Liability And Legal Issues With Copying Guitars

[anekretia]

PRS won, which means two things, they had a great lawyer, or they were right, it is VERY hard to be original these days as it is, Neal Moser, MCS guitars, has a similar battle with bc rich going on as we speak, and he will probably win it, but it goes to show, anyone can sue anyone in these wonderful United States, and as far as the percentage of interest for a spin off, you have to be 90% original to get away with it, all of the major names try to keep us smaller names from getting even close to their designs, as wrong as it may be, this is how the industry is, cut-throat, and posessive.

[GodBlessTexas]

PRS won, which means two things, they had a great lawyer, or they were right, it is VERY hard to be original these days as it is, Neal Moser, MCS guitars, has a similar battle with bc rich going on as we speak, and he will probably win it, but it goes to show, anyone can sue anyone in these wonderful United States, and as far as the percentage of interest for a spin off, you have to be 90% original to get away with it, all of the major names try to keep us smaller names from getting even close to their designs, as wrong as it may be, this is how the industry is, cut-throat, and posessive.

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I think Moser's case is righteous, at least when it comes to the Bich and the Beast Master, but I think it will ultimately come down to who has the deeper pockets to retain lawyers. Something tells me it isn't Moser.

Remember the Alamo, and God Bless Texas...

[javacody]

Actually, I read somewhere that Gibson's CEO and the judge that decided against PRS had golfed together previously. I don't know whether its true, but I'm glad PRS won. The guitars, while both sharing many similarities, are easily distinguished by all but morons.

[erikbojerik]

If I create a 100% exact copy of a 1959 Les Paul this has been determined to not be injurous to the financial wellbeing of the Gibson corporation.  If I sell said copy, this is injurous.

If you build a 1959 Les Paul copy for yourself, aren't you depriving Gibson of the money you would have spent on a real one as much as you are depriving them of the money that they would have made from the person to whom you sell it? It seems just as injurious, doesn't it?

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OK, so then how does something like this happen? (see bottom headstock photo) I can certainly see why eBay cancelled the auction the first time, but can't for the life of me figure out why they didn't the second time. I'm very surprised, this could not be more blatant...

[Stiffy]

Oh yeah now I can get me a Tremonte!

Edited November 4, 2005 by Stiffy

[thegarehanman]

I don't know if you realise that, but that verdict has since been revoked. PRS is now permitted to build as many tremontis as they please.

EDIT: ...and so you've changed your post. n/m

Edited November 4, 2005 by thegarehanman

[Islandstone007]

Okay, okay, call me stupid, dumb, silly or whatever the word u would use for posting here now but I wanna have it all clear:

1. I make a guitar that looks like/is a replica of i.e. a stratocaster

2. I sell it under another name than Fender and I do not call it a stratocaster

3. And I put the name Islandstone or Øystein (?) on the headstock

4. And do not by any other means referr to it as a Fender Stratocaster or anything like it

Is this legal? Or do I have to make more changes for it to be legal, and what?

I live in Norway BTW.

[thegarehanman]

What's stopping you from making an original design? It's far more rewarding, IMHO, to create something original(relatively speaking) than making a nock off of an original.

Edited December 7, 2005 by thegarehanman

[cbowen]

There are two distinct issues here: trademark and patent. There's also issues of the law vs. issues of good lawyers.

Fender and Gibson can't really be making a lot of patent claims for things like the Les Paul. That guitar design was introduced over 50 years ago. The maximum duration for a patent is 20 years and design patents are even shorter at 14 years. Any patents on this design has long since expired. There's been a lot of interesting inventions in guitars in the last twenty years, but much of what we see today is much older than that and patents don't really apply (see the caveat below, though).

The other issue is trademark. You can trademark almost anything, especially names and shapes and physical appearance. This is the real protection for things like the Les Paul and companies tend to be really aggressive about trademarks. And, they can be renewed indefinately.

So, in general you probably have more to worry about trademark than patents. That said, there's the issue of what's right and what actually happens. Patents are not renewable. Witness the number of generic drugs out there. When the patent expires, anyone can make the drug. Yamaha held a patent on FM synthesis, but that expirect in the 90's and FM synthesis appeared in everyone's computers. But, it's possible to play games with patents. You create a derivative invention and write you patent so it ends up covering any old version. IBM is brilliant at this, locking up a compression method for over a decade after the first patent expired by simply making a varation on the patent. The drug companies can't pull that one off, because those wanting to make a generic have lots of legal money for challenges.

Trademarks can be abused as well. Writer's Digest had a column for 20 years called "About Books". Some company came along and decided to make a magazine called "About Books". They trademarked the term and promply sued Writers Digest, who ended up having to pay a fee to continue to use the name they had used for decaded. The Les Paul trademark was applied for decades after it came out.

So, what does this mean to the home builder? I'm wondering that myself. I don't believe there is a personal use exemption on patents, so companies can go after us if they want to. The same applies for trademarks including body shapes. I would hope they would not want to bother over someone's basement project, though I would not suggest selling a copy of any commercial product (protected or not, I think that's unethical). Of course, they have to know, but forums like this may turn out to be problematic if Gibson, Fender, or whoever's legal department thinks they can churn some hours.

BTW, patents and trademarks are all online, now, so if anyone wanted to they could see what really applies during their project.

Edited January 6, 2006 by cbowen

[DrChrisMD]

I thought that the only way a company could nail you for copyright infringement was if you had everything down to spec about a particular part that they patented...like, right down to the inch of body thickness...the angle of a horn...etc, etc.

that may have been discussed already, but I likely missed it.

[cbowen]

I thought that the only way a company could nail you for copyright infringement was if you had everything down to spec about a particular part that they patented...like, right down to the inch of body thickness...the angle of a horn...etc, etc.

First off, copyright and patent are two entirely different subjects. But, in both cases, what you say is not at all true. If you read patents, you'll see lots of language like "in one embodiment" or "any design that". Patents are intentionally written as broad as possible and you can be found to infringe for something even close to the patent design.

The same appllies to copyright. You don't have to copy exactly. The rule for infingement is "substantially similar". Take a look at any cases involving sampling, even when the sample was substantially modified. Playing just a few notes from a song can get you sued these days. One case involved three notes of a guitar solo lasting two seconds. The notes were lowered in pitch, filtered, and looped to make a 16 beat sequence lasting 7 seconds. This was rules to be in infringement.

[egdeltar]

Concerning design patents do RG & Soloist style bodies fall under the Strat style there for being considered "Generic" or do those guitar bodies have patetns?

[Mattia]

Concerning design patents do RG & Soloist style bodies fall under the Strat style there for being considered "Generic" or do those guitar bodies have patetns?

They're different enough, and you can't patenet body shapes. You can get design patents under certain conditions, you can trademark them, but it's headstocks that are the big fuss.

Honestly, given Fender and Gibson's non-protection of their body designs, and the fact any design patents on the darn things should've expired long, long ago, those basic body shapes should be free for the grabbin', methinks.

[erikbojerik]

Honestly, given Fender and Gibson's non-protection of their body designs, and the fact any design patents on the darn things should've expired long, long ago, those basic body shapes should be free for the grabbin', methinks.

Given the results of Gibson's lawsuit against PRS, methinks yourcorrect.

[GEdwardJones]

Trademarks can be abused as well. Writer's Digest had a column for 20 years called "About Books". Some company came along and decided to make a magazine called "About Books". They trademarked the term and promply sued Writers Digest, who ended up having to pay a fee to continue to use the name they had used for decaded. The Les Paul trademark was applied for decades after it came out.

Writer's Digest messed up on that one. That's a clear case of prior art.

[GEdwardJones]

Honestly, given Fender and Gibson's non-protection of their body designs, and the fact any design patents on the darn things should've expired long, long ago, those basic body shapes should be free for the grabbin', methinks.

Given the results of Gibson's lawsuit against PRS, methinks yourcorrect.

You're confusing two different things.

Gibson lost its suit against Paul Reed Smith because PRS was able to show that their design was substantially different from the Gibson Les Paul. One of GIBSON'S key witnesses even admitted on the stand that you'd have to be an idiot to spend $2k on a singlecut and think it was an lp. That admission basically set up PRS to show that no reasonable person could conclude that PRS was infringing on Gibson's trademark.

The other thing is this. The purpose of trademarks/patents is to allow the creator of a work to profit from it by granting the a monopoly and, basically, letting them price gouge on their product. Now, you can lose a trademark/patent if you don't protect it. For instance, the band name "Aspirin" is actually a trademark of the Bayer corporation, but since it was allowed to slip into the vernacular in the US their trademark is void. You probably didn't know that Aspirin WAS a brand name if you live in the US. Outside of the us, only Bayer can use that word on their products.

The biggest threat to Gibson's Les Paul trademark isn't that PRS has a similar product out there, it's that for the better part of the life of the Les Paul other makers were able to create more or less exact duplicates without having Gibson's legal team smack them down. A builder with sufficiently deep pockets could, in fact, make a decent case out of this. Similarly, the Strat and Tele body shapes are now "generic" off the top of your head how many manufacturers currently make strat and/or tele clones? I have an easier time thinking of ones that don't.

What Gibson's trying to do with the cease and desist spree it went on a couple of years ago is to show that is IS protecting its copyright and therefore it shouldn't be nullified. But Fender, fender will have a MUCH more difficult time doing that with the strat as EVEN GIBSON makes a faux strat.

[Mattia]

What Gibson's trying to do with the cease and desist spree it went on a couple of years ago is to show that is IS protecting its copyright and therefore it shouldn't be nullified. But Fender, fender will have a MUCH more difficult time doing that with the strat as EVEN GIBSON makes a faux strat.

Uh, its trademark, or its design patent, surely. Can't copyright a guitar's shape...

[GEdwardJones]

What Gibson's trying to do with the cease and desist spree it went on a couple of years ago is to show that is IS protecting its copyright and therefore it shouldn't be nullified. But Fender, fender will have a MUCH more difficult time doing that with the strat as EVEN GIBSON makes a faux strat.

Uh, its trademark, or its design patent, surely. Can't copyright a guitar's shape...

Sorry, its trademark. But, you know, everything else in that post still stands

[Bert Recycled Guitars]

Hi all there. I'm new to this forum - which btw is great! So apology for any protocl errors.

As newbie i didnt want to raise a new topic so here is question as reply in context of the legalities issue.

After 35 years of playing on and off and occasionally building a guitar, i've written a book "How to build your first Frankenstein Fender Stratocaster". Intended for the absolute beginner who's never done it before, and based on using standard, ready made but off the street components (so no woodworking).

It starts selling reasonably well via Ebay and m2m, so i'm a the stage now where i'm worried that that name Fender in the title of my book might violate any copyright or ownership issues (even if i clearly refer the use of the name to FMIC).

Any idea if i should take 'Fender'out of the title for safety reasons?

[Nitefly SA]

well, unless it is made of all fender parts i dont think legally you can call it a fender stratocaster, but im not sure.

[Bert Recycled Guitars]

well, unless it is made of all fender parts i dont think legally you can call it a fender stratocaster, but im not sure.

you are correct when building a guitar. However, this is about a book describing how to build Frankenstein Fender Strats for the beginner. If you start this, you can of course opt to find all Fender components, or make a mix and match of different origins.

The point is that the title of the book is "How to build your first Frankenstein Fender Stratocaster" and i was wondering if Fender - in this case - could get pissed off about that. Well maybe they would - people building their own guitars is not in their direct interest - but could they legally do something about it?

I know, hairy question,

have fun

Bert

[Mattia]

Take 'Fender' out of the title, possible even 'stratocaster'; even if you build a guitar out of fender parts, you're not allowed to put a decal on it, and it's technically not a real Fender, made by Fender, etc.

I believe Fender, Stratocaster and Strat are all Fender registered trademarks, so it's probably best to leave them out of a title altogether. I'm fairly certain they have legal standing to tell you to cease and desist sales, because using their registered trademarks in the title of your book would imply that they've got something to do with it.

[Bert Recycled Guitars]

Take 'Fender' out of the title, possible even 'stratocaster'; even if you build a guitar out of fender parts, you're not allowed to put a decal on it, and it's technically not a real Fender, made by Fender, etc.

I believe Fender, Stratocaster and Strat are all Fender registered trademarks, so it's probably best to leave them out of a title altogether. I'm fairly certain they have legal standing to tell you to cease and desist sales, because using their registered trademarks in the title of your book would imply that they've got something to do with it.

Yep, had the same feeling about using 'Fender' in the title and will definitely take that out. Will do some more research on the use of the word Stratocaster. Technically you're probably right. However, many people use that word to indicate a model of sorts. Much like the world used to talke about 'Hoover' meaning a vacuum cleaner.

Also i - when building a Frankenstein Strat - am inclined not to remove the decal from a fairly expensive original 'Fender neck', which is one could extrapolate from your view. Eric's Blackie still had the original logo's and was called a Fender Stratocaster still , but as you said , technically its not a 'Fender"guitar anymore. Describing how to put one together its fairly impossible to avoid using the word Stratocaster (or Telecaster, Precsion whatever). So although i fear you are basically right, i have a feeling that this is not a black and white issue. After all i am writing 'about' Stratocaster.

Your view is helpful and much appreciated,

have fun, Bert

[Mattia]

Take 'Fender' out of the title, possible even 'stratocaster'; even if you build a guitar out of fender parts, you're not allowed to put a decal on it, and it's technically not a real Fender, made by Fender, etc.

I believe Fender, Stratocaster and Strat are all Fender registered trademarks, so it's probably best to leave them out of a title altogether. I'm fairly certain they have legal standing to tell you to cease and desist sales, because using their registered trademarks in the title of your book would imply that they've got something to do with it.

Yep, had the same feeling about using 'Fender' in the title and will definitely take that out. Will do some more research on the use of the word Stratocaster. Technically you're probably right. However, many people use that word to indicate a model of sorts. Much like the world used to talke about 'Hoover' meaning a vacuum cleaner.

Also i - when building a Frankenstein Strat - am inclined not to remove the decal from a fairly expensive original 'Fender neck', which is one could extrapolate from your view. Eric's Blackie still had the original logo's and was called a Fender Stratocaster still , but as you said , technically its not a 'Fender"guitar anymore. Describing how to put one together its fairly impossible to avoid using the word Stratocaster (or Telecaster, Precsion whatever). So although i fear you are basically right, i have a feeling that this is not a black and white issue. After all i am writing 'about' Stratocaster.

Your view is helpful and much appreciated,

have fun, Bert

Well, look at every 'knock off' manufacturer's product, and you'll find that none of them call it a stratocaster. They might say 'SC' model, or 'doublcut' or something similar, but none will use strat, or stratocaster. You or I will, when talking about those guitars, as will reviewers, as will authors of books about various kinds of guitars, but the manufacturers themselves won't. Only those selling licensed parts can and do. You shouldn't have a problem using the words 'strat' or 'tele' in a descriptive sense, in a book, but I'd be quite wary of their use in the title of a book. That's more likely to attract attention.

[Southpa]

LOL, how about this for a loophole? Start building and selling Fedners and Gisbons!