If someone told you, “I’m going to Comic Con!”, what city do you think they are heading to? Well, soon, the only answer to that may be San Diego.
In case you haven’t heard, San Diego Comic-Con (SDCC) sued Salt Lake Comic Con (SLCC) for trademark infringement.
The Plaintiff’s Case
SDCC argued that SLCC, which started in 2013, essentially stole their name and created misleading advertising. One expert testified that 82% of respondents in a survey saw Comic-Con as “a specific brand”, recognizing it more than Jell-O’s brand name. The plaintiffs also produced e-mails that showed the organizers of SLCC tried to “leverage” SDCC for their own event, and the producers even drove around San Diego during San Diego Comic-Con in a car advertising SLCC in 2014.
SDCC owns trademarks to “Comic-Con” and “Comic Con International”, and so they sent a cease-and-desist order. SLCC refused, and so SDCC sued for $12 million.
The Defendants’ Argument
SLCC (more specifically, its organizers Daniel Farr and Bryan Brandenburg and related companies) showed evidence that the term “Comic-Con” (and its related version “Comic Con” has been used since at least 1964 as a shortened form of “comic convention”, before SDCC even existed.
SDCC even tried to trademark “Comic Con” in 1995 but withdrew its application in 1999 after Chicago Comicon objected to the application. It wasn’t until 2005 that SDCC got its trademark approved as “Comic-Con” and not “Comic Con”. They pointed out that over 100 other events have similar names, including New York Comic Con. In fact, New York Comic Con has become at least as big if not bigger than its West Coast cousin even though the two are run by different companies.
The Verdict
On December 8th, a federal jury ruled in favor of San Diego Comic-Con. However, they found SLCC did not engage in “willful infringement” and awarded SDCC only $20,000 out of the $12 million they were seeking. The judge still has to rule on whether SLCC can use “Comic Con” in its name, and SLCC has told ICv2 that they will appeal. SLCC is considering renaming its convention, but they also want SDCC’s trademark canceled and has already filed a complaint.
So What Does This Mean?
Copyright and trademarks are very complicated. In very general terms, no other company or individual can use a name that is similar to an already-registered or produced work. This seems fairly logical, as otherwise it would be easy to confuse a McDonald’s with a MacDonald’s Restaurant. However, McDonald’s can be used in a name like McDonald’s Towing, as people aren’t likely to confuse a place to eat burgers with a place to call to rescue your car. At the same time, a market leader (or a savvy individual) can’t fully claim trademarks on generic terms or ideas, like a rectangle with rounded edges.
Some analysts saw the jury’s verdict as a draw or compromise verdict. SLCC is a young event, and a large verdict could bankrupt them. And although one of the convention’s founders admitted to knowing about San Diego’s Comic-Con (and even advertising during SDCC), the jury did not think this infringement was willful, which likely kept the punitive damages low. To many, it seems odd that SLCC didn’t commit willful infringement considering the organizers absolutely knew about SDCC and were even advertising during the latter’s events.
While anime is not the focus of most comic conventions, a lot of the major publishers do attend these various events and often make new license announcements there. Last NYCC, the author of Fairy Tail was the guest of honor. As mentioned earlier, there are many, many events that call themselves “Comic Con” or some derivative of that. Some filed briefs in support of SLCC, and now they may have some tough decisions to make: do they rename their conventions, losing their established brand, or do they keep their names and risk SDCC one day declaring trademark infringement? Of course, SDCC would likely have to answer the question of, “Why did you wait so long?”, but surely a lawyer could explain come up with a plausible explanation (finances, change of logo, etc.).
New York Comic Con’s organizers, ReedPOP, did not take sides in the trial, and as one writer put it, they were “the dog that didn’t bark in this whole matter”, perhaps surprising since arguably they have the most to lose or gain. (But perhaps that’s exactly why.) For a lot of people, they could care less if the event was called New York Comic Con or New York Bucket o’ Graphic Novel and Other Cool Stuff Fun, but it makes a difference to ReedPOP, the people who produce merchandise, the logo artists, people trying to get special guests and trying to point out their name recognition, etc. What if some anime conventions start making claims to their name format of “Anime (insert word here)” or “(such-and-such) Kon”?
It’s an interesting case.