The owner of Dean Guitars has won the right to a retrial in its ongoing dispute with Gibson Brands.
Armadillo Enterprises is looking to overturn a 2022 ruling that went in Gibson’s favor, with the dispute centered around the usage of V and Z shape guitars.
Gibson believes Dean's manufacturing infringes on its trademark rights, while Dean believes that the shapes are perceived as generic, rather than Gibson-specific shapes.
Armadillo lodged an appeal earlier this year, saying that the Texas District Court’s decision to exclude certain evidence pre-dating 1992 was an abuse of the court’s discretion.
Dean’s owners were trying to establish an argument that the much-copied Flying V and Explorer-style designs have become generic silhouettes in the eyes of the consumer since their introduction in the 1950s.
On July 8, the Circuit Court of Appeals ruled in Armadillo’s favor, believing that decades of worth of evidence was wrongfully not permitted during the 2022 case. That decision permits Armadillo to a retrial.
The firm’s CEO, Pam Rubinson, said Dean Guitars was “incredibly pleased with the court’s decision.”
She adds that the ruling “affirms our commitment to Dean's legacy V and Z models that have been in continuous production since 1977 and reinforces our belief in fair competition within the guitar industry.
“We have always strived to respect the history of guitar craftsmanship while bringing our own unique flair to the market.
“This is a complete vindication, we have fought this battle and won on behalf of Dean Guitars and every other guitar manufacturer in the industry.”
Armadillo’s attorney, Ron Bienstock, of Scarinci Hollenbeck LLC, also provided comment, saying: “Amongst other issues, the court recognized the history of the Dean brand in their longstanding use of these guitar models, as well as countless other guitar companies that have produced and marketed these same guitars.”
Bienstock is well-versed in guitar industry disputes. A gigging guitarist in his own right, he previously won a case against Fender and its attempt to trademark Stratocaster, Telecaster, and P-Bass body shapes. During the case, which lasted six years and concluded in 2009, he represented 17 manufacturers that rallied against Fender’s trademarking, with the courts ruling that the shapes were generic, and therefore open to use by all manufacturers.
However, as that case proved, this dispute, which began in 2019 when Gibson sued Dean and Luna Guitars for trademark infringements, is far from over.
The ruling comes as welcome news to Armadillo Enterprises and Dean Guitars, but it does not overturn a 2022 injunction preventing Dean from using the disputed shapes in due course.
Armadillo’s legal team, spearheaded by Bienstock, can now make what it feels is a far stronger case, with more evidence to present.
Following the ruling, Gibson provided Guitar Player with the following statement:
“Yesterday, a 3-judge panel of the 5th Circuit Court of Appeals remanded the Gibson v Armadillo case for retrial. The Court of Appeals found that the District court allegedly abused its discretion in excluding certain evidence. Gibson will be requesting all the appellate judges reconsider the panel decision. Gibson is confident that the Texas Judge and jury got it right the first time.
“Gibson’s guitar body shapes are iconic, and it will continue to protect them to preserve its legacy which is critical to protect partners, dealers, artists, and fans around the world.
“Gibson, like other iconic American brands, has invested in meaningful research, development, and innovation over 130 years, and is confident that in a retrial the jury will again find in favor of affirming Gibson’s well recognized intellectual property rights, rights that have been Gibson’s for decades.”
The documents relating to the appeal can be found using the Court of Appeals docket number 22-40587.
