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

Published July 28, 2014 3:16 pm

Pop culture • SLC organizers are rounding up support from other conventions nationwide.
This is an archived article that was published on sltrib.com in 2014, and information in the article may be outdated. It is provided only for personal research purposes and may not be reprinted.

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."

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.

In the other corner is a comic book convention that isn't even a year old, yet has managed to pull off two events within eight months that brought in more than 172,000 people combined. Brandenburg figures Salt Lake's historic success — the inaugural Salt Lake Comic Con in September had the largest turnout ever for a new convention — put it on San Diego's radar as the third-largest comic book convention in the nation.

That, and when Salt Lake announced its spring event, FanXperience, the organizers received a call from San Diego's team members, who were upset that it was scheduled for the same April weekend as WonderCon (another event they put on in Southern California). Brandenburg, defending the choice, pointed out that the weekend was the only one Utah organizers could book at the Salt Palace Convention Center, and WonderCon did not have any publicized dates yet.

And most recently, the San Diego organizers were less than thrilled that their Salt Lake counterparts wanted celebrity guests to take photos with a red Audi, decorated with Salt Lake promotional material, near the San Diego Comic-Con this past weekend.

"There's no reason to create an enemy in this business," Brandenburg said Saturday. But when the cease-and-desist letter arrived, Brandenburg said there was no saving that relationship — and despite knowing San Diego's feelings about the car, organizers went ahead with the plan anyway.

He pointed out that San Diego Comic-Con tried and failed to trademark "Comic Con" in 1995.

"Furthermore, precedence for the mark 'Comic Con' was set when Denver Comic Con received a trademark for their convention [in November]," Brandenburg said in a statement. "Nobody owns the words 'Comic Con'… and the United States Patent and Trademark Office has already ruled on this."

However, Brandenburg's characterization of the Denver Comic Con registration is a bit misleading, Rinehart said. Denver applied for a trademark, but was denied because Denver and Comic Con "are merely descriptive of services providing a Denver comic book convention," she said. "This helps establish that the [U.S. Patent and Trademark Office] believes that Comic Con is descriptive of those types of services, but it doesn't help [Salt Lake] very much to invalidate [San Diego's] mark."

Technically, San Diego only has the hyphenated version of "Comic-Con" trademarked. But its legal team argues in the cease-and-desist letter that the similarity of "Comic Con" in another event's name, without the hyphen, has confused people into thinking the event is somehow associated with San Diego's convention.

"In fact, we are aware of multiple instances where persons have incorrectly believed that the Salt Lake Comic Con convention was a [San Diego Comic-Con] event," the letter from San Diego Comic-Con said. The cease-and-desist letter adds that the San Diego group would be fine with Salt Lake Comic Con expanding the last word to Convention, or reusing the FanXperience title instead.

Salt Lake Comic Con has until Aug. 6 to formally respond to the letter. The convention is scheduled for Sept. 4-6 at the Salt Palace Convention Center.

An attorney for San Diego Comic-Con was unavailable for comment Monday.

mmcfall@sltrib.com

Twitter: @mikeypanda