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In a feud rivaling that of Batman and The Joker, San Diego Comic Convention and the organizers of a Salt Lake event are continuing their trademark battle over the phrase “comic con” after a jury decided in SDCC’s favor.
A jury in December found that Salt Lake Comic Con used SDCC’s “comic con” trademark without permission — but awarded only $20,000 of the $12 million the SoCal convention’s organizers were seeking in damages.
The legal battle began in 2014 when SDCC sued Daniel Farr, Bryan Brandenburg and Dan Farr Productions, the organizers of the Utah event. Both sides on Tuesday filed a boatload of paperwork, which is set to keep the case alive through at least the spring.
Farr and Brandenburg are asking U.S. District Judge Anthony Battaglia for a new trial, arguing that the court precluded important evidence and gave the jury improper instructions. Much of their argument centers on genericness, and whether the jury was in a position to properly consider whether “comic con” has become a generic term that isn’t protectable by trademark laws. (Read the motion here.)
They’re also renewing a motion for judgment as a matter of law on the issue of genericness. Battaglia in September indicated the mark may have become generic, but left the matter for a jury to decide, and he denied a similar motion made at the close of the trial. Now, Farr and Brandenburg are again asking him to reconsider and decide the issue himself.
“Genericness has been found to exist where a trademark owner has failed to police its marks, resulting in widespread use by competitors,” writes attorney C.J. Veverka in the motion, noting that more than 100 third-party events use the phrase “comic con” and the media routinely uses it generically to describe events. “The evidence presented at trial — even when viewed in the light most favorable to SDCC — leads to the unavoidable conclusion that ‘comic con’ is generic.”
SDCC also isn’t happy with the jury’s decision, specifically with its finding that the infringement wasn’t willful and its damages award. The SoCal convention organizers are asking the court to either issue a judgment as a matter of law or, alternatively, to grant a new trial on the issues of wilfulness and damages.
The memorandum of points and authorities filed in support of the motion is sealed, but attorney Callie Bjurstrom described the arguments in an email to The Hollywood Reporter.
“SDCC argues that in view of the documentary evidence presented at trial and the testimony of Defendants’ witnesses, the only reasonable conclusion the jury could have reached was a finding of willfulness,” she writes. “SDCC further argues that rampant mistrial conduct by Defendants and their counsel, including impermissible and highly prejudicial statements made in opening and closing statements, as well as consistent evidentiary missteps that violated numerous prior Court orders, Defendants prevented the jury from reaching a reasonable conclusion on the issue of willfulness.”
Bjurstrom also says SDCC is asking the court to enter judgment as a matter of law that it is entitled to an award of the disgorgement of the Salt Lake event’s profits.
SDCC is also asking Battaglia to enter a permanent injunction that would bar Farr and Brandenburg from continuing to refer to the Salt Lake event as a “comic con.” (Read the motion here.)
Finally, SDCC is asking the court to award $4.5 million in attorneys’ fees and costs, arguing the strength of its case and the “unreasonable manner in which” Farr and Brandenburg defended it make the case exceptional.
“Defendants admit they were aware of SDCC’s registered marks prior to selecting the infringing marks,” writes Herrera. “Defendants admit they never bothered to seek legal advice regarding the significance of SDCC’s federal trademark registrations. Defendants looked around and saw that others were using ‘comic con’ with and without a hyphen and assumed they could too.”
Herrera also argues that Farr and Brandenburg launched an “all-out war” against SDCC in the press and their attorneys engaged in “staggering” litigation misconduct.
“Counsel preyed upon the sympathies of the jury arguing in opening statement that the citizens of Utah would suffer if SDCC prevailed in this case, that Dan Farr Productions would go out of business and that Messrs. Farr and Brandenburg would be forced into bankruptcy,” writes Herrera in the motion. “Defense counsel told the jury that SDCC would not be harmed, that it was sitting on a ‘pile of cash,’ and owned buildings and other assets suggesting that because SDCC had money it was not entitled to a fair trial on the merits of its claims or damages.”
A hearing on the motions is currently set for May 3.
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