Re: Gibson Trademarks 335 Shape
As I recall it, Gibson won on a Motion for Summary Judgement which is often used to parry down groundless causes of actions and is quite a bit different than injunctive relief. In this case, it was granted in full, which basically meant that a (Tennessee-based) judge found that Gibson's case was so strong, he granted Gibson a complete victory without the case proceeding to trial. This is very rare. I had never seen this before in any case let alone an I.P. case like this. But Motions for Summary Judgement are appealable and PRS won, in total, on appeal thereby vacating the MSJ and giving them a complete victory.
Yes. But, it's different with different types of IP. And judges are reluctant to grant motions for summary judgment because if those motions are overturned they look really bad... So even though there are some cases where they think the law dictates a certain outcome, but aren't 100% sure, they'll let it proceed to trial. Because then they can blame the jury for the wrong decision.
As far as different types of IP, the thing is trademarks, copyrights, and patents are kind of shoehorned together... They're very distinct areas with distinct requirements. You might for example see more summary judgment cases with patents because the specification for each patent has to be so detailed. Actually, now that I think about it patent cases are handled mostly by the executive branch.
Trademarks are massive, but there are certain things they can't control. The one most important here is functionality. You can't trademark the shape of a garden hose because in order for that hose to work it has to be that shape or a shape really close to it. You can't trademark colors of makeup or smells of perfume, but you can trademark the smell of makeup and the color of perfume. The function of what you trademark can not be essential to its use... Which is totally the case with
solid body electric guitars. And even then you could argue that - but to my ears the upper horn on a strat vs. a tele has less to do with the sound than the middle pickup... Or the tremolo... etc. etc.
At any rate with an acoustic guitar (hollow bodied), the body shape is all that matters. If you can look me in the eyes and tell me that a dreadnaught and a jumbo and a 000 sized guitar like eric clapton uses sound the same you are either deaf or need an oscar. The shape of those guitars is what makes them sound like they do...
The problem with the es-335 is that it's both. It's solid wood if you look at it along the plane of the strings. But it has two hollow wings. So which is it? Is it a solid body, where it would be much easier to argue that you can absolutely trademark the shape, or is it a hollow body to where you can say that the specific shape of the instrument is an integral part of the sound you get from it? Does the trademark cover only that shape even if the guitar is deeper and fully hollow?
Trademarks get overturned all of the time. Things like escalator, kleenex, and so on became useless as trademarks because they became the generic term for that type of good. But it's very hard to prove that a trademark has become a generic term for that type of thing... Xerox fought this very battle in the 80s. More recently google has fought the use of the word "google" as a verb because that jeopardizes their trademark. So, all is not lost. It's a delicate balance in terms of how long you wait before you file for a trademark. Long enough that it's recognizable, but not so long to allow it to become ubiquitous.
2 things:
1. Doesn't seem defensible if they waited a half century to register.
2. What is Gibson planning with the 335 shape that they feel they need to lock out other companies now all of a sudden?
1. It's industry specifc, but you're right. And plus my earlier point about functionality.
2. Nothing... By definition if they trademark that shape they can only use that shape as a trademark. They just want to corner the market and they have very good lawyers.
If Gibson really had it their way the Ibanez musician would be forbidden, too, based on ... something. Headstock angle. 4-pot control. Neck bindings. Something.
The boundaries have to be clarified and it looks like Gibson is doing us the favor of clarifying them once and for all while footing much of the bill.
That's why functionality is so important. Because companies will try and trademark things that affect how well a product works... Sometimes people will patent a type of nozzle that requires a unique shape, and then when the patent expires they'll try and trademark that shape. That way, nobody else can make their product, ever. Much more common is the pharmaceutical companies who build brand equity while other competitors are kept out of the ring so to speak. You can (and should) buy generic drugs that are formulated exactly the same, but people will consistently pay more for name-brand drugs because they're recognizable.
