In his latest rulings on San Diego Comic-Con Inc.’s suit against Salt Lake Comic Con, a federal judge refused to grant summary judgment on the trademark infringement issue because some factual issues can only be resolved by a trial.
However, U.S. District Court Judge Anthony Battaglia did grant several other motions, clearing away some lines of argument, and revealing his thinking about others.
The court observed that the defendant, Salt Lake Comic Con, has introduced evidence that “fluctuates” between two different defense theories, genericness ab initio (that “comic con” was a generic mark before SDCC began using it as a trademark) and genericide (that the term “comic con” has been appropriated by the public, as it has done with aspirin or escalator).
The judge ruled against the Salt Lake Comic Con’s genericness ab initio arguments:
Unfortunately for Defendants, the Ninth Circuit [the controlling circuit Court of Appeals to which this case might be appealed] has not recognized a genericness ab initio theory of defense.
While the judge accepted that there is a genuine issue of material fact as to genericide, he disagreed that Salt Lake Comic Con’s evidence entitled them to judgment as a matter of law.
This conclusion is reinforced by Plaintiff’s submission of its consumer survey that demonstrates that over 80% of consumers believed “Comic-Con” to be a brand name and not a generic name. Accordingly, the Court also DENIES Defendants’ motion for summary judgment based on a theory of genericide.
SLCC is allowed to keep making genericide arguments. However, the judge foreclosed a third line of defense by granting summary judgment that San Diego Comic-Con did not abandon its marks.
Thus, despite Defendants’ attempt to argue abandonment through third party use or failure to police, these arguments are unquestionably meritless as Defendants have not proven that Plaintiff’s mark is generic…. (“Abandonment of a trademark, being in the nature of forfeiture, must be strictly proved.”). Accordingly, Plaintiff’s motion for summary judgment on this factor is GRANTED.
Additional rulings were made about expert witness testimony.
The judge also had sharp words for Salt Lake Comic Con (the Defendants) regarding their attempts to introduce fraud claims against SDCC.
On a final note, the Court articulates that it takes issue with the alleged “undisputed facts” section of Defendants’ motion for summary judgment based on abandonment.
Within this section, Defendants list Plaintiff’s trademarks and then delve into allegations surrounding and Plaintiff’s purportedly “fraudulent registration of the hyphenated form Comic-Con.” …It is unquestionably clear that these arguments are anything but “undisputed facts,” but are actually highly contested allegations.
… Furthermore, the fraud allegations are not only a baseless attack on Plaintiff unsupported by the record, but they are also in complete disregard of the Court’s previous [gag] order.
…Consequently, finding that Defendants have used their motion to improperly inject irrelevant and scandalous allegations into their motion, the Court finds a motion to strike warranted.
The court decision was handed down Tuesday, September 12.
The lawsuit began in 2014, when San Diego Comic-Con sued Salt Lake Comic Con’s organizers, accusing it of violating its copyrights on the term “comic con.”
The latest Salt Lake Comic Con begins September 21.
How ironic that the comics fans got it wrong, and the convention should be called—as the first one in NYC was in 1964—”ComiCon,” not “Comic Con.”
I guess some comics fans couldn’t figure out how fannish abbreviations work.
Birthdays: how about these?
Norman Spinrad, 9/15/40
Chelsea Quinn Yarbro, 9/15/42
Art Widner, 9/16/17
Karen Anderson, 9/16
Lisa Tuttle, 9/16/52
If you want more, let me know. Do you have the birthday list I maintained, based on the one Bruce Pelz ran through FAPA, decades ago?
“…consumer survey that demonstrates that over 80% of consumers believed ‘Comic-Con’ to be a brand name and not a generic name”
To me, that’s… a counter-intuitive result, to put it mildly. I’d be interested to see how that survey was conducted.
Eli: Quoting from the decision:
Further details about the survey methodology are not provided in the decision, but three or four times the judge explains why the survey is relevant to the case, and he never implies there were any deficiencies in how it was carried out. That’s all we know at the moment.
I don’t actually find it that counterintuitive. Those for whom ‘con’ (meaning ‘convention’) is a normal English word might naturally take ‘comic-con’ also to be an English word, meaning a con concerned with comics. But I suspect such people are in the minority. If ‘con’ is not part of your regular vocabulary, you may well think of ‘Comic-con’ only as a name.
@Andrew M: Maybe I should’ve said: it’s counter-intuitive to me if they were surveying an appropriate sample of people. And to me, an appropriate sample would consist of people who had some idea about conventions. If they were talking to my in-laws and my cat– who are all dear to me, but don’t know anything about anything ending in “con”– then the result makes more sense. But the issue in trademark law, from my limited understanding, is supposed to be whether the target market– people who would conceivably use or purchase a thing– would mistake the one thing for the other, not whether random people with no interest would…?