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Salt Lake, San Diego comic con name feud would set precedent

First Published Jul 28 2014 11:56AM      Last Updated Jul 28 2014 08:27 pm

(Chris Detrick | The Salt Lake Tribune) Scenes from the Salt Lake Comic Con FanXperience at the Salt Palace Convention Center Saturday April 19, 2014.

A legal battle brewing between the behemoth San Diego Comic-Con and Salt Lake City’s young and burgeoning counterpart could have lasting ramifications for dozens of other comic book conventions.

San Diego Comic-Con is warning Salt Lake Comic Con to change its name or face legal repercussions, arguing that the similar name can confuse people into thinking the two are affiliated.

If the issue lands in court, Salt Lake City organizers say, dozens of other events that use the same name will be threatened.

"If they win this against us, they have a precedence to do this to others," said Bryan Brandenburg, Salt Lake Comic Con’s co-founder and chief marketing officer.

The Salt Lake City convention’s leaders have produced a partial list of other American and international conventions that use "Comic Con" in their name, including New York Comic Con — the country’s second largest — and more than 50 others.

Brandenburg said they plan to respond to San Diego Comic-Con with a formal letter next week, one that could include the support of other conventions.

"We’re in the process of aggregating the other comic cons around the country," Brandenburg said Sunday. They have already met with the CEO of Wizard World, which organizes 24 events with the "Comic Con" name around the country.

"He just kind of rolled his eyes," Brandenburg said of the Wizard World CEO. "They [San Diego Comic-Con ] have tried to stop them from using ‘Chicago Comic Con’ [and failed]. … Why are they trying this again?"

But San Diego Comic-Con — the nation’s largest — might have a case, according to Amelia Rinehart, an intellectual-property law professor at the University of Utah.

"[San Diego] alleges that it owns the mark of Comic Con," Rinehart said Monday, "and that is certainly close enough to the one that [Salt Lake] is using to charge them with trademark infringement."

But Salt Lake organizers could argue that people are not likely to be confused, or their name only describes their own goods and services (a fair-use defense), and that San Diego’s trademark is invalid.

The "tricky legal problems," Rinehart said, are whether San Diego can establish that likelihood of confusion, whether Salt Lake can establish fair use, and whether Salt Lake can establish "Comic Con" is generic for comic-book conventions.

Proving the name is generic (and thus not protected) would be an uphill battle for Salt Lake, which would have to prove that all people refer to all comic book conventions as comic cons, Rinehart said.

"To put this into perspective, Xerox and Kleenex are not considered generic terms, because those companies enforce their rights to avoid becoming generic for photocopying and tissues, respectively," she said. "As a mark owner, it is important to police use of the mark to avoid genericide, and that may be what [San Diego] is doing here."

Explaining fair use, the professor brought up a 1995 case between Sunmark and Ocean Spray. The former used the Sweetart trademark for its candy, while the latter sold cranberry juice advertised as "sweet and tart." Ocean Spray successfully argued that it couldn’t describe its juice without the term, Rinehart said. "We protect trademark rights, but we don’t take words out of the public domain that people need to describe things."

If Salt Lake wins because it can prove San Diego’s trademark is invalid, Rinehart added, "then it is a win for them and everyone else who wants to use the mark in the country."



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