engine sits. That is the way it is.

Guitars on the other hand vary in design/shape. Gibson and Fender both have various iconic designs that are not necessarily based on where pickups, bridge, ect. sit on the guitar. They are all pretty similar. So the SHAPE of the guitar as a design for this discussion has no affect on the performance. We are only speaking about a recognizable shape that is attributed to a company (that came up with that shape) and ultimately is to this day.

You pretty much made the argument for me. These are "iconic" designs from many decades ago. That should count for something.

There is certainly a performance element to shape. That's why guitars often have cutaways, why they often have an hourglass shape, why they often have more mass behind the bridge rather than towards the neck, etc. An SG and a Strat's bodies serve the same basic desire from a player, which is upper fret access via the double cutaways. The only real difference is a few dimensions, but both are just variations on the same basic idea of a double-cutaway guitar body.

In my opimion, none of them should be trademarked, especially not after decades of replication and genericization.

 

[Zungle]

It's not about any logo,
It's more like Mercedes Benz would claim a certain shape of an automobile as their own trademark

Yep....I tried to explain that here a few times.

Its either over everyones IQ or pay grade because no one gets it.

Folks commonly throw around the terms Trademark and Patent like their some how the same thing when its basic IP law to understand their not.

 

[Bobby Mahogany]

Hit the EU with guitar tariffs!

 

[oicu812]

Yep....I tried to explain that here a few times.

Its either over everyones IQ or pay grade because no one gets it.

Folks commonly throw around the terms Trademark and Patent like their some how the same thing when its basic IP law to understand their not.

I think allot of people get it. Gibson does, because they believe they own the shapes (trademark) of the bodies, the outline, as did Fender. Same with the outline of the headstocks.


United States Patent and Trademark Office:

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos. The term "trademark" is often used in a general sense to refer to both trademarks and service marks.

Unlike patents and copyrights, trademarks do not expire after a set term of years. Trademark rights come from actual “use” (see below). Therefore, a trademark can last forever - so long as you continue to use the mark in commerce to indicate the source of goods and services. A trademark registration can also last forever - so long as you file specific documents and pay fees at regular intervals.

Must all trademarks be registered? No, registration is not mandatory. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, federal registration of a trademark with the USPTO has several advantages, including a notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

I think the first sentence is the reason for Gibson's position in a nutshell, that their body shapes distinguish their guitars from other makers, or should. So, it seems that in Gibson's case, even though the registration may have come late, they believe they did fill the requirements of "common law" use, particularly as there is ample evidence they were the originators of the designs in question.

Not a lawyer, but reading the passages above seems to give them a leg to stand on.

 

[TheX]

Which one? Original or reverse? They are completely different.

 

[CB91710]

There is certainly a performance element to shape. That's why guitars often have cutaways, why they often have an hourglass shape, why they often have more mass behind the bridge rather than towards the neck, etc. An SG and a Strat's bodies serve the same basic desire from a player, which is upper fret access via the double cutaways. The only real difference is a few dimensions, but both are just variations on the same basic idea of a double-cutaway guitar body.

In my opimion, none of them should be trademarked, especially not after decades of replication and genericization.

And the Strat and the SG are a perfect example of how the shape and location of the mass can impact handling and playability, much in the same way as two different vehicles.
The weight distribution results in the SG being neck-heavy even more-so than a Telecaster... but the switch and volume control positions on the Strat can interfere with right-hand movement near the bridge.

 

[Zungle]

According to the article, they already got fucked properly on the V earlier in the year.

Properly as in... with lube ?

 

[fleahead]

Lol, "repeatedly"

 

[dspelman]

The problem is Gibson wasn't gonna win in the EU. The fact that Gibson waited so long to claim the body shapes may be seen an issue legally, but should it be?

Trademarks are a bit wishy-washy, but patents and copyrights have traditionally been time-limited. The whole idea there was to grant a *termporary* monopoly to the inventor to promote the proliferation of new ideas into manufacturing. Patents have gone off the rails because patents are being granted for tiny and mostly insignifncant modifications of (for example) a drug formulation, thus improperly extending monopoly protection. Copyright has been similarly extended, thanks to some degree of purchased political influence, and a whole issue with "orphaned works" and reasonable use has been created.

Trademarks aren't really "ideas" or "inventions," but marketing protections. Applications for trademark protection very late in the game where other companies have virtually put the trademark into public domain are often disallowed.

 

[Bill Hicklin]

The fact that Gibson waited so long to claim the body shapes may be seen an issue legally, but should it be?

Yes. The legal doctrine is called laches, and mesns basically “don’t sit on your ass for fifty years.”

 

[oicu812]

Yes. The legal doctrine is called laches, and mesns basically “don’t sit on your ass for fifty years.”

Yes, I remember that from the last big thread. So what is that take on this:

"design that identifies and distinguishes the source of the goods of one party from those of others.

Must all trademarks be registered? No, registration is not mandatory. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration."

it would seem, as I stated above, that there is a caveat of sorts. Gibson claims they are their designs, which they are. The passage fully quoted a few posts up and highlighted here, right from the USPTO website, says as I read it that they would have a case.

 

[CB91710]

Yes. The legal doctrine is called laches, and mesns basically “don’t sit on your ass for fifty years.”

Similar doctrine in real estate law called "averse use"
Basically, if you don't defend your property and it is continually trespassed upon without you taking steps to prevent it or legal action against the trespassers, you effectively are forced to keep that portion of the property open as "public access" for the duration of your ownership.
The longer the trespassing goes on, the harder it becomes to enforce prohibition.

 

[Oldskoolrob]

Here's an idea, what if Gibson didn't worry about the shape of what they built but instead focused on the quality of it?

 

[Chester Drawers]

Here's an idea, what if Gibson didn't worry about the shape of what they built but instead focused on the quality of it?

Glue? Are you on GLUE???

 

[Oldskoolrob]

As long as it's titebong then yes!

 

[Ermghoti]

"Interestingly, the EUIPO put forward the idea in its judgment that even though guitarists may be able to identify a guitar's outline, it's more relevant whether a non-player can. And it doesn't consider this to be the case for the Firebird."

I wonder how this logic would apply to all trademarks. Any non-driver can use the Mercedes Benz logo? Any non-burger eater can use the Golden Arches?

IIRC, the EU deemed the Golden Arches unenforceable as a trademark. Based on that, there is basically no such thing as a trademark under the EU, I guess. Apparently they want Europe to be China.

 

[Ed B]

On the one hand, every performer on stage with a clone is providing free advertising for Gibson.
The "small market" of musicians can spot the clone from 50 rows up, but Joe Schmoe in the 1st row sees a Les Paul regardless of the name or shape of the headstock.
Ask "Joe Schmoe" to freehand draw a Les Paul headstock and it's more likely to look more like a Martin than it is an "open book"

OTOH, Joe Schmoe is not going to buy a guitar, and if he does, it's going to be something in the $150 to $400 range. Unless Joe is wealthy and looking for a wall hanging prize, he's not going to buy a Gibson.
And... the performer is being recognized as playing a "Les Paul" while Gibson has not made money on the sale of a product that is a copy of their intellectual property.

That's it, right there. It won't matter in the long run.