Judge Issues "Comic-Con" Injunction

Goliath (San Diego) beats David (Salt Lake) as a judge wallops defendants on the verge of this year's convention with a trademark ban and a nearly $4 million attorneys' fee award.
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In what may be the beginning of the end of the road for any self-described "Comic-Con" that doesn't take place in San Diego, a California federal judge has issued an injunction in one of the biggest trademark cases in the entertainment industry in years.

San Diego Comic Convention was the plaintiff taking on Dan Farr and Bryan Brandenburg, who ran the Salt Lake Comic Con. At a trial held last winter, San Diego prevailed on its contention that it held valid rights and that Salt Lake was infringing its trademarks. The jury didn't find willfulness, however, and only punished Salt Lake to the tune of $20,000 in corrective advertising.

Salt Lake asked U.S. District Court Judge Anthony Battaglia to put aside the ruling and order a new trial.

Instead, in a series of orders issued late Thursday, Battaglia has not only upheld the jury's verdict and issued an injunction, but ordered the defendants to pay almost $4 million in attorneys' fees and costs. The decision comes just a week before the Salt Lake convention was about to get underway. Thanks to this court case, it's already been rebranded the FanX Salt Lake Comic Convention.

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.

It's important to note that San Diego has sued or asserted claims against others who operated "Comic-Cons" around the nation — and most of those cases were put on hold for this one. San Diego vs. Salt Lake was a test case.

San Diego, the plaintiff, pushed for a new trial too because it was unhappy with the jury's finding of non-willfulness and wanted Salt Lake to disgorge profits. The judge doesn't think that's in order by pointing to evidence that included Brandenburg thinking it was ok to use "Comic Con" as others were doing it.

Nevertheless, San Diego has scored a huge coup in the order granting much of its attorneys' fee costs.

Battaglia concludes this is an "exceptional" case compared to run-of-the-mill trademark cases, and slams the defendants for making "repeated, re-argued, and recycled arguments" from having license to pushing a contention that "Comic Con" had become generic to framing the case both inside and outside the courtroom as San Diego's fraud on the U.S. Patent and Trademark Office.

"Ultimately, resembling a broken record, DFP has repetitively restated and rehashed several contentions that they were unable to advance successfully prior to trial," writes the judge. "This type of cyclical motion practice is objectively unreasonable and has justified attorneys’ fees under the Lanham Act."

San Diego wanted about $5 million in attorney's fees and it will end up with 80 percent of the request.

While certainly a victory for San Diego, the attorney fee award could make an appeal more likely.