U.S. District Judge Anthony Battaglia denied Dan Farr Productions’ motion for summary judgment on Tuesday. Farr has hosted the annual Salt Lake Comic Con since September 2013.
San Diego Comic Convention claims co-defendants Daniel Farr and Bryan Brandenburg “made the decision to capitalize on the goodwill of plaintiff’s brand by advertising and holding SLCC.”
“Defendants’ use of plaintiff’s marks was intended to suggest, mislead and confuse consumers into believing that SLCC was associated with, authorized by or endorsed by plaintiff,” Battaglia wrote in summarizing San Diego Comic Convention’s position.
San Diego Comic Con particularly objected to Farr’s advertising campaign, “Comic-Con is coming to Utah,” which it cited as proof that Salt Lake Comic Con was trying to ride its coattails.
Farr argued that “Comic-Con” mark was generic ab initio and used regularly before the first Comic-Con was held in San Diego in 1970. It claimed that semantic evidence, including mention in the Oxford English Dictionary, demonstrates that Comic-Con is generic.
But Battaglia found, in his 32-page redacted order, that Farr failed to “demonstrate that the primary significance behind the term ‘Comic-Con,’ before plaintiff’s first use was to refer to comic conventions in general, and not to plaintiff’s comic convention.”
Battaglia also found, however, that Farr cited enough evidence to demonstrate that San Diego Comic Convention’s trademark could be the victim of “genericide,” or genericness, in which a once-trademarked name becomes interchangeable with a product, such as Kleenex. Companies such as Xerox have fiercely fought falling victim to genericide, as losing trademark rights to popular products could be financially devastating. For decades, before the rise of the internet, companies hired law firms and clipping services to alert them to newspapers’ and magazines’ use of uncapitalized company names — xerox as a verb, for instance, rather than as a company name. Attorneys would then send the offending newspaper a warning letter, and whether the newspaper or magazine responded or not, the accumulated warning letters could be used as proof that the company was protecting its trademark.
Farr submitted evidence of more than 100 entities using the unhyphenated “Comic Con” to advertise comic events across the country. It also cited media reports using the term in a generic sense for comic fan conventions in general, not the one held every July in San Diego.
But Battaglia refused to grant summary judgment to Farr. He cited a consumer survey by San Diego Comic Convention showing that 80 percent of consumers believe “Comic-Con” is a brand name and not a generic name.
Farr also argued that San Diego Comic Convention should not be allowed to claim infringement because of its “longstanding tolerance of other companies using the unhyphenated form of their trademark ‘Comic-Con.’” Farr claims he relied on settlement negotiations between San Diego Comic-Con and another comic convention which used the trademark in deciding to name his event Salt Lake Comic Con.
Battaglia was not persuaded, as those settlement negotiations were not public and the defendants were “not privy” to what happened.
“The court is at a loss as to how defendants can claim that they reasonably relied on these negotiations when it came time to choose the name of their event,” Battaglia wrote.
“The very nature of settlement agreements is their confidential character. Thus, it is far-fetched for defendants to have reasonably believed that plaintiff was not in settlement agreements with various other comic conventions, that they were not policing their mark, or that its withdrawal of its application for ‘Comic Con’ was aimed at informing other companies that they could use the mark ‘comic con’ without the threat of litigation.”
Battaglia also ruled on motions to exclude expert testimony by both sides. He set a final pretrial conference and motion hearing for later this month.