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(Scott Sommerdorf | The Salt Lake Tribune) Liliana Ricks as Anakin Skywalker, and her father, Damon, left, as Obi-Wan Kenobi pose at the City-County Building. They and many other Comic Con cosplayers were involved in a scavenger hunt all over downtown Salt Lake City, Saturday, August 10, 2013.
Salt Lake, San Diego comic con name feud would set precedent
Pop culture » SLC organizers are rounding up support from other conventions nationwide.
First Published Jul 28 2014 11:56 am • Last Updated Jul 28 2014 08:27 pm

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.

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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."

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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."

If San Diego wins, a court could award damages, impose an injunction, or both.

"Damages will depend on the monetary harm to [San Diego] from [Salt Lake’s] use of the marks," Rinehart said. San Diego seems more likely to pursue an injunction, forcing Salt Lake to change its name or the parties to come to some mutually agreeable terms of use.

The outcome could have lasting ramifications for anyone else in the industry. Speaking generally about cease-and-desist matters, Atlanta-based intellectual property attorney John Seay said that if the party who feels infringed upon wins, it would have extra teeth to pursue similar cease and desist orders in the future. If the other party wins, that could encourage other people who might fall under the same umbrella.

Either way, such litigation is expensive and tends to take years if it isn’t settled before a trial, Seay said.

In one corner of the ensuing fight is the undisputed flagship of entertainment conventions. The 44-year-old San Diego Comic-Con has grown into a mecca for pop culture fans flocking to meet the biggest names in comics and hear the latest news about such blockbusters as "Avengers: Age of Ultron" and "Batman V. Superman," straight from the mouths of stars and studio executives. The event, which wrapped on Sunday, has an estimated attendance of more than 130,000 people.

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