Ninth Circuit Sides with Pillsbury Client San Diego Comic Convention in Trademark Dispute

“The district court concluded that the evidence tendered by the defendants was insufficient to support their argument that the term ‘Comic-Con’ was generic before SDCC’s first use, and we find no error in that conclusion,” the court wrote.

The ruling came nearly six years after San Diego Comic Convention filed suit against a company called Dan Farr Productions over the Utah company’s use of "Comic Con," in connection with its comics and popular arts convention.  San Diego Comic Convention claimed  it had exclusive trademark rights to the mark “Comic-Con” which it has been using in connection with its comics and popular arts convention  since 1970.

In 2017, a federal jury agreed, finding that the Salt Lake City event infringed three separate  “Comic-Con” trademarks. The district court later issued an injunction permanently barring Defendants’ use of “Comic-Con” or any mark confusingly similar to the Comic-Con mark. The ruling also affirmed the lower court’s decision to order the Utah organizers to reimburse over $3.7 million in attorneys’ fees and costs spent by San Diego Comic Convention litigating the case. Citing the litigation conduct of the Salt Lake organizers, the Ninth Circuit said the case met the definition of an “exceptional” lawsuit where such fees can be levied.

“The [lower] court focused on the ‘unreasonable manner’ in which defendants litigated the case, highlighting defendants’ failure to comply with court rules, persistent desire to re-litigate issues already decided, advocacy that veered into ‘gamesmanship,’ and unreasonable responses to the litigation,” the Ninth Circuit wrote.

San Diego Comic Convention provided the following statement in response to the decision:

“San Diego Comic Convention (SDCC) is the owner of the registered trademark COMIC-CON which we have used for over 50 years in connection with comic and popular arts conventions.  While SDCC had no desire to enter into litigation to protect our COMIC-CON and related trademarks, unfortunately the Salt Lake convention promoters refused to discontinue their infringing actions—thereby forcing us to resolve the matter through the courts. Our trust in the judicial system was borne out by the December 2017 jury verdict in our favor. That jury verdict was the basis of the district court’s judgment. The judgment, entered by the Honorable Anthony Battaglia of the United States District Court for the Southern District of California, held that the Comic-Con marks are valid (i.e., not generic) and that Defendants infringed the Comic-Con marks. In addition to the compensatory damages awarded by the jury and a permanent injunction entered by the Court, the district court also held the case to be exceptional awarding SDCC nearly $4 million in attorneys’ fees and costs.

“The Defendants chose to appeal the judgment to the United States Court of Appeals for the Ninth Circuit arguing the district court erred in pre-trial rulings on genericness and an unclean hands defense as well as finding the case to be exceptional and awarding SDCC recovery of its attorneys’ fees and costs.  On April 20, 2020, the Ninth Circuit issued its decision affirming the district court’s decisions in all aspects other than a minor adjustment to the costs awarded. We are pleased that the Ninth Circuit has ruled in our favor. We look forward to concluding the litigation and continuing our primary mission which is to increase the general public’s awareness of and appreciation for comics and related popular art forms.”

San Diego Comic-Con is represented by Pillsbury Intellectual Property partners Callie A. Bjurstrom and Peter Hahn, and counsel Michelle A. Herrera in San Diego, and senior counsel Kevin Murray Fong in San Francisco.