Author Topic: CCI vs. SLCC II  (Read 28344 times)

Offline AzT

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CCI vs. SLCC II
« on: July 10, 2017, 10:40:38 PM »
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A long-simmering legal dispute between Comic-Con International, the organization that puts on San Diego Comic-Con (SDCC), and the individuals and entities that run Salt Lake Comic Con (SLCC), over the use of the term “comic con” has boiled over and will be heading to trial this fall after a court-ordered settlement meeting last week in San Diego failed to produce agreement between the parties.

At issue is the ownership of the trademark on “Comic Con,” as compared to “Comic-Con” (with the hyphen), which has been registered to SDCC since 2005. SDCC issued a cease-and-desist notice to Bryan Brandenburg and Dan Farr, organizers of the Salt Lake City Comic Con in 2014, to enjoin them from using the term to promote their event, which had grown quickly over the preceding year. Rather than complying with the notice, Brandenburg and Farr escalated their legal conflict and countersued, challenging the basis of the trademark in an appeal for summary judgment.

The case according to SLCC

According to filings posted on the Salt Lake Comic Con website (now removed), their case for summary judgment rests on three overlapping claims. First, the term “comic con” is generic and was established prior to the formation of SDCC in 1970; as such, its use should be unrestricted. Second, they claim that SDCC filed for then abandoned a trademark on the term “comic con” in 1995, then subsequently filed for registration of “Comic-Con” (with the hyphen), indicating an implicit recognition of a distinction between their brand and the generic term. Finally, SLCC allege that SDCC has not policed usage of the trademark, creating a legal situation known as a “naked license,” which places the trademark in the public domain.

The SLCC group further escalated matters with a filing on June 23 to amend their pleading and schedule additional depositions, in which they allege that officers and counsel of SDCC  perpetrated fraud and perjury by falsely claiming exclusive rights and use of the term Comic Con when many prior instances were known and documented. That document was also made public on June 28, although it has not been subject to formal review by the court and has since vanished from the site.

A one-sided case in the court of public opinion

So what does SDCC have to say about all this? Other than an official comment that the DFP filings are “without merit” and their own motion for summary judgment, not much. And frankly, that’s fairly traditional in cases like this. Courts tend to take a dim view of litigants arguing their cases in public in an effort to prejudice opinion ahead of a trial. Nevertheless, Brandenburg and Farr have been working the “David vs. Goliath” angle relentlessly for years, positioning themselves as on the side of the fans and the little guys.

Their PR efforts have borne fruit, at least in some quarters. A thread on Brandenburg’s Facebook page devoted to discussion of the issue has run to over 300 comments, almost all vehemently anti-SDCC. Most press coverage is relying on their materials and representing their side of the dispute.

At a certain level, you can appreciate both their arguments and their tactics. SDCC is a well-established organization overseeing a multi-million dollar event, and they seem to have singled out one specific competitor among a vast field to rain down on with legal fury.

Farr and Brandenburg have established SLCC as a large, family-friendly pop culture show and don’t seem inclined to let SDCC’s claims get in the way of a good business. Also, the idea that a term in common use like “comic con” can be trademarked and controlled by a single large organization does not sit well in a culture where fans consider themselves co-owners of content and brands that cater to their interests.

On the other hand, waging this kind of high-profile media campaign and filing court papers that include inflammatory claims of criminal misconduct, raises eyebrows if not questions.  “If you can’t argue the facts, argue the law; and if you can’t argue the law, pound the table,” goes the old legal saying. In this case, if your hands can’t reach the table, pay for a Promoted Post on Facebook.

Unpacking the arguments

Comic Con International has not conducted the same kind of full-throated campaign as the SLCC group, and has declined to comment publicly on the matter beyond saying that the countersuit is “without merit.” However, SDCC’s own filing for summary judgment reveals their thinking and strategy.

Based on the filing, SDCC clearly believes their trademark covers both “Comic-Con” and “Comic Con” (as well as ComiCon and other variants). Their famous logo, for example, does not include a hyphen, and is part of their registered trademark as filed. In their summary judgement filing, citing evidence from depositions given by Brandenburg and Farr, SDCC argues:

"For whatever reason, Defendants surmised that they were free to use the term “comic con” as part of the name of their convention, so long as the term did not use a hyphen between “comic” and “con.” Neither Mr. Farr nor Mr. Brandenburg consulted legal counsel before jumping to that conclusion. Mr. Brandenburg also justified use of “comic con” based on his observation that others were using the term in the names of their conventions, and determined that Defendants’ use of the mark “comic con” without a hyphen was fair game."

However, SDCC asserts to the contrary that the punctuation is immaterial to their ownership of the trademark, citing case law and expert testimony that supports their case.

SDCC’s claim to ownership of these terms is fairly well-known in the industry. This post on the American Library Association website about organizing comic events at libraries discusses the matter in detail, including the straightforward procedures for obtaining a license from SDCC.

SLCC appears to acknowledge this in their third motion for summary judgement, in which they claim that SDCC is insufficiently vigilant in policing the use of the trademark licensed by other events. A heavily-redacted section of that filing indicates a license is in effect with at least one other show promoter. Does SDCC, which is a non-profit organization, enforce its rights with the alacrity and consistency of a commercial IP bulldog like Disney? Does its failure to do so constitute a “naked license” situation that puts their IP claim in jeopardy?

SDCC in its filing disputes this as well:

"Courts in the Ninth Circuit have long held that “the existence of infringers other than the defendant [is] irrelevant to a determination of whether the defendant should be enjoined from continuing in its infringement of plaintiffs’ trademarks.”… As one court has explained, “The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer.”

SLCC’s moral claim, however, rests primarily on their first point: that the term Comic Con refers generically to a class of events and was commonly used in the industry, such as it was, prior to the first San Diego Comic-Con (then known as San Diego’s Golden State Comic-Con) in 1970. And it’s undeniably true. Brandenburg and Farr have produces substantial evidence to this effect, including fliers from events known as comic cons that took place in New York, Houston and elsewhere in the late 1960s. Is that material to this case from a legal standpoint?

The meaning and value of ‘Comic Con’ as a brand

This trademark case, whose legal costs have now run into the millions, hinges not just on the meaning of two words — “comic con” — but the impression they convey to a mass audience. Those early shows in the 1960s consisted of men meeting in hotel basements to buy and sell old comics; even into the 1990s, comic conventions and similar fan events were routinely derided, as on the famous Saturday Night Live sketch where William Shatner shamed a nerd asking a question at a Star Trek con. Comic conventions were not commercial enterprises aimed at attracting huge crowds and sponsors, and no promoter would use that term for any marketing benefit other than making the event visible to fans.

Today, “comic con” conjures up images of a mass-media pop culture festival featuring A-list celebrities, entertainment industry events, exclusive merchandise and plenty of things to interest people outside the narrow comic fan demographic. That shift is down to one specific event. For marketing purposes, “comic con” means Comic-Conâ„¢.

In the early 2000s, San Diego Comic-Con grew from about 40,000 attendees to well over 130,000 and became the focus of media attention from around the world. SDCC generates billions of media impressions, nearly all of them favorable. When the gang on The Big Bang Theory says they are going to “comic con,” they are talking about San Diego, not Salt Lake City or anywhere else.

Because of the brand equity built by SDCC over the years, fan conventions have become a huge part of the live events industry over the past decade and now account for an estimated $3-4 billion economic impact worldwide. Most of the big events, including SLCC, are modeled on the SDCC template and owe the instant visibility and affection with which they are greeted to the efforts of SDCC.

Associating with that kind of buzz is the reason to call your event a comic convention, or a con, even if it has little or nothing to do with comics: to “leverage the name and experience associated with other giant cons, including the industry’s mega show, Comic-Con International,” as Brandenburg himself acknowledged in the press in 2013 (quoted in SDCC’s initial complaint). The Wall Street Journal ran a piece about the rise of the Con concept in 2016, and chalked the popularity of the term up to the brand strength of SDCC in particular.

But SDCC’s success with San Diego Comic-Con is two-edged. SDCC shapes public perceptions of comic conventions in general, giving air cover to local and regional events that have sprung up in its wake. Very few people are aware that these events are organized and promoted by different organizations. They often assume that their local con is a franchise of the big one in San Diego, especially when the event goes by the name “Comic Con” or some subtle variation thereof.

When those events go well, the local organizers benefit. But when they go bad, SDCC can suffer reputational blowback, despite having nothing to do with the events in question. The comments on threads discussing poorly-run or disappointing shows often feature someone complaining that whoever organized the big show in San Diego sure couldn’t seem to figure out how to make the one in Albuquerque or Fort Wayne any good.

Independent promoters benefit from this public confusion, which is why SDCC reportedly does police its license fairly assiduously to make sure any event calling itself a “comic con” represents a certain standard of quality and integrity. There are also plenty of events like this that go by different names — Expos, Festivals, Small Press Shows — or use different branding entirely, no doubt to avoid this issue. Only a relative few actually call themselves a “Comic Con,” and most who do have apparently managed to stay on the good side of SDCC’s lawyers.

Poking the bear

So what drew their fire toward Salt Lake City? SDCC’s initial complaint refers to a promotional tactic that Farr and Brandenburg employed in 2014, sending a car wrapped in SLCC branding and logos to drive the streets of San Diego during Comic-Con. They were, of course, far from the only outside company using street-level promotion and viral marketing to reach Comic-Con attendees; the streets of San Diego’s Gaslamp quarter are choked with various “activations” and street teams carrying banners, handing out fliers, or undertaking other attention-getting tactics.

Still, running a car through the streets promoting a similar-sounding event taking place a month later seems provocative. It also presses another hot-button with SDCC, which does its best to crack down on external activities in order to protect exhibitors who have paid high prices for access to the Comic-Con audience within the four walls of the convention center.

Was SLCC deliberately trying to capitalize on the confusion between San Diego Comic-Con and Salt Lake City Comic Con, particularly in marketing their unlicensed event to the SDCC crowd in 2014, as alleged by SDCC? That’s the question that prompted the initial suit, and, despite the noise and distractions, remains the central issue.

SDCC has not commented on this case publicly, preferring a legal strategy to a PR offensive, but in the court of public opinion, they are in a tough spot. It’s never a great story when a big organization has to take legal action against a smaller competitor over alleged IP infringement. It’s especially tough in an industry where customers are as engaged in the machinations of the business as comic fans tend to be, facing a counterparty determined to flood the zone with their side of the story.

Maybe Brandenburg and Farr are right that “Comic Con” is generic or otherwise not subject to trademark protections. Maybe they were singled out for unfair treatment by SDCC in a way that invalidates existing license agreements. There's a common-sense argument for both of those positions, which is why their public outreach has gained traction.

However, at base, these are legal issues, and it’s why we have courts to decide them. A judge is expected to rule in the matter of the summary judgments as soon as September, and the issue may be argued in trial later this fall.

Offline perc2100

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Re: CCI vs. SLCC II
« Reply #1 on: July 11, 2017, 08:25:00 AM »
The branding on the car was VERY reminiscent of SDCCI's branding.  I remember seeing it drive around Harbor and thinking, "whelp: someone's getting sued over that infringement."  It definitely felt like a cheap tactic on the Salt Lake folks, and I could see how it could confuse people & upset CCI.
« Last Edit: July 12, 2017, 09:53:20 AM by perc2100 »

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Re: CCI vs. SLCC II
« Reply #2 on: Today at 02:51:05 PM »

Offline hikanteki

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Re: CCI vs. SLCC II
« Reply #2 on: July 11, 2017, 01:18:51 PM »
This lawsuit has stretched out for way too long. Although I guess same could be said about most lawsuits.
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Offline Chris

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Re: CCI vs. SLCC II
« Reply #3 on: July 11, 2017, 06:28:04 PM »
I hate to say it, but I am over this lawsuit.

Not picking on anyone here, just sick of the lawsuit in general.

Offline susanml10881

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Re: CCI vs. SLCC II
« Reply #4 on: July 11, 2017, 08:40:04 PM »
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The trading on the car was VERY reminiscent of SDCCI's branding.  I remember seeing it drive around Harbor and thinking, "whelp: someone's getting sued over that infringement."  It definitely felt like a cheap tactic on the Salt Lake folks, and I could see how it could confuse people & upset CCI.

I remember that. I thought that was kind of shady. I know it's business but still. There are many people who think their local con is related to SDCC or ask if they're holding local to them cons soon.

Offline perc2100

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Re: CCI vs. SLCC II
« Reply #5 on: July 12, 2017, 09:55:30 AM »
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I hate to say it, but I am over this lawsuit.

Not picking on anyone here, just sick of the lawsuit in general.
I personally don't care either way: people w/a lot more money than me fighting over naming rights = WAY not on my radar (as I posted for a second time here >:D ).  I keep forgetting about it until it's brought up online.  I think CCI's original beef w/the car a few years back was legit, but I haven no clue about the legalities of all of that mess.  As long as it doesn't impact SDCCI I don't care

Offline riotgirl77

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Re: CCI vs. SLCC II
« Reply #6 on: July 12, 2017, 11:11:33 AM »
Man this lawsuit seems to keep going. I've been following it closely since the beginning and I find it interesting that SLCC are very open with this lawsuit while SDCC are mum about it....and the same can also be applied to the fans (well most SDCC fans could probably care less as long as SDCC delivers the goods).

I'll be honest, I tend to scratch my head whenever I read comments from people who say that SDCC are afraid of the competition from SLCC since...well SDCC is king. They attract major toy vendors, national & international press, comic book & entertainment talent, comic publishers etc.

Offline chocolateshake

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Re: CCI vs. SLCC II
« Reply #7 on: July 12, 2017, 11:23:29 AM »
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This lawsuit has stretched out for way too long. Although I guess same could be said about most lawsuits.

Tell me about it.  I'm a stockholder/bondholder in a company that went under and was reborn 10 years ago.  Unusually, the new company issued stock/bonds to the old company's stock/bond holders.  Litigation continues though.  I think we have about another 10 years left to go.

Offline tehlilone

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Re: CCI vs. SLCC II
« Reply #8 on: July 14, 2017, 12:56:19 PM »
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Man this lawsuit seems to keep going. I've been following it closely since the beginning and I find it interesting that SLCC are very open with this lawsuit while SDCC are mum about it....and the same can also be applied to the fans (well most SDCC fans could probably care less as long as SDCC delivers the goods).

I'll be honest, I tend to scratch my head whenever I read comments from people who say that SDCC are afraid of the competition from SLCC since...well SDCC is king. They attract major toy vendors, national & international press, comic book & entertainment talent, comic publishers etc.
I don't find it surprising they're quiet because I don't believe sdcc actually thinks it can win. They're just doing it to mess with SLCC and as a deterrent for future incidents.

I agree with done comments though. I really don't get why people think it's about competition. They did it to stop people from pretending to be affiliated, getting favors, then possibly smearing their name through the mud. That was the issue SLCC brought up when a hotel granted them access to the property thinking they were SDCC. So many nightmares waiting to happen.

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Offline epicaz

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Re: CCI vs. SLCC II
« Reply #9 on: July 14, 2017, 12:59:06 PM »
I've been seeing promoted ads on Facebook by Salt Lake Comic Con (who I don't follow) absolutely slamming SDCC over this suit. Then of course the comments are all making it a "The world of geek vs SDCC" issue, "It's funny that they even call themselves Comic Con, more like overrated Hollywood con" etc. SOO tired of seeing it.

I won't lie, I think SDCC opened a new can of worms with this one

Offline perc2100

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Re: CCI vs. SLCC II
« Reply #10 on: July 14, 2017, 01:16:54 PM »
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I don't find it surprising they're quiet because I don't believe sdcc actually thinks it can win. They're just doing it to mess with SLCC and as a deterrent for future incidents.

I agree with done comments though. I really don't get why people think it's about competition. They did it to stop people from pretending to be affiliated, getting favors, then possibly smearing their name through the mud. That was the issue SLCC brought up when a hotel granted them access to the property thinking they were SDCC. So many nightmares waiting to happen.

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Exactly: CCI has to protect their branding and send a message.  This is more about SLCC treading on the brand of San Diego Comic-Con and kind of being a-holes about it.  I can appreciate CCI's fight

Offline hikanteki

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Re: CCI vs. SLCC II
« Reply #11 on: July 14, 2017, 03:39:57 PM »
Ehh, I'm not going to lie. In this particular case, I do not side with SDCC. I love SDCC, but suing another comic con to change their name and then citing the reason as driving their car on public roads at the same time as their convention is something that just makes so little sense to me that I cannot get behind it.

Confusing or not...it's not hard to figure out which cons are affiliated with each other. If the hotel really rented to SLCC because they thought it was SDCC, then that's on them.

Also...while I'm getting kind of tired of Salt Lake publicly milking this lawsuit for all it's worth, I too find it kind of odd that SLCC is being very public about it, while SDCC is keeping as mum as possible. The SLCC team even said that SDCC wasn't too happy about SLCC publicizing it. I'd think that if SDCC had full faith in the lawsuit they started, then they'd have no problem publicly standing behind it.
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Re: CCI vs. SLCC II
« Reply #12 on: July 14, 2017, 04:44:47 PM »
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Ehh, I'm not going to lie. In this particular case, I do not side with SDCC. I love SDCC, but suing another comic con to change their name and then citing the reason as driving their car on public roads at the same time as their convention is something that just makes so little sense to me that I cannot get behind it.

That wasn't the only thing they did. SLCC asked one of the gaslamp hotels if they could park their car in the entrance for people to see. The hotel thought they were with SDCC so they said okay. The hotel needed the car moved so they called up their contact at SDCC thinking it was their car to move. That's when SDCC made a stink. I doubt they cared they were driving around until SLCC used their reputation at the hotel. People were thinking SLCC was run by Comic-Con International and SLCC never bothered correcting anyone and used it to their advantage.

Offline hikanteki

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Re: CCI vs. SLCC II
« Reply #13 on: July 14, 2017, 05:00:44 PM »
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That wasn't the only thing they did. SLCC asked one of the gaslamp hotels if they could park their car in the entrance for people to see. The hotel thought they were with SDCC so they said okay. The hotel needed the car moved so they called up their contact at SDCC thinking it was their car to move. That's when SDCC made a stink. I doubt they cared they were driving around until SLCC used their reputation at the hotel. People were thinking SLCC was run by Comic-Con International and SLCC never bothered correcting anyone and used it to their advantage.

My position is still the same. If the hotel ok'd it because they assumed SLCC was SDCC, then that's on the hotel. SLCC has said that they aren't run by or associated with SDCC.
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Offline Iris

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Re: CCI vs. SLCC II
« Reply #14 on: July 14, 2017, 05:02:48 PM »
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Ehh, I'm not going to lie. In this particular case, I do not side with SDCC. I love SDCC, but suing another comic con to change their name and then citing the reason as driving their car on public roads at the same time as their convention is something that just makes so little sense to me that I cannot get behind it.

Confusing or not...it's not hard to figure out which cons are affiliated with each other. If the hotel really rented to SLCC because they thought it was SDCC, then that's on them.

Also...while I'm getting kind of tired of Salt Lake publicly milking this lawsuit for all it's worth, I too find it kind of odd that SLCC is being very public about it, while SDCC is keeping as mum as possible. The SLCC team even said that SDCC wasn't too happy about SLCC publicizing it. I'd think that if SDCC had full faith in the lawsuit they started, then they'd have no problem publicly standing behind it.

I think the main problem is that they don't want SLCC associated with their brand at all. Mainly because it could end up affecting SDCC's image, if people think they're the same company. Especially if they do things at SLCC that CCI objects to (ie. paying for automatic access to certain panels, etc.)

I'm not surprised CCI is pretty quiet on that front, or even don't think they can win. A lot of times, cases settle out of court, CCI was probably prepared to pay attorney costs pertaining to the case, to SLCC, from the very first time they seriously considered filing the lawsuit. Maybe they even planned on having to do it in the future.

I wouldn't be surprised if it's just an example lawsuit, that they never expected to win or receive damages from. There's been plenty in the past (I was recently researching one back in about 1925, I believe.) I believe the client and attorneys honestly didn't even want to win the case. They attorneys told the client that they didn't expect to win, but it would put the idea into other peoples' minds. They just wanted to get the public and right people (ie. policy makes) thinking about it, and thus thinking twice about doing anything similar or influence officials to work towards changing the law. In fact, in that case the defense attorneys actually asked for a guilty verdict, to move it up the chain of courts to be even more publicized.

Honestly, the point might be just, the suit is out there, I'm sure other conventions know what's going on and the point probably is that other conventions will think twice about trying to attempt to advertise, as if they're a continuation of SDCC. I only imagine that CCI doesn't want SLCC highly publicizing it, so as not to turn the public against them. Because if the main point was a statement case, other conventions definitely would've heard from the outset (or at least by now.) Sometimes, from the start, it's not about winning the case. I mean, if this is the case, they very much wouldn't mind winning (and retrieving damages, fines, and attorney's fees,) but it probably sends a message that you don't want to poke the sleeping bear because you might lose the next time.
« Last Edit: July 14, 2017, 05:05:39 PM by Iris_aya »
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