Comic Con or Comical Conflict?

Introduction:

How important is our name to us? Do we view it as just a sound people make in order to get our attention, or is it really important to us? A celebrity may change their name when it’s already taken by another celebrity or if they want to sound more professional in the artistic world. There are shortened versions of long names and elongated versions of short names. But if someone started using a nickname that you gave yourself, would you sue them for it? To quote Professor Dryer, spending time on that would sound like “a bunch of piddlyshit,” wouldn’t it? Who would spend time debating such a thing? Well, one corporation, in particular.

Background:

At the July 2014 San Diego Comic Convention (“comic con,” for short), an Audi R8 was seen driving around the convention skinned with the name “Salt Lake Comic Con” on the hood of the car, promoting the yearly, Utah-based convention that had started in the Fall of the previous year. San Diego Comic Con, not wanting their trademark to be used without their consent, subsequently filed a lawsuit against the founders of Salt Lake Comic Con.

San Diego Comic Convention (SDCC) is a non-profit organization that brings together a large group of people who share an “appreciation for comics and related popular art forms, including participation in and support of public presentations, conventions, exhibits, museums and other public outreach activities which celebrate the historic and ongoing contribution of comics to art and culture.”1

Salt Lake Comic Convention (SLCC, currently known as “FanX”) is “Dan Farr Productions’ annual event, and is now the most attended convention in the state of Utah and the largest comic convention in North America per capita. . . [and] is dedicated to producing spectacular celebrations of popular culture that lead the market in providing exceptional and rewarding experiences for our consumers, fans, celebrity guests, vendors and partners.”2

The Case:

In August of 2014, SDCC filed a lawsuit against Daniel Farr and Bryan Bradenburg, co-founders of Dan Farr Productions (DFP) and SLCC/FanX, on two complaints:

1. Federal Trademark Infringement (under 15 U.S.C. s 1114); and

2. False Designation of Origin (under 15 U.S.C. s 1125(a))3

Since 1970, SDCC has held its Comic Convention every year in San Diego, California. DFP, however, has only held its Comic Convention every year since 2013 in Salt Lake City, Utah. The SDCC trademarks at issue in this case are:

1. Comic-Con;

2. Comic-Con International;

3. Anaheim Comic-Con; and

4. [symbol]5

SDCC proposed that the court in San Diego, California had personal jurisdiction over DFP. The jurisdiction was classified as personal due to “information and belief” that DFP “advertise[d] and transact[ed] business throughout the United States, including in the State of California;” that DFP has “purposely availed [itself] of doing business . . . by, among other things, advertising and promoting the convention in this district;” and that DFP “[has] also engaged in continuous acts of trademark infringement . . ., and [has] caused injury to SDCC in this district as a result of such conduct.”3

The question of this case is whether or not DFP infringed SDCC’s trademarks. The actual jury trial lasted eight days and on December 8, 2017, the jury found that DFP had infringed SDCC’s trademarks through the use of advertisement. As to false designation of origin, the jury ruled in favor of DFP. Although SDCC owns the trademark, the judge denied SDCC’s request to bar DFP from using the term “Comic Convention,” saying such an order would “prohibit legal conduct.” 4

As a result of the jury ruling, the judge ordered DFP to pay $20,000 for infringing the federally registered marks of SDCC. 4 In a separate order, the judge granted a motion from SDCC and ordered DFP to pay SDCC $4 million in attorney fees and costs.5 The judge granted the motion for attorneys' fees based on the reasoning found under Section 35(a) of the Lanham Act, 15 U.S.C. s 1117(a) regarding “exceptional cases.”6

The nonexclusive factors in determining if a case is “exceptional” include: “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence. . . . [Examining] the totality of the circumstances, the Court finds that this case is not a dime a dozen. Instead, it is a trademark infringement lawsuit that stands out from others based on the unreasonable manner it was litigated and thus an award of attorneys' fees and costs to SDCC is justified.”5

Questions:

1. Do you agree with the court’s decision that this case qualified as “exceptional” and that the award for attorneys’ fees and costs to SDCC was “justified”?

2. Who is your favorite superhero or comic book character?



Cited Sources
1. San Diego Comic Con International

2. FanX Salt Lake Comic Con

3. Original Complaint (2014) 2014 WL 3953967

4. Comic-Con's trademark enforced, infringement defenses ruled out (2018)
2018 IPDBRF 0084

5. Order Granting Plaintiff’s Motion for Attorneys' Fees (2018)
2018 WL 4078639

6. Recovery for Violation of Rights 15 U.S.C. s 1117(a)


Other Sources
1. WAR OF THE WORDS: San Diego Comic-Con officially files lawsuit against Salt Lake Comic Con (2014)
https://www.heraldextra.com/entertainment/special/comic-con/san-diego-comic-con-officially-files-lawsuit-against-salt-lake/article_332b66d3-0f69-5a0f-908c-dae3ce94dddd.html

2. Salt Lake Comic Con infringed on San Diego Comic-Con’s name, should pay $20K, jury says (2017) https://www.sltrib.com/news/2017/12/09/jury-sides-with-san-diego-in-comic-con-trademark-infringement-dispute/

3. FanX ordered to pay San Diego Comic-Con's $4 million legal fees for trademark lawsuit (2018) https://www.deseret.com/2018/8/24/20651976/fanx-ordered-to-pay-san-diego-comic-con-s-4-million-legal-fees-for-trademark-lawsuit