Maker of famous ‘flying’ guitar shape wins three-year dispute
Iconic guitar manufacturer beats back competitor over trademark infringement | Texas court issues permanent injunction against rivals | Defendants ordered to pay $4,000 in damages.
Gibson, the manufacturer of guitars that have featured in films and TV shows such as “Back to the Future”, “School of Rock”, and “American idol”, has secured an injunction against a rival from using its trademarked guitar shapes.
In a final judgment handed down last week, on July 28, the US District Court for the Eastern District of Texas permanently enjoined Armadillo from manufacturing, advertising and/or selling guitars that infringe on Gibson’s ES, SG, Flying V and Explorer trademarks.
Armadillo (which owns Dean Guitars and Luna Guitars) is also permanently prohibited from using the ‘Hummingbird’ word mark.
But Judge Ammos Mazzant found that Armadillo has not manufactured, advertised, or sold products in the US that infringe on Gibson’s ‘Flying V’ wordmark, nor had it sold or marketed a counterfeit of the ‘Dove Wing’ headstock design or the ‘Flying V’ word mark.
Judge Mazzant also ruled that Gibson had “delayed without excuse” in asserting its trademark right for the Flying V and Explorer shapes, and the Dove Wing headstock shape.
Three-year dispute
Gibson had initially sent a cease-and-desist letter to Armadillo in 2017, with no response.
The case emerged in May 2019, when Gibson sued Armadillo and its investment partner Concordia, alleging trademark infringement, trademark counterfeiting, unfair competition and trademark dilution.
Armadillo filed a countersuit in July 2020, accusing Gibson of “tortious interference with Armadillo’s business relationships and/or contracts”. Armadillo also asked the court to remove the counterfeiting claims in Gibson’s complaint, but Judge Mazzant denied this request in June 2020.
In December that year, Gibson filed a motion for summary judgment, on the basis of the claim made by Armadillo and a Gibson estoppel issue.
In February 2021, Judge Mazzant denied Armadillo’s motion for summary judgement, as well as its initial request to have Gibson's claims against them dismissed.
Then in May 2022, a jury found that Gibson’s trademarks are valid and its shapes are not generic, and that the defendants were guilty of both infringement and counterfeiting.
The order on July 28 seals this judgment, and Armadillo and Concordia were ordered to pay Gibson a total of $4,000 in accordance with the jury’s finding as to counterfeiting, as well as costs.
WIPR has contacted both Gibson and Armadillo for comment.
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