$8 Million Guitar Counterfeit Claim Dismissed

UK Guitar Maker John Hornby Skewes & Co., Ltd. has been granted summary judgment dismissing an $8 million guitar counterfeiting claim brought against it by Gibson Brands, Inc.

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Scarinci Hollenbeck, LLC

Oct 20, 2016, 08:40 ET

LYNDHURST, N.J., Oct. 20, 2016 /PRNewswire/ -- Scarinci Hollenbeck (www.sh-law.com) intellectual property attorneys Ronald S. Bienstock and Brent "Giles" Davis secured a major victory in a trademark infringement http://scarincihollenbeck.com/practices/intellectual-property/ 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 Homby 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).

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Court Dismisses Gibson's Counterfeiting Claim

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.

About Scarinci Hollenbeck

With a growing practice of more than 50 experienced attorneys, Scarinci Hollenbeck is a regional alternative to a National 250 law firm. With offices in New Jersey, New York City, and the District of Columbia, we serve the niche practice areas most often required by institutions, corporations, entities, and the people who own and control them. Throughout the decades, we have maintained our reputation for knowledge, experience, and professionalism. Our intellectual property attorneys understand that our clients' trademarks, patents, copyrights, proprietary technology, and trade secrets are among their most valuable assets, and that securing protection of such intellectual property will ensure long lasting benefits. The attorneys in our Intellectual Property ("IP") Group advise and represent companies of all sizes, worldwide, who are seeking to maximize, maintain, and protect their intellectual property portfolio.

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