Liability And Legal Issues With Copying Guitars

[ACSpike]

Under law, once a design is Patented, be it the Leviathan, a Strat, a Les Paul or otherwise, copying that design for more than personal use is completely illegal. 

I had been told that copying a patented design was illegal even for personal use, though there is a case where copying is allowed as research to fully understand and improve on an invention.

The minute you post pictures you can be held liable for design theft if it can be concluded that you are using those pictures for personal gain, (ie:  promotion)

This is not a concern with posting project pictures really because no company is going to spend the money involved in a lawsuit on trying to nail somebody who is attempting to copy a guitar,

I still don't quite understand how pictures, drawings etc can constitute patent infringment. I thought the patent only protected the actual physical invention not the description of it. Does anyone have any references on the issue?

[LukeR]

Hi everyone,

Honestly, I am not trying to start any problems here, but it can be very dangerous compiling what is/isnt legal on this forum.

We all live in different parts of the world- whilst the same principles apply (in Western style countries) there are important, if subtle differnces between juresdictions.

Besides legislation, I guess an important aspect is the 'springboard' doctrine.

Basically, you should not use another's ideas (actually, not ideas per se, but intellectual property) to 'springboard' your own ideas. (this is the theory, but in real life, it works on how much 'springboarding' is involved). Doing so is bad.

In Australia, we also have the Designs Act 2003 (Cth), under which you can register the design of your guitar (well, specific parts, such as headstock, body shape, etc). I must confess, there isnt alot of case law on this act, and it is significantly different to its predesessor Act.

THere is also the 'deep pockets' angle to consider. Basically Gibson et al would not really bother to sue you for making copies guitars (you will still get a nice letter though- and it will be a NICE letter if you live in Australia- it is an offence to make arbitrary threats of litigation in the areas of IP law in Australia).

Basically, it is not worth the cost to sue you personally- it IS worth the cost to go after PRS, because they have the 'deep pockets'.

If anyone is interested in IP law, I would suggest checking out the WIPO website. It has alot of good information and journal articles.

Just for the record, IP law is one of my majors- I have complteted all nessesary courses to practice in the area of IP law in Australia. I was also just appointed as a teacher of the Diploma of Justice at TAFE.

For those (Aussies) who are interested, I have read hundreds of books on IP law, and I think the best one I have come across is 'Intellectual Property in Australia '(3rd ed) McKeough, Stewart, Griffith; published by Butterworths. It is a very good survey text, and should give you a good insight into what is going on.

Cheers,

Luke

[LGM Guitars]

Another thing to keep in mind is that trademarks don't automatically apply to the whole world. For example Gibson can't do much about exact Les Paul copies sold in Japan for example. They can't have the Gibson name on the headstock, but the design is exact from headstock to body shape. If these manufacturers want to sell the guitar in the States, they must change the headstock and body shape as far as I know.

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Trademarks do apply to the whole world, nobody anywhere can utilize the name "Stratocaster" "les paul" etc under trademark law. Patents only apply to the country of patent, but trademark is world wide.

Don't confuse the two, the Les Paul design is a patent, not a trademark, the name LES PAUL is a Trademark. If Gibson holds a Japanese patent they can nail every manufacture in Japan for making Les Paul copies, this is why Ibanez was given a cease and desist order.

I still don't quite understand how pictures, drawings etc can constitute patent infringment. I thought the patent only protected the actual physical invention not the description of it. Does anyone have any references on the issue?

Reread what I posted. If you were to build a copy of a guitar, whether you ever sell it or not, if you are using it for self promotion it can be deemed as creating personal gain financially, therefore it is a patent infringement. So basically, if you wanted to start a guitar company, and you build a Les Paul with no intent of selling it, but you use that guitar to promote your product, Gibson can use that against you because you are using THEIR product for your own personal gain. Patent does only protect the physical invention, design patent protects the physical shape of that product. Utility protects the physical shape/design, as well as what it does. If you are using somebody else's product for personal gain, that is where the infringement comes in.

We all live in different parts of the world- whilst the same principles apply (in Western style countries) there are important, if subtle differnces between juresdictions.

Correct, but, regardless of what part of the world you are in, the laws remain for the area of patent. In other words, if you copy my design, you can do what you want with it in Australia providing I don't have an Australian patent. However, if you should try to sell that guitar to a client in the USA, or anywhere I DO have a patent, you are liable. Yes, the "deep pockets" issue remains, but, with a patent, if you were to steal it and try to sell within the country of patent, it's up to me as the owner of that design if I want to sue. I can take it to small claims court if I want, keep the costs lower. If you make a blatant copy and are trying to sell it, it is not a hard case to win when I have the patent already.

As for how long a patent is good for, that also is different from country to country. I believe my patents are all good for 20 years, at that point, I can refile and keep it protected without issue. Once I'm dead and gone and IF the company dies with me, the patent becomes public domain I BELIEVE 20 years after that time.

I am not an expert, just telling all the stuff I've learned in the past couple months dealing with the patent issue. I made sure my ass was protected, seeing people selling copy guitars on ebay, that's where you wanna be a little careful, hence the reason for my post.

[LGM Guitars]

moved to off topics...not because it is not important...just because it belongs here

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I don't agree with that to be honest wes, it's not an off topic post, it is directly related to guitars and design, hence my putting it in the guitars and bass forum. Off topic is as I understand, for issues NOT related to guitars, my entire post is based on guitars and patenting designs.

[antonio jueveras]

its related to guitars, but not the construction of them, maybe it should go in the players corner. Another question, continueing your scenario in the last post, what would happen if a dude in Australia (given no australian patent) sold a guitar like yours, and then, the guy who bought it sells it in america (where you do have a patent)??

Edited February 10, 2005 by antonio jueveras

[Lesmortdansant]

Hi everyone,

Honestly, I am not trying to start any problems here, but it can be very dangerous compiling what is/isnt legal on this forum.

We all live in different parts of the world- whilst the same principles apply (in Western style countries) there are important, if subtle differnces between juresdictions.

Besides legislation, I guess an important aspect is the 'springboard' doctrine.

Basically, you should not use another's ideas (actually, not ideas per se, but  intellectual property) to 'springboard' your own ideas. (this is the theory, but in real life, it works on how much 'springboarding' is involved). Doing so is bad.

In Australia, we also have the Designs Act 2003 (Cth), under which you can register the design of your guitar (well, specific parts, such as headstock, body shape, etc). I must confess, there isnt alot of case law on this act, and it is significantly different to its predesessor Act.

THere is also the 'deep pockets' angle to consider. Basically Gibson et al would not really bother to sue you for making copies guitars (you will still get a nice letter though- and it will be a NICE letter if you live in Australia- it is an offence to make arbitrary threats of litigation in the areas of IP law in Australia).

Basically, it is not worth the cost to sue you personally- it IS worth the cost to go after PRS, because they have the 'deep pockets'.

If anyone is interested in IP law, I would suggest checking out the WIPO website. It has alot of good information and journal articles.

Just for the record, IP law is one of my majors- I have complteted all nessesary courses to practice in the area of IP law in Australia. I was also just appointed as a teacher of the Diploma of Justice at TAFE.

For those  (Aussies) who are interested, I have read hundreds of books on IP law, and I think the best one I have come across is 'Intellectual Property in Australia '(3rd ed) McKeough, Stewart, Griffith; published by Butterworths. It is a very good survey text, and should give you a good insight into what is going on.

Cheers,

Luke

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Luke i apologise you have raised some excellent points here and your references to text are very good. Its true there is little in the way of case law in regards to this however the system can only be tried and tested in the future to a greater extent with more and more people able to copy these designs and DELIBERATELY market them knowing full well they are fake. Thanks

Sorry just wanted to add, but with the internet becoming more accesible by the day and the information on it so easy to find surely the amount of instances this type of behavior were to arise would increase? lets be honest in the broad spectrum how many of us here have recieved emails asking for our account deatils to personal bank accounts? i know this is off topic but I think the ease with which people can obtain this informaiton definately dosent help. how do you prevent it? well to be honest I have no idea. I certainaly didnt intend for this to happen however speaking from experience I have to say its a very grey area in the world of law. i do however think that luke hit the nail on the head yes you would recieve a letter but its as the saying goes... you cannot sue a man of straw.

Edited February 10, 2005 by Lesmortdansant

[crafty]

Funny thing, PRS is still building Tremonti SEs over in Korea for worldwide consumption. They just can't advertise or sell them here in the US. What's interesting is my local guitar store, an authorized PRS dealer, seems to have a neverending supply of new Tremontis, though...scandalous.

[rhoads56]

Crafty, read my previous post. It had more to do with business practises, marketing, and extortion, than the body shape.

[crafty]

Oh, I know. I've read a few of the transcripts. I just thought it was interesting because of the injunction that has been issued by the court for PRS to cease all marketing, sales, and manufacturing of the Singlecut models, including the Tremonti SE, in the US. That detail is on the main page of the PRS website. I wasn't aware of any action brought by Gibson against PRS in any other countries, though, so that's probably why the overseas singlecut production and sales are still going on.

Yeah, having PRS designers admit in preliminary hearings that they intentionally tried to copy and kill the Les Paul certainly does not help their defense...

Also, the case is a trademark infringment AND unfair competition case, not patent. The shape and layout of the Les Paul is in fact a registered trademark, just like the Fender headstocks.

[eddiefletcher]

Lets be honest in detail anoyone who builds a replica guitar is breaking the law the second they sell it on. However knowing for example Brian and LGM's work on here and having seen it I personally would prefer geting something off them than a stock Ibanez anyday. Its a personal opinion but I'm unsure as to how it affects copyright laws, I do think as les mort dansantything said that you cant screw over a man who has nothing anyway. So what do the big guns do? I'm confussed!!!!

[crafty]

Here's an interesting story in Forbes about Fender's plans:

Fender Bender

[fryovanni]

LGM thanks for sharing your insite and experience. Dude you give me a headache just reading about this stuff. Allthough I really do appreciate the time you spend writing this and many of your other posts in such a clear and articulate fasion.

As much as I respect your skills and fine work, I really don't envy your job as a manufacturer. I will cling to keeping building guitars as a hobby and not as a money making endever. My father who had collected records for better than 35 years prior to opening a record store. Told me that after running the business he lost his love of collecting and that records where just stock to be bought and sold. It took him years after selling the business to reclaim his love of music. I truly hope you never look at guitars as just dollars and cents, allthough the realities of running a business must make it tuff to see them as much else after a while.

Peace, Fryguy

[westhemann]

moved to off topics...not because it is not important...just because it belongs here

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I don't agree with that to be honest wes, it's not an off topic post, it is directly related to guitars and design, hence my putting it in the guitars and bass forum. Off topic is as I understand, for issues NOT related to guitars, my entire post is based on guitars and patenting designs.

←

i'm sorry you don't agree...but it really is a stretch to call it "solidbody chat",since it refers to patents and trademarks in general...not just on solidbody guitars...and has nothing to do with construction.

but we don't have a "legal" section...the closest we have is this section.off topics is a "catch all" for whatever doesn't quite fit anywhere else.you will get just as many readers here.

it might be nice though to have a factual representation of the laws which apply to this subject pinned in that section though...so that wannabee builders can read BEFORE they go trying to replicate trademarked or patented designs for profit.

hmm...food for thought...tell you what.i will pin it there and send kevan and brian my thoughts on this...and see what they think..okay?

and try to get as much factual info in here as possible.and we will see if we can avoid the bickering that usually happens on this subject.

[LukeR]

This is my home away from home:

http://www.wipo.int/

I mentioned it before- VERY important site.

Please, all, have a look at it.

It should clear up alot of things.

This is the international site.

Cheers,

luke

[LukeR]

Another important point to make is in relation to building copies of existing guitars.

This, too, is illegal (even if you dont add any decal). It does not matter if you sell it, or if its just for your own use.

Let me explain...

By making a copy of a guitar, you are breaking the copyright ownership of the guitar's designer (or their assignee) in relation to the design or blueprint of the guitar. It doesnt matter that you dont actually use the physical plans that they used- it is still a breach.

This is used in relation to archetecture, generally- to stop people 'copying' houses, monuments, etc. The copyright in the original design.

However, this is FURTHER confused by the fact that copyright must be registered in the US (I think (?)- I know it is in some juresdictions). Therfore, in order to estopp someone from copying their guitars (breaching the copyright attached to the blueprints) the blueprints must first be registered. I would be willing to bet that most manufactuers do that now, but back in the old days....

Anyway, the copyright protection lasts for (in the US [and in Aust, if/when the free trade agreement goes through]) the life of the designer, + 70 years (50 at the moment in Aust).

Even more interetsting in australia is 'moral rights' these are inalieable rights belonging to the creator of a work to not have their work degredated or diminished.

Therefore, if you made, say, a Les Paul derivitive instrument with, say, an elongated cutaway (and are correctly lisenced to use Les Paul's blueprints) the designer of the original guitar (Les Paul) could claim that the new model is offensive and derogatory to the initial 'artwork' that he designed. He could then apply for an injunction to estopp production of the guitar and/or damages

(This is a REAL, REAL, REAL hypothetical though!)

Cheers,

Luke

[GarageRocker]

Another important point to make is in relation to building copies of existing guitars.

This, too, is illegal (even if you dont add any decal). It does not matter if you sell it, or if its just for your own use.

Let me explain...

By making a copy of a guitar, you are breaking the copyright ownership of the guitar's designer (or their assignee) in relation to the design or blueprint of the guitar. It doesnt matter that you dont actually use the physical plans that they used- it is still a breach.

This is used in relation to archetecture, generally- to stop people 'copying' houses, monuments, etc. The copyright in the original design.

However, this is FURTHER confused by the fact that copyright must be registered in the US (I think (?)- I know it is in some juresdictions). Therfore, in order to estopp someone from copying their guitars (breaching the copyright attached to the blueprints) the blueprints must first be registered. I would be willing to bet that most manufactuers do that now, but back in the old days....

Anyway, the copyright protection lasts for (in the US [and in Aust, if/when the free trade agreement goes through]) the life of the designer, + 70 years (50 at the moment in Aust).

Even more interetsting in australia is 'moral rights' these are inalieable rights belonging to the creator of a work to not have their work degredated or diminished.

Therefore, if you made, say, a Les Paul derivitive instrument with, say, an elongated cutaway (and are correctly lisenced to use Les Paul's blueprints)  the designer of the original guitar (Les Paul) could claim that the new model is offensive and derogatory to the initial 'artwork' that he designed. He could then apply for an injunction to estopp production of the guitar and/or damages

(This is a REAL, REAL, REAL hypothetical though!)   

Cheers,

Luke

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I really hesitate to come out of lurk mode here, but Luke, you're badly misinformed.

This has nothing whatsoever to do with copyrights. Period. Copyrights cover works of authorship. The only things that can be copyrighted by a guitarmaker are the contents of his catalogs, sales brochures, website, etc. I'm talking about writings, photos, sound samples composed by him, etc. There is no such thing as a copyright on an instrument design. Forget about it -- it doesn't exist. Please stop talking about copyrights and guitar designs -- you're misleading people.

It's possible to get a design patent on an instrument design if it's "a new, original, and ornamental design for an article of manufacture" and meets other patent requirements. That's apparently what LGM has applied for.

Most guitar companies don't even consider doing this because it's difficult to prove that most guitar designs would qualify as new, original and non-obvious. Besides, a patent is limited duration, generally 20 years from the filing date.

What Gibson, Rickenbacker and others have done is obtain trademarks on their distinctive bodyshapes and headstocks. It's the same principle as a Coke bottle: the bottle is just a functional item and you can't trademark function, but if the shape of the bottle is distictive enough that the people who would buy it associate it with your company, then you can trademark its "trade dress". And once you get your trademark, it lasts indefinitely. As long as you keep making the product and keep defending it against infringers, it's yours.

Fender applied for trademarks on the Strat, Tele and Precision Bass bodyshapes in 2003. It was "published for opposition" early last year and a group of something like 18 other companies opposed it. Will Fender be successful? Hard to tell. If they can convince the USPTO that the guitar buying public connects those shapes with Fender, they'll get their trademarks. If the opposition convinces the USPTO that those shapes have become generic, they won't.

Don't take my word for this, it's public record. Go to http://www.uspto.gov/ , do trademark searches for Rickenbacker and Gibson guitars and you'll find their trademarked shapes along with their trademaked names and logos.

[rhoads56]

So, ok, question for the lurker....

I draw up some plans, lets call it the Pezcastor. I build a guitar from those plans. I market, and sell those guitars world wide. I out sell the fender strat. Everyone wants a piece of the action, and hence they copy the design.

The plans are copyright. Therefore, the object cannot be made, without breaking that copyright. Same as you can build a building from someone elses plans, with prior approval.

What about sculptures?? They are art right?? They are objects. Because they arent pen on paper, does that mean anyone can copy them?? Thats exactly what you're saying.

[Kevan]

Garage- thanks for your post man. You saved me a ton of typing. :-)

With Fender's blatant lack of enforcement, even in the last decade, I don't see them being granted anything. Plus, it'd leave the whole basement empty at NAMM. LMAO

Perry- you'd first have to get past the owner of the PEZ trademark- Pez Candy, Inc. LOL

LukeR- If you're going to hand out legal advice, please preface each of your posts with "According to Australian IP law...", or something to that effect. While the laws regarding copyrights, trademarks and patents are somewhat similar the world over, specifics can vary drastically depending on the country you're filing in.

You might want to hold back for a while until you've got a few filings under your belt. That's not meant offensively; just a suggestion so you can see how the whole thing works- copyrights, trademarks, patents, PCT, international patents, etc.

I'm not claiming to be an expert on this, but I have certainly learned a pantload about this over the last 3 years.

[GEdwardJones]

Another important point to make is in relation to building copies of existing guitars.

This, too, is illegal (even if you dont add any decal). It does not matter if you sell it, or if its just for your own use.

Let me explain...

By making a copy of a guitar, you are breaking the copyright ownership of the guitar's designer (or their assignee) in relation to the design or blueprint of the guitar. It doesnt matter that you dont actually use the physical plans that they used- it is still a breach.

←

I'm not going to try to pass myself off as an authority on copyright/trademark/patent law. But I do know this.

This statement is flat wrong.

In the US there is a such thing as "fair use." Fair use basically says that there are situations where you are technically breaking the copyright/patent/trademark, but it has been determined that you don't significantly injure the copyright owner.

Examples of fair use:

Taping television shows

Making a photocopy of a couple of pages in a book.

Making a backup copy of a CD

Fair use is why you can sing happy birthday to your friend, but you'll RARELY hear it sung in a resteraunt (it hasn't entered the public domain, the resteraunt has to pay the copyright owners performance rights if their staff sings it).

Fair use is also why you can make any guitar you want for personal use. If you want to make an exact copy of a Les Paul, you can make an exact copy of a Les Paul. You can even put "Gibson Les Paul" on the headstock if you want to. What you can't do is sell it. You also can't make 1000 les paul copies and give them away (the patent owner could declare that this would be harmful to their business).

Let's not scare people. You can make all the copies you want. Selling them is a whole 'nuther thing.

[eddiefletcher]

GE do you know if the "fair use" tag extends to countries out side of the US? I would imagine it does or there is some form of equivalent to this. I think a lot of the confusion in regards to this is because everyone on this forum does live all over the world where of course the different countries have different laws. However it does go to show with the whole copyright and trademark issue that it can obviously be attacked in several different ways ( at least thats from what I can see in this post ). Maybe we could take the best points from this discussion and enter them into a bullet point reference of what can and cannot be done? It may be easier for people toi understand than having to read through this entire thread and could be a good quick reference tool??

I think we all generally understand that you can build your replica, the problem comes with selling or passing that replica off as the real thing. I so hope I got that right!!

[LukeR]

Hi everyone;

Wow! Made a few enemys, havent I?

YES, trademarks and patents are, of course, the most obvious issues to deal with, however, I stand behind my comments about copyright.

This has nothing whatsoever to do with copyrights. Period. Copyrights cover works of authorship. The only things that can be copyrighted by a guitarmaker are the contents of his catalogs, sales brochures, website, etc. I'm talking about writings, photos, sound samples composed by him, etc. There is no such thing as a copyright on an instrument design. Forget about it -- it doesn't exist. Please stop talking about copyrights and guitar designs -- you're misleading people.

The 'authorship' element is in the DESIGN of the instrument (the drawings of the plans). Rights DO accrue to these as well- THIS is how scupltues (as Perry has said correctly said), and aretecture are protected. think about it- patents couldnt apply, TMs couldnt apply to protect these works?

In the US there is a such thing as "fair use." Fair use basically says that there are situations where you are technically breaking the copyright/patent/trademark, but it has been determined that you don't significantly injure the copyright owner.

Examples of fair use:

Taping television shows

Making a photocopy of a couple of pages in a book.

Making a backup copy of a CD

Edited February 11, 2005 by LukeR

[crafty]

I think the one bit of advice people should take is that you should always check your local laws. Not every country in the world participates in the same trademark, patent, and copyright treaties and conventions as everyone else.

I'm glad Garage and GE said something about this, because I was not in the mood to retype my answers to my Trademarks exam last fall.

And Perry, yes, your plans may be covered by copyright, but that doesn't extend to the trade dress of the guitar. That's covered by trademark law in the US. If you have incorporated a division in the US, submitted the instrument to the USPTO, and engaged in interstate commerce of selling the instrument within the US, you may be able to haul me into federal court over trade dress infringment and unfair competition, just like Gibson did with PRS.

However, if I stole a set of copyrighted plans and sold them through Stew-Mac, that's a copyright issue.

[LukeR]

Found it:

"An important provision in this regard is s 21(3) CA, which provides that the production of a thyree dimensional version of a two dimensional artistic work is deemed to be a reproduction of that work (and vice versa, where a two dimensional version is produced of a three dimensional work). This means that copyright in drawings or plans may be infringed by the creatyion of the item shown in those drawings or plans - even if the item in question is not in itself an artistic work."

Intellectual Property in Austr, 3rd ed, 2004, p 225

[Kevan]

Found it:

"An important provision in this regard is s 21(3) CA, which provides that the production of a thyree dimensional version of a two dimensional artistic work is deemed to be a reproduction of that work (and vice versa, where a two dimensional version is produced of a three dimensional work). This means that copyright in drawings or plans may be infringed by the creatyion of the item shown in those drawings or plans - even if the item in question is not in itself an artistic work."

Intellectual Property in Austr, 3rd ed, 2004, p 225

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[LukeR]

Kevan- I know- thats why I put it in. I thought thats what you wanted? Thats why I included the refernce. Do you want it done like you have done it next time?