SAN DIEGO (CN) – San Diego Comic-Con asked a federal judge Thursday to bar the use of its trademark by the FanX Salt Lake Comic Convention, which has already changed its name since losing a years-long trademark spat in court last year.
A six-person jury this past December found San Diego Comic-Con’s trademarks are valid and enforceable and that the owners and operators of the convention formerly known as Salt Lake Comic Con caused confusion by using the trademark in the event’s moniker.
At issue were three trademarks owned by San Diego Comic-Con: “Comic-Con,” “Comic Con International” and a logo which features a comic book illustration of an eye with the words “San Diego Comic Con International.”
While the jury found the Salt Lake convention’s owners Dan Farr, Bryan Brandenburg and Dan Farr Productions used the trademark without permission, it did not find the infringement was willful and only awarded $20,000 in damages to San Diego Comic-Con. The decades-old San Diego convention had asked for $12 million in damages.
U.S. District Judge Anthony Battaglia heard a host of posttrial motions Thursday, including San Diego Comic-Con’s request for over $4.5 million in attorney fees which have already been paid in full.
San Diego Comic-Con attorney Callie Bjurstrom with Pillsbury Law told Battaglia Thursday he should find the case is “exceptional” so that attorney fees and costs can be awarded.
“This was a very expensive case; the reason this case was so expensive was because of defendants and their counsel and the way they litigated this case,” Bjurstrom said.
She pointed out Brandenburg testified at trial he knew about San Diego Comic-Con’s trademarks but still used “Comic Con” to name his Utah convention. Bjurstrom said the Salt Lake owners engaged in a “public intimidation campaign” once San Diego Comic-Con sent them a cease-and-desist letter to stop infringing the trademark and that Salt Lake’s attorneys filed meritless motions, “flip-flopped” on legal theories and violated court orders throughout the three-year litigation.
“If this case isn’t exceptional, I don’t know what is,” Bjurstrom said.
San Diego Comic-Con also asked Battaglia to permanently bar the Salt Lake convention from using its trademarks, arguing its reputation has been irreparably harmed by the confusion to consumers.
During the trial, San Diego Comic-Con presented evidence its attendees had contacted its employees about the Salt Lake convention, believing the two events were associated.
But San Diego Comic-Con’s request went a step further than simply asking Battaglia to enjoin the Salt Lake convention operators from infringing its trademarks: it asked the judge to bar the Salt Lake convention from using the words “comic convention” or phonetic equivalents to “Comic Con” or “comic convention.”
Bjurstrom said the injunction should include any spelling variation on “Comic Con” which is pronounced the same as the San Diego trademark, including spelling it with a “K” or “Kahn.”
“Whether you spell Comic Con with a ‘C’ or a ‘K’, it’s pronounced the same. It is exactly the same when you say it,” Bjurstrom said.
San Diego Comic-Con also asked the judge to order the Salt Lake operators to destroy marketing and advertising materials which make reference to “Comic Con” and to cease operating websites and social media accounts which reference the trademark.
Battaglia took the motions under submission and will issue a written order.