San Diego Comic Convention v. Dan Farr Prods., Case No.: 14-cv-1865-AJB-JMA

• Decision Date: 15 April 2019
• 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.

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 SOUTHERN DISTRICT OF CALIFORNIA

April 15, 2019

AMENDED ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR ATTORNEYS' FEES AND COSTS PURSUANT TO 15 U.S.C. § 1117(a)

(Doc. No. 425)

Pursuant to 15 U.S.C. § 1117(a), a court may in "exceptional cases" award reasonable attorneys' fees and costs to the prevailing party in a trademark infringement lawsuit. Plaintiff San Diego Comic Convention ("SDCC") moves this Court to find that the instant case is "exceptional." (Doc. No. 425.) Defendants Dan Farr Productions, Daniel Farr, and Bryan Brandenburg (collectively referred to as "DFP") oppose SDCC's request. (Doc. No. 512.) On May 31, 2018, the Court held a hearing on the motion and then submitted the matter. (Doc. No. 504.) Finding that this case is in fact "exceptional," the Court awards SDCC reasonable attorneys' fees and costs subject to certain deductions. Accordingly, the Court GRANTS IN PART AND DENIES IN PART SDCC's motion. (Doc. No. 425.)

BACKGROUND

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 against DFP alleging two causes of action: (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 convention known as the "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:

1. Comic-Con;

2. Comic Con International;

3. Anaheim Comic-Con; and

4. Image materials not available for display.

(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 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 trademarks. (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, SDCC filed three motions: (1) its motion for permanent injunction, (Doc. No. 419); (2) the instant motion, its motion for attorneys' fees and costs, (Doc. No. 425); and (3) its motion for judgment as a matter of law or in the alternative motion for new trial, (Doc. No. 433). Thereafter, on August 8, 2018, the Court ordered SDCC to file a supplemental brief breaking down the total amount of fees it requested. (Doc. No. 523.) DFP then asked for the opportunity to respond to SDCC's supplemental brief. (Doc. No. 531.) The Court granted this request, and DFP's response was filed on August 22, 2018. (Id.; Doc. No. 532.)

DISCUSSION

A. This Case is Exceptional Pursuant to 15 U.S.C. § 1117(a)

SDCC's motion provides an exhaustive and detailed account of the actions it believes makes this case exceptional. (See generally Doc. No. 425-1.) In opposition, DFP asserts that SDCC's motion is based on distortions, is unpersuasive, and relies on critiques that are hyperbolic and hypocritical. (See generally Doc. No. 512.)

The Lanham Act permits an award of reasonable attorneys' fees to the prevailing party in "exceptional cases." 15 U.S.C. § 1117(a). Originally, "[w]hile the term 'exceptional' [was] not defined in the statute, generally a trademark case [was] exceptional for purposes of an award of attorneys' fees when the infringement [was] malicious, fraudulent, deliberate or willful." Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1409 (9th Cir. 1993).

In 2016, the Ninth Circuit in SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 839 F.3d 1179 (9th Cir. 2016), relied on the Supreme Court's decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014), to abrogate Lindy Pen Co. and modify the standard definition of "exceptional" in attorney fee recovery Lanham Act cases. SunEarth, Inc., 839 F.3d at 1180. Ultimately, the Ninth Circuit held that "district courts analyzing a request for fees under the Lanham Act should examine the 'totality of the circumstances' to determine if the case [is] exceptional, exercising equitable discretionin light of the nonexclusive factors identified in Octane Fitness and Fogerty, and using a preponderance of the evidence standard." Id. at 1181 (internal citation omitted).

The Ninth Circuit also defined an exceptional case as one that simply "stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated." Id. at 1180 (citation omitted). The nonexclusive factors in determining if a case is "exceptional" include: "frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Id. at 1181 (citation omitted).³ Additionally, despite the Ninth Circuit's decision to alter the definition of "exceptional," the Federal Circuit held that Octane Fitness "gave no indication that [the Federal Circuit] should rethink [its] litigation misconduct line of § 285 cases" and stated that "district courts can turn to [] pre-Octane Fitness case law for guidance" regarding such arguments. SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1349 (Fed. Cir. 2015).

In sum, litigation brought in bad faith or with objectively baseless claims may be considered exceptional, as may litigation demonstrating inequitable conduct or willful infringement. Fogerty v. Fantasy, Inc., 510 U.S. 517, 525 n.12 (1994); see also Octane Fitness, 134 S. Ct. at 1757 ("[A] case presenting either subjective bad faith or exceptionally meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee award."). Similarly, courts "have awarded attorneys' fees . . . where a party advances arguments that are particularly weak and lack support in the record or seek only to re-litigate issues the court has already decided." Intex Recreation Corp. v. Team Worldwide Corp., 77 F. Supp. 3d 212, 217 (D.C. Cir. 2015). Thus, the determination of "exceptional"falls squarely within the discretion of the trial court. Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1748 (2014).

Here, the jury found that DFP infringed on all three of SDCC's trademarks, yet also found that DFP did not willfully infringe the marks. (See generally Doc. No. 395.) Thus, under the original definition of "exceptional," SDCC's request for attorneys' fees would have been difficult to advance successfully. See Gracie v. Gracie, 217 F.3d 1060, 1068 (9th Cir. 2000) ("Here the jury explicitly found that [the defendant] engaged in 'willful' infringement . . .The district court's decision to make a fee award to [the plaintiff] thus flows quite naturally from the jury's finding of willful infringement . . ."). However, after SunEarth, examining the totality of the circumstances, the Court finds that this case is not a dime a dozen. Instead, it is a trademark infringement lawsuit that stands out from others based on the unreasonable manner it was litigated and thus an award of attorneys' fees and costs to SDCC is justified.

i. SDCC is the Prevailing Party

As an initial matter, the Court addresses DFP's assertion that the "split verdict" in this case illustrates that there is no clear winner. (Doc. No. 512 at 8-9.) Accordingly, as the Lanham Act only authorizes an award of fees "to the prevailing party," DFP contends that SDCC's motion is flawed. (Id.) DFP's argument is both unpersuasive and legally unsound.

Had DFP researched this issue thoroughly, DFP would have discovered that the jury verdict in favor of SDCC for trademark infringement renders SDCC the prevailing party. See Farrar v. Hobby, 506...