In 2019, Gibson, the guitar company, brought a lawsuit against Armadillo Distribution and others for trademark infringement by virtue of Armadillo’s copying of the look of Gibson’s guitars. The case went to trial on May 16, 2022.

Armadillo tried to use a “laches” defense to defend the case. This defense is used where there has been a lengthy delay in filing a lawsuit. Gibson’s longest delay was regarding its Dean V and Dean Z guitar bodies. Gibson delayed filing a case against Armadillo for 40 years as to these two guitars. 

At the conclusion of the trial on May 27, 2022, the jury came in with a verdict in favor of Gibson on all of its guitar styles except one. Additionally, the jury found that Armadillo sold counterfeit versions of multiple Gibson guitars. However, the jury also found Armadillo and Concordia established a valid laches defense as to two of the guitar styles. Surprisingly, the jury only awarded Gibson four thousand dollars in damages concluding that Gibson had suffered no “actual damages.”

On June 17, 2022, Gibson requested two things: a court order prohibiting Defendants from manufacturing, selling, or advertising its infringing products, (i.e., an “injunction”) and for the profits acquired from the infringing products. Finding all factors in favor of Gibson for the injunction, Gibson was able to stop Armadillo from advertising or selling the infringing products going forward. The court issued an injunction on July 28, 2022. Gibson protected its intellectual property.

But, the court evaluated 6 factors to determine whether to award Gibson profits from Armadillo’s sales including: (1) whether Armadillo intended to confuse or deceive; (2) whether sales had been diverted; (3) the adequacy of other remedies; (4) unreasonable delay by Gibson in asserting its rights; (5) the public interest, and (6) whether it is a case of “palming off.” Palming off is when a seller imitates the goods of a rival or competitor in order to deceive consumers into thinking they’re purchasing the competitor’s goods. The court found that except for the first factor, all factors favored Armadillo. Thus, the request for profits was denied.

Lastly, there was a dispute as to whether Gibson was actually the “prevailing party,” and thereby entitled to attorneys’ fees and costs of litigation. The court ruled in favor of Gibson, finding Gibson had prevailed and therefore would be entitled to costs and attorney’s fees. The attorneys’ fee could be substantial since this case was filed in 2019 and went all the way to a 14-day jury trial.

Gibson is represented by Andrea E. Bates, Kurt Schuettinger, Johnathan M. Bates of Bates & Bates LLC, and Stephen D. Howen.

Armadillo is represented by Douglas A. Rettew, Anna Naydonov, and Patrick J. Rodgers of Finnegan Henderson Farabow Garrett & Dunner LLP and Vic Houston Henry and Emileigh Stewart Hubbard of Henry Oddo Austin & Fletcher APC.

The case is Gibson Brands Inc. v. Armadillo Distribution Enterprises Inc. et al., case number 4:19-cv-00358, in the U.S. District Court for the Eastern District of Texas.

* Lowe & Associates (“The Firm”) is a boutique entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving trademark infringement, having provided top-quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.

Find us at our website at www.LoweLaw.com.