Gibson Brands Inc v. John Hornby Skewes & Co. Ltd et al

Filing 270

AMENDED ORDER RE: CROSS-MOTIONS FOR SUMMARY JUDGMENT 146 , 147 , 148 by Judge Dean D. Pregerson: The Court DENIES JHSs Motion for Summary Judgment on the Affirmative Defenses of Acquiescence and Laches. Further, the Court GRANTS IN PART and DENIES IN PART JHSs Motion for Summary Judgment on Counts II, V, and VII of the Complaint, Likelihood of Confusion on All Claims and Lack of Secondary Meaning. Specifically, the court GRANTS JHS summary judgment on Count II of Gibsons Complaint and DISMISSES Count VII of Gibsons Complaint. Finally, the court DENIES Gibsons Motion for Summary Judgment. (lc) Modified on 12/29/2016 (lc). Modified on 12/29/2016, (lc).

1
2

O

3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

CENTRAL DISTRICT OF CALIFORNIA

10
11

GIBSON BRANDS, INC., a
Delaware corporation,

12
Plaintiff,
13
v.
14
15

JOHN HORNBY SKEWES & CO.
LTD.,

16

Defendants.
___________________________

17
18

)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)

Case No. CV 14-00609 DDP (SSx)
AMENDED ORDER RE: CROSS-MOTIONS
FOR SUMMARY JUDGMENT
[Dkts. 146, 147, 148]

19
20

Presently before the court are: (1) Plaintiff Gibson Brands’

21

(“Gibson”) Motion for Summary Judgment; (2) Defendant John Hornby

22

Skewes & Co. Ltd.’s (“JHS”) Motion for Partial Summary Judgment on

23

the Affirmative Defenses of Acquiescence and Laches; and (3)

24

Defendant JHS’s Motion for Partial Summary Judgment on Counts II,

25

V, and VII of the Complaint, Likelihood of Confusion on All Claims

26

and Lack of Secondary Meaning. After considering the parties’

27
28

1

submissions and hearing oral argument, the court enters the

2

following Order.1

3
4
5

I. BACKGROUND
As set forth more fully in the court’s previous Order, this

6

case arises out of a trademark dispute between Gibson and JHS. (See

7

Dkts. 16, 29, 57, 67, 72, 88, 106, 141.) Both Gibson and JHS are

8

manufacturers of musical instruments, including electric guitars.

9

(See Decl. Dennis Drumm ¶ 3; Compl. ¶¶ 10-15.) Gibson is a United

10

States-based manufacturer, which has registered several trademarks

11

on guitar body shapes and headstocks, including the “SG Body Shape

12

Design,” “Explorer Body Shape Design,” “ES Body Shape Design,”

13

“Flying V Body Shape Design,” “Flying V Peghead Design,” and the

14

“Kramer Peghead Design” (collectively “Gibson Marks”). (Compl. ¶¶

15

10-15; Exs. A-F.) JHS is a United Kingdom-based manufacturer that

16

began selling guitars in the U.S. in 2006.2 Gibson’s suit alleges

17

that certain guitars sold by JHS infringe on the Gibson Marks and

18

violate Gibson’s rights under federal and state trademark law,

19

false advertising law, and unfair competition law. (See generally,

20

Compl.) While the parties do not agree on the precise number of

21

allegedly infringing guitars at issue, Gibson’s most recent filing

22

estimates that there are at least 300 such guitars. (Pl. Mot. Summ.

23

J. 24.) Gibson now seeks summary judgment on all issues and JHS

24
1

25
26
27
28

This Order hereby vacates and supercedes the court's Order
Re: Cross-Motions for Summary Judgment issued September 29, 2016.
2

According to JHS’s most recent filings, the company began
selling guitars in the U.S. in 2006. (See Drumm Decl., Dkt. 147 at
2, 6.) Earlier, the company had represented that it began selling
guitars in the U.S. in 2010. (See Dumm Dep. at 21:5-10, attached as
Ex. Y to Shuettinger Decl.)
2

1

seeks partial summary judgment on Counts II, V, and VII of Gibson’s

2

Complaint as well as on the affirmative defense of laches or

3

acquiescence as to claims arising out of one of Gibson’s patents.

4

Rather than recount the lengthy factual and procedural history of

5

this case in full, the court will address additional background

6

only as needed to resolve the pending motions.

7

II. LEGAL STANDARD

8
9

Summary judgment is appropriate where the pleadings,
depositions, answers to interrogatories, and admissions on file,

10

together with the affidavits, if any, show “that there is no

11

genuine dispute as to any material fact and the movant is entitled

12

to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A party

13

seeking summary judgment bears the initial burden of informing the

14

court of the basis for its motion and of identifying those portions

15

of the pleadings and discovery responses that demonstrate the

16

absence of a genuine issue of material fact. See Celotex Corp. v.

17

Catrett, 477 U.S. 317, 323 (1986). All reasonable inferences from

18

the evidence must be drawn in favor of the nonmoving party. See

19

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). If the

20

moving party does not bear the burden of proof at trial, it is

21

entitled to summary judgment if it can demonstrate that “there is

22

an absence of evidence to support the nonmoving party’s case.”

23

Celotex, 477 U.S. at 323.

24

Once the moving party meets its burden, the burden shifts to

25

the nonmoving party opposing the motion, who must “set forth

26

specific facts showing that there is a genuine issue for trial.”

27

Anderson, 477 U.S. at 256. Summary judgment is warranted if a party

28

“fails to make a showing sufficient to establish the existence of
3

1

an element essential to that party’s case, and on which that party

2

will bear the burden of proof at trial.” Celotex, 477 U.S. at 322.

3

A genuine issue exists if “the evidence is such that a reasonable

4

jury could return a verdict for the nonmoving party,” and material

5

facts are those “that might affect the outcome of the suit under

6

the governing law.” Anderson, 477 U.S. at 248.

7

issue of fact “[w]here the record taken as a whole could not lead a

8

rational trier of fact to find for the nonmoving party.” Matsushita

9

Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).

There is no genuine

10

It is not the court’s task “to scour the record in search of a

11

genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 1278

12

(9th Cir. 1996). Counsel has an obligation to lay out their support

13

clearly.

14

(9th Cir. 2001). The court “need not examine the entire file for

15

evidence establishing a genuine issue of fact, where the evidence

16

is not set forth in the opposition papers with adequate references

17

so that it could conveniently be found.” Id.

18

III. DISCUSSION

Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031

19

A.

20

Before addressing the parties’ cross-motions for summary

JHS’s Affirmative Defenses: Laches and Acquiescence

21

judgment on Gibson’s claims, the court first considers JHS’s

22

affirmative defenses of acquiescence and laches with regards to

23

claims arising from Gibson’s U.S. Trademark Registration No.

24

2,215,791, also known as the “SG Body Shape” or the “‘791 Body

25

Shape.” (Compl. ¶ 1, Ex. A.)

26

issue is that Gibson not only waited more than nine years to bring

27

suit against JHS for producing an allegedly infringing guitar, it

28

also approved JHS’s use of the SG Body Shape. Gibson disputes any

The crux of JHS’s argument on this

4

1

such agreement and notes that the pertinent discussions concerned

2

JHS’s activities in the United Kingdom and took place long before

3

JHS began doing business in the United States. The relevant facts

4

are as follows.

5

In 1994, Gibson and JHS entered into an agreement, which

6

allowed JHS to sell guitars that utilized a certain single cutaway

7

body shape, not at issue in this case (the “Les Paul Body Shape”),

8

with Gibson’s consent. (Drumm Decl. ¶¶ 7,8, Ex. A.) In 2004,

9

however, JHS received a cease-and-desist letter from Gibson’s

10

attorneys asking JHS to stop producing guitars that infringe on

11

Gibson’s Les Paul and SG trademarks. (Drumm Decl., Ex. B.) JHS

12

responded to the letter by reminding Gibson about the previously

13

negotiated agreement regarding the single cutaway Les Paul shape.

14

(Drumm Decl., Ex. C.) With regard to the double cutaway shape,

15

which Gibson claimed infringed on the SG Body Shape, JHS explained

16

that it “incorporate[d] significant detail changes” to avoid

17

confusion with Gibson’s guitars and noted that Gibson “holds no UK

18

registration” on the SG Body Shape. (Id.) Nonetheless, JHS

19

concluded that it was “willing to consider [Gibson’s] suggestions,

20

for detail revisions to our design of our double cutaway model . .

21

. to enable your client to be satisfied with the difference between

22

our unique design and your clients unregistered designs and marks.”

23

(Id.) Taking up JHS’s request for suggestions, Gibson replied that

24

“[o]thers have typically exaggerated the asymmetrical nature of the

25

design by lifting the lower left portion of the guitar and

26

extending the upper left horn on the guitar.” (Drumm Decl., Ex. D.)

27
28

In response to its correspondence with Gibson, JHS contends
that it made the suggestions to the double cutaway body shape
5

1

(called the “VS6" by JHS). On December 15, 2004, JHS received

2

another letter from Gibson, which stated:

3

6

On your double cutaway, in the past you said that you made
changes to distinguish it from Gibson’s SG BODY SHAPE. We
assume that you mean your LVS6 with the exaggerated horn.
However, your VS6 is not as distinctive. Therefore, Gibson
requests that you exaggerate the horn on the VS6 series in
the same manner as the LVS6.
(Drumm Decl., Ex. E at 7.) On December 21, 2004, JHS wrote back to

7

Gibson explaining:

8

11

With regard to our guitars Model Nos. VS6 and LVS6, we are
confident there is no confusion in the marketplace. . . .
the VS6/LVS6 horn shapes are mirror images of one another
and the “exaggerated” horn is used on both right-handed and
left-handed models. Perhaps the website images do not
clearly show this – but it is factual.”
(Drumm Decl., Ex. G.) Neither party has stated that there was any

12

follow-up to this final message. At some point after this exchange,

13

JHS began selling guitars with the SG Body Shape in the United

14

States. (Drumm Decl. ¶ 6.) On January 27, 2014, Gibson initiated

15

this lawsuit against JHS, including its claims arising from the SG

16

Body Shape trademark. JHS contends that it reasonably relied on

17

Gibson’s 2004 correspondence as an “active representation” that

18

JHS’s VS6 guitar did not infringe on the SG Body Shape trademark,

19

and that it is entitled to summary judgment on an affirmative

20

defense of laches or acquiescence to any claims Gibson now brings

21

relying on this particular mark. (JHS Mot. Summ. J. Aff. Def. 3.)

4
5

9
10

22

1. Laches

23

“‘Laches is an equitable time limitation on a party's right to

24

bring suit,’ resting on the maxim that ‘one who seeks the help of a

25

court of equity must not sleep on his rights.’” Jarrow Formulas,

26

Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002)

27

(citations omitted). Defendants who assert laches must prove that

28

“(1) [Plaintiff’s] delay in filing suit was unreasonable, and (2)
6

1

[Defendants] would suffer prejudice caused by the delay if the suit

2

were to continue.” Id. at 838. “The limitations period for laches

3

starts ‘from the time the plaintiff knew or should have known about

4

its potential cause of action.’”

5

Tillamook Cnty. Creamery Ass'n, 465 F.3d 1102, 1108 (9th Cir. 2006)

6

(citation omitted).

7

Tillamook Country Smoker, Inc. v.

JHS argues that it is entitled to summary judgment on its

8

laches defense as to the SG Body Shape because Gibson waited more

9

than nine years to bring a lawsuit. According to JHS, Gibson first

10

became aware of JHS’s potential infringement on April 20, 2004,

11

when Gibson sent a letter asserting that JHS guitars infringed on

12

the SG Body Shape trademark that Gibson had registered in the

13

United States. (JHS Mot. Summ. J. Aff. Def. 11.) It did not

14

initiate the instant litigation, however, until January 27, 2014.

15

(Id.; see generally Compl.) Typically, the presumption of laches is

16

triggered when a suit is brought outside the statute of

17

limitations. See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304

18

F.3d 829, 837 (9th Cir. 2002). The Ninth Circuit has “considered

19

both the three-year limitations period for fraud as provided in

20

California Civil Procedure Code § 338(d), and the four-year

21

limitations period for California trademark infringement as

22

provided in California Business and Professions Code § 17208, to be

23

analogous limitations periods for Lanham Act claims.” Derek &

24

Constance Lee Corp. v. Kim Seng Co., 391 Fed. Appx. 627, 628 n. 1

25

(9th Cir. 2010). In this case, given that Gibson waited at least

26

five years past the relevant statute of limitations, JHS argues

27

that the presumption of laches should apply.

28
7

1

Gibson responds that JHS’s laches defense is unavailing

2

because a court determining the start date of laches must “‘focus

3

on the conduct upon which the claimant bases its infringement

4

claim.’” (Opp’n JHS Mot. Summ. J. Aff. Def. 5 (quoting Tillamook

5

County Smoker, Inc. V. Tillamook County Creamer Ass’n, 311 F. Supp.

6

2d 1023, 1032 (D. Or. 2004), aff’d 465 F.3d 1102 (9th Cir. 2006)).)

7

In the present action, Gibson argues that the relevant date is not

8

when Gibson first contacted JHS about an allegedly infringing

9

guitar in 2004 but instead when JHS first sold those guitar in the

10

U.S. market, giving rise to a Lanham Act claim. (Opp’n JHS Mot.

11

Summ. J. Aff. Def. 5.) According to Gibson, it first learned that

12

JHS was selling guitars in the U.S., including those that allegedly

13

infringed on the SG Body Shape, in 2011 and it sent its first cease

14

and desist letter in December 2011. (See Mitchell Decl. ¶ 8.) From

15

there, Gibson took approximately two years to exchange letters with

16

JHS and conduct an investigation before filing suit in January

17

2014.

18

In its reply, JHS reasserts that the clock on Gibson bringing

19

any action related to the SG Body Shape began running in 2004 but

20

JHS does not contend that Gibson knew or should have known about

21

any U.S. sales of allegedly infringing guitars prior to 2011. (See

22

Reply JHS Mot. Summ. J. Aff. Def. 9-10.) While there continues to

23

be ambiguity about when precisely JHS began selling guitars in the

24

U.S., that is largely a result of JHS’s changing assertions about

25

its entry into the U.S. market.

26

Ex. A (2010) with Dkt. 129 (2007) and Dkt. 147, Drumm Decl. ¶6

27

(2006).)

(Compare Schuettinger Laches Dec,

28
8

1

The timeline on a laches defense is calculated “from the time

2

the plaintiff knew or should have known about its potential cause

3

of action.” Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d

4

829, 838 (9th Cir. 2002); see also ProFitness Physical Therapy

5

Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314

6

F.3d 62, 70 (2d Cir.2002) (“[A] plaintiff should not be obligated

7

to sue until its right to protection has ripened such that

8

plaintiff knew or should have known . . . that [it] had a provable

9

infringement claim against defendant.”). Here, Gibson did not have

10

an actionable cause of action under trademark law until JHS began

11

importing guitars into the United States. Further, JHS has not

12

provided, nor has the court identified, any authority, which

13

suggests that laches in the trademark context begins to run when a

14

potentially infringing product is identified extraterritorially. To

15

the contrary, at least one court in this Circuit has denied a

16

similar laches claim in the copyright context. See Hearst Corp. v.

17

Stark, 639 F. Supp. 970, 981 (N.D. Cal. 1986). In Hearst Corp.,

18

Plaintiffs brought suit alleging copyright violations of books that

19

were lawfully produced abroad and then imported into the United

20

States. Even though some of these books had early publications

21

dates, the court denied defenses of laches, estoppel, and statute

22

of limitations on the grounds that the clock did not start until

23

the “defendant imported those books into the United States.” Id. at

24

981 n.13. Likewise, the record in this case supports Gibson’s

25

contention that it did not know about its potential claim until

26

2011 and JHS presents no argument that Gibson reasonably should

27

have known about the potential infringement in the United States at

28
9

1

an earlier date. Thus, the court DENIES JHS’s Motion for Summary

2

Judgment as to its Affirmative Defense of Laches.

3
4

2. Acquiescence
The elements of a prima facie case for acquiescence are: “(1)

5

the senior user actively represented that it would not assert a

6

right or a claim; (2) the delay between the active representation

7

and assertion of the right or claim was not excusable; and (3) the

8

delay caused the defendant undue prejudice.” Seller Agency Council,

9

Inc. v. Kennedy Ctr. for Real Estate Educ., Inc., 621 F.3d 981, 989

10

(9th Cir. 2010). Some courts have elaborated on this standard to

11

explain that “‘[e]stoppel by acquiescence includes the two elements

12

of laches . . . and adds (3) affirmative conduct inducing the

13

belief that [the plaintiff] has abandoned its claim against the

14

alleged infringer, and (4) detrimental reliance by infringer.’”

15

AirWair Int’l Ltd. v. Schultz, 84 F. Supp. 3d 943, 956 (N.D. Cal.

16

2015) (quoting E & J Gallo Winery v. Pasatiempos Gallo, S.A., 905

17

F. Supp. 1403, 1414 (E.D. Cal.1994)).

18

As with the laches defense, JHS’s acquiescence defense turns

19

on a difference of interpretation regarding the 2004 correspondence

20

and JHS’s subsequent sale of guitars in the United States.

21

According to JHS, the first prong of an acquiescence defense was

22

satisfied because the 2004 exchange constituted an active

23

representation that Gibson would not assert its SG Body Shape

24

trademark against JHS for producing the VS6 model guitars. (JHS

25

Mot. Summ. J. Aff. Def. 6.) The second element was satisfied

26

because Gibson waited nine years between making that representation

27

and bringing an action against JHS and the third element was

28
10

1

satisfied because JHS relied on Gibson’s representations when it

2

made its decision to sell its guitars on the United States.

3

Gibson challenges the acquiescence defense by arguing that the

4

2004 exchange cannot reasonably be understood as a representation

5

that Gibson would not assert its trademark rights against JHS,

6

especially not if JHS began selling guitars in the United States.

7

(Opp’n JHS Mot. Summ. J. Aff. Def. 9.) As the record confirms, the

8

correspondence addresses only extraterritorial sales, as JHS did

9

not sell any guitars in the U.S. in 2004. (See Drumm Decl., Exs. A,

10

E.) Without opining on what Gibson’s silence at the conclusion of

11

the 2004 exchange might mean for JHS’s UK sales of the VS6, the

12

court finds that it cannot be understood as a blanket concession

13

that JHS’s guitar did not infringe on Gibson’s trademark nor can it

14

be interpreted as consenting to JHS doing business in the United

15

States where Gibson had potentially actionable trademark rights. A

16

party might decline to litigate extraterritorial trademark

17

violations for any number of reasons, while still intending to

18

prosecute any claim that might arise in the domestic context. But

19

even assuming that JHS reasonably relied on the 2004 exchange, the

20

acquiescence defense fails at the second prong for substantially

21

similar reasons as the laches defense. The second prong asks

22

whether there was an inexcusable “delay between the active

23

representation and assertion of the right or claim.” Seller Agency

24

Council, 621 F.3d at 989. As discussed above, notwithstanding any

25

representation Gibson may have made, it prosecuted its trademark

26

claim within a reasonable period of time from learning of any

27

potentially actionable conduct by JHS. Thus, the court also DENIES

28
11

1

JHS’s Motion for Summary Judgment on its affirmative defense of

2

acquiescence.

3

B.

4

Both parties have filed cross-motions for summary judgment on

Cross-Motions for Summary Judgment on Gibson’s Complaint

5

the substantive allegations in Gibson’s complaint. Specifically,

6

JHS seeks summary judgment on Count II, V, and VII of the Complaint

7

and on the issues of likelihood of confusion and lack of secondary

8

meaning. (See Dkt. 146.) Gibson seeks summary judgment on all

9

claims. (See Dkt. 148.)

10
11

1. Count II: Trademark Counterfeiting Claim
Count II of Gibson’s Complaint alleges that JHS intentionally

12

used a counterfeit of the Gibson Trademarks in commerce, knowing

13

that the marks were a counterfeit. (Compl. ¶¶ 38-40.) JHS contends

14

that it is entitled to judgment as a matter of law on the

15

counterfeiting count because every JHS guitar prominently displays

16

a brand name of JHS and all advertising and packaging state that

17

the guitars emanate from JHS. (Def. Mot. Summ. J. 5.)

18

The Lanham Act prohibits a counterfeit mark from being used

19

“in connection with the sale, offering for sale, or distribution of

20

goods or services.” 15 U.S.C. § 1116(d)(1)(A). The Act defines a

21

counterfeit mark as “a spurious mark which is identical with, or

22

substantially indistinguishable from, a registered mark.” Id.

23

§ 1127. As one district court has explained, “counterfeiting is the

24

‘hard core’ or ‘first degree’ of trademark infringement that seeks

25

to trick the consumer into believing he or she is getting the

26

genuine article, rather than a ‘colorable imitation.’” Gucci Am.,

27

Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012)

28
12

1

(citing 4 McCarthy on Trademarks § 25:10); see also McCarthy, §

2

25.01[5][b] (“[T]he Lanham Act carves out ‘counterfeit’ as a more

3

egregious type of ‘colorable imitation.’ When courts have used the

4

term ‘counterfeit,’ it has usually been in the context of invoking

5

greater discretionary remedies.”).

6

For purposes of resolving Gibson’s counterfeiting claim, the

7

operative question is whether JHS uses marks that are “identical”

8

or “substantially indistinguishable” from Gibson’s marks. “The

9

caselaw on what is required to plead identicality in a

10

counterfeiting claim is understandably thin, as the majority of

11

counterfeiting cases involve obviously identical marks.” Adams v.

12

Grand Slam Club/Ovis, No. 12-CV-2938-WJM-BNB, 2013 WL 1444335, at

13

*6 (D. Colo. Apr. 9, 2013) (collecting cases); see, e.g., Idaho

14

Potato Commn v. G&T Terminal Packaging, Inc., 425 F.3d 708, 721

15

(9th Cir. 2005) (affirming a finding of counterfeiting where

16

defendant purchased empty potato bags containing plaintiff’s marks

17

and then packaged their own potatoes into those bags). At least one

18

court reviewing the case law has concluded that “courts have

19

uniformly applied this provision to products that are

20

stitch-for-stitch copies of those of another brand.” Gucci Am., 868

21

F. Supp. 2d at 242. The Ninth Circuit has explained that a

22

“counterfeit is something that purports to be something that it is

23

not.” United Pac. Ins. Co. v. Idaho First Nat. Bank, 378 F.2d 62,

24

69 (9th Cir. 1967).

25

JHS argues that, as a matter of law, it cannot be held liable

26

for counterfeiting Gibson’s marks because every allegedly

27

infringing guitar (i.e., guitars that are comprised of either an

28

allegedly infringing body shape or headstock) bears the JHS trade
13

1

name, and there is no evidence that they are counterfeits of the

2

Gibson body shapes or headstocks. (Def. Mot. Summ. J. 6.) In

3

support, JHS notes that a guitar is typically identified by the

4

name on the guitar. (Defs Oppn Pl. Mot. Summ. J. 1.) JHS also

5

identified evidence from Gibson’s own representatives and experts

6

that confirm the view that a Gibson guitar is not identified solely

7

by its shape. (See Dep. Walter Carter, attached to Davis Decl. Ex.

8

1, at 117:9-117: 10 (“If you want to know who made a guitar, you

9

should look at the name that’s on the guitar. That’s common

10

sense.”); Deposition of Gibson Brands, Inc., attached Davis Decl.

11

Ex. 2, at 63:11-14. (“I don’t know who manufactured this guitar.

12

It’s a Gibson body shape, certainly, but as we can’t see anything

13

else, I can’t tell you for certain who made that guitar.”).) In

14

this case, JHS explains, every guitar headstock was printed with

15

the JHS trade name-the word “Vintage” in a stylized font–on the

16

front and the JHS trademark-“Vintage A John Hornby Skewes

17

Product”–on the back. (See Dkt. 177-5, Exs. 3, 4; Shuettinger Dec.,

18

Ex. L.). Thus, JHS contends there can be no genuine dispute that

19

the guitars were counterfeits of Gibson guitars. (Def.’s Opp’n

20

Pl.’s Mot. Summ J. 5-6.).

21

Gibson contends that the word “Vintage,” stylized or not,

22

cannot serve to defeat the counterfeiting claim because a

23

reasonable consumer could still find that a JHS guitar bodyshape or

24

headstock was identical or substantially indistinguishable from a

25

Gibson. (Pl.’s Oppn Def. Mot. Summ. J. 2.) This is because, in

26

Gibson’s view, the word “vintage” might be misunderstood as

27

indicating the age of a guitar rather than as a brand name or

28

source identifier. (Id.) In support, Gibson points to the testimony
14

1

of one of JHS’s own sales manager who stated that U.S. consumers

2

were confused by the trade name Vintage because they thought it

3

meant old and not that it was the guitar brand. (Shuettinger Dec.,

4

Ex. A.) Gibson also details several other instances where

5

individuals were confused by the brand name Vintage and

6

misidentified a JHS guitar as a Gibson. (Pl.’s Opp’n Def. Mot.

7

Summ. J. 4.)

8
9

Furthermore, Gibson contends that the marking on the back of
the guitars, which read “Vintage A John Hornby Skewes Product,” is

10

also inadequate to immunize JHS from a counterfeiting claim. Gibson

11

notes that the text is placed in a location where the consumer is

12

unlikely to see it and printed in a small font that is difficult to

13

read. (Id. 10.) Although appropriate labeling can defeat a

14

counterfeiting claim, Gibson points to a New York district

15

court decision granting summary judgment against a defendant that

16

produced counterfeit Tiffany rings even though the inside of the

17

ring was stamped with a non-Tiffany mark. Tiffany and Co. v. Costco

18

Wholesale Corp., 127 F. Supp. 3d 241, 255 (S.D.N.Y. 2015) (“Costco

19

has offered no evidence that the stamping of these rings with

20

generic marks has done anything to alleviate confusion; rather, at

21

least six customers who purchased these generically stamped rings

22

were confused as to their source.”).

23

Having reviewed the record submitted by the parties, and after

24

examining the various photographs of the guitars in question, the

25

court concludes that no reasonable jury could find that JHS used

26

counterfeit Gibson marks. Without determining the specific level of

27

similarity, if any, between the guitars, the court finds that the

28

body shapes and headstocks of the JHS guitars in question are not
15

1

identical or substantially indistinguishable from the Gibson body

2

shapes and headstocks. Aside from certain visual distinctions

3

between the headstocks and body shapes in question, as both JHS and

4

Gibson acknowledge, guitars are typically identified by the

5

branding on the headstock. To the extent that Gibson allegedly

6

relies on its body shape and headstock shape as a source

7

identifier, no rational jury could find that a particular body

8

shape or headstock stamped with a different guitar brand is a

9

counterfeit of a Gibson trademark. Here, JHS’s guitars are marked

10

with the “Vintage” branding on the front and the JHS trademark on

11

the back. Although marking of a different source indicator may not

12

always defeat a counterfeiting claim, Gibson has failed present

13

evidence that the Vintage marking in this case does not nullify the

14

counterfeiting claim. As to Gibson’s contention regarding the

15

ambiguity of the word “vintage,” the court concludes that even if a

16

consumer might read an advertisement of a “Vintage” guitar as

17

reference to an older guitar, it is implausible that a consumer

18

looking at a guitar would understand the stylized Vintage logo to

19

be an indicator of the guitar’s age rather than a brand name.

20

Admittedly, there are situations where an inconspicious

21

disclaimer might be insufficient to immunize a defendant from a

22

counterfeiting claim regarding a trademark of a particular design

23

or shape of a product. But those situations “must, at the very

24

least, [ ] be closer than the traditional standard for

25

infringement, ‘colorable imitation.’” Tiffany, 127 F. Supp. 3d at

26

254. For instance, in Tiffany, Costco sold rings that were

27

essentially copies of Tiffany’s in a glass case that was marked

28

with the actual Tiffany trademark. Id. at 255. The only effort to
16

1

distinguish the imitations was a small generic mark on the inside

2

of the ring. Id. Given those circumstances, the court granted

3

summary judgment noting that “[t]here is no statutory requirement

4

that the counterfeit mark be placed on the product itself.” Id. The

5

evidence here does not rise to that level. To find that anything

6

less than an “identical” or “substantially indistinguishable”

7

product can give rise to a counterfeit claim would risk rendering

8

“all trademark infringement claims . . . counterfeiting claims,”

9

and, along with it, open up the wider range of statutory penalties

10

and remedies. Adams, 2013 WL 1444335 at *7. Accordingly, the court

11

GRANTS JHS summary judgment on Count II of Gibson’s Complaint for

12

counterfeiting and DENIES Gibson’s cross-motion for summary

13

judgment on the counterfeiting claim.

14

C.

15

Count VII of Gibson’s Complaint alleges trademark dilution

Count VII: Trademark Dilution under California State Law

16

under California Business and Professions Code section 14330. JHS

17

argues that it is entitled to summary judgment on this count

18

because section 14330 was repealed in 2007, six years prior to when

19

Gibson filed this action. Gibson responds that it is not required

20

to name any statute in its Complaint and that, even if it

21

misidentified the statutory basis for relief, its allegations

22

instead satisfy the requirements for stating a similar claim under

23

section 14247.

24

This Court is not the first to address whether a claim under

25

section 14330 can survive despite the statute’s repeal. The typical

26

course has been to dismiss the claim. See, e.g., Penpower Tech.

27

Ltd. v. S.P.C. Tech., 627 F. Supp. 2d 1083, 1090 (N.D. Cal. 2008)

28

(quoting People v. One 1986 Toyota Pickup, 31 Cal. App. 4th 254,
17

1

262 (Ct. App. 1995) (dismissing section 14330 claim and noting that

2

“‘The repeal of a statute creating a penalty, running either to an

3

individual or the state, at any time before final judgment,

4

extinguishes the right to recover the penalty.’”); see also Emeco

5

Indus., Inc. v. Restoration Hardware, Inc., No. C-12-5072 MMC, 2012

6

WL 6087329, at *3 (N.D. Cal. Dec. 6, 2012) (dismissing section

7

14330 claim even though Plaintiff urged the court to evaluate the

8

arguments under section 14427 in the alternative); Brown v. Green,

9

No. C 12-2113 DMR, 2012 WL 4120379, at *6 (N.D. Cal. Sept. 18,

10

2012) (dismissing section 14330 claim); but see Mattel, Inc. v. MGA

11

Entm’t, Inc., 782 F. Supp. 2d 911, 1011–12 (C.D. Cal. 2011) (noting

12

that the section 14330 claim fails and going to explain that, “[t]o

13

the extent MGA seeks to have its claim evaluated under Cal. Bus. &

14

Prof. Code § 14247,” the claim also fails). Here, the court

15

concludes that the most appropriate course is to follow the

16

majority of other district courts and dismiss Count VII of Gibson’s

17

Complaint.

18

D.

19

As to all remaining claims, having considered the admissible

20

record evidence, the court finds there are triable issues of fact

21

and DENIES the cross-motions for summary judgment.

22

IV. CONCLUSION

Remaining Claims

23

For the reasons stated above, the court DENIES JHS’s Motion

24

for Summary Judgment on the Affirmative Defenses of Acquiescence

25

and Laches. Further, the Court GRANTS IN PART and DENIES IN PART

26

JHS’s Motion for Summary Judgment on Counts II, V, and VII of the

27

Complaint, Likelihood of Confusion on All Claims and Lack of

28

Secondary Meaning. Specifically, the court GRANTS JHS summary
18

1

judgment on Count II of Gibson’s Complaint and DISMISSES Count VII

2

of Gibson’s Complaint. Finally, the court DENIES Gibson’s Motion

3

for Summary Judgment.

4
5
6

IT IS SO ORDERED.

7
8

Dated: December 29, 2016
DEAN D. PREGERSON
United States District Judge

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
19