Gibson Guitar Corp. has gotten the axe in federal court, with its Lanham Act and state claims against media giant Viacom dismissed. A U.S. District Court in Los Angeles found that the legendary guitar-maker’s complaint failed to state specific acts and who did what, underlying its claims against each defendant, Viacom International, Inc., and John Hornby Skewes & Co. Ltd. (JHS).
Plaintiff Gibson Guitar Corp. is a leading manufacturer of guitars and other musical instruments and owns the Flying V Body Shape Design Trademark, the Flying V Peg-Head Design Trademark and the word mark FLYING V. Defendant Viacom owns the copyright to the cartoon character Sponge Bob Square Pants and has granted a license for defendant JHS, a British manufacturer, to advertise and sell products using the Sponge Bob Square Pants trademark. Gibson claimed that defendants’ use of Sponge Bob Square Pants Flying V Ukulele violated the Lanham Act and provided the basis for several other claims against them in state law. Section 43(a) of the Lanham Act protects trademarks from infringement likely to cause confusion among consumers.
In Viacom’s motion to dismiss for lack of subject matter jurisdiction, it asserted the case should be tossed because there has been no use of the mark in commerce. It argued that its license to JHS was for character-based music instruments for other countries, excluding the United States. This jurisdictional requirement is found in the Lanham Act, in the same provision that provides Gibson’s cause of action. The court found the question of jurisdiction and merits were intertwined, therefore, it was inappropriate to dismiss the case for lack of subject matter jurisdiction.
But Viacom successfully argued its motion to dismiss for failure to state a claim, saying it was indiscernible what actions Gibson claimed were performed by Viacom, in particular, except that the media giant licensed SpongeBob to JHS for certain products. The court found that, due to the nature of the defendants, Viacom being the trademark owner and JHS being a product seller and promoter, Gibson’s complaint needed to specify the different roles of each defendant to state a claim against each.
This is not the first time these parties have locked in a legal dispute. In 2010, Gibson settled its patent-infringement claims against Viacom Inc. and Electronic Arts Inc. over the “Rock Band” music-video game, a game which the guitar-maker said infringed its 1999 patent for use of its musical instrument in a simulated concert.