Activision licensed the Gibson trademark and trade dress in November 2006 in connection with Guitar Hero’s "custom guitar controller peripheral." Activision paid a one-time fixed license fee to cover the term of the license and Gibson agreed to help promote the Guitar Hero product.

In January 2008, Gibson sent a letter to Activision requesting that it secure a license under Gibson’s U.S. Patent No. 5,990,405 ("the ‘405 Patent") for "the generation and control of a simulated musical concert experience and participation by a musician in a pre-recorded musical performance using a musical instrument as a control device" or halt sale of any version of the Guitar Hero game software. Activision denied the request on the ground of noninfringement of any valid patent claim and noted "Gibson knew about the Guitar Hero games for nearly three years, but did not raise its patent until it became clear that Activision was not interested in reviewing the License and Marketing Support Agreement." On March 11, 2008, Activision brought an action in the United States District Court for the Central District of California, entitled Activision Publishing, Inc. v. Gibson Guitar Corp., CV 08-1653-MRP, seeking a declaratory judgment that: (1) Guitar Hero does not infringe Gibson’s ‘405 Patent; (2) the ‘405 Patent is invalid; (3) Gibson is barred from alleging infringement by an implied license and the doctrines of equitable estoppel and laches; and (4) Activision has not breached its agreement with Gibson.

On February 28, 2009, following claims construction and a Markman hearing, the district court granted Activision’s Motion for Summary Judgment and denied Gibson’s Motion for Reconsideration of the Claim Construction Order, sustaining Activision’s Objections to Evidence. As an introduction to its decision, the Court held that "[a]s a general observation, no reasonable person of ordinary skill in the relevant arts would interpret the ‘405 patent as covering interactive video games." The Court held that Gibson’s contention that "the ‘405 patent covers any system when a user controls something ‘musical’ with any device" would mean that "actual musical instrument" would cover every conceivable device. The Court observed that the use of the words "musical instrument" has a much more narrower meaning. The Court also held that the Guitar Hero controllers must be considered independent from the console system to which they are attached and the ‘405 Patent can only read on the Guitar Hero controllers and nothing from the console’s input point onward. Further, the Guitar Hero controllers are not "musical instruments" because they do not make musical sounds within the meaning of the ‘405 Patent or which are "representative of the sounds" the controllers make or are capable of making. The Court further noted that the Guitar Hero controllers are not "musical instruments" in a traditional sense because they do not involve "actual operation of a musical instrument" or use virtual reality-type control devices — both of which were systems disavowed by Gibson in its ‘405 Patent. The Court further criticized Gibson by noting that "Gibson’s doctrine of equivalents arguments border on the frivolous" and "Gibson’s argument about the MIDI protocol actually undermine its position."

This case illustrates how a patent which is narrowly drawn with respect to "a pre-recorded musical performance using a musical instrument as a control devise" does not encompass a virtual reality-type control device, which simulates a musical performance and how a Court can become hostile to an attempt to interpret a patent and claims construction in an expansive and overly broad fashion.

Authored By:

Theodore C. Max

(212) 332-3602