FanX, Previously Salt Lake Comic Con, Ordered To Pay $4 Million For San Diego's Con's Attorney's Fees, Barred From Calling Itself A Comic-Con

from the by-any-other-name dept

It's the trademark story that simply won't go away and in which the legal system appears to get everything wrong. The saga of the San Diego Comic-Con's legal adventures against what was formerly the Salt Lake Comic Con (now rebranded as FanX Salt Lake Comic Convention) has been brutally frustrating. The whole thing started when the SDCC decided somewhat out of the blue to begin enforcing a trademark it had been granted for "Comic-Con" against the Utah production. The trademark original sin of this story began all the way back with the USPTO, which absurdly granted the SDCC its trademark for a purely descriptive term, one which is only unrecognizable as such due to the shortening of the second word from "convention" to "con." Despite that, the trademark suit brought against the Salt Lake Comic Con somehow ended in a win by jury for the SDCC, which was awarded only $20k. In the trial, SLCC had pointed out several times that the term "comic-con" was both descriptive in nature and clearly had been abandoned by SDCC, evidenced by the long list of other comic conventions going by the term carried out throughout the country.

Deep breath.

Well, after getting its five-figure award for a lawsuit that ran the course of nearly half a decade, SDCC realized that it sure would suck to be stuck with its $4 million in legal fees at the end of the day, so it petitioned the court to force SLCC/FanX to pay those fees. Oh, and in accordance with the jury's finding that there was trademark infringement, it asked the court as well to ban FanX from calling itself a comic con, a "comic convention", or any phonetic versions of those terms. Such a request itself validates the claim that SDCC's trademark is descriptive. If a comic convention cannot call itself a "comic convention" due to an existing trademark, that trademark is descriptive, full stop.

Unfortunately, because the world doesn't make sense any longer, the judge in the case did issue an injunction against FanX calling itself a "Comic-Con" and ordered FanX to pay SDCC $4 million in attorney's fees.

A California court has ordered FanX Salt Lake Comic Convention, and FanX creators Dan Farr and Bryan Brandenburg to pay nearly $4 million in legal fees to San Diego Comic Con-International (SDCC).

The judge also issued a permanent injunction against FanX, barring it from using the "Comic-Con" brand including reminding consumers that it used to be known as Salt Lake Comic Con.

First, the attorney's fees are awarded based on the judge's ruling that this was an "exceptional" trademark case. That designation has typically been reserved for when an infringement is deemed willful or malicious. In this case, the jury's low award was based on its determination that SLCC's infringement was neither. However, the law is quite vague and carves out space for the court to deem a case exceptional based on perceived bad behavior by the defendant or its lawyers. This is where the judge details a long list of complaints about how SLCC litigated, how it responded or failed to respond to the court's requests, and how it handled procedural process. It originally ordered the legal fees be paid, only to agree to delay while FanX appealed the case. This most recent ruling reaffirms the attorney's fees payment, even as the appeal is ongoing.

Meanwhile, the ruling also orders the injunction against FanX calling itself a "comic-con" or any variation therein. The court did not, fortunately, go so far as to bar the use of "comic convention", however.

Battaglia, in his order on an injunction, has enjoined Salt Lake from "Comic Con" and "Comic-Con" and any phonetic equivalents (i.e. ComiKon). Additionally, Farr and Brandenburg can't operate any social media site that incorporates the trademark, nor can they even advertise how the festival they run was "formerly known as Salt Lake Comic Con."

On the other hand, the judge rules it would go too far to prevent the phrase "comic convention" and won't require defendants to destroy all of their already-made merchandise and marketing materials bearing the banned phrases.

But, again, all that really does is point out just how absurd this all is to begin with. The daylight between "comic con" and "comic convention" is so thin as to be laughable. Both are descriptive and there is nothing original or unique about the shortening of a single word of the phrase. It's still descriptive and does not serve as a source-identifier. And, yet, seven letters make all the difference?

The real key to all of this is the appeal of the trademark case. Depending on how that goes, this all may be moot. But given how nothing in any of this has concluded with results that make any sense thus far, I'm not holding out much hope.

Filed Under: comic convention, comic-con, comicon, injunction, trademark
Companies: fanx, san diego comic-con, sdcc, slcc


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  • identicon
    Anonymous Coward, 26 Apr 2019 @ 1:58pm

    I find it interesting that a Comic Con isn't supposed to involve comedians nor confidence tricksters.

    I hope this is the beginning of the end for FanX's legal problems. And I hope SFCC gets new lawyers. This whole thing was stupid.

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

  • icon
    That Anonymous Coward (profile), 26 Apr 2019 @ 2:09pm

    Its almost like the legal system is lopsided to those with IP who claim they were harmed...

    We didn't enforce our ip for a long time, but now we are so make them cover out bills.
    We didn't have any proof the billpayer was the infringer, but don't you dare make us pay them for defending themselves against our case.

    Of course everyone will still show up at SDCC, because they fear missing out. It would be nice if the fans made a point of skipping it & being loud about it to the big names who roll things out there. Supporting someone who thinks they have the right to control an entire fandom seems like a really bad play that is only going to make there be fewer... so what if you can't afford SDCC prices, we killed your local events so we're the only game in town. Pissing on fans used to be a sure way to destroy your brand, but now they just enjoy the refreshing shower.

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

    • icon
      Thad (profile), 26 Apr 2019 @ 3:07pm

      Re:

      The vast majority of SDCC attendees have never even heard about this story.

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

      • identicon
        bob, 26 Apr 2019 @ 3:09pm

        Re: Re:

        How do you know that?

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

        • icon
          Thad (profile), 26 Apr 2019 @ 4:24pm

          Re: Re: Re:

          Because the vast majority of people have never heard about this story. It hasn't gotten wide news coverage. Trademark suits usually don't.

          Most people do not read sites like Techdirt. While Techdirt readers have been aware of this story for years, it's not on most people's radar at all.

          SDCC sells out every year. The capacity of the convention center is 130,000, but the convention takes place over multiple days and not every attendee buys a ticket for every day, so selling out means more than 130,000 attendees. (The most recent year I can find a more precise number for is the Wikipedia entry, which says there were 167,000 attendees in 2015, citing the LA Daily News for that number.)

          Out of more than 130,000 attendees, how many do you expect are aware of this trademark dispute?

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

          • identicon
            Jerry Riggs, 26 Apr 2019 @ 6:47pm

            Re: Re: Re: Re:

            Thad, you were asked:

            How do you know that?

            You repeated the assertion, put up irrelevant link and some numbers, and end by repeating the question back!

            In other words, you pulled that number out of the blue and won't admit.

            Yet you pretend you're a precisian and have been nagging as Resident Grammar Nazi.

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

  • identicon
    Anonymous Coward, 26 Apr 2019 @ 3:02pm

    "Bring it on!" they said.

    Consider it ber-roughten.

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

  • icon
    Mason Wheeler (profile), 26 Apr 2019 @ 3:03pm

    Trademarks are handed out by the US Patent and Trademark Office. They have a ex parte review system for challenging bad patents and getting them invalidated; do they have anything similar for bad trademarks?

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

  • identicon
    Anonymous Coward, 26 Apr 2019 @ 3:15pm

    Maybe instead of FanX, the Salt Lake Comic Con should rename themselves the Salt Lake Comic Vention.

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

  • identicon
    Anonymous Coward, 26 Apr 2019 @ 4:46pm

    I better change the name of TechSlime….

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

  • identicon
    Anonymous Coward, 26 Apr 2019 @ 9:38pm

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

    • icon
      Wendy Cockcroft (profile), 29 Apr 2019 @ 5:40am

      Re:

      That's nice of them but unfortunately judges don't pay attention to celebrity endorsements even when they're perfectly reasonable, and in my opinion, correct in this case.

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

  • identicon
    Anonymous Coward, 26 Apr 2019 @ 9:39pm

    FanX organizers get relief from 9th Circuit Court

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

  • identicon
    Anonymous Coward, 26 Apr 2019 @ 9:40pm

    APPELLANTS’ EMERGENCY MOTION UNDER CIRCUIT RULE 27-3 TO STAY ENFORCEMENT OF MONEY JUDGMENT AND PARTIALLY STAY PERMANENT INJUNCTION PENDING APPEAL;
    https://fanxsaltlake.com/wp-content/uploads/2018/10/SDCCvsDFPMotion-to-Stay-Enforcement-of-Judgment _with-declarations.pdf

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

  • identicon
    Glenn, 27 Apr 2019 @ 5:07am

    ...and then there's the other meaning for "con" that seems more appropriate here (as in, it's a real "con game").

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

  • identicon
    Anonymous Coward, 27 Apr 2019 @ 5:30am

    The Best Revenge...

    Trademark some new usage, e.g., ComVention. Promote it via SEO, grass roots campaigns, and general marketing to the point that nobody really looks for "Comic Con" any longer - they look for "ComVention."

    Then, don't be a dick, allow everyone (EXCEPT San Diego) to use "ComVention."

    <promo>Comic Cons are sooo 20th century. Come to the Salt Lake City ComVention!</promo>

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

  • identicon
    Anonymous Coward, 27 Apr 2019 @ 8:30am

    The trade mark should never have been granted ,people have used the word comic convention for 50 years ,
    at least for meet ups where fans go to meet artist,s ,
    writers, people in the comic book trade .
    it would be like giving the trademark to apple for smart phone or tablet or personal computer .
    Words in use by the public before apple even existed .
    So the result of this case is companys will have to
    use the words comic convention in advertising .
    The judge banned phonetic forms of comic con .
    No one should be allowed to trademark basic generic words
    used by the public for years .
    It would be like saying only one company can use the words
    trade show or theme park .
    SDCC did not invent the words comic con

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

  • identicon
    Matthew A. Sawtell, 29 Apr 2019 @ 10:08am

    ... and this is in an industry that has been in a steady decline

    Seriously, Comic Shops are getting culled at rate that has not been see with Car Dealerships after the 'Bail Out' - and Cons are fighting like this?

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

  • icon
    Purple Anon (profile), 3 May 2019 @ 10:18pm

    SLCC kind of poked the bear. One of the SLCC organizers drove a car, with SLCC logos plastered on it, around the events during SDCC. I think some of the fans/guests/vendors thought the events were related based on SLCCs logo. SDCC, being the behemoth that it is, couldn't have that, so they first went after SLCC for the logo similarity. SLCC changed their logo but refused to change their name which triggered all this ridiculousness about trademarks.

    SLCC used to have all the details regarding the case, including the logo comparison, on their website and social media but they were ordered to remove it.

    I think the whole trademark case is malarkey. SDCC winning the case is malarkey. If they went after NYCC they never would have won that case. But the bully won this time because SLCC is smaller, in a state no one really cares about (natvie Utahn here), and the organizers tried to market their event distastefully in the wrong place at the wrong time.

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


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