A Texas federal jury decided on Friday (May 27) 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 Friday's 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."
In a statement following the verdict, Gibson said: "The court's decision by jury today, to uphold Gibson's long-established and well-recognized trademarks for Gibson's innovative and iconic guitar shapes is a win for Gibson and the music community at large. The court found that the Gibson Trademarks are valid, the Gibson shapes are not generic, and the defendants were guilty of both infringement and counterfeiting. Gibson is very pleased with the outcome after years of simply trying to protect their brand and business through well recognized intellectual property rights, rights that have been Gibson's for decades.
"Gibson's guitar shapes are iconic, and now are firmly protected for the past, present, and future. From a broader perspective, this court decision is also a win for Gibson Fans, Artists, Dealers, and related Partners who expect and deserve authenticity. Not to mention for all of the iconic American brands that have invested in meaningful innovation and continued protection, only to see it diluted with unauthorized and often illegitimate knockoffs. Gibson can now focus attention on continuing to leverage its iconic past, and invest in future innovation, with confidence."
Armadillo CEO Evan Rubinson said in a statement: "We are thrilled that a Texas jury has vindicated Armadillo in ruling for Armadillo on its defense to Gibson's trademark claims on our Dean V guitar, Dean Z guitar, and Evo headstock.
"The jury found that Armadillo is not liable to Gibson for our long use of those guitars and headstock. The jury issued a judgment in the amount of $4,000, a mere fraction of the $7 million plus originally sought by Gibson."
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.
Three 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.