the DiMarzio double-creme trademark thing

[soli'd]

This info is likely available on the web, but this is a cooler hang than the whole of google.  

I was reading a post on TGP that referenced DiMarzio's trademark on double creme humbuckers.  I have heard this mentioned before but I'm unclear as to what the situation really is.  

Has there ever been a time that the only double creme pickups you may see were DiMarzios?  Are no PAFs double creme under the covers?  Now that you see double creme pickups from other suppliers (several small business winders come to mind), are those sanctioned?  If so, what changed and when? 

Any info that can be provided without getting anyone in trouble is appreciated.  If it needs to be by PM that's fine, too.

Thanks-

[murkat]

what is stated is all true in regards of. But, if the pup is covered, and the owner of decides to un cover, that is up to the owner.

I know Duncan opt out of making of, just for not pissing off larry, etc.

But most just cover them and wing it.

And, some just wing it.

GCS went thru the same thing with the Historic Jimmy Page #2 for the bridge pup.

Larry would not budge on allowing or licensing of the original maker of making an original spec pickup for said guitar.

[Armitage]

The guys a Duncan told me that because humbucking pickups had always had double cream (off and on over time, under the cover and not) that they figured it wouldn't go through.  Gibson had double cream since day one, and Duncan had double cream since his day one too! And it did go through!. It covers six screws and six studs, and twelve hex screws. It doesn't' cover blades or more or less screws...

 

[atquinn]

I believe the Dimarzio trademark is fairly specific in the color it covers. So other manufacturers can offer double-parchment pickups, double white, double off-white, etc... And small manufacturers can do whatever they want as well as long as they aren't afraid of Dimarzio's lawyers knocking on their door (just like luthiers out there making Gibson LP copies and escaping Gibson's notice). It seems that recently, makers have gotten a bit more wary of Dimarzio going after them. The whole double-cream under the cover thing seems to have gone out of practice from manufacturers I've seen using it before (namely Suhr and Duncan). If you're OCD about it, you can always get zebra and reverse zebra versions of the same humbucker and make your own double cream (and double black) humbuckers from the the coils. Fortunately, I've been able to get "the look" without having to resort to that!

-

Austin

[benjammin308]

I've been involved in a few patent and trademark issues.  I believe that if a manufacturer wanted to invalidate the Dimarzio trademark in court they would have a very good chance based on the fact that there were other manufacturers using that color scheme before Dimarzio.  However, it would cost a lot of money to go through with the litigation (I'm talking hundreds of thousands).  The costs would likely never be recovered.  For the other manufacturers it is simply much easier to live with the stupid Dimarzio trademark and use different color schemes.  The little guys can maybe afford to take chance as they have very little for Dimarzio to go after and can fly under the radar.

[atquinn]

15 hours ago, benjammin308 said:

I believe that if a manufacturer wanted to invalidate the Dimarzio trademark in court they would have a very good chance based on the fact that there were other manufacturers using that color scheme before Dimarzio.

What manufacturer was selling aftermarket double cream humbuckers before Dimarzio? Gibson having double cream humbuckers under covers doesn't count. If they had uncovered humbuckers on guitars that they sold and they were double cream, that would be one thing, but they didn't AFAIK.

-

Austin

[BubbaVO]

hmmmm...I didn't know DiMarzio was making and marketing their pups back then.  Seems like there's an argument that the trademark registration should never have been issued. 

[tbonesullivan]

Well, for something to be "trademarked" it has to be something you are associated with, and something you are known for exclusively. Dimarzio pickups were in the beginning I think all double creme. The double creme super distortion is a look that is well known. Gibson only sold covered pickups for years.

It is a kind of messed up situation, but given that Dimarzio got the trademark, he'd be an idiot not to enforce it.

[soli'd]

I had a convo with Wolfe Macleod from Wolfetone regrading this topic- he's actually doing something about it.  Apparently another small-builder (competitor of his) is being sued by DiMarzio, and Wolfe is compiling info for the other builder's defense.  He asked that the following info be distributed wherever possible.  

HFC mods- if it's better that this stuff stay off the HFC please feel free to delete.

Soli

I'll forward you some stuff I've been passing around to other winders and luthiers, hoping to gain some support for the person being sued...

Take some time and read this stuff... it's really eye opening. The 12 hex head bolt are disclaimed int eh trademark, because they're drawn with dotted lines. 

If you can get familiar with this and start spreading it, it could go a very long way. 

(first, I'll mention that I found this last night... really good stuff where "cognitive" functionality is concerned)
http://www.cardozolawreview.com/content/36-4/HUGHES.36.4.pdf


Let's start with the four PDF files located at www.wolfetone.com/trademark

The "McCarthy" PDF files are written by the foremost authority on color trademarks, and trademarks and unfair competition. They will really open your eyes.
The "Chrome" pdf file is a 2005 attempt by Dimarzio to register what was basically a chrome-plated bobbin. The Patent and Trademark office refused the registration due to functional color. Guitars have chromed hardware, and some guitar have mirrored pickguards. Therefore, two chrome-plated bobbins on a humbucker would be "aesthetically" functional.
"Cream" pdf is all the paperwork ever filed for Dimarzio to get and maintain the cream trademark. 

Let's move on to a 2012 court decision regarding red-soled shoes. Pay particular attention to paragraph 5 here: https://www.foley.com/second-circui...ction-of-fashion-color-trademarks-09-05-2012/
With the ruling of paragraph 5.... Because the cream mark put all other pickup makers at a severe disadvantage, it is harmful to others. 


We'll move further, looking into John Deere, who sued Farmhand in the 1980's over the use of green. Courts discovered that because farmers wanted to color-coordinate their equipment, Farmhand would be at a serious disadvantage if they could not make green loaders, trailers, or other farm accessories. 
Links:
http://www.leagle.com/decision/1982645560FSupp85_1621/DEERE & CO. v. FARMHAND, INC.
https://www.venable.com/files/Publi...e449a7d9-2abc-44be-a8d4-12a506267972/1103.pdf

John Deere is currently in suit with a company called Fimco over the same colors...because of the previous ruling, Fimco has won the right to again argue color functionality and farmer color-coordination http://www.bna.com/john-deere-colors-n57982059682/

Mercury boat motors could not protect the color black, because black goes with any boat color scheme, and looks smaller when mounted... 
http://www.duetsblog.com/2010/08/ar...color-black-functions-but-not-as-a-trademark/

Blue.. could not be protected on ice-cream colors. It was found to be psychologically functional because it suggested the ice-cream was colder....
http://tedium.co/2015/12/29/klondike-bar-trademark-lawsuit-history/
http://lehrmach2.blogspot.com/2015/04/ambrit-inc-v-kraft-inc-1986-trademark.html


There are dozens upon dozens of color-trademarks cases where color has been found to be "aesthetically functional" and therefore unprotectable.
We realize that many guitars have cream binding, cream pickguards, and cream HB mounting rings. Therefore, the cream colored humbucker is functional, especially when you consider the 2005 refusal to register "chrome" And we all know how aesthetically-minded guitar playres are.... would you put a hot-pink humbucker in a gold-top les Paul? I didn't think so.... 

Dimarzio has filed suit against a small pickup maker like myself. I'm hoping to raise not only funding for his defense, but awareness in the public eye that this is happening. We need industry support to get the word out to players, builders, and everyone we can who may take an interest... especially any guitar-playing intellectual property attorneys. 

If the lawsuit is won, the trademark will be rendered invalid and it will go away, allowing all pickup makers to make it openly. In trademark law, you cannot register a mark where it affect the cost of manufacture, the ease of manufacture, or the sale-ability of a product. The trademark violates all three of those. There is a theory about "color depletion" as well, which states that there are a finite amount of colors... in the pickup/guitar world, we have four "common" colors - black, zebra, cream, and white... the Dimarzio trademark effectively reduces that to three colors. It severely affects that small pickup maker like myself. 

If you can help in any way, whether it be financial donation to the defense fund, or raising public awareness thru Facebook posting, forums, etc, it would be greatly appreciated.

We currently have the support of Seymour Duncan, Lindy Fralin, Fano Guitars, Kauer Guitars, Detemple, Thorn Guitars, GMP guitars, Peter Florance of Voodoo Pickups, Doyle Coils, Rick Turner, Pete Biltof, Porter Pickups, Klein Pickups, and possibly Fender guitars (waiting for feedback from Fender)

[Armitage]

I do like cream pickups, and while I do like many DiMarzios... I don't JUST want DiMarzios...

[JGravelin]

Soli'd, Thank you.

Wolfe and I had a great talk this morning. For the record, I do not make double creams - mine are "aged goats milk lactoid twinkie" colored. Jus' sayin', yo.

I'm joining the fight and am going to actively help do something about this ridiculous trademark bullshit.

 

[cmatthes]

Anything I can do to support ya in that battle, Josh, just let me know!

 

[JGravelin]

Thanks CM! You're the best, man!

The immediate concern of mine is that a fellow pickup maker is about to get the piss knocked out of him by DM lawyers, in the way that could ruin a persons life, destroy a family, and take food out of his childrens mouths. From my conversation with Wolfe today, there's a GoFundMe account being set up to help this pickup maker with the legal fees - I will post more details along with a link as soon as it's up.

 

[WolfeMacleod]

18 hours ago, cmatthes said:

Anything I can do to support ya in that battle, Josh, just let me know!

 

Here's what you guys can do.

  Read the documents here:  www.wolfetone.com/trademark

 

  They're quite in depth and may require some time, but they will educate you in ways you wouldn't believe as to just how "wrong" the trademark is. 

 

  The McCarthy documents, along with two newer documents I recently found - "Robert Bone on Functionality" and the "Hughes Color trademark" pdf files are extraordinary.  The Hughes document is a law study on cognitive and aesthetic functionality in trademark law, written by law professor Justin Hughes in Los Angeles.

 The "Chrome" pdf is a 2005 attempt by Dimarzio to register another color.  It was DENIED because guitars have chromed hardware, and some have mirrored pickguards.

 

 What else can you do?  Search Google for terms such as "Aesthetic functionality doctrine" and "color as a trademark" and "TMEP Chapter 1200"  and READ.  "Search John Deere v. Farmhand trademark" and "When the color black functions" and read about Mercury Brunswick's attempt at trademarking black outboard boat motors, as well as the Klondike ice-cream bar case called the "Klondike Case" in which blue was not registerable because it was psychologically suggestive that ice cream was colder.

  Read about how the second circuit court severely limited Christian Louboutin's red soled shoe trademark.  https://www.foley.com/second-circuit-reverses-louboutin-on-protection-of-fashion-color-trademarks-09-05-2012/  

and pay attention to paragraph 5. 

 

 READ.   

If you are an intellectual property attorney, GET INVOLVED. 

 

  I've been researching this trademark for 18 years, 10-15 hours every week, reading every color case history and ruling I can find. It is illegitimate and CAN be defeated, but the entire community MUST stand behind the person being sued.    Raise awareness, raise defense funding, and BE HEARD. 

[scottcald]

On June 24, 2016 at 3:24 PM, murkat said:

Larry would not budge on allowing or licensing of the original maker of making an original spec pickup for said guitar.

Wow, he wouldn't even license it?  I could see not just granting permission.  

[murkat]

45 minutes ago, scottcald said:

Wow, he wouldn't ?

Yup. when We were building the JP 2's, Jimmy wanted, insisted on a Gibson made PAF double creme in the bridge position, like his original #2. (everything else is)

Legal and A/R went to Larry with a lic. proposal for just the JP2, for Jimmy's spec wishes.

Nada. Larry responded the only way to do so is to install a DiMarzio made pup....

Jimmy disliked that very very much. He was pissed.

[WolfeMacleod]

43 minutes ago, murkat said:

Yup. when We were building the JP 2's, Jimmy wanted, insisted on a Gibson made PAF double creme in the bridge position, like his original #2. (everything else is)

Legal and A/R went to Larry with a lic. proposal for just the JP2, for Jimmy's spec wishes.

Nada. Larry responded the only way to do so is to install a DiMarzio made pup....

Jimmy disliked that very very much. He was pissed.

reaaaallly?      I wonder if anyone has any contacts with him....

[cmatthes]

Whadda dick.

[Biz Prof]

The TM application by Larry was a chump move on his part. Legal (for now), but still; a chump move. And I say so as a firm believer in the protection of legitimately derived intellectual property rights. If someone had tried to copy the DiMarzio font style on the screen printed logo on the face of a double-creme "DiGiorno" humbucker, then I'd be firmly on Larry's side of the argument. The protection of a bobbin color for one pickup manufacturer is simply asinine. 

[kizanski]

2 minutes ago, Biz Prof said:

The protection of a bobbin color for one pickup manufacturer is simply asinine. 

Especially when that manufacturer wasn't the one who "invented" it.

[Andrew]

Make 'em one shade darker and call it double-buff.

[WolfeMacleod]

2 hours ago, murkat said:

Yup. when We were building the JP 2's, Jimmy wanted, insisted on a Gibson made PAF double creme in the bridge position, like his original #2. (everything else is)

Legal and A/R went to Larry with a lic. proposal for just the JP2, for Jimmy's spec wishes.

Nada. Larry responded the only way to do so is to install a DiMarzio made pup....

Jimmy disliked that very very much. He was pissed.

Ok, so a little while ago I spoke with Cathy Duncan @ SD.  I've been working closely with her on this matter for over a year now.  They still have contact with Page, and I suggested that it's possible he would be interested in getting involved, if he were that upset about it.

How long ago did your story happen? 

 Do you still work for Gibson? 

[Biz Prof]

30 minutes ago, Andrew said:

Make 'em one shade darker and call it double-buff.

Nigel Tufnel could be an endorser. "Well, it's one.....darker, innit?"

[murkat]

1 hour ago, WolfeMacleod said:

How long ago did your story happen? 

 Do you still work for Gibson?

1. Not a story. But a true fact. GCS was doing the JP Historic Les Paul #2 (with all the switching). 2009/ 2010 timeline.

I built out and setup most of them.

2. I do not. I saw my way out late 2010. I still have but limited contacts within.

Just the other week, I had lunch the other week with my former, boss, who is still there.

Apparently, Henry fired all A/R people, and His son now runs A/R solo. (picture a drunk albatross).

a bunch of other lil tid bits as well, but nothing to get worked up about.

[WolfeMacleod]

6 minutes ago, murkat said:

1. Not a story. But a true fact. GCS was doing the JP Historic Les Paul #2 (with all the switching). 2009/ 2010 timeline.

I built out and setup most of them.

2. I do not. I saw my way out late 2010. I still have but limited contacts within.

Just the other week, I had lunch the other week with my former, boss, who is still there.

Apparently, Henry fired all A/R people, and His son now runs A/R solo. (picture a drunk albatross).

a bunch of other lil tid bits as well, but nothing to get worked up about.

Ahha, I didn't mean to imply that the story was false, sorry. I just wanted to know the timeline.    I'm very glad to hear that it's true, and I hope that Cathy D. can persuade JP to take part.  It'd mean that Gibson could finally do <cough> "accurate" reproductions of some very famous guitars...  which strikes me as odd, since...  

 ...I tried to get Gibson involved, but they're not interested...  however, Fender and Schecter guitars might be.  I spoke with the Prez of Schecter a week or two ago, and they weren't even aware of the trademark.. but what we spoke about makes me think they might be "in"   I've spoken a couple times with someone who's part of Fender's legal dept, and he's talking to the powers that be.

Glad to hear you got out of Gibson. I hear it's a miserable place.     

 

[murkat]

2 minutes ago, WolfeMacleod said:

Glad to hear you got out of Gibson. I hear it's a miserable place

It is. but, I had it pretty good. working in the Pro Shop dept., working on celeb's guitars.

Meeting all kinds of guitar celebs that are just the same as you and me, well, almost....

fond memories for sure. Parting was on my part, I left, on good terms.

They (Henry) would not pony up, I had to walk on principle.

Henry won't get involved unless it hits his wallet. If it did, rest assured, the wraith would be ensued.

Good luck Wolfe. anyway I can assist, lmk.