The Gibson Flying V is an iconic electric guitar first introduced by Gibson Guitar Corp. (now Gibson Brands, Inc.) in 1958 and used by many prominent players, including, on occasion, the legendary Jimi Hendrix. It’s unique and memorable design has been copied countless times over the decades.
On July 28, 2022, a Texas federal judge permanently enjoined a Florida guitar maker from selling several guitars after a jury found they infringed the trademark on the Flying V and other iconic Gibson guitar designs, ruling that Gibson was entitled to the injunction even though it waited decades to assert its rights. U.S. District Judge Amos Mazzant blocked Armadillo Distribution Enterprises Inc. from selling its Dean V, Dean Z, Dean Gran Sport, LUNA Athena 501, and LUNA Fauna Hummingbird guitars, following a May jury verdict that affirmed Gibson’s right to trademark protection on four guitar models, including the Flying V and ES.
After a trial that concluded May 27, 2022, the jury determined that Gibson waited too long, in this case up to 40 years, to pursue some of its claims and therefore Gibson was not entitled to actual damages, but only minimal statutory damages. In light of the jury’s finding, defendant Armadillo argued that laches should preclude Gibson from obtaining an injunction. Judge Mazzant disagreed.
“Defendants … argue that, over the course of Gibson’s delay, Armadillo made significant investments and developed goodwill in the Dean V guitar, Dean Z guitar, and Dean Evo Headstock,” the judge said. “However, defendants fail to indicate how such investment and development was the result of reliance on Gibson’s conduct.” Gibson also sought disgorgement of profits for the infringing guitars, but Judge Mazzant declined that bid relying on the jury’s finding that Gibson waited too long to assert its trademark rights and saying the permanent injunction outweighs the need for such a consequence.
Gibson’s U.S. Trademark Registration for the Flying V Design
+++++
Richard A. Catalina, Jr. is a senior partner and Chair of the Intellectual Property and Complex Litigation Department of Jardim, Meisner and Susser, P.C. Mr. Catalina specializes in litigating patent, trademark, trade secret and related Lanham Act disputes, and inter partes proceedings before the Patent Trial and Appeal Board. Mr. Catalina has been practicing law for more than 33 years and has litigated more than one hundred matters in federal and state courts across the U.S, as well as inter and ex partes matters before the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board.
