Court Allows San Diego Comic-Con's Suit Against The Salt Lake City Comic Con To Move Forward

from the groan dept

A few months ago, we alerted our readers that a trademark dispute between the San Diego Comic-Con and a company producing a Salt Lake City Comic Con, originally filed in 2014, was still going on. In fact, the district court hearing the case just recently ruled on several motions from both parties, including motions for judicial notice (essentially having the court affirm basic facts about the case), motions to exclude expert testimony, and motions for summary judgement. On the face of it, the news is mostly bad for the Salt Lake City convention, with nearly every ruling coming down against it. However, digging into the ruling itself, there is a light at the end of the tunnel.

As for the bad news, it seems to be mostly of the Salt Lake City Comic Con's own making, or the making of its legal team. The court points out that the defendant's lawyers motion and defenses are all over the place, in some places arguing for generecide -- or that "comic con" has become a generic term -- while in others arguing that "comic con" is generic ab initio -- or that the term was generic even prior to San Diego Comic-Con's initial use of it. It's an important distinction for a couple of reasons, including that the defenses SLC has stated it will make revolve around genericide, yet much of the evidence in the motions in this ruling revolve around generic ab initio and, more importantly, the 9th Circuit doesn't have any precedent or acknowledgement of generic ad initio as a matter of law, and this district court is governed by 9th Circuit precedent.

Unfortunately for Defendants, the Ninth Circuit has not recognized a genericness ab initio theory of defense. Instead, the Ninth Circuit very clearly states that there are only five categories of trademarks: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). No case law from this circuit separates genericness into two different types nor have Defendants provided the Court with Ninth Circuit precedent that adopts their arguments. Accordingly, as there is no dispositive basis or Ninth Circuit jurisprudence to accept an argument revolving around a generic ab initio defense, the Court GRANTS Plaintiff’s motion for summary judgment on this contention.

So, yeah, not a real good look on the part of the SLC's legal team. Later in the ruling, the court goes on to rule against SLC's motion for summary judgement, which was essentially asking the court to rule that "comic con" is now a generic term. The court declined to do so, moving the case forward. But it's important to note that the court, in a ruling that otherwise dealt somewhat harshly with SLC's lawyers, makes a point of noting that it did not deny the motion because Salt Lake City doesn't have the facts on its side. Instead, the court notes that in motions like this, favorable weight is generally given both to the plaintiff and to any holder of a valid trademark (the plaintiff again, in this case), and that's what precludes the court from granting a summary judgement. The ruling goes on to state:

After a careful review of the parties’ moving papers, the applicable law, and the evidence on the record, the Court finds that Defendants have satisfied their burden of demonstrating a genuine issue of material fact as to genericide. “Federal courts [] view usage of [a] term by competitors in the industry as strong evidence of how the public perceives them.” Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1190 (C.D. Cal. 2007). “The more members of the public see a term used by competitors in the field, the less likely they will be to identify the term with one particular producer.” Id. Here, Defendants produce evidence that demonstrates that “comic cons” are held in nearly every state of the United States including New York Comic Con, Amazing Arizona Comic Con, Emerald City Comic Con, and Tampa Bay Comic Con. (Doc. No. 223-1 at 39, 101, 129, 160.) This evidence of over 100 competitors using the unhyphenated form of Plaintiff’s trademark strongly suggests that the mark is generic. Consequently, this is persuasive evidence of genericide. See CG Roxane LLC v. Fiji Water Co. LLC, 569 F. Supp. 2d 1019, 1027 (N.D. Cal. 2008) (holding that a competitors use of a mark is compelling evidence of genericness as it reflects how the public identifies the term).

Due to that, the court denied San Diego Comic-Con's motion to deny SLC that defense. So, when the trial moves forward now, it should be clear exactly what the defense by Salt Lake City will be: generecide. Given this ruling's opinion of the facts on that question, it appears that defense will be quite strong.

It's something of a canary in the coal mine for the SDCC, in other words. I somewhat expect we'll now hear more talks of a settlement before this goes much further.


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  • icon
    That Anonymous Coward (profile), 19 Sep 2017 @ 7:39pm

    But you're both pretty cons, you can both go to the ball.

    Stop pretending you own the whole fscking concept & spend the money you wasted on this shit to make your con better.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 19 Sep 2017 @ 8:07pm

    It seems so rare to run into an actual case of what I'd call trademark infringement, such as one company intentionally attempting to deceive potential customers into believing their product or service is actually provided or endorsed by another company. It seems like most of it is just "hey, I use that word/color/symbol in my product, so you can't also!"

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 19 Sep 2017 @ 9:02pm

      Re:

      It seems like most of it is just "hey, I use that word/color/symbol in my product, so you can't also!"

      Funny how neither plaintiffs nor defendants in trademark cases have interests which align with the public's interest.

      reply to this | link to this | view in chronology ]

    • identicon
      scott, 24 Sep 2017 @ 9:45am

      Re:

      Check out Entrepreneur v Scott Smith if you want to see a bad case of infringement. A brand name bully!!!

      reply to this | link to this | view in chronology ]

    • icon
      That Anonymous Coward (profile), 19 Sep 2017 @ 10:50pm

      Re: idiocy

      Stop making it easy for their lawyers to line up the next targets to shake down.

      reply to this | link to this | view in chronology ]

      • identicon
        Annonymouse, 20 Sep 2017 @ 5:23am

        Re: Re: idiocy

        Can we just line up the lawyers and their investor groups?

        The more I read about these happenings the more I get the feeling the only solution is to totally scrap each and every branch of government and start fresh. We can save money by subcontracting the retirement packages to Siberia.

        reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 20 Sep 2017 @ 5:42am

    The SDCC are idiots. They tried to get the defense tossed out of court but the judge wasn't hearing it. That smells of desperation by the SDCC because they know there is a strong chance that their trademark is going to be found to be generic and they could end up having not only their lawsuit fail but also seeing a court rule their trademark on "comic con" as too generic.

    How the hell they were even allowed to get a trademark on 'comic con" beats the hell out of me. They should have only had a trademark on 'San Diego Comic Con" NOT "comic con". Because "comic con" describes an event that encompasses every comic convention in the world.

    That's akin to getting a trademark on the word "Cosplay". It's ridiculous and insane. It's just a generic descriptor.

    reply to this | link to this | view in chronology ]

  • icon
    Scott S. (profile), 20 Sep 2017 @ 11:00am

    The phrase "comic con" is clearly generic, and "'comic cons' are held in nearly every state of the United States." So why is San Diego Comic-Con betting the farm by going after far away Salt Lake City Comic Con? What greedy idiots. BTW, not to be sexist, but it sure seems like these ridiculous trademark cases always involve male egomaniacs.

    reply to this | link to this | view in chronology ]

    • identicon
      marc, 24 Sep 2017 @ 7:55am

      Re:

      You can say it is a generic phrase now. But years ago when it was small and only drew a few hundred people nobody else cared.
      But now that it has grown into something huge and profitable everybody wants to jump in and get a piece of their pie. We have trademarks for a reason and they have every right to defend theirs be it male or female or other.

      reply to this | link to this | view in chronology ]

  • icon
    McFortner (profile), 20 Sep 2017 @ 11:43am

    Don't they teach this at MBA school?

    Hey, if you can't get rid of the competition by being better than they are, sue them!

    reply to this | link to this | view in chronology ]

  • icon
    MyNameHere (profile), 21 Sep 2017 @ 4:06am

    You could also take this the other way, which is that the judge has pretty much limited their defense as well. It would appear that he is saying that only the issue of generecide will matter.

    Generecide is, IMHO, a sort of affirmative defense at this point. Yes, we know there is a trademark, but we think it' now a common word or phrase. If the court does not agree, then the trademark violation is a fait accomplis.

    reply to this | link to this | view in chronology ]

    • icon
      The Wanderer (profile), 21 Sep 2017 @ 9:12am

      Re:

      Nit/peeve (applicable both to the above comment, and more importantly, to the main article): the word is "genericide", not "generecide". It's spelled correctly in the quotes from the court rulings, but all but one other usage in the article gets it wrong.

      reply to this | link to this | view in chronology ]


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