(Image via Getty)
In recent weeks, the Gibson Guitar Company has been unfairly painted by certain not-entirely-objective interests on the internet as an IP Maximalist Boogeyman. The critiques center on Gibson’s “Play Authentic” campaign, which provided notice that Gibson holds trademarks for The Les Paul, Flying V, and Thunderbird guitar shapes, amongst others. The notice was delivered via video by Mark Agnesi, Gibson’s Director of Brand Experience, and advised that legal action would be forthcoming against those who exploited Gibson’s marks without consent.
The reaction to the “Play Authentic” advertising campaign and Gibson’s ongoing trademark actions in both Texas and the European Union has been just shy of riotous. For Gibson, their real mistake was not their current attempt to enforce their statutory rights, but the fact that they waited so long to do so, and the manner in which it delivered its message that it will now enforce its rights.
The purpose of intellectual property law is to encourage innovation and quality by giving creators a limited monopoly on their inventions and brands the exclusive right to enjoy the goodwill associated with their trademarks. If you create the Next Big Thing and others want to use your design or mark, they are free to approach you about entering into a licensing agreement. If it weren’t for the legal structures creating this licensing marketplace, only suckers would create anything truly new, as it would be more financially beneficial to avoid the labor and expense of R&D, instead rebranding the creations of others. This is essentially what every guitar manufacturer who creates a “singlecut” type guitar is doing.
So why is Gibson the bad guy? The short answer is it really isn’t — the company’s chief sin was the bizarre manner in which they announced and publicized their campaign, which campaign was itself no different from many other brands’ attempts to protect their IP. The long answer is the paradox of trademark. What Gibson did wrong was not register trademarks for their iconic designs before they were iconic. They are now being viewed as IP maximalists because they were not enforcing their rights earlier.
On the most basic level, trademarks exist to keep customers from being confused. This allows a customer to feel confident in the quality level of their purchase and allows companies who have heavily invested in quality control and consumer goodwill to profit from those investments.
Once a product’s distinct qualities have acquired a “secondary meaning,” be that a shoe with a contrasting red sole, like Christian Louboutins, or Gibson’s famous Les Paul electric guitar, trademarking those unique qualities allows the manufacturer or designer to prevent others from counterfeiting their products.
Trademarks also prevent others from free-riding on the goodwill associated with those products. However, in order to keep their statutory trademark, the manufacturer is required to enforce their rights, lest they be adjudged “abandoned.” Sleeping on your rights also exposes the trademark to the risk of destruction by “genericide”: loss of trademark protections because the product is no longer associated specifically with the trademark holder’s product. So brands are faced with an enforce-it-or-lose it type of situation, and any trademark lawyer worth her salt would advocate for enforcement.
Now, Gibson’s Flying V guitar design was created in 1958, but it was not registered with the trademark office until 1997. This puts Gibson in the odd position of owning a product, design, and mark that they created but which they no longer can claim was only associated with their brand. Why was it not associated only with Gibson? Because Gibson was totally chill about their IP between 1958 and 1997 and did little as other companies ripped off their work and marketed copies. By standing down in the exact way they are currently being admonished for not doing, Gibson waived or at least limited their statutory right to maintain the uniqueness of their marks. Since IP law is supposed to encourage innovation, Gibson maintaining the Flying V solely for themselves would have forced other guitar manufacturers to create competing cool designs. If they’d enforced their rights, we’d likely be swimming in a sweet sea of dope axes.
Instead, we are swimming in a rancid sea of fetid litigation. In one of the more recent cases, Gibson filed suit against Armadillo, which markets the Dean and Luna guitar lines. Gibson alleges that certain of these guitars violate its trademarks in the Flying V and others. But, as noted above, Gibson has historically been lax about enforcing its rights and a chief defense for Armadillo is that it has been marketing and selling (and even building up goodwill in) these guitars for decades.
But what is really at stake for Gibson here is consumer goodwill and control over its marketing messaging — if a consumer or listener has a bad experience playing a Dean V guitar or hearing someone coax a mediocre tone out of one in a smokey bar, that will negatively affect Gibson’s goodwill in its Flying V. Perhaps a concertgoer mistaking a Dean V for the Gibson product would be injurious to Gibson as the concertgoer may reconsider purchasing a Gibson on that basis (unless of course, said concertgoers are Megadeth fans looking to emulate Dave Mustaine, who rocks the Armadillo product). And for the customer wanting to sound like Grace Potter (who until recently had an artist model Gibson Flying V), an association with Megadeth may mega-cost Gibson a sale.
While Gibson may not have been spending great resources on enforcing its trademarks, they have always carefully curated their roster of official Gibson artists as a means of marketing their instruments to a broad clientele. When other guitar manufacturers curate artists with a different aesthetic playing instruments that could easily be mistaken for a Gibson, Gibson loses control over brand messaging for their own products, which is exactly what trademark law should protect against. If Gibson had delivered its message to alleged and potential infringers via a different medium, and perhaps with a smile, its message would likely have been more well-received. But, for now, the trademark disputes rage on.
Ed. note: This article was written with valuable contributions from Doniger / Burroughs summer law clerk Jeremy King, who rocks a guitar when not Shepardizing and can be found on Twitter and Instagram at @jeremykingmusic.
Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at scott@copyrightLA.com, and you can follow his law firm on Instagram: @veniceartlaw.