Back in the old days these disputes were settled by a heated round of Dungeons & Dragons, but not anymore. San Diego Comic Convention (“SDCC”) filed a lawsuit against the people behind Salt Lake Comic Con (“SLCC”) for trademark infringement over the unauthorized use of the COMIC-CON mark and the jury verdict is finally in.
In the dark ages, pre Star Wars, in 1970, SDCC was born and has been held annually ever since. The first comic book convention drew approximately 100 people; this year’s SDCC had over 135,000 attendees. In connection with its services, SDCC registered the COMIC-CON and COMIC CON INTERNATIONAL trademarks, among others.
Beginning in 2013, Salt Lake began holding its comic book convention entitled “Salt Lake Comic Con”. According to SDCC, defendants made this decision to capitalize on SDCC’s creativity, hard work and used SDCC’s trademarks without permission. SLCC uses these trademarks on all types of merchandise and even the car pictured with Lou Ferrigno, the original pre-CGI Incredible Hulk, kids, that was driven in San Diego during this year’s SDCC.
Way back in 2014, this lawsuit commenced. SDCC claims that using the marks, including driving the vehicle pictured to the right around the vicinity of the SDCC, create a false association between the two conventions when they are in no way related. SDCC wants SLCC enjoined from using the trademarks and seeks damages and attorneys’ fees. The parties where unable to solve this dispute and now the matter is heading towards a November trial.
“Comic Cons” have sprung up all over the country and by this lawsuit it is clear that SDCC is fighting to prevent these marks from becoming generic. In pre-trial motions, SDCC’s expert testified 82% of participants associated the COMIC-CON mark with a brand and it was not generic. However, SLCC showed that over 100 different cons are held using the same name so the key issue to be decided by the jury is whether the name is generic or not.
Yesterday, the jury issued its ruling finding that SLCC infringed the COMIC-CON trademark. SLCC was seeking $12 million in damages but was only awarded $20,000. In awarding this amount, the jury found that SLCC infringed the COMIC-CON trademark but did not do so willfully. This is a jury trial so there is no written decision explaining the jury’s reasoning so why the infringement was not willful, we shall never know. SLCC has made nearly $3 million using the mark so this wasn’t that bad of a loss. With this win, other cons have been put on notice that a lawsuit might be in their future. We shall see if the parties appeal the jury award.