San Diego Comic Convention, Non-Profit Corp. v. Dan Farr Prods.
| Decision Date | 23 August 2018 |
| Docket Number | Case No.: 14-cv-1865-AJB-JMA |
| Court | U.S. District Court — Southern District of California |
| Parties | SAN DIEGO COMIC CONVENTION, a California non-profit corporation, Plaintiff, v. DAN FARR PRODUCTIONS, a Utah limited liability company, Daniel Farr, an individual, Bryan Brandenburg, an individual, Defendants. |
Callie A. Bjurstrom, Lauren Elizabeth Wardle, Matthew Robert Stephens, Michelle Ann Herrera, Nathaniel R. Smith, Peter K. Hahn, Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA, for Plaintiff.
Charles James Veverka, Pro Hac Vice, Danny Barber, Pro Hac Vice, Rachel Jacques, Pro Hac Vice, Maschoff Brennan, Park City, UT, Michael I. Katz, Tyson K. Hottinger, Maschoff Brennan, Irvine, CA, L. Rex Sears, Maschoff Brennan, Salt Lake City, UT, for Defendants.
ORDER DENYING DEFENDANTS' MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 50
Unwavering in their ultimate defenses, Defendants Dan Farr Productions, Daniel Farr, and Bryan Brandenburg (collectively referred to as "DFP") move for judgment as a matter of law on two issues: genericness and likelihood of confusion. (Doc. No. 429.) Plaintiff San Diego Comic Convention ("SDCC") opposes the motion in its entirety. (Doc. No. 468.) On May 31, 2018, the Court held a hearing on the motion and then took the matter under submission. (Doc. No. 504.) As the record does not permit a conclusion contrary to the jury's verdict, the Court DENIES DFP's Federal Rule of Civil Procedure 50 motion. (Doc. No. 429.)
The Court is already well-versed as to the events leading up to the institution of this action. Thus, for the purposes of this Order, the Court will only provide a narrow review of this lawsuit's factual and procedural background.
On August 7, 2014, SDCC filed a lawsuit alleging two causes of action against DFP: (1) Federal Trademark Infringement, 15 U.S.C. § 1114 ; and (2) False Designation of Origin, 15 U.S.C. § 1125(a). (See generally Doc. No. 1.) SDCC is a non-profit corporation, formed in 1975, that is dedicated to the awareness and appreciation of comics and related popular art forms. (Doc. No. 1 ¶ 10.) Every year since 1970, SDCC has produced and held its "Comic-Con convention" in San Diego, California. (Id. ¶ 11; Doc. No. 97 at 9.)1 The convention spans several days in length and showcases several hundred events, workshops, educational and academic programs, games, award shows, costume contests, as well as hosts panels of special guests that include science fiction and fantasy authors, film and television actors, directors, producers, and writers. (Doc. No. 1 ¶ 12; Doc. No. 97 at 9.) In 2016, attendance to San Diego Comic-Con exceeded over 135,000 attendees. (Doc. No. 97 at 9.)
SDCC's family of trademarks at issue in this case are:
(Doc. No. 1 ¶ 13; Doc. No. 244 at 11.) Each of these registered trademarks is incontestable. (Doc. No. 381 at 25:15–25.) Additionally, SDCC states that it has used these Comic-Con marks extensively and continuously in interstate commerce and thus the marks have become valuable assets as well as symbols of its goodwill and positive industry reputation. (Doc. No. 1 ¶ 15.)
In early 2013, Defendant Dan Farr Productions, a limited liability company, began to advertise and promote its own popular arts convention named "Salt Lake Comic Con" ("SLCC"). (Doc. No. 234-2 at 7; Herrera Decl. Ex. 5 ("Farr Depo." 11:4–9, Doc. No. 95-7).) Similar to SDCC's convention, SLCC is a three-day fan event featuring the best in movies, television shows, gaming, sci-fi, fantasy, and comic books. (Doc. No. 244 at 12.) Since 2013, SLCC has been held every year and in the beginning of 2014, Dan Farr Productions created its Salt Lake Comic Con FanXperience event, which has also been held every year since its inception. (Farr Depo. at 11:10–15; Doc. No. 97 at 11.)
Thus, the marrow of this case is whether DFP's comic arts and popular fiction event named "Salt Lake Comic Con" infringed on SDCC's three incontestable trademarks.2 On December 8, 2017, after an eight-day jury trial, the jury found that DFP had indeed infringed on SDCC's family of service marks. (Doc. No. 395 at 2–5.) As to unfair competition and false designation of origin however, the jury found in favor of DFP. (Id. at 6.) In total, the jury awarded corrective advertising damages to SDCC in the amount of $20,000.00. (Id. at 8.)
Post-trial, DFP filed four motions: (1) the present matter, their motion for judgment as a matter of law, (Doc. No. 429); (2) a motion for new trial of validity and infringement, (Doc. No. 436); (3) a motion for ruling on estoppel defense, (Doc. No. 508); and (4) their motion for ruling on unclean hands defense, (Doc. No. 510).
"[I]n entertaining a motion for judgment as a matter of law, the court should review all of the evidence in the record." Reeves v. Sanderson Plumbing Prods., Inc. , 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). In doing so, a court "must view the evidence in the light most favorable to the nonmoving party ... and draw all reasonable inferences in that party's favor." Josephs v. Pac. Bell , 443 F.3d 1050, 1062 (9th Cir. 2006). "The test applied is whether the evidence permits only one reasonable conclusion, and that conclusion is contrary to the jury's verdict." Id. In other words, DFP has the high burden of demonstrating that there is a "complete absence of probative facts to support the conclusion reached so that no reasonable juror could have found for the nonmoving party." Eich v. Bd. of Regents for Cent. Missouri State Univ. , 350 F.3d 752, 761 (8th Cir. 2003) (citation omitted).
DFP moves for judgment as a matter of law ("JMOL") on genericness and likelihood of confusion. (See generally Doc. No. 429-1.) As will be explained in great detail below, the Court's review of the record demonstrates that there is substantial evidence to support the jury's verdict.
Generic terms are "common descriptive" marks which identify only the type of good "of which the particular product or service is a species[.]" Park 'N Fly, Inc. v. Dollar Park and Fly, Inc. , 718 F.2d 327, 329 (9th Cir. 1983), judgment reversed on other grounds by 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Generic terms are not protectable because they do not identify the source of a product. Id. In determining whether a phrase is generic or not, the main question a court must ask itself is whether the "primary significance of the registered mark to the relevant public" is as the name for a particular type of good or service irrespective of its source. Elliott v. Google, Inc. , 860 F.3d 1151, 1156 (9th Cir. 2017) (citation omitted).
Overtime, the holder of a valid trademark may become a "victim of genericide." Freecycle Network, Inc. v. Oey , 505 F.3d 898, 905 (9th Cir. 2007) (citation and internal quotation marks omitted). Genericide happens when the public uses a trademark as a generic name for the specific type of good or service "irrespective of its source." Elliott , 860 F.3d at 1156. For example, marks such as Aspirin, Cellophane, and Escalator, were once "protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods." Id. However, over time the marks were appropriated by the public and are now primarily understood as generic names for the goods. Id.
Incontestable marks, like SDCC's three trademarks, have been in use for five consecutive years and are still in use in commerce. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. , 408 F.3d 596, 602 (9th Cir. 2005). An incontestable registration is "conclusive evidence of the validity of the registered mark...." 15 U.S.C. § 1115(b). However, an incontestable mark can still be subject to challenge through a generic defense. See Park 'N Fly, Inc. v. Dollar Park and Fly, Inc. , 469 U.S. 189, 194–95, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985) (citation omitted).
DFP provides four different arguments to support their belief that the evidence at trial "overwhelmingly" shows that SDCC's marks are generic: (1) widespread use of "Comic Con" by SDCC's competitors; (2) media usage of the phrase; (3) SDCC's purported own generic use of "Comic Con"; and (4) the inapplicability of SDCC's consumer survey and its various defects render it useless to the matter at hand. (Doc. No. 429-1 at 8–15.) Each of these factors do not on its own demonstrate genericness. See Classic Foods Int'l Corp. v. Kettle Foods, Inc. , 468 F.Supp.2d 1181, 1189 (C.D. Cal. 2007) (). Thus, for purposes of this Order, the Court will look at the totality of the evidence to determine if the record establishes that no reasonable juror could find for SDCC as to the issue of genericness.
DFP contends that SDCC's failure to police its mark has resulted in over one-hundred competitors using "Comic Con," which is strong evidence of genericide. (Doc. No. 429-1 at 9–10.) In opposition, SDCC argues that third-party use of "Comic-Con" is only infringing trademark use, not generic use of the Comic-Con mark and that third-party infringing use does not on its own render its mark generic. (Doc. No. 468 at 11–13.)
Courts view a mark's use by competitors as "strong evidence of how the public perceives the term." Classic Foods Int'l Corp. , 468 F.Supp.2d at 1190. Logically, "when more members of the public see a mark used by several producers in the industry, the less likely they will identify a particular producer with that mark." CG Roxane LLC v. Fiji Water Co. LLC , 569 F.Supp.2d 1019, 1027 (N.D. Cal. 2008).
The Court does not deny that the extensive use of "Comic Con" by SDCC's competitors is evidence that heavily advances DFP's assertions of genericness. See id. at 1027–28 (...
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