DEAN Announces 'Significant Legal Victory' In Dispute With GIBSON Over Guitar Shapes

Dean Guitars has announced what it says is "a significant legal victory" in its long-standing trademark dispute with Gibson Brands, Inc. The U.S. Court of Appeals in the 5th circuit has ruled in favor of Dean Guitars by granting a new trial — with Dean claiming that the move "vindicated" the company's position that its longstanding use of certain guitar models does not infringe on Gibson's trademarks. The court held that evidence of countless other companies making these guitar models must be allowed to be shown in court.

"We are incredibly pleased with the court's decision," said Pam Rubinson, CEO of Dean parent company Armadillo Enterprises. "This court's ruling affirms our commitment to Dean's legacy V and Z models that have been in continuous production since 1977 and reinforces our belief in fair competition within the guitar industry. We have always strived to respect the history of guitar craftsmanship while bringing our own unique flair to the market. This is a complete vindication, we have fought this battle and won on our behalf of Dean Guitars and every other guitar manufacturer in the industry."

Ron Bienstock of Scarinci Hollenbeck LLC, attorney for Armadillo, stated: "Amongst other issues, the court recognized the history of the Dean brand in their longstanding use of these guitar models, as well as countless other guitar companies that have produced and marketed these same guitars."

A short time later, Gibson released its own statement, offering as slightly different take on Monday's legal proceedings.

"Yesterday, a 3-judge panel of the 5th Circuit Court of Appeals remanded the Gibson v Armadillo case for retrial," Gibson said. "The Court of Appeals found that the District court allegedly abused its discretion in excluding certain evidence. Gibson will be requesting all the appellate judges reconsider the panel decision. Gibson is confident that the Texas Judge and jury got it right the first time.

"Gibson's guitar body shapes are iconic, and it will continue to protect them to preserve its legacy which is critical to protect partners, dealers, artists and fans around the world.

"Gibson, like other iconic American brands, has invested in meaningful research, development and innovation over 130 years, and is confident that in a retrial the jury will again find in favor of affirming Gibson's well recognized intellectual property rights, rights that have been Gibson's for decades."

Back in May 2022, a Texas federal jury decided that Dean Guitars sold counterfeit guitars that infringed the trademark on Gibson Brands Inc.'s Flying V guitar and other iconic models, and dismissed Dean's efforts to cancel several Gibson trademarks as generic.

In May 2019, Gibson filed a lawsuit against Armadillo Enterprises, the parent company of Dean Guitars, accusing it of infringing on seven of Gibson's trademarks, including the body shape design of the Flying V, Explorer, ES and SG, as well as the "Dove Wing" headstock design, the "Hummingbird" name and the "Moderne" trademark. The lawsuit, which was filed in a Texas court, also accused Armadillo of trademark counterfeiting — effectively claiming that Armadillo was trying to deceive or mislead the public into thinking that the guitars made by Dean are in fact Gibsons, or have some connection to Gibson. Armadillo filed a countersuit in July 2020, accusing Gibson of "tortious interference with Armadillo's business relationships and/or contracts". In a statement, Armadillo said that Dean Guitars had been "continuously offering the V and Z-shaped guitars at issue in the lawsuit since at least 1976 — for over the past forty years. And Dean Guitars is not alone; other guitar companies have for decades used the commonplace guitar shapes that Gibson now tries to claim exclusive rights to."

In the May 2022 verdict, the jurors rejected Dean's arguments that the designs in question had become so commonplace that they're now "generic" and "unprotectable". But the jury also found that Gibson "delayed in asserting its trademark right(s)" against Dean and that the delay was "inexcusable", thereby causing "undue prejudice" to Armadillo. As a result, the jury said Gibson had suffered no actual harm and awarded the company just $4,000 in "counterfeiting statutory damages per counterfeit trademark per type of goods sold, [or] offered for sale."

Back in June 2019, Gibson uploaded a since-deleted video to YouTube in which then-director of brand experience Mark Agnesi discussed trademark infringement. In the video, Agnesi cautioned other guitar builders: "You have been warned. We're looking out and we're here to protect our iconic legacy."

In its original lawsuit, Gibson noted that it had sent Armadillo multiple cease-and-desist letters over the years but that Armadillo had failed to stop its "unauthorized" use of Gibson's trademarks.

Dean Guitars' take on the Flying V and Explorer — the aforementioned V and Z — have been in production since the company was founded by luthier Dean Zelinsky. Most notably, Dean Guitars' V has become closely associated with legendary German guitarist Michael Schenker.

Five years ago, Gibson lost an important trademark fight in Europe related to its Flying V guitar shape. After Gibson was initially granted a mark on its Flying V in the European Union in 2010, the mark was challenged four years later by the owner of German company Warwick, and a court later declared the mark invalid. Gibson appealed and lost in 2018 and in June 2019 had its second appeal dismissed by the Second Chamber of the EU General Court.