Gibson Guitar Corp. v. Paul Reed Smith Guitars, Lp

• Decision Date: 12 September 2005
• Docket Number: No. 04-5837.,No. 04-5836.,04-5836.,04-5837.
• Citation: 423 F.3d 539
• Parties: GIBSON GUITAR CORP., Plaintiff-Appellee, v. PAUL REED SMITH GUITARS, LP, Defendant-Appellant.
• Court: U.S. Court of Appeals — Sixth Circuit

423 F.3d 539

GIBSON GUITAR CORP., Plaintiff-Appellee, v. PAUL REED SMITH GUITARS, LP, Defendant-Appellant.

No. 04-5836.

No. 04-5837.

United States Court of Appeals, Sixth Circuit.

Argued: December 10, 2004.

Decided and Filed: September 12, 2005.

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ARGUED:

William D. Coston, Venable LLP, Washington, D.C., for Appellant. John F. Triggs, Greenberg Traurig, New York, New York, for Appellee.

ON BRIEF:

William D. Coston, Kevin B. Collins, Venable LLP, Washington, D.C., for Appellant. John F. Triggs, Greenberg Traurig, New York, New York, David A. Kessler, Greenberg Traurig, McLean, Virginia, Edward D. Lanquist, Jr., Waddey & Patterson, Nashville, Tennessee, for Appellee.

Before: KENNEDY, MARTIN, and MOORE, Circuit Judges.

MOORE, J., delivered the opinion of the court, in which MARTIN, J., joined.

KENNEDY, J. (pp. 553-56), delivered a separate opinion concurring in part and dissenting in part.

OPINION

MOORE, Circuit Judge.

This is an interlocutory appeal of an injunction granted in a trademark case. The parties agree that the mark purports to include at least the two-dimensional guitar shape set out in the trademark-registration papers. However, they disagree as to whether the mark extends to cover three-dimensional objects where two dimensions of those objects have the same general shape (but not the same exact proportions) as the drawing in the registration papers, and as to whether the mark includes additional product features shown in a photograph accompanying the registration papers.¹ Whatever the scope of the mark, the parties also dispute whether the mark is valid and whether it has been infringed.

Plaintiff-Appellee Gibson Guitar Corp. ("Gibson") is the owner of the mark in question, U.S. Trademark Registration No. 1,782,606 (the "LP Trademark"). Defendant-Appellant Paul Reed Smith Guitars, LP ("PRS") manufactures the "Singlecut" line of guitars which Gibson alleges infringes on the LP Trademark. Concluding that there was no issue of fact for trial, the district court granted summary judgment in favor of Gibson on the trademark-infringement claim, denied all of PRS's counterclaims, and issued a permanent injunction preventing PRS from manufacturing, selling, or distributing its Singlecut line guitars.

With respect to Gibson's trademark-infringement claim, we REVERSE the district court's decision granting summary judgment in favor of Gibson, REVERSE the district court's decision denying summary judgment in favor of PRS, and VACATE the permanent injunction issued by the district court. We REMAND the case to the district court with instructions that summary judgment be entered in favor of PRS on Gibson's trademark-infringement claim.²

I. BACKGROUND

A. Facts

Certain basic facts are not in dispute. Gibson and PRS both manufacture high-quality guitars. Gibson has been in the business of manufacturing musical instruments for over 100 years. PRS founder Paul Reed Smith ("Smith") began manufacturing custom guitars in the mid-1970s and opened a guitar factory in 1985.

Gibson introduced at least one guitar model under the Les Paul name in 1952. Since that time, Gibson has offered a number of guitar models under the Les Paul name. At least some of these models were solid-body, single-cutaway electric guitars of the type at issue in this litigation.³ For a number of years during the 1960s, Gibson did not manufacture guitars in the Les Paul series. At some time thereafter, Gibson resumed manufacturing solid-body single-cutaway electric guitars under the Les Paul name. Gibson first applied for registration of what became the LP Trademark — the mark under which Gibson asserts trademark protection for its Les Paul line of solid-body, single-cutaway electric guitars — on July 29, 1987, but the U.S. Patent and Trademark Office did not issue the registration until July 20, 1993. On September 27, 1999, the LP Trademark became "incontestable" within the meaning of 15 U.S.C. §§ 1065 and 1115(b).

PRS is a relatively recent entrant to the solid-body, single-cutaway electric-guitar market. Although PRS had previously manufactured a number of other guitars, it did not offer a single-cutaway guitar in its normal line until January 2000 at the earliest. In February 2000, PRS displayed models of the PRS Singlecut, a solid-body, single-cutaway electric guitar, at a music industry trade show.⁴ On March 27, 2000, Gibson sent a letter demanding that PRS cease and desist from producing and selling the Singlecut.

B. Procedural History

The procedural posture of this case is somewhat unusual. We briefly summarize those aspects relevant to this interlocutory appeal. On November 6, 2000, Gibson sued PRS in federal district court in Nashville, Tennessee. The complaint sought injunctive relief, costs, attorney fees, and treble damages for trademark infringement, counterfeiting, false designation of origin, and dilution under the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), 1125(c), and for unfair competition, fraud, and deceptive business practices under state law. PRS counterclaimed, seeking declaratory and injunctive relief and asserting that: (1) the LP Trademark is invalid and unenforceable; (2) the LP Trademark is not infringed by the PRS Singlecut; (3) any trade dress associated with the Gibson Les Paul series of guitars cannot be protected under the Lanham Act or is otherwise unenforceable; and (4) the PRS Singlecut guitar does not infringe any such trade dress.

PRS moved for summary judgment on all claims and counterclaims, and Gibson moved for partial summary judgment on the trademark-infringement claim. On January 22, 2004, the district court granted Gibson's motion for partial summary judgment on its trademark-infringement claim and denied PRS's motion for summary judgment in its entirety. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 311 F.Supp.2d 690, 725 (M.D.Tenn.2004) ("Gibson I"). After the district court's summary judgment decision, the parties jointly requested that the district court allow them to: (1) amend Gibson's complaint to state only the trademark-infringement claim; (2) amend PRS's answer to state only trademark-related counterclaims; and (3) dismiss all other claims and counterclaims with prejudice. The district court approved this request, and shortly thereafter Gibson filed an amended complaint and PRS filed an amended answer. As amended, Gibson's complaint seeks injunctive relief, attorney fees, and treble damages for infringement of the LP Trademark. PRS's amended counterclaim seeks declaratory and injunctive relief, costs, and attorney fees, on the basis that the LP Trademark is invalid and unenforceable and that the LP Trademark is not infringed by the PRS Singlecut.

On July 2, 2004, the district court issued an order addressing a motion in limine filed by Gibson and several matters raised in PRS's pretrial brief, including a demand by PRS for a jury trial on the amount of profits to be disgorged. In the course of ruling on Gibson's motion in limine and denying PRS's jury trial demand, the district court entered a permanent injunction against PRS:

This is hereby ORDERED that the Defendant Paul Reed Smith, its partners, employees, agents and all persons in active consent with them are ENJOINED from manufacturing, selling, or distributing, or in any manner[] enabling or aiding others to manufacture, or to sell, or to distribute the PRS Singlecut guitar and all versions thereof, including but not limited to their exterior shapes and features, the designs of which have been determined to violate Plaintiff's rights to protection under the Lanham Act for its incontestable trademark registration, No. 1,782,606 for Les Paul guitar.

Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F.Supp.2d 841, 855 (M.D.Tenn.2004) ("Gibson II").⁵ The district court's order explicitly reserved decision on all other issues remaining in the case pending a hearing on disgorgement of profits.⁶ In this interlocutory appeal, PRS challenges the July 2, 2004 injunction and the January 22, 2004 order granting partial summary judgment to Gibson and denying summary judgment to PRS.

II. ANALYSIS

A. Jurisdiction

The district court had jurisdiction over the underlying action pursuant to the Lanham Act, 15 U.S.C. § 1114. As the district court entered a permanent injunction against PRS, we have jurisdiction to hear this interlocutory appeal pursuant to 28 U.S.C. § 1292(a)(1). Although our jurisdiction arises from PRS's interlocutory appeal of the permanent injunction entered below, we may also review the district court's summary judgment rulings because those rulings form the basis for the district court's decision to order injunctive relief.⁷

B. Propriety of Granting Injunctive Relief

In determining whether a district court has properly granted a permanent injunction, we review factual findings for clear error, legal conclusions de novo, and the scope of injunctive relief for abuse of discretion. Worldwide Basketball and Sport Tours, Inc. v. Nat'l Collegiate Athletic Ass'n, 388 F.3d 955, 958 (6th Cir.2004). A district court normally must hold an evidentiary hearing prior to issuing a permanent injunction. Moltan Co. v. Eagle-Picher Indus., Inc., 55 F.3d 1171, 1174 (6th Cir.1995). In this case, it is unclear from the parties' submissions whether the district court held an evidentiary hearing prior to issuing the permanent injunction. However, because an evidentiary hearing is not required when "no factual issues remain for trial," id., the district court's decision to grant a permanent injunction without such a hearing could still be upheld if the entry of summary judgment in favor of Gibson and against PRS was proper. Accordingly, resolution of PRS's interlocutory appeal from the permanent injunction requires us to determine whether summary judgment was properly granted to Gibson. We conclude that it was not, and the district court accordingly erred in granting a...