Trademark Issues? Gibson Wins Case Against Paul Reed Smith
Paul Reed Smith
Posted 2004-03-17
Gibson Guitar Corp. in the United States District Court for the Middle District of Tennessee has won a landmark trademark infringement case against manufacturer Paul Reed Smith. The claim involved Gibson's Les Paul single cutaway guitar with a body design which Paul Reed Smith used without permission or compensation to Gibson. This case declared that Paul Reed Smith infringed Gibson's valid trademark.
Gibson Guitar claimed that the Paul Reed Smith "Singlecut" guitar infringed on the company's trademark which is registered for its Les Paul single cutaway guitar. Included in the claim is the fact that the Paul Reed Smith model unjustly used the Les Paul design and would cause confusion in the marketplace and damages to Gibson Guitar, the amount of which now will be determined in the next phase of the proceedings.
Gibson Guitar has manufactured guitars and other musical instruments for more than 100 years, and its premier product, the Les Paul guitar, has been sold continuously since 1952. The Gibson Les Paul is named after the successful recording artist of the same name, who has been the leading proponent of the electric solidbody guitar since the early 1940s. Les Paul, the artist, and Gibson Guitar hold a long standing relationship. Gibson Guitar also sells lower-priced versions of its Les Paul guitar under the brand name Epiphone.
Gibson's Les Paul single cutaway guitar is traditionally shaped with a portion removed from the body of the guitar where the lower section of the fingerboard meets the body of the guitar. The term "single cutaway guitar" denotes that portion of the guitar between the neck and its lower part, that appears to be missing from the natural, round body contour. The removal of this portion forms what is often referred to as the "horn."
Gibson's application to the US Patent and Trademark Office (USPTO) to register its "Guitar Body Design" in July 1987 was approved. In March 1999 Gibson filed a "Declaration of Use and Incontestability of a Mark" and the USPTO approved that filing in September 1999.
Gibson claimed that Paul Reed Smith began production of its "single cutaway" guitar called the PRS "Singlecut" in January 2000 in an effort to market a guitar that looked just like the Gibson Les Paul.
Paul Reed Smith advanced multiple arguments as to why its guitar design did not violate Gibson's registered trademark shape. None of the arguments succeeded in convincing Federal District Court Judge William J. Haynes. In a 57-page decision Judge Haynes ruled "that PRS [Paul Reed Smith] was imitating the Les Paul" and gave the parties ninety days "to complete any discovery on damages or disgorgement of PRS's profits on the sales of its offending singlecut guitar."
"We are very pleased with the Court's decision acknowledging Gibson's rights in the Les Paul body shape design trademark," said Henry Juszkiewicz, Gibson's Chairman and CEO. "Gibson has fought long and hard to protect its rights to the Les Paul guitar and our other classic designs, and we will continue to do so. This decision is a gratifying vindication of those efforts."
"The exemplary performance undertaken by our outside counsel John Triggs, Esq., and his team at Greenberg Traurig's New York office, along with Wayne Beavers, Esq., of Nashville's Waddy & Patterson was an example of superb skills," added Joel Cherry, General Counsel for Gibson Guitar. "The compelling presentation of our legal position led to this landmark decision."
