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

More Comic Conventions Change Their Names After Crazy SDCC Attorney's Fees And Injunction Ruling

from the what's-in-a-name? dept

We were just talking about the odd ruling that came down in which the court overseeing the trademark dispute between the San Diego Comic-Con and the former Salt Lake Comic Con somehow awarded $4 million in attorney's fees, despite the jury award for trademark infringement amounting only to $20k. In addition to the award of attorney's fees, Judge Battaglia also issued an injunction barring the Salt Lake show from calling itself any variation of the term "comic con" but, oddly, refused to issue a similar injunction barring it from calling itself a "comic convention." As we noted at the time, it's plainly absurd that the "vention" difference there is doing that much heavy lifting in the court's mind.

But the reverberations of the ruling are now being felt throughout the country, with one company that puts on many comic conventions doing sweeping name changes for many of its shows.

Tampa Bay Comic Con has changed its name to Tampa Bay Comic Convention. The change comes less than two weeks after a federal judge in California ordered organizers of Salt Lake Comic Con to pay nearly $4 million in attorneys’ fees and costs to San Diego Comic Convention in a trademark infringement suit.

Tampa Bay Comic Con co-founder Stephen Solomon, a manager at Imaginarium, the company that has run Tampa Bay Comic Con and similarly-branded comic conventions around the U.S. since 2010, confirmed the name change Wednesday after re-branded images appeared on the convention’s social media. Solomon declined to comment on whether that ruling had anything to do with the Tampa Bay Comic Con name change.

He can decline to comment on that all he wants, but it's pretty plain what is going on here. Those putting on other comic conventions throughout the country have been keeping a watchful eye on the fight between SLCC and SDCC. With this enormous award of attorney's fees after such a paltry judgement, convention organizers are simply doing the math and realizing that even if they convince a jury that its infringement isn't willful in the future, they can still get slammed with attorney's fees. They also likely know that after the ruling on the injunction that prevents SLCC from using any variation of the "comic con" term, the SDCC is surely coming for them next. And, so, they unilaterally disarm.

It's at this point that I will insist again on pointing out how absurd every last bit of this is. To allow "comic con" to be a trademarkable term, but to admit that "comic convention" is not because of its descriptive nature, is so silly as to make one's head hurt. For millions of dollars to be exchanged because of the difference between those two terms, all on the pretense that the public is somehow confused as to whether the SDCC is in charge of all of these conventions, is crazy-pants. For the result of all of this to be tens or hundreds of other conventions proactively changing their generic names to slightly more generic names is downright infuriating.

Filed Under: comic con, comic convention, comicon, trademark
Companies: san diego comic-con

Salt Lake Comic Con Files For A New Trial And Seeks Round 2

from the comic-can dept

In the wake of San Diego Comic-Con winning its years-long lawsuit against Salt Lake Comicon over its trademark on the term "comic-con", much of the media coverage was somewhat apocalyptic as to what the consequences would be for cons across the country. Despite the payout for winning the suit being a paltry $20k, more focus was put on just how other cons would react. The early returns are mixed, with some proactively undergoing name-changes to avoid litigation and others staying stalwart. The point we have made all along is that this win for SDCC was not some ultimate final act on the matter.

And, as many predicted, it appears that win wasn't even the final act with regards to its SLCC foe, as the Utah-based con has filed for a new trial.

The Salt Lake lawyers filed the paperwork on Tuesday in response to last month’s eight-day trial in U.S. District Court, during which jurors decided that the California convention’s trademarks are valid. The jury found that the infringement was not willful and awarded $20,000 in damages to the San Diego Comic-Con, which had sought $12 million.

The Salt Lake lawyers say evidence was wrongly excluded during trial and improper jury instructions undercut the evidence.

It will be very interesting to see where this goes, because many of us that observed the goings on of the initial trial were surprised at its outcome. From a trademark perspective, the arguments for genericide raised by SLCC seemed quite obvious. The evidence of genericide is present in every bit of follow up coverage one sees dealing with how many other shows with some version of "comic con" in their names are either changing those names or standing firm and continuing to use them. The phrase is everywhere in the industry, which only makes sense, given that the phrase is essentially nothing more than a description of the type of show being conducted. Part of the issue raised in the filing for a new trial appears to be how much the jury was allowed to hear about other cons using the term nationwide.

Part of the excluded evidence was testimony about the use of “comic con” by third-party competitors, which could make the term generic, the motion says. In addition, according to the motion, the trial judge gave a defective instruction that said competitive use is inadequate to establish genericness.

It's easy to see how such misguided instructions and barring of relevant evidence would give rise to such an erroneous verdict. Regardless, it seems likely that there will be more to come in round two of the wrath of cons.

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

It Begins: Some Comic Conventions Refusing To Fold After San Diego Comic-Con Gets Its Trademark Win

from the the-war dept

After following the saga of what seemed like a truly misguided lawsuit brought by the San Diego Comic-Con against the company putting on the Salt Lake ComiCon, the whole thing culminated in the SDCC getting a win in the courtroom. One of the reasons this verdict threw many, including this writer, for a loop is that the defendant in the case made the argument that the SDCC had allowed the term "comic con" to become generic, an argument buttressed by the reality of there being roughly a zillion comic conventions using the term across America. Despite the SLCC's public discussions about appealing the decision and the fact that proceedings are already underway to cancel the SDCC's trademark entirely, much of the media speculation centered around what those zillion other conventions would do in reaction to the verdict.

It was a question that seemingly made sense, but the actual reaction by at least some conventions should have been plainly predictable. And, indeed, now there are some conventions willing to come out and publicly say they aren't going to change a damned thing based on this one verdict.

Yakima’s Central City Comic Con will hold off on a name change after one of the nation’s largest comic conventions won a trademark lawsuit. Yakima’s comic convention started in 2015, and is one of more than 100 conventions that uses “Comic Con” in their names.

“I don’t know how you can trademark two words that are common,” said Jamie Burns, Central City Comic Con events coordinator.

She said Yakima’s convention organizers are taking a wait-and-see attitude, watching to see whether the Emerald City Comic Con in Seattle or Portland’s Rose City Comic Con change their names in response.

Rose City, of course, wouldn't need to change its name as it somewhat infamously and more conveniently decided to partner with the San Diego Comic-Con in the middle of the whole trademark trial, but the larger point remains. The war was not the trademark trial. That was merely the opening battle. To win this war, that the SDCC decided to start for no conceivable reason, it will need to pepper the country with lawsuits against a hundred or so comic conventions, hopefully winning more than it loses and hopefully getting more than $20k a pop, which is what it earned from the three-year campaign against SLCC. All the while, mind you, it must also hope its "comic-con" trademark isn't suddenly cancelled out from underneath it by a USPTO that might finally realize the term is both generic and descriptive.

That's quite a hill to climb and must look more like Waterloo than Normandy.

Filed Under: comic con, comicon, trademark
Companies: central city comic con, san diego comic con

Houston Convention Bureau Claims Trademark Infringement After Buying Into The Comic-Con Industry

from the how-heroic dept

When I wrote about the monumentally silly trademark dispute between the San Diego Comic-Con and the Salt Lake City Comic Con, I didn't appreciate the simple nature of that trademark dispute. Sure, the idea that the phrase comic-con, or comic con, could be trademarked seemed wrong. The phrase is arguably both generic and descriptive, after all. But at least the dispute was simple.

A trademark battle currently underway in Texas is less so, unfortunately. This dispute involves two relatively new comic conventions, Houston's nickname of "Space City", and the city's convention bureau buying into the convention industry itself.

Houston's convention bureau is suing the operators of a popular local convention over the use of "Space City" in its name, claiming it infringes on a 12-year-old trademark. The convention in question, Space City Comic Con, also happens to compete with a similar event that is half-owned by the Greater Houston Convention and Visitors Bureau itself. The bureau acquired a 50 percent stake in the more established Comicpalooza last September, spokesman A.J. Mistretta said.

Both events bring in television and film stars for appearances that attract thousands of autograph buyers. Fans come dressed as their favorite characters from science fiction, anime and super-hero fantasies to browse exhibits, purchase items from vendors and play video and table-top games. The fests charge comparable admission fees.

Now, there's several things we can dig into here, but let's focus instead on the timeline of events to get a good understanding of why this dispute is dumb and contrary to the purpose of trademark law. This isn't laid out well in the link for some reason, but I'll make it easy for you.

• 2004: the Greater Houston Convention and Visitors Bureau is granted a trademark for "Space City" for use in promoting tourism, business and conventions in the Houston area.
• 2008: Comicpalooza began as a small comics convention in Houston and has grown larger since.
• 2012: Space City Comic Con began as a small comics convention in Houston and has grown larger since.
• 2015: the Greater Houston Convention and Visitors Bureau acquires a 50% stake in Comicpalooza.
• 2016: the Convention and Visitors Bureau sues Space City Comic Con for using "space city" for which it has the 12 year old trademark.

Any reading of that timeline leads to the obvious conclusion: the Bureau didn't give a damn about a comic convention's use of "space city" until it was heavily invested in a competing convention. That the name went unchallenged for several years is a wonderful indication that, assuming the Bureau wants to claim infringement, it wasn't bothering to police its trademarks properly. The article quotes a rep for the Bureau claiming it was unaware of the comics convention, which seems strange since knowing and promoting such conventions is the entire point of the Bureau to begin with.

And even setting aside the problematic timeline and all of its implied opportunism, Space City Comic Con can further defend itself by pointing out that the term "space city" at this point has become a generic nickname for Houston, harkening back to the glory days of America's space program.

One possible line of defense for Space City Comic Con is to prove that "Space City" is a generic term that has become synonymous with Houston, said Bruce Patterson, intellectual property lawyer with Patterson and Sheridan in Houston. The bureau also has to prove "Space City" is famous, said Amanda Greenspon, trademark lawyer with Munck Wilson Mandala in Dallas.

"It's not just enough to be famous in Texas. You have to be famous around the country, she said. "I don't know if 'Space City' is famous in Arkansas, North Dakota or New York."

All around, it's just a slimy look for Houston's Convention and Visitors Bureau.

Filed Under: comic-con, comicon, comicpalooza, houston, space city, trademark
Companies: houston convention and visitors bureau, space city comic con

And Now Here Comes Every Other Comic Convention With Trademark Apps For The Generic 'Comic Con'

from the you-guys-aren't-getting-it dept

Roughly a year ago, we brought you the very dumb story of the San Diego Comic-Con suing Don Farr Productions, organizers of the Salt Lake City Comic Con, for trademark infringement. If ever there were a classic case of a trademark that had moved into a generic status, "comic-con" and similar iterations would have to be it. There are comic cons everywhere. In the midst of all this, or perhaps because of it, the Salt Lake City Comic Con applied for its own trademark over its name, which, again, ought to have been denied as being too generic in my opinion. The USPTO, in its infinite wisdom, disagreed, granting them the mark as the trademark suit is still going on. You already know what happened next, don't you?

Yup, every other comics convention that uses comic con, the term so generic that everyone effing uses it, is now lining up at the USPTO's door to get their own trademarks.

This week sees the kick-off of this year’s Boston Comic Con. Which seems a good a time as any to register the trademark for the name for “Organizing and conducting conventions, exhibitions, and gatherings for entertainment purposes and in the fields of artwork, animation, comic books, fantasy, gaming, popular culture, science fiction, and television and film” and for “Comic books, commemorative comic books, posters, commemorative posters” and “T-shirts, commemorative T-shirts.”

They are not alone. Rhode Island Comic Con and Kansas Comic Con have also launched trademark bids in the past month. ‘Tis the season… they may be inspired by the attempts and claims of Salt Lake Comic Con. Denver Comic Con also has a trademark registration.

And unless this is stopped tout de suite, there's absolutely no reason to expect that all the other comic cons in all the other cities will be filing their applications soon. Why wouldn't they? The USPTO, in conjunction with a lawsuit over a term that hasn't yet been ruled generic, but should be, have thrown open the door for everyone to get their piece of the generic pie. And the end result of all of this? Tons of billable hours, of course.

They can expect a challenge from Comic-Con International, the organisers of San Diego Comic-Con and WonderCon, who own the trademarks on San Diego Comic-Con, Anaheim Comic-Con, San Francisco Comic-Con and Los Angeles Comic-Con.

Why? Why? Why pay a legal team to spend a ton of time and money fighting for a mark that doesn't threaten you, that has become generic, and that has been employed the entire time your own mega-popular convention has become insanely successful. Why are we doing any of this?

Filed Under: comic con, comicon, trademark