Local guitar maker triumphs in court

June 06, 2006|By TYEESHA DIXON | TYEESHA DIXON,SUN REPORTER

A trademark infringement case involving a popular electric guitar ended yesterday when the Supreme Court declined to hear a case alleging that Stevensville-based Paul Reed Smith Guitars copied a brand made by Gibson Guitar Corp.

The court's decision leaves standing an appellate ruling that Paul Reed Smith did not infringe on the trademark of Gibson.

Gibson Guitar, of Nashville, Tenn., alleged that its Les Paul model guitar, which is popular among rock musicians, led to the creation of Paul Reed Smith's Singlecut guitar. But Paul Reed Smith said its guitar, which has developed a following among musicians such as Carlos Santana, was unique.

The disagreement centered on the way the guitar makers designed and produced the instrument. Single cutaway describes a style in which the instrument is cut out on one side to allow access to the higher frets and strings on the fingerboard.

The dispute was closely watched in music circles because other manufacturers have used similar design styles, an argument that Paul Reed Smith made in defending its product.

Paul Reed Smith, the company's founder, said there are 30 or more guitars on the market that have a similar shape to the Les Paul model. A lawyer who represents Paul Reed Smith said the guitars typically are priced at about $3,000 each.

In February 2000, a month after Paul Reed Smith introduced the Singlecut at a trade show, Gibson demanded Paul Reed Smith stop producing and selling the Singlecut. Gibson said it had a trademark on the style, according to court documents.

When Paul Reed Smith refused to stop making the guitar, Gibson sued in November 2000.

A federal District Court in Nashville ruled in favor of Gibson in 2004, granting an injunction barring Paul Reed Smith from making the guitar.

Paul Reed Smith appealed the decision to the 6th U.S. Circuit Court of Appeals in Nashville, which ruled in its favor in 2005, allowing it to resume Singlecut guitar production.

Yesterday, the Supreme Court declined to hear Gibson's appeal, leaving in place the 6th Circuit opinion favoring Paul Reed Smith.

A spokeswoman for Gibson and the company's lawyer could not be reached yesterday.

Smith said his company did not violate the trademark.

"There's a difference between being competitive and copying," Smith said.

William D. Coston, a Venable LLP attorney who represented Paul Reed Smith in the case, said the appellate court ruling and the Supreme Court's refusal to hear the case further clarify trademark restrictions on product shape.

"The law says to win a trademark case you have to show a likelihood of confusion," Coston said. "Gibson was forced to concede that no one would ever be confused at the point of sale."

Steve Duvall, a sales associate at Music-Go-Around in Cockeysville, said many companies have mimicked the Les Paul style.

"For the longest time, Gibson overlooked it," he said. But with the popularity of the Paul Reed Smith's Singlecut, "the company had really broken into the same market."

Gibson has manufactured musical instruments for more than 100 years. It introduced the Les Paul line in 1952, according to court documents. Smith began manufacturing guitars in the 1970s and he opened his factory in 1985.

Although relatively new to the market, Paul Reed Smith guitars flourished as an alternative to Gibson and Fender electric guitars - two well-known brands, but with distinct sounds. Paul Reed Smith makes guitars that could sound like either brand.

tyeesha.dixon@baltsun.com

Sun staff reporter Rob Hiaasen contributed to this article

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