Should San Diego Be Allowed To Trademark The Name Comic Con?

[Space Cop]

I just found this thread. I only skimmed it some, but I had no idea this was a thing. I actually did assume that all the other cities that have Comic Con were affiliated (like run by the same organization). None of them are?

[Mister Ed]

Originally Posted by Space Cop

I just found this thread. I only skimmed it some, but I had no idea this was a thing. I actually did assume that all the other cities that have Comic Con were affiliated (like run by the same organization). None of them are?

Wow, I guess SDCC might have had more of a case than I thought, if you actually assumed that. I assumed the opposite, that they were just comic conventions using the logical generic term for such.

Some conventions WERE affiliated, but most were not.

(More are affiliated now than used to be, I think, as I believe that SDCC, in an attempt to bolster their claims in the suit, offered affiliation free of charge to some other Comic Cons, in return for those cons acknowledging that SDCC had a right to the term. That happened here in Portland, anyway.)

[Sylent_Asassin]

Originally Posted by Space Cop

I just found this thread. I only skimmed it some, but I had no idea this was a thing. I actually did assume that all the other cities that have Comic Con were affiliated (like run by the same organization). None of them are?

Very few of them are affiliated, as it turns out. Reed Pop runs the most cons: NYCC, ECCC, PAX, C2E2, Star Wars Celebration and a few others, many of which are outside the US. Wizard World is its own entity, CCI runs SDCC and WonderCon. Salt Lake City Con has their own two conventions (SLCC and Fan Experience). AceCon has several shows scattered throughout the US. Besides the aforementioned, most other cons are small, singular, unaffiliated shows.

[Space Cop]

Originally Posted by Mister Ed

Wow, I guess SDCC might have had more of a case than I thought, if you actually assumed that. I assumed the opposite, that they were just comic conventions using the logical generic term for such. Some conventions WERE affiliated, but most were not. . .

Originally Posted by Sylent_Asassin

Very few of them are affiliated, as it turns out. Reed Pop runs the most cons: NYCC, ECCC, PAX, C2E2, Star Wars Celebration and a few others, many of which are outside the US. Wizard World is its own entity, CCI runs SDCC and WonderCon. Salt Lake City Con has their own two conventions (SLCC and Fan Experience). AceCon has several shows scattered throughout the US. Besides the aforementioned, most other cons are small, singular, unaffiliated shows.

Well, I could be unusually gullible or it might be because I'm more familiar with horror conventions, which do have such branding. For instance, the one I usually go to is Monster Mania, but they have a convention in Philadelphia area and another in the Baltimore area. They both have the same name but with the city designation and I know for a fact they're run by the same company. Likewise, the biggest horror convention (Fangoria's Weekend of Horrors) has different conventions in Chicago, NY, and a main one in LA, but with the name.

Maybe because of that, I just assumed (without bothering to ever look it up) that NYCC was an east-coast offshoot of SDCC.

The biggest comic convention I ever went to was in Philadelphia called Comic Fest. Since it clearly wasn't trying to be Comic-Con and since I was aware of a whole other related convention set from Wizard World, I guess I always just assumed that if it had the same ending name it was the same organizers. [At least I assume Wizard World Chicago is still related to Wizard World Philadelphia.]

Lesson learned. On the other hand, I don't know that it means much. My thinking on what con to attend would be based more on location and guests, not so much "I recognize that name and trust it no matter where it is."

[Darth_Primus]

Update

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.


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.

So, Rose City Comic-Con was wise to get a license from SDCC to avoid costly litigation.

And I wonder how many other conventions will fight for the right to use "Comic Con" now that this case decided the term is a recognized brand name and not some generic term.

[Mister Ed]

I still think that this is going too far, since the court recognizes that the term "comic convention" cannot be trademarked, and the use of "con" as an abbreviation for convention is quite obviously standard and generic, used by conventions of all stripes for MANY years, since well before SDCC was a thing. Basically the court is saying that no comic convention can describe itself as what it actually is using a standard, generic abbreviation, but must spell it out, unlike every other kind of convention everywhere. Too broad.

Seems like it would have been more reasonable to punish SLCC for deliberate attempts to give the impression that they were connected to SDCC, which apparently went beyond the simple use of the term "Comic Con".

But is is clearly settled law now, so there's likely nothing to be done.

[Lantern of Gallifrey]

Well then it shouldn't be classified as "San Diego" comic con any more if it's a brand. I think by saying the city that they are in would classify it as not specific to that city and be a generic term. I like the one I just went to, they called it an Expo