EXCLUSIVE: Gibson sued by Heritage over fresh trademark threats
The Kalamazoo-based company claims that “Gibson demanded that Heritage essentially cease its business” despite a secret 29-year-old legal settlement between the two brands.
Image: Joe Supple
Heritage Guitars has launched legal action against Gibson Brands, becoming the latest US guitar company to reveal that they have been threatened with legal action over alleged trademark infringement since Gibson came under new ownership in 2018.
Guitar.com has obtained a redacted legal document filed on 13 March 2020 in the US District Court for the Western District of Michigan Southern Division, which details a previously confidential agreement reached between the two companies in August 1991, effectively giving Heritage Gibson’s blessing to continue making its guitars. The filing seeks “declaratory and injunctive relief” to prevent Gibson from making further legal threats against the brand.
Heritage – which has operated out of Gibson’s original factory at 225 Parsons St in Kalamazoo, Michigan since it was founded by former employees in 1985 – claims that shortly after the company began making guitars, the two companies clashed in both federal and trademark court over the look of its instruments.
In 1991 that litigation was resolved with a confidential agreement that meant that, according to Heritage’s filing, “For the ensuing 29 years, Heritage and Gibson went their separate ways, each selling its own well-known guitars into the market, with no problems or issues.”
However, when Gibson was sold to hedge fund Kohlberg Kravis Roberts (KKR) following its bankruptcy in 2018 – installing a new leadership team led by former Levi’s CEO JC Curleigh at the top of the brand – Heritage’s suit claims that this long “peace” between the two was broken.
In the legal filing, Heritage alleges that Gibson’s attitude to Heritage changed following the arrival of new ownership, stating, “Now Gibson, via KKR, seeks to undo the resolution achieved in 1991 and followed by both parties for 29 years, by claiming phantom breaches of the 1991 settlement by Heritage.
“In February 2019, shortly after KKR took over Gibson, Gibson wrote to Heritage and essentially claimed that Heritage had been violating the Settlement Agreement for decades. Gibson demanded that Heritage essentially cease its business as the only solution that Gibson would accept.”
In the last 12 months, Guitar.com has detailed various legal disputes between Gibson Brands and its competitors over trademarks – including a high-profile lawsuit against Dean Guitars owner Armadillo Inc, disputes with Warwick/Framus over EU marks, and most recently, claims of a cease and desist letter sent to Kiesel Guitars over the Ultra V design.
Heritage goes on to claim that on 20 February 2020, Gibson wrote to the company again alleging violations of the 1991 settlement agreement, intellectual property infringement, and threatening legal action, even going so far as attaching a draft complaint.
In December 2019, Guitar.com interviewed Gibson CMO Cesar Gueikian, during which he claimed, “We inherited, from the previous owners, a legacy of confrontation and litigation, which we have essentially now been putting to bed. There are literally just one or two situations that we haven’t been able to resolve amicably, and not because of a lack of intention on our side. But everything else, why not collaborate with those who are doing really cool things?”
The continuing disputes with Armadillo and Warwick, plus recent revelations from Kiesel and now Heritage, seem to call the above statement into question.
However, it’s worth noting that Heritage’s suit is notably different to the Dean/Armadillo counter-suit, or indeed the long-running dispute over the ES-335 trademark. Heritage is not seeking to challenge the validity of Gibson’s trademarks or have them cancelled.
Instead, Heritage claims that this lawsuit is only being brought in an attempt to return relations between the brand and Gibson to the status quo that has existed for nearly three decades, and is seeking a declaratory judgement from the court that confirms it has not violated the settlement agreement or infringed on Gibson’s trademarks.
“None of Gibson’s evolving legal theories have merit,” the filing reads. “Heritage remains, and has always been, in full compliance with the Settlement Agreement. Nevertheless, to resolve the uncertainty created by Gibson’s threats and allegations, Heritage has been left with no choice but to file this action.”
Read Heritage’s statement here:
Guitar.com has reached out to Heritage Guitars and Gibson Brands for further comment on this developing story, and we’ll update it as the situation develops.
[Editor’s note: Heritage Guitars has a partnership with BandLab Technologies, the parent company of Guitar.com.]
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