Tuesday, April 21, 2020
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Ninth Circuit:
Judgment Barring Use of ‘Comic Con’ Stands
$3.77 Million Attorney Fee Award Upheld
By a MetNews Staff Writer
The Ninth U.S. Circuit Court of Appeals yesterday affirmed a judgment enjoining use of the words “Comic Con” in connection with a comic book convention, also upholding an award of nearly $4 million in favor of the plaintiff, San Diego Comic Convention.
A three-judge panel, in a memorandum opinion, did find merit, however, in the contention of defendant Dan Farr Productions (“DFP”)—which stages a comic book convention in Utah and formerly used the name, “Salt Lake Comic Con”—that the $212,323.56 award of costs was excessive. The panel agreed that it contains items, in particular fees of expert witnesses, for which the Latham Act, the federal trademark statute, does not authorize reimbursement.
The defendant argued that “comic con” is a generic term, in use before it was adopted by San Diego Comic Convention (“SDCC”). It posed a defense of “generic ab initio.”
Defense Not Recognized
In granting summary judgment to SDCC in 2018, District Court Judge Anthony Battaglia of the Southern District of California said that “[a]s a threshold matter, the Court highlights that it takes issue with Defendants’ genericness ab initio arguments,” noting that the Ninth Circuit has never recognized such a defense, adding:
“For Defendants’ benefit, the Court highlights that even if it were to entertain a generic ab initio argument, the evidence produced by Defendants would fail to satisfy their burden.”
He noted that SDCC had been using the mark for more than 45 years and DFP began using it in 2013.
Yesterday’s opinion—signed by the circuit’s chief judge, Sidney R. Thomas, and Circuit Judges Jacqueline H. Nguyen and Kim Wardlaw—says:
“The district court concluded that the evidence tendered by the Defendants was insufficient to support their argument that the term ‘Comic-Con’ was generic before SDCC’s first use, and we find no error in that conclusion….Thus, because the record before the district court did not demonstrate a genuine issue of material fact, the district court properly granted summary judgment. We need not, and do not, reach the question of whether a ‘generic ab initio’ theory of liability is cognizable.”
Attorney Fees
Affirming the $3.77 million award of attorney fees, the panel said that the Lanham Act authorizes “reasonable attorney fees” in “exceptional cases.” The defendant, it noted, disputed that the case is “exceptional.”
Battaglia said, in his order:
“”At every opportunity, DFP has repeated, re-argued, and recycled arguments already briefed by both parties and analyzed and ruled on by the Court. This type of wasteful litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this Court to squander already limited judicial resources.”
The Ninth Circuit declared yesterday:
“[T]he district court indicated that Defendants’ exceptional conduct occurred at every stage of this litigation, including prior to filing, and that such conduct caused SDCC to expend unnecessary legal fees and the court to squander limited judicial resources throughout the duration of the case. Therefore, it was not an abuse of discretion to award fees related to the entirety of the case.”
The case is San Diego Comic Convention v. Dan Farr Productions, 18-56221.
DFP now calls its convention “FanX Salt Lake Comic Convention.”
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