Breaking Up the Band

You don’t have to be a guitar player or jazz fan to know the name, Les Paul. The late musician and innovator revolutionized modern music with his contributions to tape recording technologies and, most famously, his pioneering work on the solid-body electric guitar. While his technical contributions to the instrument extend far beyond his design for a solid-body electric, Les Paul’s name is almost synonymous with the design—and particularly the shape—of the guitar bearing his signature.

Throughout the 1940s, Les Paul refined his design for a solid-body electric guitar and pitched his ideas to the Gibson Guitar Corporation. The Kalamazoo, Michigan-based instrument manufacturer passed on the design. In 1950, however, California-based Fender Electric Instrument Company introduced the first mass-produced solid-body electric guitar (the “Broadcaster” and “Esquire” models, now commonly known as the “Telecaster” line of guitars). Following the success of Fender’s guitars, Gibson changed its tune and worked with Les Paul to refine his ideas into a competing product, which it released in 1952 as the “Les Paul.”  

Now, the Les Paul is Gibson’s most iconic product. Many “guitar heroes” like Slash and Duane Allman have become inextricably associated with the Les Paul model—something Gibson capitalized on by licensing the Les Paul design and likeness to the “Guitar Hero” video game series (among other Gibson products). But like any unique design or work of art, Gibson found itself in the very “not rock’n’roll” position of having to hire lawyers to defend its intellectual property rights surrounding the Les Paul.

Heritage Guitar, Inc. v. Gibson Brands, Inc.

In the 1980s, Gibson moved most of its manufacturing operations to Tennessee. When Gibson closed its factory at 225 Parsons Street in Kalamazoo, several employees decided to stay and formed Heritage Guitars in 1985 using space from the old factory and even some equipment from the old Gibson factory purchased at auction. In 1990, Gibson sued Heritage for manufacturing guitars bearing similar design elements to Gibson models, including and especially the Les Paul, and the two companies settled the following year.

The settlement agreement between Gibson and Heritage included a provision in which Heritage agreed to “discontinue production and sale” of certain models Gibson objected to. Heritage also agreed to refrain from using certain design elements and/or configurations in a “substantially or confusingly similar” way to certain lines of Gibson guitars, including specific trademarked parts like Gibson’s “DOVE WING PEGHEAD” and “BELL-SHAPED TRUSS ROD COVER.” (At the time of the agreement, Gibson applied for a trademark on the “body portion” of the Les Paul line but did not receive the trademark until 1993.)

Gibson and Heritage went their own ways and coexisted in the market for over twenty-five years. In 2019, however, Gibson (under new management after filing for bankruptcy protection) sent a cease-and-desist letter to Heritage alleging it violated the 1991 agreement’s restrictions on the use of Gibson’s design. When its efforts did not stop Heritage from selling its allegedly infringing guitars, Gibson threatened litigation against Heritage in February 2020, setting off a firestorm of claims and counterclaims related to the 1991 agreement as well as other intellectual property and antitrust claims before reaching a new settlement agreement in January 2023.

Although the terms of the settlement are confidential, the Gibson/Heritage case is an emblematic example of the kind of intellectual property battles that can emerge when employees leave one business to start a competing one. 

If you are involved in an intellectual property dispute with former employees or need assistance registering your trademarkcontact us to learn how we can help.

Griffith Barbee PLLC

Share this article

Related Posts:

Family Beef: The Trademark Lawsuit Within The Hutchins BBQ Family