On September 12th, Judge Anthony Battaglia of the Southern District of California entered an order granting motions made by the San Diego Comic Convention in a trademark case over the use of the Comic-Con title on pop culture conventions. The order also denies motions made by a Utah-based entity which has presented a biannual Salt Lake Comic Con since 2013.
The San Diego Comic-Con has been presented each year since 1970 and it has become a major pop culture event, drawing more than 100,000 in recent years to meet celebrities, watch film screenings and otherwise engage in pop culture in unique ways. The nonprofit organization presenting the event was incorporated in 1975. To protect its rights to the Comic-Con moniker, the San Diego entity registered a series of trademarks with the U.S. Patent and Trademark Office. These include U.S. Trademark Registration No. 3221808, which covers an illustration including eyes, shaded squares and the word mark “OFFICIAL COMIC CON AFFILIATE” for use in organizing and conducting conventions in the fields of animation, comic books and popular art. The San Diego Comic Convention also owns U.S. Trademark Registration No. 3219568, which covers the standard character mark “COMIC-CON” for use on video on-demand and audio-visual on-demand transmission services.
In August 2014, the San Diego Comic Convention filed a complaint for trademark infringement against Dan Farr Productions, a Utah limited liability company (LLC) formed by the two co-founders of the Salt Lake Comic Con. The San Diego organization alleged that the Salt Lake convention is “indisputably” the same type of event as the San Diego version. The Salt Lake event’s use of “COMIC-CON” on advertising, merchandise and promotional materials, including an Audi vehicle which was skinned with Salt Lake Comic Con promotional displays, allegedly causes consumer confusion with the San Diego event. The San Diego complaint cites to an article quoting one of the founders as saying that “comic con” is a generic brand which has equity which the Salt Lake event wanted to capitalize upon.
In November 2014, defendant Dan Farr Productions filed a counterclaim flatly denying the allegations, except for the Audi promotional vehicle, and asserting 12 affirmative defenses to the trademark infringement claims. These defenses include abandonment of the trademarks, unclean hands, generic mark, laches, descriptiveness and lack of secondary meaning. Dan Farr Productions alleged that comic conventions using the same name exist in many American cities, including Denver, Dallas, New York and Baltimore. The defendant also alleged that the media and the general public understand the “Comic-Con” term to be a generic term for comic conventions.
The recent order entered in the Southern California case denied Dan Farr Productions’ motion to exclude testimony from an expert witness testifying for plaintiff San Diego Comic Convention while also granting a motion by San Diego to deny an expert presented by Dan Farr. Dan Farr tried to argue that San Diego’s expert witness, which included the results of a Teflon survey on the generic nature of the term “Comic-Con”, as such evidence only matters in genericide cases and not where the trademark was generic prior to the owner’s use. However, the defendant’s own pleading in the counterclaim, where it asserted a defense of generic mark, and the court found the evidence to be relevant to the case.
For its part, San Diego moved that the testimony of a linguistics expert on the generic nature of the “comic con” term should be excluded, and San Diego won that motion. The report completed by this expert included several arguments in favor of the defendants including ongoing discussions of the term online, non-capitalization of “comic con” in some instances and the ubiquitous use of the term by 102 similar conventions. The court found that this expert’s testimony wasn’t relevant in light of the fact that Dan Farr’s motion to exclude San Diego’s expert argued that the term was generic before the first use in 1970. The court also took exception to what it found to be a “gross misrepresentation” of the materials which he received from the defense’s counsel; of 2,300 documents reviewed for the expert’s report, only 400 were located through independent research and the other 1,800 were provided by counsel. Further, the court found the expert’s report to be unreliable in part because the expert failed to provide any rationale for the methodology used or the factors employed in the report.
The defendants also lost on a motion for summary judgment for genericness and abandonment, an argument with which the Southern California court took exception. “As a threshold matter, the Court highlights that it takes issue with Defendants’ genericness ab initio arguments,” the order reads, noting that the defendants’ arguments fluctuate between genericness ab initio, or from the beginning, and genericide. Further, the court noted that the Ninth District has not recognized an ab initio theory of defense in such matters. “For Defendants’ benefit, the Court highlights that even if it were to entertain a generic ab initio argument, the evidence produced by Defendants would fail to satisfy their burden.” Dan Farr argued that semantics information from the Oxford English Dictionary (OED) and books published before the first San Diego Comic Con in 1970 demonstrated the generic nature of the mark but the court rejected breaking down the “Comic-Con” mark into individual parts and noted that the 2002 OED entry for “con” was a new entry. As to Dan Farr’s genericide argument, the court denied San Diego’s motion for summary judgment against this defense in part because “evidence of over 100 competitors using the unhyphenated form of Plaintiff’s trademark” which strongly suggested that the mark was generic. However, the defendant’s motion for summary judgment on genericide was also denied because the results of the Teflon survey provided enough evidence that consumers believed that the term “Comic-Con” was a brand name and not generic.
This kind of trademark legal battle between two festival organization entities is not that uncommon. This summer, a legal battle over Polish cultural events heated up between the Whiting Pierogi Fest, a large Chicago-area heritage event, and the Edwardsville Pierogi Festival, a much smaller community festival which takes place in Pennsylvania’s Luzerne County.