Dean found Guilty Of Body Shape Trademark Infringement And Counterfeiting
In an apparent victory for Gibson in the two companies’ legal battle, a jury has found Dean guilty of both body shape trademark infringement and counterfeiting of Gibson’s body shapes.
Dean infringed on Gibson’s body shape trademarks for the Flying V, Explorer, and SG, as well as separate body shape trademarks for the Dove Wing headstock and the hummingbird acoustic guitar, according to the jury. Dean was found not to have violated Gibson’s standalone trademark for the Flying V.
Dean was also found to have sold counterfeits of the Flying V, Explorer, and SG body shapes, as well as the Gibson Hummingbird. It is not in violation of marketing a forgery of the Dove Wing headstock shape.
While these decisions are a win for Gibson, the jury did find that Gibson waited too long to assert its body shape trademark rights to the Flying V and Explorer body shapes, as well as the Dove Wing headstock shape. This was ruled to have “caused undue prejudice” to both Dean and its investment partner Concordia in all of these cases.
Penalty awarded to Dean for Body Shape Trademark Infringement
Importantly, Gibson was ordered to pay $4,000 in “counterfeiting statutory damages per counterfeit trademark per type of goods sold, [or] offered for sale.”
None of Gibson’s trademarks were found to be sufficiently generic to warrant cancellation, so Gibson retains body shape trademarks for the Flying V body shape, the Explorer body shape, the ES body shape, and the SG body shape in the United States.
Gibson issued a press statement in response to the ruling, expressing satisfaction with the outcome. “Today’s jury decision to uphold Gibson’s long-established and well-recognized body shape trademarks for Gibson’s innovative and iconic guitar shapes is a win for Gibson and the music community at large,” it says. “The court determined that the Gibson Trademarks are valid, that the Gibson shapes are not generic, and that the defendants committed both infringement and counterfeiting.” Gibson is very pleased with the outcome after years of attempting to protect their brand and business through well-known intellectual property rights, rights that Gibson has owned for decades.
“Gibson’s guitar shapes are iconic, and they are now fiercely guarded for the past, present, and future.” In a broader sense, this court decision is a victory for Gibson fans, artists, dealers, and related partners who expect and deserve authenticity. Not to mention all of the iconic American brands that have invested in meaningful innovation and ongoing protection, only to have it diluted by unauthorised and frequently illegitimate knockoffs. Gibson can now confidently focus on capitalising on its iconic past and investing in future innovation.”
Evan Rubinson, the CEO of Armadillo, Dean’s parent company, stated in a statement, “We are thrilled that a Texas jury has vindicated Armadillo in ruling for Armadillo on its defence to Gibson’s trademark claims on our Dean V guitar, Dean Z guitar, and Evo headstock.”
“The jury determined that Armadillo is not liable to Gibson for our extensive use of those guitars and headstocks.” The jury returned a $4,000 verdict, a pittance compared to Gibson’s original demand of $7 million or more.”
