The Ninth Circuit Affirms Ruling that COMIC-CON isn’t Generic for Comic Conventions

Published: May 15, 2020


The IP Law Blog

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The battle started almost six years ago. A Utah-based company known as Dan Farr Productions (“DFP”) decided to use San Diego Comic Convention’s (“SDCC”) registered trademark COMIC-CON in conjunction with its own comic and popular arts convention, resulting in SDCC filing suit in the Southern District of California. SDCC alleged in its complaint that it has the exclusive right to utilize its COMIC-CON trademarks and has done so in connection with its comic convention since 1970.

After years of litigation, which was apparently filled with gamesmanship on the part of DFP and its counsel, SDCC prevailed on a motion for summary judgment. DFP met SDCC’s claim for infringement with an affirmative defense that SDCC’s marks were “generic ab initio.” In other words, DFP argued that COMIC-CON was generic before SDCC’s first use. The district court disagreed, finding that the evidence tendered by DFP was insufficient to support the argument that COMIC-CON was generic before SDCC’s first use. The Ninth Circuit reviewed this decision de novo and found that the district court properly granted summary judgment in favor of SDCC.

The Ninth Circuit also addressed the district’s court attorneys’ fees and costs award. DFP appealed the district court’s order granting SDCC over $3.7 million for attorney’s fees and costs, claiming that the district court erred because the case was not “exceptional” as required by SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 2016) (en banc) (per curiam). The Ninth Circuit reviewed the award, applying an abuse of discretion standard, and found that the district court did not abuse its discretion in awarding reasonable attorneys’ fees. The Ninth Circuit recognized that that district courts should analyze the “totality of the circumstances” to determine if a case is exceptional, using the preponderance of the evidence standard. SunEarth, 839 F.3d at 1181. The Ninth Circuit found that the district court properly applied the totality of the circumstances standard and focused primarily on the “unreasonable manner” in which DFP litigated the case. Specifically, the district court noted that DFP repeatedly failed to comply with court rules, re-litigated issues already decided, and engaged in gamesmanship. Given the district court’s findings and consideration of these factors, the Ninth Circuit held that the district court did not abuse its discretion deeming the case “exceptional” and granting attorneys’ fees under 15 U.S.C. § 1117(a).

As to the amount, DFP failed to challenge the hourly rates and reasonableness of timesheets for SDCC’s attorneys at the district-court level or on appeal. Instead, DFP argued that there must be a causal connection between the misconduct rendering the case exceptional and the particulars of the fee award. The Ninth Circuit found no authority supporting this argument, and stated that, regardless, the district court found that Defendants engaged in misconduct at every stage of the litigation, rendering an award of attorney’s fees related to the entire case proper.

The only portion of the district court’s fee and cost award that the Ninth Circuit took issue with was the award of $212,323.56 for expert witness fees. The Ninth Circuit found that although successful plaintiffs are entitled to “the costs of the action” under the Lanham Act, the Lanham Act does not provide the “explicit statutory authority” required to award litigation expenses beyond the six categories of costs set forth in the general costs statute. See 28 U.S.C. §§ 1821, 1920. Accordingly, because the general cost statute doesn’t reference expert witness fees, the district court erred in awarding such costs to SDCC under the Lanham Act. As such, the Ninth Circuit vacated that portion of the judgment.

Overall, the Ninth Circuit’s review was favorable to SDCC. The appellate court affirmed the summary judgment in favor of SDCC, finding DFP infringed SDCC’s COMIC-CON trademarks and that DFP’s “generic ab initio” argument lacked evidentiary support. And although the Ninth Circuit vacated the portion of the judgment awarding SDCC expert witness fees, it affirmed the remainder of the attorney’s fees award, leaving approximately $3.5 million of the award intact. SDCC certainly could have done worse.