Bonkers Attorney's Fees Ruling Results In SDCC Getting $4 Million Out Of SLCC AFter $20k Jury Award

from the make-it-up-on-the-back-end dept

Thu, Sep 6th 2018 7:40pm — Timothy Geigner

The last time we checked in on the trademark dispute between the San Diego Comic-Con and the Salt Lake Comic Con, we were in the wake of the jury's decision that SLCC did in fact violate the trademark rights of the SDCC by daring to use the term "Comic Con." We pointed out at the time that this is pretty plainly insane as a matter of trademark law, both because of the generic nature of festivals all over the country using some version of "comic con" in their names and the fact that the term itself is almost purely descriptive, being a shortened version of "comic convention", which is what all of these shows are. While the verdict didn't come down as predicted, the jury did manage to only award SDCC $20k in damages, finding that the infringement was not willful. The last checkpoint in the case was SDCC petitioning to get attorney's fees out of SLCC and to prevent it from calling itself a "comic convention."

Well, Judge Anthony Battaglia has ruled on both requests and, holy shit, he both granted most of the injunction requests and somehow managed to award $4 million dollars in attorney's fees to SDCC in a case that resulted in a $20k judgement.

In yet another victory for Comic-Con in its long-running battle over the rights to its name, a San Diego judge has ordered organizers of Salt Lake City’s comic convention to pay nearly $4 million in attorney fees and costs.

The ruling Thursday by U.S. District Judge Anthony Battaglia also granted a permanent injunction barring the Salt Lake convention from using various versions of San Diego Comic-Con’s trademarked names, a decision that eventually could have a more wide-ranging impact on other conventions that continue to incorporate variations of the Comic-Con name.

Battaglia justified the high dollar award by claiming that the case was "exceptional" in nature, essentially arguing that SLCC's defense was needlessly robust in ways that caused SDCC to have to spend more on its legal fees than it otherwise would have. That justification appears to ignore the reality of the situation, one in which SLCC for some reason had to defend its use of a shortened descriptor for the exact kind of show it was putting on. The injunction is somehow even more insane, with the court barring a comic convention from calling itself by any name that remotely approaches the term "comic-con" except for the term "comic convention", from which that shortened term is directly derived. In other words, a comic convention can call itself a "comic convention" but not a "comic con." That "vention" appears to be doing a great deal of heavy lifting in Battaglia's mind.

SLCC, of course, immediately signaled its intent to appeal.

“We do not expect a $4 million attorney fee award predicated on a $20,000 jury verdict to survive appellate review,” they said. “We have instructed our attorneys to begin working on an appeal to the Ninth Circuit — while we prepare for what we expect to be our best event ever, starting September 6."

The money is one thing, but the injunction is what will really have an impact for other conventions throughout the country. Suddenly, SDCC has a legal win that includes forcing another comic convention in another state to not be able to accurately call itself anything other than a "comic convention" specifically, with all other variations on that term being verboten. That sound you hear right now is hundreds of organizers of comics festivals falling out of their chairs.

Hopefully this all gets corrected on appeal.

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Filed Under: comic-con, comiccon, trademark
Companies: salt lake comic con, san diego comic-con

48 Comments

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Anonymous Anonymous Coward (profile), 6 Sep 2018 @ 6:54pm

An appeal to satire
Comic-con conventional comedy ensues, and some of it is not so funny, but it is hilarious.
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John Roddy (profile), 6 Sep 2018 @ 7:41pm

Sooooo, if I embrace the power of puns and start referring to this case as a literal "comic CON", can they sue me for trademark infringement as well?
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That Anonymous Coward (profile), 6 Sep 2018 @ 7:50pm

Its the 9th Circuit.... we could end up seeing SLCC held responsible for kidnapping the Lindberg baby.
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Anonymous Coward, 6 Sep 2018 @ 7:57pm

I'd bet money the judge who ruled on this voted for Trump. We are in a terrifying era of abject stupidity found in the highest positions of society.
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S. Pat Ula, 6 Sep 2018 @ 7:59pm

HA, HA! You wrong yet again!
I've no stake and no interest in this matter except to HOOT Geigner / Techdirt for being so reliably WRONG! How DO you IGNORE reality in favor of your notions so near completely? -- Your accuracy will go up by factor of ten if simply flip a coin!

Anyhoot, now TOTALLY proved right that SLCC should have just begged nicely. -- Bet they took Techdirt's advice and thought they had a "right"! HA, HA!

Weenies just TAKE, but humans cooperate, or at least grovel and wheedle, rather than shell out FOUR MILLION + 20,000 for not being NICE! Learn the lesson, kids.
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Christenson, 6 Sep 2018 @ 8:18pm

Re: HA, HA! You wrong yet again!
Umm, you are smoking something...can I have some too, please??? it must be good stuff!

This is clearly *not* over, there's an appeal...and, it's reported on because "comic con" is descriptive, therefore not trademarkable -- kind of like "beer". So the current result *is* bonkers.
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Killercool (profile), 6 Sep 2018 @ 8:30pm

Re: HA, HA! You wrong yet again!
No, it's just insane that SLCC lost a case about calling their convention a "con," since that had been commonplace since the 1930s.

WorldCon (54), Academy Con (65-67), Balticon (66-present) New York Comicon (64), AggieCon (69), Bubonicon (69). All in use before SDCC, all a descriptor attached to "con." The jury was unreasonable, if not misled.

And, are you calling SDCC "weenies?" Because they are the ones trying to "take" from the commons, not SLCC.
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Unanimous Cow Herd, 6 Sep 2018 @ 8:39pm

Magic Eight Ball says..
The comments on this will be epic.
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Stephen T. Stone (profile), 6 Sep 2018 @ 8:53pm

SLCC should have just begged nicely.

Okay but why though
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John Smith, 6 Sep 2018 @ 9:08pm

Re: HA, HA! You wrong yet again!
Internet SJW are like the kids who play "ring and run," ring the doorbell, then run away, leaving those who followed them to take the rap and pay the fines.

"bring it on!" "Don't settle!" Gee, who benefits fromt his aoa? Lawyers.
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Anonymous Coward, 6 Sep 2018 @ 9:10pm

Re: Re: HA, HA! You wrong yet again!
We get it Mr. Smith, you are a Nazi. Enough already with the dog whistle.
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John Roddy (profile), 6 Sep 2018 @ 9:17pm

Re: HA, HA! You wrong yet again!
I thought you were against corporations having rights. Well, this decision just gave them incredibly wide-spreading control over a common phrase, and they've already shown they have no problem going after individuals whenever they can.

And what lesson is to be learned here? That you like to bash anyone who dares question anything, while conveniently changing your view to fit whichever narrative demonizes others the best?

How many years have been pretending to read these articles and throwing garbage comments like this at it? You're barely even competent as a troll, but you're somehow getting WORSE at just being a hypocrite.

As for "IGNORING reality in favor of your notions so completely", there is a Chinese proverb involving glass houses and stones that I think applies. It goes something like this: You're a dick.
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John Roddy (profile), 6 Sep 2018 @ 9:24pm

Re: Re: HA, HA! You wrong yet again!
"Never settle" is a tactic used by quite a few companies, and it's been gaining more traction in recent years. Remember when Newegg fought back a bogus patent infringement suit that claimed to own the shopping cart? Everyone else (Amazon, eBay, other big retailers) settled. Newegg fought back, and lost. So they fought back again, and that patent was nuked and destroyed forever. Now no online store ever needs to worry about a patent troll company trying to shake them down over an abstract idea like that ever again. And as more companies have adopted Newegg's tactics, other trolls have started ducking out of these suits a lot faster.

Yeah, the lawyers walk away with a nice big check at the end, but I think it's fair to say they earned it.
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Anonymous Coward, 6 Sep 2018 @ 11:11pm

Re:
You really want blue to start describing his copyrightsexual kinks?
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David, 7 Sep 2018 @ 12:05am

SDCC are truly the real comic cons
And I mean that in the "con men" sense, not in the "cons cell" sense.
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That One Guy (profile), 7 Sep 2018 @ 1:08am

'Oh you better believe you're paying for defending yourself.'
Battaglia justified the high dollar award by claiming that the case was "exceptional" in nature, essentially arguing that SLCC's defense was needlessly robust in ways that caused SDCC to have to spend more on its legal fees than it otherwise would have.

Which essentially translates to: 'How dare you force them to spend more money in court than they wanted to rather than just rolling over immediately.'

With this ruling the judge basically made it a punishable offense to defend yourself in court to the best of your ability, and to say that that's insane is a massive understatement.

Hopefully a higher court will slap this judge down hard, because between an absolutely insane penalty for the defendant having the sheer gall to try to defend themself in court, and a ludicrously bad injunction that should never have been granted there seems to be plenty for a higher court to work with here.
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dadtaxi, 7 Sep 2018 @ 5:39am

INLA and only a layperson, but it occurs to me that a case that is "exceptional" in nature actually requires a robust defence to bring forth all the issues (that actually make it "exceptional") in order to have them rigorously examined and tested

At what point does robust and wide ranging arguments become a "needless" defence?
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Glenn, 7 Sep 2018 @ 5:47am

Judge needs an inter-vention.
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Anonymous Coward, 7 Sep 2018 @ 7:21am

The attendees of the San Diego Comic-Con need to boycott the shit out of it.
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Toom1275 (profile), 7 Sep 2018 @ 7:38am

Re: 'Oh you better believe you're paying for defending yourself.'
I read about a sociopathic vexatious litigant that claimed that defendants were "making excessive filings" by filing responses to all of his unnecessary motions.
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Wolfie0827 (profile), 7 Sep 2018 @ 7:39am

Can we say "SDCC learned how to buy a judge." ... Very good.
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Christenson, 7 Sep 2018 @ 7:41am

Re: Re: HA, HA! You wrong yet again!
Umm, no, we aren't against corporations having rights...but, as with my right to swing my fist ending where your nose begins, there are complex contours to what they *should* be, and Techdirt generally appeals to original purposes and general principles.

In this case, the point of Trademarks is to allow companies to distinctly identify themselves from competitors. "Comic Con" doesn't cut it for all the reasons KillerCool stated.
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Stephen T. Stone (profile), 7 Sep 2018 @ 8:06am

Re:
When the judge is tired of hearing this case and wants it over with.
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Toom1275 (profile), 7 Sep 2018 @ 8:17am

Re:
Brought to you by the letter '$'
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DannyB (profile), 7 Sep 2018 @ 8:19am

The lesson here
Don't put up a robust defense in a lawsuit.
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Michael, 7 Sep 2018 @ 8:58am

Re:
It appears quite possible, actually.
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Anonymous Coward, 7 Sep 2018 @ 9:18am

Re: Re: Re: HA, HA! You wrong yet again!
The point of trademark, at least originally, was to protect the consumer from product name type confusion.

Now days we do not seem concerned about consumer protection, it has become open season so to speak. The old saying "buyer Beware" is still applicable.
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Anonymous Coward, 7 Sep 2018 @ 9:19am

From now on I will only attend Comic-ventions. Or Comic Ven.
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B, 7 Sep 2018 @ 9:26am

Re:
Looking forward to Salt Lake Com-Convent
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John Smith, 7 Sep 2018 @ 9:45am

Rule 68 does this as well, since one has to predict ultimate recovery. If you sue someone for $1,000,00 for libel, and they offer $500 under Rule 68, then you don't win, you're on the hook for the other side's fees. Rule 68 is also not reciprocal in that a Plaintiff cannot demand money and then recover fees if the award exceeds the demand.

Where pro se litigants are involved, fee awards are not even possible, yet it is not an equal-protection violation to award them against an unrepresented party.
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John85851 (profile), 7 Sep 2018 @ 10:15am

This sets a precedent for future cases
The worst part of this decision is that the *judge*, or all people, should know that his decision sets legal precedent. If SDCC wins the case (even if it's for $20,000) AND they get to recover attorney's fees, then there's nothing to stop them from suing every other comic-con for using the same name.
Oh, the jury only awarded them $10,000 in the next case against New York Comic-Con? Now that a precedent has been set, they should be able to sue for $4 million again.
Aren't judges supposed to you know, judge the entire case, including how the law should be applied? It would have been easy for him to say "The jury ruled, neither party gets attorneys fees, and the case is over".
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Anonymous Coward, 7 Sep 2018 @ 11:20am

For the win
That's right it's a comic-con ... not a convention... and we're just now seeing the payout on this legal con.
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Anonymous Coward, 7 Sep 2018 @ 12:53pm

Re: HA, HA! You wrong yet again!
I have just one word for you:

Moron.
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ECA (profile), 7 Sep 2018 @ 1:41pm

Lets go back a step
Lets contest the USE of the words...
"San Diego"
He cant use it as PART of the name..its to generic.
He can KEEP "Comic-Con", but he CANT have the City name..
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James Burkhardt (profile), 7 Sep 2018 @ 2:27pm

Re:
Rule 68 doesn't not apply in the scenario at issue, of the defendant being held accountable for the Plaintiff's costs, so you continued harping on Rule 68 gives me another hint as to that identity you claim to want to protect.

While possible given the wild Rule 68 rulings, depending on the situation, might not be considered 'reasonable'. The discussions on variance that occurs in Rule 68 jurisprudence doesn't seem to include discussions of reasonableness, I am going to guess that few low ball Rule 68 offers are made. If the case is reasonable, I imagine defendants would make reasonable settlement offers, rather then super low ball offers. Competent council, which a person sued for $1,000,000 probably has, would likely note that $500, sans costs, is unreasonable, and not submit such a case. But that is just my perception and some surface research.
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Anonymous Coward, 7 Sep 2018 @ 4:18pm

"The judge had especially harsh words for Salt Lake organizers throughout his ruling on the attorney fees, taking them to task for their “head in the sand” litigation strategies and “nonsensical” and “faulty” legal arguments."

Um, why did you all ignore the judges reasons.
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Thad (profile), 7 Sep 2018 @ 5:35pm

Re:
Because the judge's extremely poor judgement has already been covered extensively. See the salt lake comic con tag.
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John Smith, 7 Sep 2018 @ 6:16pm

Re: The lesson here
Lqawyers get rich off of narcissistic clients who think their money immunizes them against lawsuits, and entitles them to these amazing, TV_like defenses where no one on TV is seen getting the bill (or where the lawyer works pro bono to further the plot).

It's very addictive to these narcissists to be the center of attention in the judiciary, and every dollar spent on attorneys who feed this narcissism is justified. These are the same4 people who can't find $10 if you're short of cash that week and who don't hang out with you unless you're the "equal," as in equally rich, equally narcissistic, and equally stupid.

The beauty of this is that the Defendant will need someone to blame, and that's their attorney in all likelihood, when in fact their own self-entitled hubris is the real culprit.

Those who incite "bring it on!" defenses are definitely catalysts, but they are merely uncovering the existing problem of hubris and intransigence among the wealthy and entitled.

Perhaps now the next time some poor person sues a rich person the rich person won't be so quick to run up their legal bills with a "rbous defense" that has little chance of prevailing.

IP laws exist for areason, reasons made clear by this ruling. Those who attack the judge won't hesitate to cite favorable precedents in other cases as "black letter law." BTW, has the SCOTUS ever ruled on whether or not Section 230 immunizes distributors of defamation, who are not "publishers or speakers?" A bookstore can be liable as a distributor even though it is not the publisher or speaker of the books. The SCOTUS has said that omission of a letgal term (like "distributor") is reflective of congressional intent. You'd think the SCTOUS would have affirmed Section 230 by now if that were it's aim, which says that they may be looking to drop the hammer the other way once the internet is built out by the Teflon pioneers.
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Anonymous Coward, 7 Sep 2018 @ 7:59pm

Re:
Probably not relevant who the judge voted for. But I bet him or a family member/friend goes to SDCC
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harbingerofdoom (profile), 8 Sep 2018 @ 10:01am

well, at one time i had a wish to go to SDCC, but now all the sudden that urge is gone.
wonder why.
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Anonymous Coward, 8 Sep 2018 @ 3:53pm

SDCC has no CONscience when it comes to their greed.
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Melvin H., 19 Sep 2018 @ 1:29am

Re:
Anonymous Coward, you might lose that bet on the judge—he was appointed and confirmed to the bench in 2011 under ....Obama.
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wesh, 13 Oct 2018 @ 11:43am

Re: Re: HA, HA! You wrong yet again!
Since you're a layman (I assume based on how far off the mark you are) you really shouldn't be making statements about the jury's reasonableness (or that they were "misled"... lol please.) without any knowledge of the law to base that on. If you're not a layman... well... shame on you. Either way, it sounds like you didn't even read the court's order, which includes a recap of the case and a description of why they ordered the Defendant to pay the Plaintiff's legal fees (spoiler alert: SLCC had zero chance of winning)

In this case, SDCC owns the registered trademark for "Comic-Con", so the defense of "Someone else it first" isn't going to fly. Registered trademarks take precedent over first usage... and someone else's first usage has nothing to do with anything... lmao

Additionally, $4M in legal fees isn't unheard of or unreasonable for these types of cases. SLCC knew they were taking a risk by refusing to settle when SDCC had them dead to rights as we say. The very fact that fees were awarded in a Lanham Act infringement action shows that SLCC's position was extremely weak and the court essentially added an extra punishment because they had a flimsy defense and refused to settle. By doing so, they wasted the court's time (thus our taxpayer dollars) and racked up millions in legal fees. SDCC shouldn't be on the hook -- SLCC knew that fees would pile up this high, and may have well refused to settle as a means of retaliating against SDCC. The court is totally right to hold them accountable for these fees.
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wesh, 13 Oct 2018 @ 11:45am

Re: Re: HA, HA! You wrong yet again!
Also, what are "the commons" and how is SDCC taking from it? I think you may be conflating terminology here
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wesh, 13 Oct 2018 @ 11:50am

Re: Re: Re: HA, HA! You wrong yet again!
That's completely different, because often times cases brought by patent trolls can be won through an action by the Df to invalidate the patent. However, if a big company ponies up to fight the case and invalidate, their money goes to benefit all of the other Defendants whom they compete with. So there's a huge disincentive to fight the case.

Here, SLCC had absolutely no chance of winning this case, which is why the court awarded fees to the Plaintiff. Lanham Act claims only warrant fee awards in exceptional cases, such as this one, where the defendant refused to settle despite being dead to rights. There's really no reason for them to try this case other than to hurt SDCC by running up their legal bills. If that's their intent, that's a serious abuse of the legal system. The court rightly punished them for taking a position that was at best legal malpractice, and at worst malicious retaliation against the plaintiff SDCC
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wesh, 13 Oct 2018 @ 11:56am

Re: Re: HA, HA! You wrong yet again!
I see what you're getting at, but "Comic-Con" is not in itself descriptive. Using the same logic you could also say that "Home Depot" or "Hobby Lobby" are descriptive trademarks. The fact is the trademark has already been registered … the very fact the court awarded fees in this type of case speaks to the fact that SLCC had no case. So, it's over. Is your practice area litigation, specifically?
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wesh, 13 Oct 2018 @ 12:02pm

Re: Re: HA, HA! You wrong yet again!
It's a common phrase *because* SDCC is so well known … it'll be a few more years at least before anyone can make a case that the TM has been genericized...

Common phrases and terms are very much trademarkable. Proctor & Gamble recently registered "WTF" and "LOL". The USPTO had no objections.

Have you read the court order? If you take a look at it, the court discusses how weak the case was. That's the judge talking, not a jury.
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wesh, 13 Oct 2018 @ 12:09pm

Re:
Dude please do a tiny bit of research before sharing your completely unqualified opinion … or maybe read the court's order. He's an Obama appointee btw. Abject stupidity lmao... try to crack a book and educate yourself before you make crass statements and pulling criticisms out of thin air.

Oh so they returned a verdict for the big bad (non-profit) corporation, against SLCC, who broke the law, knowingly, and then refused to settle in a childish attempt to put the hurt on SDCC by forcing them to rack up legal fees. The judge was correct to punish them for using this lawsuit as a weapon against SDCC... they couldn't beat them with a legal argument so they tried to hit them in the wallet.

FYI, any organization like SLCC doesn't name anything without having their lawyers run a trademark check. They absolutely knew that they were infringing SDCC's marks and had no defense. I don't see why you feel it necessary to paint them as martyrs
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