Gibson wins Dean trademark infringement case – but is awarded just $4,000 in damages

Three years after it filed a multimillion-dollar lawsuit against Dean Guitars alleging trademark infringement and counterfeiting, Gibson has been ruled the victor in the case by a Texas federal jury.

Gibson initially filed its lawsuit against Armadillo in May 2019, accusing the company of infringing on seven of its trademarks, ranging from electric guitar body shapes to headstock designs.

These included the Flying V, Explorer, ES and SG body shapes, “Dove Wing” headstock design, “Hummingbird” name and “Moderne” trademark.

Gibson also accused Armadillo of trademark counterfeiting, claiming the company was trying to mislead customers into believing the guitars manufactured by Dean were in some way affiliated to Gibson.

In a statement at the time, Dean denied the accusations, stating that it had been “continuously offering the V- and Z-shaped guitars at issue in the lawsuit since at least 1976 – for over the past forty years”, and that “other guitar companies have for decades used the commonplace guitar shapes that Gibson now tries to claim exclusive rights to”.

Armadillo subsequently countersued Gibson, accusing it of “tortious interference with Armadillo's business relationships and/or contracts”.

But in the new ruling issued Friday (May 27), jurors rejected Armadillo's claims that Gibson's designs in question were now “generic” and “unprotectable”, finding the company guilty of infringing on Gibson's body shape trademarks for its Flying V, Explorer, ES and SG models, as well as the Dove Wing headstock and the name of the Hummingbird acoustic guitar.

However, in a win for Dean, the court found that Gibson “delayed in asserting its trademark right(s)” for its Flying V and Explorer body shapes and Dove Wing headstock design, adding that the delay was “inexcusable” and caused “undue prejudice to Armadillo”.

Consequently, the court stated that Gibson had suffered no “actual damages”, and awarded Gibson just $4,000 in “counterfeiting statutory damages”.

In a new statement marking the end of the two-week-long trial, Gibson called the ruling “a win for [the company] and the music community at large”.

“The court found that Gibson trademarks are valid, the Gibson shapes are not generic, and the defendants were guilty of both infringement and counterfeiting,” the company writes. 

“Gibson is very pleased with the outcome after years of simply trying to protect their brand and business through well recognized intellectual property rights, rights that have been Gibson's for decades.

“Gibson's guitar shapes are iconic, and now are firmly protected for the past, present and future. From a broader perspective, this court decision is also a win for Gibson fans, artists, dealers and related partners who expect and deserve authenticity. Not to mention for all of the iconic American brands that have invested in meaningful innovation and continued protection, only to see it diluted with unauthorized and often illegitimate knockoffs.

“Gibson can now focus attention on continuing to leverage its iconic past, and invest in future innovation, with confidence.”

But spinning the result in Dean's favor, Armadillo CEO Evan Rubinson praised the “vindication” of his company.

“We are thrilled that a Texas jury has vindicated Armadillo in ruling for Armadillo on its defence to Gibson's trademark claims on our Dean V guitar, Dean Z guitar, and Evo headstock,” he said in a statement.

“The jury found that Armadillo is not liable to Gibson for our long use of those guitars and [headstocks]. The jury issued a judgement in the amount of $4,000, a mere fraction of the $7 million-plus originally sought by Gibson.”

It's not yet clear what the ruling will mean for Dean's infringing guitars, though it's possible the company will be required to cease the sale of its V, Z and Colt Series models before tweaking their designs so they don't breach Gibson's registered trademarks.

The verdict could also have broader implications for other companies producing instruments with similar outlines to Gibson designs – the guitar giant is currently in the midst of trademark disputes with Heritage Guitars and Kiesel.