The maker of Gibson-brand guitars could not go forward with claims that media conglomerate Viacom International secondarily infringed trademarks related to Gibson’s “Flying V” design by selling a ukulele with a V-shaped body and bearing Viacom’s “SpongeBob SquarePants” and Nickelodeon trademarks, the U.S. Court of Appeals in San Francisco has held (Gibson Brands, Inc. v. Viacom International, Inc., February 19, 2016, per curiam). A decision of the federal district court in Los Angeles, holding that Viacom lacked the requisite level of control over a licensee that made the ukuleles, British music merchandise distributor John Hornby Skewes & Co. Ltd. (JHS), was affirmed. However, the Ninth Circuit reversed and remanded the district court’s ruling that jurisdiction was lacking over trademark infringement claims against JHS because the guitar maker failed to show “use in commerce” of its marks within the meaning of the Lanham Act.
A full summary of this case has been published on Kluwer IP Law.
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