The Hub

Since most of us fix or make guitars, we have probably heard something about the cease and desist letters Fender has sent out concerning the Stratocaster. I thought I would offer some thoughts. As always, caveat emptor.

There are three basic ways to protect intellectual property under Federal law. Patent, trademark, and copyright. Each protects different things, and has different underlying legal theories.

Lets begin with patents. To get patent protection, normally you need to have a patent. A validly issued patent protects the holder from infringement for a period of years. Amid all the recent kerfuffle about the Fender default judgment in Dusseldorf, some commentators suggested that Fender has or had a design patent on the Stratocaster body shape. I've looked, and can find no evidence of that. The most often cited reference is US 2,741,146, which covers the Strat's tremolo device, not its body shape. That's confirmed by its title: "Tremolo Device for Stringed Instruments," by Clarence L. Fender." Vintage Strats (early to mid-1960s) showed up to five patent numbers on the headstock decal: 2,573,254 (for the bridge and pickup assembly) / 2,741,146 (tremolo device)/ 2,960,900 (guitar) / 3,143,028 (adjustable neck construction) / 2,817,261(pickup and circuit). But these cover mechanical and electrical features — not a body outline. The 900 comes the closest, perhaps, but it is a patent that covers the utility of design features in the guitar (this is really problematic for the copyright claim--see below) not the shape of the guitar. And the shape depicted in the 900 patent doesn't match the Strat. (See the attached image). Further, a design patent would have a "D" prefix. None has this. Fender appears to have one "D" patent, D169,237 — but that is either the Nocaster or Telecaster, certainly not the Strat.

Concerning trademarks, in 2003 Fender filed an application to trademark the Strat body shape (and the Tele and P-Bass as well), but in 2009 the Trademark Trial and Appeal Board (rather thunderously) rejected those applications. The TTAB found: "The applicant has not established acquired distinctiveness such that these two-dimensional outlines of guitar bodies, standing alone, serve to indicate source. The evidence overwhelmingly demonstrates that these configurations are so common in the industry that they cannot identify source." The TTAB then sort of poured it on: It said the Stratocaster body outline "is so common that it is depicted as a generic electric guitar in a dictionary."

Finally, we go to the issue Fender relied on in Dusseldorf: copyright. First off, as far as I know, Fender's cease and desist letters were sent to US manufacturers. If Fender relied on the German Court's decision, that is problematic. It was a default judgment (which means the defendant didn't even show up to attempt a defense, and a default judgment is usually entitled to about zero precedential value in US court). Second, and perhaps even more important, German and EU copyright law is different from US copyright law.

You might be tempted to think that the TTAB's decision closed the door for Fender on the copyright claim. It didn't, because the legal issue is different. The key question in a Trademark case usually concerns whether the product is so distinctive that it suggests to consumers who made the product. Copyrights are intended to reward creative authorship, not prevent consumer confusion. So a different legal standard applies to determine copyright protection. The copyright question begins with the language of the Copyright Act of 1976. It protects "Original works of authorship fixed in a tangible medium of expression." Perhaps sounds good for Fender so far. But under the Act's separability test, copyright protection does not extend to useful articles or attributes of a product, unless the "artistic" features can be separated from the functional ones. In other words, can the aesthetic elements of the Strat be separated from the functional ones enough to stand on their own as protectible art, and not as functional attributes of the product? I think you might have a difficult time convincing most guitar players that the contours, cutaways, and proportions of the Strat don't relate to how it functions: they provide comfort, feel, balance, access to upper frets, and perhaps even impact how the guitar sounds.

That isn't the only hill Fender would have to climb to win a copyright claim. By my reading, in 1954, when the Strat first came to market, the 1909 Copyright Act was in effect. That Act required the item to be sold with a copyright notice. (Section 9 says: "any person entitled thereto by this Act may secure copyright for his work by publication thereof with the notice of copyright required by this Act; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor.") If you didn't provide notice, you were considered to have made the work a part of the public domain. And it doesn't appear Fender filed a copyright application for the body shape (at least I can't find one).

Maybe I'm missing something here, but IMHO the function-related attributes of the Strat shape, the lack of a filed copyright, and 70 years of standing by while others copied the design (and even mocking the copied designs in their ads), each creates big obstacles for Fender should they decide to take the next step and start suing other makers in the United States.

This is simply my humble opinion (I am not an intellectual property lawyer, though I played one on TV once). YMMV. And by the way, I absolutely love the S (and the T).