San Diego Comic-Con Petitions Judge To Have Salt Lake Comic Con Pay Its Attorney's Fees, Bar It From Calling Itself A 'Comic Convention'

from the don't-describe-yourself dept

Perhaps you thought that the legal drama between the famous San Diego Comic-Con and the Salt Lake Comic Con was over. Our ongoing coverage of this trademark dispute stemming from SDCC somehow having a valid trademark on "comic-con", a shortened descriptor phrase for a comic convention, largely concluded when SDCC "won" in court, being awarded $20,000 after initially asking for $12 million in damages. With the focus now turning to the roughly gazillion other comic conventions that exist using the "comic-con" phrase in their names and marketing materials, this particular dispute seemed to have come to a close.

But not so much, actually. In post-trial motions, SDCC petitioned Judge Battaglia to consider the case "exceptional" so that SDCC can recover attorney's fees from SLCC. The arguement for SDCC appears to mostly be that they spent a shit-ton of money on attorneys for the case.

U.S. District Judge Anthony Battaglia heard a host of posttrial motions Thursday, including San Diego Comic-Con’s request for over $4.5 million in attorney fees which have already been paid in full. San Diego Comic-Con attorney Callie Bjurstrom with Pillsbury Law told Battaglia Thursday he should find the case is “exceptional” so that attorney fees and costs can be awarded.

“This was a very expensive case; the reason this case was so expensive was because of defendants and their counsel and the way they litigated this case,” Bjurstrom said.

It will be interesting to see how Judge Battaglia rules on the assertion that SLCC's defense of itself warrants its paying SDCC's attorney's fees. What exactly was SLCC supposed to do, not try to defend itself in the best way possible? One also wonders if SDCC would be petitioning for attorney's fees had the jury found that SLCC's infringement was not willful, resulting in the paltry $20k award. Perhaps, perhaps not. What this sure looks like is the SDCC realizing that this "win" came at the cost of a hilariously large amount of money and it is attempting to mitigate that loss.

SDCC also petitioned the court to bar SLCC from using its trademarks. That sort of thing would be par for the course except for two things. First, again, this trademark is ridiculous. It's purely descriptive. Second, hammering home that fact, SDCC doesn't want SLCC to even be able to properly describe the type of event it is.

But San Diego Comic-Con’s request went a step further than simply asking Battaglia to enjoin the Salt Lake convention operators from infringing its trademarks: it asked the judge to bar the Salt Lake convention from using the words “comic convention” or phonetic equivalents to “Comic Con” or “comic convention.”

That request should lay plain how dumb this all is. If a comic convention cannot refer to itself as such because that is too close to the trademark "comic-con", then it should be plain as day that "comic-con" is purely descriptive and, therefore, invalid as a trademark. I wouldn't be surprised to see this petition to the court turn up at the USPTO in a bid to cancel SDCC's trademark entirely. That's certainly what I would be doing if I were heading up any of the hundreds of comic cons out there.


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  • icon
    That One Guy (profile), 4 Jun 2018 @ 7:40pm

    Greed: For when winning is not enough.

    “This was a very expensive case; the reason this case was so expensive was because of defendants and their counsel and the way they litigated this case,” Bjurstrom said.

    Translation: 'Our legal thuggery cost us a lot of money because our target had the utter gall to fight back and the ruling only gave us a tiny fraction of it back. We want more, make them give it too us.'

    'Actions have consequences' does not an 'exceptional' case make.

    But San Diego Comic-Con’s request went a step further than simply asking Battaglia to enjoin the Salt Lake convention operators from infringing its trademarks: it asked the judge to bar the Salt Lake convention from using the words “comic convention” or phonetic equivalents to “Comic Con” or “comic convention.

    So essentially they tried to claim ownership over the very concept of comic conventions by saying that no-one should be able to use the purely descriptive term of it.

    Yeah, at this point I would love to see the USPTO come to it's senses, realize just how bad this trademark is and yank it entirely. It wouldn't help the Salt Lake Comic-con, but it would at least prevent the thugs in the SDCC from going after more targets.

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

    • identicon
      Thad, 5 Jun 2018 @ 10:15am

      Re: Greed: For when winning is not enough.

      It wouldn't help the Salt Lake Comic-con

      Wouldn't it?

      It seems like if the mark were thrown out, that would make SLCC's appeal a lot easier.

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

      • icon
        Bergman (profile), 5 Jun 2018 @ 10:52am

        Re: Re: Greed: For when winning is not enough.

        As it stands, SLCC has to pay $20,000 and change their name from comic con to comic convention. Appealing might abort the name change but would likely cost more than $20,000.

        Even if the trademark gets tossed, they might be better off just leaving the judgment where it is.

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

        • identicon
          Anonymous Coward, 5 Jun 2018 @ 10:59am

          Re: Re: Re: Greed: For when winning is not enough.

          it asked the judge to bar the Salt Lake convention from using the words “comic convention” or phonetic equivalents to “Comic Con” or “comic convention.”

          San Diego Comic-Con is trying to prevent the obvious and general descriptor being used. Vindictive or what?

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

  • icon
    That Anonymous Coward (profile), 4 Jun 2018 @ 8:14pm

    That tiny hope deep down inside when the idiot with IP brain damage that started all of this manages to kill SDCC by spending all the money suing everyone.

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

  • icon
    wshuff (profile), 4 Jun 2018 @ 9:32pm

    Can’t use Comic-Con. Can’t call it a comicconvention. I guess SLCC will have to go with Nerdapalooza! Suck it, San Diego!

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

  • identicon
    Anonymous Coward, 4 Jun 2018 @ 10:36pm

    2019: Salt Lake City Graphic Novel Gathering has been sued by Wizards of the Coast for infringing on their Magic: The Gathering trademark.

    2020: Salt Lake City Superheroes Social has been sued by Joe's Super Hero Sandwiches for infringing on their trademark.

    2021: Salt Lake City Place for People to Meet to Dress Funny and Pay $45 for Celebrity Signatures has filed for bankruptcy, citing the excessive costs of rebranding every year.

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

    • identicon
      Anonymous Coward, 5 Jun 2018 @ 3:52pm

      Re:

      You forgot about 2022: San Diego Comic-Con sues Marvel, DC, and other publishers for daring to use the words Comic and Comic Books.

      2023: San Diego Comic-Con sues police and prison system for using the word "Con" because it creates a negative impression.

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

  • icon
    Hugo S Cunningham (profile), 4 Jun 2018 @ 10:37pm

    Capitalist bloodsuckers infringe "Comecon" name.

    Capitalist bloodsuckers in San Diego owe massive damages for infringing the prior "Comecon" name.
    https://en.wikipedia.org/wiki/Comecon

    Since they themselves are claiming '*phonetic* equivalents to “Comic Con”' [*emphasis* added], their piracy cannot be considered innocent or accidental.

    Damages can be apportioned to worthy socialist causes.

    http://www.cyberussr.com/

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

  • identicon
    MathFox, 5 Jun 2018 @ 5:46am

    A fair share of the lawyers fee...

    San Diego asked for 12 million and got 20,000... that's 0.17% of what they asked for; so let Salt Lake pay for 0.17% of San Diego's attorney's fees.
    On the other hand, Salt Lake lawyers seriously reduced the award to San Diego; it seems fair that San Diego pays 99.83% of Salt Lake's attorney's fees because they had such unreasonable demands.

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

  • icon
    Wolfie0827 (profile), 5 Jun 2018 @ 7:59am

    Easy fix, all the people that made SDCC great (Fans) need to stop going and start going to SLNCC (Salt Lake city Non-Comic Con.)

    Problem solved.

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

  • icon
    John85851 (profile), 5 Jun 2018 @ 8:06am

    Is SDCC even a comic book convention any more?

    I think I posted this in an earlier discussion of this case, but I'd like to know if more people would be interested in arguing this point:

    Is SDCC even a comic book convention any more?
    I would argue that, no, the primary focus of SDCC is no longer comic books, but the entire pop-culture industry. The evidence should be plain: how many comic book artists are there, compared to how many TV and movie celebrities? Is the focus on comic book themselves or on the many movie and TV projects created from the comics?

    Please correct me if I'm wrong, but wasn't it SDCC where thousands of people camped out in the hallways for a spot in a panel discussion about the "Twilight" movies? In my non-legal opinion, an event can't call itself a "comic book convention" when it's main draw is a panel discussion about a movie!

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

    • identicon
      Anonymous Coward, 5 Jun 2018 @ 9:54am

      Re: Is SDCC even a comic book convention any more?

      how many comic book artists are there, compared to how many TV and movie celebrities?

      There are still far more comic artists/writers/etc. then movie or TV celebrities, which can be easily confirmed just by looking at the guest list. Of course, TV/Movie celebrities tend to be popular with a much wider audience, so you thinking otherwise after a cursory examination can be forgiven.

      Is the focus on comic book themselves or on the many movie and TV projects created from the comics?

      If things derived from comic books do not fall under the umbrella of comics, then even the first SDCC was not really a comic convention. Or perhaps you are just confusing the "Comic Convention" which everyone, including the organizers, believe this event is, with a "Comic Book Convention," which only you believe it is.

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

    • icon
      Bergman (profile), 5 Jun 2018 @ 10:56am

      Re: Is SDCC even a comic book convention any more?

      They can call themselves whatever they like. This was a trademark lawsuit, not a truth in advertising lawsuit.

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

  • identicon
    Anonymous Coward, 5 Jun 2018 @ 2:23pm

    There should be no trademark issued for a common
    word or phrase already in wide use,comic convention is
    widely used an event where comic fans meet up.
    Sddc has become more of a general event for fans of
    tv ,movie,s where most people go to see panels
    promoting new shows or movies mostly based on scifi or superhero franchise,s.
    TO give it a trademark on the words comic con would be ridiculous considering comics are only a small part
    of the Sddc convention.
    Sddc should have lost the case since comic con is just short version of the words comic convention.
    It was sddc,s choice to spend millions on legal fess to defend the term comic con.
    Anyone should be able to use the words comic book
    convention ,regardless of trademarks to descibe a public event where fans of comicbooks meet up .
    The word con or convention was not invented by the
    Sdcc .

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


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