$8 Million Guitar Counterfeiting Claim Dismissed

$8 Million Guitar Counterfeiting Claim Dismissed

Lyndhurst, NJ – October 20, 2016 – Scarinci Hollenbeck intellectual property attorneys Ronald S. Bienstock and Brent “Giles” Davis secured a major victory in a trademark infringement suit.  Gibson Brands, Inc. (“Gibson”) sued Scarinci Hollenbeck’s client, U.K. musical instrument company John Hornby Skewes & Co., Ltd. (“Skewes”), alleging that Gibson owned trademarks in certain two-dimensional body and headstock shapes and that Skewes has violated those trademarks. The case, Gibson Brands, Inc. v. John Hornby Skewes & Co., Ltd. is currently pending in the United States District Court for the Central District of California (Case. No. 2:14-cv-00609-DDP-SS). 

According to Gibson, Skewes used counterfeit versions of the shapes at issue. Skewes argued that it should be granted judgment as a matter of law on the counterfeiting count, since (1) all its guitars  prominently displays the brand name of “Vintage,” and (2) all advertising and packaging state that the guitars came from John Hornby Skewes. Skewes moved for summary judgment and oral argument was held with trial counsel Davis appearing for Skewes. The Court granted summary judgment in favor of Skewes on the counterfeiting claim. In so doing, the Court eliminated Gibson’s ability to collect $8 Million in statutory damages.

In its Order of September 29, 2016, the Court concluded that “no reasonable jury could find that [John Hornby Skewes]’s guitars were counterfeits of Gibson’s guitars.”  The Court explained that “counterfeiting is the ‘hard core’ or ‘first degree’ of trademark infringement that seeks to trick the consumer into believing he or she is getting the genuine article, rather than a ‘colorable imitation.’”  Counterfeiting also gives the aggrieved party “wider range of statutory penalties and remedies.” 

The Court found that:

“…guitars in question cannot be deemed identical or substantially indistinguishable from each other. Aside from certain visual distinctions between the guitars, as both [John Hornby Skewes] and Gibson acknowledge, guitars are typically identified by the branding on the headstock. Here, [John Hornby Skewes]’s guitars are marked with the “Vintage” branding on the front and the [John Hornby Skewes] trademark on the back.”

Remaining Guitar Shape Trademark Infringement Claims

The remaining claims, set for trial in February 2017, limit damages to profits on the sale of, as the Court noted, about “300 such guitars.”  The Court declined to grant summary judgment to either party on Gibson’s claims of trademark infringement of the guitar body and headstock shapes. Skewes has asserted counterclaims of cancellation of the trademark registrations for the body and headstock shape, citing to rampant third-party usage throughout the guitar industry for fifty years.