Viacom Asks Judge to Dismiss Gibson’s Trademark Infringement Lawsuit

February 12, 2013, by Mandour & Associates, APC

Los Angeles – Viacom International Inc., owner of the Nickelodeon television network, told a Los Angeles federal judge that Gibson Guitar Corp.’s lawsuit accusing Viacom of infringing Gibson’s trademarks should be dismissed because the alleged infringing goods were never sold in the United States.

The guitar manufacturer filed the lawsuit against Viacom in the California Central District in Los Angeles when it learned of sales of V-shaped ukuleles featuring the popular Nickelodeon cartoon character SpongeBob SquarePants.  Gibson claims that the ukuleles infringe its trademarked “Flying V” electric guitar and peg head design in violation of the Lanham Act.

In the complaint, Gibson said Viacom and codefendant John Hornby Skewes & Co. Ltd. (JHS), an instrument distributor in the United Kingdom, have used the trademarks of Gibson in order to mislead consumers into believing Gibson makes the ukuleles.

New York-based Viacom asked U.S. District Judge Dean D. Pregerson to dismiss the lawsuit because U.S. courts lack subject matter jurisdiction over the case.

Viacom claimed that the ukulele was manufactured by JHS in China and was only marketed and sold in Asia, Europe and Latin America.  Because the ukulele was never sold in the United States, Viacom argued that the Lanham Act does not apply therefore United States courts lack subject matter jurisdiction.

The media conglomerate also claimed that Gibson does not have any evidence to back up its assertion that the ukuleles are being sold in the United States and Viacom argued that statements based solely on information and belief should not be sufficient to keep the lawsuit alive.

Viacom admitted it had licensed the use of the SpongeBob trademarks to JHS for use on various products.  However, it claims the terms of the agreement expressly prohibit any of the products from being sold in the United States.

Viacom also claimed that it had nothing to do with the design of the ukuleles and have only been lumped into the lawsuit with JHS because said it licensed the SpongeBob trademarks to JHS, rather than because it had done anything wrong.

Gibson filed the lawsuit against Viacom in Los Angeles in December with a variety of claims including trademark infringement, trade dress infringement, counterfeiting, unfair competition and false designation of origin.