Making it Worse – $4M Judement Against Salt Lake Comic Con

On December 8, 2017, Comic-Con International (CCI) won its protracted lawsuit against Dan Farr and Bryan Brandenburg, founders of the Salt Lake Comic Con. Vowing to appeal, the duo – operating as Dan Farr Productions (DFP) – continued their self-styled “David vs. Goliath Battle.”It did not go well.

Justice Smash!

U.S. District Judge Anthony Battaglia not only granted a permanent injunction against any future use of the phrase “Comic Con” by DFP, he ordered them to pay CCI $3.96 million of the $5 million in legal fees that the non-profit had requested. The fees include $3.77 million in attorney fees and $212,323.56 in expert witness costs.

In a blistering, 37-page ruling Judge Battaglia found the case to be “exceptional” in explaining his reason for imposing the award – a rarity in a case where the verdict had been a split result. Battaglia took DFP to task for “astonishingly” citing the Oxford Dictionary definition of the word “con” in mounting their defense – a repeat of their failed defense in the earlier case.

He wrote, ” continuing, ” He took DFP to task for “astonishingly” citing the Oxford Dictionary definition of “con” in mounting their defense – a repeat of their failed defense in the earlier case. 

At every opportunity, DFP has repeated, re-argued, and recycled arguments already briefed by both parties and analyzed and ruled on by the court. This type of wasteful litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this court to squander already limited judicial resources.  Ultimately, resembling a broken record, DFP has repetitively restated and rehashed several contentions that they were unable to advance successfully prior to trial … This type of cyclical motion practice is objectively unreasonable and has justified attorneys’ fees in accordance with the Lantham Act.

It was apparently the rehashing of old arguments by DFP that compelled the judge to impose the fees.

Ah! Ah! Ah! Don’t say the “C” Word!

Following the judgement in December, Salt Lake Comic Con was rebranded FanX Salt Lake which brought it into alignment with their smaller event held in the spring, FanXperience. In granting the injunction, Judge Battaglia further prohibited any use of “Comic Con,” or “Comic-Con” plus anything remotely similar such as “KomicKhan”,  “ComicKon” or any “confusingly similar phrase.” Further, DFP had to remove all traces of its former name from its web page. Previously, “Formerly Salt Lake Comic Con” had been featured prominently alongside its new name. Taking things one step further, Farr and Brandenburg have 30 days to cease using their former web address saltlakecomiccon.com, even though it now only redirects to the FanXSaltLake domain. Since FanX takes place on September 6-8, this would have no effect on the current convention.

DFP did experience a couple of small victories. The judge denied Comic-Con International’s request that FanX could not use the term “Comic Convention.” Further, he did not require FanX to destroy all merchandise bearing the banned phrases. However old merchandise can not be sold, given away or used for any other commercial purpose. Most importantly, Judge Battaglia denied CCI’s request for a new trial and upheld the jury’s ruling that the infringement “was not willful.” Therefore, DFP was not required to disgorge its profits for the past four years.

The Comic-Con International team was understandably upbeat about the verdict, issuing a statement in response to the ruling:

“San Diego Comic Convention has used the Comic-Con brand in connection with our comics and popular arts conventions for almost 50 years. We have invested substantial time, talent and resources in the brand resulting in world-wide recognition of the Comic-Con convention held annually in San Diego. We have always preferred, and continue to prefer, resolving disputes outside of court, but the Defendants’ conduct made that impossible in this case. We are grateful to the jury that found in our favor and the Court that upheld the jury verdict. While we are obviously pleased with the final outcome, we must double our efforts to do what is our primary objective; to celebrate the historic and ongoing contribution of comics and related popular artforms to art and culture. We will do this through our conventions Comic-Con in San Diego, WonderCon in Anaheim and, soon, the new Comic-Con Museum in Balboa Park, San Diego.”

A Four-Year Battle

The suit began after events in San Diego during the run of Comic-Con in July 2014. The duo drove around the Gaslamp District – the hub of convention-related activity outside of the convention center – for two days in a $200,000 Audi R8 Spyder wrapped with the logo and name “Salt Lake Comic Con.” In addition DFP staff handed out fliers to SDCC attendees proclaiming “Comic Con comes to Salt Lake!” They were overheard by this reporter claiming that their event was “an expansion of Comic-Con.” Comic-Con International sent a cease -and -desist letter the following month, but neither Farr nor Brandenburg responded. CCI file a 16-page legal complaint on August 11 alleging trademark infringement and “false designation of origin. “About two years passed as both sides attempted to reach a settlement before finally going to trial. During the trial, DFP emails revealed that they were indeed attempting “leverage the name and experience associated with other giant cons, including the industry’s mega show, Comic-Con International.”

The judge specifically chastised the actions of DFP’s legal team as well as Farr and Brandenburg’s actions in and out of the court. The order cites DFP’s lawyers for “clear misconduct” by playing to the jury’s bias in mentioning San Diego Comic-Con’s size and financial success as well as violating the court’s “Golden Rule” by improperly asking jurors to put themselves in the place of Farr and Brandenburg. Brandenburg was particularly singled out for breaking court orders in divulging confidential information on social media accounts including Facebook and Twitter. Calling Brandenburg’s rejection of SDCC’s original cease-and-desist and attempting to argue his case in the media “objectively irrational”, Battaglia also faulted Bradenburg for rejecting CCI’s original suggestion that they use “Comic Convention” instead. In his ruling, the judge noted with irony that, “Post-trial and post-verdict, DFP did exactly what SDCC asked” and used “comic convention” in their marketing.That verdict was a mixed bag for both entities. CCI demanded $12M in damages – including coverage of “corrective advertising” as well as a permanent injunction. The jury decided in favor of CCI, but did not find the infringement “willful” and awarded only $20,000. That amount was far less than the plaintiff’s legal costs which were around $3M at the time. The six-person jury also ruled:

• San Diego Comic-Con owns the mark and that the SLCC used it without permission.
• The mark “Comic Con International” is valid and owned by San Diego Comic-Con, and that SLCC infringed, using the phrase “comic con” without permission.
• The same is found for the eye logo, finding that Dan Farr and Bryan Brandenburg, as individuals, and their company, Dan Farr Productions, used the trademarks without permission.

Not What it Seems

From the beginning, Farr and Bradenburg portrayed themselves as altruistic crusaders, standing up for other small cons in a “David vs. Goliath” legal battle. However, they repeatedly violated Battaglia’s gag rule and promoted their case via social media including crowdfunding. It was revealed during the eight-day trial that they had voted themselves each $225,000 bonuses – partially funded by the money raised for legal defense. Despite their claims of being “the little guys”, SLCC/FanX’ attendance numbers have been anything but small. According to their attendance figures, The September 2014 convention attracted over 120,000 attendees, compared to SDCC’s stated numbers of 135,000 – a number which is capped by the San Diego fire marshal due to safety concerns. Figures for 2015 and 2016 show 127,000 and “over 120,000” respectively. Likewise, the celebrity guest list includes a number of A-listers with this year being no exception. In 2016, it was announced that FanX would be expanding to Asia. The $4 million judgement against DFP is not enough to cripple the convention, but it is enough to get the pair’s attention.

What Next?

Farr and Brandenburg released a statement on Friday vowing to appeal the jury’s verdict and the judge’s ruling on the fees:

“We do not expect a $4 million attorney fee award predicated on a $20,000 jury verdict to survive appellate review,” they wrote. “We have instructed our attorneys to begin working on an appeal to the 9th Circuit [Court of Appeals] — while we prepare for what we expect to be our best event ever, starting September 6.”

As of this writing CCI has not used their newfound leverage and issued cease-and-desist letters to any of the 100 or so other comic book conventions using the term “Comic Con” in their name. That was the fear expressed by many in the industry as well as one of the arguments utilized by DFP. Some conventions, such as Atlanta’s DragonCon, don’t use the term. And, others like Rose City Comic Con have gotten a license (for an undisclosed, but said to be nominal fee) to continue using it. Judge Battaglia noted that there were no other ongoing Federal suits related to this matter, so the expected flurry of lawsuits as yet to come to pass. Comic-Con International may be satisfied to have made an example and set precedent to ward off future attempts at hijacking its brand rather than take on the entire industry, including ReedPOP, the for-profit that runs the giant New York Comic Con and Seattle’s Emerald City Comic Con.

When the suit was originally filed, expert legal opinion was that Comic-Con International had a weak case, citing its 1996 failure against Chicago Comic Con along with the prevalence of the phrase in the names of dozens of unrelated conventions. While the San Diego event was one of the first, growing from humble origins in 1970, the term had become common in the 20 years before CCI attempted to trademark it. In the end, Comic-Con won a narrow victory – a ruling that yes, it did own the name “Comic-Con,” but the jury found the infringement “unwillful”. Had DFP been better organized in its defense and not as blatant in their attempt to imply a connection to the San Diego event, the verdict may have come out very differently.

No Trespassing

SDCC vs SLCC recalls another recent event in fandom – the Paramount/CBS vs. Axanar fight. In both cases, the defendants attempted to leverage existing intellectual properties and the related fans to boost their own for-profit enterprises. By being flagrant in their abuse of the rules, they compelled the rightful owners to take action to defend their respective properties because to do otherwise would establish precedent that they could be freely used by any and all. Both legal cases revealed the shortcomings of the property owners in protecting them up to that date. Yet, in the end, the owners prevailed. In the case of Axanar, the studios overreacted and shut down a long-standing avenue for fans to show their support and build their fandom. The risk is real that CCI could likewise use its legal victory as a club to compel other pop culture conventions to comply or face lawsuits. But for now, it seems that the San Diego group is content in its victory, having defended its turf.

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Wyatt D. Odd