On December 8th, a jury in the Southern District of California entered a special verdict form in a trademark case playing out between a couple of American pop culture conventions. The verdict shows that the jury found in favor of plaintiff San Diego Comic Convention against a group of defendants using the ‘COMIC-CON’ mark to publicize a similar event organized in recent years in Salt Lake City, UT. The verdict also awards $20,000 in corrective advertising damages to San Diego Comic Convention for defendants’ infringement of multiple trademarks held by the San Diego event organization.
The successful jury verdict comes a few months after San Diego Comic Convention won on a few important motions filed against organizers of the Salt Lake Comic Con. This includes a motion to exclude testimony given by an expert witness for the Salt Lake Comic Con defendants which argued that the use of “comic con” has become a generic term. Dan Farr Productions and other defendants had tried multiple defenses on the genericness issue but lost out on those this September.
The special jury verdict form found that ‘COMIC-CON’ and ‘COMIC CON INTERNATIONAL’ standard character marks and the ‘SAN DIEGO COMIC CON INTERNATIONAL’ with eye logo illustration mark owned by San Diego Comic Convention are valid, enforceable marks. The jury found that each of the marks was infringed by the three defendants, including the production company for the event as well as the event’s two co-founders, in a way that was likely to cause confusion among consumers.
Although the jury found in favor of San Diego Comic Convention on the corrective advertising damages award, they did not find that the defendants engaged in unfair competition for false designation of origin nor that the plaintiff was entitled to any damages for defendants’ profits. In its coverage of the case, The Washington Post reported that the San Diego plaintiffs were seeking a total of $12 million in damages, although statements published by the Post from the plaintiffs indicate that the San Diego entity is happy enough with the successful enforcement of its trademark rights.
The Salt Lake City defendants had argued that the widespread use of the “Comic Con” name for pop culture conventions in a number of major American cities was proof of the terms genericness. While it’s not readily apparent that those events are all licensed with San Diego Comic Convention it seems pretty clear that the organization is very careful to police its trademarks according to a blog post authored this May by a San Diego local librarian. The librarian had received notice from San Diego Comic Convention that a Comic Con-themed library card issued by the library infringed upon the convention’s trademarks. According to the librarian, the two sides worked out a no-fee licensing agreement which ensured that the library would put the registered trademarks and some additional wording on the library cards.