When a guitar is just a guitar

By Mark McKenna

The 6th Circuit today released an interesting decision restricting the application of initial interest and post sale confusion doctrines, at least in the context of product configuration.

Gibson Guitar Corp. has manufactured its Les Paul line of guitars more or less consistently since the the early 1950’s. Gibson argues that the Les Paul guitar is distinctively shaped and serves as a trademark. In 2000, Paul Reed Smith began making a similarly shaped guitar, and Gibson sued. The court rejected Gibson’s claim by finding no likelihood of confusion between the two companies’ guitars.

There is a lot I could say about this case, but I will highlight a couple of mostly unrelated things I thought were interesting about the case.

1. I still can’t figure out why Gibson sought leave to amend its complaint to limit its claim to infringement of its federally registered two dimensional depiction of the guitar. The court goes out of its way to say that, if the claim is based only on the two dimensional depiction, then the district court shouln’t have considered other design features like color and knob placement. That seems right, but I couldn’t figure out why it should matter, and it wouldn’t have if they had kept their trade dress claim since it would have been a distinction without a difference.

2. There seems to be something of a minor movement afoot to cut back on initial interest confusion. This decision is the second in just a few weeks to refuse to apply the doctrine (see the 4th Circuit’s decision in Lamparello v. Falwell). While I’m glad to see courts expressing greater skepticism about that potentially pernicious doctrine, I’m somewhat disappointed that both decisions did so by unpersuasively distinguishing prior cases rather than having the courage to simply say that initial interest confusion isn’t actionable or is actionable only in limited circumstances.

2. It’s really quite ironic that the 6th Circuit refuses Gibson’s initial interest confusion claim and distinguishes its prior recognition of the doctrine on the ground that Paccar (its earlier case) was about initial interest confusion with respect to domain names. Falwell’s claim was based on use of a misspelling of his name in an internet domain name, and yet the 4th Circuit rejected Falwell’s claim and argued that you can’t determine initial interest confusion without considering the context of the web page to which the domain name resolves. That’s not initial interest confusion – the whole point of that doctrine is that the confusion is dispelled when further context is introduced – and the 4th Circuit should have just rejected the doctrine altogether. But the 6th Circuit seems to think that initial interest confusion is only applicable in the context of domain names (or, to read the decision more narrowly, at least doesn’t apply in the context of product configuration – more on that below). I don’t see any reason to treat domain names differently in terms of causing initial interest confusion, so I have to conclude that this was just an excuse for the court to restrict initial interest confusion without having to say Paccar was wrong.

3. The court claims that the implications of recognizing initial interest confusion claims are more serious/important in the context of product configurations because there are a limited number of ways in which a product can be made. But I think Judge Kennedy (concurring in part, dissenting in part) clearly has the better of this argument. If it’s true that products can only be made in certain ways, and that lots of products look vaguely similar at least from a certain perspective, then the plaintiff should have difficulty establishing that the shape denotes source and/or that the mark has any real strength. That seems to me to affect the scope of rights in a product configuration and might suggest that a certain amount of initial interest confusion has to be tolerated by those mark owners, but I don’t see why it means initial interest confusion shouldn’t be applied at all. Incidentally, I think Judge Kennedy’s proposed rule – that the issue of whether something inidcates source should be viewed from the same perspective at which the plaintiff claims confusion, is quite sensible.

4. I have similarly ambivalent feelings about the court’s discussion of post-sale confusion. Its attempt to distinguish Esercizio (the Ferrari case) is rather pathetic – it claims that, unlike in the Ferrari case, there’s no risk that PRS will affect Gibson’s reputation because PRS makes high quality guitars. This is striking because courts generally don’t let defendants off the hook on evidence of good quality, saying things like “it leaves the plaintiff’s reputation in defendant’s hands” and showing concern that the defendant might someday decide to make poor quality products. So whether or not PRS makes good guitars, it doesn’t mean that consumers might not think Gibson makes the guitars, and it doesn’t mean that PRS won’t someday cut costs and make poor substitutes. This seems like another relatively bald attempt to reject the doctrine without saying it rejected the doctrine.

5. This case raises a question I’ve been thinking about for a long time – why do we recognize trade dress rights in product configuration? At least for any products that can effectively be labeled, product configuration operates at most as a secondary or tertiary source identifier. And if the labeling is actually done, it’s almost inconceivable that anyone is really confused at the time of purchase (assuming the labeling itself is done clearly). In fact, Gibson’s counsel admitted in oral argument that “you’d have to be an idiot not to know which guitar you’re buying.” Gibson’s complaint seems to boil down to the complaint of every product configuration claimant I’ve ever seen – we developed an attractive product that consumers want, and we should be the only ones to exploit that design. But isn’t that exactly what design patent protection is all about? What marginal value do we get out of trade dress protection of this stuff? (I mean we as in consumers – I know why Gibson wants it).