IP Law Daily Non-genericness finding, fee award affirmed in ‘Comic Con’ litigation
Tuesday, April 21, 2020

Non-genericness finding, fee award affirmed in ‘Comic Con’ litigation

By Thomas Long, J.D.

Evidence supported the finding that marks owned by the operator of the San Diego Comic Convention were not generic, and litigation misconduct by the defendant supported a $3.9 million attorney fee award.

In the long-running trademark dispute between the operator of the well-known San Diego Comic Convention and a competitor that ran a similarly named convention in Salt Lake City, the U.S. Court of Appeals has affirmed orders of the federal district court in San Diego granting summary judgment in favor of the complaining convention operator on the competitor’s "generic ab initio" argument; denying judgment to defending competitor on its unclean hands defense; and granting the convention operator’s motion for attorney fees. The district court did not err in determining that the evidence did not establish that the San Diego Comic Convention marks were generic. Nor was there evidence that the convention operator acted wrongfully in obtaining its trademark registrations. The appellate court affirmed the fee award of more than $3.9 million, declining to disturb the district court’s finding that the case was "exceptional" due to the defendant’s litigation misconduct. An award of over $212,000 in nontaxable costs for expert witness expenses was, however, vacated, because there was no statutory basis for awarding those costs (San Diego Comic Convention v. Dan Farr Productions, April 20, 2020, per curiam).

The San Diego Comic Convention (SDCC) was a non-profit corporation, formed in 1975, that was dedicated to the awareness and appreciation of comics and related popular art forms. Since 1970, SDCC had operated a regularly recurring and popular convention in San Diego, known as the "Comic-Con." SDCC held incontestable trademark registrations for: (1) the word mark "Comic-Con"; (2) "Comic Con International"; and (3) a combined logo and word mark featuring the literal portion "San Diego Comic Con International."

In 2013, Dan Farr Productions (DFP) began to advertise and promote its own popular arts convention named "Salt Lake Comic Con." In August 2014, SDCC sued DFP, claiming federal trademark infringement, unfair competition, and false designation of origin. DFP filed an answer and counterclaims, alleging that SDCC abandoned the trademarks and that the trademarks were generic and descriptive. On December 8, 2017, after an eight-day jury trial, the jury found that DFP had infringed SDCC’s family of service marks. However, the jury found in favor of DFP on the unfair competition and false designation of origin claims. The jury awarded corrective advertising damages to SDCC in the amount of $20,000.

After trial, the district court issued a permanent injunction barring DFP from using the service marks "Comic Con," "Comic-Con," "Comicon," or phonetic equivalents. DFP also was ordered to pay the complaining convention operator’s attorney fees of more than $3.9 million. The court rejected DFP’s post-trial motions for judgment as a matter of law and a new trial, finding that the marks at issue were not generic.

Genericness ab initio. On appeal, DFP contended that the district court erred in granting denying DFP’s summary judgment motion concerning a defense based on a genericness ab initio theory. DFP’s arguments fluctuated between the defenses of genericness ab initio and genericide. However, the district court noted that the Ninth Circuit did not recognize a generic ab initio defense. Even if DFP were permitted to argue genericness ab initio, its evidence would not have established the absence of a genuine factual issue, the district court found. DFP had produced unpersuasive dictionary definitions, and weak evidence that failed to show that "Comic-Con" referred generally to comic conventions before SDCC had used it.

In the appellate court’s view, the district court properly granted summary judgment. There was no error in the conclusion that the evidence did not establish that "Comic Con" was generic before SDCC’s first use. The appellate court declined to resolve the question of whether a generic ab initio theory was cognizable.

Unclean hands. After trial, DFP moved for judgment as a matter of law, asserting an unclean hands defense. The district court denied the motion. The appellate court said that doing so was not an abuse of discretion because DFP did not show that SDCC engaged in "wrongfulness, willfulness, bad faith, or gross negligence" in obtaining its trademark registrations.

Attorney fees. The district court determined that DFP was liable for over $3.9 million in attorney fees incurred by SDCC. The Ninth Circuit held that the district court did not abuse its discretion in awarding reasonable attorney fees. First, the appellate court rejected DFP’s argument that the case was not "exceptional" for purposes of the Lanham Act’s fee-shifting provision. The district court applied the totality of the circumstances standard and considered factors that align with those set forth in controlling case law, including the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). The court focused on the "unreasonable manner" in which DFP litigated the case—including DFP’s failure to comply with court rules, persistent attempts to relitigate issues, and "gamesmanship"—and took into account considerations of compensation and deterrence. Second, the court rejected DFP’s contention that the award should be reduced because the district court did not articulate causal connections between the misconduct that made the case exceptional and the particulars of the fee award. There was no such requirement, the Ninth Circuit said. Moreover, the district court indicated that the exceptional misconduct occurred at every stage of the litigation.

Costs. The appellate court vacated, however, the portion of the district court’s order awarding SDCC over $212,000 in nontaxable costs for expert witnesses. The Lanham Act did not provide the "explicit statutory authority" required to award litigation expenses beyond the six categories of "costs" specified by Congress in the general costs statute, 28 U.S.C. §§ 1821 and 1920. Those categories did not include expert witness fees.

This case is No. 18-56221.

Attorneys: Callie A. Bjurstrom (Pillsbury Winthrop Shaw Pittman LLP) for San Diego Comic Convention. Peder Kristian Batalden (Horvitz & Levy LLP) for Dan Farr Productions, Daniel Farr, and Bryan Brandenburg.

Companies: San Diego Comic Convention; Dan Farr Productions

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