Orange County - Last December, Gibson Guitars, Inc. sued Viacom Inc. and John Hornby Skewes & Co. Ltd. for trademark infringement related to the Gibson "Flying V" guitar model. John Hornby Skewes & Co. is a worldwide distributor of music merchandise since 1965 and is based in the United Kingdom.
The dispute began when John Hornby Skewes approached Viacom for a license to use the SpongeBob SquarePants trademark for a new novelty line of guitars, ukuleles, and related accessories. The licensing agreement was drawn up and signed allowing John Hornby Skewes to use the SpongeBob trademark and logo on musical instruments.
Thereafter John Hornby Skewes began selling a ukulele that looked similar to Gibson's famous "Flying V" guitar model, initially released in 1958. Gibson currently owns the FLYING V trademark, Reg. No. 1,216,644 for guitars.
When Gibson sued Viacom and John Hornby Skewes for trademark infringement, Viacom countered the lawsuit by filing a motion to dismiss itself from the lawsuit stating that it had no say whatsoever in decisions made by John Hornby Skewes pertaining to the designs or shapes of the instruments.
Last week U.S. District Court Judge Dean D. Pregerson made it clear that he tends to agree. Although Judge Pregerson is leaning toward dismissing Viacom from the case, he has not yet rendered his final decision but has made statements to indicate he is "inclined" to grant the motion.
Gibson's attorney tried to sway the judge by pointing out that the licensing agreement gives Viacom the right to approval of all released products under the license. However, Judge Pregerson does not believe that Viacom should be responsible in the way that Gibson is requesting. In this instance, Judge Pregerson called Viacom a "passive licensor" who played no part in the instrument body designed by John Hornby Skewes.
Gibson believes, at least according to its original complaint, that Viacom and John Hornby Skewes intentionally tried to mislead the public into thinking that the SpongeBob ukuleles were made by Gibson. Gibson alleges that both Defendants "made significant profits from it."
The Complaint also requests that Viacom be ordered to hand over all infringing merchandise and pay over $1 million in statutory damages. According to Viacom's trademark attorneys, the only "Spongebob" ukeleles sold in the United States were the ones purchased by Gibson's counsel.