Trademark

from the comic-can't,-amirite? dept

Editor’s Note from Mike Masnick: Tim alerted me that he was writing on this subject, based on the article he found in the Deseret News, and I realized that we separately needed to reveal some stuff that happened earlier this year in relation to Tim’s earlier reporting on this story. As Tim mentions in the story below, he first wrote about this case in 2014 (again, based on an article he found in the Deseret News) and then mentioned it obliquely in 2015 when discussing another lawsuit, and until now, had not written about it again. Back in February, one evening, I received a knock on my front door at home, with a process server handing me a subpoena. I was… confused. The subpoena was from a lawyer, Michelle Herrera, of the very large law firm Pillsbury Winthrop Shaw Pittman, on behalf of San Diego Comic Con. I was still confused. The subpoena demanded all sorts of information from us, including any “business relationship” we might have with the people who ran the Salt Lake City Comic Con (including whether or not they held any ownership stake in our company), any communications we had ever had with the organizers of Salt Lake City Comic Con and… incredibly… “all documents concerning SDCC or any SDCC Convention.”

Yes, because three years ago we had written a story — clearly based on coverage in the Deseret News — San Diego Comic Con was demanding that we cough up every document we have that even mentions San Diego Comic Con, while similarly implying that merely having written about a legal dispute (something we do all the damn time) meant that we were somehow in cahoots with the folks who run Salt Lake City Comic Con — people neither Tim nor I (nor anyone else working here) have ever spoken to in any context for any reason. Such a request, beyond being over-broad and completely misguided, is also a nuisance and a burden. At best, it appeared to be a wild and unnecessary fishing expedition. At worst, it could certainly be seen as an attempt to stifle reporting that was critical of San Diego Comic Con’s litigation strategy.

It also wasted our time and resources, while at least creating something of a chilling effect in making us think twice about whether it was even worth it to publish the article below, because who knows if it will lead to another knock on my door, and more time having to talk with lawyers and whatnot.

Either way, soon after receiving the subpoena, lawyer Ken “Popehat” White, filed our response, noting that we had no responsive documents for most of it, but also objecting to the overly broad nature of the request. The key part:

With respect to request 7, seeking ?All documents concerning SDCC or any SDCC convention,? Witness responds that the request is over-broad, burdensome, harassing, not reasonably calculated to lead to production of admissible evidence, and seeks documents equally available to Plaintiff. Witness operates a popular blog, Techdirt.com, that has covered legal issues surrounding technology and internet culture since 1997. Plaintiff has served this subpoena because Witness has published two posts critical of Plaintiff?s case. The public posts Witness has published about SDCC or mentioning SDCC are equally available to Plaintiff at https://www.techdirt.com/blog/?tag=comic+con or https://www.techdirt.com/search-g.php?q=comicon. It would be extremely burdensome and expensive for Witness to review 20 years of records of reporting to determine if it has any document mentioning SDCC or any SDCC convention, whether or not those documents have any relationship to this case. Moreover, Plaintiff?s motive to seek such a wide range of documents unrelated to this case is clearly to harass and retaliate against Witness for critical coverage of Plaintiff?s case. Moreover, Witness objects pursuant to California Evidence Code § 1070 that the subpoena seeks unpublished information from a publisher. O’Grady v. Superior Court, 139 Cal. App.4th 1423 (Cal. Ct. App. 2006) [Section 1070 protects online news magazine]. Witness stands on its objections and will not produce documents in response to this request.

We filed that in response and never heard another peep from San Diego Comic Con. But, Tim found this latest bit of news and wished to report on it, and we felt it necessary to waste even more time putting together this bit of disclosure about SDCC’s subpoena to us. No wonder the damn case is still going. Anyway… on to Tim’s post:

Nearly three years ago, we wrote about a rather silly trademark dispute between the folks that run the San Diego Comic-Con and Don Farr Productions, organizers of the Salt Lake City Comic Con. The SDCC has a registered trademark for “comic-con” and suggested that iterations such as “comic con” infringed on that trademark. We pointed out at the time that there are all kinds of comic conventions using similar or identical terms, and many had done so for many years, resulting in the term “comic con” being rendered generic. Add to that the low likelihood that anyone would actually be confused into thinking these other conventions were the product of the SDCC and this whole episode seemed head-scratchingly silly.

Except it isn’t silly for those targeted by these kinds of bullying trademark lawsuits. Despite the SDCC filing its suit in the summer of 2014, I want to take a moment to point out that this legal dispute is still going on and has finally reached the deposition phase.

Co-founders Dan Farr and Bryan Brandenburg will each face a full day of deposition Tuesday and Wednesday, leading up to a final settlement conference before a federal judge in San Diego on Thursday. Following that conference, the judge will decide whether the case will continue to advance toward a trial scheduled in October. While the organizers staunchly maintain they are in the right, Brandenburg says that after investing approximately $1 million in their defense, they are ready to focus exclusively on their event.

“I would just as soon use those creative juices to really level up (the event),” Brandenburg said. “I think we’ve done a great job putting on great events over the past two years in spite of this thing going on, but you know, just imagine what we could do if it wasn’t.”

This is the largely unheralded toll that is paid when these kinds of trademark disputes arise. Sure, there is the cost of legal fees to consider, and the annoyance of having to defend themselves in court as well. But there is a cost to the public as well, paid in terms of a lack of production that would otherwise exist by the accused. When individuals or companies that are not truly infringing upon a trademark get caught up in this sort of legal web, their customers suffer along with them.

What’s truly irritating about all of this is how the SDCC appears to have decided to enforce this trademark at the flip of a switch, having spent years failing to do so. The Salt Lake City folks, meanwhile, remain rather sweet in their disposition by comparison.

Brandenburg emphasized that despite the prolonged litigation, he and Farr hold no ill will toward San Diego Comic-Con but continue to admire the iconic event. He speculated that the lawsuit represents a kind of “Custer’s last stand” for San Diego Comic-Con, which has dabbled for years in taking action about other events using the name “comic con,” ultimately latching onto the Salt Lake event after Brandenburg and Farr drove their branded Audi to the competing event in July 2014.

In the lawsuit, the San Diego convention claims legal ownership over the term “comic con” in its various forms, though similar events around the country — including the recently renamed “Stan Lee’s Los Angeles Comic Con” — have used the name for years.

The San Diego Comic-Con remains a wildly successful event. By all accounts, it is one hell of a show, one that I personally have wanted to visit for some time. It reached that level of success despite years of other conventions using some form of the “comic con” term. What harm it may have suffered that would warrant three years worth of litigation, and all of the legal costs associated with that litigation, is absolutely beyond me.

Filed Under: deposition, fishing expedition, subpoena, trademark
Companies: salt lake city comic con, san diego comic con