Fender loses guitar copyright case

Outline is "generic electric guitar"

Michael Leonard, Tue 31 Mar 2009, 2:45 pm UTC

Fender have lost their court case

Guitar makers Fender have lost an application to make its Stratocaster, Telecaster and Precision guitar body shapes a trademark in the USA.

Similar applications have previously been rejected, both in the UK and the rest of Europe.

In the court case, Fender had targeted the designs of Stuart Spector Designs, US Music Corporation, ESP Guitars, Sadowsky Guitars, Lakland Musical Instruments, Peavey Electronics, Warmoth Guitar Products, Schecter Guitar Research, Michael Tobias and others as infringing its designs.

But the Trademark Trial and Appeal Board of the United States Patent and Trademark Office said:

"Fender refers to the 'iconic' status of these [instrument] outlines in American popular culture. However, we must resolve a narrow issue: Do consumers associate these two-dimensional outlines, depicted in the drawings, as indicators of source?"

5 years wait

The litigation has lasted five years and included over 20,000 pages of evidence demonstrating countless companies who have sold guitars that use the body shapes that Fender sought to trademark.

"The Stratocaster body outline is so common that it is depicted as a generic electric guitar in a dictionary"

"The applicant has not established acquired distinctiveness such that these two-dimensional outlines of guitar bodies, standing alone, serve to indicate source," the TTAB concluded. "The evidence overwhelmingly demonstrates that these configurations are so common in the industry that they cannot identify source.

"In fact, in the case of the [Stratocaster] body outline, this configuration is so common that it is depicted as a generic electric guitar in a dictionary."

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This is a Fender

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This is not a Fender

Hmm. Some at Fender might well argue the outline is only 'generic' because it has been copied for so many years?

The entire decision can be read here.

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User comments (6)

Stevelegh

37 weeks ago.

Interesting that Fender only started claiming their body shapes as trademarks since 2004.
Remember, this case does not point to copyright or origin of design, which additionally, neither were ever secured by FMIC or it's predecessors.
I think FMIC have been entirely stupid and wrong to launch this action. When they procured the company, they knew the position with regard to the designs being generically used and it seems by this action, they wanted to claw back something that has been in the public domain for far too long.
On the other hand, I wonder where Fender would be without competition? Probably we'd have a bunch of overpriced guitars (although some would argue we have that already) with little choice in design. At present, we have Strats, Teles and P Basses made by Fender in various countries at various price points under both the Fender and Squier brands. (Point of note: Fender have their Squier brand, which is in effect a low budget version of their own design. Pot Vs Kettle libel case anyone?)
I think Fender owes their competition a debt of gratitude in forcing them to adapt to an aggressive market in the fantastic way they have.
I own a Mexi Classic player and a Jap '57' reissue and I love them. They suit my budget and ability perfectly. Would I buy a US Vintage Reissue for over £1,000?
Simple answer: No. It's not really that handmade, it isn't very pretty, even the sunburst versions. It is a great working guitar with iconic staus, but a grand does take the wee wee a little.
I like the way Fender as a company has evolved, I like their competition keeping them on their toes and I feel reassured that if they ever go to crap like they did in the early 80's with the Strat Elite, I'll have someone else to by my 'Strats' from.
End rant.

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Sidthelawyer

43 weeks ago.

Though the litigation took 5 years, I think it was not worth it. I am sure it was a tough ask from the starting itself. It is very difficult to win a trademark case for the design of a guitar, a design which has become so general now. Trademark is important so that people identify the product with it, and I think in case of Fender, it wasn't the design but the name that sold. It would have been difficult for Fender to prove the reputation and identification of its guitar through its design, and that is where it lost the trademark bit for its guitar design.

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tagthe

44 weeks ago.

This is a TRADEMARK case, not copyright. The difference is a significant difference. Whoever wrote the headline needs to do more research and educate themselves...

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JeffGu

44 weeks ago.

Indeed, the courts are rarely favorable to companies who attempt to close the barn door long after the horse has run off. In this case, the horse has been on a world tour and retired to China.
Despite their propaganda about a return to the quality of previous years, the current owners of both Fender and Gibson have done nothing but bring back dozens of previous designs at a much lower quality, with much inflated price tags. For companies claiming to be such innovators, neither has done much real innovating. There have been a few, but they tend to get lost in all the advertising hype trying to sell guitars that have been beat up with a claw hammer and a belt sander by a "custom shop" employee, and a price hike of several hundred dollars for doing something your dog can do in five minutes for free.
Perhaps if they would actually incorporate the kind of attention to detail that their competitors have into their production process... such as quality fret work, finish and hardware... they wouldn't feel the need to use such litigation to gain a competitive edge. I suspect that they could hire three luthiers with the money they saved by firing one lawyer.

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fretmeister

44 weeks ago.

Hardly a surprise for many reasons - they made no attempt to protect the designs for the first 50 years; similar cases such as the Gibson -v- PRS have been decided already - and even in technical copyright Phillips were unable to protect their Philishave system as the rotary 3 head design was a technical necessity rather than a trademark item.
Also - did Fender really think that they would get a decision that shut down 99% of other guitar companies in the US and put thousands out of work was actually achievable at the moment?
The most pertinent bit of all the recent litigation appeared in the PRS case - when even Gibson's own lawyer had to admit that "only an idiot would confuse them at the point of sale"

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Jarec

44 weeks ago.

Retrospective copyright rarely works. If they were that worried about their design being copied they should have gone through the whole legal bit before they even released the guitar

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