San Diego Comic-Con Awarded Millions in Attorney’s Fees

SAN DIEGO (CN) – A federal judge awarded the owners and operators of San Diego Comic-Con nearly $4 million in attorney’s fees and blocked others from using the name “Comic Con” in a trademark dispute that could have a huge impact on the comic convention industry.

The win for San Diego Comic-Con comes after a jury last year found the owners and operators of Salt Lake Comic Con – Dan Farr Productions – had infringed the San Diego comics and pop arts convention’s trademarks, but awarded only $20,000 in damages.

The Salt Lake Convention has since changed its name to FanX Salt Lake Comic Convention.

U.S. District Judge Anthony Battaglia released a blistering host of orders Thursday in which he said the trademark case was “exceptional” and thus warranted the hefty attorney’s fees award.

“The Court finds that this case is not a dime a dozen. Instead, it is a trademark infringement lawsuit that stands out from others based on the unreasonable manner it was litigated and thus an award of attorneys’ fees and costs to SDCC is justified,” Battaglia wrote.

Peter Hahn, one of the Pillsbury Winthrop Shaw Pittman attorneys who represented San Diego Comic-Con during the trial said in a statement that the “court meticulously analyzed the motions” in finding the case “exceptional.”

“The rulings confirm that defendants and their attorneys engaged in outrageous conduct before the lawsuit was filed, throughout the case, at trial and post-trial.  Ultimately, San Diego Comic Convention achieved what it has sought all along – an end to defendants’ pervasive infringement of the Comic-Con trademarks, and an end to their brazen efforts to trade off the reputation and goodwill associated with the Comic-Con brand,” Hahn wrote.

San Diego Comic-Con requested nearly $5 million in attorney’s fees and costs plus $243,000 for expert fees, but Battaglia reduced the amount requested for the attorneys’ hourly rates and “duplicative attorney effort.”

Battaglia pointed out the ways Dan Farr Productions failed to comply with the court’s rules leading up to the trial last December in filing documents incorrectly and disseminating confidential documents designated as “Attorney’s Eyes Only” on the internet and through social media, including in Salt Lake Comic Con’s Twitter feed.

The judge also noted Dan Farr Productions used unreasonable tactics throughout the three-year litigation, including recycling arguments already briefed and ruled on by the court, which Battaglia compared to a “broken record.”

“This type of wasteful litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this court to squander already limited judicial resources,” Battaglia wrote.

Battaglia said that Dan Farr Productions’ “zealous advocacy has turned into gamesmanship,” and that when the convention operators received a cease and desist letter from San Diego Comic-Con before the lawsuit was filed they “continued to use ‘Comic Con’ in their event name” instead of consulting with an attorney or talking to the San Diego convention’s lawyers.

Dan Farr Productions’ owners also held a press conference in San Diego during San Diego Comic-Con to challenge the trademark dispute.

“Refusing to cease and desist and turning to the media to litigate a trademark infringement case in the court of ‘public opinion’ is objectively irrational,” Battaglia wrote.

Within a week of receiving the letter, Salt Lake Comic Con registered their mark with the United States Patent and Trademark Office.

During the trial, Dan Farr Productions’ attorneys tried to appeal to jurors’ bias by stating the case was “pushing” their clients to bankruptcy, Battaglia noted. They also made legal arguments the judge had barred during pre-trial motions, prompting Battaglia to censure testimony.

Battaglia also found, “without hesitation,” Dan Farr Productions should be permanently barred from using the phrases “Comic-Con” and “Comic Con” in any of the comic or pop arts events they produce.

The judge noted the irreparable harm San Diego Comic-Con would suffer if the Salt Lake operators continued using the trademark, evidenced by testimony during trial by consumers who thought the two events were related.

“The balance of hardships does not just tip, but nosedives in favor of SDCC,” Battaglia wrote, noting San Diego Comic-Con’s trademark has been used for over 45 years while Salt Lake Comic Con hosted its first event in 2013.

The judge also barred the Salt Lake convention’s operators from using phonetic equivalents such as “ComicKon” for their event.

But Battaglia did not go so far as to block Dan Farr Productions’ use of “comic convention,” finding “competitors in this industry should be allowed to use the word ‘convention’” and that San Diego Comic-Con does not own the trademarks to “comic convention.”

Among his orders, Battaglia also denied both parties’ motions for new trials.

Salt Lake Comic Con attorney Michael Katz, with Maschoff Brennan, did not return a phone request for comment.

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