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
• Citation: 336 F.Supp.3d 1191
• 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.
• Court: U.S. District Court — Southern District of California

336 F.Supp.3d 1191

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.

Case No.: 14-cv-1865-AJB-JMA

United States District Court, S.D. California.

Signed August 23, 2018

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, Danny Barber, Rachel Jacques, 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 GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR PERMANENT INJUNCTION

Hon. Anthony J. Battaglia, United States District Judge

Trademarks function as roadmaps for consumers. In essence, whether they are symbols, slogans, designs, words, or a combination of elements, their vital function is to help companies distinguish their goods and services from others. In 2014, in an attempt to protect its three incontestable trademarks filed with the United States Patent and Trademark Office, Plaintiff San Diego Comic Convention ("SDCC") filed a complaint against Defendants Dan Farr Productions, Daniel Farr, and Bryan Brandenburg (collectively referred to as "DFP") alleging trademark infringement and false designation of origin. Three years of litigation later, and after an eight-day jury trial, a jury concluded that SDCC has three valid protectable trademarks and that DFP had infringed on each. As a result, SDCC now moves for a permanent injunction. (Doc. No. 419.) DFP opposes the motion. (Doc. No. 513.) On May 31, 2018, the Court held a hearing on the matter and then took the motion under submission. (Doc. No. 504.) As will be explained in greater detail below, SDCC's request for a permanent injunction is GRANTED IN PART AND DENIED IN PART .

DISCUSSION

Based on the trademark infringement verdict in its favor, SDCC requests that this Court issue an injunction on the following matters¹ :

1. An Order enjoining Defendants from any use of SDCC's three trademarks asserted in this case, or any marks confusingly similar thereto including, but not limited to, any mark that consists of or incorporates the specific word combinations "Comic Con," "Comic-Con," "Comicon," or "Comic Convention" or the phonetic equivalents of such specific word combinations, in the name of any comic or popular arts convention or in connection with the promotion or for the purposes of promoting, advertising or marketing any comic or popular arts convention;

2. An Order directing Defendants to immediately destroy all merchandise and all marketing materials bearing the specific word combinations "Comic Con," "Comic-Con," "Comicon," or "Comic Convention" or the phonetic equivalents of such specific word combinations in the name of any comic or popular arts convention;

3. An Order enjoining Defendants from the use or operation of any website domain name or URL that consists of or incorporates the specific word combinations "Comic Con," "Comic-Con," "Comicon," or "Comic Convention" or the phonetic equivalents of such specific word combinations; and

4. An Order enjoining Defendants from the use or operation of any social media site that consists of or incorporates the specific word combinations "Comic Con," "Comic-con," "Comicon," or "Comic Convention" or the phonetic equivalents of such specific word combinations in the name of any comic or popular arts convention.

(Doc. No. 419-1 at 10–11.)

In opposition, DFP asserts that an injunction would serve no purpose in this matter as they have already rebranded their event "FanX Salt Lake Comic Convention" and they do not intend to use "Salt Lake Comic Con" in the future. (Doc. No. 513 at 5.) Moreover, DFP argues that SDCC's proposed injunction is altogether too broad. (Id. )

Under the Lanham Act, "the district court [has] the ‘power to grant injunctions according to principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right’ of the trademark owner." Reno Air Racing Ass'n, Inc. v. McCord , 452 F.3d 1126, 1137 (9th Cir. 2006) (citing 15 U.S.C. § 1116(a) ). In fact, "[i]njunctive relief is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant's continuing infringement." Century 21 Real Estate Corp. v. Sandlin , 846 F.2d 1175, 1180 (9th Cir. 1988).

In order for the Court to grant a permanent injunction, SDCC must demonstrate "(1) actual success on the merits; (2) a likelihood of irreparable injury if injunctive relief is not granted; (3) a balance of hardships favoring Plaintiff; and (4) that an injunction will advance the public interest." Wecosign, Inc. v. IFG Holdings, Inc. , 845 F.Supp.2d 1072, 1084 (C.D. Cal. 2012).

As an initial matter, the Court wishes to address four particular arguments made by DFP in their opposition brief: (1) that there is currently no threat of harm for an injunction to prevent; (2) their discontinuance of "Salt Lake Comic Con" is effective; (3) that DFP has a good faith intent not to resume use of "Salt Lake Comic Con;" and (4) no injunction should be entered because no proper scope can be fixed. (Doc. No. 513 at 6–10.)

As to the first three arguments, the Court finds them wholly unpersuasive. DFP cites to various Supreme Court cases to support their belief that an injunction should not be issued as there is no future threat of trademark infringement due to their decision to change the name of their event. (Id. at 6.) However, the two cases DFP cites to are factually inapplicable. In Dombrowski v. Pfister , 380 U.S. 479, 481, 85 S.Ct. 1116, 14 L.Ed.2d 22 (1965), the Supreme Court was analyzing the applicability of an injunction related to the Civil Rights Act. Similarly, in United States v. W.T. Grant Co. , 345 U.S. 629, 630–31, 73 S.Ct. 894, 97 L.Ed. 1303 (1953), the Supreme Court was presented with a civil action brought by the government to enjoin violations of the Clayton Act prohibitions against interlocking corporate directories. Neither of the two cases cited by DFP dealt with permanent injunctions in the context of trademark infringement.

Moreover, DFP provides no case law from this circuit or from other circuits that demonstrates that their "good faith intent" not to use SDCC's trademarks is a factor the Court should take into consideration in determining whether an injunction is warranted. The Court reiterates that injunctions are the primary and most favored form of relief for trademark infringement cases and this circuit has delineated four very specific factors, listed supra p. 3, courts must analyze in these contexts. Wecosign, Inc. , 845 F.Supp.2d at 1083 (citation omitted). Thus, the majority of the Court's analysis will focus on these four elements.

Finally, DFP's contention that no "proper scope can be fixed" and thus no injunction can be issued is meritless. (Doc. No. 513 at 9–10.) DFP injects into this section their own beliefs about how SDCC "pursued a mishmash of infringement theories" and as a result "it is impossible to tell what the jury thought DFP had done wrong." (Id. ) However, DFP's personal opinions on how SDCC prosecuted this matter does not convince this Court that an injunction is unjustified.

Now, turning to the merits of SDCC's motion, the Court finds that SDCC's proposed injunction may be classified into three broad classes: (1) an injunction to bar DFP from use of the phrases "Comic Con" or "Comic-Con"; (2) an injunction to prevent DFP's use of Comic-Con's phonetic equivalents or any confusingly similar phrases; and (3) an injunction to block DFP from use of the phrase "Comic Convention." (Doc. No. 419-1 at 10–11.) This Order will thus proceed by analyzing each of the following categories individually to determine if an injunction should issue.

A. A Permanent Injunction as to the Phrases "Comic Con" or "Comic-Con"

All four of the abovementioned factors weigh in favor of enjoining DFP from use of "Comic-Con" and "Comic Con" in the name of any comic or popular arts event.

As to the first element, as already discussed, a jury found that all three of SDCC's trademarks were valid and that DFP had infringed on all of them. (Doc. No. 395 at 2–5.) This jury verdict could not be a clearer indicator of SDCC's likelihood of success on the merits of its trademark infringement claim.

Second, SDCC has demonstrated that it will suffer "actual irreparable harm" if DFP chooses to use "Comic-Con" or "Comic Con" in the name of any present or future comic arts or popular fiction events. See Herb Reed Enter., LLC v. Florida Entm't Mgmt., Inc. , 736 F.3d 1239, 1249 (9th Cir. 2013) (detailing that following two Supreme Court cases—eBay and Winter —the Ninth Circuit has held that "actual irreparable harm must be demonstrated to obtain a permanent injunction in a trademark infringement action."); see also Amoco Prod. Co. v. Village of Gambell, AK , 480 U.S. 531, 546 n.12, 107 S.Ct. 1396, 94 L.Ed.2d 542 (1987) (explaining that the standard for a preliminary injunction is essentially the same as a permanent injunction except that "likelihood of" is replaced with "actual").

At trial, SDCC produced evidence that demonstrated that DFP's use of "Comic Con" in their event name had resulted in SDCC suffering from loss of goodwill and a potential inability to control its reputation. (Doc. No. 419-1 at 4.) This was supported by testimony from consumers who thought that DFP's convention was related to SDCC's event, that consumers voiced complaints about DFP's convention to SDCC, and that DFP was aware of 30 to 50 instances of confusion. (Id. ; Doc. No. 383 at 118:12–119:1; Tr. Exs. 3, 64, 65, 73A, 73B, 73C.) Moreover, the jury's trademark infringement verdict in favor of SDCC further supports a finding of irreparable...