The case was decided yesterday. Salt Lake City Comic Con lost regarding their use of the trademark “Comic-Con”, and Comic-Con: International, organisers of San Diego Comic-Con, won. So what happens next? Well, I’m not a lawyer and I don’t even play one on the internet. But nevertheless, I’m heading into the weeds.
Previously, Salt Lake Comic Con owners have said they will appeal the verdict. But will they? Co-owner and organiser Bryan Brandenberg posted different language on Facebook, saying:
Based on the evidence available to the jury, they determined that SDCC has 3 valid trademarks and our use of “comic con” confused people. They also determined that there was no false designation or willful infringement by us and awarded SDCC $20,000 in damages. They were asking for over $12,000,000. We do not agree with the verdict. SLCC was not unique and there are now 140 other infringing comic cons around the country. There is still a Petition to Cancel SDCC’s “comic-con” mark in the Patent, and Trademark Office. This is a separate challenge that was not allowed to be presented as evidence at trial. We will be at least 60 days before the motions from both sides are filed. With such a balanced ruling, a lot can happen between now and then. Many lessons were learned and it’s not quite over yet. Please be respectful to SDCC. Maybe we can all live long and prosper.
There is no finality on a name change or whether “comic con” is a valid trademark. We have an appeal and a proceeding to cancel the trademark that is ongoing in the Patent and Trademark Office. This was a 13-12 half-time score.
A lot can happen before we have to change our name.
That’s not an appeal. They already owe their attorneys hundreds of thousands of dollars from the trial, let alone whatever balances they had pre-trial, topping a million dollars. Will they convince their lawyers to follow them down the rabbit hole for more legal fees that they may never collect? Will they really be able to raise this much from crowdfunding?
On appeal, you are not allowed to simply re-litigate the facts of the case — only bring forward areas where you believe that there was judicial error. The jury decided that Salt Lake Comic Con organisers were personally not guilty of intentional infringement. Would they risk Comic-Con International revisiting that issue as well?
It is true you can get a trademark cancelled the way they intend, those are administrative proceedings that do not supersede a judgment in federal court. Comic-Con International could call on a well-established legal principle “res judicata”, which basically means you can’t keep re-litigating the same issue in different forums until you get the result you want.
They mentioned that San Diego Comic-Con were awarded $20,000 in damages rather than the $12 million they claimed for, and it seems that Salt Lake Comic Con are implying that’s a partial victory for them.
But despite the small monetary award in this case, the judgment has massive implications in the US for the use of the name. In the United States, if you can establish the parties knew there was a valid trademark and chose to proceed with infringement, then there is an entirely new set of damages called “statutory damages” that may now available to the holder of the trademark.
Under the statute, statutory damages for counterfeiting are to amount to not less than $1000 or more than $200,000 per counterfeit mark, per type of goods or services sold, offered for sale, or distributed, “as the court considers just.” If the court finds that the use of the counterfeit mark was willful, then the damages ceiling is raised to $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed.
Basically, there could be more damages to come. A lot more.
And as the results of this verdict have been widely reported within and outside the industry, if you as a rival show using the term “Comic Con” get a Cease & Desist letter, it will be impossible to claim that you did not know about the trademark if you choose to continue to infringe. Like it or not (and many people do not), the validity of this trademark is now the law of the land.
Twenty thousand or twelve million, this is a massive victory for Goliath over David.
Talking of Goliaths, there’s also the matter of the New York Comic Con, San Diego Comic-Con’s largest rival. And owned by Reed, who dwarfs everyone around them, and own many other shows with “Comic Con” in their name, including the recently purchased MCM Comic Con shows in the UK.
For a while, there has been the belief that Reed had permission or a license from San Diego Comic-Con to use the term. But during pre-trial court decisions, that was scotched.
Defendants contend that Plaintiff had a license agreement with Reed Exhibitions, which allowed Reed to produce New York Comic-Con. However, according to Defendants, Plaintiff’s granted Reed this license, but then failed to adequately control the quality of NYCC to Plaintiff’s detriment.
Plaintiff vehemently denies that any license agreement exists between it and Reed. The Court notes that Defendants point to several internal communications between SDCC employees to demonstrate that Plaintiff and NYCC had a license agreement. However, the Court finds that Defendants have mischaracterized the evidence.
However, Greg Topalian, the President of ReedPOP at the time NYCC actually launched, almost immediately took a license from Comic-Con International in his capacity as President of Leftfield Media, owner of Rose City Comic Con, this year.
Could Comic-Con International vs. Reed POP be the next big battle over New York Comic Con? The odds are that pretty much every piece of consumer brand confusion that exists between Salt Lake and SDCC also exists between NYCC and SDCC. Except that no one drove a car round San Diego during the show emblazoned with New York Comic Con…
…that we know of.