Court Crushes FanX with Award of Attorneys Fees in SDCC Lawsuit

An incensed federal judge has done his best to make up what San Diego Comic-Con couldn’t get from a jury after winning its trademark infringement lawsuit against Salt Lake Comic Con, hammering the defendants with a trademark ban and an order to pay nearly $4 million of SDCC’s attorney fees and costs.

Last December, the federal jury ruled that Salt Lake Comic Con infringed on a trademark held by San Diego Comic-Con by using the words “comic con” in their name without permission. However, the jury did not award the $12 million in damages sought by San Diego Comic-Con, only $20,000, finding no willful infringement of the copyright by SLCC.

The Salt Lake Convention has since changed its name to FanX Salt Lake Comic Convention.

Judge Anthony J. Battaglia’s August 23 order scolded defendant Dan Farr Productions (DFP), run by Dan Farr and Bryan Brandenburg, as he justified the award of attorneys fees. An excerpt from the ruling quoted by Salt Lake City’s CBS station KUTV (see “San Diego Comic Con awarded nearly $4 million in ruling against FanX”) reads:

Battaglia chided DFP for ignoring court rulings, including making items marked “confidential” public, including on Twitter.

Part of what made the case exceptional in the judge’s decision was press releases and interviews DFP gave after getting a cease and desist letter from SDCC. Battaglia wrote:

“The Court’s analysis under this factor is best explained by quoting to Defendant Brandenburg himself. In a news article, Mr. Brandenburg explained his reaction to receiving SDCC’s cease and desist letter:

Our knee jerk reaction was that [SDCC was] trying to intimidate us” . . . “We were not going to cease and desist using the name. We decided to go public about it.” After consulting with their lawyers, the team behind the Salt Lake Comic Con knew they had strong legal ground to stand on, but they didn’t want to go to court, they wanted to win in the court of public opinion . . . “Everyone said that San Diego had no leg to stand on, but the only way to win this would be to outspend them on legal fees” … “Our strategy was, if we are going to spend legal fees vs. legal fees, we wanted to be creative. We put it out to the public, challenging the cease and desist letter publically.

“Refusing to cease and desist and turning to the media to litigate a trademark infringement case in the court of “public opinion” is objectively irrational,” the judge wrote while also explaining it didn’t seek to limit free speech.

“The Court finds that this case is not a dime a dozen. Instead, it is a trademark infringement lawsuit that stands out from others based on the unreasonable manner it was litigated and thus an award of attorneys’ fees and costs to SDCC is justified.”

Courthouse News hosts a PDF file of the court’s attorneys fees order.

San Diego wanted about $5 million in attorney’s fees and it will end up with 80 percent of the request.

The Hollywood Reporter’s article “Judge Issues ‘Comic-Con’ Injunction” says the court also put teeth in the jury verdict by forbidding the defendants from using “comic con” or anything that sounds like it:

Battaglia, in his order on an injunction, has enjoined Salt Lake from “Comic Con” and “Comic-Con” and any phonetic equivalents (i.e. ComiKon). Additionally, Farr and Brandenburg can’t operate any social media site that incorporates the trademark, nor can they even advertise how the festival they run was “formerly known as Salt Lake Comic Con.”

On the other hand, the judge rules it would go too far to prevent the phrase “comic convention” and won’t require defendants to destroy all of their already-made merchandise and marketing materials bearing the banned phrases.

The Hollywood Reporter opined that this “may be the beginning of the end of the road for any self-described ‘Comic-Con’ that doesn’t take place in San Diego.”

It’s important to note that San Diego has sued or asserted claims against others who operated “Comic-Cons” around the nation — and most of those cases were put on hold for this one. San Diego vs. Salt Lake was a test case.

Both sides in the SDCC/SLCC case had asked for a new trial, victor San Diego because they disputed the jury’s finding of non-willfulness and wanted more money. That, at least, the judge refused to grant, pointing to evidence that Brandenburg thought it was okay to use “Comic Con” because so many others were also doing it.

The defendants’ past statements indicated a desire to appeal the original verdict. Meanwhile Farr and company will be busy running FanX from September 6-8.

[Thanks to David Doering for the story.]

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