The Comic-Con lawsuit is scheduled to go before a San Diego judge this September. At contention is who owns the trademark term “Comic-Con” or its variants. Comic-Con International (CCI), filing suit as San Diego Comic-Con (SDCC) seeks an injunction against the owners of the Salt Lake Comic Convention against using “Comic Con” in their convention’s name. The organizers of SDCC and other events claim that the much smaller event “tries to capitalize on San Diego Comic-Con’s ingenuity and hard work”. CCI, which just reached an agreement with the city to keep their flagship event in San Diego through 2021, seeks full ownership of the naming rights.
What’s in a name?
SDCC filed its suit in August 2014 against Bryan Brandenburg and Dan Farr, co-founders of the Salt Lake Comic Con. The suit alleges that the name for their pop-culture convention is too similar to the San Diego event’s name. SDCC cited its use of the term “Comic-Con” since it was the Golden State Comic Book Convention in 1970. They also take issue with the Salt Lake convention’s use of the marketing phrase “Comic Con is coming to Utah”. This phrase appeared on flyers that were distributed outside the San Diego Convention Center in July, 2014. An Audi with the phrase also drove around San Diego’s Gas Lamp District. Both of these activities promoting the inaugural Salt Lake City event took place during the convention. SDCC claims in its cease and desist letter that this marketing implied that there was a connection between SDCC and the upstart.
“[Salt Lake Comic Con’s] actions have caused, and will continue to cause, irreparable harm to [San Diego Comic-Con] and to the public which is deceived as to the source and sponsorship of [San Diego’s] goods and services,” – text of SDCC lawsuit against SLCC
For their part, Brandenburg and Farr claim several points of defense for their position, including what they say are undisputed facts:
- The San Diego convention tried to trademark the term “comic con” – without the hyphen – in 1995 but had to back down under opposition from Motor City Comic Con and Chicago Comicon.
- The term ‘comic con’ is like Xerox, in that it’s a generic brand.
- The first comic cons happened in 1966, three in New York alone. San Diego didn’t start calling themselves Comic Con until 1970.
- Since that time they have not policed their trademark and have allowed hundreds of events across the country to use the phrase without license or legal penalties.
- When they applied for their trademark, San Diego Comic-Con falsely claimed that they were the only ones using the phrase Comic Con at the time, thereby violating basic conditions under which trademarks are legally awarded.
They also note that the unrelated New York Comic Con has also been using the name for a number of years. In addition, Wizard World operates 24 conventions nationwide using the moniker. Like Salt Lake, none of these other conventions use the hyphen in their name. Brandenburg asserts that an SDCC win would set a precedent allowing it to go after the other conventions.
Talks Break Down
U.S. Patent and Trademark Office initially granted the trademark to SLCC, but had put it on hold pending the outcome of the lawsuit. The two sides had been negotiating out of court, but recently came to an impasse. Prior to this change of events, the Utahns had expressed optimism that a settlement could be reached. Brandenburg had stated that they were moving close to a resolution and that he hoped they could “create a bit of a bromance” with their San Diego counterparts.
Both parties requested that a judge in the U.S. District Court for the Southern District of California hear the case. The hearing is scheduled for September 21st, but that is likely to be pushed back as that is the opening day for the Salt Lake Event. In addition to SLCC, the pair also launched FanX, which also takes place at the Salt Palace Convention Center, six months before their annual flagship event.