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

• Citation: 311 F.Supp.2d 690
• Decision Date: 22 January 2004
• Docket Number: No. 3:00-1079.,3:00-1079.
• Court: U.S. District Court — Middle District of Tennessee
• Parties: GIBSON GUITAR CORP., Plaintiff, v. PAUL REED SMITH GUITARS, LP, Defendant.

311 F.Supp.2d 690

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

No. 3:00-1079.

United States District Court, M.D. Tennessee, Nashville Division.

January 22, 2004.

As Corrected February 23, 2004.

COPYRIGHT MATERIAL OMITTED

Edward D. Lanquist, Jr., Waddey & Patterson, Nashville, TN, Jonathan D. Schiller, Kevin R. Anthony, David R. Boyd, Seth Goldberg, Boies, Schiller & Flexner, LLP, Washington, DC, John F. Triggs, Greenberg Traurig, LLP, New York, NY, David Alan Kessler, Greenberg Traurig, LLP, McLean, VA, for Plaintiff/Counter-Defendant.

Alan Dale Johnson, Alfred H. Knight, Willis & Knight, Phillip Lester North, A. Gregory Ramos, North, Pursell, Ramos & Jameson, PLC, Nashville, TN, William D. Coston, Kevin B. Collins, Venable, LLP, Washington, DC, for Defendant/Counter-Claimant.

Joseph D. Lewis, Barnes & Thornburg, Washington, DC, for Perry Palan, Paul Fahrenkopf.

MEMORANDUM

HAYNES, District Judge.

Plaintiff, Gibson Guitar Corporation, filed this action for damages and injunctive relief under the Trademark Act of 1946, the Lanham Act, as amended, 15 U.S.C. §§ 1051 et seq. against Defendant Paul Reed Smith, LP ("PRS"). Gibson asserts claims for trademark infringement, counterfeiting, unfair competition and trademark dilution. Gibson's claims involve its "Les Paul" single cutaway guitar with a body design for which Plaintiff has an incontestable registered trademark. PRS manufactures and sells a PRS "Singlecut" guitar with a design that allegedly infringes on Plaintiff's registered trademark and trade dress. In response to Gibson's complaint, PRS filed a counterclaim (Docket Entry No. 41) seeking a declaration that PRS has not infringed upon any valid trademark or trade dress of Gibson and that Gibson's trademark and trade dress in its Les Paul model guitar are invalid and/or unenforceable.

Before the Court are Gibson's motion for partial summary judgment (Docket Entry No. 61) and PRS's motion for summary judgment (Docket Entry No. 64).

Gibson seeks summary judgment only on its claim that the PRS's "Singlecut" guitar infringes on Gibson's trademark registration No. 1,782,606 (hereinafter "606") for its Les Paul single cutaway guitar. Gibson contends, in sum, that the PRS "Singlecut" infringes on the Plaintiff's registered trademark for its Les Paul guitar, and PRS's "Singlecut" will likely cause confusion in the marketplace as to its source of origin, to Gibson's detriment.

PRS seeks judgment on all of Gibson's claims and its counterclaims and contends, in sum: (1) that PRS's "Singlecut" guitar does not infringe on Gibson's registered trademark or trade dress; (2) that Gibson's trademark claims are invalid based upon widespread sales of similar single horn shape guitars; (3) that there is not any evidence of actual consumer confusion about the sources of the parties' products at issue; (4) that Gibson's trademark registration was fraudulently obtained; (5) that Gibson's failure to use its registered shape reflects Gibson's abandonment of its trademark; and (6) that Gibson's cited design is functional and generic thereby barring any trademark or any unfair competition claim.

A. Findings of Facts¹

1. Gibson's Market History

Gibson designs, manufactures and distributes musical instruments, primarily guitars. (Docket Entry No. 79, Defendant's Response to Plaintiffs's Statement of Undisputed Facts, ¶ 1). Gibson has manufactured guitars and other musical instruments for more than 100 years. Id. ¶ 12. Gibson's premier product is its Les Paul guitar that has been sold continuously since 1953, but Gibson admits that "it did not manufacture the Less Paul series guitar for a number of years during the 1960's." (Docket Entry No. 1, Compl., ¶ 13).

During the 1960's when this guitar was not manufactured, Gibson's Les Paul continued to be played. According to Thomas Wheeler, PRS's guitar expert, the 1960s established the prominence of the Les Paul guitar. (Docket Entry No. 79, Defendant's Response to Plaintiff's Statement. of Undisputed Facts, ¶ 13). Gibson's Les Paul guitar is named after a successful recording artist

whose own name is Lester Polfus — [and who]... in 1949 ha[d] an incredible list of his songs that started with "Lover" in 1949 and ran right on through the Fifties with "Nola," "Tennessee Waltz," "Mocking Bird Hill," "How High the Moon," "the World is Waiting for Sunrise," "Just One More Chane," "I'm Confessin," "Smoke Rings," "Bye Bye Blues," "Tiger Rag," "I'm Sitting on Top of the World," "Vaya con Dies," "I Really Don't Want to Know," "I'm a Fool to Care," "Whither Thou Goest," "Hummingbird," "Moritat," "Cinco Rebles," "Put a Ring on My Finger," and "Jura." Les Paul's success was largely due to the shimmering spatial quality unique to his recordings which was the result of his electronic expertise — his pioneering in multitrack recording and overdubbing and his perfection of the solid body electric guitar, an idea he had been toying with since the Thirties. He built the prototype in 1941. He called it "The Long" and it was nothing but a four-by-four wooden log with strings, a pickup and a plug. It took him several years to convince Gibson that the concept could work and the company finally issued the Les Paul Standard in 1952. By then, however, he had already built and was using the extremely complicated Les Paul Recording Guitar which he only allowed Gibson to issue in 1971. Les Paul guitars are generally regarded by musicians as the standard ...

(Docket Entry No. 75, Attachment thereto, Exhibit S at 656).

Gibson also sells lower priced versions of its Les Paul guitar under the brand name Epiphone. (Docket Entry No. 79, Defendants's Response to Plaintiff's Statement of Undisputed Facts, ¶ 18). Since 1986, Gibson and Epiphone have sold more that 1.6 million Les Paul single cutaway guitars. Id. Gibson sells between forty and fifty percent more Les Paul guitars under the brand name Epiphone. Id.

Of Gibson's fifteen (15) guitars in its Les Paul series, two are double cutaway guitars that are not at issue here. (Docket Entry No. 75, at Exhibit X). Although Wheeler, PRS's expert, is aware of the Les Paul double cutaway guitars, when Wheeler uses the term "Les Paul," he is referring only to Gibson's Les Paul single cutaway guitar. (Docket Entry No. 63, Wheeler Dep., at 51). The same holds true for the parties and witnesses as well as the Court.

Gibson's Les Paul single cutaway guitar is a traditionally shaped guitar with a portion removed from body of the guitar where the lower section of the fingerboard meets the body of the guitar (Docket Entry No. 87, Exhibit 22, Carter Report at p. 3).² The term "cutaway guitar" denotes that portion of the guitar between the neck and its lowers part, that appears to be missing from the natural, rounded body contour. The removal of this portion forms what is often referred to as the "horn." Id. One aspect of this horn design is that the musician "can access higher strings, position." (Docket Entry No. 63 Exhibit R, Juszkiewicz Deposition at p. 127).

As to other parts of a guitar, a pickup selector switch allows the player to change quickly the electromagnetic inputs to any one of three options: the pickup closest to the neck (the "neck pickup"), the one furthest from the neck (the "bridge pickup"), or a combination of both. (Docket Entry No. 87 Exhibit 8, Knaggs Deposition at 30-31). The combination of volume and tone knobs for each pickup, allow the player to set the tone and volume of each pickup and, switching among these pickups can achieve different sounds. Id. Exhibit 10, Smith Deposition at 127.

a. Gibson's Trademark

In July 1987, Gibson applied to the U.S. Patent and Trademark Office ("USPTO") to register its "Guitar Body Design." (Docket Entry No. 75, Attachment thereto, Exhibit S at 553). The USPTO examiner twice refused Gibson's registration because the application presented was "merely descriptive," but the examiner allowed amendments to Gibson's application for evidence of secondary meaning. Id. at 594, 601. Gibson amended its application with several declarations and historical materials on the distinctiveness of the Las Paul guitar shape. Id. at 605-701.

The USPTO then approved Gibson's application and issued the registration. Id. at 702. The drawing for the Gibson 606 trademark is set forth below. The picture of the Les Paul single cutaway guitar that was submitted with Gibson's approved trademark application is as follows:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

(Docket Entry No. 63, Attachment thereto at Exhibit B).

In March, 1999, Gibson filed a "Declaration of Use And Incontestability Of A Mark Under Sections 8 and 15 for U.S. Trademark Registration No. 1,782,606 for its `Les Paul'." Id. at 713. USPTO granted that request on September 27, 1999. Id. at 716.

In its challenge to the validity of Gibson's registered trademark, PRS first cites the statement of Gibson's Vice President Gary Zebrowski to the USPTO that "no other person, firm, corporation or association has the right to use said mark in commerce, either in the identical form or such near resemblance thereto as may be likely...to cause confusion." (Docket Entry No. 4 PRS Answer., ¶ 45). Zebrowski's sworn statement reads, in pertinent part, as follows:

Gary Zebrowski...declares that he is vice president of Applicant corporation and is authorized to execute this instrument on behalf of said corporation; he believes side corporation to be the owner of the trademark sought to be registered; to the best of his knowledge and belief, no other person, firm, corporation or association has the right to use said mark in commerce, either in the identical form or such near resemblance thereto as may be likely, when applied to the goods of such other person, to cause confusion, or to cause mistake, or to deceive; the facts set forth in this application are true; and all statements made on his own knowledge are true and all statements...