Our story so far:
Comic-Con is a registered trademark of SDCC, the organizers of the renowned San Diego convention for all things pop culture. SDCC brought an infringement action against the organizers of a Utah event named Salt Lake Comic Con. The defense was that the mark had become generic by widespread use of the same or similar marks by other conventions. Salt Lake also asserted various acts of fraud by SDCC.
As the case moved toward trial, Farr and Brandenberg, the Salt Lake organizers, pressed their case energetically on their website and on social media. Fearing the publicity would taint the jury pool, District Judge Anthony Battaglia issued a broad gag order against further public discussion, which the defendants successfully appealed by writ of mandamus to the Ninth Circuit. (In light of the subsequent developments discussed below, Farr and Brandenberg may wish they had followed the conventional wisdom that it’s never a good idea to seek a mandamus against the judge, particularly a federal judge, who is going to be presiding over your trial.)
The case went to the jury late last year. The verdict was that Comic-Con is a valid mark, but the defendant’s infringement was not willful, and so they awarded a mere $20,000 in damages rather than the $12 million that the plaintiffs sought.
Now, the latest developments:
The parties cross-moved for the verdict to be set aside and a new trial held. Judge Battaglia declined to order a new trial and refused to reverse the verdict of non-willfulness, noting that the proliferation of Comic Cons around the country would have justified the Salt Lake organizers to think that they could use the mark. He did, however, issue an injunction against Salt Lake Comic Con and in a particularly painful blow, ordered it to pay $4 million in SDCC’s attorneys fees and costs. In awarding the fees, the judge found the case to be “exceptional” due to the defendants’ “repeated, re-argued and recycled arguments,” which he found to be “objectively unreasonable.”
Judge Battaglia’s injunction prohibits Farr and Brandenberg from using “Comic-Con,” “Comic Con” or any phonetic equivalent. It also bars them from advertising that their event was “formerly known as Salt Lake Comic Con.” In what is probably cold comfort, the judge permitted the defendants to use the expression “comic convention,” and they were not required to destroy existing merchandise and marketing materials.
The Salt Lake lawsuit was only one of many that SDCC has brought against other “Comic-Con” operators, which were put on hold pending the outcome of this case. We should expect a spate of settlements in the coming months in which SDCC’s competitors either change their names or enter into trademark license agreements. This saga is not necessarily over–Salt Lake can still appeal–but for now things are looking good for the Empire.