Gibson Guitar Corp. v. Paul Reed Smith Guitars 423 F.3d 539 (6th Cir. 2005)
Facts: Gibson guitars had a registered trademark in its Les Paul guitar which it had been manufacturing since 1952. The trademark was applied for in 1987 but was not made official by the U.S. Patent and Trademark Office until 1993. The distinct characteristic of the Les Paul guitar is its “cutaway†design which allows better access to certain chords. This design was replicated by Paul Reed Smith (PRS) in its “Singlecut†model at some time around January of 2000. The design is as a trademark is at issue in this case.
Issue: “...this case is presented to us after a grant of summary judgement, our task is to determine whether the District Court correctly held that no genuine issues of material fact were presented regarding the likelihood of confusion factors.â€
Procedure: The facts of this case were brought before the District Court in Nashville on two occasions. On the first occasion Gibson brought a very broad suit against PRS. The district court granted partial summary judgment in favor of Gibson’s trademark-infringement claim in 2004. Oddly, this led to both parties seeking an amendment to their petitions. Gibson sought to amend its complaint to state only its trademark infringement claim (this will come to haunt them as they dropped their claim for infringement of trade dress). PRS then sought to amend its counterclaims to include only those related to trademark. After the amendments the District Court ruled on a motion in limine filed by Gibson on July 2, 2004. The resulting order enjoined PRS from manufacturing, selling, or distributing its “Singlecut†model. PRS then filed an interlocutory appeal of this order. The appeal was heard by the Sixth Circuit, and the order was reversed and remanded.
Analysis: “To establish trademark infringement within the meaning of the Lanham Act, Gibson must demonstrate that the PRS Singlecut ‘is likely to cause confusion among consumers regarding the origin of the Singlecut.’†In issuing the order enjoining PRS from producing and selling its “Singlecut†guitar the District Court relied on the Frisch factors to determine “the likelihood of confusion.†One of these factors was “evidence of actual confusionâ€, and regarding this factor there was no evidence of actual confusion. Given this lack of evidence the District court substituted evidence of initial interest confusion to support its summary judgement and finding that all eight factors would weigh in favor of Gibson.
The Circuit Court reversed the District Court’s Summary Judgement and Order against PRS. To do this it only needed to demonstrate that there were disputable issues of material fact. To demonstrate this the Circuit Court needed only to analyze the “evidence of actual confusion†factor. In the opinion of the Circuit Court allowing an injunction based primarily on a customers initial interest confusion was unwise because it would open the floodgates of litigation and permit injunctions based on design of a product instead of functionality. Interestingly Gibson would have had a better chance of success based on trade-dress which creates liability based on mimicry of product presentation (this claim was dropped by Gibson after the District Court’s first Summary Judgment). The Circuit Court examined all of Gibson’s theories of customer confusion (initial interest, Post-Sale, and the hybrid “Smokey- Bar Theoryâ€) and focused most of its analysis on the theory of initial interest confusion. The Court noted that this theory had garnered some supporting precedent through internet domain name cases such as PACCAR, but it was able to distinguish this line of cases from the case at issue. The Court’s primary rationale was that the internet was simply a different animal than a case in which product-shape trademark was at issue. In supporting its position the court noted that, functionality being a key concern to a manufacturer, there are a very limited number of shapes in which a product can be designed. Furthermore allowing such product design trademarks would allow a manufacturer to corner the market based on a design that is simply functional. The Court was also concerned that allowing an initial interest inquiry would be unwieldy in the context of product design. Such an inquiry would force the Court to examine on a case-by-case basis whether the consumer was confused by the retailers display or by the design itself, which would end up sending the Court to wade through an endless bog of detail.
The Court also looked at Gibson’s claims based on Post-Sale Confusion and “the Smokey Bar Theory.†Both theories were effectively discounted by Gibson’s stipulation that PRS’s Singlecut was not “clearly inferior†to its Les Paul model. The Court said that any confusion then would not harm Gibson’s reputation among potential buyers; if anything such confusion would benefit Gibson.
Conclusion: The Circuit Court Reversed the Summary Judgment and Injunction ordered by the Nashville District Court against PRS, and remanded for further proceedings.
Facts: Gibson guitars had a registered trademark in its Les Paul guitar which it had been manufacturing since 1952. The trademark was applied for in 1987 but was not made official by the U.S. Patent and Trademark Office until 1993. The distinct characteristic of the Les Paul guitar is its “cutaway†design which allows better access to certain chords. This design was replicated by Paul Reed Smith (PRS) in its “Singlecut†model at some time around January of 2000. The design is as a trademark is at issue in this case.
Issue: “...this case is presented to us after a grant of summary judgement, our task is to determine whether the District Court correctly held that no genuine issues of material fact were presented regarding the likelihood of confusion factors.â€
Procedure: The facts of this case were brought before the District Court in Nashville on two occasions. On the first occasion Gibson brought a very broad suit against PRS. The district court granted partial summary judgment in favor of Gibson’s trademark-infringement claim in 2004. Oddly, this led to both parties seeking an amendment to their petitions. Gibson sought to amend its complaint to state only its trademark infringement claim (this will come to haunt them as they dropped their claim for infringement of trade dress). PRS then sought to amend its counterclaims to include only those related to trademark. After the amendments the District Court ruled on a motion in limine filed by Gibson on July 2, 2004. The resulting order enjoined PRS from manufacturing, selling, or distributing its “Singlecut†model. PRS then filed an interlocutory appeal of this order. The appeal was heard by the Sixth Circuit, and the order was reversed and remanded.
Analysis: “To establish trademark infringement within the meaning of the Lanham Act, Gibson must demonstrate that the PRS Singlecut ‘is likely to cause confusion among consumers regarding the origin of the Singlecut.’†In issuing the order enjoining PRS from producing and selling its “Singlecut†guitar the District Court relied on the Frisch factors to determine “the likelihood of confusion.†One of these factors was “evidence of actual confusionâ€, and regarding this factor there was no evidence of actual confusion. Given this lack of evidence the District court substituted evidence of initial interest confusion to support its summary judgement and finding that all eight factors would weigh in favor of Gibson.
The Circuit Court reversed the District Court’s Summary Judgement and Order against PRS. To do this it only needed to demonstrate that there were disputable issues of material fact. To demonstrate this the Circuit Court needed only to analyze the “evidence of actual confusion†factor. In the opinion of the Circuit Court allowing an injunction based primarily on a customers initial interest confusion was unwise because it would open the floodgates of litigation and permit injunctions based on design of a product instead of functionality. Interestingly Gibson would have had a better chance of success based on trade-dress which creates liability based on mimicry of product presentation (this claim was dropped by Gibson after the District Court’s first Summary Judgment). The Circuit Court examined all of Gibson’s theories of customer confusion (initial interest, Post-Sale, and the hybrid “Smokey- Bar Theoryâ€) and focused most of its analysis on the theory of initial interest confusion. The Court noted that this theory had garnered some supporting precedent through internet domain name cases such as PACCAR, but it was able to distinguish this line of cases from the case at issue. The Court’s primary rationale was that the internet was simply a different animal than a case in which product-shape trademark was at issue. In supporting its position the court noted that, functionality being a key concern to a manufacturer, there are a very limited number of shapes in which a product can be designed. Furthermore allowing such product design trademarks would allow a manufacturer to corner the market based on a design that is simply functional. The Court was also concerned that allowing an initial interest inquiry would be unwieldy in the context of product design. Such an inquiry would force the Court to examine on a case-by-case basis whether the consumer was confused by the retailers display or by the design itself, which would end up sending the Court to wade through an endless bog of detail.
The Court also looked at Gibson’s claims based on Post-Sale Confusion and “the Smokey Bar Theory.†Both theories were effectively discounted by Gibson’s stipulation that PRS’s Singlecut was not “clearly inferior†to its Les Paul model. The Court said that any confusion then would not harm Gibson’s reputation among potential buyers; if anything such confusion would benefit Gibson.
Conclusion: The Circuit Court Reversed the Summary Judgment and Injunction ordered by the Nashville District Court against PRS, and remanded for further proceedings.