The San Diego Comic Convention has won $4 million in “exceptional case” attorney fees and expenses, along with an injunction blocking its Salt Lake rival from using the “comic con” mark.
U.S. District Judge Anthony Battaglia of the Southern District of California’s post-trial orders Thursday in San Diego Comic Convention v. Dan Farr Productions salvages a December jury verdict that found trademark infringement but awarded the San Diego event only $20,000.
The organizers of Salt Lake Comic Con, now rebranded FanX Salt Lake Comic Convention, argued that the “split verdict” meant there was no prevailing party who could claim fees. Battaglia disagreed, finding the San Diego event prevailed and that defendant Dan Farr Productions (DFP) litigated the case in an unreasonable manner.
“At every opportunity, DFP has repeated, re-argued, and recycled arguments already briefed by both parties and analyzed and ruled on by the court,” Battaglia wrote. “This type of wasteful litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this court to squander already limited judicial resources.”
He awarded $3.96 million out of the $5.2 million sought by San Diego Comic Con, and enjoined DFP from using “comic con” or anything confusingly similar. Battaglia also ordered DFP to give up its web address saltlakecomiccon.com, even though it’s used now only to redirect users to the new fanxsaltlake.com address.
San Diego Comic Con had also sought to block DFP from using the more formal “comic convention” as part of its name, but Battaglia would not go that far.
Still, San Diego Comic Con sounded happy with the outcome. “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,” Pillsbury Winthrop Shaw Pittman partner Peter Hahn said in an emailed statement.
“We are grateful to the jury that found in our favor and to the court that upheld the jury verdict,” San Diego Comic Con’s chief communications officer David Glanzer added. “We have always preferred, and continue to prefer, resolving disputes outside of court, but the defendants’ conduct made that impossible in this case.”
An attorney for Dan Farr Productions said an appeal is in the works. “Our clients do not expect a $4 million attorney fee award predicated on a $20,000 jury verdict to survive appellate review,” Maschoff Brennan partner Michael Katz said via email. “They have instructed us to begin working on an appeal to the Ninth Circuit—while they prepare for what they expect to be their best event ever, starting September 6.”
The San Diego Comic Convention has been operating its annual comic-con event since the 1970s. The event now includes science fiction and fantasy authors, film and television actors, directors, producers and writers. In recent years it has drawn as many as 135,000 attendees over four days.
Dan Farr Productions began promoting Salt Lake Comic Con in 2013. The company has argued that “comic con” is a generic mark used by hundreds of similar conventions around the world. Battaglia presided over an eight-day trial last fall.
On Thursday, Battaglia criticized the plaintiffs for ignoring San Diego Comic Con’s cease-and-desist letter years ago. Instead of hiring an attorney or reaching out to the San Diego event’s legal team, the defendants registered their own Salt Lake Comic Con mark with the USPTO.
The defendants argued that was an end-around the jury’s explicit finding that they did not act willfully, but Battaglia disagreed.
The judge found the Pillsbury attorneys’ billing rates reasonable, but reduced the fee request because the firm billed in quarter-hour increments, rather than tenth-of-an-hour, and because some billing entries were vaguely worded.
DFP argued that it already has changed the Salt Lake event’s name, but Battaglia said that’s no reason not to grant an injunction. He found “without hesitation” that DFP should be enjoined from using Comic Con, ComicKon or any “confusingly similar phrase.”
But that did not extend to “comic convention.” The San Diego event “does not own the trademark to ‘Comic Convention’ and competitors in this industry should be allowed to use the word ‘convention,’” he wrote. Plus, he noted, during opening statements, San Diego Comic Con had suggested that DFP should simply rename its event the Salt Lake Comic Convention. “Post-trial and post-verdict, DFP did exactly what SDCC asked,” Battaglia wrote.
He also spared the Salt Lake event from San Diego’s demand that it destroy its “historical archive” with materials from its previous Salt Lake Comic Con shows—so long as it doesn’t sell, distribute, reproduce, republish, or make any commercial use of any of those materials.”
Pillsbury’s trial team also included partners Callie Bjurstrom and Michelle Herrera, counsel Nathaniel Smith and associates Lauren Wardle and Matthew Stephens.