“Comic-Con” Wins Again

On April 20, 2020, the United States Court of Appeals for the Ninth Circuit fended off an attack on the validity of the “Comic-Con” trademark owned by the San Diego Comic Convention (“SDCC”).

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, 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 Ninth Circuit, however, was unimpressed with the “ab initio” argument and stated, “we need not, and do not, reach the question of whether a ‘generic ab initio’ theory of liability is cognizable.”

Even a generic term can receive trademark protection by acquiring a “secondary meaning” such that the public associates the term with certain well-recognized goods or services. During prior court proceedings, SDCC argued that it incontestably owns its “Comic-Con” trademark because the term acquired secondary meaning in connection with its comic and pop culture conventions.

Holding that the defendants did not introduce enough evidence to invalidate SDCC’s trademark and prove that “Comic-Con” was a generic term before it was adopted by the San Diego event, the Ninth Circuit affirmed the district court’s decision.

Furthermore, the Ninth Circuit also affirmed the district court’s decision to award $3.7 million in attorneys’ fees given the “unreasonable manner” in which the defendants litigated the case.

San Diego Comic Con is represented by Callie A. Bjurstrom, Kevin Murray Fong, Peter Hahn and Michelle A. Herrera of Pillsbury Winthrop Shaw Pittman LLP.

Dan Farr Productions and the other Salt Lake organizers are represented by Peder Kristian Batalden, Eric S. Boorstin and John Arthur Taylor Jr. of Horvitz & Levy LLP.

The case is San Diego Comic Convention v. Dan Farr Productions et al., case number 18-56221, in the U.S. Court of Appeal for the Ninth Circuit.

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