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.
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.