Perhaps you thought that the legal drama between the famous San Diego Comic-Con and the Salt Lake Comic Con was over. Our ongoing coverage of this trademark dispute stemming from SDCC somehow having a valid trademark on “comic-con”, a shortened descriptor phrase for a comic convention, largely concluded when SDCC “won” in court, being awarded $ 20,000 after initially asking for $ 12 million in damages. With the focus now turning to the roughly gazillion other comic conventions that exist using the “comic-con” phrase in their names and marketing materials, this particular dispute seemed to have come to a close.
But not so much, actually. In post-trial motions, SDCC petitioned Judge Battaglia to consider the case “exceptional” so that SDCC can recover attorney’s fees from SLCC. The arguement for SDCC appears to mostly be that they spent a shit-ton of money on attorneys for the case.
U.S. District Judge Anthony Battaglia heard a host of posttrial motions Thursday, including San Diego Comic-Con’s request for over $ 4.5 million in attorney fees which have already been paid in full. San Diego Comic-Con attorney Callie Bjurstrom with Pillsbury Law told Battaglia Thursday he should find the case is “exceptional” so that attorney fees and costs can be awarded.
“This was a very expensive case; the reason this case was so expensive was because of defendants and their counsel and the way they litigated this case,” Bjurstrom said.
It will be interesting to see how Judge Battaglia rules on the assertion that SLCC’s defense of itself warrants its paying SDCC’s attorney’s fees. What exactly was SLCC supposed to do, not try to defend itself in the best way possible? One also wonders if SDCC would be petitioning for attorney’s fees had the jury found that SLCC’s infringement was not willful, resulting in the paltry $ 20k award. Perhaps, perhaps not. What this sure looks like is the SDCC realizing that this “win” came at the cost of a hilariously large amount of money and it is attempting to mitigate that loss.
SDCC also petitioned the court to bar SLCC from using its trademarks. That sort of thing would be par for the course except for two things. First, again, this trademark is ridiculous. It’s purely descriptive. Second, hammering home that fact, SDCC doesn’t want SLCC to even be able to properly describe the type of event it is.
But San Diego Comic-Con’s request went a step further than simply asking Battaglia to enjoin the Salt Lake convention operators from infringing its trademarks: it asked the judge to bar the Salt Lake convention from using the words “comic convention” or phonetic equivalents to “Comic Con” or “comic convention.”
That request should lay plain how dumb this all is. If a comic convention cannot refer to itself as such because that is too close to the trademark “comic-con”, then it should be plain as day that “comic-con” is purely descriptive and, therefore, invalid as a trademark. I wouldn’t be surprised to see this petition to the court turn up at the USPTO in a bid to cancel SDCC’s trademark entirely. That’s certainly what I would be doing if I were heading up any of the hundreds of comic cons out there.
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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.
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