Those attending San Diego Comic-Con this week will hear about fictional fights involving superheroes, extraterrestrials, zombies and more. Noise about one battle for the ages, however, might be more muted. That’s because of a suppression order issued on Tuesday by a California federal judge.
The organizers of SDCC are on the offensive against other comic conventions throughout the nation. In particular, SDCC could be headed to trial in November against Dan Farr and Bryan Brandenburg, who run the Salt Lake Comic Con. The consequential case could impact the mega-millions business of bringing production companies and fanboys together for a cultural and promotional lovefest. Other disputes have been paused pending resolution of San Diego vs. Salt Lake.
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A decade ago, San Diego Comic Convention obtained a trademark registration for “comic-con.” This happened after the trademark examiner initially refused, noting that the mark was merely descriptive. To show otherwise, San Diego Comic Convention executive director Fae Desmond submitted a declaration that “comic-con” had “been used continuously and exclusively in interstate commerce … for over 36 years.”
Now facing trademark infringement claims, Farr and Brandenburg are making a fuss over what was represented to the U.S. Trademark Office. They are seeking cancellation and assert that “comic con” is a generic term that’s been effectively abandoned with the appearance of other conventions in places like Chicago, New York and Detroit. San Diego Comic-Con, in turn, presents consumer surveys showing that over 82 percent understand that “comic-con” is a brand name. The plaintiff is also showcasing its efforts in policing the mark including 144 cease and desist letters, 289 eBay takedowns, 41 USPTO letters of protest and more.
Summary judgment motions have been submitted to U.S. District Court Judge Anthony Battaglia, but before any ruling happens and before any possible trial results, the controversy has garnered significant attention. Maybe it’s because those who love superhero stories enjoy tales of good and evil and blanch at the prospect of someone coming in to ruin the fun. Or maybe it’s because of a coordinated public relations campaign.
San Diego Comic-Con suspects the latter.
In a bid for a protective order filed earlier this month, attorneys for the popular convention told the judge that their Salt Lake peers had “brazenly engaged” in an effort to “win this case in the court of public opinion,” and cited press releases, news articles, Facebook posts and tweets.
“Indeed, Defendants boast they have secured more than 200,000 media articles reporting on the case that are ‘favorable’ to Defendants,” stated the court papers. “Additionally, many of the statements made publicly by Defendants are misleading, prejudicial, inflammatory, or false. These include numerous claims that SDCC lied and/or committed fraud on the government in order to obtain its trademarks.”
With articles out there comparing the San Diego Comic-Con to Superman’s nemesis Lex Luthor, the judge heard a demand that the other side be stopped from making certain kinds of statements lest the prospective trial be tainted.
Battaglia rejects a move to stop Farr and Brandenburg, and those associated with them, from making any false or misleading statement about San Diego Comic-Con or the merits of the dispute. That would be an unconstitutional prior restraint, the judge concludes.
However, accepting evidence that “the venire is being influenced through social media dialogue,” the judge is preventing both sides from making statements accusing, suggesting or implying that San Diego Comic-Con lied or committed fraud. Additionally, the parties aren’t allowed to discuss the alleged genericness of the term “comic con,” how the mark may or may not be descriptive, and whether San Diego Comic-Con abandoned its trademark rights.
The parties are being allowed to post court papers, but only in full and without further comment. The judge is also warning that violation of the order will warrant strong sanctions.
