San Diego Comic Convention wins over the trademark “Comic- Con” against Dan Farr Productions

Date Published: Jun 21, 2021

The present case was an appeal in the United States Court of Appeals for The Ninth Circuit (“Appellant Court”) from the United States District Court for the Southern District of California (“District Court”), filed by the Defendants against the district court’s order. In this case, Dan Farr Productions (“Defendants”) described their comic fan conventions in Salt Lake City as “Salt Lake Comic Con.” Many other cities had similar events using the commonplace term “comic con” in their name. The promoter of the largest one, San Diego Comic Convention (“SDCC – Plaintiff”), sued Defendants for trademark infringement. Back in 2017, a California federal jury found that Dan Farr Productions, the company behind a Utah event called “Salt Lake Comic Con,” infringed upon SDCC’s “Comic-Con” trademark. Shortly thereafter, Judge Anthony J. Battaglia of the United States District Court for the Southern District of California issued an injunction barring the Utah convention from using “Comic-Con” in its name. The Salt Lake City event now goes by, “FanX Salt Lake Comic Convention.”In appealing the ruling to the Ninth Circuit (San Diego Comic Convention v. Dan Farr Productions Case number: No. 18-56221), the event organizers argued that “Comic-Con” was in fact “generic ab initio”— meaning that “Comic-Con” was a generic term describing a comic convention even before SDCC started using the word in 1970. The Appellant court affirmed in part and vacated and remanded in part. 

The Appellant court firstly discussed whether the district court was proper in granting a summary judgement. It relied on various cases like Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd., 894 F.3d 1015, 1029 (9th Cir. 2018) and SunEarth, Inc. v. Sun Earth Solar Power Co.,839 F.3d 1179, 1181 (9th Cir. 2016) and came to the conclusion that the district court was proper in granting a summary judgement. The district court concluded that the evidence tendered by the Defendants was insufficient to supporttheir argument that the term “Comic-Con” was generic before SDCC’s first use,and the appellant court found no error in that conclusion. Since, preliminarily, the Defendant was unable to prove; the court did not find it relevant to dwell upon if “generic ab initio” theory of liability was cognizable. 

The Appellant court then discussed the issue of whether the district court abused its discretion in denying Defendants’ motion for judgment on their unclean hands defence. Referring to the case of Pinkette Clothing, Inc., 894 F.3d at 1029 (quoting Pfizer, Inc. v.Int’l Rectifier Corp., 685 F.2d 357, 359 (9th Cir. 1982)) it laid down the standards for applying the defence, that, 

“[O]nly a showing of wrongfulness, wilfulness, bad faith, or gross negligence, proved by clear and convincing evidence, will establish sufficient culpability for invocation of the doctrine ofunclean hands.” The Appellant court stated that the Defendants failed to prove these elements in the court hence, the district court’sdenied of Defendants’ motion for judgment on their unclean hands defence.

Next the appellant court vacated the decision of the district court in awarding reasonableattorney fees, though the district court did not abuse its discretion in doing so. The appellant court awarded SDCC non-taxable costs for expert witnesses, and thus, remand the case to the district court forfurther proceedings consistent with this disposition. 

According to the Lanham Act, a district court may award reasonable attorney fees only in exceptional cases. 15 U.S.C.§ 1117(a). The Defendants argued that the district court erred in awarding attorney fees to SDCC because this case is not “exceptional.” The district court applied the totality of the circumstance’s standard laid down in the SunEarth and Octane Fitness cases. It observed the Defendants failed to comply with the court rules, and constantly tried to re-litigate those issues that are already adjudicated and decided. Thus, the Appellant court opined that the district court did not abused itsdiscretion in deeming this case “exceptional” and granting attorney fees under 15U.S.C. § 1117(a).

The Defendant argued that, there has to be causal connections between the misconduct that rendered the case exceptional and the particulars of the fee award, which resulted in an excessive fee. The Defendants stated that the district court is required to establish such casual relationship, but it failed to do so. The Defendants did not challenge the rates of SDCC’s attorneys or the reasonableness of their timesheets. The district court was of the opinion that Defendants’ exceptional conduct occurred at every stage of this litigation which costed SDCC unnecessary legal fees. Hence, the Appellant court was of the view that the district court did not abuse its discretion, toaward fees related to the entirety of the case. 

The Defendants finally argued that the district court erred in awarding non-taxable costs, specifically $212,323.56 for expert witnesses. The Appellant court agreed to this contention and vacatedand remanded the portion of the award for non-taxable costs.

Hence, the appellant court affirmed in part, vacated in part, and remanded for further proceedings.

San Diego Comic Convention v. Dan Farr Productions Case number: No. 18-56221