Comic-Con: a Trademark or Part of the Commons?

SAN DIEGO (CN) – In opening statements Tuesday in a high-stakes trademark fight, attorneys for San Diego Comic-Con told jurors that Salt Lake Comic Con hijacked the Comic-Con trademark, while attorneys for the unhyphenated Utah group said the phrase has become generic.

San Diego Comic-Con “remained a small, intimate comic convention for decades,” Pillsbury attorney Callie Bjurstrom argued in U.S. District Judge Anthony Battaglia’s courtroom. It wasn’t until the early 2000s that “the secret was out: Comics were cool and Comic-Con was the place to be to catch what was hot and what was next,” Bjurstrom said.

Hundreds of similar conventions then sprang up in cities across the country.

San Diego Comic Convention – the operator of San Diego Comic-Con – claims Salt Lake Comic Con tried to “hijack” the trademark.

Bjurstrom called it a way to “steal the Comic-Con brand.”

“You don’t need to use ‘Comic-Con’ in your name to identify your comic and popular-arts convention,” she said.

At issue is whether three trademarks are enforceable or if they’ve become generic — part of the public commons, and therefore unprotectable.

More than 100 similar events use “Comic-Con” in the title, but this is the first lawsuit San Diego Comic Convention has filed against an alleged infringer. If it prevails, it may file more lawsuits against similarly named events that haven’t been issued a license to use the mark.

San Diego Comic-Con claims Salt Lake Comic Con is duping consumers into believing their events are associated, and that Salt Lake Comic Con did just that in 2014 when the founders of the Utah event parked an Audi convertible near the San Diego Convention Center, wrapped with promotions for the Salt Lake event.

“Convention is a generic term,” Bjurstrom said. “Comic-Con is a brand.”

She said San Diego Comic Convention commissioned a study that showed 82 percent of consumers recognize Comic-Con as a brand, a higher brand recognition rate than Jello.

“You don’t take or steal something that’s not valuable,” Bjurstrom said. “You don’t hijack something that’s not valuable. The San Diego Comic-Con trademark is valuable.”

Millions of dollars are at stake. In decades past, companies such as Xerox and Kodak fought similar legal battles to protect their trademarks. In workaday terms, that involved hiring clipping services and attorneys to warn infringing newspapers and magazines to capitalize the term in stories.

Michael Katz with Maschoff Brennan, representing Salt Lake Comic Con company Dan Farr Productions, said “Comic Con” is a generic term used to refer to a type of convention — not the San Diego event specifically.  He said Salt Lake Comic Con founders Dan Farr and Bryan Brandenburg “looked to the industry” in naming their convention in 2013.

“They used the same formula: Salt Lake to refer to where they were, and Comic Con to refer to what they were,” Katz said.

He called “Comic Con” a “national brand” and said there could be no confusion between the San Diego event and the newer one in Salt Lake City, Utah, which he called a “flyover state.”

Salt Lake Comic Con is a “homegrown” event, Katz said, created in a “do-it-yourself, Utah-specific” way, where four out of five attendees come from Utah.

He said its unique offerings set it apart from San Diego Comic-Con, including “Kid Con,” and not holding the event on Sundays in recognition of Utah’s large religious population.

“I don’t think we’re here because of large numbers of people confusing San Diego Comic-Con with Salt Lake Comic Con. … They have not been harmed by little Salt Lake. They have not lost a single customer to us. We are small potatoes,” Katz said.

The trial is expected to continue through early December.

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