Long has it been lamented that lawyers, somewhere along the way, misplaced their once highly regarded sense of gentility and notion of fair play. Such protestations have come from commentators, attorneys, and, most often and most vociferously, the courts. Verily, a number of decisions, opinions, and memoranda have rung out with admonishments and harsh words for counsel who do not comport themselves in accord with basic tenets of civility. Sure, society as a whole has gotten a whole lot more abrasive since the days when folks were doffing their chapeaus at one another every other minute, but attorneys were supposed to hold themselves to a higher standard.
And, when an attorney’s conduct dips below that standard, it is the litigants whose counsel is chastised by the court that often bears the repercussions for its counsel’s transgressions. The court, you see, is often constrained by statutes and case law, notwithstanding the existence of 28 USC § 1927, from directly punishing the misbehaving attorneys. So, in many instances it is the litigant that feels the court’s wrath.
Such was the case in a recent decision in the ever-simmering matter entitled San Diego Comic Convention v. Dan Farr Productions, a dispute between the operator of the iconic Comic-Con event in Southern California and a production company running another fan convention in Utah.
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San Diego’s Comic-Con has been held in the town’s Gaslamp District since the 1970s. I am lucky enough to know a lot of nerds and geeks, and when any of them mentions (perhaps in an online forum) the name “Comic-Con” it is obvious to anyone worth their avatar that they are referring to this San Diego event.
In 2013, DFP began throwing its own Comic-Con in Salt Lake City. This event, like the original Comic-Con, “is a three-day fan event featuring the best in movies, television shows, gaming, sci-fi, fantasy, and comic books.” It is most likely beyond dispute that DFP was aware of San Diego’s Comic-Con when it launched its own event under that name. Yet, when contacted by SDCC regarding the confusingly similar use, DFP failed to cease and desist and instead doubled down by registering the name with the U.S. Patent and Trademark Office and using it for an event.
The “marrow of this case” (props to the judge presiding over this whole affair, the Honorable Anthony J. Battaglia, for that delicious turn of phrase) is SDCC’s allegations that DFP infringed its trademark rights by holding a competing Comic-Con event. The matter was put to a jury and the jury predictably found that DFP’s operation of fan events under the name Comic-Con infringed SDCC’s trademark in Comic-Con for fan events. As the prevailing party, SDCC then moved for fees and it was at this juncture that the court unleashed a withering castigation of superhero proportions.
Trademark cases, unlike copyright cases, require a showing of “exceptionality” under 15 U.S.C. § 1117(a) in order for a fee award to be proper. Under the old Ninth Circuit standard as set forth in Lindy Pen v. Bic Pen, “a trademark case [was] exceptional for purposes of an award of attorneys’ fees when the infringement [was] malicious, fraudulent, deliberate or willful.” A couple of years back, though, in SunEarth v. Sun Earth Solar Power Co., the Ninth Circuit abrogated Lindy Pen and announced that courts should examine the ‘totality of the circumstances” to determine exceptionality and that an exceptional case is “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.”
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The court, drawing from that latter language, found that DFP had litigated the Comic-Con case in a way that basically defined “unreasonable.” It then laid out a dizzying litany of missteps and bad practices on behalf of DFP and its counsel.
First, the court rebukes DFP for taking the frivolous and misguided position that it had “prevailed” in the case despite the fact that the jury found DFP to have violated the Lanham Act and committed trademark infringement. The court writes, with a touch of scorn, “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.” Being lambasted at the outset for failing to perform basic research did not augur well for DFP.
The court then upbraids DFP for repeating the same tired arguments over and over in the face of an earlier clear rejection of the positions. DFP, applying what the court found to be a “head in the sand” litigation strategy, persisted in a manner “resembling a broken record,” in rehashing numerous contentions again and again without success. Ultimately, this resulted in a lot more work for everyone and a very upset court.
A number of other violations by DFP and its counsel are also noted before the court closes by concluding that DFP’s counsel violated one of most important court rules, the stricture known amongst trial attorneys as the “Golden Rule.”
As the court states, the Golden Rule “argument is universally condemned because it encourages the jury to depart from neutrality and to decide the case on the basis of personal interest and bias rather than on the evidence.” Basically, it transpires when counsel eschews the facts and law and instead attempts to inflame the emotion of the jury by placing the jury in the litigant’s shoes. Trial lawyers know to avoid this type of argument, but DFP’s counsel really leaned into it, telling the jury straight-up to consider “what it would mean to you if you were personally involved in this.” Yikes.
After a crushing excoriation, the court aggregates all of the wrongs and finds the case exceptional and awards fees against DFP. In doing so, it gives DFP and its counsel $3,767,921.06 reasons to reconsider their disregard for gentility and fair play. And provides us all with the lesson that a bad case is often only made worse by engaging in bad faith tactics and uncouth behavior in an attempt to prevail.
Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at [email protected], and you can follow his law firm on Instagram: @veniceartlaw.