Comic-Con infringement verdict gives hope to large brand owners facing jury trials, argues expert

  • US federal court jury finds term COMIC-CON non-generic
  • The verdict does not set a significant legal precedent for genericide
  • Decision may embolden large brands thinking of going before a jury

A jury in a US federal court has rejected claims that the COMIC-CON trademark has become generic, ruling that a Utah-based comic convention’s name infringes the mark owned by San Diego Comic-Con. Though the dispute has been billed as a major test-case for questions surrounding genericide, one legal commentator suggests it will have more of an “atmospheric” than precedential impact.

The decision resulted from a lawsuit, initiated in 2014, which alleged that Salt Lake Comic Con – run by Dan Farr and Bryan Brandenberg – had wilfully infringed the COMIC-CON trademark, registered by its longer-established Californian namesake, San Diego Comic-Con. The defendants rejected the claim that “comic con” was a brand, asserting that it was a generic term, widely-used as an abbreviation of the purely descriptive phrase “comic convention”.

A twelve-person jury in the District Court case has now sided with the plaintiff, finding its mark valid and infringed, and putting the west-coast brand in a good position to acquire an injunction against the defendants. The jury did not, however, accept that the infringement had been wilful, and awarded only $20,000 damages – much lower than the $12 million award sought by the Californian entity.

As noted, prior to the decision the dispute hit the headlines as a “potentially precedent-setting case” in which the concept of ‘genericide’ – whereby brands become generic through common usage – would be tested, with significant consequences for the 140-plus other events which use the “comic con” name without permission from the trademark owner. However, this verdict does not in itself set an important legal precedent; as a jury decision, it has not produced an extensive legal rationale provided by a judge and the dispute will only affect case law in any significant way if it goes to appeal.

That said, the jury’s decision is nevertheless a huge boon to San Diego Comic-Con in its fight against other users of its brand, according to market experts. “Taking it to jury and winning shows real determination and resolve,” comments James Weinberger of Fross Zelnick. He adds: “That their mark has been upheld will have more of an atmospheric effect than a precedential effect. It is empowering because every cease and desist letter they write from now on can refer to the fact that a federal jury found their mark valid and another convention liable. This is a very valuable tool as part of an enforcement strategy”.

Jeremy Feigelson of Debevoise & Plimpton agrees that the decision will serve as a potent enforcement tool for San Diego Comic-Con, which is now better-placed to tackle the more-than-100 other organisations using the “comic-con” brand: “The recognition of the trademark puts (San Diego Comic-Con) in a good position to go out and get injunctive relief against what appears to be a host of small-time operators using the COMIC-CON mark…This sets them up well to take this result to the other 100 conventions and say ‘who’s next?’”

This result may also provide encouragement to other major brand owners weighing up whether to take their disputes to a jury trial. “These cases don’t often go to trial,” reflects Feigelson. “One of the reasons you tend to get settlements is because there is a conventional wisdom that juries will favour the little guy and will look for reasons to rule against the large corporate mark owner. This decision suggests that juries are more balanced than that. One district court judge sending the case to trial is not a huge legal event. The bigger event here is that a jury was willing to listen to a trademark owner’s evidence and accept their point of view”.

So, even if this verdict does not change the game in terms of the case law surrounding genericide, it will provide San Diego Comic-Con with a powerful weapon against other conventions across the country, as well as giving hope to large brand owners about the willingness of federal court juries to consider both sides in trademark disputes.

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