Comic Con

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Case: 18-56221, 10/10/2018, ID: 11041285, DktEntry: 11-1, Page 1 of 73

IMMEDIATE STAY REQUESTED:
Irreversible media destruction
required beginning October 17 to
meet October 22 injunction
No. 18-56221 compliance deadline.
IN THE
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
SAN DIEGO COMIC CONVENTION,

Plaintiff-Appellee,
v.
DAN FARR PRODUCTIONS, DANIEL FARR, and BRYAN

BRANDENBURG,
Defendants-Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA
ANTHONY J. BATTAGLIA, DISTRICT JUDGE • CASE NO. 14-CV-1865-AJB-JMA
APPELLANTS’ EMERGENCY MOTION UNDER CIRCUIT RULE 27-3

TO STAY ENFORCEMENT OF MONEY JUDGMENT AND
PARTIALLY STAY PERMANENT INJUNCTION
PENDING APPEAL;
DECLARATIONS OF UTAH ATTORNEY GENERAL SEAN REYES,
BRYAN BRANDENBURG, DANIEL FARR, WILLIAM SMELKO, AND
CLARKE NELSON
HORVITZ & LEVY LLP MASCHOFF BRENNAN PLLC

JOHN A. TAYLOR, JR. MICHAEL I. KATZ
PEDER K. BATALDEN L. REX SEARS
ERIC S. BOORSTIN 20 PACIFICA, SUITE 1130
3601 WEST OLIVE AVENUE, 8TH FLOOR IRVINE, CALIFORNIA 92618
BURBANK, CALIFORNIA 91505-4681 (949) 202-1900
(818) 995-0800
ATTORNEYS FOR DEFENDANTS-APPELLANTS

DAN FARR PRODUCTIONS, DANIEL FARR, AND BRYAN BRANDENBURG
(2 of 331)
CIRCUIT RULE 27-3 CERTIFICATE
Counsel for Plaintiff-Appellee Callie A. Bjurstrom

Peter Hahn
San Diego Comic Convention Michelle A. Herrera
Pillsbury Winthrop Shaw Pittman
LLP
501 West Broadway, Suite 1100
San Diego, CA 92101
callie.bjurstrom@pillsburylaw.com
peter.hahn@pillsburylaw.com
michelle.herrera@pillsburylaw.com
Counsel for Defendants-Appellants Michael I. Katz
Lannie Rex Sears
Dan Farr Productions, Daniel Farr, Maschoff Brennan PLLC
and Bryan Brandenburg 20 Pacifica, Suite 1130
Irvine, CA 92618
mkatz@mabr.com
rsears@mabr.com
John A. Taylor, Jr.
Peder K. Batalden
Eric S. Boorstin
Horvitz & Levy LLP
3601 West Olive Avenue, 8th Floor
Burbank, CA 91505-4681
(818) 995-0800
jtaylor@horvitzlevy.com
pbatalden@horvitzlevy.com
eboorstin@horvitzlevy.com
Facts showing the existence and nature of the emergency
Dan Farr Productions, LLC (DFP), and its principals, Daniel Farr
and Bryan Brandenburg, were sued by San Diego Comic Convention
(SDCC) for trademark infringement because they named their comic
i
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convention “Salt Lake Comic Con.” According to SDCC, using a name
that includes “comic con”—a commonplace abbreviation for comic
conventions, attended by fans of comic books and related media—was
infringement. The jury awarded just $20,000 in damages, and found no
willful infringement. The district court nonetheless declared the case
“exceptional” and awarded SDCC over $3.9 million in attorney fees and
costs, plus injunctive relief irreversibly harmful to DFP. Defendants
appealed.
The district court has denied a stay of enforcement and ordered
compliance with the injunction by October 22. Practically, this means
that no later than October 17, DFP must start irreversibly deleting
historical posts from its social media sites or risk noncompliance. If this
Court does not immediately stay enforcement, DFP and its principals will
be irreparably harmed because DFP cannot bond the fees award; its
revenues are generated from annual events fueled by human capital, not
hard assets that could collateralize a bond. SDCC has sought permission
to register the judgment in Utah so it can seize DFP’s operating capital
and the homes and assets of its principals. (See Exs. 20, 21.)
ii
(4 of 331)
SDCC’s enforcement efforts would likely foreclose appellate review
of the questionable verdict and the erroneous determination that this
case is “exceptional,” purportedly justifying $3.9 million in fees on a
$20,000 judgment. And if SDCC enforces the judgment, DFP’s
destruction will cost Salt Lake City’s economy millions of dollars. But a
stay likely wouldn’t harm SDCC: its likelihood of collecting the judgment
increases if DFP is not driven into bankruptcy, and DFP has already
changed the name of its future conventions.
This Court should immediately, temporarily stay enforcement to
allow timely adjudication of this motion. The Court should then stay
enforcement of the fees award and key components of the injunction
pending appeal.
Notice to other parties
On October 9, 2018, Defendants’ counsel, Rex Sears, emailed
SDCC’s counsel, Michelle Herrera, that Defendants would be filing this
emergency motion. Mr. Sears next alerted this Court’s on-duty motions
attorney. SDCC’s counsel were served by ECF and separate email.
iii
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Relief sought in the district court
On September 18, Defendants applied ex parte for the relief sought
by this motion—a stay of enforcement pending appeal. (Ex. 16.) SDCC
responded on September 21. On October 5, the district court denied a
stay, and ordered compliance with the injunction by October 22. (Ex. 25.)
Defendants therefore request a stay from this Court. Fed. R. App. P.
8(a)(2)(A)(ii).
iv
(6 of 331)
TABLE OF CONTENTS
CIRCUIT RULE 27-3 CERTIFICATE ....................................................... i
INTRODUCTION ...................................................................................... 1
STANDARDS ............................................................................................ 4
ARGUMENT ............................................................................................. 6
I. This appeal will raise serious questions about the verdict, fees
award, and injunction. ..................................................................... 6
A. The verdict: The district court erroneously barred

Defendants from pursuing a powerful defense—that
COMIC-CON was generic when SDCC adopted it—and
improperly excluded additional genericness evidence. .......... 6
1. The district court erred in ruling that “[t]here ain’t

no generic ab initio,” and in excluding evidence
about phonetic equivalents. ........................................... 6
2. The district court erroneously excluded additional,

probative genericness evidence...................................... 9
B. The fees order: The award of nearly $4 million in fees on

a $20,000 verdict is likely to be reversed. ............................ 10
1. If the verdict falls, so will the fees order. .................... 10
2. The district court erroneously grounded its award

on unexceptional zealous advocacy.............................. 11
3. The district court erroneously based its fees order

on out-of-court speech protected by the First
Amendment. ................................................................. 15
4. The excessive fees award bears no relationship to

the alleged misconduct. ................................................ 17
C. The injunction: The overbroad injunction is likely to be

reversed because it covers noninfringing conduct. ............... 19
v
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II. Immediately enforcing the monetary judgment will destroy

Defendants, but a stay will not harm SDCC. ................................ 20
III. The injunction also threatens irreparable harm to

Defendants, which is not offset by any benefit to SDCC. ............. 23
IV. Staying enforcement serves the public interest. ........................... 25
V. The Dillon factors also support a stay. .......................................... 25
CONCLUSION ........................................................................................ 26
CERTIFICATE OF COMPLIANCE WITH WORD LIMIT AND

FORMAT REQUIREMENTS .................................................................. 28
Declaration of Sean Reyes....................................................................... 29
Declaration of Bryan M. Brandenburg ................................................... 32
Declaration of Daniel Farr ...................................................................... 40
Declaration of William Smelko ............................................................... 42
Declaration of Clarke B. Nelson ............................................................. 45
vi
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TABLE OF AUTHORITIES
Page(s)
Cases
Advertise.com, Inc. v. AOL Advertising, Inc.,

616 F.3d 974 (9th Cir. 2010) ................................................................. 9
Amusement Art, LLC v. Life is Beautiful, LLC,

No. 2-14-CV-08290-DDP-JPR, 2017 WL 2259672 (C.D.
Cal. May 23, 2017) .............................................................................. 19
Ault v. Hustler Magazine, Inc.,

860 F.2d 877 (9th Cir. 1988) ............................................................... 12
BellSouth Corp. v. DataNational Corp.,

60 F.3d 1565 (Fed. Cir. 1995) ............................................................... 6
In re Bose Corp.,
580 F.3d 1240 (Fed. Cir. 2009) ........................................................... 14
Christensen v. Stevedoring Services of America, Inc.,

430 F.3d 1032 (9th Cir. 2005) ............................................................. 12
Dan Farr Productions v. United States District Court,

874 F.3d 590 (9th Cir. 2017) ....................................................... passim
Dillon v. City of Chicago,

866 F.2d 902 (7th Cir. 1988) ..................................................... 5, 25, 26
Elem Indian Colony of Pomo Indians v. Ceiba Legal, LLP,

230 F. Supp. 3d 1146 (N.D. Cal. 2017) ............................................... 17
Elliott v. Google, Inc.,

860 F.3d 1151 (9th Cir. 2017) ............................................................... 6
GoPets Ltd. v. Hise,

657 F.3d 1024 (9th Cir. 2011) ............................................................. 19
Hilton v. Braunskill,
481 U.S. 770 (1987) ........................................................................... 4, 5
vii
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Hoffman v. Tonnemacher,
593 F.3d 908 (9th Cir. 2010) ............................................................... 12
Interactive Products Corp. v. a2z Mobile Office Solutions,

Inc.,
326 F.3d 687 (6th Cir. 2003) .............................................................. 20
In re Rembrandt Techs., LP Patent Litig.,

899 F.3d 1254 (Fed. Cir. 2018) ............................................................ 17, 18
In re Revel AC, Inc.,

802 F.3d 558 (3d Cir. 2015) .................................................................. 5
Kellogg Co. v. National Biscuit Co.,

305 U.S. 111 (1938) ............................................................................. 15
Ketab Corp. v. Mesriani & Associates,

734 F. App’x 401 (9th Cir. 2018)......................................................... 17
Leiva-Perez v. Holder,
640 F.3d 962 (9th Cir. 2011) ................................................................. 4
Leon Finker, Inc. v. Schlussel,

469 F. Supp. 674 (S.D.N.Y. 1979) ......................................................... 8
Lovell ex. rel. Lovell v. Poway Unified School District,

90 F.3d 367 (9th Cir. 1996) ................................................................. 10
Miller Brewing Co. v. G. Heileman Brewing Co.,

561 F.2d 75 (7th Cir. 1977) ................................................................... 8
Monolithic Power Systems, Inc. v. O2 Micro International

Ltd.,
726 F.3d 1359 (Fed. Cir. 2013) ........................................................... 18
Mountz, Inc. v. Northeast Industrial Bolting & Torque, LLC,

No. 15-CV-04538-JD (MEJ), 2017 WL 780585 (N.D. Cal.
Jan. 27, 2017) ...................................................................................... 17
Nken v. Holder,
556 U.S. 418 (2009) ........................................................................... 4, 5
viii
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O.W. Bunker Malta Ltd. v. M/V Trogir,

No. CV 12-5657-R, 2013 WL 12131547 (C.D. Cal. June 17,
2013) ...................................................................................................... 5
Octane Fitness, LLC v. ICON Health & Fitness, Inc.,

134 S. Ct. 1749 (2014) ......................................................................... 11
Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189 (1985) ............................................................................... 8
Providence Journal Co. v. FBI,

595 F.2d 889 (1st Cir. 1979) ............................................................... 20
ROAR, LLC v. ROAR Glob. Ltd.,

No. 2:15-CV-05865-ODW(AFM), 2016 WL 7115902 (C.D.
Cal. Dec. 5, 2016) ................................................................................ 17
Standard Havens Products, Inc. v. Gencor Industries, Inc.,

897 F.2d 511 (Fed. Cir. 1990) ............................................................. 20
SunEarth, Inc. v. Sun Earth Solar Power Co.,

839 F.3d 1179 (9th Cir. 2016) ............................................................. 11
TE-TA-MA Truth Found. v. World Church of the Creator,

297 F.3d 662 (7th Cir. 2002) ................................................................. 8
Tennison v. Circus Circus Enters.,

244 F.3d 684 (9th Cir. 2001) ............................................................... 12
Toyota Motor Sales, U.S.A., Inc. v. Tabari,

610 F.3d 1171 (9th Cir. 2010) ....................................................... 20, 24
United States v. Benoit,

No. 08cv2140-MMA (JMA), 2012 WL 12952680 (S.D. Cal.
Jan. 23, 2012) ........................................................................................ 5
ix
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Statutes
15 U.S.C. § 1065 (4) (2012) ........................................................................ 8
15 U.S.C. § 1117 (a) (2012) ...................................................................... 11
Rules
Fed. R. App. P. 8(a).................................................................................... 4
Fed. R. Civ. P. 50(b)................................................................................. 12
Fed. R. Civ. P. 54(b)................................................................................. 12
Fed. R. Civ. P. 62(d)................................................................................... 5
Fed. R. Civ. P. 69 ..................................................................................... 26
S. D. Cal. Civ. R. 7(1)(h) .......................................................................... 14
x
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INTRODUCTION
DFP described its comic fan conventions in Salt Lake City as “Salt
Lake Comic Con.” Over 100 other American cities have had similar
events using the commonplace term “comic con” in their name. Dan Farr
Prods. v. U.S. Dist. Court, 874 F.3d 590, 591 (9th Cir. 2017). One
organization, SDCC, claiming exclusive rights in the term “comic-con,”
sued Defendants for trademark infringement. A jury found no willful
infringement and awarded SDCC damages of $20,000.
Defendants could have survived that verdict. But the district court
transformed the judgment into a death sentence by declaring the case
“exceptional” based on how the case was defended—not the underlying
merits—and awarding $3.9 million in fees and costs. DFP cannot bond
that sum; immediate enforcement would destroy DFP.
The district court also imposed sweeping injunctive relief that will
irreversibly damage DFP’s online presence, one of its most valuable
assets. For example, the injunction forbids DFP from re-registering
legacy domain names—which is not trademark infringement—
threatening DFP with permanent loss of internet domains.
1
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Unless this Court stays enforcement of the judgment (especially the
fees award and aspects of the injunction), DFP will be destroyed and
Defendants’ meritorious appeal will likely be abandoned. DFP’s
contribution to the Utah economy—110,000 annually attend DFP’s
conventions—will be lost. The situation is so dire that Salt Lake County’s
mayor and Utah’s Attorney General have provided declarations
supporting relief.
Last year, in this same case, this Court issued mandamus relief
directing the district court to vacate as unconstitutional “a sweeping set
of ‘suppression orders’” silencing Defendants’ commentary about this
case. Dan Farr Prods, 874 F.3d at 591. Undeterred, the district court
relied on some of that commentary in imposing fees. That abuse of
discretion is unlikely to survive appellate review—a factor favoring a
stay. The remainder of the fees order addresses unremarkable examples
of zealous advocacy. The district court chided Defendants for raising
arguments more than once, but that was by the court’s request and it
positioned key issues for appeal. Critically, also, the court failed to link
purported misconduct to the amount of fees it awarded.
2
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Apart from fees, Defendants’ appeal raises serious questions about
the underlying verdict and injunction. The verdict rests on the erroneous
exclusion of a critical genericness defense and key evidence. The
injunction proscribes noninfringing conduct. Defendants make a strong
showing on the merits.
The remaining stay factors also favor Defendants. Absent a stay,
Defendants will suffer irreparable harm. Enforcement may bankrupt all
of them, and DFP’s reputation and internet property losses may be
irreversible. In contrast, staying enforcement not only won’t harm
SDCC, which is financially sound, but the judgment is more likely to be
fully satisfied if DFP stays in business. Thus, SDCC’s ongoing,
aggressive efforts to enforce the judgment reveal its true intentions—
eliminating a competitor and impeding appellate review.
This Court should immediately, temporarily stay enforcement,
permitting SDCC to respond and giving the Court time to consider this
motion in due course. The Court should then stay enforcement of the
judgment (at least, the fees order and aspects of the injunction described
below) pending appeal.
3
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STANDARDS
Federal Rule of Appellate Procedure 8(a) authorizes this Court to
stay enforcement pending appeal. Four factors inform the analysis
“governing stays of civil judgments”:
(1) whether the stay applicant has made a strong showing

that he is likely to succeed on the merits; (2) whether the
applicant will be irreparably injured absent a stay;
(3) whether issuance of the stay will substantially injure the
other parties interested in the proceeding; and (4) where the
public interest lies.
Hilton v. Braunskill, 481 U.S. 770, 776 (1987). “The first two
factors … are the most critical.” Nken v. Holder, 556 U.S. 418, 434
(2009).
On the initial factor, appellants “need not demonstrate that it is
more likely than not that they will win on the merits.” Leiva-Perez v.
Holder, 640 F.3d 962, 966 (9th Cir. 2011). That would put merits briefing
“on an expedited schedule,” and require the Court to accurately predict,
“without adequate briefing and argument,” how complicated issues
should be resolved. Id. at 967. Instead, a movant need only show “a
substantial case on the merits,” or that “serious legal questions are
raised.” Id. at 967-68 (citations omitted). The harm factors, by contrast,
are considered under the more-likely-than-not standard. Id. at 968.

4
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For the money judgment, the district court applied a five-factor
standard that Dillon v. City of Chicago, 866 F.2d 902, 904-05 (7th Cir.
1988), endorsed for district courts entertaining motions to waive bond
under Federal Rule of Civil Procedure 62(d). (Ex. 25, at 248-250.) This
Court has never applied Dillon, and it shouldn’t now. Nken explained, in
the broadest terms, that Hilton’s four-factor test is the “traditional
standard governing the grant of stays”; and that is the standard which
applies, absent contrary legislation. Nken, 556 U.S. at 431.
Consequently, courts use the Hilton factors to determine whether to stay
enforcement of money judgments or similar payment orders. E.g., In re
Revel AC, Inc., 802 F.3d 558, 568 (3d Cir. 2015) (bankruptcy court sale
order); United States v. Benoit, No. 08cv2140-MMA (JMA), 2012 WL
12952680, at *1-2 (S.D. Cal. Jan. 23, 2012) (money judgment); O.W.
Bunker Malta Ltd. v. M/V Trogir, No. CV 12-5657-R, 2013 WL 12131547,
at *2 (C.D. Cal. June 17, 2013) (order directing payment of money).
Nonetheless, Defendants also address the Dillon factors below.
5
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ARGUMENT
I. This appeal will raise serious questions about the verdict, fees
award, and injunction.
A. The verdict: The district court erroneously barred Defendants

from pursuing a powerful defense—that COMIC-CON was
generic when SDCC adopted it—and improperly excluded
additional genericness evidence.
1. The district court erred in ruling that “[t]here ain’t no

generic ab initio,” and in excluding evidence about
phonetic equivalents.
Generic terms are ineligible for trademark protection. Elliott v.
Google, Inc., 860 F.3d 1151, 1155 (9th Cir. 2017). Genuine trademarks
identify products’ sources, while generic terms identify types of services
(or goods) using “‘common descriptive’ names.” Id.
A mark may be generic “ab initio [i.e., when first adopted] [citation],
or it may become generic,” BellSouth Corp. v. DataNational Corp., 60
F.3d 1565, 1569-70 (Fed. Cir. 1995) (citation omitted), in which case it
suffers “genericide,” Elliot, 860 F.3d at 1156. Defendants sought to prove
COMIC-CON was generic ab initio because the term was already in use
as a common descriptive name for a comic convention when SDCC
adopted it.
6
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SDCC’s putative mark is traceable to the 1930s, when science
fiction fans began holding conventions called “con[s].” (Ex. 7, at 59-60.)
In the 1960s, comic book fans began emulating sci-fi fans and agitated
for a “comicon.” (Id.) A 1963 issue of The Comicollector describes the
“Traveling Comicon,” a bus trip to visit comic fans: “we were already
planning the next get-together, possibly at some form of Comicon”; “I’m
quite sure a comicon is inevitable.” (Id. at 62 (citation omitted).) The New
York Comicon launched the next year. (See id.) A 1965 issue of The New
Yorker reported on the second New York Comicon, under the heading
“ComiCon”: “‘[c]ollectors of old comic books held a convention … officially
known as the second annual ComiCon, or Con.’ … ‘[T]he Con
chairman … told us that this was the first full-fledged national
ComiCon.’” (Id. at 64 (citation omitted).)
The district court excluded this and all other evidence of use before
1970, when SDCC claims it began using COMIC-CON. According to the
court, “[t]here ain’t no generic ab init[i]o” (Ex. 13, at S118:25), only
genericide. The court later qualified its stance, ruling that genericness
ab initio cannot be asserted against an incontestably registered mark,
and in the alternative, that evidence concerning pre-1970 use of
7
(19 of 331)
phonetically equivalent variants for “Comic-Con” is irrelevant. (Ex. 10,
at 106:25-28, 107:24-108:9.) The court was wrong in both respects.
First, apparent incontestability doesn’t bar a genericness ab initio
defense. Ordinarily, a mark’s registration can be made “incontestable”
after five years. 15 U.S.C. § 1065 (2012). But “an incontestable mark
does not confer any rights to a phrase that was generic at the outset.”
TE-TA-MA Truth Found. v. World Church of the Creator, 297 F.3d 662,
665 (7th Cir. 2002). By statute, “no incontestable right shall be acquired
in a mark which is the generic name for the goods or services or a portion
thereof, for which it is registered.” 15 U.S.C. § 1065(4) (2012); see also
Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 197 (1985) (“no
incontestable right can be acquired in a mark that is a common
descriptive, i.e., generic, term”). Thus, the district court erred.
Defendants were entitled to present proof that COMIC-CON was generic
ab initio, in which case SDCC’s registration never became incontestable.
Second, if phonetic equivalents were generic ab initio, so was
COMIC-CON. Just as “a generic term … cannot become a protected
trademark,” “[n]or can the phonetic equivalent.” Leon Finker, Inc. v.
Schlussel, 469 F. Supp. 674, 678 (S.D.N.Y. 1979); accord Miller Brewing
8
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Co. v. G. Heileman Brewing Co., 561 F.2d 75, 77 (7th Cir. 1977) (holding
that “light” is generic as to beer, so its phonetic equivalent “lite” cannot
be trademarked for beer). The district court’s error is perplexing because
it later treated phonetic equivalents as legally equivalent in enjoining
Defendants from using “confusingly similar marks (i.e. Comicon or
Comiccon), or any phonetic equivalents, (i.e. ComiKon or ComicKon).”
(Ex. 11, at 126:26-27.)
2. The district court erroneously excluded additional,

probative genericness evidence.
A genericness inquiry may begin by assessing a mark’s component
parts separately, and dictionaries are properly consulted for that
purpose. See Advertise.com, Inc. v. AOL Advert., Inc., 616 F.3d 974, 977-
78 (9th Cir. 2010).
This Oxford English Dictionary entry for “con” is probative: “Esp.
among enthusiasts of science fiction and role-playing games: a
convention, an organized gathering of people with a shared interest.
Freq. as the final element in the names of such events.” (Ex. 8, at 64.)
The entry’s illustrations confirm the point:
1940 Astonishing Stories Oct. 108/2 If you get this issue the
day it appears on your newsstands, you will have just about
enough time left to make arrangements to attend the
9
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Chicon. (‘Chicon’: Fan argot for ‘Chicago Science Fiction

Convention of 1940’.)
(Id.) The district court kept this highly relevant evidence from the jury.
(Id. at 65.)
In addition, as Defendants’ new trial motion recounts (Exs. 8-9), the
court erroneously excluded expert linguistic testimony, plus scores of
newspaper articles using “comic con” generically, like ones recalling
“comic-cons … throughout the country,” “Comic Cons popping up around
the state,” “the most comic-con-like comic-con,” and “the second-biggest
opening ever for a Comic Con, behind New York’s 32,000” (Ex. 8, at 55,
nn.47-49 (citations omitted); see also id., at 55-56, n.51). The court even
excluded critical admissions from SDCC executives on genericness (and
other key issues). (Ex. 3, at S10-S11.)
B. The fees order: The award of nearly $4 million in fees on a

$20,000 verdict is likely to be reversed.
1. If the verdict falls, so will the fees order.
If this Court agrees with any of the arguments above, a new trial is
required and the fees order will topple because it rests on SDCC
prevailing at trial. See, e.g., Lovell ex. rel. Lovell v. Poway Unified Sch.
Dist., 90 F.3d 367, 373-74 (9th Cir. 1996).
10
(22 of 331)
2. The district court erroneously grounded its award on

unexceptional zealous advocacy.
The district court rejected SDCC’s contention that the merits were
so lopsided as to render the case legally or factually “exceptional” (Ex. 12,
at 148), and the jury found no willful infringement (Ex. 5, at 32). To
justify awarding fees, the court relied on the supposedly “unreasonable
manner” in which Defendants litigated this action. (Ex. 12, at 135.) But
none of the cited conduct justifies that finding. In reality, the court
punished Defendants for the type of advocacy attorneys typically employ,
and should employ, in high-stakes litigation.
The Lanham Act authorizes fees to prevailing parties in
“exceptional cases” only. 15 U.S.C. § 1117(a) (2012). A court should
examine the “totality of the circumstances,” exercising discretion in light
of various nonexclusive factors. SunEarth, Inc. v. Sun Earth Solar Power
Co., 839 F.3d 1179, 1181 (9th Cir. 2016) (en banc) (citation omitted).
These factors include deterring misbehavior. Octane Fitness, LLC v.
ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 n.6 (2014). An
exceptional case “stands out from others with respect to … the
unreasonable manner in which the case was litigated.” Id.
11
(23 of 331)
Because the “chief duty” of attorneys “is to advocate zealously on
behalf of their clients,” Christensen v. Stevedoring Servs. of Am., Inc.,
430 F.3d 1032, 1036 (9th Cir. 2005), courts should not impose sanctions
that will “chill zealous advocacy,” Ault v. Hustler Magazine, Inc., 860
F.2d 877, 884 (9th Cir. 1988).
Here, to justify awarding fees, the district court faulted Defendants
for raising a “generic ab initio” defense in limine and in a post-trial
motion, after Defendants unsuccessfully sought summary judgment.
(Ex. 12, at 138.) But a district court may always reconsider prior rulings
before judgment, Fed. R. Civ. P. 54(b), and judges sometimes view old
summary judgment issues in a new light when a full trial record is made,
Hoffman v. Tonnemacher, 593 F.3d 908, 911 (9th Cir. 2010). Indeed, the
availability of a new trial motion presupposes that parties may properly
seek reconsideration of prior rulings. Briefing the issue again was not
improper.
A litigant may even be required to reassert arguments throughout
litigation to preserve them. Tennison v. Circus Circus Enters., 244 F.3d
684, 689 (9th Cir. 2001); see Fed. R. Civ. P. 50(b). Here, rebriefing the
genericness ab initio issue was required because the court directed
12
(24 of 331)
appellants to file an in limine motion on “[t]he issue of genericness and
the relevance as to time,” (Ex. 4, at 20:6), and adopted a new rationale
for its “ab initio” position at trial (see Ex. 8, at 57:5-9 & n.59).
Other conduct cited by the district court was reasonable and did not
remotely make this case “exceptional”:
• The court faulted Defendants for reasserting a naked
licensing defense in motions in limine and for new trial after
unsuccessfully seeking summary judgment on the issue. (Ex. 12, at 137-
38.) That was wrong, because, as explained above, prudent advocacy
requires raising similar issues at different procedural junctures. Also,
the district court invited the very offer of proof it punished Defendants
for providing. (Ex. 4, at 16:20-25 (“That would be very helpful … I
appreciate the offer on that.”).)
• The district court asserted Defendants should not have relied
on the dictionary definition of “con.” (Ex. 12, at 139.) That assertion was
legally erroneous, as explained above.
• The district court asserted DFP violated a local rule by
“fil[ing] two summary judgment motions that totaled over forty pages in
length.” (Ex. 12, at 136:7-12.) But the court “g[a]ve the defense the leave
13
(25 of 331)
to have done what they have done.” (Ex. 1, at 6:16-18.) Imposing millions
of dollars in sanctions for a few extra pages of briefing—for which the
court must have found good cause, see S.D. Cal. Civ. R. 7(1)(h)—is
bewildering.
• The district court alleged DFP violated rules in “expressly
referenc[ing] testimony … designated ‘Confidential–Attorneys’ Eyes
Only.’” (Ex. 12, at 137:4-7.) That never happened. Defendants made
general reference to deposition testimony without quoting or revealing
its contents; when SDCC objected, Defendants offered to redact the
references. (See Ex. 2, at S5:21-S7:8.) SDCC rejected the offer and
pushed for the “sweeping set of ‘suppression orders’” this Court vacated
on mandamus. Dan Farr Prods., 874 F.3d at 591.
• The district court faulted Defendants because, in moving to
amend their answer to add a defense based on SDCC’s submitting a false
declaration to the Patent & Trademark Office, Defendants labeled the
defense “inequitable conduct” and cited patent cases. (Ex. 12, at 140:19-
141:6.) While “fraudulent procurement” is the preferred label in the
trademark context, the defenses are similar. See In re Bose Corp., 580
F.3d 1240, 1244-45 (Fed. Cir. 2009) (comparing the defenses in patent
14
(26 of 331)
and trademark cases). The district court’s own order refers to
“inequitable conduct” in this trademark case. (Ex. 12, at 134:17.)
• The district court criticized Defendants’ reliance on the
seminal “Shredded Wheat” case, Kellogg Co. v. Nat’l Biscuit Co., 305 U.S.
111 (1938). (Ex. 12, at 142:1-21 (citation omitted).) A party cannot
engage in misconduct by citing a foundational Supreme Court decision
on genericness where that is the action’s most heavily litigated defense.
• The district court faulted DFP for registering its Salt Lake
Comic Con mark in response to SDCC’s cease and desist letter. (Ex. 12,
at 143-44.) But the PTO allowed registration. That means it must have
found no likelihood of confusion with SDCC’s—demonstrating the
reasonableness of DFP’s conduct. The district court punished DFP
simply for exercising its First Amendment right to petition.
These and other examples establish serious questions about the
viability of the district court’s exceptionality finding.
3. The district court erroneously based its fees order on

out-of-court speech protected by the First Amendment.
The district court also ruled that fees were justified because
“turning to the media to litigate a trademark infringement case in the
court of ‘public opinion’ is objectively irrational.” (Ex. 12, at 149:17-18.)

15
(27 of 331)
The award is thus punishment for Defendants’ exercising their First
Amendment rights, whose restraint this Court earlier precluded.
This Court struck down the district court’s prior restraints on extra-
judicial speech for failure to articulate any “serious and imminent threat
to SDCC’s right to a fair trial.” Dan Farr Prods., 874 F.3d at 593. This
Court suggested “retrospective damages” might be a “proper remedy” if
the speech “was transgressive rather than just effective, persuasive, or
opinionated.” Id. at 596 n.8. But now as then, the district court cited “no
evidence in the record” of any such speech, let alone speech adversely
affecting trial proceedings.
This Court previously refused to indulge reasoning that “would
justify imposition of prior restraints in almost any situation where an
article is written or a statement is made in a public forum.” Id. at 596.
But the specter of retribution for extra-judicial statements stifles speech
by future litigants just as effectively as a prior restraint. The district
court’s finding that “turning to the media … is objectively irrational,”
(Ex. 12, at 149:17-18), does not support the sanctions here because
Defendants’ choice to speak was eminently rational. Defendants had to
16
(28 of 331)
preserve customer relationships and their reputation; it was reasonable
for Defendants to explain their litigation views to those customers.
4. The excessive fees award bears no relationship to the

alleged misconduct.
The nearly $4 million award is wildly excessive—between 10 and
100 times awards published in recent, local Lanham Act cases. See Ketab
Corp. v. Mesriani & Assocs., 734 F. App’x 401, 412 (9th Cir. 2018)
($292,202); Elem Indian Colony of Pomo Indians v. Ceiba Legal, LLP, 230
F. Supp. 3d 1146, 1155 (N.D. Cal. 2017) ($118,366); Mountz, Inc. v. Ne.
Indus. Bolting & Torque, LLC, No. 15-CV-04538-JD (MEJ), 2017 WL
780585, at *4 (N.D. Cal. Jan. 27, 2017) ($44,050); ROAR, LLC v. ROAR
Glob. Ltd., No. 2:15-CV-05865-ODW(AFM), 2016 WL 7115902, at *8
(C.D. Cal. Dec. 5, 2016) ($71,262).
The award is not merely eye-popping. It is legally defective. It
includes fees indisputably unrelated to the litigation conduct the district
court cited to justify its “exceptional case” determination. Exceptional
case awards should be “compensatory, not punitive,” and “[d]eterrence ‘is
not an appropriate consideration in determining the amount of a
reasonable attorney fee.” In re Rembrandt Techs., LP Patent Litig., 899
F.3d 1254, 1278 (Fed. Cir. 2018). Accordingly, “an exceptional case
17
(29 of 331)
finding based on litigation misconduct”—as opposed to, say, willful
infringement—“usually does not support a full award of attorney’s fees.”
Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd., 726 F.3d 1359, 1369
(Fed. Cir. 2013) (citation omitted). Rather, an award “‘must bear some
relation to the extent of the misconduct,’” and compensate a party only
“for the extra legal effort to counteract the misconduct.’” Id.
Because the jury found no willful infringement, the district court
“was required to find” a “‘causal connection’ … between the misconduct
and the fees it awarded.” In re Rembrandt, 899 F.3d at 1280. But the
court made no attempt to link the fees it awarded to Defendants’
supposed misconduct. Instead, the court based its award on SDCC’s total
fees for the entire action. That was reversible error.
The first instance of litigation “misconduct” cited by the district
court—filing two summary judgment motions and moving to amend the
complaint—occurred in June 2017. But the award includes more than
$1.4 million in fees incurred for three preceding years. (Ex. 12, at 160-61;
Ex. 6, at S15-S65.) The award includes $475,000 in fees incurred
between the in limine hearing and the end of trial, though no alleged
misconduct required SDCC to do extra trial work. (Ex. 6, at S66-S76.)
18
(30 of 331)
The award even includes SDCC’s motions for the “sweeping set of
‘suppression orders’” this Court vacated. Dan Farr Prods., 874 F.3d at
591.
Finally, the award includes $212,000 in expert witness fees, which
the Lanham Act forbids, Amusement Art, LLC v. Life is Beautiful, LLC,
No. 2-14-CV-08290-DDP-JPR, 2017 WL 2259672, at *9 (C.D. Cal. May
23, 2017) (collecting authorities), appeal filed, No. 17-55888 (9th Cir.
June 23, 2017). (Ex. 12, at 165:20-21.) Regardless, SDCC’s expert fees
lack any nexus to the misconduct cited by the court.
C. The injunction: The overbroad injunction is likely to be

reversed because it covers noninfringing conduct.
The serious questions about the verdict also mean there are serious
questions about the viability of the permanent injunction. But even if
the verdict survives, there will be serious questions about certain
prohibitions in the injunction, including:
• “registering … a domain name that incorporates” any variant
of “comic con,” (Ex. 11, at 127:15-20), because registering a domain name,
“without more,” is not infringement, GoPets Ltd. v. Hise, 657 F.3d 1024,
1035 (9th Cir. 2011);
19
(31 of 331)
• “utilizing www.saltlakecomiccon.com,” DFP’s original
address, “as a forwarding address to their [new] www.fanxsaltlake.com
website,” (Ex. 11, at 127:21-23), which is not infringement because
“consumers don’t form any firm expectations about the sponsorship of a
website until they’ve seen the landing page—if then,” Toyota Motor
Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1179 (9th Cir. 2010); and
• using any “URL” that includes “comiccon” (Ex. 11, at 125:2-
5)—as DFP’s social media page URLs do in their post-domain paths (i.e.,
the part following the top-level domain such as “.com”)—even though
“post-domain paths do not typically signify source” and thus “it is
unlikely that the presence of another’s trademark in a post-domain path
of a URL would ever violate trademark law,” Interactive Prods. Corp. v.
a2z Mobile Office Sols., Inc., 326 F.3d 687, 698 (6th Cir. 2003).
II. Immediately enforcing the monetary judgment will destroy

Defendants, but a stay will not harm SDCC.
Defendants’ motion should be granted to avoid “irreparable harm
in the form of employee layoffs, immediate insolvency, and, possibly,
extinction,” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d
511, 515 (Fed. Cir. 1990), and also to preserve “appellants’ rights to
secure meaningful review,” Providence Journal Co. v. FBI, 595 F.2d 889,
20
(32 of 331)
890 (1st Cir. 1979). Without relief Defendants will be destroyed before
they can prosecute their appeal from the instrument of their destruction.
Staying enforcement also increases SDCC’s prospects for full recovery on
the judgment, should it be affirmed.
Defendants tried to obtain a supersedeas bond, but their
applications were refused for inadequate security. (Declaration of
William Smelko ¶¶ 2-6.) The problem is the type of Defendants’ wealth,
not its sufficiency. Instead of liquid or hard assets that could be pledged
as collateral to a third-party surety, Defendants’ principal asset is an
ongoing business—together with related intangibles such as reputation,
fan-base, expertise, social media channels, and industry connections.
(Ex. 18, at 198.)
DFP’s conventions have a sustained track record of generating
substantial positive cashflow. (Declaration of Clarke Nelson ¶¶ 3-6.)
Over the past several years, DFP’s cashflow has funded $2.2 million in
extraordinary expenses (primarily attorney fees) associated with this
litigation. (Ex. 23, at 237-38.) DFP’s performance has been so robust
that it has been approached by major industry players interested in
acquiring its conventions, whose valuations range from five to twelve
21
(33 of 331)
times EBITDA. (Brandenburg Decl. ¶ 12.) With 2017 adjusted EBITDA
exceeding $1 million, DFP’s earnings and buyer interest establish a
valuation far in excess of the $3.9 million fees award. (Id.; Nelson Decl.
¶ 5.)
Thus, if DFP survives, any affirmed judgment could be satisfied
with a lump sum payment funded by a sale of DFP’s conventions or, if
DFP does not sell, by installment payments from convention revenues.
To that end, if a stay is granted Defendants will refrain from
encumbering DFP or its business, and if the business sells they will
escrow enough to cover the judgment, for the duration of the appeal.
(Brandenburg Decl. ¶¶ 13-16; Declaration of Daniel Farr ¶¶ 2-4.)
Conversely, immediate execution on DFP’s accounts would destroy
DFP because it needs money from this year’s convention to seed its next
convention. (Ex. 18, at 198; Nelson Decl. ¶¶ 6-8.) SDCC would thus
achieve only a fractional recovery on the judgment because the shortfall
between DFP’s liquidation value and the judgment is too great to be
bridged by the individual Defendants’ personal wealth. (See Ex. 17, at
190; Ex. 18, at 198.)
22
(34 of 331)
There is no evidence SDCC—a nonprofit with over $20 million in
the bank (Nelson Decl. ¶¶ 9-10)—needs immediate, fractional
satisfaction now more than full satisfaction later. Yet SDCC has moved
to enforce and register the judgment on an expedited basis, despite
agreeing that Defendants “do not have sufficient assets to obtain a bond
to stay enforcement.” (Ex. 21, at 218.) Demolishing DFP, Brandenburg,
and Farr seems to be the purpose of SDCC’s enforcement efforts, not the
byproduct.
III. The injunction also threatens irreparable harm to Defendants,

which is not offset by any benefit to SDCC.
Regarding the injunction, Defendants seek relief from prohibitions
on (1) registering domain names; (2) using legacy domain names as
forwarding addresses for websites; (3) using legacy domain names in
email addresses to receive (but not send) email; (4) maintaining their
Facebook group and YouTube channel at URLs that include “slcomiccon”
in their post-domain paths; and (5) preserving historical social media
posts.
If Defendants cannot renew or maintain existing domain-name
registrations, those domains could be appropriated by others and used to
poach DFP’s patrons; DFP likely would be unable to reclaim the domains
23
(35 of 331)
after appeal. (See Ex. 18, at 199.) The ban on using legacy domains to
forward internet traffic and receive email threatens irreversible
disruption of customer relationships. (Id. at 201.) Conversely, staying
those aspects of the injunction will not harm SDCC because DFP’s
landing page dispels any notion of SDCC sponsorship. See Toyota Motor
Sales U.S.A., Inc. v. Tabar, 610 F.3d 1171, 1179 (9th Cir. 2010) (reasoning
that a website’s landing page, not its URL, usually drives consumer
impressions of source).
The social media accounts threatened by the ban on post-domain
uses of “comiccon” are tremendously valuable: they connect DFP to
persons keenly aware that DFP is unaffiliated with SDCC, and they rely
on URLs that cannot be modified (only deleted). (Ex. 18, at 198-201.)
The destruction of old posts on those and other accounts would
irreversibly destroy years of accumulated communal memories and
associated goodwill. (Brandenburg Decl. ¶¶ 6-10.) These harms to
Defendants are not counterbalanced by any legitimate SDCC interest
because the affected social media sites are frequented by super-fans, and
neither the super-fans nor other visitors will be misled by the existence
24
(36 of 331)
of old content from prior conventions that users will find only if they scroll
past current content.
IV. Staying enforcement serves the public interest.
Defendants are prominent members of Utah’s business community.
Utah’s Attorney General and Salt Lake County’s mayor have submitted
declarations explaining how DFP’s annual convention invigorates the
region’s economy and cultural fabric. (Declaration of Sean Reyes ¶¶ 3-6;
Ex. 19, at 205.)
This case “has drawn nationwide attention … in part because
‘comic cons’ have been held in hundreds of venues across the United
States,” “‘in nearly every state,’” by “‘over 100 competitors us[ing] the
unhyphenated form of Plaintiff’s trademark.” Dan Farr Prods., 874 F.3d
at 591, 592 n.1. Producers of other cons want this appeal resolved on the
merits, to reduce uncertainty about whether they too will face expensive
litigation. Patrons of other cons don’t want confusing name changes for
their favorite events. None of these interests is served if SDCC destroys
Defendants via enforcement before this Court can resolve the appeal.
V. The Dillon factors also support a stay.
The Dillon factors, which also favor a stay if considered, are:
25
(37 of 331)
(1) the complexity of the collection process; (2) … time

required to obtain a judgment after [affirmance];
(3) … availability of funds to pay the judgment; (4) whether
“… ability to pay … is so plain that the … bond would be a
waste of money”; and (5) whether the defendant is in such a
precarious financial situation that … bond[ing] would place
other creditors … in an insecure position.
Dillon v. City of Chicago, 866 F.2d 902, 904-05 (citations omitted).
The process of collecting a judgment against Defendants under Fed.
R. Civ. P. 69 is neither unusually complex (factor 1) nor time-consuming
(factor 2)—unlike the “cumbersome,” “uncertain” process for enforcing a
judgment against Illinois decried in Dillon, 866 F.2d at 904. DFP can pay
an affirmed judgment (factor 3) from the proceeds of a sale or out of show-
generated revenues if a stay is granted, but Defendants will face
bankruptcy if a stay is denied (factor 5). Supra pp. 20-23.
CONCLUSION
This Court should grant an immediate, temporary stay of
enforcement of the judgment to allow this motion to be adjudicated in due
course. This Court should then stay enforcement pending appeal,
especially of the fees award and the following aspects of the permanent
injunction:
26
(38 of 331)
• Prohibitions on registering domain names, and using domain
names that include “comiccon” to forward internet traffic or receive
email;
• Prohibitions on maintaining social media accounts that
include “comiccon” in their post-domain paths; and
• Any requirement to destroy existing social media posts.
October 10, 2018 HORVITZ & LEVY LLP

JOHN A. TAYLOR, JR.
PEDER K. BATALDEN
ERIC S. BOORSTIN
MASCHOFF BRENNAN PLLC
MICHAEL I. KATZ
L. REX SEARS
By: s/ John A. Taylor, Jr.
Attorneys for Defendants-Appellants

DAN FARR PRODUCTIONS, DANIEL
FARR, AND BRYAN BRANDENBURG
27
(39 of 331)
CERTIFICATE OF COMPLIANCE WITH WORD LIMIT AND

FORMAT REQUIREMENTS
I certify that, pursuant to Circuit Rules 27-(1)(d) and 32-3(2), the
attached motion contains 5,568 words and is prepared in a format, type
face, and type style that comply with Fed. R. App. P. 32.
October 10, 2018 By: s/ John A. Taylor, Jr.
28
(40 of 331)
DECLARATION OF SEAN REYES
I, Sean Reyes, declare as follows:
1. I am the Attomey General of Utah, a position that I have held since December
2013.
2. As a resident of Utah and Utah's Attorney General, I am familiar with the comic
conventions organized by Dan Farr Productions, LLC (the "conventions.")
3. The Conventions have a positive impact on the economy of Utah.
4. The Conventions also frequently undertake partnerships with local nonprofits,
which benefit our community.
5. On March 10,2015I honored Dan Farr Productions, LLC, Daniel Farr, and Bryan
Brandenburg with a declaration recognizing that the Conventions "ha[d] directed national
attention and ha[d] put Utah on the map in a new and excitin E wày," had "drawn attendees from
across the nation, having a positive impact on Utah's economy," and "encourage[] each of us to
find the crime fighting hero within." A true and correct copy of this declaration is attached
hereto as Exhibit A.
6. These observations from my declaration remain true today. The Conventions
continue to be an important part of the cultural and economic fabric of Utah and ending them
would have a negative impact on the public of the state.
I declare under penalty of perjury under the laws of the United States that the foregoing is true
and correct to the best of my personal knowledge.
Executed on September 16,2018
By:
Sean
29
(41 of 331)
EXHIBIT A
30
(42 of 331)
31
(43 of 331)
DECLARATION OF BRYAN M. BRANDENBURG
I, Bryan M. Brandenburg, declare as follows:
1. I am the Chief Marketing Officer and Co-Founder of Dan Farr
Productions, LLC (“DFP”). I make this declaration based on my own
personal knowledge and based on records maintained by DFP in the
ordinary course of business, to which I have access and upon which I rely
in performing my duties to DFP.
2. DFP organizes and produces comic conventions in Salt Lake
City, Utah. DFP held its first convention in September 2013 and it has
held a convention every September since. Through 2017, DFP’s
September event was called “Salt Lake Comic Con.” Starting this year,
DFP is branding its September event “FanX Salt Lake Comic
Convention.”
3. From 2014 to 2017, DFP also produced a smaller convention
in the spring (between January and April) called “FanX Salt Lake Comic
Con.” The demands of litigation prevented DFP from producing its
spring show this year, but DFP expects to resume production of its spring
show in April 2019.
32
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Social media and internet domains
4. From its launch, DFP’s success has been fueled by and
dependent on a strong online presence—including both its own website
and social media. DFP communicates with its public through Twitter,
Instagram, Tumblr, Pinterest, Facebook, and YouTube. On Facebook,
DFP maintains both a public page and a group page.
5. After the jury returned its verdict in this case, on December
8, 2017, DFP rebranded its website and relocated it, first to the domain
saltlakecomicconvention.com and then to the domain fanxsaltlake.com.
DFP still owns registrations for the domains saltlakecomiccon.com and
slcomiccon.com. DFP continues to receive but not send emails at
addresses on those domains—e.g., bryan@slcomiccon.com; and DFP has
been forwarding internet traffic from www.saltlakecomiccon.com to
fanxsaltlake.com. (After this year’s show ended, DFP tested the impact
of forwarding by temporarily stopping it. Overall traffic to DFP’s website
was materially diminished during the period that traffic was not
forwarded.)
6. After the jury’s verdict, DFP also changed its Twitter,
Instagram, Tumblr, and Pinterest handles, and its public Facebook page,
so they no longer use “comic con” in any form. DFP changed the branding
33
(45 of 331)
on all its social media sites from “Salt Lake Comic Con” to “FanX Salt
Lake Comic Convention.” However DFP has been unable to migrate
either its Facebook group page or its YouTube channel to URLs that do
not include “comiccon.” More precisely, although the URLs do not include
any form of “comic con” in the domain, they do include “comiccon” in the
post-domain paths. Specifically, the URL for the Facebook group page is
www.facebook.com/groups/saltlakecomiccon; for the YouTube channel,
www.youtube.com/user/SLComicCon. So far as DFP has been able to
ascertain, the operators of those platforms do not provide DFP the
technical capability of altering the URLs at which its content is hosted.
Because DFP cannot change the URLs, if it is not allowed to continue
using the URLs then it will have to abandon the content and the
followers.
7. DFP’s Facebook group page has 33,000 followers. Unlike
DFP’s public Facebook page, which is accessible to anyone, access to the
group page is limited to members—i.e., Facebook subscribers who have
applied for access and had their applications approved by DFP. We
describe group page followers as “super fans.” As a precaution, DFP
launched a new Faceboook group page several weeks ago at a new URL
and invited members of the original group page to also apply and join the
34
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new group. About 8,000 of the 33,000 members of the original group page
have been subscribed to the new page. Thus DFP still stands to lose its
established communication channel with 25,000 super fans—as well as
all the content (posts, likes, links, etc.) on the original group page, if
forced to abandon the original URL.
8. DFP’s YouTube channel receives hundreds of thousands of
impressions a month and has totaled millions of views over its life.
9. Based on metrics developed using the various analytical tools
provided by the different social media platform providers, DFP’s social
media sites, collectively, have about 350,000 posts and shares—including
tens of thousands of photographic images and videos. In those posts—
and associated likes, links, and shares—live DFP’s collective memory and
historical consciousness, and the Internet’s memory and awareness of
DFP. The posts include the personal photos of tens of thousands of
customers that are linked from personal pages. They also include
thousands of more broadly significant images and video, including one of
the last appearances by Carrie Fisher (Princess Leia from Star Wars),
the second-to-last appearance by Leonard Nimoy (Spock from Star Trek),
and the Guinness World Record-breaking gathering of costumed fans at
one of DFP’s events. All that content is in turn embedded in a wider
35
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universe of likes, links, and shares, all of which together makes up one of
DFP’s most powerful assets for cultivating and maintaining an emotional
connection with its fan base. The greatest harm to DFP that is
threatened by the district court’s injunction is the irreversible loss of
most or all that content.
10. Removing “comic con” from all those posts is a practical
impossibility: there is no “find and replace” tool to reach into and
separately modify each text post, so forcing DFP to scrub all “Salt Lake
Comic Con” references is the same as ordering DFP to remove the posts
themselves; and images and video are not searchable at all. Due to their
sheer number, the posts would have to be removed en masse, because
they could not be individually assessed and removed. The resulting loss
would be irreversible: even if some posts could be restored, they would
have none of the temporal indexing that causes them to resurface—and
all the likes, links, and shares to them would be forever lost; and
commentary and recognition from the likes of Chris Evans (Captain
America) and Stan Lee (Founder of Marvel) would be erased from history.
11. I estimate that destroying all social media posts including any
“comic con” references would take at least five days.
36
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Market valuation
12. Since DFP produced its first show in 2013, it has entertained
and engaged in serious acquisition discussions with several large
industry participants with multiple comic convention shows, like ours, in
their portfolios. Some of those discussions are ongoing. Valuation
parameters in those discussions have typically been set as multiples of
EBITDA; specifically, the parameters have ranged from five to twelve
times EBITDA. Excluding extraordinary litigation expenses, this yields
a valuation of $5–$12 million, which is more than enough to pay the
judgment. This has been borne out in ongoing discussions, in which a
potential acquirer familiar with the $4 million fees award has pointed
out that the entire judgment could be paid from the acquisition price,
leaving some residual for DFP’s members and a comic convention in its
fans’ hometown.
13. If the judgment is affirmed on appeal, paying the full
judgment from proceeds of a sale of our events would provide the quickest
route to full payment. Failing that, ongoing revenues will allow the full
judgment to be paid over time. But if enforcement is not stayed, our
means to produce the next show will be gone and the ongoing value and
goodwill with our over one hundred thousand customers will evaporate.
37
(49 of 331)
14. Daniel Farr and I, between us, own 100% of the membership
interests in DFP. If enforcement is stayed then during the pendency of
this appeal, we will continue to operate the business enterprise
(including payments to trade and other creditors) as we have done
historically.
15. If enforcement is stayed then during the pendency of this
appeal, we will not lien, hypothecate, encumber, our equity interests in
DFP, or in its business, to be used as security for the repayment of any
debt other than the judgment without obtaining either written approval
from SDCC or an order of this Court authorizing such securitization.
16. If enforcement is stayed then any net proceeds from the sale,
transfer, or assignment of any of our equity interests in DFP, or in its
business, while this appeal is pending, up to the amount of the judgment,
will be placed in escrow pending resolution of the appeal, to stand as
security for the judgment (if affirmed).
17. I understand the purpose of a supersedeas bond is to
safeguard the judgment’s creditor ability to collect on the judgment.
Given the nature of our business operations and the make-up of our
collective asset structure, preventing immediate collection activity will
38
(50 of 331)
accomplish that goal far better than wholesale dismemberment of our
assets and the destruction of our going concern value and income stream.
I declare under penalty of perjury that the foregoing is true and
correct. Executed in Salt Lake City, Utah this 9th day of October 2018.
Bryan M. Brandenburg
39
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DECLARATION OF DANIEL FARR
I, Daniel Farr, declare as follows:
1. I am the Producer and Co-Founder of Dan Farr Productions,
LLC (“DFP”). I make this declaration based on my own personal
knowledge and based on records maintained by DFP in the ordinary
course of business, to which I have access and upon which I rely in
performing my duties to DFP.
2. Bryan Brandenburg and I, between us, own 100% of the
membership interests in DFP. If enforcement is stayed then during the
pendency of this appeal, we will continue to operate the business
enterprise (including payments to trade and other creditors) as we have
done historically.
3. If enforcement is stayed then during the pendency of this
appeal, we will not lien, hypothecate, or encumber our equity interests in
DFP, or in its business, to be used as security for the repayment of any
debt other than the judgment without obtaining either written approval
from SDCC or an order of this Court authorizing such securitization.
4. If enforcement is stayed then any net proceeds from the sale,
transfer, or assignment of any of our equity interests in DFP, or in its
business, while this appeal is pending, up to the amount of the judgment,
40
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41
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DECLARATION OF WILLIAM SMELKO
I, William Smelko, declare as follows:
1. I am an attorney retained by Appellants Daniel Farr, Bryan
Brandenburg, and Dan Farr Productions. I am licensed to practice law
in the State of California and am admitted before the Ninth Circuit Court
of Appeals. I have personal knowledge of the matters and facts set forth
in this declaration and if called as a witness, could and would testify
competently thereto.
2. On September 6, 2018 and again on two occasions thereafter,
after being retained by Appellants, I contacted two different insuring or
bonding entities seeking to obtain a supersedeas bond for Appellants in
connection with the judgment entered on August 23, 2018 in favor of San
Diego Comic Convention in the United States District Court for the
Southern District of California.
3. The first representative and corporate agent I spoke with was
headquartered in Chicago, in the national office of CNA Insurance and
Surety Company. She explained that given the size of the judgment
(nearly $4 million), the Appellants would be required to post hard
collateral in the amount of the judgment, plus interest, to obtain the
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bond. By hard collateral, the agent explained that to issue a supersedeas
bond her company required cash, cash equivalents, deposit accounts, and
appraised real property valued with a net equity above $4.0 million.
4. The CNA agent further explained that her company would not
provide any type of bond in the absence of sufficient hard collateral to
securitize the full bond amount if the appeal proved unsuccessful. I
responded that Appellants not only had a successful track record of
producing profitable shows that generated income, but also that such
income would grow over the course of the time period required for the
Appeal to be decided. She nonetheless reaffirmed that her Company
would not use income or business operating value as collateral security
to issue a supersedeas bond.
5. On September 10, 2018, I spoke with the Vice President and
Court Bond Underwriting Director at Tokio Marine HCC in Los Angeles.
She, too, informed me that her company would not consider posting a
supersedeas bond for Appellants without hard collateral valued in excess
of the bond amount. The collateral she said would be acceptable was
similar to that referenced by CNA.
6. The Tokio Marine VP told me that her organization likewise
would not use going concern value as collateral. Furthermore, given the
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size of the judgment, her company would not be able to post a
supersedeas appeal bond without security in the form of cash, marketable
securities, or appraised real property valued in excess of the amount of
the Judgment.
correct. Electronically executed in San Diego, California this 9th day of
October 2018.
s/ William Smelko
William Smelko
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DECLARATION OF CLARKE B. NELSON
I, Clarke B. Nelson, declare as follows:
1. I am a Certified Public Accountant (CPA) and a Chartered
Global Management Accountant (CGMA); and I am Accredited in
Business Valuation (ABV) and Certified in Financial Forensics (CFF) by
the AICPA. I hold a B.S. in accounting from Brigham Young University
and an M.B.A. from the Wharton School, University of Pennsylvania.
Attached as Attachment 1 is my curriculum vitae, which further
outlines my background, qualifications, and experience.
2. I have been asked to summarize certain financial and
accounting information pertaining to both Dan Farr Productions, LLC
(“DFP”) and San Diego Comic Convention (“SDCC”).
Dan Farr Productions
3. I was provided electronic access to the accounting system kept
and used by DFP in its ordinary course of business. Based on my review
of DFP’s accounting records, DFP revenue increased from approximately
$1.8 million in 2013, the first year it produced an event, to $7.8 million
in 2017. In 2013, DFP produced only one event, in the fall. Starting in
2014, DFP began producing two comic conventions each year, one in the
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spring and another in the fall. From 2014 to 2017, DFP’s revenues grew
at a compound annual growth rate of 10.7% (see Attachment 2).
4. While DFP has produced two comic convention events each
year since 2014, it only produced one event in 2018. Because DFP’s fall
2018 event occurred very recently, September 6–8, its accounting records
for this event and 2018 overall are not yet complete. Notwithstanding, I
understand that nearly all of the revenue attributable to the fall 2018
event has been recorded, which revenue totals approximately $4.9
million (net of sales tax that has been collected but has not yet been paid).
The $4.9 million in revenue for the fall 2018 event compares to $4.5
million in revenue for its fall 2017 event, which represents year-over-year
growth of approximately $0.4 million or 9%.
5. DFP’s adjusted EBITDA (earnings before interest, taxes, and
depreciation) for its most recent complete year, 2017, totals
approximately $1.1 million. This amount includes guaranteed
payments/salary paid to DFP principals and excludes amounts paid for
extraordinary litigation expenses (see Attachment 2).1
1 The accompanying attachments generally present information at a

summary level, rather than in the same detail as the accounting records
I reviewed.
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6. From its earned revenues, DFP pays various operational costs
to produce its convention events held in Salt Lake City, Utah. Such
operational expenses include, but are not limited to, celebrity fees,
celebrity travel and lodging, facilities rental, labor and payroll (including
payroll taxes), and marketing and advertising. In addition, between 2014
and 2017, DFP also paid litigation expenses (i.e., attorney fees, expert
fees, and other costs) of approximately $1.6 million to Maschoff Brennan,
which I understand to be DFP’s legal counsel in this matter (see
Attachment 3).2
7. Based on my review of DFP’s accounting records, I
understand that DFP typically begins incurring expenses for its events
several months prior to the actual date of such events. For example,
according to DFP’s accounting records, as of December 31, 2017, just
three months after its fall 2017 event and before it began realizing any
revenue from its upcoming fall 2018 event, DFP had incurred
approximately $153,000 of expenses related to anticipated future events.
8. I understand that DFP has never established any credit
facilities, other than financing some of its operations through use of
2The $1.6 million figure is through 2017. To date, DFP has paid
Maschoff Brennan approximately $2.2 million in litigation expenses.
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personal credit cards. Other than capital loaned for DFP’s first event by
Daniel Farr, it appears that the only sources of operating capital that
have been historically used by DFP are the remaining revenues
generated by each convention event after expenses. This understanding
is consistent with DFP’s accounting records, which indicate that DFP has
incurred only $220 in interest expense between 2013 and 2017.
San Diego Comic Convention
9. SDCC is a nonprofit educational organization, which I
understand is required to publish its annual Form 990 tax returns. I
have reviewed such tax forms through SDCC’s fiscal year ended August
31, 2016. (SDCC’s tax forms for the fiscal years ended August 31, 2017
and 2018 have not yet been published.) As of August 31, 2016, SDCC
reported approximately $23.5 million in cash on hand, and over $28
million in net assets (see Attachment 4). The following chart shows the
growth of SDCC’s cash and net asset balances from 2006 to 2016,
including its cash purchase of an office building in 2016.3
3http://www.latimes.com/local/lanow/la-me-ln-barrio-comic-con-
20160829-snap-story.html.
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$30.0
$25.0
$20.0
Millions of Dollars
$15.0
$10.0
$5.0
$0.0
2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016
SDCC Cash Balance SDCC Net Assets Balance
10. Since its fiscal year 2006 (the earliest year for which I have
ready access to data), SDCC’s revenue has consistently grown each year,
from approximately $5.9 million in 2006 to nearly $22 million in 2016,
which equates to a compound annual growth rate of 14.0% for that time
period (see Attachment 4). The following chart shows the trend of
revenue growth experienced by SDCC.
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$25.0
$20.0
Millions of Dollars
$15.0
$10.0
$5.0
$0.0
2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016
Total SDCC Revenue
correct. Executed in Salt Lake City, Utah this 9th day of October 2018.
Clarke B. Nelson
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Curriculum Vitae
Clarke B. Nelson, CPA, ABV, CFF, CGMA, MBA

Senior Managing Director & Founder
InFact Experts LLC
cnelson@infact-experts.com
Salt Lake City Office

265 East 100 South, Suite 307
Salt Lake City, UT 84111
Office: 801.903.2038
Cell: 801.232.3793
Clarke B. Nelson is a Senior Managing Director with InFact Experts and leads the firm’s Commercial Damages
Practice. With more than two decades of professional experience, Mr. Nelson has been qualified as an expert in
various federal and state courts, issued findings on matters in arbitration, mediation, and the International Trade
Commission (ITC) and has testified in numerous high-profile matters, including claims for 10-figure damages.
In addition to his experience in intellectual property matters including patent infringement, trademark infringement,
trade secret misappropriation, copyright infringement, and royalty compliance audits, Mr. Nelson also provides
expert analysis in forensic accounting, antitrust, breach of contract, business valuation, financial and fraud
investigations, IP licensing and strategy, and other matters. Prior to InFact, he spent many years at international
forensic and litigation consulting firms, including a “Big Five” accounting and consulting firm.
Mr. Nelson received his MBA degree from The Wharton School, University of Pennsylvania and his bachelor of
science degree in accounting from Brigham Young University. He is a Certified Public Accountant, a Chartered
Global Management Accountant, Accredited in Business Valuation, and Certified in Financial Forensics by the
AICPA.
Expert Testimony
Mr. Nelson has testified in court proceedings (jury and bench) in various jurisdictions including:
• Northern District of California
• Southern District of California
• Northern District of Indiana
• Western District of Tennessee
• Eastern District of Texas
• California Superior Court
• Utah Third District Court
• Utah Fourth District Court
• American Arbitration Association (Texas, California, Utah)

1
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In addition, Mr. Nelson has testified in deposition in many other jurisdictions including:
• Central District of California
• Middle District of Florida
• Northern District of Georgia
• Northern District of Illinois
• Southern District of New York
• District of Maryland
• Northern District of Ohio
• Western District of Pennsylvania
• Southern District of Texas
• District of Utah
• Eastern District of Virginia
• Western District of Washington
Mr. Nelson has testified as an expert witness and/or consulted on a variety of matters including:
• Accounting / GAAP • Government Contracts
• Alter Ego • Joint Venture and Profit Sharing
• Antitrust • Licensing and Market Assessment
• Bankruptcy • Patent Infringement
• Breach of Contract • Product Liability
• Breach of Fiduciary Duty • Real Estate
• Class Action • Revenue Recognition
• Construction • Royalty Audit / Compliance
• Copyright Infringement • Securities
• False Advertising (Lanham Act) • Solvency
• Forensic Investigations / Fraud • Trade Dress
• Trademark Infringement • Unfair Competition
• Trade Secret Misappropriation • Valuation

2
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Representative Industries
• Airline • Educational software • PCI Compliance
• Ammunition • Financial Services • Pest Control
• Apparel / Fashion • Flooring • Pharmaceutical
• Asphalt Paving • Gaming / Gambling • Plumbing
• Automotive • Government • Real Estate Development
• Banking • Hard Drive • Retail / Department Store
• Biotech • Healthcare • Satellite TV
• Building Materials • Health & Fitness • Semiconductor
• Call Center • Home Security • Software
• Computers • Insurance • Telecom
• Construction • Medical Laboratory • Video Game & Devices
• Consumer Electronics • Medical Information • Video Game Publishing
• Consumer Goods • Newspaper Publishing • Wearable Devices
• Credit Card Processing • Nutritional Supplement • Wireless Communication
License / Certifications
During his career, Mr. Nelson has earned the following licenses and certifications:
• Certified Public Accountant (CPA)
• Accredited in Business Valuation (ABV)
• Certified in Financial Forensics (CFF)
• Chartered Global Management Accountant (CGMA)
Education
• Master of Business Administration, The Wharton School, University of Pennsylvania
• Bachelor of Science, Accounting, Brigham Young University
Current / Past Professional Affiliations
• Licensing Executives Society, Chair, Salt Lake Chapter
• American Institute of Certified Public Accountants
• Utah Association of Certified Public Accountants

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• Intellectual Property Owners Association
• BYU Management Society, Board of Directors, Salt Lake Chapter
• Utah Information Technology Association (now Utah Technology Council)
Publications / Presentations / Speaking Engagements
• “Intellectual Property Damages Panel,” Utah Bar Association, IP Summit
• “Are the Bridges to Commerce Safer? A Panel Discussion of Federal and State ‘Anti-Troll’ Measures,”
Licensing Executives Society
• “Economic Hurdles to Injunctions and Exclusion Orders,” Licensing Executives Society Webinar
• “Patent Infringement Damages and Expert Reports,” Brigham Young University, J. Reuben Clark Law
School
• “Intellectual Property Portfolio Management – When and How to Deal with Underreporting,” The IP Legal
Minute
• “The Convergence of Recent Case Law and How Uniloc, ResQnet, and Cornell Federal Circuit Decisions
May Impact the Value of Your IP,” Licensing Executives Society, San Francisco, CA Chapter
• Panelist – “Enforcing the License Agreement: Royalty Audits, Collections, and Litigation,” State Bar of
California
• “Patent Infringement Damages,” Brigham Young University, J. Reuben Clark Law School
• Guest Lecturer – “Patent Law Remedies & Patent Damages,” University of Utah Law School
• “Working with Consultants and Expert Witnesses,” General Counsel/External Counsel forum (co-presented
with Howrey LLP)
• “Intellectual Property Royalty Compliance,” Licensing Executives Society, Salt Lake City Chapter
• “Recent Decisions Affecting Damages in Patent Litigation,” Law Seminars International.
• “Patent Damages After eBay,” California Society of CPAs
• “Consulting Case Competition,” Brigham Young University
• “Commonly Debated Issues in Performing Economic Damages Analyses in Intellectual Property Matters,”
Chapter 5 in Economic Damages in Intellectual Property - A Hands-On Guide To Litigation, Wiley, 2006
(co-authored with Chase Perry, Elizabeth Whitaker).
• “Recent CAFC Decisions Affecting Damages,” IP Section, Utah State Bar
• “Intellectual Property Law,” Salt Lake Community College
• “Financial Consulting in Litigation,” Brigham Young University, Management Consulting Club

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Professional Experience
• InFact Experts LLC, Senior Managing Director / Founder, 2016 – Present
• Fact Forensics LLC, Managing Member, 2016 – Present
• Berkeley Research Group, LLC, Managing Director, 2011 – 2016
• FTI Consulting, Inc., Senior Managing Director, 2003 – 2011
• LECG LLC, Managing Consultant, 2002 to 2003
• Arthur Andersen LLP, Manager, 1997 – 2002
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San Diego Comic Convention v. Dan Farr Productions, et al. Attachment 2
Summary of DFP Profit & Loss Statements
2013 2014 2015 2016 2017 Total

$ % $ % $ % $ % $ % $ %
Total Income $ 1,778,530 100.0% $ 5,216,418 100.0% $ 6,455,744 100.0% $ 7,267,944 100.0% $ 7,842,089 100.0% $ 28,560,726 100.0%
Total Cost of Goods Sold $ 1,101,618 61.9% $ 3,339,391 64.0% $ 4,100,851 63.5% $ 4,239,049 58.3% $ 3,695,538 47.1% $ 16,476,447 57.7%
Gross Profit $ 676,912 38.1% $ 1,877,026 36.0% $ 2,354,892 36.5% $ 3,028,896 41.7% $ 4,146,552 52.9% $ 12,084,278 42.3%
Total Expenses $ 657,651 37.0% $ 2,118,559 40.6% $ 2,242,596 34.7% $ 3,020,107 41.6% $ 4,161,010 53.1% $ 12,199,922 42.7%
Net Ordinary Income $ 19,261 1.1% $ (241,532) -4.6% $ 112,297 1.7% $ 8,789 0.1% $ (14,459) -0.2% $ (115,644) -0.4%
Add Back: Depreciation Expense 5,072 0.3% 7,500 0.1% 6,468 0.1% - 0.0% 3,421 0.0% 22,461 0.1%
Add Back: Interest Expense 79 0.0% 14 0.0% 120 0.0% 7 0.0% - 0.0% 220 0.0%
Add Back: Litigation Expenses - 0.0% 12,532 0.2% 178,967 2.8% 359,610 4.9% 1,070,000 13.6% 1,621,109 5.7%
Adjusted EBITDA $ 24,413 1.4% $ (221,487) -4.2% $ 297,852 4.6% $ 368,406 5.1% $ 1,058,962 13.5% $ 1,528,146 5.4%
Total Revenue CAGR (2014 through 2017) 10.7%
Notes:
Source: QuickBooks Online Plus File for Dan Farr Productions as of October 8, 2018.
Page 1 of 1
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Summary of DFP Litigation Expenses
Amount
Subtotal 2014-2017 $ 1,621,109
Subtotal 2018 $ 540,000
Total $ 2,161,109
Page 1 of 1
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Summary of SDCC Form 990 Returns
FY 2006 FY 2007 FY 2008 FY 2009 FY 2010 FY 2011

(Tax Year 2005) (Tax Year 2006) (Tax Year 2007) (Tax Year 2008) (Tax Year 2009) (Tax Year 2010)
$ % $ % $ % $ % $ %
Revenue
Program Service Revenue
Membership $ 2,472,696 41.7% $ 2,999,585 41.4% $ 3,903,306 47.5% $ 4,203,915 45.8% $ 5,091,151 50.1%
Tradeshow Income 3,023,921 51.0% 3,484,211 48.1% 3,479,763 42.4% 4,087,454 44.6% 3,903,728 38.4%
Tradeshow Sponsorship1 111,420 1.9% 160,266 2.2% 485,044 5.9% 562,550 6.1% 833,616 8.2%
Advertising2 31,800 0.5% 27,300 0.4% 71,908 0.9% - 0.0% - 0.0%
Art Auction 28,501 0.5% 24,710 0.3% 18,031 0.2% - 0.0% - 0.0%
Royalties from Licensing - 0.0% - 0.0% - 0.0% - 0.0% - 0.0%
Other Income - 0.0% - 0.0% - 0.0% 106,143 1.2% 239,085 2.4%
Total Program Service Revenue $ 5,668,338 95.6% $ 6,696,072 92.4% $ 7,958,052 96.9% $ 8,960,062 97.7% $ 10,067,580 99.1%
Royalties - 0.0% - 0.0% - 0.0% 37,178 0.4% 18,397 0.2%
Advertising 75,610 1.3% 199,406 2.8% 63,695 0.8% 98,765 1.1% 68,403 0.7%
Investment Income3 164,529 2.8% 287,046 4.0% 189,265 2.3% 73,297 0.8% 5,098 0.1%
Rental Income - 0.0% - 0.0% - 0.0% - 0.0% - 0.0%
Other Income 18,902 0.3% 63,293 0.9% 1,157 0.0% - 0.0% - 0.0%
Total Revenue $ 5,927,379 100.0% $ 7,245,817 100.0% $ 8,212,169 100.0% $ 9,169,302 100.0% $ 10,159,478 100.0%
Expenses
Program Services
Compensation of Current Officers, Directors, Trustees, and Key Employees $ 54,936 0.9% $ 55,058 0.8% $ 53,298 0.6% $ 155,806 1.7% $ 217,326 2.1%
Other Salaries & Wages 530,961 9.0% 612,476 8.5% 803,630 9.8% 958,521 10.5% 895,494 8.8%
Employee Benefits4 4,343 0.1% - 0.0% - 0.0% 11,072 0.1% - 0.0%
Payroll Taxes 46,914 0.8% 51,009 0.7% 69,745 0.8% 74,253 0.8% 83,877 0.8%
Non-Employee Services5 413,408 7.0% 287,390 4.0% 434,760 5.3% 423,882 4.6% 841,717 8.3%
Advertising & Promotion6 368,877 6.2% 443,169 6.1% 396,880 4.8% 367,305 4.0% 237,744 2.3%
Information Technology7 6,595 0.1% 5,899 0.1% 14,878 0.2% 11,019 0.1% 28,622 0.3%
Occupancy8 307,786 5.2% 381,172 5.3% 435,444 5.3% 413,746 4.5% 399,520 3.9%
Travel 99,693 1.7% 101,719 1.4% 101,420 1.2% 109,492 1.2% 159,962 1.6%
Depreciation, Depletion, and Amortization 16,045 0.3% 17,869 0.2% 17,865 0.2% 20,105 0.2% 25,965 0.3%
Insurance 96,042 1.6% 117,984 1.6% 175,618 2.1% 64,940 0.7% 217,090 2.1%
Equipment Rental9 572,212 9.7% 814,986 11.2% 750,533 9.1% 1,057,412 11.5% 1,226,031 12.1%
Security 404,012 6.8% 777,440 10.7% 1,236,853 15.1% 1,049,600 11.4% 1,227,566 12.1%
Casual Labor 458,495 7.7% 515,367 7.1% 684,510 8.3% 737,244 8.0% 606,221 6.0%
Printing & Publications10 375,160 6.3% 497,517 6.9% 513,536 6.3% 599,678 6.5% 463,661 4.6%
Other Expenses 936,105 15.8% 992,655 13.7% 1,254,540 15.3% 1,577,801 17.2% 1,879,436 18.5%
Total Program Services $ 4,691,584 79.2% $ 5,671,710 78.3% $ 6,943,510 84.6% $ 7,631,876 83.2% $ 8,510,232 83.8%
Page 1 of 4
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FY 2006 FY 2007 FY 2008 FY 2009 FY 2010 FY 2011

(Tax Year 2005) (Tax Year 2006) (Tax Year 2007) (Tax Year 2008) (Tax Year 2009) (Tax Year 2010)
$ % $ % $ % $ % $ %
Management & General

Compensation of Current Officers, Directors, Trustees, and Key Employees $ - 0.0% $ - 0.0% $ - 0.0% $ - 0.0% $ - 0.0%
Other Salaries & Wages 65,100 1.1% 117,800 1.6% 151,223 1.8% 169,151 1.8% 158,028 1.6%
Employee Benefits4 483 0.0% 9,267 0.1% 12,739 0.2% 1,954 0.0% 18,474 0.2%
Payroll Taxes 5,213 0.1% 9,002 0.1% 12,307 0.1% 13,104 0.1% 14,802 0.1%
Non-Employee Services5 20,670 0.3% 28,739 0.4% 48,307 0.6% 47,098 0.5% 93,524 0.9%
Information Technology7 733 0.0% 655 0.0% 1,653 0.0% 1,224 0.0% 3,180 0.0%
8
Occupancy 16,199 0.3% 42,352 0.6% 48,383 0.6% 182,715 2.0% 44,391 0.4%
Travel - 0.0% 10,172 0.1% 11,269 0.1% 12,166 0.1% 17,774 0.2%
Depreciation, Depletion, and Amortization 1,604 0.0% 1,787 0.0% 1,985 0.0% 2,234 0.0% 2,885 0.0%
Insurance 10,671 0.2% 13,109 0.2% 19,513 0.2% 7,216 0.1% 24,121 0.2%
Casual Labor 45,849 0.8% 51,537 0.7% 76,057 0.9% 21,579 0.2% 67,357 0.7%
Printing & Publications10 41,684 0.7% 55,280 0.8% 57,060 0.7% 17,552 0.2% 51,518 0.5%
Other Expenses 45,790 0.8% 57,874 0.8% 87,357 1.1% 105,977 1.2% 97,575 1.0%
Total Management & General $ 253,996 4.3% $ 397,574 5.5% $ 527,853 6.4% $ 581,970 6.3% $ 593,629 5.8%
Total Expenses $ 4,945,580 83.4% $ 6,069,284 83.8% $ 7,471,363 91.0% $ 8,213,846 89.6% $ 9,103,861 89.6%
Profit (Revenue Less Expenses) $ 981,799 16.6% $ 1,176,533 16.2% $ 740,806 9.0% $ 955,456 10.4% $ 1,055,617 10.4%
Add Back: Depreciation Expense 17,649 0.3% 19,656 0.3% 19,850 0.2% 22,339 0.2% 28,850 0.3%
EBITDA $ 999,448 16.9% $ 1,196,189 16.5% $ 760,656 9.3% $ 977,795 10.7% $ 1,084,467 10.7%
Cash Balance at the End of the Fiscal Year11 $ 5,795,005 $ 6,305,097 $ 7,434,526 $ 7,997,959 $ 9,999,107
Net Assets Balance at the End of the Fiscal Year $ 4,986,406 $ 6,125,026 $ 6,827,919 $ 7,783,375 $ 8,838,992
Total Revenue CAGR (FY 2006 through FY 2016) 14.0%

Total Revenue CAGR (FY 2013 through FY 2016) 13.7%
Total Profit (Revenue Less Expenses) CAGR (FY 2006 through FY 2016) 12.4%
Total Profit (Revenue Less Expenses) CAGR (FY 2013 through FY 2016) 3.3%
Notes:
Source: CC007727-756; CC007757-779; CC007519-540; CC007541-562; CC007563-
585; CC007586-612; CC007613-636; CC007637-660; CC007485-518; CC418750-789.
SDCC's fiscal year ends on August 31.
1
Includes "SPONSORSHIPS" and "TRADESHOW SPONSORSHIP."
2
Includes "PROGRAM ADVERTISING" and "ADVERTISING REVENUE."
3
Includes "Interest on savings & temporary cash invmnts" and "Investment income."
4
Includes "Other employee benefits," "Pension plan contributions," and "Pension plan
accruals and contributions."
5
Includes "PROFESSIONAL SERVICES" and "Fees for services (non-employees)." For
FY 2016 , this amount includes "Legal," "Accounting," and "OUTSIDE SERVICE."
6
Includes "AD PREPARATION," "ADVERTISING," "PROMOTIONS," and
"Advertising and promotion."
7
Includes "COMPUTER EXPENSE" and "Information technology."
8
Includes "FACILITIES RENTAL" and "Occupancy."
9
Includes "Equipment rental and maintenance" and "EQUIPMENT RENTAL."
10
Includes "Printing and publications," "PRINTING," and "PRINTING AND
PUBLICATIONS."
11
Includes "Cash—non-interest-bearing" and "Savings and temporary cash investments."
Page 2 of 4
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FY 2011
2006 FY 2012 FY 2013 FY 2014 FY 2015 FY 2016
(Tax Year 2010)
2005) (Tax Year 2011) (Tax Year 2012) (Tax Year 2013) (Tax Year 2014) (Tax Year 2015) Total
$ % $ % $ % $ % $ % $ % $ %
Revenue
Program Service Revenue
Membership $ 5,928,774 49.5% $ 7,648,141 53.7% $ 8,295,991 55.4% $ 9,947,079 57.6% $ 11,242,580 56.8% $ 12,505,836 56.9% $ 74,239,054 52.7%
Tradeshow Income 4,764,125 39.8% 4,590,448 32.2% 4,626,616 30.9% 4,886,324 28.3% 5,594,231 28.3% 6,579,459 29.9% 49,020,280 34.8%
Tradeshow Sponsorship1 1,133,877 9.5% 1,236,094 8.7% 1,183,761 7.9% 1,625,862 9.4% 2,336,673 11.8% 1,554,115 7.1% 11,223,278 8.0%
Advertising2 - 0.0% 577,637 4.1% 743,360 5.0% 587,355 3.4% 310,305 1.6% 347,850 1.6% 2,697,515 1.9%
Art Auction - 0.0% - 0.0% - 0.0% - 0.0% - 0.0% - 0.0% 71,242 0.1%
Royalties from Licensing - 0.0% - 0.0% - 0.0% - 0.0% - 0.0% 622,382 2.8% 622,382 0.4%
Other Income 15,725 0.1% 9,354 0.1% 35,936 0.2% 18,198 0.1% 6,303 0.0% 20,225 0.1% 450,969 0.3%
Total Program Service Revenue $ 11,842,501 98.9% $ 14,061,674 98.8% $ 14,885,664 99.4% $ 17,064,818 98.9% $ 19,490,092 98.4% $ 21,629,867 98.4% $ 138,324,720 98.1%
Royalties 20,145 0.2% 57,793 0.4% 89,053 0.6% 193,805 1.1% 306,436 1.5% - 0.0% 722,807 0.5%
Advertising 109,485 0.9% 114,295 0.8% - 0.0% - 0.0% - 0.0% - 0.0% 729,659 0.5%
Investment Income3 2,149 0.0% 1,117 0.0% 1,315 0.0% 1,940 0.0% 1,508 0.0% 16,887 0.1% 744,151 0.5%
Rental Income - 0.0% - 0.0% - 0.0% - 0.0% 2,802 0.0% 248,430 1.1% 251,232 0.2%
Other Income - 0.0% - 0.0% - 0.0% - 0.0% - 0.0% 93,000 0.4% 176,352 0.1%
Total Revenue $ 11,974,280 100.0% $ 14,234,879 100.0% $ 14,976,032 100.0% $ 17,260,563 100.0% $ 19,800,838 100.0% $ 21,988,184 100.0% $ 140,948,921 100.0%
Expenses
Program Services
Compensation of Current Officers, Directors, Trustees, and Key Employees $ 250,283 2.1% $ 209,841 1.5% $ 223,258 1.5% $ 240,515 1.4% $ 255,701 1.3% $ 491,650 2.2% $ 2,207,672 1.6%
Other Salaries & Wages 1,120,347 9.4% 1,319,313 9.3% 1,274,747 8.5% 1,412,404 8.2% 1,976,989 10.0% 2,453,790 11.2% 13,358,672 9.5%
Employee Benefits4 - 0.0% - 0.0% - 0.0% - 0.0% - 0.0% - 0.0% 15,415 0.0%
Payroll Taxes 111,467 0.9% 124,534 0.9% 122,257 0.8% 132,464 0.8% 173,454 0.9% 214,392 1.0% 1,204,366 0.9%
Non-Employee Services5 1,150,798 9.6% 1,291,224 9.1% 1,627,658 10.9% 3,007,720 17.4% 2,943,018 14.9% 4,101,797 18.7% 16,523,372 11.7%
Advertising & Promotion6 254,640 2.1% 221,197 1.6% 138,538 0.9% 132,186 0.8% 133,216 0.7% 102,717 0.5% 2,796,469 2.0%
Information Technology7 18,885 0.2% 17,593 0.1% 37,804 0.3% 49,146 0.3% 50,716 0.3% 262,019 1.2% 503,176 0.4%
Occupancy8 553,830 4.6% 548,341 3.9% 833,096 5.6% 774,278 4.5% 776,193 3.9% 1,055,414 4.8% 6,478,820 4.6%
Travel 208,362 1.7% 143,074 1.0% 128,336 0.9% 175,418 1.0% 137,404 0.7% 98,047 0.4% 1,462,927 1.0%
Depreciation, Depletion, and Amortization 26,836 0.2% 34,716 0.2% 48,414 0.3% 64,012 0.4% 60,882 0.3% 62,238 0.3% 394,947 0.3%
Insurance 259,189 2.2% 316,635 2.2% 341,433 2.3% 337,442 2.0% 474,523 2.4% 659,020 3.0% 3,059,916 2.2%
Equipment Rental9 1,199,903 10.0% 1,011,175 7.1% 1,007,318 6.7% 1,072,334 6.2% 1,094,746 5.5% 1,158,539 5.3% 10,965,189 7.8%
Security 1,351,081 11.3% 1,619,585 11.4% 1,546,213 10.3% 1,792,444 10.4% 1,927,473 9.7% 2,192,081 10.0% 15,124,348 10.7%
Casual Labor 641,116 5.4% 1,113,488 7.8% 1,432,396 9.6% 867,797 5.0% 942,846 4.8% 878,360 4.0% 8,877,840 6.3%
Printing & Publications10 639,444 5.3% 487,584 3.4% 391,979 2.6% 482,199 2.8% 519,700 2.6% 495,570 2.3% 5,466,028 3.9%
Other Expenses 1,468,425 12.3% 2,027,062 14.2% 2,019,837 13.5% 2,589,775 15.0% 2,960,564 15.0% 3,472,816 15.8% 21,179,016 15.0%
Total Program Services $ 9,254,606 77.3% $ 10,485,362 73.7% $ 11,173,284 74.6% $ 13,130,134 76.1% $ 14,427,425 72.9% $ 17,698,450 80.5% $ 109,618,173 77.8%
Page 3 of 4
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FY 2011
2006 FY 2012 FY 2013 FY 2014 FY 2015 FY 2016
(Tax Year 2010)
2005) (Tax Year 2011) (Tax Year 2012) (Tax Year 2013) (Tax Year 2014) (Tax Year 2015) Total
$ % $ % $ % $ % $ % $ % $ %
Management & General

Compensation of Current Officers, Directors, Trustees, and Key Employees $ - 0.0% $ 37,031 0.3% $ 39,398 0.3% $ 42,444 0.2% $ 45,124 0.2% $ 100,699 0.5% $ 264,696 0.2%
Other Salaries & Wages 241,876 2.0% 232,820 1.6% 224,956 1.5% 249,248 1.4% 348,880 1.8% 419,085 1.9% 2,378,167 1.7%
Employee Benefits4 23,944 0.2% 29,763 0.2% 30,548 0.2% 34,308 0.2% 41,896 0.2% 47,198 0.2% 250,574 0.2%
Payroll Taxes 19,671 0.2% 21,977 0.2% 21,575 0.1% 23,376 0.1% 30,609 0.2% 37,834 0.2% 209,470 0.1%
Non-Employee Services5 127,867 1.1% 143,469 1.0% 180,850 1.2% - 0.0% - 0.0% 14,649 0.1% 705,173 0.5%
Information Technology7 2,098 0.0% 1,955 0.0% 4,200 0.0% 5,461 0.0% 5,635 0.0% 29,113 0.1% 55,907 0.0%
8
Occupancy 61,537 0.5% 60,927 0.4% 92,566 0.6% 86,031 0.5% 86,244 0.4% 76,163 0.3% 797,508 0.6%
Travel 23,151 0.2% 15,897 0.1% 14,260 0.1% 19,491 0.1% 15,267 0.1% 10,894 0.0% 150,341 0.1%
Depreciation, Depletion, and Amortization 2,982 0.0% 3,857 0.0% 5,379 0.0% 7,112 0.0% 6,765 0.0% 6,915 0.0% 43,505 0.0%
Insurance 28,799 0.2% 35,182 0.2% 37,937 0.3% 37,494 0.2% 52,725 0.3% 56,538 0.3% 323,305 0.2%
Casual Labor 71,233 0.6% 123,721 0.9% 159,155 1.1% 96,422 0.6% 104,761 0.5% 97,596 0.4% 915,267 0.6%
Printing & Publications10 71,049 0.6% 54,176 0.4% 43,553 0.3% 53,578 0.3% 57,744 0.3% 55,000 0.3% 558,194 0.4%
Other Expenses 87,046 0.7% 80,485 0.6% 79,122 0.5% 72,942 0.4% 85,954 0.4% 172,321 0.8% 972,443 0.7%
Total Management & General $ 761,253 6.4% $ 841,260 5.9% $ 933,499 6.2% $ 727,907 4.2% $ 881,604 4.5% $ 1,124,005 5.1% $ 7,624,550 5.4%
Total Expenses $ 10,015,859 83.6% $ 11,326,622 79.6% $ 12,106,783 80.8% $ 13,858,041 80.3% $ 15,309,029 77.3% $ 18,822,455 85.6% $ 117,242,723 83.2%
Profit (Revenue Less Expenses) $ 1,958,421 16.4% $ 2,908,257 20.4% $ 2,869,249 19.2% $ 3,402,522 19.7% $ 4,491,809 22.7% $ 3,165,729 14.4% $ 23,706,198 16.8%
Add Back: Depreciation Expense 29,818 0.2% 38,573 0.3% 53,793 0.4% 71,124 0.4% 67,647 0.3% 69,153 0.3% 438,452 0.3%
EBITDA $ 1,988,239 16.6% $ 2,946,830 20.7% $ 2,923,042 19.5% $ 3,473,646 20.1% $ 4,559,456 23.0% $ 3,234,882 14.7% $ 24,144,650 17.1%
Cash Balance at the End of the Fiscal Year11 $ 12,138,553 $ 16,337,867 $ 14,785,275 $ 19,152,553 $ 19,217,218 $ 23,530,891
Net Assets Balance at the End of the Fiscal Year $ 10,797,413 $ 13,705,670 $ 16,445,838 $ 19,848,360 $ 24,858,609 $ 28,080,797
Total Revenue CAGR (FY 2006 through FY 2016)

Total Revenue CAGR (FY 2013 through FY 2016)
Total Profit (Revenue Less Expenses) CAGR (FY 2006 through FY 2016)
Total Profit (Revenue Less Expenses) CAGR (FY 2013 through FY 2016)
Notes:
Source: CC007727-756; CC007757-779; CC007519-540; CC007541-562; CC007563-
585; CC007586-612; CC007613-636; CC007637-660; CC007485-518; CC418750-789.
SDCC's fiscal year ends on August 31.
1
Includes "SPONSORSHIPS" and "TRADESHOW SPONSORSHIP."
2
Includes "PROGRAM ADVERTISING" and "ADVERTISING REVENUE."
3
Includes "Interest on savings & temporary cash invmnts" and "Investment income."
4
Includes "Other employee benefits," "Pension plan contributions," and "Pension plan
accruals and contributions."
5
Includes "PROFESSIONAL SERVICES" and "Fees for services (non-employees)." For
FY 2016 , this amount includes "Legal," "Accounting," and "OUTSIDE SERVICE."
6
Includes "AD PREPARATION," "ADVERTISING," "PROMOTIONS," and
"Advertising and promotion."
7
Includes "COMPUTER EXPENSE" and "Information technology."
8
Includes "FACILITIES RENTAL" and "Occupancy."
9
Includes "Equipment rental and maintenance" and "EQUIPMENT RENTAL."
10
Includes "Printing and publications," "PRINTING," and "PRINTING AND
PUBLICATIONS."
11
Includes "Cash—non-interest-bearing" and "Savings and temporary cash investments."
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9th Circuit Case Number(s) 18-56221
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(74 of 331)
No. 18-56221
IN THE
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
Plaintiff-Appellee,
v.
DAN FARR PRODUCTIONS, DANIEL FARR, and BRYAN
BRANDENBURG,
Defendants-Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA
ANTHONY J. BATTAGLIA, DISTRICT JUDGE • CASE NO. 14-CV-1865-AJB-JMA
EXHIBITS SUPPORTING APPELLANTS’ EMERGENCY

MOTION UNDER CIRCUIT RULE 27-3 TO STAY
ENFORCEMENT OF MONEY JUDGMENT AND PARTIALLY
STAY PERMANENT INJUNCTION PENDING APPEAL
Pages 001 to 253
HORVITZ & LEVY LLP MASCHOFF BRENNAN PLLC

JOHN A. TAYLOR, JR. MICHAEL I. KATZ
PEDER K. BATALDEN L. REX SEARS
ERIC S. BOORSTIN 20 PACIFICA, SUITE 1130
3601 WEST OLIVE AVENUE, 8TH FLOOR IRVINE, CALIFORNIA 92618
BURBANK, CALIFORNIA 91505-4681 (949) 202-1900
(818) 995-0800
ATTORNEYS FOR DEFENDANTS-APPELLANTS

DAN FARR PRODUCTIONS, DANIEL FARR, AND BRYAN BRANDENBURG
(75 of 331)
San Diego Comic Convention v. Dan Farr Productions et al.

Case No. 18-56221
Index to Exhibits
Exh. Source Document Date Page
1 Reporter’s Transcript of Telephonic Status 06/28/2017 002
Conference [docket 122]
2 Defendants’ Memorandum of Points and 07/13/2017 009
Authorities in Opposition to Plaintiff’s Motion
for Sanctions [docket 140] SEALED
3 Exhibit 4 to [Corrected] Declaration of Jessica 08/28/2017 010
D. Garcia in Support of Defendants’ Motions
for Summary Judgment [docket 220]
SEALED
4 Reporter’s Transcript of Final Pretrial 09/21/2017 012
Conference/Motion Hearing [docket 265]
5 Special Verdict Form [docket 395] 12/08/2017 024
6 Exhibit 2 to Declaration of Callie A. Bjurstrom 01/16/2018 034
in Support of Plaintiff San Diego Comic
Convention’s Motion for Attorney Fees and
Costs [docket 425-5] SEALED
7 Defendants’ Notice of Motion and Motion for 01/16/2018 036
New Trial of Validity and Infringement
[docket 436]
8 Defendants’ Memorandum in Support of 01/16/2018 040
Motion for New Trial of Validity and
Infringement [docket 436-1]
9 Defendants’ Reply in Support of Motion for 03/06/2018 072
New Trial of Validity and Infringement
[docket 474]
10 Order Denying Defendants’ Motion for New 08/23/2018 087
Trial of Validity and Infringement [docket
536]
i
(76 of 331)

Case No. 18-56221
Index to Exhibits
11 Order Granting in Part and Denying in Part 08/23/2018 113
Plaintiff’s Motion for Permanent Injunction
[docket 538]
Plaintiff’s Motion for Attorneys’ Fees and
Costs Pursuant to 15 U.S.C. § 1117(a) [docket
541]
Plaintiffs Motion for Attorneys’ Fees and
Costs Pursuant to 15 U.S.C. § 1117(a) [docket
542] SEALED
14 Official Transcript (Motion In Limine 09/18/2018 168
Hearing) held on 11/14/2017 [docket 552]
SEALED
15 Defendants’ Notice of Application and Ex 09/18/2018 170
Parte Application to Stay Enforcement of
Judgment [docket 553]
16 Defendants’ Memorandum of Points and 09/18/2018 174
Authorities in Support of Defendants’ Ex
Parte Application to Stay Enforcement of
Judgment [docket 553-1]
17 Declaration of Daniel Farr in Support of 09/18/2018 187
Defendants’ Ex Parte Application to Stay
Enforcement of Judgment [docket 553-4]
18 Declaration of Bryan Brandenburg in Support 09/18/2018 195
of Defendants’ Ex Parte Application to Stay
ii
(77 of 331)

Case No. 18-56221
Index to Exhibits
19 Declaration of Ben McAdams in Support of 09/18/2018 204
Defendants’ Ex Parte Motion to Stay
20 Notice of Ex Parte Application and Ex Parte 09/19/2018 209
Application by Plaintiff San Diego Comic
Convention to Certify Judgment for
Registration in the District of Utah [docket
557]
21 Memorandum of Points and Authorities in 09/19/2018 213
Support of Plaintiff San Diego Comic
Convention’s Ex Parte Application to Certify
Judgment for Registration in the District of
Utah [docket 557-1]
22 Plaintiff San Diego Comic Convention’s 09/21/2018 221
Opposition to Defendants’ Ex Parte
Application to Stay Enforcement of Judgment
[docket 560]
23 Defendants’ Opposition to Plaintiff’s Ex Parte 09/24/2018 234
Application to Register Judgment [docket
563]
24 Declaration of Daniel Farr in Support of 09/24/2018 244
Defendants’ Opposition to Plaintiff’s Ex Parte
Application to Register Judgment [docket
565] SEALED
25 Order Denying Defendants’ Ex Parte 10/05/2018 246
Application to Stay Enforcement of Judgment
[docket 573]
iii
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EXHIBIT 1
001
(79 of 331)
Case 3:14-cv-01865-AJB-JMA
Case: 18-56221, 10/10/2018,
DocumentID:122
11041285,
Filed 06/30/17
DktEntry: PageID.16658
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Page 1 of 34
1 UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA
2
3 SAN DIEGO COMIC CONVENTION, A )

CALIFORNIA NONPROFIT CORPORATION, ) CASE NO. 14CV1865-AJB
4 )
PLAINTIFF, )
5 )
-V- ) JUNE 28, 2017
6 ) 2:04 P.M.
DAN FARR PRODUCTIONS, A UTAH )
7 LIMITED LIABILITY COMPANY; AND )
DANIEL FARR AND BRYAN BRANDENBURG,)
8 INDIVIDUALS, )
DEFENDANTS. ) SAN DIEGO, CALIFORNIA
9 )
)
10 AND RELATED COUNTERCLAIMS )
__________________________________)
11
12
13
14 TELEPHONIC STATUS CONFERENCE
15 BEFORE THE HONORABLE ANTHONY J. BATTAGLIA

UNITED STATES DISTRICT JUDGE
16
17
18
19
20
21
22
OFFICIAL REPORTER: JEANNETTE N. HILL, C.S.R.
23 U.S. COURTHOUSE
333 WEST BROADWAY, RM 420
24 SAN DIEGO, CALIFORNIA 92101
(619) 702-3905
25
REPORTED BY STENOTYPE, TRANSCRIPT PRODUCED BY COMPUTER
JUNE 28, 2017
002
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1 TELEPHONIC APPEARANCES:
2 FOR THE PLAINTIFF: CALLIE A. BJURSTROM ESQ.

PETER K. HAHN, ESQ.
3 MICHELLE A. HERRERA, ESQ.
PILLSBURY WINTHROP SHAW PITTMAN LLP
4 501 WEST BROADWAY, SUITE 1100
SAN DIEGO, CALIFORNIA 92101
5
FOR THE DEFENDANTS: L. REX SEARS, ESQ.
6 MASCHOFF BRENNAN LAYCOCK GILMORE ISRAELSEN
& WRIGHT, PLLC
7 20 PACIFICA, SUITE 1130
IRVINE, CALIFORNIA 92618
8
DANIEL R. BARBER, ESQ.
9 MASCHOFF BRENNAN LAYCOCK GILMORE ISRAELSEN
& WRIGHT, PLLC
10 1389 CENTER DRIVE, SUITE 300
PARK CITY, UTAH 84098
11
ALSO PRESENT: JESSCIA GARCIA, PARALEGAL
12
13
14
15
16
17
18
19
20
21
22
23
24
25
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29
1 AUGUST 3RD WE'RE GOING TO DEAL WITH THE
2 MOTION-TO-AMEND ISSUE.
3 WE'RE GOING TO FLIP YOUR SUMMARY JUDGMENT AND YOUR
4 PRETRIAL DATES. AND I WILL ISSUE ANOTHER SCHEDULING ORDER ON
5 THIS, BUT AUGUST 28TH WILL BE THE SUMMARY JUDGMENTS, DAUBERTS,
6 WHATEVER YOU'VE FILED HERE.
7 SEPTEMBER 21ST WILL BE THE PRETRIAL. WE'LL GET BACK
8 TO YOU WITH SOME OPTIONS FOR AN EIGHT-DAY JURY TRIAL, FOR
9 TIMING.
10 AND MEANTIME -- WELL, WHY DON'T WE DO THIS? WHY
11 DON'T WE USE THE 14TH AND A SIMILAR BRIEFING SCHEDULE FOR THIS
12 ISSUE WITH REGARD TO DEPOSITIONS OF THE EXPERTS?
13 NOW, I DON'T KNOW HOW THAT WORKS WITH YOUR TRIP. SO,
14 MR. SEARS, COULD YOU SUBMIT YOUR MOTION TO COMPEL THE
15 DEPOSITIONS OR FOR LEAVE TO TAKE THEM AFTER THE CUTOFF, OR
16 HOWEVER YOU WANT TO CHARACTERIZE IT, BY THE 6TH, OR WITH YOUR
17 VACATION IS THAT A PROBLEM?
18 MR. SEARS: IT WILL BE A PROBLEM FOR ME, BUT NOT FOR
19 MY COLLEAGUES.
20 THE COURT: OKAY. SO YOUR COLLEAGUES CAN DO IT,
21 THEN.
22 MS. BJURSTROM: THAT IS HOW WE'RE GOING TO DEAL WITH
23 IT.
24 THE COURT: SO JULY 6TH IS THE MOTION TO ALLOW EXPERT
25 DEPOSITIONS AFTER THE CUTOFF, WE'LL CALL IT. THAT MOTION IS
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1 FILED JULY 13TH. AND THEN AT 1:00 ON THE 14TH WE'LL DEAL WITH
2 THAT, TOO. SO WE'LL KEEP YOUR MATTERS MOVING.
3 THE LAST THING I HAVE ON MY LIST -- UNLESS YOU HAVE
4 OTHER THINGS -- IS THE NOTICE THAT YOU MIGHT BE FILING A
5 DAUBERT MOTION DOWN THE ROAD. WE'RE GOING TO REJECT THAT,
6 MR. SEARS, BECAUSE IT'S NOT SOMETHING THAT IS TYPICALLY FILED.
7 IT'S NOT ORDERED TO BE FILED OR WHATEVER.
8 I UNDERSTAND THAT YOU MAY WANT TO FILE DAUBERT
9 MOTIONS NOW, AFTER THE DEADLINE, BUT YOU CAN INCLUDE THAT IN
10 YOUR MOTION TO TAKE THE DEPOSITIONS AND REQUEST LEAVE FOR A
11 DAUBERT. BUT AS A MOTION, IT'S SOMETHING THAT GETS FILED. BUT
12 THESE KIND OF NOVEL NOTICES COME UP AND GET KICKED OUT BY THE
13 CLERK AND IT'S NOT SOMETHING WE WOULD ENTERTAIN.
14 SO WE'LL REJECT IT, BUT I UNDERSTAND YOUR POINT. AND
15 YOU CAN INCLUDE THAT REFERENCE OR REQUEST IN THE MOTIONS TO
16 TAKE THE DEPOSITIONS IN THE FIRST PLACE. OR, IN THE
17 ALTERNATIVE, IF YOU'RE DENIED, IF YOU STILL WANT TO TRY AND
18 MOVE -- I MEAN, YOU CAN ARTICULATE IT HOWEVER YOU WANT.
19 SO WE'LL HAVE A FULL PLATE OF THINGS TO DO ON THE
20 14TH. I'M HOPING THAT WILL TAKE CARE OF THIS BODY OF
21 DISCOVERY-RELATED, CONDUCT-RELATED ISSUES. WE CAN GET TO THE
22 AMENDMENT AND THEN THE SUMMARY JUDGMENTS IN DUE COURSE AND
23 THEN, ULTIMATELY, THE TRIAL.
24 ANYTHING ELSE FOR NOW?
25 MS. BJURSTROM: I HAD ONE QUESTION, YOUR HONOR. THE
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1 LOCAL RULE 7(H) SPEAKS IN TERMS OF A 25-PAGE LIMIT FOR MOTIONS
2 TO BE HEARD ON A PARTICULAR DAY. AND, YOU KNOW, SO WE ABIDED
3 BY THAT FOR OUR SUMMARY JUDGMENT MOTION. WE MOVE ON MULTIPLE
4 GROUNDS, AND WE DID IT WITHIN 25 PAGES. I NOTICED THAT THE
5 DEFENDANTS FILED TWO MOTIONS FOR SUMMARY JUDGMENT, FOR A TOTAL
6 OF 46 PAGES.
7 YOU KNOW, I GUESS THE FIRST QUESTION IS IS THE COURT
8 GOING TO ACCEPT BOTH OF THOSE MOTIONS?
9 AND THEN THE SECOND QUESTION IS ASSUMING THE COURT
10 ISN'T GOING TO STRIKE ONE AND IS ACTUALLY GOING TO ACCEPT BOTH
11 OF THOSE, I WOULD LIKE SOME GUIDANCE ON WHAT THAT PERMITS US TO
12 DO IN TERMS OF A RESPONSE IN THE NUMBER OF PAGES WE WOULD GET
13 TO RESPOND TO THOSE?
14 THE COURT: WELL, I HADN'T COUNTED THE PAGES YET. I
15 DID SEE THEY WERE SEPARATE MOTIONS. AND, IT'S TRUE, THEY ARE
16 ALL SUPPOSED TO BE WITHIN THE 25 PAGES. BUT IN THE INTEREST OF
17 NOW WHAT IS A COMPRESSED SCHEDULE, WE'LL GIVE THE DEFENSE THE
18 LEAVE TO HAVE DONE WHAT THEY HAVE DONE. AND THEN YOU CAN HAVE
19 ADDITIONAL PAGES TO OPPOSE. YOUR OPPOSITION -- WELL, THE
20 PLAINTIFFS -- OR THE DEFENDANTS WERE 40 PAGES, YOU SAID, 41
21 PAGES?
22 MS. BJURSTROM: YES. IT WAS, LIKE, 25 ON ONE AND 21
23 ON ANOTHER.
24 THE COURT: OKAY. WE'LL GIVE YOU 41 PAGES TO OPPOSE.
25 HOW IS THAT? TIT FOR TAT.
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1 MS. BJURSTROM: THE SAME AMOUNT AS WHAT THEY GOT, 46?
2 THAT IS FINE, YOUR HONOR.
3 THE COURT: YES. 46. WHATEVER IT IS. THEN NOBODY
4 BUT MY LAW CLERK AND I ARE ABUSED IN THAT SITUATION.
5 BUT IT IS TRUE, YOU ARE CORRECT ON THE RULES. I
6 COULD STRIKE THEM AND THEN WE HAVE TO GO THROUGH THE PROCESS OF
7 ARGUING ABOUT WHETHER THEY CAN BE REASSERTED WITHIN THE PAGE
8 LIMITS. AND I WANT TO GET TO THE MERITS AT THIS POINT. SO I'M
9 GOING TO EXCUSE IT THIS ONE TIME, ACCEPT IT, BUT GIVE YOU AN
10 EQUAL NUMBER IN OPPOSITION. AND THEN THAT WAY IT'S FAIR FOR
11 EVERYBODY. OKAY?
12 MS. BJURSTROM: OKAY. THAT SOUNDS GOOD. AND ARE YOU
13 ISSUING A MINUTE ORDER ON ALL OF THIS, YOUR HONOR, WITH ALL OF
14 THESE DATES?
15 THE COURT: YES. IT WILL BE A REGULAR FORMAL ORDER
16 THAT WILL HAVE ALL THE DATES AND THE DIFFERENT THINGS THAT ARE
17 HAPPENING, SO THAT WE CAN ALL MAKE SENSE OF IT.
18 MS. BJURSTROM: PERFECT.
19 MR. SEARS: YOUR HONOR, JUST ONE MORE QUESTION ON THE
20 STAND-DOWN. IF OUR CLIENTS' WEBSITE AND WHATNOT JUST GOES
21 TOTALLY DARK, PEOPLE ARE GOING TO HAVE QUESTIONS.
22 ARE WE PERMITTED TO SAY WE'VE BEEN INSTRUCTED NOT TO
23 COMMENT ON THE CASE FOR THE TIME BEING, AND PUT UP SOME SORT OF
24 GENERIC THING LIKE THAT SO PEOPLE UNDERSTAND?
25 THE COURT: I THINK THAT IS APPROPRIATE. YOU CAN SAY
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1 TEMPORARILY RESTRICTED BECAUSE RIGHT NOW IT'S A TEMPORARY ORDER
2 TO NOT DISCUSS UNTIL WE WORK OUT THOSE ISSUES. BECAUSE IT MAY
3 BE IT'S ALL FAIR GAME AND YOUR CLIENT CAN GO BACK TO BUSINESS
4 AS HE SEES IT. IT COULD BE IT ALL NEEDS TO BE TAKEN DOWN
5 PERMANENTLY, BUT FIRST AMENDMENT RIGHTS CARVED OUT IN
6 APPROPRIATE AREAS. I DON'T KNOW YET.
7 BUT LET'S PUT UP A NOTICE THAT PURSUANT TO THE
8 FEDERAL COURT NO COMMENTS ON THE CASE WILL BE POSTED
9 TEMPORARILY. JUST LEAVE IT OPEN-ENDED.
10 MR. SEARS: OKAY.
11 THE COURT: ANYTHING ELSE?
12 MS. BJURSTROM: THANK YOU, YOUR HONOR. OH, I HAVE
13 ONE REAL QUICK QUESTION, YOUR HONOR. I NOTICED IN OUR
14 SCHEDULING ORDER THAT IT DIDN'T INDICATE WHEN MOTIONS IN LIMINE
15 WERE TYPICALLY DUE, AND I WAS WONDERING WHAT YOUR STANDARD
16 PRACTICE IS?
17 THE COURT: IT'S USUALLY A COUPLE WEEKS BEFORE TRIAL.
18 SO WHEN WE GET BACK TO YOU WITH -- WE'LL GET BACK TO YOU WITH
19 SOME DATES FOR TRIAL, SOME WINDOWS. AND THEN ONCE WE AGREE ON
20 THAT, A COUPLE WEEKS BEFORE, WE'LL HAVE THE IN LIMINE MOTION
21 DATE SET. AND SO I LIKE TO DO THOSE A COUPLE WEEKS AHEAD SO
22 YOU KNOW WHAT'S WHAT WHEN WE HIT THE TRIAL TWO WEEKS OR SO
23 LATER.
24 MS. BJURSTROM: PERFECT. THANK YOU SO MUCH. I
25 APPRECIATE ALL YOUR TIME TODAY, YOUR HONOR.
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2
3 SAN DIEGO COMIC CONVENTION, A )

CALIFORNIA NONPROFIT CORPORATION, ) CASE NO. 14CV1865-AJB
4 )
PLAINTIFF, )
5 )
-V- ) SEPTEMBER 21, 2017
6 ) 2:04 P.M.
DAN FARR PRODUCTIONS, A UTAH )
7 LIMITED LIABILITY COMPANY; AND )
DANIEL FARR AND BRYAN BRANDENBURG,)
8 INDIVIDUALS, )
DEFENDANTS. ) SAN DIEGO, CALIFORNIA
9 )
)
10 AND RELATED COUNTERCLAIMS. )
__________________________________)
11
12
13
14 FINAL PRETRIAL CONFERENCE/MOTION HEARING
15 BEFORE THE HONORABLE ANTHONY J. BATTAGLIA

UNITED STATES DISTRICT JUDGE
16
17
18
19
20
21
22
OFFICIAL REPORTER: JEANNETTE N. HILL, C.S.R.
23 U.S. COURTHOUSE
333 WEST BROADWAY, RM 420
24 SAN DIEGO, CALIFORNIA 92101
(619) 702-3905
25
REPORTED BY STENOTYPE, TRANSCRIPT PRODUCED BY COMPUTER
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1 APPEARANCES:
2 FOR THE PLAINTIFF: CALLIE A. BJURSTROM ESQ.

MICHELLE A. HERRERA, ESQ.
3 PETER K. HAHN, ESQ.
4 501 WEST BROADWAY, SUITE 1100
SAN DIEGO, CALIFORNIA 92101
5
ALSO PRESENT: TRACY BARNES, PARALEGAL
6
FOR THE DEFENDANTS: L. REX SEARS, ESQ.
7 MICHAEL I. KATZ, ESQ.
MASCHOFF BRENNAN LAYCOCK GILMORE ISRAELSEN
8 & WRIGHT, PLLC
20 PACIFICA, SUITE 1130
9 IRVINE, CALIFORNIA 92618
10 CHARLES JAMES VEVERKA, ESQ.

MASCHOFF BRENNAN LAYCOCK GILMORE ISRAELSEN
11 & WRIGHT, PLLC
1389 CENTER DRIVE, SUITE 300
12 PARK CITY, UTAH 84098
13
14
15
16
17
18
19
20
21
22
23
24
25
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1 THE COURT: IT LOOKS LIKE. OKAY. GOOD.
2 THAT GETS TO THE DEFENSES THAT I THINK ARE APPLICABLE
3 TO THE FIRST AND SECOND CAUSES OF ACTION.
4 MR. SEARS: YOUR HONOR, I HATE TO INTERRUPT. I THINK
5 THE STRIKING CAN CONTINUE THROUGH LINE 25, ACTUALLY, ON PAGE
6 SIX.
7 THE COURT: ALL RIGHT. THANK YOU. WE'LL DO THAT.
8 SO THAT PARAGRAPH WILL JUST BE, FINALLY, "THE LANHAM
9 ACT REQUIRES THERE WILL BE COMPENSATION, NOT PENALTY."
10 MR. SEARS: CORRECT.
11 THE COURT: OKAY. THEN WE'VE GOT THE ABANDONMENT
12 DEFENSE WHICH I PRESERVED OR ALLOWED TO GO FORWARD, ALTHOUGH BY
13 DENYING SUMMARY JUDGMENT ON IT ON THE PURPORTED LICENSE ISSUE.
14 I MEAN, HAD THE PLAINTIFF, FRANKLY, SET IT UP AS AN
15 AFFIRMATIVE MOTION FOR JUDGMENT, AND I WAS ASSURED I HAD ALL
16 THE DEFENDANTS' SIDE OF IT, I'D PROBABLY WOULD HAVE GRANTED IT
17 IF THIS IS ALL WE'VE GOT.
18 WHAT I'M CONCERNED ABOUT AT THIS POINT -- I MEAN,
19 WHAT I SAW IN THE ATTEMPTS TO GAIN JUDGMENT ON THAT WAS
20 SOMETHING FAR SHORT OF A LICENSE AGREEMENT HAVING BEEN REACHED.
21 IS THERE GOING TO BE MORE EVIDENCE ON THAT POINT FOR
22 THE JURY? BECAUSE, IF NOT, WE'RE GOING TO WASTE A LOT OF TIME
23 AND ENERGY ON SOMETHING I DON'T THINK YOU'RE GOING TO PASS A
24 RULE FIFTY MOTION ON.
25 MR. SEARS: SO THE EVIDENCE CONSISTS OF -- THE SHORT
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1 ANSWER IS I'D HAVE TO GO BACK AND REVIEW THE SUMMARY JUDGMENT
2 PAPERS TO ENSURE EVERYTHING WAS IN THERE.
3 THE COURT: OKAY.
4 MR. SEARS: I'M HAPPY TO REHEARSE WHAT I RECALL OF
5 THE EVIDENCE.
6 THE COURT: WELL, NO. I'LL RENEW THAT QUESTION AT
7 THE TIME OF TRIAL. BECAUSE IF THAT IS ALL WE'VE GOT, AS A
8 MATTER OF LAW I DON'T THINK IT MEETS THE BURDEN OF PROOF YOU
9 WOULD HAVE FOR THE DEFENSE. IF THERE IS MORE, GREAT. THE JURY
10 CAN ENTERTAIN IT ALL. DON'T GET ME WRONG.
11 SO LOOK AT THAT FOR FUTURE DISCUSSION PURPOSES, AND
12 WE WON'T DEBATE IT ANY MORE TODAY.
13 MR. SEARS: THANK YOU.
14 MS. BJURSTROM: IF I CAN MAKE JUST ONE COMMENT, YOUR
15 HONOR. I KNOW YOU RAISED IT IN THE PAPER AND WE HEARD IT AGAIN
16 JUST NOW.
17 THIS NAKED LICENSE, NUMBER ONE, WAS NEVER PUT IN AN
18 AFFIRMATIVE DEFENSE. WE HAD A VERY GENERAL ABANDONMENT OF
19 AFFIRMATIVE DEFENSE, WHICH IS WHY WE DIDN'T MOVE ON IT, BECAUSE
20 WE NEVER ANTICIPATED THEY WOULD EVER BRING SUCH A CLAIM. AND
21 WE SAW THE EVIDENCE THEY HAD IN CONNECTION WITH THE SUMMARY
22 JUDGMENT MOTION. AS YOU INDICATED, IT FALLS WOEFULLY SHORT.
23 SO OUR BIGGEST CONCERN IS WE WANT TO MAKE SURE THAT
24 BEFORE THEY EVER ATTEMPT TO PUT THAT ISSUE IN FRONT OF A JURY,
25 THAT THEY HAVE TO BASICALLY COME FORWARD AND PROFFER SOME KIND
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1 OF EVIDENCE OF AN AGREEMENT, BECAUSE OTHERWISE, I THINK WE'RE
2 GOING TO GET -- IT'S GOING TO BE UNWIELDY. I THINK IT'S GOING
3 TO BE PREJUDICIAL, AND IT'S GOING TO RAISE ALL KINDS OF
4 PROBLEMS.
5 THE COURT: WELL, I AGREE THAT WE NEED TO MAKE
6 SURE -- WELL, FIRST OF ALL, IT DID NOT RISE TO THE LEVEL TO
7 GRANT JUDGMENT. IT WAS FAR SHORT AS TO THIS REED ISSUE.
8 AND I THINK IT WOULD BE APPROPRIATE. WE COULD TAKE
9 IT UP AS PART OF THE IN LIMINE HEARING, WITHOUT IT COUNTING
10 AGAINST ANYONE SINCE I AM PUSHING THE ISSUE. WE CAN TALK ABOUT
11 IT AND HAVE A PROFFER IF THERE IS OTHER EVIDENCE FROM WHICH A
12 JURY COULD FIND A COMPLETED AGREEMENT, AS OPPOSED TO THESE
13 SETTLEMENT TALKS THAT WERE GOING ON IN CHICAGO OR WHEREVER THEY
14 WERE. SO LET'S DO THAT THAT WAY.
15 THEN, MR. SEARS, YOU HAVE THE BENEFIT OF BEING ABLE
16 TO BE PREPARED ON IT AND NOT BE BLINDSIDED. FAIR ENOUGH?
17 MR. SEARS: IF THE COURT IS OPEN TO IT, WHAT WE'D DO
18 IS PREPARE A FORMAL PROFFER DOCUMENT AND SUBMIT THAT IN ADVANCE
19 OF THE MIL HEARING.
20 THE COURT: THAT WOULD BE VERY HELPFUL IN TERMS OF
21 MAKING SURE THERE IS EVIDENCE TO GO TO THE JURY, THAT A
22 REASONABLE JURY COULD CONCLUDE. OTHERWISE, WE MIGHT SPEND HALF
23 A DAY ON THOSE AGREEMENTS TO NO AVAIL.
24 SO WE'LL DO THAT. THAT WILL BE ON THE AGENDA FOR THE
25 MOTION IN LIMINE, AND I APPRECIATE THE OFFER ON THAT.
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12
1 SO WE'LL LEAVE THE DIALOGUE, WITH REGARD TO THE
2 ABANDONMENT DEFENSE, AS IT IS IN THE FINAL PRETRIAL ORDER. AND
3 I WILL JUST NOTE IN THE MINUTES THAT WE'LL TAKE UP THE ISSUE OF
4 PROOF ON THAT AT THE IN LIMINE HEARING.
5 OKAY. WE'VE GOT AN UNCLEAN HANDS DEFENSE THAT IS
6 CHALLENGED BY THE PLAINTIFF, IN ESSENCE, WITH REGARD TO WHETHER
7 OR NOT INEQUITABLE CONDUCT GOES TO THE JUDGE OR JURY.
8 MS. BJURSTROM: THE OTHER CONCERN I HAVE WITH THIS,
9 YOUR HONOR, IS THE ONLY UNCLEAN HANDS I'VE EVER HEARD IS THIS
10 FRAUD ON THE TRADEMARK OFFICE THAT YOU HAVE STRUCK FROM THE
11 PLEADINGS, AND THAT IS NOT AT ISSUE IN THIS CASE.
12 SO, AGAIN, I DON'T WANT THEM -- THIS IS AN EQUITABLE
13 DEFENSE. I DON'T WANT THEM TRYING TO BACKDOOR GETTING SOME OF
14 THAT STUFF INTO THE JURY, ASKING THE JURY TO DO EQUITY AND
15 FINDING UNCLEAN HANDS.
16 THE COURT: OKAY. AND, MR. SEARS, I WILL LOOK TO YOU
17 FOR ANY RESPONSE.
18 MR. SEARS: SO THE PREDICATES -- THE FACTUAL
19 PREDICATES ARE ESSENTIALLY WHAT WAS PUT FORWARD AS A FRAUDULENT
20 PROCUREMENT OF THE TRADEMARK REGISTRATION CLAIM. HOWEVER,
21 THERE WASN'T SUCH A CLAIM THAT WAS STRICKEN. AS THE COURT MAY
22 RECALL, THERE WAS A MOTION -- THAT THE COURT DENIED AS
23 UNTIMELY -- TO BRING THAT CLAIM INTO THE CASE.
24 THE COURT: YES.
25 MR. SEARS: THIS IS A DEFENSE THAT HAS BEEN IN OUR
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1 MR. SEARS' POINT IS REALLY MORE, I THINK, SUCCINCT
2 THAN I FIRST APPRECIATED IT.
3 MR. SEARS: I'M SORRY?
4 THE COURT: I SAID YOUR POINT IS MUCH MORE SUCCINCT
5 THAN I FIRST APPRECIATED. IT DOES MAKE A DIFFERENCE HERE, WITH
6 THE CONTINUUM OF USE OVER TIME.
7 MR. SEARS: YES. AND THAT CONTINUUM EXTENDS,
8 FRANKLY, FOR STRENGTH OF THE MARK AND ALL SORTS OF REASONS,
9 BACK TO BEFORE THE MARK WAS EVER ADOPTED.
10 I DO THINK WE MADE AN UNFORTUNATE CHOICE IN
11 INTRODUCING THE TERM "AB INITIO" INTO OUR BRIEFING, WHICH IS
12 NOT A TERM THAT THE CASES HAVE LATCHED ONTO.
13 WHAT WE WERE TRYING TO EXPRESS IS JUST THE NOTION
14 THAT'S A SPECIAL CASE OF A BROADER PROPOSITION. THE BROADER
15 PROPOSITION BEING IF IT IS GENERIC -- WELL, THE WAY THE NINTH
16 CIRCUIT STATED IT, A GENERIC TERM CANNOT BECOME A TRADEMARK.
17 BUT THE POINT IS IT'S NOT THAT THERE IS SOMETHING
18 MAGICAL ABOUT THE DATE OF ADOPTION. THE POINT IS ONCE IT GOES
19 INTO THE PUBLIC DOMAIN IT STAYS IN THE PUBLIC DOMAIN. AND THAT
20 IS ONE LINE THAT YOU CAN LOOK AT, DATE OF THE REGISTRATION IS
21 ANOTHER ONE YOU CAN LOOK AT; BUT THEY ARE ALL SPECIAL CASES OF
22 THAT GENERAL PROPOSITION THAT ONCE IT DOES ENTER THE PUBLIC
23 DOMAIN, IT STAYS THERE.
24 THE COURT: RIGHT. AND I THINK, TO BE PRECISE, I
25 VIEW THIS CASE AS REGULAR WORDS WERE PUT TOGETHER TO MAKE WHAT
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23
1 BECAME A TRADEMARK THAT MAY OR MAY NOT HAVE BECOME GENERIC OVER
2 TIME. I DON'T KNOW THAT THESE WERE GENERIC BEFORE THEY WERE
3 TRADEMARKED. I THINK THEY WERE JUST WORDS THAT WERE PUT
4 TOGETHER, OR PARTS OF WORDS, BUT I DON'T KNOW. WE NEED TO
5 FLUSH THAT OUT.
6 MS. BJURSTROM: THE ONE THING, YOUR HONOR, IS I WANT
7 TO MAKE SURE YOU UNDERSTAND THAT THERE ARE MANY, MANY THINGS
8 ABOUT WHAT MR. SEARS IS ARGUING THAT WE DISAGREE WITH, AND HIS
9 CHARACTERIZATIONS. AND I DON'T WANT TO BE IN A SITUATION WHERE
10 WE ARE REARGUING THE MOTION FOR SUMMARY JUDGMENT, WHICH IS WHAT
11 I BELIEVE HE'S DOING, NUMBER 1.
12 BUT NUMBER 2, I WOULD RECOMMEND -- I THINK IT'S FOR
13 EVERYBODY'S BENEFIT -- THAT THAT PARTICULAR ISSUE AS TO -- YOU
14 KNOW, KIND OF THE TIME CONTINUUM WE'RE TALKING ABOUT, WHY DON'T
15 WE BRIEF THAT. WE ALL NEED TO KNOW, REALLY, WHAT EVIDENCE
16 SHOULD BE CONSIDERED AS WE'RE GETTING READY FOR TRIAL.
17 SO I THINK THE MORE WE KNOW UP FRONT ABOUT THAT THE
18 BETTER OFF FOR STREAMLINING THE CASE FOR TRIAL. SO I WOULD BE
19 ALL IN FAVOR OF BRIEFING THAT FOR THE COURT.
20 MR. SEARS: AS WOULD WE, YOUR HONOR.
21 THE COURT: YOU WOULD. OKAY. WE WON'T COUNT THAT AS
22 A MOTION IN LIMINE BUT WHY DON'T WE BRIEF IT FOR -- WELL, WE
23 HAVE THE IN LIMINE NOVEMBER 14TH.
24 MS. BJURSTROM: RIGHT.
25 THE COURT: WHY DON'T WE BRIEF IT AND ADD IT TO THE
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1 AGENDA FOR THAT DAY.
2 MR. SEARS: THEN WHAT KIND OF SCHEDULE?
3 THE COURT: I WAS JUST GOING TO GET THERE.
4 WELL, WE COULD DO THE BRIEF TWO WEEKS BEFORE, AND AN
5 OPPOSING BRIEF A WEEK BEFORE, AND THEN HAVE THE HEARING.
6 THE ISSUE OF GENERICNESS AND THE RELEVANCE AS TO TIME
7 WOULD BE -- I GUESS I WOULD SUGGEST MAYBE THE DEFENSE GO FIRST,
8 THE PLAINTIFF RESPOND, AND THEN WE HAVE A HEARING.
9 MS. BJURSTROM: OKAY.
10 MR. SEARS: IT DOES SEEM LIKE THIS IS CLASSIC MOTION
11 IN LIMINE. TO ME, IT WOULD SEEM TO MAKE THE MOST SENSE IF
12 PLAINTIFFS THINK WE SHOULDN'T BE INTRODUCING EVIDENCE OF USAGE
13 BEFORE DATE X, THEN THEY OUGHT TO BRING A MOTION TO THAT EFFECT
14 AND WE'LL BRIEF IT ACCORDING TO THE SCHEDULE THE COURT HAS SET
15 FOR MOTIONS IN LIMINE.
16 THE COURT: WHAT DO YOU THINK ABOUT THAT,
17 MS. HERRERA? YOU WERE STARTING TO STAND, SO I ASSUME YOU WANT
18 TO RESPOND.
19 MS. HERRERA: I WAS GOING TO STAND UP AND SAY
20 SOMETHING ABOUT THAT, YOUR HONOR, IF I MAY.
21 WE THINK THE COURT IS RIGHT, THAT IT SHOULD BE ON
22 DEFENDANTS TO MAKE THE MOVING BRIEF. AND IT SHOULD NOT BE
23 COUNTED AGAINST ANY PARTIES' MOTION IN LIMINE.
24 AND I DO JUST WISH TO DRAW ATTENTION TO THE FACT THAT
25 WHEN WE WERE IN THE SUMMARY JUDGMENT AND DAUBERT STAGE, IT WAS
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25
1 THE DEFENDANTS' POSITION THAT ANYTHING POST 1970 WAS
2 IRRELEVANT. AND NOW ALL OF A SUDDEN IT IS BECAUSE THE MARK WAS
3 VOID AB INITIO. THEY TRIED TO STRIKE OUR EXPERT BECAUSE THE
4 PRIMARY SIGNIFICANT TEST IS IRRELEVANT BECAUSE IT WAS VOID AB
5 INITIO. SO WE HAVE THIS FLIP-FLOP HERE, AND IT'S UNFAIR. IT'S
6 UNFAIR TO PLAINTIFFS.
7 THE COURT: WE'LL GO WITH MY ORIGINAL INSTINCT. SO
8 WHY DON'T WE HAVE THE DEFENDANTS' BRIEF BY THE 31ST -- AND I'M
9 DOING THIS BY MY HEAD, NOT BY A CALENDAR -- AND THE PLAINTIFF'S
10 OPPOSITION NOVEMBER 7TH. AND THEN WE'LL ARGUE IT OUT ON THE
11 14TH, ALONG WITH EVERYTHING ELSE. AND IT WON'T COUNT AS TO
12 EITHER'S ALLOTMENT.
13 FAIR ENOUGH?
14 MS. BJURSTROM: YES.
15 THE COURT: I HOPE.
16 SO ESTOPPEL IS THE NEXT ONE, ISN'T IT?
17 MS. BJURSTROM: NO DAMAGE. THE AFFIRMATIVE DEFENSE
18 OF NO DAMAGE.
19 MR. SEARS: YES. AND I THINK THE COURT --
20 THE COURT: THIS IS REALLY KIND OF THE SAME THING.
21 IT'S A DENIAL, RIGHT?
22 MR. SEARS: YES, YOUR HONOR.
23 THE COURT: IT'S NOT AN AFFIRMATIVE DEFENSE IN THE
24 CLASSIC SENSE, BUT IT IS SOMETHING THAT THE DEFENSE CONTENDS.
25 SO WE'LL LEAVE THAT. I'M NOT ELEVATING IT TO SOME
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1 PARTICULARLY SIGNIFIED CONCEPT AND NOT WHAT IT IS.
2 AND THEN WE HAVE ESTOPPEL. AND THE ISSUE ABOUT IT
3 BEING, ONE, AGAIN, FOR THE -- WELL, THIS ONE IS FOR THE COURT.
4 AND THE DEFENSE SAYS WELL -- YOU FOLKS SAY THAT YOU'RE SAYING
5 THE SAME THING, BUT YOU'VE APPLIED IT TO THE ELEMENTS, SO IT'S
6 GOING TO BE A COURT ISSUE.
7 MR. SEARS: YOUR HONOR, I THINK THAT'S CORRECT. JUST
8 ONE OBSERVATION ON HOW THIS DOCUMENT WAS PREPARED. THE
9 INSERTION OF THE STATEMENT IN PLAINTIFF'S PART -- THAT IT IS
10 FOR THE COURT AND NOT THE JURY TO DECIDE -- THAT WAS A LATE
11 INSERTION.
12 WE DID SEE IT BEFORE IT WENT IN. I DON'T WANT TO
13 GIVE A FALSE IMPRESSION THERE. BUT BECAUSE IT WAS INSERTED SO
14 LATE IN THE PROCESS WE DIDN'T REALLY HAVE TIME TO DO RESEARCH
15 ON IT. THE EARLIER DRAFTS, IT JUST SEEMED TO BE UNCONTESTED
16 THAT THAT WAS GOING TO BE DEFENSE FOR THE JURY.
17 THE COURT: SO DO YOU THINK IT'S FOR THE JURY?
18 MR. SEARS: I THINK IT PROBABLY IS FOR THE COURT. I
19 WOULD JUST ASK IF WE GET OUR RESEARCH DONE AND FIND OUT THAT IS
20 NOT THE CASE, WE MAY ASK THE COURT TO REVISIT THAT. BUT I'M
21 NOT AWARE OF ANY CONTRARY AUTHORITY AT THE MOMENT.
22 THE COURT: I LOOKED INTO IT AND I DIDN'T SEE
23 ANYTHING, EITHER, BUT YOU CAN CALL IT UP AGAIN TO DISCUSS IF
24 YOU FEEL THERE IS SOMETHING THAT HAS CHANGED. BUT I THINK THAT
25 IS A PURELY EQUITABLE ACTION.
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9 SOUTHERN DISTRICT OF CALIFORNIA
10 SAN DIEGO COMIC CONVENTION, Case No. 3: 14-cv-0 1865 AJB (JMA)
11 a California non-profit corporation,
12 Plaintiff, SPECIAL VERDICT FORM
13 v.
14 DAN F ARR PRODUCTIONS, a Utah

limited liability COI!!lJ~ny;
15 NEWSPAPER AGENCY COMPANY,
a Utah limited liability company;
16 DANIEL FARR, an indivicfual; and
BRYAN BRANDENBURG, an
17 individual,
18 Defendants.
19 AND RELATED COUNTERCLAIM.

20
21
22
23
24
25
26
27
28
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1 FEDERALTRADEMARKINFruNGEMENT
2
3 COMIC-CON mark
4 1. Is the COMIC-CON mark a valid, protectable trademark?
5 Yes __1(_
6 No
7 Ifyour answer is yes, go to Question 2.
8 Ifyour answer is no, go to Question 5.
9 2. Does San Diego Comic Convention own the COMIC-CON mark?
10 Yes X'
11 No
14 3. Did any Defendant use the COMIC-CON mark, or a similar mark,
15 without San Diego Comic Convention's consent in a manner that is likely to cause
16 confusion as to the source, sponsorship, affiliation or approval of goods or
17 services?
18 Yes~
19 No
22 4. Which Defendant(s) used the COMIC-CON mark, or a similar mark,
23 without San Diego Comic Convention' s consent in a manner that is likely to cause
24 confusion as to the source, sponsorship, affiliation or approval of goods or
25 services? (Mark "X " for all that apply.)
26 Dan Farr Productions, LLC X
27 Bryan Brandenburg X
28 Daniel Farr
-1-
-X-
025
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1 Go to Question 5.
2
3 COMIC-CON INTERNATIONAL mark
4 5. Is the COMIC CON INTERNATIONAL mark a valid, protectable
5 trademark?
6 Yes ____X._
7 No
10 6. Does San Diego Comic Convention own the COMIC CON
11 INTERNATIONAL mark?
12 Yes X
13 No
16 7. Did any Defendant use the COMIC CON INTERNATIONAL mark,
17 or a similar mark, without San Diego Comic Convention's consent in a manner
18 that is likely to cause confusion as to the source, sponsorship, affiliation or
19 approval of goods or services?
20 Yes X
21 No
24 8. Which Defendant(s) used the COMIC CON INTERNATIONAL
25 mark, or a similar mark, without San Diego Comic Convention's consent in a
26 manner that is likely to cause confusion as to the source, sponsorship, affiliation or
27 approval of goods or services? (Mark "X" for all that apply.)
28
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1 Dan F arr Productions, LLC

2 Bryan Brandenburg
3 Daniel Farr
4 Go to Question 9.
5
6 SAN DIEGO COMIC CON INTERNATIONAL mark with eye logo design
7 9. Is the SAN DIEGO COMIC CON INTERNATIONAL mark with the
8 eye logo design a valid, protectable trademark?
9 Yes X
10 No
13 10. Does San Diego Comic Convention own the SAN DIEGO COMIC
14 CON INTERNATIONAL mark with the eye logo design?
15 Yes X
16 No
17 Ifyour answer is yes, go to Question 11 .
19 11. Did any Defendant use the SAN DIEGO COMIC CON
20 INTERNATIONAL mark with the eye logo design, or a similar mark, without San
21 Diego Comic Convention's consent in a manner that is likely to cause confusion as
22 to the source, sponsorship, affiliation or approval of goods or services?
23 Yes X
24 No
27 12. Which Defendant(s) used the SAN DIEGO COMIC CON
28 INTERNATIONAL mark with the eye logo design, or a similar mark, without San
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Diego Comic Convention's consent in a manner that is likely to cause confusion as

2 to the source, sponsorship, affiliation or approval of goods or services? (Mark "X"
3 for all that apply.)
4 Dan Farr Productions, LLC X
5 Bryan Brandenburg X
6 Daniel Farr )(
7 Go to Question 13.
8
9
10
11
12
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1 UNFAIR COMPETITION- FALSE DESIGNATION OF ORIGIN

2 13. Did any Defendant use in commerce a false designation of the origin
3 of Dan Farr Productions, LLC's goods or services?
4 ~es
5 No X
8 14. Which Defendant(s) used a false designation of the origin of Dan Farr
9 Productions, LLC's good or services? (Mark "X" for all that apply.)
10 Dan Farr Productions, LLC
11 Bryan Brandenburg
12 Daniel F arr
14 15. Was the false designation( s) of origin likely to cause confusion,
15 mistake or deception as to the affiliation, connection, or association of Dan F arr
16 Productions, LLC with San Diego Comic Convention, or as to the origin,
17 sponsorship or approval of Dan Farr Productions, LLC's goods, services, or
18 commercial activities by San Diego Comic Convention?
19 ~es
20 No
23 16. Was San Diego Comic Convention damaged or likely to be damaged
24 by the false designation(s) of origin?
25 ~es
26 No
28
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1 DAMAGES- CORRECTIVE ADVERTISING

2 17. Did you answer yes to either Question 3, Question 7 or Question 11?
3 Yes X
4 No
6 18. Did you answer yes to Question 13, Question 15 and Question 16?
7 Yes
8 No X
10 19. Did you answer yes to Question 17 or Question 18?
11 Yes __}(_
12 No
14 Ifyour answer is no, please answer no further questions and sign,
15 date and return the Verdict Form.
16 20. Do you find that San Diego Comic Convention is entitled to an award
17 of damages for the cost of future corrective advertising reasonably required to
18 correct public confusion caused by Defendant's[s'] infringement and/or false
19 designation of origin?
20 Yes _.X_
21 No
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1 21. State the amount of damages San Diego Comic Convention is entitled
2 to for the cost of future corrective advertising reasonably required to correct public
3 confusion caused by Defendant's[s'] infringement and/or false designation of
4 ongm:
5 $ J-.0 1 000
6
7
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1 DAMAGES- DEFENDANTS' PROFITS

2
3 22. Did you answer yes to either Question 3, Question 7 or Question 11 ?
4 Yes X
5 No
6 Ify our answer is yes, go to Question 23.
7 Ify ou answer is no, go to Question 25.
8 23 . Did any Defendant act willfully in infringing San Diego Comic
9 Convention's trademark(s)?
10 Yes
11 No X
14 24. Which Defendant(s) acted willfully in infringing San Diego Comic
15 Convention's trademarks? (Mark "X" for all that apply.)
18 Daniel Farr
20 25. Did you answer yes to Question 13, Question 15 and Question 16?
21 Yes
22 No X
25 26. Did any Defendant act willfully in falsely designating the origin of
26 Dan Farr Productions, LLC's good or services?
27 Yes
28 No
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258 10 of 10

3 27. Which Defendant(s) acted willfully in falsely designating the origin of
4 Dan Farr Productions, LLC ' s good or services? (Mark "X " for all that apply.)
6 Bryan Brandenburg
7 Daniel Farr
9 28. Did you answer yes to Question 23 or Question 26?
10 Yes
11 No X
13 Ifyour answer is no, please sign, date and return the Verdict Form.
14 29. State the amount of profits earned by Dan Farr Productions, LLC that
15 are attributable to Defendant's[s'] infringement and/or false designation of origin:
16 $_____________________________
17
18 You have now completed this Verdict Form. The Foreperson should sign
19 this Verdict Form below and notify the Bailiff that you have reached a verdict.
20
21 Dated: _ _:_J_:l..~}-=o'---'~"'-----' 2017
By:~.A$~
22 Foreperson
23
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EXHIBIT 6
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Page 1 of 3
1 Michael I. Katz (CA State Bar No. 181,728)

mkatz@mabr.com
2
L. Rex Sears (CA State Bar No. 294,533)
3 rsears@mabr.com
MASCHOFF BRENNAN LAYCOCK
4
GILMORE ISRAELSEN & WRIGHT, PLLC
5 20 Pacifica, Suite 1130
Irvine, California 92618
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
8 Charles J. Veverka (pro hac vice, UT State Bar No. 7,110)
cveverka@mabr.com
9 MASCHOFF BRENNAN LAYCOCK
10 GILMORE ISRAELSEN & WRIGHT, PLLC
1389 Center Drive, Suite 300
11 Park City, Utah 84098
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13
Attorneys for Defendants and Counterclaimants DAN FARR PRODUCTIONS, LLC,
14 DANIEL FARR, and BRYAN BRANDENBURG
15
UNITED STATES DISTRICT COURT
16
17
18 SAN DIEGO COMIC CONVENTION, a Case No. 14-cv-1865-AJB-JMA
California nonprofit corporation,
19 DEFENDANTS’ NOTICE OF
Plaintiff, MOTION AND MOTION FOR NEW
20
v. TRIAL OF VALIDITY AND
21 INFRINGEMENT
DAN FARR PRODUCTIONS, a Utah limited
22
liability company; and DANIEL FARR and Date: May 3, 2018
23 BRYAN BRANDENBURG, individuals, Time: 2:00 p.m.
24 Defendants. Courtroom: 4A (4th Floor Schwartz)
Judge: Hon. Anthony Battaglia
25
AND RELATED COUNTERCLAIMS
26
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1 PLEASE TAKE NOTICE that on May, 3, 2018, at 2:00 p.m. or as soon thereafter
2 as the parties may be heard, defendants and counterclaimants Dan Farr Productions,
3 Daniel Farr, and Bryan Brandenburg (collectively “DFP”) will and hereby do move the
4 above-entitled Court, Hon. Anthony J. Battaglia presiding, under Federal Rule of Civil
5 Procedure 59(a)(1)(A), for a new trial on the validity and infringement of the three marks
6 asserted by plaintiff and counterdefendant San Diego Comic Convention (“SDCC”). On
7 December 8, 2017, the jury returned a special verdict, with separate findings on the
8 validity and infringement of each of three marks asserted by plaintiff and
9 counterdefendant San Diego Comic Convention (“SDCC”). Validity should be retried
10 because (1) the jury’s verdict is infected by instructional error, (2) additional evidence of
11 genericness was improperly excluded, (3) the jury’s verdict is against the great weight of
12 the evidence that was presented, and (4) DFP was not allowed to present evidence of
13 abandonment through naked licensing. Infringement should be retried because as the
14 Court observed, SDCC’s evidentiary presentation blurred the distinctions between and
15 among its three marks; therefore: (1) retrial of validity requires retrial of infringement
16 because an invalidity finding, even if limited to COMIC-CON, would likely have led to a
17 different outcome regarding infringement of the other marks and (2) the jury did not
18 properly assess infringement of any of SDCC’s marks but instead considered only some
19 generalized—and legally nonexistent—“comic con brand.”
20 This motion is and will be based on the accompanying memorandum, the oral and
21 documentary evidence introduced during the jury trial, additional evidence offered but
22 not received either before or during the jury trial, and by such additional arguments and
23 submissions as the Court may receive.
24
25
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1
DATED: January 16, 2018 Michael I. Katz
2 Charles J. Veverka
3 L. Rex Sears
5 By: /s/ L. Rex Sears
6
Attorneys for Defendants and
7 Counterclaimants DAN FARR PRODUCTIONS,
8 DANIEL FARR, AND BRYAN BRANDENBURG
9
10
11
12
13
14
15 CERTIFICATE OF SERVICE
16 The undersigned hereby certifies that a true and correct copy of the above and
17 foregoing document has been served on January 16, 2018, to all counsel of record who
18 are deemed to have consented to electronic service via the Court’s CM/ECF system per
19 Civil Local Rule 5.4.
20
By: /s/ L. Rex Sears
21
22
23
24
25
26
27
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mkatz@mabr.com
2
3 rsears@mabr.com
4
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
cveverka@mabr.com
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13
15
16
17
19 DEFENDANTS’ MEMORANDUM
Plaintiff, IN SUPPORT OF MOTION FOR
20
v. NEW TRIAL OF VALIDITY AND
21 INFRINGEMENT
22
liability company; and DANIEL FARR and Date: May 3, 2018
23 BRYAN BRANDENBURG, individuals, Time: 2:00 p.m.
24 Defendants. Courtroom: 4A (4th Floor Schwartz)
25
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1 TABLE OF CONTENTS
2 I. INTRODUCTION ...................................................................................................... 1
3 II. LEGAL STANDARDS .............................................................................................. 1
4 III. VALIDITY SHOULD BE RETRIED ....................................................................... 2
5 A. DFP Is Entitled to a Proper Adjudication of its Naked Licensing Defense ....... 2

B. Genericness Should Be Retried .......................................................................... 3
6
1. Evidence Was Wrongly Excluded and the Jury Was Wrongly Instructed
7 About Competitive Use .............................................................................. 3
8 a. The Court Misinstructed the Jury on Competitive Use ...................... 3
9 b. The Court Improperly Excluded Testimony Relating to Competitive
10 Third-Party Use ................................................................................... 4
2. Expert Linguist Testimony Was Improperly Excluded .............................. 5
11
a. The Court’s Criticisms of Dr. Kaplan’s Documentary Record Could
12 Not Justify Exclusion .......................................................................... 7
13 b. Dr. Kaplan Did Explain his Methodology, Which Is Sound .............. 9
14 3. Extensive Media Evidence Was Improperly Excluded ............................ 10
15 4. DFP Should Have Been Allowed to Show Genericness Ab Initio ........... 12
16 a. Genericness Ab Initio Is a Defense to SDCC’s Registrations .......... 14
17 b. DFP Had Enough Admissible Evidence to Prove Genericness Ab
Initio .................................................................................................. 15
18
c. DFP’s Evidence Had Sound Evidentiary Foundations ..................... 21
19
5. SDCC Promoted a False and Legally Flawed Narrative Because Pre-1970
20 Usage Was Excluded and Requested Instructions Were Not Given ........ 22
21 6. The Jury’s Validity Verdict Is Against the Weight of the Evidence ........ 24
22 IV. INFRINGEMENT SHOULD BE RETRIED .......................................................... 25
23 V. CONCLUSION ........................................................................................................ 25
24
25
26
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1 TABLE OF AUTHORITIES
2 Page(s)
3 Cases
4 Advertise.com, Inc. v. AOL Advertising, Inc.
5 616 F.3d 974 (9th Cir. 2010) .................................................................................... 5, 23
6 BellSouth Corp. v. DataNational Corp.
7 60 F.3d 1565 (Fed. Cir. 1995) ...................................................................................... 14
8 Butler v. Home Depot, Inc.

984 F. Supp. 1257 (N.D. Cal. 1997) ............................................................................... 8
9
10 CG Roxanne, LLC v. Fiji Water Co.
569 F. Supp. 2d 1019 (N.D. Cal. 2008) .................................................................... 5, 25
11
Classic Foods International Corp. v. Kettle Foods, Inc.
12 468 F. Supp. 2d 1181 (C.D. Cal. 2007) ............................................................ 11, 13, 25
13
Coleman v. Wilson
14 912 F. Supp. 1282 ........................................................................................................... 9
15 Elliott v. Google, Inc.
16 860 F.3d 1151 (9th Cir. 2017) ................................................................................ 11, 16
17 Hana Financial, Inc. v. Hana Bank
18 735 F.3d 1158 (9th Cir. 2013) ........................................................................................ 3
19 Horizon Mills Corp. v. QVC, Inc.

161 F. Supp. 2d 208 (S.D.N.Y. 2001) ............................................................................ 4
20
21 Jones v. Williams
297 F.3d 930 (9th Cir. 2002) ........................................................................................ 24
22
Khadera v. ABM Industries Inc.
23
No. C08-0417, 2011 WL 6813454 (W.D. Wash Dec. 28, 2011) ................................... 8
24
Krav Maga Association of America, Inc. v. Yanilov
25 464 F. Supp. 2d 981 (C.D. Cal. 2006) .......................................................................... 25
26
Louzon v. Ford Motor Co.
27 718 F.3d 556 (6th Cir. 2013) .......................................................................................... 3
28
ii Case No. 14-cv-1865-AJB-JMA

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1 Madrigal v. Allstate Indemnity Co.

No. 14-4242, 2015 WL 12746232 (C.D. Cal. Oct. 29, 2015) ........................................ 3
2
Manpower, Inc. v. Insurance Co. of Pennsylvania
3 732 F.3d 796 (7th Cir. 2013) .......................................................................................... 8
4
Metabolife International, Inc. v. Wornick
5 264 F.3d 832 (9th Cir. 2001) ........................................................................................ 10
6 Meyer Intellectual Properties Ltd. v. Bodum, Inc.
7 690 F.3d 1354 (Fed. Cir. 2012) ...................................................................................... 3
8 Moist Cold Refrigerator Co. v. Lou Johnson Co.
9 249 F.2d 246 (9th Cir. 1957) .......................................................................................... 2
10 Montgomery Ward & Co. v. Duncan

311 U.S. 243, 61 S. Ct. 189, 85 L. Ed. 147 (1940)......................................................... 1
11
12 Murphy v. City of Long Beach
914 F.2d 183 (9th Cir. 1990) .......................................................................................... 2
13
Schultz v. Akzo Novel Paints, LLC
14 721 F.3d 426 (7th Cir. 2013) ........................................................................................ 10
15
Schwan’s IP, LLC v. Kraft Pizza Co.
16 460 F.3d 971 (8th Cir.2006) ......................................................................................... 25
17
Self-Realization Fellowship Church v. Ananda Church of Self-Realization
18 59 F.3d 902 (9th Cir.1995) ........................................................................................... 26
19 Solid 21, Inc. v. Hublot of America
20 109 F. Supp. 3d 1313 (C.D. Cal. 2015) .......................................................................... 8
21 Solid 21, Inc. v. Hublot of America

685 F. App’x 530 (9th Cir. 2017) ................................................................................... 8
22
23 Surgicenters of America, Inc. v. Medical Dental Surgeries Co.
601 F.2d 1011 (9th Cir. 1979) ...................................................................................... 15
24
Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove
25
419 F.3d 925 (9th Cir. 2005) ........................................................................................ 13
26
Yellow Cab Co. v. Yellow Cab Co. of Elk Grove, Inc.
27 No. S-02-0704, 2006 U.S. Dist. LEXIS 89338 (E.D. Cal. Dec. 11, 2006) .......... 6, 7, 10
28
iii Case No. 14-cv-1865-AJB-JMA

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1 Statutes
2 15 U.S.C. § 1065 ................................................................................................................ 16

3 Other Authorities
4 FEDERAL RULE OF CIVIL PROCEDURE 59 .............................................................................. 1
5
FEDERAL RULE OF EVIDENCE 401....................................................................................... 13
6
7
8 FEDERAL RULE OF EVIDENCE 403................................................................................. 14, 23
9 FEDERAL RULE OF EVIDENCE 702......................................................................................... 9

10 FEDERAL RULE OF EVIDENCE 703......................................................................................... 8
11 FEDERAL RULE OF EVIDENCE 803....................................................................................... 22
12
13
14
15
16
17
18
19
20
21
22
23
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25
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27
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1 I. INTRODUCTION
2 San Diego Comic Convention (“SDCC”) took two claims to trial: (1) infringement
3 of three registered marks—viz., the word marks COMIC-CON and COMIC CON
4 INTERNATIONAL and the eye logo shown at right—and (2) false designation of origin.
5 On special verdict, the jury found each mark infringed but no false
6 designation of origin. The jury also found that infringement was not
7 willful and that SDCC had sustained only $20,000 in damages.1
8 But the Court sharply circumscribed the evidence it allowed
9 Defendants and counterclaimants (collectively “DFP”) to present, both on infringement
10 and in support of invalidity; and it gave improper jury instructions that undercut the
11 limited evidence that DFP was allowed to present. The Court also allowed SDCC to
12 present a case that was not really about the three trademark registrations that SDCC had
13 pleaded at all but was instead directed to some catchall “comic con brand,” which is a
14 stranger to the law and not the subject of any exclusive right held by SDCC. To correct
15 those and other errors, and because the verdict was against the weight of the evidence,
16 there should be a new trial on validity and infringement.
17 II. LEGAL STANDARDS
18 “The court may, on motion, grant a new trial on all or some of the issues … as
19 follows: (A) after a jury trial, for any reason for which a new trial has heretofore been
20 granted in an action at law in federal court …”2 Those reasons include: (1) that the
21 verdict “is against the weight of the evidence,” (2) “errors in admission or rejection of
22 evidence,” and (3) “errors in … instructions to the jury.”3
23
1
See ECF 395, questions 1, 3, 5, 7, 9, 11, 13, 21, and 23.
24 2
FEDERAL RULE OF CIVIL PROCEDURE 59(1).
3
25 See Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251, 61 S. Ct. 189, 85 L. Ed.
147 (1940) (“The motion for a new trial may invoke the discretion of the court in so far
26
as it is bottomed on the claim that the verdict is against the weight of the evidence … or
27 that, for other reasons, the trial was not fair …; and may raise questions of law arising out
of alleged substantial errors in admission or rejection of evidence or instructions to the
28
jury.”); see also Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir. 1990)
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1 III. VALIDITY SHOULD BE RETRIED

2 Trademark validity should be retried. First, it was reversible error to decide naked
3 licensing on a motion in limine. On genericness, evidence was wrongly excluded, the jury
4 was misinstructed, and the verdict is against the weight of the evidence.
5 A. DFP Is Entitled to a Proper Adjudication of its Naked Licensing Defense
6 During the pretrial conference, SDCC asked “that Defendants be required to make
7 an offer of proof … before attempting to introduce alleged evidence” of naked licensing4
8 and the Court ordered DFP “to proffer through a Motion in Limine that there is evidence
9 from which a reasonable jury could find a completed license.”5 When DFP applied for
10 leave to exceed the five-page limits on motions in limine and their attachments, so that it
11 could brief its defense properly and submit additional evidence in support, it was rebuked
12 for making the request, which was denied.6 At oral argument on the in limine
13 submissions, the Court ruled that DFP would not be allowed to present its defense.7
14 SDCC’s request was improper to begin with because “[a] motion in limine is not the
15 proper vehicle for seeking a dispositive ruling on a claim, particularly after the deadline
16 for filing such motions has passed.”8 And the Court’s order granting that dispositive
17
18 (“erroneous jury instructions, as well as the failure to give adequate instructions, are …
19 bases for a new trial”); Moist Cold Refrigerator Co. v. Lou Johnson Co., 249 F.2d 246,
256 (9th Cir. 1957) (“having permitted the jury to come to its conclusion … the trial
20 judge then had the right, and indeed the duty, to weigh the evidence … and to set aside
21 the verdict … even though supported by substantial evidence, where, in his conscientious
opinion, the verdict is contrary to the clear weight of the evidence”).
22 4
See Sept. 21, 2017 Tr. at 11:18–19.
5
23 See ECF Doc. 261 at 8:17–18.
6
See ECF Docs. 287, 295. Because the brief and evidence that DFP requested leave to
24 file were lodged but not accepted into the Court’s file, they are now submitted as Exs. E
25 and F to the accompanying Declaration of L. Rex Sears (“Sears decl.”).
7
See Nov. 14, 2017 Tr. at 131:
26 8
Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158, 1162 n 4 (9th Cir. 2013); see also
27 Madrigal v. Allstate Indemnity Co., No. 14-4242, 2015 WL 12746232, at *1 (C.D. Cal.
Oct. 29, 2015) (“A motion in limine is not the proper vehicle to resolve substantive
28
issues, to test issues of law, or to address or narrow the issues to be tried.”)
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1 ruling was reversible error,9 which should now be rectified by retrying validity.
2 B. Genericness Should Be Retried
3 DFP had a strong naked licensing defense, but genericness “is the seminal issue” in
4 this case.10 However, by a series of pretrial and in-trial rulings, the Court stripped away
5 most of DFP’s genericness evidence until all that remained were some newspaper
6 headlines and a list of 140 or so third-party conventions with names that include some
7 form of “comic con.”11 The Court then undercut the evidence of competitive third-party
8 use by instructing the jury that of the various types of evidence it might consider, third-
9 party use is singularly impotent to prove genericness. A new trial is required to correct
10 those and other errors that further compromised DFP’s evidence and bolstered SDCC’s.
11 1. Evidence Was Wrongly Excluded and the Jury Was Wrongly Instructed
About Competitive Use
12
Genericness should be retried because the Court (1) misinstructed the jury and
13
(2) improperly excluded testimony relating to third-party competitive use.
14
a. The Court Misinstructed the Jury on Competitive Use
15
The Court acknowledged that use of a term by third-party competitors, if sufficiently
16
extensive, could be enough to make it generic.12 But the Court instructed the jury:
17
Third party use of a trademark would not, by itself, establish that a trademark
18
9
19 See Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354, 1378 (Fed. Cir.
2012) (“[T]he district court … in addressing the sufficiency of Bodum’s … defense on an
20 evidentiary motion. … did not allow for full development of the evidence and deprived
21 Bodum of an opportunity to present all pertinent material …. Because … it was
procedurally improper for the court to dispose of Bodum’s … defense on a motion in
22 limine, we reverse … and remand for further proceedings.”); see also Louzon v. Ford
23 Motor Co., 718 F.3d 556, 561 (6th Cir. 2013) (“motions in limine should not be used to
resolve factual disputes, which remains the function of a motion for summary judgment,
24 with its accompanying and crucial procedural safeguards.”).
10
25 See Addendum Transcript of Excerpts During Trial at 51:2–3.
11
The most common variants are plain “comic con,” the concatenated forms “comicon”
26
and “comiccon,” and the hyphenated form “comic-con.” Unless otherwise indicated or
27 dictated by context, “comic con” is intended to encompass all forms.
12
See Dec. 5, 2017 Tr. at 48:7–10 (“I think it can. I don’t think … it can never establish a
28
trademark is generic. Indeed, there would be circumstances where it could.”).
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1 is generic. This is because a trademark owner is not obligated to pursue

enforcement measures against every infringing use of its trademark.13
2
This instruction is multiply defective. First, it tells the jury that competitive use is
3
inadequate to establish genericness—which, as the Court acknowledged, is incorrect.
4
Second, this instruction followed an enumeration of types of evidence the jury might
5
consider: “how the media uses it; how the plaintiff uses it; use by competitors; and
6
consumer surveys.”14 The Court did not disparage or otherwise comment on any of the
7
other types of evidence. By commenting only on the potential sufficiency of competitive
8
use, and doing so negatively, the Court signaled to the jury that competitive use is
9
somehow weaker than the rest. This was especially prejudicial because competitive use is
10
the only type of evidence the Court did not exclude altogether or sharply limit.
11
Third, the statement that lack of enforcement is irrelevant is a further error of law
12
because in genericide cases, “the trademark owner’s failure to police the mark, resulting
13
in widespread usage by competitors” is one of the fundamental processes by which “[t]he
14
public’s appropriation [of the mark] is set in motion.”15
15
Prejudicial misinstruction on the only type of evidence that the Court gave DFP
16
fairly free rein to introduce is, by itself, sufficient grounds for retrial.
17
b. The Court Improperly Excluded Testimony Relating to Competitive
18 Third-Party Use
19 The Court also erred by improperly excluding testimony from and about third-party
20 competitors. First, the Court permitted SDCC witnesses to testify, over objection, as to
21 how others referred to SDCC’s convention—specifically, that others referred to it as
22 “comic con.”16 Taken in isolation, that testimony could support SDCC’s theory that
23 “comic con” refers to SDCC’s convention specifically and not to comic conventions
24 generally. So DFP tried to elicit answering testimony, from both SDCC and third-party
25 witnesses, that other conventions are referred to in the same way—to show the jury that
26 13
See ECF Doc. 394 at 22:17–19.
14
27 See ECF Doc. 394 at 22:12–13.
15
See Horizon Mills Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 214 (S.D.N.Y. 2001).
28 16
See, e.g., Nov. 30, 2017 a.m. Session Tr. at 5:13–17.
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1 “comic con” is a generic term for comic conventions and that using it to refer to SDCC’s
2 convention is part of a broader practice of referring to local conventions as “comic
3 con.”17 But the Court excluded that testimony—which was prejudicial error.
4 Second, the Court allowed an SDCC witness to testify, again over objection, as to
5 why SDCC calls its convention “comic con.” Carefully phrasing his answer by reference
6 to the Ninth Circuit’s “familiar ‘who-are-you/what-are-you’ test,”18 Mr. Glanzer testified
7 that SDCC calls itself “comic con” because “that’s who we are.”19 But when DFP tried to
8 present third-party testimony about why they use “comic con”—viz., that they use “comic
9 con” to tell people what their shows are—the Court excluded it.20
10 Competitive use is relevant to genericness for two reasons: (1) the more commonly a
11 term is used by competitors, the less likely consumers are to associate that term with any
12 one supplier;21 and (2) absent an intent to deceive, such use shows that competitors, who
13 presumably know something about the relevant public, understand that a term is free for
14 the using and not the exclusive property of the putative markholder. Third-party
15 testimony about the reasoning behind the third-party’s selection of a mark speaks directly
16 to the second point. Therefore it was error for the Court to exclude such testimony.
17 2. Expert Linguist Testimony Was Improperly Excluded
18 During discovery, DFP designated an expert linguist, Jeffrey P. Kaplan, Ph.D.
19 Dr. Kaplan served two reports. In his first report, he explained linguistic principles by
20 which common-noun uses of words are distinguished from proper-noun uses. He took
21
17
See, e.g., Nov. 30, 2017 p.m. Session Tr. at 24:1–17.
22 18
See Advertise.com, Inc. v. AOL Advertising, Inc., 616 F.3d 974, 978 (9th Cir. 2010).
19
23 See, e.g., Nov. 28, 2017 p.m. Session Tr. at 66:21–67:12.
20
For the Court’s exclusion of testimony from Matthew Solberg of Phoenix Comicon,
24 see Dec. 6, 2017 a.m. Session Tr. at 65:6–17. Mr. Solberg was expected to testify
25 consistent with his deposition, for which see Sears decl. Ex. D at 149. For excluded
deposition testimony from Denver Comic Con, see Sears decl. Ex. D at 135; for Palm
26
Springs Comic Con, Sears decl. Ex. D at 142; for Stan Lee’s L.A. Comic Con, Sears decl.
27 Ex. D at 159. The thrust of the excluded testimony was that the third parties chose names
that include “comic con” in order to communicate what their event is, not whose.
28 21
See CG Roxanne, LLC v. Fiji Water Co., 569 F. Supp. 2d 1019, 1027 (N.D. Cal. 2008).
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1 that approach because “as the term ‘generic’ is used in trademark law” it refers to “a
2 word that denotes a kind, or type, of thing, as contrasted with one that designates a
3 unique entity”—which “[i]n linguistic terms … means a common noun or noun
4 expression, not a proper noun.”22 The legal concept of “genericness” is not a linguist’s,
5 but it closely approximates the linguist’s “common noun” category; so Dr. Kaplan
6 framed his investigation accordingly. In Yellow Cab Co. v. Yellow Cab Co. of Elk Grove,
7 Inc., the court denied a trademark plaintiff’s motion to exclude a linguist who made use
8 of the same distinction between common and proper nouns in his genericness analysis.23
9 Dr. Kaplan then applied those linguistic principles to “a corpus of 169 naturally
10 occurring discourses from comic con web sites and from news stories, magazines, and
11 blogs about comic cons.”24 Finally, from that application, he drew these conclusions:
12 1. “Comic con” is often plural, unlike proper nouns …
13 2. The clipping “con” for “comic con” occurs frequently with reference to many
different comic cons or to no comic con in particular, ruling out a proper noun
14 source for the clipping.
15 3. Singular common nouns generally require determiners. In contrast, proper
16 nouns cannot occur with determiners, subject to well-defined exceptions.
When “comic con” occurs with “the,” there are three possibilities:
17
i. if it is part of an official name of a specific comic con, “the” is part of that
18 name, and therefore “comic con” is part of a proper noun.
19 ii. “The comic con” is used in a general statement (in linguistics, a “generic”
sentence) with no reference to a specific comic con.
20
iii. “The comic con” contains a common noun being used to refer to a unique
21 and familiar comic con.
22 Uses (ii) and (iii) are common noun uses.
23 4. Several determiners with which “comic con” co-occurs (“a,” “this,” “our,”
24
22
25 See ECF Doc. 114-2 at 127 (using the report’s internal numbering: p. 1, lines 14–16).
23
See Yellow Cab Co. v. Yellow Cab Co. of Elk Grove, Inc., No. S-02-0704, 2006 U.S.
26
Dist. LEXIS 89338 (E.D. Cal. Dec. 11, 2006). The report held admissible in that case is
27 available at 2003 WL 25735247 and submitted as Sears Decl. Ex. A. Using that report’s
internal numbering, the common/proper noun distinction is utilized at pages 10–12.
28 24
See ECF Doc. 114-2 at 129 (internal 3:3–4).
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1 etc.) imply the existence of other things of the same type, that is, other comic
cons. This … is inconsistent with proper noun status for nouns preceded by
2 such determiners, and consistent with common noun status …
3 5. In writing, “comic con” is frequently uncapitalized, unlike proper nouns …
4 6. Most comic conventions use “comic con” as part of the name or title of their
conventions.
5
As a common noun, semantically “comic con” denotes a type, rather than a
6 single unique referent. Therefore it has the status of a generic word.25
7 In his second report, Dr. Kaplan took the same principles and applied them to another
8 “corpus” consisting of additional “discourses” involving SDCC personnel.
9 “Courts have routinely held in trademark actions that such [linguistic] expert
10 testimony provides ‘helpful guidance’ as to how people use a certain term and the ‘roots’
11 of the term.”26 But this Court excluded Dr. Kaplan, entirely.27 So far as DFP is aware,
12 other than this Court’s ruling, only one other opinion from a Ninth Circuit court excluded
13 linguist testimony on genericness;28 on appeal, that was held an abuse of discretion.29
14 a. The Court’s Criticisms of Dr. Kaplan’s Documentary Record Could
15 Not Justify Exclusion
This Court excluded Dr. Kaplan on two grounds. First, it criticized the documentary
16
bases for his opinions:
17
of the 2,300 documents he reviewed, only around 400 pages were materials
18
he found through his own independent research whilst over 1,800 pages of
19 documents were given to him by counsel for Defendants. [Citation.] [¶] The
Court is unable to ignore the fact that the foundation of Mr. Kaplan’s
20
conclusions was generated from a narrow field of documents, most of which
21 were provided to him by Defendants.30
22 The Court never articulated the criterion by which it adjudged 2,300 documents “a
23
25
ECF Doc. 114-2 at 148–49 (internal 22:12–23:24).
24 26
Yellow Cab, 2006 U.S. Dist. LEXIS 89338, at *5 (citing cases).
27
25 See ECF Doc. 260 at 13:23–24.
28
See Solid 21, Inc. v. Hublot of America, 109 F. Supp. 3d 1313, 1320 (C.D. Cal. 2015)
26
(allowing linguist to testify “as to dictionary definitions” but “not as to the ultimate issue
27 of genericness”).
29
Solid 21, Inc. v. Hublot of America, 685 F. App’x 530, 531 (9th Cir. 2017).
28 30
ECF Doc. 260 at 12:21–27.
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1 narrow field.” Excluding Dr. Kaplan on this basis was error because:
2 [T]he reliability of the data itself is not the object of the Daubert inquiry. The
reliability of data and assumptions used in applying a methodology is tested
3
by the adversarial process and determined by the jury; the court’s role is
4 generally limited to assessing the reliability of the methodology—the
framework—of the expert’s analysis.31
5
Moreover this ground, even if valid, would only go to Dr. Kaplan’s ultimate
6
opinions, which make up only a small fraction of his report; this ground would not
7
support excluding his testimony about the principles he used. The Advisory Committee’s
8
Notes on Rule 702 require a different result:
9
Most of the literature assumes that experts testify only in the form of opinions.
10 The assumption is logically unfounded. The rule accordingly recognizes that
11 an expert on the stand may give a dissertation or exposition of scientific or
other principles relevant to the case, leaving the trier of fact to apply them to
12 the facts.
13 Even if Dr. Kaplan’s “field of documents” had been too narrow to sustain the general
14 conclusions he drew about “comic con,” still the Court should have allowed him to give
15 his “dissertation or exposition of … [linguistic] principles relevant to the case,” to help
16 the jury apply those principles to the specific uses of “comic con” made in documents
17 that either were admitted or, as shown in later sections, should have been admitted.
18 This passage from the Court’s order illustrates the distinction:
19
31
Manpower, Inc. v. Insurance Co. of Penn., 732 F.3d 796, 808 (7th Cir. 2013). Criticism
20 of the source of Dr. Kaplan’s materials is also misplaced because FEDERAL RULE OF
21 EVIDENCE (“Rule”) 703 allows an expert to “base an opinion on facts or data in the case
that the expert has been made aware of or personally observed [italics added].” The rule
22 “contemplates that experts will rely upon information provided to them by others, and
23 nothing in the Federal Rules requires an expert witness to ‘independently assess or
verify’ the data provided by counsel.” Khadera v. ABM Industries Inc., No. C08-0417,
24 2011 WL 6813454, at *3 (W.D. Wash Dec. 28, 2011). Any complaint that he relied on
25 “counsel, a non-neutral source, to provide [him] with ‘relevant’ materials” is “more
appropriately directed at the weight, rather than the admissibility, of this expert.” See
26
Butler v. Home Depot, Inc., 984 F. Supp. 1257, 1260–61 (N.D. Cal. 1997); see also
27 Coleman v. Wilson, 912 F. Supp. 1282, 1303 (E.D. Cal. 1995) (where “declarations …
are based on medical files ‘pre-selected’ by plaintiffs’ counsel,” “[d]efendants’
28
deprecation of the sources relied on … fares no better”).
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1 within his report, Mr. Kaplan states that “[i]n the materials reviewed, there is
only one occurrence of ‘comic con’ capitalized … with a lower case initial ‘c’
2 on ‘comic’ and an upper case initial ‘c’ on ‘Con ….’” [Citation.] However,
3 the Court is unpersuaded that this conclusion could be reliably drawn from
the constricted and somewhat biased world view that Mr. Kaplan basis his
4 opinion on.32
5 The Court’s critique would only go to a global statement about capitalization, which the
6 quoted opinion is not. Dr. Kaplan’s actual statement, that in the materials he reviewed
7 “there is only one occurrence of ‘comic con’ capitalized,” is immune from the Court’s
8 critique because whether he reviewed enough material has nothing to do with whether he
9 has accurately characterized the materials he did review.33
10 b. Dr. Kaplan Did Explain his Methodology, Which Is Sound
11 The Court’s second stated reason for excluding Dr. Kaplan is: “Mr. Kaplan’s
12 opinion lacks an explanation as to what methodology he uses, why he chose to employ
13 the factors he did, or whether the linguistic tests and principles he employed have been
14 used by others to determine genericness.”34 “When a district court excludes an expert’s
15 testimony, it ‘must provide more than just conclusory statements about admissibility to
16 show that it properly performed it gatekeeping function.’”35 Here, the Court did not
17 support its conclusion with any analysis of Dr. Kaplan’s reports; that is an abuse of
18 discretion.36 Moreover, the Court’s conclusory critique simply cannot be reconciled with
19 Dr. Kaplan’s actual reports, which are replete with explanation and justification.37
20 32
ECF Doc. 260 at 13:1–5.
33
21 The same holds true of Dr. Kaplan’s numbered opinions 1–5, quoted above—which
make no global pronouncements about how “comic con” is used and are instead limited
22 to observations about how it is often or frequently or sometimes used, which is amply
23 supported by the thousands of pages of uses that he did examine.
34
ECF Doc. 260 at 13:15–18.
24 35
Schultz v. Akzo Novel Paints, LLC, 721 F.3d 426, 431-32 (7th Cir. 2013) (quoting Ortiz
25 v. City of Chicago, 656 F.3d 523, 536 (7th Cir. 2011).
36
See Metabolife Int’l, Inc. v. Wornick, 264 F.3d 832, 845 (9th Cir. 2001) (“the district
26
court abused its discretion in its summary decision that the risk assessments were not
27 adequately explained”; “the wholly conclusory grounds for exclusion listed by the district
court constitute an abuse of discretion”).
28 37
Dr. Kaplan justifies his use of the linguistic markers of common nouns to test for
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1 Nor is there is anything idiosyncratic about Dr. Kaplan’s methodology. The court-
2 approved linguist’s report in Yellow Cab, for example, considers ubiquity of third-party
3 use, capitalization patterns, and the use of plural forms 38—just like Dr. Kaplan does.39
4 And the Ninth Circuit has drawn attention to the use of determiners (such as the
5 indefinite article “a”) as an indicator of genericness in Elliott v. Google, Inc.;40 this is
6 another linguistic principle that Dr. Kaplan explains and applies.41
7 The notion that Dr. Kaplan failed to explain or justify his methodology, or that his
8 methodology is idiosyncratic or otherwise suspect, is without foundation and cannot
9 justify this Court’s exclusion of his testimony. Therefore genericness should be retried.
10 3. Extensive Media Evidence Was Improperly Excluded
11 “[U]sage of a particular term in the popular press [is] strong evidence of how the
12 public perceives that term”42 for two reasons. First, the media reflects popular usage:
13 “The media is often considered to have its finger on the pulse of the general public, and
14 its use of a particular term will likely conform to the public’s understanding of that
15 term.”43 Second, the media shapes popular usage: “The press also has the ability to shape
16 public interpretation. If consumers repeatedly encounter a term used generically in the
17
18 genericness at ECF Doc. 114-2 at 127–30 (internal numbered page 1, lines 12–16; 1:24–
19 2:19; 3:14–16; 4:7–18). Dr. Kaplan then explains the relevant linguistic principles at ECF
Doc. 114-2 at 129–46 (internal 3:17–6:16, 7:17–8:2, 11:6–13, 12:3–13:2, 14:6–15:7,
20 16:7–9, 17:23–18:2, 20:14–26). And then Dr. Kaplan further elucidates those principles
21 by applying and commenting on their application to specific uses of “comic con” at ECF
Doc. 114-2 at 129–46 (internal 6:17–7:14. 8:3–10:22, 11:16–12:2, 13:3–14:4, 15:9–16:6,
22 16:11–17:13, 18:10–16, 19:1–20:11).
38
23 See Sears decl. Ex. A at 7–11, 16–17.
39
See ECF Doc. 114-2 at 132–48 (internal 6:9–7:11, 17:21–22:5).
24 40
See Elliott v. Google, Inc., 860 F.3d 1151, 1162 (9th Cir. 2017) (“Because not a single
25 competitor calls its search engine ‘a google’ … Elliott has not shown that there is no
available substitute for the word ‘google’ as a generic term.”).
26 41
See ECF Doc. 114-2 at 137–43 (internal 11:5–17:19).
42
27 Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1189 (C.D. Cal.
2007).
28 43
Classic Foods, 468 F. Supp. 2d at 1189.
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1 media, they will be much more likely to use the term generically themselves.”44 DFP
2 came to trial with lots of evidence of lots of generic media uses. But the Court excluded
3 some of the best media evidence and it diminished the rest by excluding everything but
4 headlines—as the Court and SDCC’s counsel both recognized during oral argument on
5 directed verdict motions. First, SDCC’s counsel complained: “all defendants really did at
6 trial was parade a bunch of titles of newspaper articles, for the proposition that the author
7 was using the term comic con in a generic sense.”45 The Court then responded, in part:
8 [D]efendants offered the slew of media coverage in the titles, which we
allowed in evidence, to show how the media sees or uses the term. We never
9
got into the content of the articles. We spent a lot of time keeping that out so
10 you could infer that that is how they view it. You can infer a lot of things.
11 But you mentioned something about that is what they intended to
communicate. And I don’t know that we know that for a fact, because I kept
12 all the content of the articles out.46
13 By limiting DFP to headlines, the Court left open to inference what the content would
14 have made plain: that the media usage was generic.
15 The Court kept out both generic uses appearing in the bodies of media articles—e.g.,
16 uses of the plural phrase “comic cons,”47 uses with indefinite articles (“a common con”)
17 and other linguistic determiners,48 and other generic constructions49—and also several
18 express definitions. For example, an article from The Denver Post characterized “comic
19
44
Classic Foods, 468 F. Supp. 2d at 1189.
20 45
See Dec. 7, 2017 Tr. at 102:19–22.
46
21 Dec. 7, 2017 Tr. at 103:8–16.
47
E.g., “‘These comic cons are really special events …,’ Shatner told The Denver Post
22 …” was redacted from Trial Exhibit 779 (see ECF Doc. 222 at 2313), “comic-cons in
23 other areas of Michigan and throughout the country” was redacted from Trial Exhibit 782
(see ECF Doc. 222 at 2323), and “Comic Cons popping up around the state” was
24 redacted from Trial Exhibit 1365 (Sears decl. Ex. B at 44).
48
25 E.g., “the second-biggest opening ever for a Comic Con, behind New York’s 32,000”
was redacted from Trial Exhibit 778 (see ECF Doc. 222 at 2311), “their own Comic Con”
26
was redacted from Trial Exhibit 1365, and “any Comic Con” was redacted from Trial
27 Exhibit 1369 (Sears decl. Ex. B at 63).
49
E.g., “the most comic-con-like comic-con” was redacted from Trial Exhibit 832 (see
28
ECF Doc. 223 at 161). .
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1 cons” as “shorthand for comic-book conventions”;50 an article from the Herald and News
2 posed the question “What is a Comic Con?” and answered, “It’s an event dedicated to
3 creating awareness and appreciation of comics and related popular art forms.”51 An
4 express definition does nothing more than explicitly state what usage implicitly shows.
5 Therefore, the same media competence to reflect and inform popular understanding of
6 terminology that makes media usage relevant and admissible to genericness also makes
7 express definitions given in the media relevant and admissible for the same purpose.
8 Media articles the Court should have admitted with no (or fewer) content redactions
9 are collected in Sears decl. Ex. B; additional media articles the Court’s rulings kept out
10 entirely are collected in Sears decl. Ex. C.52 Genericness should be retried with all the
11 media evidence of genericness, not just some of the headlines—this time with a linguist
12 to help the jury understand what it is about the media uses that makes them generic.
13 4. DFP Should Have Been Allowed to Show Genericness Ab Initio
14 “The crucial date for the determination of genericness is the date on which the
15 alleged infringer entered the market with the disputed mark or term.”53 If a term is
16 generic as of or “at any time prior” to that crucial date then “it is not a valid, protectable
17 mark.”54 Here, the crucial date is 2013, when DFP started using “Salt Lake Comic
18 Con.”55 Therefore any evidence tending to show genericness in or before 2013 is relevant
19
50
Trial Exhibit 782 (ECF Doc. 222 at 2323).
20 51
Sears decl. Ex. B at 73; Sears decl. Ex. C at 92 (“Con: shorthand for convention; when
21 used in this shorthand, it is implied that the convention is focused on Sci-Fi, Fantasy,
Comics, Gaming, Anime, etc.”). See also ECF Doc. 222 at 2266 (“its very own comic
22 book convention, or comic con”); ECF Doc. 231 at 25 (“the comic con … has morphed
23 steadily from scattered niche event for comic-book lovers to broad pop-culture fests”).
52
This second set consists of documents kept out of evidence due to sustained objections
24 and also exhibits that were not even offered because their admission was foreclosed by
25 the Court’s rulings on other exhibits that were offered.
53
Yellow Cab Co. of Sac. v. Yellow Cab of Elk Grove, 419 F.3d 925, 928 (9th Cir. 2005).
26 54
See Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1188 n. 10
27 (C.D. Cal. 2007).
55
See Dec. 6, 2017 p.m. Session Tr. at 67:18–22 (“Q. … [Y]ou had decided to name your
28
convention Salt Lake Comic Con in March or April of 2013; right? A. Yes.”).
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1 under Rule 401 and, thus, presumptively relevant under Rule 402. But instead of allowing
2 DFP to present all its evidence of genericness in or before 2013, the Court limited DFP to
3 evidence of what happened after August 1, 1970—which SDCC claims is its date of first
4 use, in its certificate of registration for the word mark COMIC-CON.56
5 The Court’s treatment of pre-1970 usage has been consistent but its explanations
6 have varied. On summary judgment, the Court ruled that such usage is irrelevant because
7 genericness ab initio57 is not a defense under Ninth Circuit precedent at all;58 during trial,
8 the Court seemed to shift to the narrower theory that genericness ab initio is no defense to
9 an incontestable registration.59 On summary judgment, the Court held that DFP’s
10 evidence of genericness ab initio, even if considered, “would have failed to establish the
11 absence of a genuine issue of material fact as to … generic ab initio”60—i.e., that the
12 evidence submitted was insufficient to entitle DFP to summary judgment; in its Pretrial
13 Order, the Court said: “the issue of ‘Comic Con’ being generic before its first use by
14 plaintiff … failed to establish a triable issue of fact”61—i.e., that the evidence was so
15 weak that SDCC was entitled to summary judgment. Finally, on motions in limine, the
16 Court questioned the evidentiary foundations of DFP’s pre-1970 evidence62 and
17 ultimately seemed to rest its exclusion on Rule 403 grounds: “the whole business of the
18
56
19 See ECF Doc. 1-1 at 3.
57
See BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1569–70 (Fed. Cir. 1995)
20 (“A descriptive term may be generic for a designation ab initio or it may become generic
21 over time through common usage …”).
58
See ECF Doc. 260 at 16:25–26.
22 59
See Nov. 30, 2017 a.m. Session Tr. at 85:25–86:6 (“To what point, that this is generic
23 ab initio, again[?] You’re not going to go there. … They have an incontestable mark. …
We’re not getting into genericness except in the concept of genericide moving
24 forward.”); Dec. 7, 2017 Tr. at 108:23–24 (“They have to prove genericide because you
25 have the incontestable nature …”).
60
See ECF Doc. 260 at 18:13–15.
26 61
See ECF Doc. 261 at 11:2–3.
62
27 See Nov. 14, 2017 Tr. at 35:1–4 (“it’s not going to get allowed unless we have
somebody with personal knowledge as to the methodology in collecting this, or the
28
author or the spokesperson”).
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1 several events in the ’60s, people’s comments about them … and so forth, is likely to
2 cause confusion on the issues, take up undue time and has little relevance.”63
3 Below, DFP first shows that genericness ab initio is an available defense under
4 Ninth Circuit law, even to an incontestable registration. DFP then shows the evidence is
5 sufficient to support a verdict of genericness ab initio. Finally, DFP addresses the Court’s
6 comments about evidentiary foundations.
7 a. Genericness Ab Initio Is a Defense to SDCC’s Registrations
8 On summary judgment, the Court ruled that “the Ninth Circuit has not recognized a
9 genericness ab initio theory of defense.”64 But the Ninth Circuit has categorically held:
10 “[a] ‘generic’ term … cannot become a trademark under any circumstances.”65
11 Genericness ab initio is just a particular application of that broader principle: a term that
12 is already generic before someone tries adopting it as a mark—i.e., that is generic ab
13 initio—“cannot become a trademark under any circumstances.” Therefore, by embracing
14 the rule that “[a] ‘generic’ term … cannot become a trademark under any circumstances,”
15 the Ninth Circuit has “recognized a genericness ab initio theory of defense.”
16 This Court also took issue with the Ninth Circuit’s rule that no generic term can be
17 trademarked: “you guys have this opinion that no generic terms can ever be trademarked.
18 You’re wrong.”66 But this Court later suggested some confusion between the technical,
19 legal concept of “genericness” with an irrelevant, nontechnical concept:
20 The Court took issue with the defense on this point at the Pre Trial
Conference. The argument may be semantic, on what the defense and the
21 Court meant by “generic,” respectively. The Court referring to words in the
22 general lexicon and the defense, it appears using the legal connotation. The
court’s intent was to point out that common terms can be put together and be
23 trademarked.67
24
63
25 See Nov. 14, 2017 Tr. at 36:24–37:2.
64
See ECF Doc. 260 at 16:25–26.
26 65
See Surgicenters of Am., Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1014
27 (9th Cir. 1979).
66
See Sept. 21, 2017 Tr. at 17:16–17.
28 67
See ECF Doc. 261 at 10:9–12, 10:24–11:1.
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1 “Generic,” in its legal connotation, does not mean “in the general lexicon.” Membership
2 in the general lexicon can be ascertained and attributed to words and phrases without
3 regard to context. Genericness, on the other hand, is not really a feature of words or
4 phrases at all; instead genericness, in its legal connotation, expresses the relationship of a
5 term to a particular type of goods or services. If the term’s “primary significance … to
6 the relevant public” is to name that “particular type of good or service irrespective of its
7 source” then the term is generic as to those goods or services.68 Whether or not a term is
8 common or part of the general lexicon is beside the point.
9 Finally, at some point during trial, the Court seemed to conclude that genericness ab
10 initio is not an available defense because “[t]hey”—i.e., SDCC—“have an incontestable
11 mark.”69 But by statute, “no incontestable right shall be acquired in a mark which is the
12 generic name for the goods or services or a portion thereof, for which it is registered.” 70 If
13 “comic con” was generic ab initio then SDCC’s registration was not really incontestable.
14 There was no legal impediment to the introduction of pre-1970 use to show that
15 “comic con” was generic ab initio; and the Court erred by ruling otherwise.
16 b. DFP Had Enough Admissible Evidence to Prove Genericness Ab Initio
17 DFP would have proven genericness ab initio by showing the origins of comic cons
18 and the term “comic con” within the broader context of emerging “comic fandom”:
19  Comic fandom began to emerge as a self-aware social phenomenon in the early
20 1960s—as an offshoot of science fiction fandom, which dates back to the 1930s.
21  Several elements of science fiction fandom culture carried over into comic
22 fandom. For example, science fiction fans began producing fanzines, or amateur
23 publications about their genre, in the mid-1930s. By 1961, comic fans had begun
24
68
25 See Elliott v. Google, Inc., 860 F.3d 1151, 1156 (9th Cir. 2017).
69
See Nov. 30, 2017 a.m. Session Tr. at 85:25–86:3; see also Dec, 5. 2017 Tr. at 51:17–
26
18 (refusing to give once-generic-always-generic instruction “because you have the
27 incontestability issue”); Dec. 7, 2017 Tr. at 108:23–24 (“They have to prove genericide
because you have the incontestable nature …”).
28 70
15 U.S.C. § 1065(4).
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1 to produce fanzines, too. As they had among science fiction fans, these fanzines
2 helped bring the community of comic fans into being by introducing fans to each
3 other and by serving as channels and instruments of communication and
4 organization. Among the most prominent of these early comic fanzines were
5 Alter Ego, The Comicollector, Dateline: Comicdom, and The Comic Reader.
6  Comic cons and the term “comic con” also tie back to science fiction fandom. In
7 the 1930s, science fiction fans began holding conventions and “con” came into
8 use as among them as a clipping for “convention,” especially a convention of
9 fans. By 1963, “con” was also in use among comic fans, both standalone and as
10 part of the composite “comic con,” as a generic term for a comics convention.
11  The first “real” comic con was the 1964 New York Comicon, which continued as
12 the leading comic con in the United States through at least 1973.
13 Much of that story can be told through SDCC’s own publications. SDCC’s Comic-
14 Con: 40 Years of Artists, Writers, Fans & Friends (2009) gives the broad outlines:
15 Although San Diego Comic-Con has become the largest gathering of
comics fans in the country, it wasn’t the first. In the early 1960s, comics
16
fandom started to bubble to the surface. …
17 The idea of fans getting together to share their interests wasn’t new;
18 science fiction fan conventions started in the late 1930s. Worldcon, the best
known of the science fiction conventions, dates back to l939. The first real
19 comics presence at a convention was at the 1960 Worldcon in Los Angeles …
20 In July of 1964, in New York City, Bernie Bubnis organized the New York
21 Comicon. … “the 1964 New York Comicon has traditionally been considered
the first real comicon …” …
22
The year 1965 saw the creation of the Detroit Triple Fan Fair, which was
23 co-chaired by Shel Dorf …—a precursor to the same concept in San Diego
24 five years later. In New York City, the Comicon continued …71
25 Other SDCC publications elaborate on the origin of comic cons and “comic con.”
26 SDCC’s Comic-Con Souvenir Book #40 (2009) explains: “the expression ‘Comic-Con’
27 wasn’t in anyone’s vocabulary until that summer [i.e., the summer of 1964], when Bernie
28 71
See Sears decl. Ex. C at 85–86.
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1 Bubnis coined the term in staging New York City’s first comics convention.”72 SDCC’s
2 San Diego Comic-Con: 1973 souvenir book reports “the general feeling … that we’re #2,
3 following close on the heels of the New York comic con”—implying that the convention
4 that began in New York in 1964 was still going strong, as of 1973.73
5 SDCC’s publications also establish the place of fanzines within comic fandom.
6 SDCC’s Comic-Con Annual: 2011 Edition explains:
7 … 50 years have passed since comics fandom as we know it began to
coalesce into a recognizable phenomenon[.] …
8
… [A] new amateur magazine Alter Ego … was published at the end of
9 March 1961. … Jerry G. Bails and Roy Thomas … teamed up to produce a
10 magazine to spread their enthusiasm and generate support … Julie Schwartz
(who came from science fiction fandom himself) … told Jerry that such
11 amateur publications were called “fanzines” …
12 … SF [i.e., Science Fiction] fans had been publishing their fanzines since
13 the mid-1930s …
14 [G.B.] Love didn’t let his cerebral palsy stop him from publishing a club
newsletter called The Rocket’s Blast before the year’s end. From that tiny
15 acorn, a gigantic fanzine grew: The Rocket’s Blast-Comicollector … the
16 premiere advertising fanzine of the ’60s.74
17
72
See id. at 86.
18 73
See Sears decl. Ex. C at 122–23. At trial, DFP tried using this publication for the more
19 limited purpose of establishing that there was a “New York comic con” in 1972 and
1973, but the Court would not allow DFP to use this document for that purpose either.
20 74
See Sears decl. Ex. C at 114–116; see also Sears decl. Ex. C at 124–25 (“[Jerry] Bails,
21 working with friends like Roy Thomas, Don and Maggie Thompson, and Shel Dorf …
helped establish the early comic-book fandom with the first fanzines and conventions.
22 Bails and Thomas published Alter Ego, a now-famous fanzine. The first conventions
23 were held in Chicago, New York and Detroit in 1964.”); Sears decl. Ex. C at 131–33
(Articles entitled “The Age of the Fanzine” and “The Birth of Comics Fandom”
24 characterize “the sixties” as “probably the golden age” of “comics fanzines”; “Comics
25 fandom had a long gestation period. Various forms of comics had appeared in preceding
eras; comic books had flourished in the forties. … But comic fandom’s birth identifiably
26
occurred in 1960. At the World SF Convention … in 1960, Dick and Pat Lupoff
27 distributed an SF fanzine with a section devoted to Captain Marvel. At the same
convention, we discussed … the need to create a fandom for followers of comics and
28
agreed to get one started—among SF fans. … [B]y the next Labor Day weekend, comics
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1 Another book, not authored by SDCC, lists “Alter-Ego, … The Comicollector, The Comic
2 Reader, Dateline: Comicdom, … [and] The Rockets Blast and The Comicollector” among
3 “the most prominent fanzines of the day [i.e., the early 1960s].”75
4 SDCC’s publications establish fanzines as the focal point around which the relevant
5 public of comic fandom first coalesced. These publications were not peripheral. Indeed,
6 given how small the convention-going public was in the early years (SDCC’s first event,
7 held a decade after the fanzines started, drew only 300 people76), fanzine producers and
8 subscribers could be characterized as the relevant public of the 1960s. Those fanzines, in
9 turn, show that “comic con” was already in circulation within comic fandom as a generic
10 term before SDCC came along. The March–April 1963 issue of The Comicollector—
11 which reports a circulation of over 600 on its cover, and includes letters from subscribers
12 or fans in ten states.77 In this issue, the then-Secretary of the Academy of Comic Books
13 Arts reports on his cross-country Greyhound Bus trip to visit other comic fans; the trip is
14 called the “Traveling Comicon.” The report includes the following uses of “comicon”: “I
15 reluctantly left the White’s [in Columbia, Missouri], yet we were already planning the
16 next get-together, possibly at some form of Comicon in the immediate area”; and then
17 later, reflecting on a visit with another fan in Indianapolis, Indiana, “I’m quite sure a
18 comicon is inevitable.”78 Those are generic uses of “comicon” to refer generally to a type
19 of event, a gathering of comic fans, rather than to any particular event or its source.
20 Several other early fanzines use forms of “comic con” in articles about what was to
21 become the 1964 New York Comicon:
22  The Comic Reader # 21 (November 1963)—the official newsletter of the
23
fans across America were in touch with each other. The sixties, then, brought the infancy
24 and childhood of comics fandom.”).
75
25 See ECF Doc. 226 at 217–218; see also See Sears decl. Ex. C at 117–18 (describing
The Comic Reader as “the first mass-circulation fanzine devoted to comics news”).
26 76
See Nov. 28, 2017 p.m. Session at 17:21.
77
27 California, Connecticut, Indiana, Maryland, New Jersey, New York, North Carolina,
Ohio, Pennsylvania, and Texas. See ECF Doc. 226 at 190.
28 78
See ECF Doc. 226 at 191–92.
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1 Academy of Comic-Book Fans & Collectors, with chartered members in 23

2 states,79 published and distributed out of Michigan by Jerry Bails—includes a
3 column titled “N.Y. COMIC CON-mittee REPORT” that relates: “Fans in the
4 New York area met recently to discuss plans for an International Comicon in
5 conjunction with the 1964 N.Y. World’s Fair. … Do you have any suggestions
6 which you feel could make this first Comicon a success?”80
7  Issue no. 5 of Dateline: Comicdom (December 1963) reports, under the headline
8 “To Be or Not To Be—The Comicon”: “There’s a Comicon-mittee meeting …
9 tomorrow. … Most of the
10 committee … just sit around and
11 trade … not much is done about a
12 Con. [¶] Went to that Comicon-
13 mittee meeting today … We didn’t
14 get much done.”81 Issue no. 6
15 (January 1964) reported, under the
16 headline “Comicon,” “the Comicon
17 committee is not getting anywhere”
18 and suggested “a special Comicon
19 Bulletin, carrying details on
20 response, intentions, progress.”82
21 Those uses were in contemplation of a
22 specific comic con, but are generic in form.
23
24 79
Arizona, California, Colorado, Connecticut, Florida, Georgia, Illinois, Indiana, Iowa,
25 Maryland, Massachusetts, Michigan, Minnesota, Missouri, Nebraska, New Jersey, New
Mexico, New York, Ohio, Oklahoma, Pennsylvania, Texas, and Vermont. See ECF Doc.
26
226 at 187–88.
80
27 See ECF Doc. 226 at 187–88.
81
See ECF Doc. 226 at 243.
28 82
See ECF Doc. 226 at 245.
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1 It appears that after its first several years, in 1968 the New York Comicon may have
2 changed its name from “New York Comicon” to “New York Comic Arts Convention.”83
3 But despite the name change, Alter Ego continued referring to it as “a comicon,” as
4 shown in the retrospective collage reproduced on the previous page.84 Continued use of
5 “comicon” to refer to a convention that had dropped “comicon” from its name reinforces
6 that “comicon” indicated a type of event, not a specific event.
7 Aside from fanzines and SDCC’s own publications, DFP’s pre-1970 usage evidence
8 includes two more publications. First, the August 21, 1965 issue of The New Yorker
9 reports, under the heading “ComiCon”:
10 [C]ollectors of old comic books held a convention … The collectors … banded
together in 1963 in the Academy of Comic-Book Fans and Collectors, and it
11
was this organization that sponsored the convention, officially known as the
12 second annual ComiCon, or Con. (Collectors have a language of their own …).
13 The article later reports, “the Con chairman … told us that this was the first full-fledged
14 national ComiCon.”85 Note how the terms “ComiCon” and “Con” elicit reference to the
15 idiosyncratic language of comic collectors.
16 Finally, DFP offered this Oxford English Dictionary definition of “con”:
17 Esp. among enthusiasts of science fiction and role-playing games: a
convention, an organized gathering of people with a shared interest. Freq. as
18 the final element in the names of such events.
19 That definition is accompanied by several illustrations of use, the earliest of which is:
20 1940 Astonishing Stories Oct. 108/2 If you get this issue the day it appears
21 on your newsstands, you will have just about enough time left to make
arrangements to attend the Chicon. (‘Chicon’: Fan argot for ‘Chicago Science
22 Fiction Convention of 1940’.)
23 This solidifies what the sources quoted above teach about the source and meaning of the
24 element “con,” specifically.
25 Collectively, DFP had more than enough evidence to sustain a jury finding that
26
83
27 See Sears decl. Ex. C at 84–86; ECF 231 at 7.
84
See ECF 231 at 9.
28 85
See ECF Doc. No. 222 at 2425.
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1 before SDCC began using “comic con” in the names of its conventions, the relevant
2 public of comics fans already understood that “comic con” refers to a type of event—a
3 convention of comics fans—rather than any particular event. Moreover the evidence of
4 pre-1970 usage would not have stood alone. For example, had the whole truth been told,
5 DFP would have co-opted SDCC’s own naming history as corroborating evidence of
6 genericness ab initio: SDCC had to call its event “San Diego Comic-Con” instead of just
7 “comic con” because given the historical and commercial context, “comic con” standing
8 alone could only tell the relevant public of comics fans what the event was—a comics
9 convention—not whose or which comics convention. Excluding evidence of pre-1970
10 usage due to its supposed insufficiency to show genericness ab initio was error.
11 c. DFP’s Evidence Had Sound Evidentiary Foundations
12 As more fully explained above, DFP’s evidence consists primarily of (1) SDCC
13 publications, (2) 1960s fanzines, (3) a 1965 article from The New Yorker, and (4) an entry
14 in the Oxford English Dictionary. On motions in limine, the Court said that evidence
15 could not be admitted without “somebody with personal knowledge as to the
16 methodology in collecting this, or the author or the spokesperson.”86 Neither requirement
17 could be applied to SDCC’s own publications, which are admissions by a party opponent;
18 or to the dictionary, which is subject to judicial notice.87 Presumably the Court had in
19 mind the 1960s fanzines and The New Yorker. Those publications were authenticated and
20 excepted from the hearsay rule88 by the ancient documents provisions of Rules 803(16)
21 and 901(8)—and DFP submitted declarations and offered testimony from the people who
22 obtained the documents, to demonstrate satisfaction of the requirements for admission
23 under those provisions.89 To the extent the Court meant to require more, by insisting on
24
86
25 See Nov. 14, 2017 Tr. at 35:1–4.
87
See ECF Doc. 260 at 5:24.
26 88
During oral argument, the Court suggested the ancient character of the documents goes
27 only to authenticity; but under Rule 803(13), it also removes them from the hearsay rule.
Moreover DFP’s uses of the ancient documents are, for the most part, not hearsay uses.
28 89
See ECF Docs. 229, 231
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1 “somebody with personal knowledge as to the methodology in collecting this,” it erred.

2 The Court also stated that “the whole business of the several events in the ’60s,
3 people’s comments about them in periodicals and so forth, is likely to cause confusion on
4 the issues, take up undue time and has little relevance.”90 Because genericness ab initio
5 would have been a complete defense, this evidence has more than “little relevance”; and
6 no confusion was ever identified. As for “undue time,” the Court refused even DFP’s
7 request to “on cross, just elicit that one question and answer: So did you coin the term?
8 No.”91—which would have taken virtually no time at all. The Rule 403 ruling cannot be
9 maintained, once the relevance of the excluded evidence is acknowledged.
10 Finally, on summary judgment the Court disregarded DFP’s dictionary definition
11 because “the OED states that the definition of ‘con’ is a ‘new entry’ from … September
12 of 2002” and “[t]hus, it has no relevance to establishing an understanding of the term
13 Comic-Con pre-1970”;92 during trial, the Court denied judicial notice altogether because
14 “we are parsing the mark or dissecting the mark.”93 But the Ninth Circuit expressly
15 approves the use of dictionary definitions of “component parts of the mark.”94 And even
16 though the dictionary entry is dated 2002, it reports usage extending back to the 1930s.
17 Genericness should be retried because DFP had a solid evidentiary foundation for
18 pre-1970s usage that could have established a complete defense of genericness ab initio.
19 5. SDCC Promoted a False and Legally Flawed Narrative Because Pre-1970
Usage Was Excluded and Requested Instructions Were Not Given
20
Evidence of pre-1970 usage was also admissible to counteract the false and legally
21
flawed anti-genericness narrative advanced by SDCC. SDCC did not simply deny
22
genericness: it told a counter-narrative to persuade the jury that “comic con” is not
23
generic. Specifically, SDCC carefully cultivated the fiction that it had been the first to put
24
25
90
See Nov. 14, 2017 Tr. at 36:24–37:2.
26 91
See Nov. 14, 2017 Tr. at 37:18–19, 38:4–10.
92
27 See ECF Doc. 260 at 17:19–21.
93
See Addendum Transcript of Excerpts During Trial at 113:23.
28 94
See Advertise.com, Inc. v. AOL Advertising, Inc., 616 F.3d 974, 977–98 (9th Cir. 2010).
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1 on a comic con and to use “comic con,” at a time when no one knew what a comic con
2 was or what “comic con” meant; and that SDCC then gave “comic con” meaning through
3 decades of investment and effort by San Diego. This narrative was so central to SDCC’s
4 case that SDCC’s counsel launched her closing argument by invoking it:
5 Mr. Glanzer, Ms. Desmond, Mr. Rogers, and thousands upon thousands of
employees and volunteers, spanning four decades, have invested their time,
6
their talent, their hearts, and their souls building a brand that even 25 years
7 ago people knew relatively nothing about: comic-con.
8 You heard Ms. Desmond say people thought comic-con was a convention of
stand-up comedians.
9
DFP’s pre-1970 evidence shows that comic cons and “comic con” were already
10
known among the relevant public, when SDCC started. Viewed against that backdrop, all
11
SDCC’s evidence establishes is that the relevant public got bigger, perhaps in part
12
through SDCC’s efforts. But it does not show what SDCC used it to persuade the jury of:
13
that SDCC’s activities first gave “comic con” meaning among the relevant public.
14
DFP was further hamstrung in trying to meet SDCC’s anti-genericness narrative
15
because two requested instructions were not given: that a term cannot be rescued from
16
genericness and that SDCC did not coin “comic con.”95 The first is an accurate statement
17
of the law and both are rooted in the evidence.96 The Court did not give the instructions
18
because SDCC had not expressly claimed that it coined “comic con.” But SDCC told the
19
jury, “Comic con began in 1970”;97 DFP was forbidden to say others had used “comic
20
con” before; what conclusion could the jury draw from the evidence it was given, other
21
than that SDCC coined “comic con”? And clearly coinage could have made a difference.
22
Otherwise SDCC would not have fought so hard to keep the truth from the jury.
23
Had the Court instructed the jury as DFP asked, and allowed DFP to present it
24
25
95
See ECF Doc. 355 at 12; Dec. 5, 2017 Tr. at 48:25–52:4, 110:10–111:17.
26 96
See Jones v. Williams, 297 F.3d 930, 934 (9th Cir. 2002) (“A party is entitled to an
27 instruction about his or her theory of the case if it is supported by law and has foundation
in the evidence.”)
28 97
Nov. 28, 2017 p.m. Session Tr. at 17:15.
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1 evidence of pre-1970 usage, DFP would have had an even stronger answer to SDCC’s
2 anti-genericness narrative. Without that evidence and those instructions, SDCC was able
3 to tell the jury a false narrative in which SDCC did the legally impossible: take a generic
4 term from the linguistic commons and make it a trademark.98
5 6. The Jury’s Validity Verdict Is Against the Weight of the Evidence
6 The jury’s verdict should not be allowed to stand against evidence of use by more
7 than 140 competitors and in dozens of media headlines.99 Courts routinely find
8 genericness where third-party use is far less extensive and DFP has found no case in
9 which a mark so widely used by others was found to be not generic.100 As for media,
10 DFP’s headlines came from independent news outlets around the country; SDCC
11 presented only media from sources it has commercial relations with, who “do not reflect
12 the views of the purchasing public.”101 Therefore genericness should be retried.
13
98
Similarly, SDCC was allowed to twist Mr. Brandenburg’s testimony because DFP’s
14 witnesses and counsel were prevented from using the term “generic brand.” In her
15 closing, SDCC’s counsel told the jury that Mr. Brandenburg had admitted “comic con” is
not generic because when asked “comic con is a brand; true?” he responded, “Comic con
16 is a brand, yes.” See Dec. 6, 2017 p.m. Session Tr. at 91:23–25; Dec. 7, 2017 Tr. at 75:1–
17 2. But as Mr. Brandenburg used “brand,” “generic brand” is not an oxymoron. That fact,
which is essential to any fair or proper interpretation of Mr. Brandenburg’s testimony,
18 was improperly kept from the jury. See Nov. 28, 2017 p.m. Session Tr. at 35:21–36:5;
19 Dec. 1, 2017 p.m. Session Tr. at 61:1–62:4.
99
See Trial Exhibits 1351, 1364, 1365, 1367-1373.
20 100
See, e.g., Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir.2006) (mark
21 used by four other competitors was generic); CG Roxanne, 569 F. Supp. 2d at 1028
(proof that “at least 70 competitors use the phrase” “strongly suggests that the mark is
22 generic, especially when compared to Schwan’s evidence of four competitors …”);
23 Classic Foods, 468 F. Supp. 2d at 1191 (genericness based, inter alia, on usage by “at
least fifteen companies, including the parties [italics in original]”).
24 101
See Krav Maga Ass’n of Am., Inc. v. Yanilov, 464 F. Supp. 2d 981, 988 (C.D. Cal.
25 2006) (“declarations are from … former students, a licensee … and an advertising
director of a publication that KMAA advertises in” “are insufficient to raise a genuine
26
issue as to … genericness” because “[a]ttestations from persons in close association and
27 intimate contact with the trademark plaintiffs business do not reflect the views of the
purchasing public”); see also Self-Realization Fellowship Church v. Ananda Church of
28
Self-Realization, 59 F.3d 902, 910 (9th Cir.1995) (“Trademark law is skeptical of the
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1 IV. INFRINGEMENT SHOULD BE RETRIED

2 If validity is retried then so, too, should infringement be retried because, as the Court
3 pointed out, SDCC’s three separate marks were “presented jointly, in a sense, …
4 discussed and compared to the defendants’ usage in various documents and whatever,
5 throughout testimony.”102 In that joint presentation, “COMIC-CON is the real ballgame”
6 and all three marks were “kind of all in the same basket in the jury’s mind … as they look
7 to see does this logo infringe these two words.”103 So to re-open the door on the validity
8 of COMIC-CON is to re-open the door on infringement (and validity104) of all three
9 marks, and infringement too should be retried.
10 V. CONCLUSION
11 Infringement and validity should be retried to rectify instructional error, and because
12 evidence was improperly excluded and the verdict is against the weight of the evidence.
13 DATED: January 16, 2018 MASCHOFF BRENNAN LAYCOCK
14
16
17
18 ability of an associate of a trademark holder to transcend personal biases to give an
19 impartial account of the value of the holder’s mark.”).
102
See Dec. 7, 2017 Tr. at 112:7–10.
20 103
See Dec. 7, 2017 Tr. at 111:1–2, 8–9. Allowing SDCC to present its three separate
21 marks as a single “brand” was a further error that independently warrants retrial of
infringement.
22 104
See Dec. 7, 2017 Tr. at 112:25–113:16 (“You have got COMIC-CON. … And then we
23 hold it up against the logo from Salt Lake. And we say COMIC-CON, hyphen, irrelevant
for similarity. COMIC CON, dominant feature. Okay. [¶] And then we pull up COMIC
24 CON INTERNATIONAL and we say COMIC-CON is the guts of that one and there it is
25 over on that logo again. And then we take the logo and we do the same. So I’m not
saying we compare them collectively, but you compare each and every one of them to
26
defendants’ alleged marks or logos or designs. [¶] … I think the evidence has a tendency
27 for them to be mutually supportive and helpful to the plaintiff or not, depending upon the
mindset of the jury. They could find, you know, those are really generically -- driven
28
from a generic progenitor or something.”).
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3 foregoing document has been served on January 16, 2018, to all counsel of record who
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mkatz@mabr.com
2
3 rsears@mabr.com
4
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
9 cveverka@mabr.com
11 1389 Center Drive, Suite 300
Park City, Utah 84098
12 Telephone: (435) 252-1360
13 Facsimile: (435) 252-1361
14 Attorneys for Defendants and Counterclaimants DAN FARR PRODUCTIONS, LLC,
15
DANIEL FARR, and BRYAN BRANDENBURG


19 California nonprofit corporation,
DEFENDANTS’ REPLY IN
20 Plaintiff, SUPPORT OF MOTION FOR NEW
21 v. TRIAL OF VALIDITY AND
INFRINGEMENT
22 DAN FARR PRODUCTIONS, a Utah limited
23 liability company; and DANIEL FARR and Date: May 31, 2018
BRYAN BRANDENBURG, individuals, Time: 2:00 p.m.
24
Defendants. Courtroom: 4A (4th Floor Schwartz)
25 Judge: Hon. Anthony Battaglia
26 AND RELATED COUNTERCLAIMS
27
28
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1 TABLE OF CONTENTS
2 I. VALIDITY SHOULD BE RETRIED ....................................................................... 1
3 A. Naked Licensing Was Not Properly Adjudicated .............................................. 1
4 B. Genericness Was Not Properly Tried and the Jury’s Verdict Is Against the
Weight of the Evidence ...................................................................................... 1
5
1. The Court Misinstructed the Jury and Improperly Excluded Evidence
6 on Third-party Use ...................................................................................... 1
7 2. DFP’s Expert Linguist Should Not Have Been Excluded .......................... 3
8 3. Media Evidence Should Not Have Been Excluded .................................... 3
9 4. Evidence of Genericness Ab Initio Should Not Have Been Excluded ....... 5
10 a. SDCC’s Procedural Argument Fails ................................................... 5
b. SDCC’s Legal Arguments Fail ........................................................... 6
11
c. SDCC Ignores DFP’s Evidence and Distorts its Positions ................. 7
12
5. The Jury Was Given a False Origin Story .................................................. 9
13
6. The Jury’s Verdict Was Against the Weight of the Evidence .................. 10
14
II. INFRINGEMENT SHOULD BE RETRIED, TOO ................................................ 10
15
III. CONCLUSION ........................................................................................................ 10
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1 TABLE OF AUTHORITIES
2 Page(s)
3 Cases
4 BellSouth Corp. v. DataNational Corp.,
5 60 F.3d 1565 (Fed. Cir. 1995) ........................................................................................ 6
6 Classic Foods International Corp. v. Kettle Foods, Inc.,
7 468 F. Supp. 2d 1181 (C.D. Cal. 2007) .......................................................................... 5
8 Elliott v. Google, Inc.,

860 F.3d 1151 (9th Cir. 2017) .................................................................................... 3, 4
9
10 Frito-Lay North America, Inc. v. Princeton Vanguard,

LLC, 124 U.S.P.Q.2D (BNA) 1184 (T.T.A.B. September 06, 2017) ............................ 2
11
Statutes
12
13 California Civil Code § 3530 ............................................................................................. 10
14 Rules
15 Federal Rule of Civil Procedure 402 ................................................................................... 9
16
Federal Rule of Civil Procedure 403 ............................................................................... 4, 9
17
Federal Rule of Civil Procedure 901 ................................................................................... 9
18
Federal Rule of Evidence 103 .............................................................................................. 5
19
20
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25
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1 Defendants and counterclaimants (collectively “DFP”) reply as follows to San Diego

2 Comic Convention’s (“SDCC’s”) opposition (“Opposition,” ECF Doc. 467) to DFP’s “…
3 Motion for New Trial …” (“Motion,” ECF Doc. 436).
4 I. VALIDITY SHOULD BE RETRIED
5 A. Naked Licensing Was Not Properly Adjudicated
6 DFP remains of the view that it marshaled sufficient evidence to support a jury
7 verdict that in 2006, SDCC granted a license to the producers of a rival comic con—
8 which there is no dispute would have been a naked license. Under the authorities cited by
9 DFP in its opening brief, the method by which the Court ruled otherwise was improper.
10 Validity should be retried so that DFP can properly present its naked licensing defense.
11 B. Genericness Was Not Properly Tried and the Jury’s Verdict Is Against the
Weight of the Evidence
12
1. The Court Misinstructed the Jury and Improperly Excluded Evidence on
13 Third-party Use
14 Turning now to genericness, DFP’s first argument is instructional error. Third-party
15 use, if sufficiently widespread, could establish that the primary significance of a term to
16 the relevant public is as the name for a type of service, irrespective of its source—i.e.,
17 that the term is generic. DFP understands the Court to have agreed with that principle
18 when it said “there would be circumstances” where third-party use, alone, could establish
19 genericness.1 But the Court instructed the jury otherwise when it told the jury: “Third
20 party use of a trademark would not, by itself, establish that a trademark is generic.”2
21 Also, by singling out third-party use as the only type of evidence that “would not, by
22 itself,” establish genericness, the Court put the one type of evidence that it gave DFP the
23 freest rein to introduce at a disadvantage, relative to the others. The Court’s negative
24 commentary on third-party use was not matched, for example, by comparable
25 disparagement of the survey on which SDCC primarily relies—even though “various
26 courts have found that Teflon surveys are only appropriate to consider in a case where the
27
1
See Dec. 5, 2017 Tr. at 48:7–10.
28 2
See ECF Doc. 394 at 22:17–19.
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1 question is whether a coined or arbitrary mark has become generic, and is not appropriate
2 to prove recognition of an otherwise not inherently distinctive mark.”3
3 SDCC calls DFP “duplicitous” for making this argument, in the face of a contrary
4 “concession.”4 But DFP “conceded” only that third-party use does not always entail
5 genericness. That leaves open the possibility, which the Court’s instruction improperly
6 forecloses, that third-party use could be enough to establish genericness.
7 Regarding the underlying evidence, SDCC defends the Court’s ruling that barred
8 DFP from asking a witness “whether he’s heard people refer to New York Comic-Con as
9 Comic-Con” on the ground that the question “clearly called for hearsay.”5 Had the
10 witness been asked whether he had heard that people used “comic con” to refer to New
11 York Comic Con, a hearsay objection might have been proper; but a report by the witness
12 that he himself had heard people use the term “comic con” to refer to New York Comic
13 Con, which is what DFP’s question sought, would not have been hearsay.
14 As for the Court’s exclusion of third-party testimony about why they had adopted
15 convention names that include some form of “comic con”: testimony that they used
16 “comic con” to say what their events were—not to trade on SDCC’s goodwill—would
17 have been (1) relevant and (2) competent percipient reports on their subjective states of
18 mind, not expert testimony. In defense of the Court’s ruling, SDCC argues:
19 testimony from various third-party operators of comic conventions as to why
they chose to incorporate “comic con” … into their convention name … is
20
irrelevant to establishing genericness because it says nothing about the
21 primary significance of the mark to the relevant consuming public, i.e.
convention attendees.6
22
But operators of comic conventions are also part of the relevant public; and because they
23
have an interest in clear messaging to their customers, they presumably use words in the
24
25
3
Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2D (BNA) 1184,
26
1196 (T.T.A.B. September 06, 2017).
4
27 See Opp. at 8:7–12.
5
See Opp. at 10:8–22 (emphasis in original).
28 6
See Opp. at 11:13–18.
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1 same way as attendees. Genericness should be retried to correct instructional error and
2 improper exclusionary rulings.
3 2. DFP’s Expert Linguist Should Not Have Been Excluded
4 According to SDCC, DFP’s expert linguist was properly excluded for “utter failure
5 to address … the primary significance of the term to the relevant public.”7 But he did
6 address the primary significance of “comic con,” as shown by how the term is used. More
7 specifically: he first explained how various linguistic markers can reveal whether a term
8 is being used as a common noun, which is the linguistic counterpart to the legal concept
9 of genericness;8 and then he applied those principles to a large collection of naturally
10 occurring uses (i.e., uses not created for litigation) of “comic con.”
11 The rest of SDCC’s arguments attack the data DFP’s linguist relies on; but as DFP
12 showed in its opening brief, such criticisms go only to weight, not admissibility. 9 SDCC
13 tries to convert its attack on the linguist’s data in a methodological critique by phrasing it
14 as: “Kaplan provided no explanation as to the methodology he used” to select his data.
15 But an attack directed to the methodology for the selection of data is still an attack on the
16 data, which cannot justify exclusion, not on the methodology used to analyze that data.
17 Excluding DFP’s linguist was error, which should be corrected through a new trial.10
18 3. Media Evidence Should Not Have Been Excluded
19 During trial, the Court kept out much of DFP’s media evidence and diminished the
20
7
21 See Opp. at 14:2–5.
8
The contrast drawn by DFP’s linguist was between common and proper nouns, not
22
nouns and adjectives. DFP is not using his testimony to support the argument, rejected by
23 Elliott v. Google, Inc., 860 F.3d 1151, 1158 (9th Cir. 2017), that only adjectives can be
trademarks. That said, that “comic con” is generally used as a noun rather than an
24
adjective is relevant because “if a trademark is used as an adjective, it will typically be
25 easier to prove that the trademark is performing a source-identifying function” than if it is
used as a noun. See Elliott, 860 F.3d at 1158 n. 3.
26 9
See ECF Doc. 436-1 at 7:15–9:9.
27 10
For the Court’s reference, DFP submitted with its moving papers the linguist report
used by another case. SDCC’s complaint that this other report constitutes new evidence
28
misses the mark because it is not evidence that would be part of a new trial.
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1 force of the rest by requiring DFP, in most instances, to redact everything but headlines.
2 In the Court’s defense, SDCC first argues that media evidence was properly excluded as
3 needlessly cumulative under Federal Rule of Evidence (“Rule”) 403.11 That argument
4 might have had some force if all that mattered were whether there was any generic use of
5 “comic con” by the media. But another critical issue was whether generic or non-generic
6 use predominated. The excluded evidence cannot have been needlessly cumulative unless
7 SDCC admits that media uses were predominantly generic.
8 SDCC also argues the excluded media evidence is “rife with hearsay.”12 One
9 example DFP cited in its opening brief is the reference to “any Comic Con” that was
10 redacted from Trial Exhibit 1365;13 that does not involve any hearsay. Another example
11 DFP cited is the reference to “comic-cons in other areas of Michigan and throughout the
12 country” that was redacted from Trial Exhibit 782.14 This is evidence of genericness
13 because it uses the plural form “comic-cons,”15 and its use of that form it not hearsay.
14 The implication that there are (or were) other conventions in Michigan or throughout the
15 country might have been hearsay, but that could have been dealt with by a limiting
16 instruction rather than exclusion. Rule 403 does not authorize the exclusion of evidence
17 unless “its probative value is substantially outweighed [italics added].” Because the
18 existence of other conventions was no secret—indeed, it was already shown by other
19 evidence—there was no reason to exclude this or other media evidence rather than
20 neutralizing any hearsay problem with a limiting instruction.
21 As for media definitions, SDCC ignores rather than answers DFP’s argument. A
22 media definition is percipient self-reporting by the media, a statement by the media of
23 how the media is using a term, not expert testimony. That self-reporting, which tells how
24 the media is using a term, is admissible under the same theory as media uses, which show
25
11
See Opp. at 16:25–17:10.
26 12
See Opp. at 17:12.
13
27 See ECF Doc. 436-1 at 11 n. 48.
14
See ECF Doc. 436-1 at 11 n. 47.
28 15
See Elliott, 860 F.3d at 1162.
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1 how the media is using it: both reveal the media’s understanding, and that understanding
2 is relevant both as a reflection of and an influence on usage by the broader public.16
3 Wikipedia’s reliability as a scientific reference work, in turn, is beside the point:
4 whatever its shortcomings as an encyclopedia or learned treatise, Wikipedia is surely a
5 good gauge of popular discourse, which is what matters here.
6 Regarding materials that DFP did not separately proffer during trial,17 as DFP
7 explained in its opening brief: “their admission was foreclosed by the Court’s ruling on
8 other exhibits that were offered”;18 and that is enough: “Once the court rules definitively
9 on the record—either before or at trial—a party need not renew an … offer of proof to
10 preserve a claim of error for appeal.”19 Moreover most of these materials are publications
11 from the 1960s, and DFP was barred by pretrial rulings from introducing evidence of pre-
12 1970 usage. The Court so jealously guarded its 1970 cutoff that when DFP’s counsel
13 tried to introduce a 1973 publication referencing a 1972 event, the Court accused DFP of
14 trying to “back-door” it.20 DFP’s counsel was not required, in order to preserve their
15 client’s objection to the Court’s exclusionary rulings, to risk jail time by trying to
16 introduce publications from the 1960s. Genericness should be retried because relevant
17 and admissible media evidence was improperly excluded.
18 4. Evidence of Genericness Ab Initio Should Not Have Been Excluded
19 a. SDCC’s Procedural Argument Fails
20 SDCC’s lead argument on genericness ab initio is procedural: a new trial cannot be
21 had because the issue was never tried; instead, “[t]his Court granted SDCC’s motion for
22 summary judgment on Defendants’ generic ab initio defense.”21 This misconceives
23 genericness ab initio. Genericness ab initio is not a distinct defense; it is instead a
24 16
See Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1189 (C.D.
25 Cal. 2007).
17
See Opp. at 18:13–18.
26 18
See ECF Doc. 436-1 at 12 n. 52.
19
27 See Fed. R. Evid. 103(b).
20
See Nov. 30, 2017 a.m. Tr. at 86:5–7.
28 21
See Opp. at 18:22–23.
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1 particular theory of genericness. “A descriptive term may be generic for a designation ab

2 initio or it may become generic over time through common usage”;22 either way, the term
3 is generic. DFP seeks a new trial of its genericness defense because DFP was not allowed
4 to present a particular category of genericness evidence.
5 b. SDCC’s Legal Arguments Fail
6 Substantively, SDCC insists this Court “has always reasoned that the Ninth Circuit
7 does not recognize a generic ab initio defense.”23 But the Ninth Circuit’s embrace of the
8 once-generic-always-generic principle commits it to also recognizing genericness ab
9 initio. For example, Surgicenters of America, Inc. v. Medical Dental Surgeries Co. held:
10 “A ‘generic’ term is one that refers, or has come to be understood as referring, to the
11 genus of which the particular product or service is a species. It cannot become a
12 trademark under any circumstances.”24 From the premise that a generic term “cannot
13 become a trademark under any circumstances,” it follows that a term that starts out
14 generic can never become a trademark—which is the genericness ab initio doctrine.
15 Indeed by recognizing that a term can be generic either because it already “refers” or
16 because it “has come to be understood as referring” to a genus, the Ninth Circuit made
17 plain that genericide is not the only form of genericness: a term can also start out
18 generic—i.e., it can be generic ab initio—if it is already “one that refers to … the genus.”
19 SDCC attaches great weight (or at least boldface italics) to the phrase “has come to be
20 understood as referring.”25 But by including that, the Ninth Circuit simply made clear that
21 genericide cannot be reversed—just as, by also including “one that refers,” it indicated
22 that genericness ab initio cannot be overcome.
23 SDCC also tries to develop support for its position by adding boldface italics to a
24 statutory provision, as follows:
25
26 22
BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1569–70 (Fed. Cir. 1995).
23
27 See Opp. at 21:1–2.
24
601 F.2d 1011, 1014 (9th Cir. 1979).
28 25
See Opp. at 21:27–22:7.
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1 The Lanham Act itself states that “[t]he primary significance of the registered
mark to the relevant public … shall be the test for determining whether the
2 registered mark has become the generic name of goods or services on or in
3
connection with which it has been used.”26
This provision prescribes the primary-significance test to determine genericide. What has
4
that to do with whether a term that starts out generic can be appropriated as a trademark?
5
c. SDCC Ignores DFP’s Evidence and Distorts its Positions
6
Turning from the law to the evidence, SDCC says DFP presents its ab initio theory
7
“without a single citation to any admissible evidence in support.” DFP’s introductory
8
summary cites to publications only generally and without pin-cites; but it is followed by
9
several pages of amply and pin-cited elaboration, which SDCC simply ignores.27
10
SDCC tries to dismiss “the history of ‘science fiction fandom,’ ‘fanzines’ and
11
‘comic fandom’” as having “nothing at all to do with the primary significance … to the
12
relevant consuming public.”28 But that history has everything to do with primary
13
significance to that public as it existed in the 1960s, before SDCC began using names that
14
included “comic con”; and it continued to matter for years after SDCC started.
15
When it comes to history, SDCC’s counsel is either disingenuous or appallingly
16
ignorant. During the in limine hearing, SDCC’s counsel insisted: “I’ll tell you, if there
17
was a New York comic con, that was one year, 1964. I doubt it was even in ’65. And it
18
didn’t go beyond ’65.”29 But her client’s own publications establish that the New York
19
Comicon began in 1964 and continued as the leading comic con in the country at least as
20
late as 1973.30 Now SDCC’s counsel tries to cast aside “‘science fiction fandom,’
21
‘fanzines’ and ‘comic fandom’” as “a mind-numbing sideshow.”31
22
. SDCC’s 2011 convention included programming to celebrate
23
24
26
25 Opp. at 21:19–23 (emphasis in original) (quoting 15 U.S.C. § 1064(3)).
27
See ECF Doc. 436-1 at 16:13–20:24.
26 28
See Opp. at 22:25–23:2.
29
27 Nov. 14, 2017 Tr. at 26:20–22.
30
See ECF Doc. 436-5 at pp. 86, 123 (ECF pp. 4, 23 of 33).
28 31
See Opp. at 22:25–23:2.
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1 comic fandom’s 50th anniversary.

2
5
32
6
7 SDCC invited comic fandom historian Bill Schelly as a “special guest” to its 2011
8 celebration of comic fandom’s 50th anniversary. SDCC nominated Schelly’s The Golden
9 Age of Comic Fandom for its Will Eisner Award,33 “the Oscars of the comic book
10 industry.”34 Chapters 6, 7, and 9 of that book detail the history of comic cons, including
11 the New York comic cons, through the 1960s and into the 1970s. In a more recent book,
12 Schelly explains that “recognition” of “the New York Comicon” as “the major, annual,
13 national comic book convention” first “dawned” in 1965 and then “became increasingly
14 established in the latter part of that decade”; SDCC’s event, launched in 1970, grew in
15 prominence “until there were two cons which could be called national in scope.”35 Thus
16 SDCC started in the national shadow of another convention that had already using
17 “comicon” in its name for years; and even as SDCC was achieving comparable stature, it
18 shared the national stage with that other convention. But instead of having to confront
19 that reality at trial, SDCC implicitly passed itself off as the first and unmoved mover of
20 “comic con,” and relegated all others to the role of infringing copyists.
21
22 32
See , reproduced in Ex. A hereto.
33
23 See CC417617, reproduced in Ex. B hereto; see also ECF Doc. 436-5 at p. 116 (ECF p.
16 of 33) (“Bill Schelly is a noted fan historian …”).
24 34
See Tr. at 63:23–24.
35
25 See Bill Schelly, Founders of Comic Fandom 96–97 (2010). Alongside those two
national cons there have always been “many regional conventions in major population
26
centers, such as Houston, St. Louis, Chicago, Miami, Detroit, even Oklahoma City.” See
27 id. Portions of Schelly’s books are reproduced as Exhibits C and D hereto, not necessarily
as new or additional evidence but as material the Court might consult in making threshold
28
admissibility determinations about other evidence. See also, Exhibit E attached hereto.
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1 SDCC characterizes DFP arguments about “SDCC’s failure to ‘coin’ the term
2 ‘comic-con’” as “suspect in view of defense counsel’s position on ‘coining’ a term at the
3 hearing on motions in limine.”36 In so doing, SDCC continues its long history of
4 distorting DFP’s position on coinage—which has always been that coinage, while not
5 necessarily dispositive of, is highly relevant to genericness. A jury is more likely to think
6 “Comic-Con” is a brand name if it thinks, wrongly, that SDCC coined it than if it knows
7 the term was already in use by others.
8 Finally, SDCC invokes but does not actually try to apply Rules 901, 402, 403, and
9 802. Many documents on which DFP bases its ab initio theory are SDCC publications,
10 and the rest are mostly ancient documents; neither type of document should have been
11 excluded under Rules 901 or 802. Rule 402, in turn, cannot justify their exclusion unless
12 pre-1970 usage is irrelevant to genericness. And because the evidence would have given
13 DFP a complete defense, if found persuasive by the jury, the requirement for exclusion
14 under Rule 403 that probative value be substantially outweighed was not satisfied.
15 SDCC’s blanket invocation of these rules is an unpersuasive makeweight. On the whole,
16 SDCC’s response to DFP’s ab initio evidence is a poor substitute for reasoned analysis.
17 5. The Jury Was Given a False Origin Story
18 The only inference the jury could reasonably have drawn from the limited evidence
19 it was allowed to receive and the instructions it was given is that SDCC was the first to
20 produce a comic con and the first to use a name that included “comic con”—neither of
21 which is true. SDCC argues that “[n]o SDCC witness ever testified that SDCC was the
22 first to use the term ‘comic con.’”37 But no witness had to come out and say that in order
23 to get it across. The jury was told that SDCC began using “comic con” in 1970 and then
24 spent the next several decades building the “comic con” brand; the jury was never
25 allowed to learn, either through evidence or instruction, that SDCC was not the first; what
26 else was the jury to conclude? One of California’s maxims of jurisprudence is: “That
27
36
See Opp. at 22:20–22.
28 37
See Opp. at 23:22–23 (emphasis in original).
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1 which does not appear to exist is to be regarded as if it did not exist.”38 It is a maxim of
2 jurisprudence because it is common sense; the jury did not need to be instructed on the
3 principle in order to apply it. Through a combination of evidentiary and instructional
4 rulings, the Court ensured that pre-SDCC usage “does not appear to exist”; given that
5 record, the jury almost certainly concluded that pre-SDCC usage “did not exist.”
6 SDCC points out that references to coinage were removed from an instruction,39 but
7 that was a poor substitute for instructing the jury that SDCC had not coined “comic con.”
8 The form instruction that was modified addressed coinage because coinage naturally
9 affects how a term is understood. Taking out the references to coinage could not
10 eliminate the natural tendency the form reflects.
11 6. The Jury’s Verdict Was Against the Weight of the Evidence
12 DFP believes genericness is established by the clear weight of the evidence and,
13 thus, the jury’s validity verdict should be vacated and a new trial held. SDCC insists
14 otherwise. The Court heard the evidence and can make its own assessment.
15 II. INFRINGEMENT SHOULD BE RETRIED, TOO
16 SDCC professes bafflement about DFP’s argument for a new trial on infringement.
17 In case that is not just a tactical ploy and instead reflects on DFP’s presentation, DFP will
18 rephrase the point: because SDCC won on infringement by focusing on the “comic con”
19 element of its and DFP’s marks, if the jury had found “comic con” generic then it might
20 also have found no likelihood of confusion for the other marks.
21 III. CONCLUSION
22 DFP’s Motion should be granted and a new trial had on validity and infringement.
23 DATED: March 6, 2018 MASCHOFF BRENNAN LAYCOCK
24
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See California Civil Code § 3530.
28 39
See Opp. at 24:13–16.
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3 foregoing document has been served via email on March 6, 2018, to counsel of record
4 who are deemed to have consented to electronic service.
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11 SAN DIEGO COMIC CONVENTION, a Case No.: 14-cv-1865-AJB-JMA
California non-profit corporation,
12
Plaintiff, ORDER DENYING DEFENDANTS’
13 MOTION FOR NEW TRIAL OF
v. VALIDITY AND INFRINGEMENT
14
DAN FARR PRODUCTIONS, a Utah
15 limited liability company, DANIEL (Doc. No. 436)
16 FARR, an individual, BRYAN
BRANDENBURG, an individual,
17
Defendants.
18
19
20 After three years of litigation and a jury trial, Defendants Dan Farr Productions,
21 Daniel Farr, and Bryan Brandenburg (collectively referred to as “DFP”) present the Court
22 with a Sisyphean task. Under the guise of a motion for new trial, the majority of DFP’s
23 motion seeks to relitigate issues thoroughly briefed, argued, and decided in the past.
24 Specifically, DFP argues that a new trial should be allowed on three issues: (1) their naked
25 licensing defense; (2) genericness; and (3) infringement. (See generally Doc. No. 436-1.)
26 Plaintiff San Diego Comic Convention (“SDCC”) opposes the motion. (Doc. No. 467.) On
27 May 31, 2018, the Court held a hearing on the matter and then submitted the motion. (Doc.
28
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1 No. 504.) Finding no reasons to support a new trial, the Court DENIES DFP’s motion in
2 its entirety. (Doc. No. 436.)
3 BACKGROUND
4 The Court is already well-versed as to the events leading up to the institution of this
5 action. Thus, for the purposes of this Order, the Court will only provide a narrow review
6 of this lawsuit’s factual and procedural background.
7 On August 7, 2014, SDCC filed a lawsuit against DFP alleging two causes of action:
8 (1) Federal Trademark Infringement, 15 U.S.C. § 1114; and (2) False Designation of
9 Origin, 15 U.S.C. § 1125(a). (See generally Doc. No. 1.) SDCC is a non-profit corporation,
10 formed in 1975, that is dedicated to the awareness and appreciation of comics and related
11 popular art forms. (Doc. No. 1 ¶ 10.) Every year since 1970, SDCC has produced and held
12 its convention known as the “Comic-Con convention” in San Diego, California. (Id. ¶ 11;
13 Doc. No. 97 at 9.)1 The convention spans several days in length and showcases several
14 hundred events, workshops, educational and academic programs, games, award shows,
15 costume contests, as well as hosts panels of special guests that include science fiction and
16 fantasy authors, film and television actors, directors, producers, and writers. (Doc. No. 1 ¶
17 12; Doc. No. 97 at 9.) In 2016, attendance to San Diego Comic-Con exceeded over 135,000
18 attendees. (Doc. No. 97 at 9.)
19 SDCC’s family of trademarks at issue in this case are:
20 1. Comic-Con;
21 2. Comic Con International;
22 3. Anaheim Comic-Con; and
23
24
25
26

27
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Page numbers refer to the CM/ECF number and not the number listed on the original
28 document.
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1
2
3
4 4.
5 (Doc. No. 1 ¶ 13; Doc. No. 244 at 11.) Each of these registered trademarks is incontestable.
6 (Doc. No. 381 at 25:15–25.) Additionally, SDCC states that it has used these marks
7 extensively and continuously in interstate commerce and thus the marks have become
8 valuable assets as well as symbols of its goodwill and positive industry reputation. (Doc.
9 No. 1 ¶ 15.)
10 In early 2013, Defendant Dan Farr Productions, a limited liability company, began
11 to advertise and promote its own popular arts convention named “Salt Lake Comic Con”
12 (“SLCC”). (Doc. No. 234-2 at 7; Herrera Decl. Ex. 5 (“Farr Depo.” 11:4–9, Doc. No. 95-
13 7).) Similar to SDCC’s convention, SLCC is a three-day fan event featuring the best in
14 movies, television shows, gaming, sci-fi, fantasy, and comic books. (Doc. No. 244 at 12.)
15 Since 2013, SLCC has been held every year and in the beginning of 2014, Dan Farr
16 Productions created its Salt Lake Comic Con FanXperience event, which has also been
17 held every year since its inception. (Farr Depo. at 11:10–15; Doc. No. 97 at 11.)
18 Thus, the marrow of this case is whether DFP’s comic arts and popular fiction
19 event named “Salt Lake Comic Con” infringed on SDCC’s three incontestable trademarks.2
20 On December 8, 2017, after an eight-day jury trial, the jury found that DFP had indeed
21 infringed on SDCC’s family of trademarks. (Doc. No. 395 at 2–5.) As to unfair competition
22 and false designation of origin however, the jury found in favor of DFP. (Id. at 6.) In total,
23 the jury awarded corrective advertising damages to SDCC in the amount of $20,000.00.
24 (Id. at 8.)
25
26

27
2
The Court notes that after the trial, DFP changed the name of their event to “FanX Salt
28 Lake Comic Convention.” (Doc. No. 513 at 7–8.)
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1 Post-trial, DFP filed four motions: (1) their motion for judgment as a matter of law,
2 (Doc. No. 429); (2) the present motion, their motion for new trial of validity and
3 infringement, (Doc. No. 436); (3) a motion for ruling on estoppel defense, (Doc. No. 508);
4 and (4) their motion for ruling on unclean hands defense, (Doc. No. 510).
5 LEGAL STANDARD
6 Under Federal Rule of Civil Procedure 59, a new trial may be granted in an action
7 in which there has been a trial by jury, for any of the reasons for which new trials have
8 heretofore been granted in actions at law in the courts of the United States. Fed. R. Civ. P.
9 59(a)(1). As this circuit has noted, “Rule 59 does not specify the grounds on which a motion
10 for a new trial may be granted[.]” Zhang v. Am. Gem. Seafoods, Inc., 339 F.3d 1020, 1035
11 (9th Cir. 2003). Rather, the court is “bound by those grounds that have been historically
12 recognized.” Id. Three historically recognized grounds include, but are not limited to: (1)
13 the verdict is against the weight of the evidence; (2) damages are excessive; or (3) the trial
14 was not fair to the moving party. Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir.
15 2007). Additional grounds can be “errors in admission or rejection of evidence or
16 instructions to the jury.” Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251 (1940).
17 DISCUSSION
18 DFP’s motion for new trial is based on the following contentions: (1) DFP is entitled
19 to a proper adjudication of their naked licensing defense; (2) that genericness should be
20 retried; (3) that the expert linguist testimony was improperly excluded; (4) extensive media
21 evidence was improperly excluded; (5) DFP should have been allowed to bring their
22 defense of genericness ab initio; (6) SDCC promoted a false and legally flawed narrative
23 because pre-1970 usage was excluded and requested instructions were not given; (7) the
24 jury’s validity verdict is against the weight of the evidence; and (8) infringement should be
25 retried. (See generally Doc. No. 436-1.) SDCC challenges DFP on each contention. (See
26 generally Doc. No. 467.)
27 As the majority of the foregoing issues have already been considered carefully and
28 the remainder of the arguments do not demonstrate that the verdict is contrary to the clear
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1 weight of the evidence or that there were errors made during trial, the Court finds a new
2 trial unjustified. See Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir. 1990)
3 (holding that the Court’s review process in a motion for new trial is to “weigh the evidence
4 . . . and to set aside the verdict of the jury . . . where, in [the Court’s] conscientious opinion,
5 the verdict is contrary to the clear weight of the evidence[.]”) (citation omitted).
6 A. It was Not Error to Reject Evidence of DFP’s Naked Licensing Defense
7 DFP asserts that asking them to proffer evidence of their naked license defense in a
8 motion in limine is reversible error. (Doc. No. 436-1 at 7.) Specifically, DFP contends that
9 a motion in limine is not the proper vehicle for seeking a dispositive ruling on a claim. (Id.)
10 The Court finds that DFP’s arguments suffer from a glaring oversight. Most notably, that
11 this defense was presented and analyzed in DFP’s summary judgment motion and
12 ultimately denied. Thus, DFP was provided the chance to properly support their naked
13 license defense, but they failed to do so.
14 “[N]aked licensing may result in the trademark ceasing to function as a symbol of
15 quality and controlled source.” Barcamerica Int’l USA Trust v. Tyfield Imps., Inc., 289 F.3d
16 589, 596 (9th Cir. 2002) (citation and internal quotation marks omitted). Consequently,
17 though a trademark owner may license the use of its trademark, “where the licensor fails
18 to exercise adequate quality control over the licensee, a court may find that the trademark
19 owner has abandoned the trademark, in which case the owner would be estopped from
20 asserting rights to the trademark.” Id. (citation and internal quotation marks omitted). The
21 proponent of a naked license theory faces a stringent standard of proof. See Taco Cabana
22 Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991); FreecycleSunnyvale v.
23 Freecycle Network, 626 F.3d 509, 514 (9th Cir. 2010).
24 Moreover, “[w]hether express or implied, a license is a contract governed by
25 ordinary principles of state contract law.” Foad Consulting Grp., Inc. v. Azzalino, 270 F.3d
26 821, 828 n.11 (9th Cir. 2001). Most relevant for the Court’s purposes is that “[s]ilence in
27 the face of an offer is not an acceptance, unless there is a relationship between the parties
28
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1 or a previous course of dealing pursuant to which silence would be understood as

2 acceptance.” S. Cal. Acoustics Co. v. C.V. Holder, Inc., 71 Cal. 2d 719, 722 (1969).
3 As noted above, DFP first brought this defense in their motion for summary
4 judgment. DFP argued that SDCC and Reed Exhibitions had a license agreement based
5 upon the following evidence:
6 1) SDCC sent Reed a letter on July 5, 2005, in regards to Reed’s alleged
7 infringement of SDCC’s trademarks. (Doc. No. 263 at 26–27; Doc. No. 263-
8 1 at 21);
9 2) On December 28, 2005, SDCC proposed a settlement. (Doc. No. 263-1 at 21);
10 3) On January 6, 2006, Reed countered with three modifications. (Id.);
11 4) SDCC then failed to respond to Reed’s January letter. (Id. at 22);
12 5) Thereafter, on February 28, 2006, Reed sent another letter repeating that it
13 believed “Comic-Con” was available for use by anyone. (Id.); and
14 6) SDCC failed to respond to the foregoing February letter, and as a result on
15 June 6, 2006, Reed sent a follow up letter stating that it had proceeded to adopt
16 a disclaimer, was implementing its name change, and that it would be going
17 forward in full reliance that the “silence of [SDCC] . . . is an acquiescence to
18 the steps taken and in progress as being a resolution of [SDCC’s] concerns.”
19 (Id.)
20 In addition, DFP introduced several internal communications between SDCC employees.
21 (Doc. No. 263 at 27–28.)
22 Taken cumulatively, the Court found that DFP had “failed to meet the ‘stringent’
23 standard required to prove abandonment of trademark rights” through a naked license. (Id.
24 at 26–29.) Moreover, this Court also delineated that DFP had failed to demonstrate that
25 SDCC’s silence could be construed as acceptance within the framework of the emails they
26 produced as evidence. (Id. at 28.) As a result, the Court denied DFP’s motion for summary
27 judgment on this subject. (Id. at 26–29.)
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1 DFP was then granted a second chance to offer evidence of a naked license after the
2 issue was presented at the pretrial conference. (Doc. No. 265 at 9:11–11:25.) The pertinent
3 parts of that conversation with Mr. Sears are as follows:
4 The Court: Okay. Then we’ve got the abandonment defense which I
preserved or allowed to go forward . . . I mean, had the Plaintiff, frankly, set
5
it up as an affirmative motion for judgment, and I was assured I had all the
6 Defendants’ side of it, I’d probably have granted it if this is all we’ve got.
What I’m concerned about at this point --I mean, what I saw in the attempts
7
to gain judgment on that was something far short of a license agreement
8 having been reached. Is there going to be more evidence on that point for the
jury? Because, if not, we’re going to waste a lot of time and energy on
9
something I don’t think you’re going to pass a rule fifty motion on.
10 Mr. Sears: So the evidence consists of--the short answer is I’d have to go
back and review the summary judgment papers to ensure everything was in
11
there.
12 ...
The Court: We could take it up as part of the in limine hearing, without it
13
counting against anyone since I am pushing the issue.
14 ...
Mr. Sears: If the Court is open to it, what we’d do is prepare a formal proffer
15
document and submit that in advance of the MIL hearing.
16 The Court: That would be very helpful in terms of making sure there is
evidence to go to the jury[.]
17
18 (Id.)
19 The formal proffer document provided by DFP highlighted the same letters and
20 emails referenced above. However, in an attempt to fortify their belief that a license was
21 created, DFP argued that SDCC’s silence on the heels of its “threatened immediate or
22 vigorous enforcement,” was “intentionally misleading,” Hottel Corp. v. Seaman Corp., 833
23 F.2d 1570, 1574 (Fed Cir. 1987), and thus gave SDCC a “duty to speak[,]” Scholle Corp.
24 v. Blackhawk Molding Co., Inc., 133 F.3d 1469, 1472 (Fed. Cir. 1998). (Doc. No. 344 at
25 6.) Further, DFP asserted that an “implied license may arise by … acquiescence;
26 permission or lack of objection is …equivalent to … license[.]” (Id. (citing I.A.E., Inc. v.
27 Shaver, 74 F.3d 768, 775 (7th Cir. 1996); Winbond Elec. Corp. v. ITC, 262 F.3d 1363,
28 1374 (9th Cir. 2001)).
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1 Not surprisingly, DFP concocted the foregoing assertions by cherry-picking

2 selective phrases from inapplicable cases in order to come to a conclusion that benefits
3 their defense. The Court notes that the court in Hottel Corp., was analyzing an intentionally
4 misleading affirmative defense in a patent infringement context, 833 F.2d at 1574, and
5 Scholle Corp., dealt with an equitable estoppel defense in a patent infringement case, 133
6 F.3d at 1472. Moreover, Shaver was analyzing the aspects of the transfer of copyright
7 ownership through an exclusive license, 74 F.3d at 774–75, and Winbond is a case dealing
8 with an implied license for a patented invention, 262 F.3d at 1374. It is almost palpable
9 how unpersuasive and inapplicable these cases are in the context of DFP’s naked license
10 defense.
11 In sum, the Court did not rule on DFP’s defense in a motion in limine. Instead, the
12 record demonstrates that DFP failed to provide sufficient evidence at the summary
13 judgment stage and in their formal proffer document to persuade this Court that their naked
14 license defense should be brought before the jury.
15 Additionally, the Court was in its discretion to ask DFP to make an “offer of proof”
16 before heading to trial with this defense pursuant to Federal Rule of Evidence 103. See Fed.
17 R. Evid. 103(a)(2) (“[I]f the ruling excludes evidence, a party informs the court of its
18 substance by an offer of proof, unless the substance was apparent from the context.”).
19 Moreover, offers of proof in the motion in limine context are regularly used by courts in
20 this circuit. See e.g., United States v. Williams, 791 F.2d 1383, 1387 (9th Cir. 1986); United
21 States v. Dorrell, 758 F.2d 427, 430 (9th Cir. 1985) (“Accordingly, we have in the past
22 allowed the district court to determine the admissibility of the necessity defense by motions
23 in limine.”); United States v. Contento-Pachon, 723 F.2d 691, 693 (9th Cir. 1984).
24 Consequently, as explicitly delineated above, DFP’s belief that they are entitled to a
25 proper adjudication of their naked license defense is farcical when viewed in light of the
26 record. Thus, DFP’s motion for new trial in this regard is DENIED.
27 ///
28 ///
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1 B. Genericness Should Not Be Retried

2 DFP requests that the Court retry genericness based on two points: (1) due to the
3 Court’s purported misinstruction to the jury; and (2) the Court’s allegedly improper
4 exclusion of testimony relating to third-party competitive use. (Doc. No. 436-1 at 8–10.)
5 i. The Court Did Not Misinstruct the Jury
6 DFP takes issue with the following jury instruction:
7 When determining whether a mark is generic you may consider, in no
particular order, the following: how the media uses it; how the plaintiff uses
8
it; use by competitors; and consumer surveys. These are just examples of the
9 types of evidence you may consider in evaluating how the term is understood
by the consuming public.
10
Third party use of a trademark would not, by itself, establish that a trademark
11 is generic. This is because a trademark owner is not obligated to pursue
enforcement measures against every infringing use of its trademark.
12
13 (Doc. No. 394 at 22.) DFP then points to the Court’s following statement in regards to
14 third-party use to determine genericness:
15 I think [third-party use] can. I don’t think it’s a never and always, that it can
never establish, or it can never establish a trademark is generic. Indeed, there
16
would be circumstances where it could. I’m just thinking about structure and
17 how the model forms tend to address these issues.
18 (Doc. No. 402 at 48:7–11.)
19 Putting the instruction together with the Court’s own statement, DFP seeks to
20 contend that the instruction communicated to the jury that competitive use is inadequate to
21 establish genericness, which DFP argues the Court acknowledged is incorrect. (Doc. No.
22 436-1 at 9.) Moreover, DFP asserts that by commenting on the sufficiency of competitive
23 use in a negative manner, the Court signaled to the jury that competitive use is weaker
24 evidence of genericness than the rest. (Id.) The Court disagrees with DFP on both points.
25 Here, DFP wishes to piggyback off a statement the Court made while deliberating
26 the exact phrasing of the foregoing jury instruction. However, these arguments miss the
27 mark as they do not demonstrate that the instruction was erroneous. The Court notes that
28 cases from this district, cases DFP have themselves cited to repeatedly, hold that third-
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1 party use is but one factor in determining genericness. See CG Roxane LLC v. Fiji Water
2 Co. LLC, 569 F. Supp. 2d 1019, 1027–28 (N.D. Cal. 2008) (determining a mark’s
3 genericness by not only analyzing competitors’ use of the phrase, but also looking to the
4 popular press’ use of the mark); see also Moroccanoil, Inc. v. Marc Anthony Cosmetics,
5 Inc., 57 F. Supp. 3d 1203, 1212 (C.D. Cal. 2014) (highlighting that courts “look to a
6 plaintiff’s own use, dictionary definitions, use by competitors, media usage, trade usage,
7 and customer surveys” to determine genericness) (citation omitted). DFP provides no case
8 law to demonstrate the opposite.
9 Moreover, DFP’s assertion that the instruction signaled to the jury that competitive
10 use is a weaker element than the rest is neither supported by the record or case law. This
11 assertion is simply a self-serving theory concocted by DFP.
12 Further, the final statement in the jury instruction—that lack of enforcement is
13 irrelevant—is not an error of law in genericide cases. Defendants cite to Horizon Mills
14 Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 214 (S.D.N.Y. 2001), to argue that a trademark
15 owner’s failure to police its mark, resulting in widespread usage by competitors, is one of
16 the fundamental processes by which the public’s appropriation of the mark is set in motion.
17 (Doc. No. 436-1 at 9.) It is true that the Ninth Circuit holds that genericide can occur “as a
18 result of a trademark owner’s failure to police the mark, resulting in widespread usage by
19 competitors[,]” which can then lead to a “perception of genericness among the public[.]”
20 Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007) (citation omitted).
21 However, DFP mischaracterizes the Court’s instruction. Here, the Court was
22 articulating that a trademark holder in exercising its rights is not required by law to sue
23 every single person or company that infringes on its mark. See Fitbug Ltd. v. Fitbit, Inc.,
24 78 F. Supp. 3d 1180, 1186 (N.D. Cal. 2015) (explaining that a “trademark holder is ‘not
25 required to constantly monitor every nook and cranny of the entire nation and to fire both
26 barrels of [its] shotgun instantly upon spotting a possible infringer.’”) (citation omitted);
27 see also Elizabeth Taylor Cosmetics Co., Inc., v. Annick Goutal, 673 F. Supp. 1238, 1248
28 (S.D.N.Y. 1987) (“Because a trademark owner is not required to act against every
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1 infringing use no matter how inconsequential at risk of losing his rights, the
2 inconsequential infringement shown here does not strip Annick Goutal’s Passion mark of
3 its protectability.”) (internal citation omitted); Sara Lee Corp. v. Kayser-Roth Corp., 81
4 F.3d 455, 462 (4th Cir. 1996) (A trademark owner need not sue “until the likelihood of
5 confusion looms large.”) (citation and internal quotation marks omitted).
6 In sum, the Court finds the jury instruction at issue is a correct statement of the law.
7 ii. Exclusion of Testimony Relating to Competitive Third-Party Use
8 Next, DFP takes issue with the Court’s decision that prohibited them from
9 introducing third-party witness testimony that would have purportedly demonstrated that
10 “Comic Con” refers to other conventions. (Doc. No. 436-1 at 9–10.) The relevant portions
11 of the record that DFP refers to are from the cross-examination of Mr. Powers, which is as
12 follows:
13 By Mr. Sears:
Q You lived for a while in New York?
14
A Yes, I have lived in the New York metropolitan area since I graduated
15 college in 2005.
Q Have you ever attended the New York Comic-Con?
16
A Yes.
17 Q How many times?
A Five times.
18
Q Okay. And have you--while you’ve been at New York Comic-Con, have
19 you heard New Yorkers referring to New York Comic-Con simply as Comic-
Con?
20
Ms. Herrera: Objection. Hearsay.
21 The Court: Sustained.
...
22
Mr. Sears: Am I allowed to inquire as to what he has heard people say?
23 The Court: Well, it’s pretty broad as you’ve phrased it, so no.
Mr. Sears: Am I allowed to inquire whether he’s heard people refer to New
24
York Comic-Con as Comic-Con?
25 The Court: Not unless we can identify a source and they’re subject to being
called as witnesses. No, it’s hearsay.
26
27 (Doc. No. 405 at 23:19–24:17.)
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1 Inexplicably, DFP ignores the hearsay objection and instead their motion leaps to
2 the conclusion that the exclusion of the above-mentioned testimony is “prejudicial error.”
3 (Doc. No. 436-1 at 10.) DFP’s reply brief is equally unhelpful as it only argues that Mr.
4 Powers’ statement is not hearsay as DFP only sought to question Mr. Powers as to what he
5 had himself heard. (Doc. No. 473 at 5.) Based off of the record and the question asked by
6 defense counsel, the Court disagrees with DFP’s characterization of their questioning.
7 Accordingly, this argument is dead in its tracks.
8 Further, DFP asserts that Mr. Glanzer’s testimony was improper. (Id.) Specifically,
9 DFP argues that as Mr. Glanzer was able to testify as to why SDCC calls itself “Comic
10 Con,” they to should have been able to present third-party testimony about why they use
11 “Comic Con.” (Id.) However, the Court excluded this testimony. (Id.) Mr. Glazer testified
12 that:
13 Q. In the Mid-1980s, what was the official name of the convention?
A. San Diego Comic Con.
14
Q. In connection with the radio advertising that San Diego Comic Convention
15 did in the Mid-To Late-1980s when you were involved, did you always refer
to your convention as San Diego Comic Con?
16
A. No.
17 Q. How else did you refer to it?
A. Comic Con.
18
Q. Why?
19 Mr. Katz: Objection.
The Court: Overruled.
20
The Witness: Because that’s who we are. I mean, people called us Comic Con.
21 We called ourselves Comic Con. It was Comic Con.
Mr. Katz: Objection. Lacks Foundation.
22
The Court: Overruled. This is within your personal knowledge?
23 The Witness: Oh, Yeah. I mean yes.
24 (Doc. No. 381 at 66:18–67:12.)
25 The record demonstrates that the Court’s so-called “exclusion” of Mr. Solberg was
26 for the following reasons:
27 The Court: No. I think the fact he has adopted that name and has been using
28 it for 15 years in some form or fashion goes to the Defendants’ genericness
12
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1 case, as we stand here today. His whole thought process and so forth--He is
going to say it’s generic, and then we get into this hybrid of expert opinion.
2
So he picked the name, he is using it. That’s good enough.
3 Mr. Veverka: I was going to ask him to list the other comic cons that he is
aware of.
4
The Court: We’ve already done that so many times. Is there something that
5 he can list we haven’t seen on the three lists or heard from the other six or
seven witnesses?
6
Mr. Veverka: I think that he personally attended Chicago Comic Con and
7 Motor City Comic Con when he was a young boy in the ‘90s.
The Court: I don’t see how that is relevant. We all know they are out there.
8
His personal experience really is related to he developed a convention and
9 called it phoenix Comicon, one word . . . other than that, I don’t see a whole
lot of value. A lot of it would be cumulative, or cross into the expert opinions.
10
11 (Doc. No. 398 at 65:10–66:9.)
12 Similar to the arguments above, DFP makes no reference to the reasons Mr.
13 Solberg’s testimony was excluded. Instead, DFP resorts to a legally baseless argument: that
14 since SDCC was allowed to testify about its use of the phrase “Comic Con,” that they
15 should have been able to as well. This argument falls flat when viewed in light of the
16 record. Accordingly, the Court finds no error in excluding certain parts of Mr. Solberg’s
17 testimony based on relevance, lack of foundation, and finding it cumulative. In sum, as a
18 whole, the Court disagrees that it was error for it to exclude testimony relating to
19 competitive third-party use.
20 C. The Expert Linguist Was Properly Excluded
21 DFP also asserts that the Court’s exclusion of expert linguist Jeffrey Kaplan was an
22 abuse of discretion for the following reasons: (1) Mr. Kaplan’s report was reliable; (2) Mr.
23 Kaplan explained his “sound” methodology; and (3) the Court did not support or explain
24 its ultimate conclusion. (Doc. No. 436-1 at 10–15.) SDCC mounts in opposition that Mr.
25 Kaplan was properly excluded while also asserting that DFP’s motion on this point is
26 improper as they have not presented any new evidence and a motion for new trial is not the
27 time to ask the Court to re-litigate old matters. (Doc. No. 467 at 20.) The Court agrees with
28
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1 SDCC and finds this motion is really a motion for reconsideration. Nevertheless, for DFP’s
2 benefit, the Court reiterates why Mr. Kaplan was properly excluded.
3 Federal Rule of Evidence 702 governs the admissibility of expert testimony. It states:
4 [a] witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if: (a)
5
the expert’s scientific, technical, or other specialized knowledge will help the
6 trier of fact to understand the evidence or to determine a fact in issue; (b) the
testimony is based on sufficient facts or data; (c) the testimony is the product
7
of reliable principles and methods; and (d) the expert has reliably applied the
8 principles and methods to the facts of the case.
9 Fed. R. Evid. 702. “The party offering the expert bears the burden of establishing that Rule
10 702 is satisfied.” Sundance Image Tech., Inc. v. Cone Editions Press, Ltd., No. 02 CV 2258
11 JM (AJB), 2007 WL 935703, at *4 (S.D. Cal. Mar. 7, 2007).
12 The first criterion of Section 702 is that the testimony must be based upon “sufficient
13 facts or data[.]” Fed. R. Evid. 702(b). This criterion is generally a “quantitative rather than
14 qualitative analysis” of the quantum of facts or data relied upon by the expert and must be
15 sufficient to support the opinions expressed. See Fed. R. Civ. P. 702 advisory committee’s
16 note to 2000 amendment. “In addition to a sufficient quantity of data, the expert must obtain
17 the right kind of data to support the conclusions drawn.” In re Canvas Specialty, Inc., 261
18 B.R. 12, 20 (C.D. Cal. 2001).
19 The Court first addresses DFP’s assertion that the Court’s criticisms of Dr. Kaplan’s
20 documentary record could not justify exclusion. (Doc. No. 436-1 at 12.) Courts have
21 routinely held that a parties’ involvement in the collection of evidence “impacts the weight
22 of the evidence, but does not render [an] expert opinion inadmissible.” Stone v. Advance
23 Am., 278 F.R.D. 562, 566–67 (S.D. Cal. 2011) (holding that an expert opinion was
24 admissible despite the fact that the plaintiffs’ counsel had extensive involvement in
25 designing the research method that created a simplistic log form). However, DFP ignores
26 the fact that the Court did not simply exclude Mr. Kaplan because the majority of the
27 documents he utilized in his report were provided to him by DFP.
28 Instead, as the Court explicated in its Order, one of the reasons that warranted
14
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1 exclusion was that Mr. Kaplan did not clearly explain the “methodology” he employed to
2 justify his conclusions. DFP claims that Mr. Kaplan’s report is “replete with explanation
3 and justification.” (Doc. No. 436-1 at 14.) For example, DFP points to the following
4 statements:
5 1) “Below I offer linguistic evidence supporting my opinion that the expression
6 ‘comic con’ was generic at the time the above-captioned law suit was filed,
7 and is currently generic[.]” (Doc. No. 114-2 at 127:12–14.)
8 2) “If ‘comic con’ occurs in ways characteristic of common, but not proper,
9 nouns, in the utterances of many ‘speakers,’ that is evidence for the common
10 noun status of ‘comic con.’” (Id. at 129:14–16.)
11 3) “Clippings are coined for economy, in informal speech and writing, when the
12 longer word from which they are reduced is well-known and in frequent use.
13 Sometimes the original word becomes forgotten, with the clipped form
14 effectively replacing it.” (Id. at 133:19–134:2.)
15 4) “Therefore, the capitalization evidence is useful only up to a point. One
16 reliable general rule is that proper nouns must be capitalized. Common nouns
17 generally are not, but there are plenty of exceptions, as well as variation across
18 writers. Given the rule that proper nouns must be capitalized, it is no surprise
19 that the comic con websites, advertising their event by name, all use upper
20 case for ‘Comic Con.’” (Id. at 146:20–24.)
21 From this small sampling, it is clear that Mr. Kaplan defines various rules, makes
22 conclusions, and deduces several factors about common noun status, syntax, and
23 capitalization of common nouns. However, how is the Court to determine that this
24 methodology is sound? Moreover, how is the Court sure that Mr. Kaplan “utilized the
25 methods and methodology that would generally and reasonably be accepted” by experts in
26 trademark infringement cases dealing with genericide? Daubert v. Merrell Dow Pharm.,
27 Inc., 43 F.3d 1311, 1316 (9th Cir. 1995); see also United States v. Amaral, 488 F.2d 1148,
28 1153 (9th Cir. 1973) (explaining that this circuit has outlined four criteria to determine the
15
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1 helpfulness of expert testimony: “1. qualified expert; 2. proper subject; 3. conformity to a

2 generally accepted explanatory theory; and 4. probative value compared to prejudicial
3 effect.”); SMS Sys. Maintenance Servs., Inc. v. Digital Equip. Corp., 188 F.3d 11, 25 (1st
4 Cir. 1999) (“Not only did Dr. Bleuel fail . . . but he failed to explain whether the
5 information-gathering technique used in the DEC documents was valid, whether the data
6 was sufficiently representative to permit him to draw any relevant conclusions, and whether
7 the sampling methodology used to compile these documents corresponded to methods that
8 might be considered legitimate in his discipline.”).
9 Furthermore, though Mr. Kaplan concludes that “Comic-Con” denotes a type and
10 is thus generic, he makes this conclusion without making any explicit reference to the
11 primary significance test. It is without question that the Ninth Circuit employs the primary
12 significance test in determining genericness. Official Airlines Guides, Inc. v. Goss, 6 F.3d
13 1385, 1391 (9th Cir. 1993). Notwithstanding this, Mr. Kaplan’s report states that “plural
14 use of ‘comic con’ is strong evidence” that it is a common noun, the use of “con” to mean
15 “comic con” is strong evidence that use of “comic con” is as a common noun,3 and that
16 comic con being used after “the” to refer uniquely to different comic cons are co-
17 occurrence facts that are substantial evidence for the common noun status of “comic con.”
18 (Doc. No. 91-2 at 9, 13, 19.) As the court in Yellow Cab Co. of Sacramento v. Yellow Cab
19 Co. of Elk Grove, Inc., No. CIV. S-02-0704 FCD DAD, 2006 WL 5516883, at *2 (E.D.
20 Cal. Dec. 11, 2006), stated: “One of the jury’s roles . . . is to determine, from the facts and
21 evidence presented to them, whether the relevant consuming public uses the term [] in a
22 generic sense.” Mr. Kaplan’s conclusions fail to assist the jury in this function.
23 Finally, the “general test for the admissibility of expert testimony is whether the jury
24 can derive ‘appreciable help’ from such testimony. That determination, which necessitates
25 balancing the probative value of the tendered testimony against its potential prejudicial
26

27
3
The Court notes that Mr. Kaplan’s separation of SDCC’s mark “Comic-Con” in his report
28 goes against Ninth Circuit precedent as discussed infra pp. 22–23.
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1 effect, is committed to the broad discretion of the district court[.]” United States v. Turner,
2 528 F.2d 143, 166 (9th Cir. 1975). Mr. Kaplan himself states that the grammatical concepts
3 he uses to analyze the data “are probably familiar to most readers” and that the semantic
4 concepts and terminology are “straightforward.” (Doc. No. 91-2 at 5, 6.) Taking this into
5 consideration, the Court is unsure how his expert report would have been helpful to the
6 jury in determining the primary significance of “comic con” to the relevant public.
7 Additionally, in Mr. Kaplan’s report, the defense had him examine a multitude of media
8 references to comic conventions and then form his personal opinion that “Comic Con” is
9 generic. Those same articles were produced at trial and the jury was asked to do the very
10 same thing that Mr. Kaplan did. Thus, it required no expertise. As Bob Dylan says “you
11 don’t need a weatherman to know which way the wind blows.”
12 In sum, at the outset, Mr. Kaplan’s report is circumspect as he “cannot forgo his own
13 independent analysis and rely exclusively on what an interested party tells him.” Orthoflex,
14 Inc. v. ThermoTek, Inc., 986 F. Supp. 2d 776, 798 (N.D. Tex. 2013). Combining this finding
15 with the fact that Mr. Kaplan’s report fails to reference the primary significance test and
16 that he does not explain how his methodology is generally accepted by professionals who
17 deal with genericide in trademark cases, the Court again concludes that Mr. Kaplan’s report
18 is unreliable. See Munoz v. Orr, 200 F.3d 291, 301–02 (5th Cir. 2000) (“Finally, Dr. Benz
19 relied on the plaintiffs’ compilations of data, which gives rise to a ‘common-sense
20 skepticism’ regarding the expert’s evaluation, and did not seek to verify the information
21 presented to him. Taken cumulatively, the problems with Dr. Benz’ expert evidence
22 indicate that his expert testimony could be unreliable.”).
23 Accordingly, the Court DENIES DFP’s motion for new trial so that genericness be
24 retried with Mr. Kaplan as an expert. See Daubert v. Merrell Dow Pharm., 509 U.S. 579,
25 597 (1993) (“We recognize that, in practice, a gatekeeping role for the judge, no matter
26 how flexible, inevitably on occasion will prevent the jury from learning of authentic
27 insights and innovations.”); see also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152
28 (1999) (“Rather, we conclude that the trial judge must have considerable leeway in
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1 deciding in a particular case how to go about determining whether particular expert

2 testimony is reliable.”); Ellis v. Costco Wholesale Corp., 657 F.3d 970, 982 (9th Cir. 2011)
3 (“A trial court has broad latitude not only in determining whether an expert’s testimony is
4 reliable, but also in deciding how to determine the testimony’s reliability.”); Sargon Enter.,
5 Inc. v. University of S. Cal., 55 Cal. 4th 747, 770 (2012) (“An expert opinion has no value
6 if its basis is unsound. [] Matter that provides a reasonable basis for one opinion does not
7 necessarily provide a reasonable basis for another opinion . . . a court must determine
8 whether the matter that the expert relies on is of a type that an expert reasonably can rely
9 on ‘in forming an opinion upon the subject to which his testimony relates.’”) (internal
10 citation omitted) (emphasis in the original).
11 D. Extensive Media Evidence
12 DFP’s motion takes issue with the Court’s decision to exclude the content of the
13 various news articles they produced at trial to demonstrate that “Comic-Con” is generic.
14 (Doc. No. 436-1 at 15–17.) At trial, only the titles of the articles were allowed to be
15 presented to the jury. (Id.) In opposition, SDCC argues that the evidence was properly
16 excluded under Rule 403. (Doc. No. 467 at 23–25.) Moreover, SDCC highlights that the
17 content of some of those articles contained classic examples of hearsay. (Id.) The Court
18 agrees with SDCC.
19 For clarity, the relevant portions of the record are as follows:
20 1) “Hold on. Objection sustained. His understanding as to the contents is not
21 coming into evidence. It would bring in the hearsay that’s otherwise been
22 ruled out. So we are looking at the effect upon the listener or upon the viewer
23 of how the words comic con were used in the media at the time. To take the
24 exhibit beyond that is not allowable.” (Doc. No. 383 at 7:6–11.)
25 2) “No. You can have the title for its effect upon Mr. Brandenburg at the time he
26 viewed it, and just so we know who’s talking or where it appeared, you can
27 have the publication information. Content of the document is hearsay. And in
28
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1 balance, I find that the contents, whether they may have some relevance, is
2 outweighed by--under Rule 403 so—
3 ...
4 The Court: Yeah, he may be. But he’s not here to testify. He’s not subject to
5 cross-examination. I’m not going to allow this . . . These have a limited
6 purpose for admission and that is effect upon the listener during the time he
7 was considering having his own event as to how the press was conveying
8 comic con, not the interviewees[.]” (Id. at 8:6–25.)
9 In their motion, instead of arguing that a certain exception to hearsay exists that
10 would allow the introduction of their testimony, DFP focuses on arguing that media
11 evidence is particularly strong evidence in support of genericness, that by limiting DFP to
12 news article headlines the “Court left open to inference what the content would have made
13 plain[,]” and that the media articles should have been admitted with redactions. (Doc. No.
14 436-1 at 15–17.) In light of the record, DFP’s arguments are entirely futile. Moreover, the
15 Court notes that DFP provided the jury an assemblage of article titles. (See Trial Exhibits
16 771–807, Doc. No. 392.) Thus, any further news articles would have been cumulative.
17 Accordingly, without more, DFP simply argues that the Court was wrong in its
18 decision while relying on self-serving assumptions and conclusions rather than actual facts
19 supported by evidence. Consequently, DFP’s motion for new trial to admit the contents of
20 the articles is DENIED.
21 E. Genericness Ab Initio Should Not Have Been Introduced as a Defense
22 DFP argues that they should have been able to bring into evidence that “Comic-Con”
23 was used pre-1970s to demonstrate that “Comic Con” is “generic ab initio.” (Doc. No. 436-
24 1 at 19–26.) Explicitly, DFP spends two pages arguing that the Court has changed its
25 treatment and understanding of their generic ab initio defense. (Id. at 17–18.) The Court
26 rejects every argument DFP presents.
27 As an initial matter, the Court elucidates that it has been DFP who has varied their
28 treatment and use of this defense depending on what motions they were opposing or what
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1 evidence they desired to exclude. It is unquestionable that DFP first brought up generic ab
2 initio in their motion for summary judgment as an avenue to dispose of SDCC’s Teflon
3 survey. (See Doc. No. 244 at 23–25 (“But surveys are not needed to determine ‘whether a
4 term was generic before it was applied as a trademark to the products in question’—i.e., in
5 a non-genericide case.”).) Then during motion in limine proceedings, DFP changed course
6 and sought to use their supposed pre-1970s evidence of genericness to argue that the Court
7 should apply no temporal cutoff to genericness evidence or exclude all evidence on post-
8 2013 genericness. (See generally Doc. No. 314-1.) Now, DFP resuscitates this defense to
9 attempt to demonstrate that SDCC never should have gotten trademark rights in “Comic-
10 Con” as the mark was generic before SDCC first used it. (Doc. No. 436-1 at 17–27.)
11 A sampling of the evidence DFP produces in their motion to illustrate that SDCC’s
12 trademarks are “generic ab initio” are: (1) The evidence of the 1964 New York Comicon;
13 (2) that in the 1930s “con” came into use, especially among comic fans; (3) Worldcon
14 which dates back to 1939; (4) SDCC publications that elaborate on the origin of comic
15 cons and that comic con was coined by Bernie Bubnis in 1964; (5) evidence of “fanzines”
16 called “The Comicollector,” “The Comic Reader,” and “Comicdom”; (6) the fanzines that
17 “show that ‘comic con’ was already in circulation within comic fandom as a generic term
18 before SDCC came along.”; (7) A cross-country Greyhound bus called the “Traveling
19 Comicon”; (8) issues of the Comic Reader titled “N.Y. COMIC CON-mitttee REPORT”
20 and “To Be or Not To Be – The Comicon”; (9) an issue of the New Yorker that stated “and
21 it was this organization that sponsored the convention, officially known as the second
22 annual ComiCon, or Con.”; and (10) the Oxford English Dictionary definition of “con”—
23 “among enthusiasts of science fiction and role-playing games: a convention, an organized
24 gathering of people with a shared interest.” (Doc. No. 436-1 at 20–26.)
25 Despite the foregoing, the Court is still unpersuaded that Ninth Circuit precedent
26 allows for a generic ab initio defense to an incontestable trademark. Additionally, even if
27 the defense was proper for trial, the Court again finds that all of the evidence taken together
28 is insufficient.
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1 First, it is not clear in the statute and case law does not demonstrate that “generic ab
2 initio” is a defense to an incontestable trademark registration. In Pods Enterprises, Inc. v.
3 U-Haul Int’l, Inc., No. 8:12-cv-0179-T-27MAP, 2015 WL 1097374, at *3 (M.D. Fla. Mar.
4 11, 2015), the court was presented with the generic ab intio defense. However, though the
5 court in Pods recognized the issue, it also acknowledged the lack of circuit authority. Id. at
6 *2. Ultimately, the court never explored the matter, arguing that even “assuming that an
7 incontestable trademark can be cancelled on the ground it was generic when adopted” the
8 defendant had failed to show that the evidence was legally insufficient for a jury to find for
9 the plaintiff on the issue. Id.
10 At the motion hearing, DFP argued that the statutory interpretation of 15 U.S.C. §
11 1065(4) allows for cancellation of a trademark based on generic ab initio grounds.
12 Specifically, DFP stated that in the case of an incontestable mark, there is a difference in
13 the statutory treatment. (Unofficial Transcript of Motion Hearing at 31:1–3, May 31, 2018.)
14 According to DFP, subdivision four prevents a generic ab initio mark from becoming
15 incontestable to begin with. (Id. at 31:4–10.) Explicitly, DFP represented to the Court that
16 § 1064 “allows for cancellation of a mark, quote, at any time if the registered mark becomes
17 the generic name for the goods or services[.]” (Id. at 30:15–17.)
18 DFP mischaracterizes subdivision four of § 1065. Subdivision four states that “no
19 incontestable right shall be acquired in a mark which is the generic name for the goods or
20 services or a portion thereof, for which it is registered.” 15 U.S.C. § 1065(4). Thus, despite
21 DFP’s assertions, the statute does not make a distinction between genericness and generic
22 ab initio. Instead the statute simply repeats the well-established tenet that a trademark
23 cannot become incontestable if it is the generic name for the goods or services.
24 Next, the most crucial defect is that DFP’s pre-1970s evidence is neither relevant
25 nor sufficiently demonstrates generic ab initio. What the Court finds most unavailing is
26 that the evidence does not illustrate that a consumer seeing the mark “Comic-Con” in the
27 1960s would have thought that the trademark described a comic-convention—specifically
28 a convention that resembles the nature of SDCC’s “Comic-Con” brand. Instead, DFP
21
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1 endeavors to divert the Court’s attention to events called “Comicon,” “Comicdom,”

2 “Traveling Comicon,” and the 1968 New York Comicon. (Doc. No. 436-1 at 23–25.)
3 However, though these phrases closely mirror the trademark at issue in this case, they do
4 not demonstrate that “Comic-Con” was generic pre-1970. Moreover, DFP fails to provide
5 any case law to successfully argue that a trademark may be deemed generic based on marks
6 that closely resemble the trademark at issue. See Pods Enter., 2015 WL 1087374, at *3
7 (“Particularly relevant evidence to claims of genericness ab initio includes dictionary
8 definitions and usage of the term by the media, industry, competitors, and holder of the
9 mark.”) (emphasis added).
10 Furthermore, DFP advances this assertion based on a fundamental misunderstanding
11 of trademark law. In the Ninth Circuit, when making a genericism analysis, the court should
12 look at the entire mark rather than dissecting it into its smaller parts. See Filipino Yellow
13 Pages, Inc. v. Asian Journal Publ’ns., Inc., 198 F.3d 1143, 1149–50 (9th Cir. 1999); see
14 also Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 18–19 (1st Cir. 2008)
15 (holding that a “complete phrase may signify something different than the sum of its
16 parts[,]” thus, the district court erred by focusing on the separate terms “duck” and “tours”
17 and not the entire phrase together); Alpha Indus., Inc. v. Alpha Steel Tube & Shapes, Inc.,
18 616 F.2d 440, 444 (9th Cir. 1980). Thus, DFP’s evidence that demonstrates that “con” was
19 used pre-1970s to refer to conventions is unconstructive within the context of this case.
20 DFP briefly claims that the Ninth Circuit expressly approves the use of dictionary
21 definitions of “component parts of the mark.” (Doc. No. 436-1 at 27.) However, DFP again
22 sifts out and hand-picks statements from cases that benefit them without reading the entire
23 case. In Advertise.com, Inc. v. AOL Advertising, Inc., 616 F.3d 974, 977 (9th Cir. 2010),
24 the case DFP cites to, DFP is correct that the court stated that “we are permitted to begin
25 our inquiry by separately viewing the component parts of the mark.” However, the Ninth
26 Circuit emphasized that the inquiry does not end there. Instead “our cases establish that we
27 look to the mark as a whole and that the combination of generic terms may, in some
28 instances, result in a distinctive mark.” Id. at 978. Thus, in the instant case, DFP’s assertion
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1 that the component parts of “Comic-Con” illustrates that the mark is generic goes against
2 clear Ninth Circuit precedent.
3 Furthermore, though the presence or absence of a word in the dictionary, and its
4 corresponding meaning(s), is evidence of how the public perceives a term, see Surgicenters
5 of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1015 n.11 (9th Cir. 1979), it is
6 only one of many factors to consider. The touchstone of the analysis remains the phrase’s
7 primary significance to the relevant public.
8 On a final note, the Court addresses DFP’s claims that the Court’s decision during
9 motion in limine not to admit some of their pre-1970s evidence was in error. (Doc. No.
10 436-1 at 26.) Specifically, DFP takes issue with the Court’s statement that “somebody with
11 personal knowledge as to the methodology in collecting this, or the author or the
12 spokesperson” was needed. (Id.)
13 The Court’s entire statement during motion in limine was:
14 Mr. Sears: The point is that the only evidence of usage among the relevant
public in the 1960s is what we’ve put forward. So being told that because there
15
is not more evidence--because plaintiffs have not put forward any evidence,
16 we may not put in what evidence is available does not seem to be the right
result, your honor. We do have evidence of how the relevant public was using
17
the terminology in the 1960s. The jury should be allowed to see it.
18 The Court: The problem is it’s not going to get allowed unless we have
somebody with personal knowledge as to the methodology in collecting this,
19
or the author or the spokesperson. We are not just going to give them the
20 magazines and say read. I can tell you that on motion in limine number
whatever.
21
Ancient documents isn’t an admissions. It’s an authentication issue. And
22 you’ve got all the other rules of evidence. And if you want to debate that, we’ll
certainly do it.
23
...
24 I find that the whole business of the several events in the ‘60s, people’s
comments about them in periodicals and so forth, is likely to cause confusion
25
on the issues, take up undue time and has little relevance when we start to look
26 at the efforts comic con San Diego made to get the comic con secondary
meaning they believe they have. And that the PTO or the trademark arm of
27
that has now allowed registration for--in four separate iterations.
28
23
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1 (Doc. No. 514 at 32:18–35:7.) Thus, in light of the record, the Court rejected the statements
2 based on Federal Rules of Evidence 402, 403, 901, and hearsay.
3 In sum, despite DFP’s efforts to ask this Court to reconsider its previous rulings
4 under the guise of a motion for new trial, the Court is yet again unpersuaded that “generic
5 ab intio” should have been a defense brought to trial. Thus, the Court DENIES DFP’s
6 motion for new trial in this respect.
7 F. SDCC Did Not Provide a False and Legally Flawed Narrative
8 DFP endeavors to argue that SDCC cultivated a “fiction” that it had been the first to
9 use “comic con” and that SDCC then gave “comic con” meaning through decades of
10 investment. (Doc. No. 436-1 at 27–29.)
11 SDCC’s statement that DFP attaches to is:
12 Mr. Glanzer, Ms. Desmond, Mr. Rogers, and thousands upon thousands of
employees and volunteers, spanning four decades, have invested their time,
13
their talent, their hearts, and their souls building a brand that even 25 years
14 ago people knew relatively nothing about: comic con.
15 (Id. at 28.)
16 The Court need not waste much time on this argument. The record does not illustrate
17 that SDCC stated that it coined “Comic Con” or that it was the first to use the phrase. All
18 the Court has is DFP’s belief that SDCC “cultivated the fiction that it had been the first to
19 put on a comic con[.]” (Doc. No. 436-1 at 27–28.) This is rank speculation. Moreover,
20 DFP’s assertion that their pre-1970s evidence demonstrates that “Comic Con” was already
21 known to the relevant public is diametrically erroneous as already discussed supra pp. 20–
22 23. Consequently, DFP’s motion for new trial based on SDCC’s purportedly false narrative
23 is DENIED.
24 G. The Jury’s Validity Verdict is Not Against the Weight of the Evidence
25 DFP spends one paragraph arguing that their evidence of third-party use
26 demonstrates that the jury verdict is against the weight of the evidence. (Doc. No. 436-1 at
27 29.) Thus, genericness should be retried. (Id.) However, DFP bases this argument on a
28 distortion and misunderstanding of the cases they cite to. The Court illustrates that in each
24
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1 case utilized by DFP, evidence of competitor use was but one factor in the court’s final
2 conclusion. See Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974–76 (8th Cir. 2006)
3 (looking to competitors’ use of the term “Brick Oven” and the use by media and restaurants
4 to analyze genericness of the phrase); see also CG Roxanne, 569 F. Supp. 2d at 1026–30
5 (looking to competitors’ use, usage by the press and media, and the trademark holder’s
6 own use of the mark in concluding that “bottled at the source” is generic); Classic Foods
7 Int’l Corp. v. Kettle Foods, Inc., 468 F. Supp. 2d 1181, 1189–90 (C.D. Cal. 2007) (looking
8 to the media’s treatment of a mark, extensive newspaper and magazine usage, use of the
9 term by competitors, and opinions of leaders in the industry to determine that “Kettle” is a
10 generic term).
11 Accordingly, without more, the Court disagrees that the jury’s validity verdict is
12 against the weight of the evidence—especially in light of SDCC’s Teflon Survey that
13 demonstrated that over 80% of consumers believed that “Comic Con” is a brand. (Doc. No.
14 468 at 11.) Thus, the Court DENIES DFP’s motion for new trial on validity. See Molski,
15 481 F.3d at 729 (holding that a motion for new trial should be granted if there is “absolute
16 absence of evidence to support the jury’s verdict . . . .”) (citation omitted).
17 H. Infringement Should Not be Retried
18 Defendants spend a paragraph arguing that infringement should be retried if validity
19 is retried. (Doc. No. 436-1 at 30.) Consequently, as the Court is denying DFP’s motion for
20 new trial based on validity, it also DENIES DFP’s motion for new trial as to infringement.
21 CONCLUSION
22 In sum, the Court finds that the verdict is not against the clear weight of the evidence,
23 there were no errors in rejection of evidence, and no errors in the instructions given to the
24 jury. Accordingly, DFP’s motion for new trial is DENIED in its entirety.
25 IT IS SO ORDERED.
26 Dated: August 23, 2018
27
28
25
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1
2
3
4
5
6
7
10
12
Plaintiff, ORDER GRANTING IN PART AND
13 DENYING IN PART PLAINTIFF’S
v. MOTION FOR PERMANENT
14
DAN FARR PRODUCTIONS, a Utah INJUNCTION
15 limited liability company, DANIEL
16 FARR, an individual, BRYAN (Doc. No. 419)
17
Defendants.
18
19
Trademarks function as roadmaps for consumers. In essence, whether they are
20
symbols, slogans, designs, words, or a combination of elements, their vital function is to
21
help companies distinguish their goods and services from others. In 2014, in an attempt to
22
protect its three incontestable trademarks filed with the United States Patent and Trademark
23
Office, Plaintiff San Diego Comic Convention (“SDCC”) filed a complaint against
24
Defendants Dan Farr Productions, Daniel Farr, and Bryan Brandenburg (collectively
25
referred to as “DFP”) alleging trademark infringement and false designation of origin.
26
Three years of litigation later, and after an eight-day jury trial, a jury concluded that SDCC
27
has three valid protectable trademarks and that DFP had infringed on each. As a result,
28
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1 SDCC now moves for a permanent injunction. (Doc. No. 419.) DFP opposes the motion.
2 (Doc. No. 513.) On May 31, 2018, the Court held a hearing on the matter and then took the
3 motion under submission. (Doc. No. 504.) As will be explained in greater detail below,
4 SDCC’s request for a permanent injunction is GRANTED IN PART AND DENIED IN
5 PART.
6 DISCUSSION
7 Based on the trademark infringement verdict in its favor, SDCC requests that this
8 Court issue an injunction on the following matters1:
9 1. An Order enjoining Defendants from any use of SDCC’s three
trademarks asserted in this case, or any marks confusingly similar thereto
10
including, but not limited to, any mark that consists of or incorporates the
11 specific word combinations “Comic Con,” “Comic-Con,” “Comicon,” or
“Comic Convention” or the phonetic equivalents of such specific word
12
combinations, in the name of any comic or popular arts convention or in
13 connection with the promotion or for the purposes of promoting, advertising
or marketing any comic or popular arts convention;
14
2. An Order directing Defendants to immediately destroy all merchandise
15 and all marketing materials bearing the specific word combinations “Comic
Con,” “Comic-Con,” “Comicon,” or “Comic Convention” or the phonetic
16
equivalents of such specific word combinations in the name of any comic or
17 popular arts convention;
3. An Order enjoining Defendants from the use or operation of any
18
website domain name or URL that consists of or incorporates the specific
19 word combinations “Comic Con,” “Comic-Con,” “Comicon,” or “Comic
Convention” or the phonetic equivalents of such specific word combinations;
20
and
21 4. An Order enjoining Defendants from the use or operation of any social
media site that consists of or incorporates the specific word combinations
22
“Comic Con,” “Comic-con,” “Comicon,” or “Comic Convention” or the
23 phonetic equivalents of such specific word combinations in the name of any
comic or popular arts convention.
24
25
26 1
The three incontestable trademarks at issue in this case are: (1) Comic-Con; (2) Comic
27 Con International; and (3) the Comic Con International mark with the eye logo design.
(Doc. No. 392 at 6.)
28
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1 (Doc. No. 419-1 at 10–11.)

2 In opposition, DFP asserts that an injunction would serve no purpose in this matter
3 as they have already rebranded their event “FanX Salt Lake Comic Convention” and they
4 do not intend to use “Salt Lake Comic Con” in the future. (Doc. No. 513 at 5.) Moreover,
5 DFP argues that SDCC’s proposed injunction is altogether too broad. (Id.)
6 Under the Lanham Act, “the district court [has] the ‘power to grant injunctions
7 according to principles of equity and upon such terms as the court may deem reasonable,
8 to prevent the violation of any right’ of the trademark owner.” Reno Air Racing Ass’n, Inc.
9 v. McCord, 452 F.3d 1126, 1137 (9th Cir. 2006) (citing 15 U.S.C. § 1116(a)). In fact,
10 “[i]njunctive relief is the remedy of choice for trademark and unfair competition cases,
11 since there is no adequate remedy at law for the injury caused by a defendant’s continuing
12 infringement.” Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir.
13 1988).
14 In order for the Court to grant a permanent injunction, SDCC must demonstrate “(1)
15 actual success on the merits; (2) a likelihood of irreparable injury if injunctive relief is not
16 granted; (3) a balance of hardships favoring Plaintiff; and (4) that an injunction will
17 advance the public interest.” Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072,
18 1084 (C.D. Cal. 2012).
19 As an initial matter, the Court wishes to address four particular arguments made by
20 DFP in their opposition brief: (1) that there is currently no threat of harm for an injunction
21 to prevent; (2) their discontinuance of “Salt Lake Comic Con” is effective; (3) that DFP
22 has a good faith intent not to resume use of “Salt Lake Comic Con;” and (4) no injunction
23 should be entered because no proper scope can be fixed. (Doc. No. 513 at 6–10.)
24 As to the first three arguments, the Court finds them wholly unpersuasive. DFP cites
25 to various Supreme Court cases to support their belief that an injunction should not be
26 issued as there is no future threat of trademark infringement due to their decision to change
27 the name of their event. (Id. at 6.) However, the two cases DFP cites to are factually
28 inapplicable. In Dombrowsi v. Pfister, 380 U.S. 479, 481 (1965), the Supreme Court was
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1 analyzing the applicability of an injunction related to the Civil Rights Act. Similarly, in
2 United States v. W.T. Grant Co., 345 U.S. 629, 630–31 (1953), the Supreme Court was
3 presented with a civil action brought by the government to enjoin violations of the Clayton
4 Act prohibitions against interlocking corporate directories. Neither of the two cases cited
5 by DFP dealt with permanent injunctions in the context of trademark infringement.
6 Moreover, DFP provides no case law from this circuit or from other circuits that
7 demonstrates that their “good faith intent” not to use SDCC’s trademarks is a factor the
8 Court should take into consideration in determining whether an injunction is warranted.
9 The Court reiterates that injunctions are the primary and most favored form of relief for
10 trademark infringement cases and this circuit has delineated four very specific factors,
11 listed supra p. 3, courts must analyze in these contexts. Wecosign, Inc., 845 F. Supp. 2d at
12 1083 (citation omitted). Thus, the majority of the Court’s analysis will focus on these four
13 elements.
14 Finally, DFP’s contention that no “proper scope can be fixed” and thus no injunction
15 can be issued is meritless. (Doc. No. 513 at 9–10.) DFP injects into this section their own
16 beliefs about how SDCC “pursued a mishmash of infringement theories” and as a result “it
17 is impossible to tell what the jury thought DFP had done wrong.” (Id.) However, DFP’s
18 personal opinions on how SDCC prosecuted this matter does not convince this Court that
19 an injunction is unjustified.
20 Now, turning to the merits of SDCC’s motion, the Court finds that SDCC’s proposed
21 injunction may be classified into three broad classes: (1) an injunction to bar DFP from use
22 of the phrases “Comic Con” or “Comic-Con”; (2) an injunction to prevent DFP’s use of
23 Comic-Con’s phonetic equivalents or any confusingly similar phrases; and (3) an
24 injunction to block DFP from use of the phrase “Comic Convention.” (Doc. No. 419-1 at
25 10–11.) This Order will thus proceed by analyzing each of the following categories
26 individually to determine if an injunction should issue.
27 ///
28 ///
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1 A. A Permanent Injunction as to the Phrases “Comic Con” or “Comic-Con”

2 All four of the abovementioned factors weigh in favor of enjoining DFP from use of
3 “Comic-Con” and “Comic Con” in the name of any comic or popular arts event.
4 As to the first element, as already discussed, a jury found that all three of SDCC’s
5 trademarks were valid and that DFP had infringed on all of them. (Doc. No. 395 at 2–5.)
6 This jury verdict could not be a clearer indicator of SDCC’s likelihood of success on the
7 merits of its trademark infringement claim.
8 Second, SDCC has demonstrated that it will suffer “actual irreparable harm” if DFP
9 chooses to use “Comic-Con” or “Comic Con” in the name of any present or future comic
10 arts or popular fiction events. See Herb Reed Enter., LLC v. Florida Entm’t Mgmt., Inc.,
11 736 F.3d 1239, 1249 (9th Cir. 2013) (detailing that following two Supreme Court cases—
12 eBay and Winter—the Ninth Circuit has held that “actual irreparable harm must be
13 demonstrated to obtain a permanent injunction in a trademark infringement action.”); see
14 also Amoco Prod. Co. v. Village of Gambell, AK, 480 U.S. 531, 546 n.12 (1987)
15 (explaining that the standard for a preliminary injunction is essentially the same as a
16 permanent injunction except that “likelihood of” is replaced with “actual”).
17 At trial, SDCC produced evidence that demonstrated that DFP’s use of “Comic Con”
18 in their event name had resulted in SDCC suffering from loss of goodwill and a potential
19 inability to control its reputation. (Doc. No. 419-1 at 4.) This was supported by testimony
20 from consumers who thought that DFP’s convention was related to SDCC’s event, that
21 consumers voiced complaints about DFP’s convention to SDCC, and that DFP was aware
22 of 30 to 50 instances of confusion. (Id.; Doc. No. 383 at 118:12–119:1; Tr. Exs. 3, 64, 65,
23 73A, 73B, 73C.) Moreover, the jury’s trademark infringement verdict in favor of SDCC
24 further supports a finding of irreparable harm. See Metro Pub., Ltd. v. San Jose Mercury
25 News, 987 F.2d 637, 640 (9th Cir. 1993), abrogated on other grounds by Roe v. Anderson,
26 134 F.3d 1400 (1998) (“Once the plaintiff has demonstrated a likelihood of confusion, it is
27 ordinarily presumed that the plaintiff will suffer irreparable harm if injunctive relief is not
28 granted.”). Thus, this second factor is satisfied.
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1 Third, the balance of hardships tips in SDCC’s favor as there will be no harm to DFP
2 as an “injunction would merely require [DFP] to comply with the law.” City of Carlsbad
3 v. Shah, 850 F. Supp. 2d 1087, 1113 (S.D. Cal. 2012); see also Polo Fashions, Inc. v. Dick
4 Bruhn, Inc., 793 F.2d 1132, 1135–36 (9th Cir. 1986) (“If the defendants sincerely intend
5 not to infringe, the injunction harms them little; if they do, it gives [the trademark holder]
6 substantial protection of its trademark.”).
7 Moreover, DFP’s event only began in 2013, whereas SDCC has been using the mark
8 for over forty-five years. (Doc. No. 96 ¶ 8; Doc. No. 99-1 ¶¶ 4–5.) Consequently, an
9 injunction asking DFP to change the name of their event would be easier and less injurious
10 than requiring SDCC to do so. In fact, as DFP persistently highlights, after the jury trial,
11 they started the process of changing their event name and as far as the Court can see, the
12 process has been completed.2 See Amoco Prod. Co., 480 U.S. at 542 (explaining that before
13 issuing an injunction order, courts must weigh “the competing claims of injury and []
14 consider the effect on each party of the granting or withholding of the requested relief.”).
15 Accordingly, the balance of hardships does not just tip, but nosedives in favor of SDCC.
16 Fourth, an injunction is in the public interest because “[t]he public has an interest in
17 avoiding confusion between two companies’ products.” Internet Specialties West, Inc. v.
18 Milon-DiGiorgio Enters., Inc., 559 F.3d 985, 993 n.5 (9th Cir. 2009); see also State of
19 Idaho Potato Comm’n v. G & T Terminal Packaging, Inc., 425 F.3d 708, 715 (9th Cir.
20 2005) (“Trademarks protect the public from confusion by accurately indicating the source
21 of a product.”); Moroccanoil, Inc. v. Zotos Int’l, Inc., 230 F. Supp. 3d 1161, 1178 (C.D.
22 Cal. 2017) (noting that as there were “serious questions as to whether consumers [were]
23 likely [to] be confused between the products, the public interest factor weigh[ed] in favor
24 of issuing an injunction.”).
25

26
2
27 The Court takes judicial notice of DFP’s FanX Salt Lake Comic Convention website.
FANX SALT LAKE COMIC CONVENTION, http://www.fanxsaltlake.com (last visited July 9,
28 2018).
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1 Consequently, as to the phrases “Comic-Con” and “Comic Con,” the Court without
2 hesitation concludes that DFP should be enjoined from using these phrases in the name of
3 any comic arts or popular fiction events they produce.
4 B. A Permanent Injunction as to the Phonetic Equivalents of Comic-Con and Any
5 Confusingly Similar Marks
6 Through the use of the “safe distance rule,” SDCC argues that DFP should be
7 enjoined from using the phonetic equivalents of its trademarks. (Doc. No. 419-1 at 10–11.)
8 DFP makes no explicit argument against this request, but in general argues that the
9 proposed injunction is too broad. (Doc. No. 513 at 10.)
10 “[A]n infringer must keep a fair distance from the ‘margin line[]’” of a trademark.
11 Wolfard Glassblowing Co. v. Vanbragt, 118 F.3d 1320, 1323 (9th Cir. 1997). Specifically,
12 [A trademark infringer] should have its conduct carefully scrutinized in future
use and should not be allowed to claim the same leniency accorded a good
13
faith user who starts use of the mark which the enjoined defendant has shifted
14 to. Otherwise, the enjoined defendant could simply make a tiny change and
start a new trademark contest all over again in the context of the contempt
15
hearing as to the use of the “new” format.
16
17 Id. (citing McCarthy on Trademarks § 30.13[1] (1996)). Utilizing this standard, the Court
18 finds that a permanent injunction enjoining DFP from using any phonetic equivalents of
19 “Comic-Con” such as “Comicon” or “ComiKon” or any confusingly similar phrase is
20 warranted.
21 As already noted, an injunction in a trademark infringement case is meant to prevent
22 irreparable harm to the plaintiff. See Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1123
23 (9th Cir. 2014). Here, if DFP were allowed to produce a new comic or popular arts event
24 named “ComiKon” or “ComicKon,” as the pronunciation of the phrases remain identical
25 to SDCC’s trademarks, a high likelihood of consumer confusion would still exist. See
26 Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1150 (9th Cir.
27 2011) (holding that the similarity of two marks can be tested on three levels: “sight, sound,
28
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1 and meaning.”);3 see also Hanginout, Inc. v. Google, Inc., 54 F. Supp. 3d 1109, 1126–27
2 (S.D. Cal. 2014) (finding the marks HANGINOUT and HANGOUTS slightly similar);
3 Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486, 491–92 (2d Cir. 1988) (finding
4 a likelihood of confusion between B WEAR and BEE WEAR for women’s clothing);
5 Baker v. Simmons Co., 307 F.2d 458, 464–65 (1st Cir. 1962) (finding SIMMONS and
6 SIMMONDS essentially identical in sound). Thus, injury to SDCC could still occur.
7 Consequently, as DFP was found by the jury to be infringers of SDCC’s trademarks,
8 they are required to “keep a safe distance away from the margin line.” Plough, Inc. v. Kreis
9 Laboratories, 314 F.2d 635, 639 (9th Cir. 1963) (citation omitted). Thus, DFP is enjoined
10 from use of any phonetic equivalent of SDCC’s trademarks or any confusingly similar
11 marks in a comic or popular arts event or convention name. See Wolfard Glassblowing Co.,
12 118 F.3d at 1322 (“When enforcing injunctions that enjoin use of any mark confusingly
13 similar to the protected mark, courts should . . . simply evaluate whether or not the new
14 mark is confusingly similar to the protected mark . . . .”); see also Serv. Ideas, Inc. v. Traex
15 Corp., 846 F.2d 1118, 1124 (7th Cir. 1988) (explaining that a district court has “substantial
16 discretion to determine how close [is] ‘too close . . . .’”).
17 C. An Injunction as to the Phrase “Comic Convention”
18 SDCC also requests that the Court dictate that DFP be prohibited from using “Comic
19 Convention” in their event name or any related comic or popular arts convention. (Doc.
20 No. 419-1 at 10–11.) In opposition, DFP argues that SDCC cannot credibly deny that comic
21 “convention” is generic. (Doc. No. 513 at 10.) Moreover, DFP contends that restraining
22 them from using the phrase “comic convention” would make the injunction overbroad as
23 well as prohibit them from engaging in legal conduct. (Id. at 11.) The Court agrees with
24 DFP.
25

26
3
27 The Court notes that the jury instructions in this case repeated this standard—“Similarities
in appearance, sound or meaning weigh more heavily than differences in finding the marks
28 are similar.” (Doc. No. 394 at 23–24.)
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1 Turning to the four criterion delineated supra p. 3, SDCC has not demonstrated the
2 likelihood that it can succeed on a claim of trademark infringement against DFP for the use
3 of “comic convention” in their event name. See GoTo.com, Inc. v. Walt Disney Co., 202
4 F.3d 1199, 1205 (9th Cir. 2000) (“[M]ore precisely, because we are at the preliminary
5 injunction stage, [a plaintiff] must establish that it is likely to be able to show… a likelihood
6 of confusion.”) (citation omitted). Nor has SDCC produced evidence that it has suffered
7 “actual harm” by DFP’s use of “Comic Convention.” Further, the Court is not persuaded
8 that the balance of hardships tips in SDCC’s favor or that an injunction will advance the
9 public interest. SDCC does not own the trademark to “Comic Convention” and competitors
10 in this industry should be allowed to use the word “convention.” See Retail Servs., Inc. v.
11 Freebies Publ’g, 364 F.3d 535, 538 (4th Cir. 2004), abrogated on other grounds by
12 Verisign, Inc. v. XYZ.COM LLC, 891 F.3d 481 (2018) (“From a policy standpoint . . . if a
13 business were permitted to appropriate a generic word as its trademark, it would be difficult
14 for competitors to market their own brands of the same product. Imagine being forbidden
15 to describe a Chevrolet as a ‘car’ or an ‘automobile’ . . . .”) (citation and internal quotation
16 marks omitted).
17 On a final note, the Court highlights that during opening statements at trial, SDCC
18 stated that it had suggested that DFP just name their convention “Salt Lake Comic
19 Convention.” (Doc. No. 381 at 24:23–25.) Post-trial and post-verdict, DFP did exactly what
20 SDCC asked. However, paradoxically, SDCC now requests this Court enjoin them from
21 use of “convention” in any event name. The Court refrains from doing so.
22 In sum, SDCC has produced no evidence to suggest that a permanent injunction
23 enjoining DFP from use of “comic convention” in their event name is justified.
24 Furthermore, the Court is not persuaded that prohibiting DFP from using “convention” in
25 their event name would be a fair application of the “safe distance rule.” See Forever 21,
26 Inc. v. Ultimate Offprice, Inc., No. 2:10-cv-05485-ODW (JCGx), 2013 WL 4718366, at *3
27 (C.D. Cal. Sept. 3, 2013) (explaining that the margin line requirement “exists to protect the
28 plaintiff from the scenario where the enjoined infringer makes an insignificant change[,]”
9
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1 however “the infringer is not required to stay so far away from the margin line that it is put
2 out of business.”). Thus, this request is DENIED.
3 D. Remaining Issues
4 i. Destruction Order
5 SDCC’s proposed injunction also requests that DFP destroy all of their merchandise
6 and all marketing materials bearing the specific word combinations “Comic Con,” “Comic-
7 Con,” or any phonetic equivalents. (Doc. No. 419-1 at 11.) DFP argues that they should
8 not be required to destroy their “historical archive” that includes “archival materials” from
9 their past nine shows. (Doc. No. 513 at 15.) Moreover, DFP contends that if an injunction
10 is to be issued, any order requiring destruction of merchandise or advertising materials
11 would be punitive. (Id.) The Court partially agrees with DFP, but only under a narrow set
12 of circumstances.
13 First, DFP is correct that “[i]t has been held that where an injunction is issued under
14 the Lanham Act enjoining an infringer from further infringement, the rights of the plaintiff
15 are adequately protected and an order requiring destruction of infringing articles, though
16 permitted may be unnecessary.” Kelley Blue Book v. Car-Smarts, Inc., 802 F. Supp. 278,
17 293 (C.D. Cal. 1992). Here, DFP’s decision to change the name of their event indicates to
18 the Court that SDCC will not suffer any future harm as a result of DFP retaining their
19 “historical archive” of T-shirts and marketing materials. However, this finding is based on
20 the idea that DFP is not planning on selling infringing goods at any future FanX events or
21 employing archival materials in their advertisements, products or marketing brochures and
22 flyers. Consequently, so long as DFP simply wishes to maintain their “historical archive,”
23 but not sell, distribute, reproduce, republish, or make any commercial use of any of these
24 “archival materials,” the Court finds a destruction order is unnecessary. If, on the other
25 hand, there is any plan or potential future sale, distribution, reproduction, republication, or
26 commercial use, then they must be destroyed consistent with this Order.
27 ///
28 ///
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1 ii. DFP’s Forwarding Address

2 Additionally, SDCC asks that DFP cease use or operation of any website domain
3 name or URL that consists of or incorporates “Comic Con” or its phonetic equivalents.
4 (Doc. No. 419-1 at 11.) DFP asserts that they should not be deprived of their forwarding
5 address, www.saltlakecomiccon.com. (Doc. No. 513 at 12.) The Court notes that as of the
6 date of this Order, DFP’s website domain name is www.fanxsaltlake.com. FANX SALT
7 LAKE COMIC CONVENTION, http://www.fanxsaltlake.com (last visited July 6, 2018). There
8 is no issue with this domain name, but the forwarding address is problematic.
9 Registration of a domain name without more does not constitute service mark or
10 trademark infringement. See Brookfield Commc’ns, Inc., 174 F.3d at 1052. Thus, domain
11 names present a unique problem under the Lanham Act as they “are used for both a non-
12 trademark technical purpose, to designate a set of computers on the Internet, and for
13 trademark purposes, to identify an Internet user who offers goods or services on the
14 Internet.” Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956 (C.D.
15 Cal. 1997). When a domain name is used only to indicate an address on the Internet, the
16 domain name is not functioning as a trademark. See Walt-West Enters., Inc. v. Gannett Co.,
17 Inc., 695 F.2d 1050, 1059–60 (7th Cir. 1982). On the other hand, under certain
18 circumstances, domain names can function as trademarks, and therefore can be used to
19 infringe trademark rights. See Lockheed Martin Corp., 985 F. Supp. at 956.
20 To guide its analysis, the Court turns to GoPets Ltd. v. Hise, 657 F.3d 1024, 1035
21 (9th Cir. 2011). In GoPets, the Ninth Circuit dictated that a defendant must do something
22 more than simply register the domain name for the domain name to violate the Lanham
23 Act. Id. at 1035. Thus, in this case, when the defendant’s website falsely indicated that it
24 was “GoPets.com the official online website,” the court found that the district court had
25 properly held that “in so doing the [defendants] violated the Lanham Act.” Id.
26 Thus, at issue here is whether DFP’s use of www.saltlakecomiccon.com as a
27 forwarding address is an action that constitutes something more than registration. In this
28 instance, while recognizing that mere registration of a domain name is not sufficient to
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1 constitute a Lanham Act violation, the Court finds that DFP’s use of SDCC’s trademark
2 “comic con,” in its forwarding address, infringes SDCC’s trademark rights.
3 First, DFP has not simply registered a domain name. Here, the infringing domain
4 name acts beyond the registration and instead directs, steers, and points a consumer to
5 DFP’s comic arts and popular fiction event—FanX Salt Lake Comic Convention. It is
6 without a doubt that a side effect of this forwarding address, especially in this case where
7 SDCC and DFP’s events are nearly identical, is consumer confusion.
8 DFP vehemently argues that by stripping them of their forwarding address, the Court
9 will impair the public interest by making it more difficult for their fan base to locate their
10 website. (Doc. No. 513 at 13.) Unfortunately, DFP must be mistaken as to what constitutes
11 “public interest.” As far as the Court is concerned, there is no public interest in making it
12 easier for a fan to find a business and even if there was, SDCC’s public interest in diffusing
13 consumer confusion would outweigh the public interest DFP asserts here. Moreover, the
14 Court finds this argument bizarre considering the capability and capacity of the internet
15 and search engines such as Google.com.
16 Furthermore, the Court disagrees that just because there is no affiliation with SDCC
17 on DFP’s new FanX website that consumer confusion will not occur. In contrast, the Court
18 can hypothesize a scenario where a consumer, unaware about this litigation, types
19 www.saltlakecomiccon.com into the search bar, gets re-directed to www.fanxsaltlake.com,
20 and due to the automatic action of the forwarding address, believes that FanX is associated
21 with SDCC.
22 On a final note, the Court finds that DFP has mischaracterized Toyota Motor Sales,
23 U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1179 (9th Cir. 2010). DFP employs Tabari to argue
24 that their forwarding address should be treated as a registration. (Doc. No. 513 at 12–13.)
25 However, DFP fails to recognize or chooses to ignore that the portion of Tabari they cite
26 to involves an analysis of the nominative fair use defense. This is not the task before the
27 Court nor has DFP explicitly brought or argued this defense.
28
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1 In light of all of these factors, the Court enjoins DFP from the use of their forwarding
2 address www.saltlakecomiccon.com. Moreover, DFP is further enjoined from using,
3 creating, or operating a website domain name or URL that feigns a relationship with SDCC
4 through the use of SDCC’s three trademarks asserted in this case, “Comic Con,” its
5 phonetic equivalents, or any confusingly similar mark. See Planned Parenthood Fed’n of
6 Am., Inc. v. Bucci, No. 97 Civ. 0629 (KNW), 1997 WL 133313, at *6 (S.D.N.Y. 1997)
7 (holding that the defendant did “more than merely register a domain name; he created a
8 home page that uses plaintiff’s mark as its address, conveying the impression to Internet
9 users that plaintiff is the sponsor of defendant’s web site.”).
10 iii. Use of the “Formerly Known As” Reference
11 Finally, DFP requests that if an injunction is to be issued, they should be allowed to
12 identify their event as “Formerly Salt Lake Comic Con” for up to two years. (Doc. No. 513
13 at 13–14.) SDCC asserts that the “formerly known” reference presents the same dangers as
14 infringement. (Doc. No. 470 at 6.)
15 To support their demand, DFP resorts to philosophical arguments that try to shine
16 light on the fact that SDCC did not sue DFP for using “Comic Con” in reference to other
17 conventions and that DFP principals visit and interact with other conventions. (Doc. No.
18 513 at 13–14.) These arguments not only miss the mark, but are also altogether confusing.
19 Looking to prevalent and applicable case law from this district, it has been held that
20 “[p]recluding defendant from referencing its past affiliation with plaintiff in a manner that
21 causes consumers to be misled or confused about the origin of defendant’s services or its
22 association with plaintiff serves the key objective of the Lanham Act.” See Nat’l Grange
23 of the Order of Patrons of Husbandry v. Cal. State Grange, 182 F. Supp. 3d 1065, 1081
24 (E.D. Cal. 2016). In the present matter, at trial, SDCC presented an abundant amount of
25 evidence of actual confusion. As already discussed, Mr. Brandenburg himself admitted that
26 he was aware of around 30 to 50 instances of consumer confusion. (Doc. No. 383 at
27 118:12–119:1.)
28
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1 Bearing this in mind, the Court believes that the threat of confusion will linger if
2 DFP is allowed to state on their websites, advertisements, social media sites, and marketing
3 materials “formerly known as Salt Lake Comic Con.” This is especially critical for future
4 consumers who visit DFP’s website, attend their event, or receive their advertising
5 materials and are not acquainted with this litigation. Thus, the Court finds an injunction
6 order enjoining DFP from employing the “formerly known as” reference justified.
7 The Court notes that this foregoing conclusion is in fact supported by a case cited to
8 by DFP. DFP utilizes Golden Door, Inc. v. Odisho, 437 F. Supp. 956, 968 (N.D. Cal. 1977),
9 to argue that they should be allowed to use the “formerly known as” reference for up to
10 two years. (Doc. No. 513 at 14.) However, Golden Door involved a case where there was
11 no evidence in the record of actual confusion between the plaintiff and defendant’s
12 businesses or actual competition between them. Id. at 961. This is unquestionably not the
13 case here. Accordingly, seeking to preserve the vital objective of the Lanham Act, the Court
14 enjoins DFP from using the “formerly known as” reference on their websites, social media
15 accounts, or advertising materials.
16 CONCLUSION
17 Within the structure of the present matter, the Court ISSUES the following narrowly
18 tailored INJUNCTION in its considerable discretion. See Church of Holy Light of Queen
19 v. Holder, 443 F. App’x 302, 303 (9th Cir. 2011) (emphasizing that courts enjoy
20 “considerable discretion in fashioning suitable relief and defining the terms of an
21 injunction[.]”) (citation omitted); see also Orantes-Hernandez v. Thornburgh, 919 F.2d
22 549, 558 (9th Cir. 1990) (holding that “[t]here are limitations on this discretion; an
23 injunction must be narrowly tailored to give only the relief to which plaintiffs are
24 entitled.”).
25 1) DFP is enjoined from use of SDCC’s three trademarks asserted in this case,
26 any confusingly similar marks (i.e. Comicon or Comiccon), or any phonetic
27 equivalents, (i.e. ComiKon or ComicKon), in the name of any comic or
28 popular arts convention or event or in connection with the promotion,
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1 advertising, products or marketing of any comic or popular arts convention or

2 event. This does not include referencing San Diego Comic Con or other comic
3 conventions that use “Comic Con” in their name in advertising or marketing
4 materials.
5 2) DFP is enjoined from the use or operation of any social media site (i.e.
6 Facebook, Twitter, Instagram, Pinterest, or Snapchat) that incorporates into
7 the name of any comic arts, popular fiction, or subject related event, any of
8 SDCC’s three trademarks asserted in this case, any confusingly similar marks
9 (i.e. Comicon or Comiccon), or any phonetic equivalents, (i.e. ComiKon or
10 ComicKon).
11 3) DFP is enjoined from using a “formerly known as Salt Lake Comic Con”
12 reference on any website, social media site, publicity documents, and/or
13 advertising or marketing materials that are connected to any comic arts or
14 popular fiction events or subject related conventions they produce.
15 4) DFP is enjoined from registering or using a domain name that incorporates
16 any of SDCC’s three trademarks asserted in this case, any confusingly similar
17 mark (i.e. Comicon or Comiccon) or any phonetic equivalents (i.e. ComiKon
18 or ComicKon) in relation to any comic arts or popular fiction conventions or
19 subject related events or in such a way that would lead consumers to believe
20 that DFP is sponsored by or related to SDCC.
21 5) Finally, DFP is prohibited from utilizing www.saltlakecomiccon.com as a
22 forwarding address to their www.fanxsaltlake.com website or to any subject
23 related website.
24 6) DFP is not required to destroy all of their merchandise and all marketing
25 materials bearing the specific word combinations “Comic Con,” “Comic-
26 Con,” or any phonetic equivalents, so long as DFP simply wishes to maintain
27 their “historical archive,” but not sell, distribute, donate, give away,
28 reproduce, republish, display, depict or make any commercial use of any of
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1 these “archival materials.” If, on the other hand, there is any plan or potential
2 future sale, distribution, donation, reproduction, republication, display,
3 depiction or commercial use, of said materials exceeding the archival needs
4 of DFP, then they must be destroyed consistent with this Order.
5 The Court retains jurisdiction to enforce the terms of this Order, injunction, and its
6 compliance. Within thirty (30) days from the date of this Order, DFP must be in
7 compliance with this injunction Order and file with the Court and serve on SDCC a report
8 in writing under oath, setting forth the manner and form in which DFP has complied with
9 the injunction order.
10 Thus, in sum, the Court GRANTS IN PART AND DENIES IN PART SDCC’s
11 motion for permanent injunction. The Clerk is ordered to state the injunction terms in the
12 judgment in this case, verbatim.
13
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18
19
20
21
22
23
24
25
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1
2
3
4
5
6
7
10
12
Plaintiff, ORDER GRANTING IN PART AND
13 DENYING IN PART PLAINTIFF’S
v. MOTION FOR ATTORNEYS’ FEES
14
DAN FARR PRODUCTIONS, a Utah AND COSTS PURSUANT TO 15
15 limited liability company, DANIEL U.S.C. § 1117(a)
16 FARR, an individual, BRYAN
BRANDENBURG, an individual, (Doc. No. 425)
17
Defendants.
18
19
20 Pursuant to 15 U.S.C. § 1117(a), a court may in “exceptional cases” award
21 reasonable attorneys’ fees and costs to the prevailing party in a trademark infringement
22 lawsuit. Plaintiff San Diego Comic Convention (“SDCC”) moves this Court to find that
23 the instant case is “exceptional.” (Doc. No. 425.) Defendants Dan Farr Productions, Daniel
24 Farr, and Bryan Brandenburg (collectively referred to as “DFP”) oppose SDCC’s request.
25 (Doc. No. 512.) On May 31, 2018, the Court held a hearing on the motion and then
26 submitted the matter. (Doc. No. 504.) Finding that this case is in fact “exceptional,” the
27 Court awards SDCC reasonable attorneys’ fees and costs subject to certain deductions.
28
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1 Accordingly, the Court GRANTS IN PART AND DENIES IN PART SDCC’s motion.
2 (Doc. No. 425.)
3 BACKGROUND
4 The Court is already well-versed as to the events leading up to the institution of this
5 action. Thus, for the purposes of this Order, the Court will only provide a narrow review
6 of this lawsuit’s factual and procedural background.
7 On August 7, 2014, SDCC filed a lawsuit against DFP alleging two causes of action:
8 (1) Federal Trademark Infringement, 15 U.S.C. § 1114; and (2) False Designation of
9 Origin, 15 U.S.C. § 1125(a). (See generally Doc. No. 1.) SDCC is a non-profit corporation,
10 formed in 1975, that is dedicated to the awareness and appreciation of comics and related
11 popular art forms. (Doc. No. 1 ¶ 10.) Every year since 1970, SDCC has produced and held
12 its convention known as the “Comic-Con convention” in San Diego, California. (Id. ¶ 11;
13 Doc. No. 97 at 9.)1 The convention spans several days in length and showcases several
14 hundred events, workshops, educational and academic programs, games, award shows,
15 costume contests, as well as hosts panels of special guests that include science fiction and
16 fantasy authors, film and television actors, directors, producers, and writers. (Doc. No. 1 ¶
17 12; Doc. No. 97 at 9.) In 2016, attendance to San Diego Comic-Con exceeded over 135,000
18 attendees. (Doc. No. 97 at 9.)
19 SDCC’s family of trademarks at issue in this case are:
20 1. Comic-Con;
21 2. Comic Con International;
22 3. Anaheim Comic-Con; and
23
24
25
26

27
1
Page numbers refer to the CM/ECF number and not the number listed on the original
28 document.
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1
2
3
4 4.
5 (Doc. No. 1 ¶ 13; Doc. No. 244 at 11.) Each of these registered trademarks is incontestable.
6 (Doc. No. 381 at 25:15–25.) Additionally, SDCC states that it has used these marks
7 extensively and continuously in interstate commerce and thus the marks have become
8 valuable assets as well as symbols of its goodwill and positive industry reputation. (Doc.
9 No. 1 ¶ 15.)
10 In early 2013, Defendant Dan Farr Productions, a limited liability company, began
11 to advertise and promote its own popular arts convention named “Salt Lake Comic Con”
12 (“SLCC”). (Doc. No. 234-2 at 7; Herrera Decl. Ex. 5 (“Farr Depo.” 11:4–9, Doc. No. 95-
13 7).) Similar to SDCC’s convention, SLCC is a three-day fan event featuring the best in
14 movies, television shows, gaming, sci-fi, fantasy, and comic books. (Doc. No. 244 at 12.)
15 Since 2013, SLCC has been held every year and in the beginning of 2014, Dan Farr
16 Productions created its Salt Lake Comic Con FanXperience event, which has also been
17 held every year since its inception. (Farr Depo. at 11:10–15; Doc. No. 97 at 11.)
18 Thus, the marrow of this case is whether DFP’s comic arts and popular fiction
19 event named “Salt Lake Comic Con” infringed on SDCC’s three incontestable trademarks.2
20 On December 8, 2017, after an eight-day jury trial, the jury found that DFP had indeed
21 infringed on SDCC’s family of trademarks. (Doc. No. 395 at 2–5.) As to unfair competition
22 and false designation of origin however, the jury found in favor of DFP. (Id. at 6.) In total,
23 the jury awarded corrective advertising damages to SDCC in the amount of $20,000.00.
24 (Id. at 8.)
25
26

27
2
The Court notes that after the trial, DFP changed the name of their event to “FanX Salt
28 Lake Comic Convention.” (Doc. No. 513 at 7–8.)
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1 Post-trial, SDCC filed three motions: (1) its motion for permanent injunction, (Doc.
2 No. 419); (2) the instant motion, its motion for attorneys’ fees and costs, (Doc. No. 425);
3 and (3) its motion for judgment as a matter of law or in the alternative motion for new trial,
4 (Doc. No. 433). Thereafter, on August 8, 2018, the Court ordered SDCC to file a
5 supplemental brief breaking down the total amount of fees it requested. (Doc. No. 523.)
6 DFP then asked for the opportunity to respond to SDCC’s supplemental brief. (Doc. No.
7 531.) The Court granted this request, and DFP’s response was filed on August 22, 2018.
8 (Id.; Doc. No. 532.)
9 DISCUSSION
10 A. This Case is Exceptional Pursuant to 15 U.S.C. § 1117(a)
11 SDCC’s motion provides an exhaustive and detailed account of the actions it
12 believes makes this case exceptional. (See generally Doc. No. 425-1.) In opposition, DFP
13 asserts that SDCC’s motion is based on distortions, is unpersuasive, and relies on critiques
14 that are hyperbolic and hypocritical. (See generally Doc. No. 512.)
15 The Lanham Act permits an award of reasonable attorneys’ fees to the prevailing
16 party in “exceptional cases.” 15 U.S.C. § 1117(a). Originally, “[w]hile the term
17 ‘exceptional’ [was] not defined in the statute, generally a trademark case [was] exceptional
18 for purposes of an award of attorneys’ fees when the infringement [was] malicious,
19 fraudulent, deliberate or willful.” Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400,
20 1409 (9th Cir. 1993).
21 In 2016, the Ninth Circuit in SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 839
22 F.3d 1179 (9th Cir. 2016), relied on the Supreme Court’s decision in Octane Fitness, LLC
23 v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014), to abrogate Lindy Pen Co.
24 and modify the standard definition of “exceptional” in attorney fee recovery Lanham Act
25 cases. SunEarth, Inc., 839 F.3d at 1180. Ultimately, the Ninth Circuit held that “district
26 courts analyzing a request for fees under the Lanham Act should examine the ‘totality of
27 the circumstances’ to determine if the case [is] exceptional, exercising equitable discretion
28
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1 in light of the nonexclusive factors identified in Octane Fitness and Fogerty, and using a
2 preponderance of the evidence standard.” Id. at 1181 (internal citation omitted).
3 The Ninth Circuit also defined an exceptional case as one that simply “stands out
4 from others with respect to the substantive strength of a party’s litigating position
5 (considering both the governing law and the facts of the case) or the unreasonable manner
6 in which the case was litigated.” Id. at 1180 (citation omitted). The nonexclusive factors in
7 determining if a case is “exceptional” include: “frivolousness, motivation, objective
8 unreasonableness (both in the factual and legal components of the case) and the need in
9 particular circumstances to advance considerations of compensation and deterrence.” Id. at
10 1181 (citation omitted).3 Additionally, despite the Ninth Circuit’s decision to alter the
11 definition of “exceptional,” the Federal Circuit held that Octane Fitness “gave no
12 indication that [the Federal Circuit] should rethink [its] litigation misconduct line of § 285
13 cases” and stated that “district courts can turn to [] pre-Octane Fitness case law for
14 guidance” regarding such arguments. SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1349
15 (Fed. Cir. 2015).
16 In sum, litigation brought in bad faith or with objectively baseless claims may be
17 considered exceptional, as may litigation demonstrating inequitable conduct or willful
18 infringement. Fogerty v. Fantasy, Inc., 510 U.S. 517, 525 n.12 (1994); see also Octane
19 Fitness, 134 S. Ct. at 1757 (“[A] case presenting either subjective bad faith or exceptionally
20 meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee
21 award.”). Similarly, courts “have awarded attorneys’ fees . . . where a party advances
22 arguments that are particularly weak and lack support in the record or seek only to re-
23 litigate issues the court has already decided.” Intex Recreation Corp. v. Team Worldwide
24 Corp., 77 F. Supp. 3d 212, 217 (D.C. Cir. 2015). Thus, the determination of “exceptional”
25
26

27
3
“Octane Fitness lowered the bar for an exceptional case finding[.]” Veracode, Inc. v.
28 Appthority, Inc., 137 F. Supp. 3d 17, 102 (D. Mass. 2015).
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1 falls squarely within the discretion of the trial court. Highmark Inc. v. Allcare Health Mgmt.
2 Sys., Inc., 134 S. Ct. 1744, 1748 (2014).
3 Here, the jury found that DFP infringed on all three of SDCC’s trademarks, yet also
4 found that DFP did not willfully infringe the marks. (See generally Doc. No. 395.) Thus,
5 under the original definition of “exceptional,” SDCC’s request for attorneys’ fees would
6 have been difficult to advance successfully. See Gracie v. Gracie, 217 F.3d 1060, 1068
7 (9th Cir. 2000) (“Here the jury explicitly found that [the defendant] engaged in ‘willful’
8 infringement . . .The district court’s decision to make a fee award to [the plaintiff] thus
9 flows quite naturally from the jury’s finding of willful infringement . . .”). However, after
10 SunEarth, examining the totality of the circumstances, the Court finds that this case is not
11 a dime a dozen. Instead, it is a trademark infringement lawsuit that stands out from others
12 based on the unreasonable manner it was litigated and thus an award of attorneys’ fees and
13 costs to SDCC is justified.
14 i. SDCC is the Prevailing Party
15 As an initial matter, the Court addresses DFP’s assertion that the “split verdict” in
16 this case illustrates that there is no clear winner. (Doc. No. 512 at 8–9.) Accordingly, as
17 the Lanham Act only authorizes an award of fees “to the prevailing party,” DFP contends
18 that SDCC’s motion is flawed. (Id.) DFP’s argument is both unpersuasive and legally
19 unsound.
20 Had DFP researched this issue thoroughly, DFP would have discovered that the jury
21 verdict in favor of SDCC for trademark infringement renders SDCC the prevailing party.
22 See Farrar v. Hobby, 506 U.S. 103, 111–12 (1992) (illustrating that a party prevails “when
23 actual relief on the merits of [the plaintiff’s] claim materially alters the legal relationship
24 between the parties by modifying the defendant’s behavior in a way that directly benefits
25 the plaintiff.”); see also Hensley v. Eckerhart, 461 U.S. 424, 433 (1983) (holding that a
26 prevailing party is one that “succeed[s] on any significant issue in litigation which achieves
27 some of the benefit the parties sought in bringing suit.”) (citation omitted); Orantes-
28 Hernandez v. Holder, 713 F. Supp. 2d 929, 942 (C.D. Cal. 2010) (“A plaintiff is deemed
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1 the ‘prevailing party’ if, as a result of a judgment or consent decree entered in the legal
2 action he or she brought, there is a ‘material alteration of the legal relationship of the
3 parties.’”) (citation omitted). Based on the foregoing, in the instant matter, SDCC is the
4 prevailing party for § 1117(a) purposes.
5 Next, the Court identifies the various circumstances of this case that warrant an
6 award of attorneys’ fees and costs under § 1117(a).
7 ii. DFP’s Failure to Comply with Court Rules
8 The Court highlights three incidents that occurred prior to trial. First, in
9 contravention to this Court’s Local Rules, DFP filed two summary judgment motions that
10 totaled over forty pages in length. (Doc. Nos. 216, 218, 244, 245.) The local rules clearly
11 explicate that when filing a motion, all the arguments should be contained in one brief, not
12 exceeding a total of twenty-five (25) pages. CivLR 7.1.h.
13 DFP advances two arguments to explain their actions, both of which are nonsensical
14 and only further support this Order’s final conclusion. DFP asserts that they had leave to
15 make their filings because the Clerk gave out a single hearing date for all dispositive
16 motions and that SDCC also broke the rules as it filed both a motion for summary judgment
17 and a motion to exclude on the same day, which totaled over forty-three pages. (Doc. No.
18 512 at 20–21.) DFP’s reasoning is disconcerting. Logically, all arguments relating to a
19 specific motion need to be contained in a single motion. Under DFP’s theory of motion
20 practice, a party could file a separate brief for every cause of action it sought to dismiss
21 under Federal Rule of Civil Procedure 12(b)(6), thereby violating the page limits set by
22 this Court. This is erroneous. Thus, in contrast to DFP’s belief that SDCC broke the rules,
23 it did not.
24 The Court also highlights that DFP did not file a timely Daubert challenge to
25 SDCC’s expert Patrick Kennedy. The Court then denied DFP’s motion to file a late
26 challenge, however despite this, DFP utilized a motion in limine to revisit the issue. (Doc.
27 Nos. 321, 345, 340; Transcript of Motion in Limine Hearing at 169:14–16, November 14,
28 2017.) In the same vein, after DFP lost a Daubert challenge to SDCC’s expert Mr. Ezell,
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1 (Doc. No. 263 at 10), DFP attempted to re-introduce their argument that Mr. Ezell and his
2 Teflon Survey were irrelevant both during motion in limine, (Doc. No. 314-1 at 7), and in
3 their motion for judgment as a matter of law, (Doc. No. 429-1 at 14).
4 Finally, the most prominent example of DFP’s disregard for this Court’s rules and
5 procedures occurred on June 23, 2017, when DFP filed a motion for leave to amend their
6 pleading that expressly referenced testimony that had been designated “Confidential—
7 Attorneys’ Eyes Only” by SDCC and the Protective Order in this case. (Doc. No. 129-1 at
8 3.) In spite of the highly confidential information contained in the document, Defendant
9 Bryan Brandenburg also disseminated the information on the Internet through his social
10 media accounts and SLCC’s Twitter Page. (Id.)
11 In sum, DFP’s indifference to this Court’s rulings and the Local Rules are actions
12 that should be deterred by compensation furnished to SDCC.
13 iii. DFP’s Unreasonable Manner of Litigation
14 a. DFP’s Persistent Desire to Re-Litigate Issues Already Decided
15 At every opportunity, DFP has repeated, re-argued, and recycled arguments already
16 briefed by both parties and analyzed and ruled on by the Court. This type of wasteful
17 litigation tactic forced SDCC to expend extra, unnecessary legal fees and drove this Court
18 to squander already limited judicial resources.
19 The Court first focuses on DFP’s naked licensing defense. This defense was first
20 produced at summary judgment. (Doc. No. 263-1 at 20–25.) However, finding insufficient
21 evidence to support the theory, the Court denied DFP’s motion on the matter. (Doc. No.
22 263 at 26–29.) Thereafter, during the pre-trial conference, after the Court expressed its
23 concern that there was not enough evidence to bring this defense to trial, DFP offered to
24 prepare a formal proffer document on the issue and submit that in advance of the motion
25 in limine hearing. (Doc. No. 265 at 9:11–11:19.)
26 DFP’s formal proffer document provided the Court relatively the same evidence
27 supplied at summary judgment. (Doc. Nos. 315, 344.) Accordingly, still finding the
28 evidence inadequate, the Court denied the motion. (Doc. No. 340.) Post-trial, DFP’s motion
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1 for new trial inexplicably argues that they are “entitled to a proper adjudication of its naked
2 licensing defense.” (Doc. No. 436-1 at 7.) Thus, in total, DFP has attempted to re-argue
3 this defense three times, blatantly ignoring the record and this Court’s previous rulings.
4 DFP’s repetitive motion practice also manifested itself in their “generic ab initio”
5 defense. Initially, when this theory was first presented to the Court during summary
6 judgment, DFP argued that this case “is not a genericide case.” (Doc. No. 244 at 23.)
7 Instead, DFP argued that “Comic-Con” was generic “before it was applied as a trademark
8 to the products in question.” (Id. at 24 (citing Horizon Mills Corp. v. QVC, Inc., 161 F.
9 Supp. 2d 208, 220 n.16 (S.D.N.Y. 2001)).)
10 After carefully considering the evidence outlined by DFP, the Court denied DFP’s
11 summary judgment motion arguing that SDCC’s trademarks are generic ab intio. (Doc. No.
12 263 at 18.) Notwithstanding this fact, DFP brought a motion in limine “regarding
13 genericness evidence.” (Doc. No. 314-1.) Finding the in limine motion improper, the Court
14 stated during the hearing:
15 The Court: Well, it could be that I ruled out generic ab initio, already. And
re-arguing it again is questionable to whether it’s in conformity to what
16
motion in limine is about.
17 ...
This is a motion in limine. We’re talking about a time line and you’ve tried to
18
reargue the summary judgment.
19
20 (Doc. No. 425-7 at 4:21–10:12.) This motion was then denied. (Doc. No. 340.)
21 In spite of the summary judgment order and the in limine ruling, DFP’s motion for
22 new trial devotes several pages to arguing that they should have been “allowed to show
23 Genericness Ab Initio.” (Doc. No. 436-1 at 17–27.) DFP supported this argument with
24 more or less the same evidence produced at summary judgment. Altogether, “Generic ab
25 intio” has been discussed, analyzed, and denied by this Court three times.4
26

27
4
Generic ab initio was not only repeatedly discussed, but it is also a defense that DFP
28 strategically used and then disposed of depending on the evidence they sought to exclude.
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1 Though not referenced by SDCC, DFP’s use of the Oxford Dictionary definition of
2 “Con” is another blatant example of DFP’s “head in the sand” litigation strategies that has
3 resulted in this Court repeatedly re-analyzing the same arguments. At summary judgment,
4 to support their “generic ab intio” theory of defense, DFP argued that one may look to the
5 individual parts of a mark. (Doc. No. 244 at 16, 19.) DFP then referenced the Oxford
6 Dictionary definition of “con.” (Id.) In its order denying DFP’s summary judgment motion
7 on “generic ab intio,” the Court clearly explained that courts have not only held that
8 dictionary definitions are weak evidence of genericness, but that courts have routinely
9 rejected the breaking down of phrases into their individual and often generic parts. (Doc.
10 No. 263 at 17.)
11 Astonishingly, ignoring the case law provided to them, DFP’s motion for new trial
12 again points to the same Oxford dictionary definition. (Doc. No. 436-1 at 25.) As a result,
13 this argument has been recycled by DFP twice in complete disregard of this Court’s
14 previous rulings and Ninth Circuit precedent. See Advertise.com, Inc. v. AOL Advertising,
15 Inc., 616 F.3d 974, 978 (9th Cir. 2010) (concluding that in determining similarity of marks
16 “we look to the mark as a whole and that the combination of generic terms may, in some
17 instances, result in a distinctive mark.”).
18 DFP also repeatedly sought to compel this Court to revisit their fraud defense. First,
19 DFP unsuccessfully requested leave to add fraud as an affirmative defense. (Doc. No. 202
20 at 6–10.) Thereafter, at the pretrial conference, DFP again referenced this defense. (Doc.
21 No. 265 at 12:8–20.) DFP then filed a motion in limine to be able to put forward evidence
22

23
The Court notes that at the outset DFP plainly asserted that this was not a genericide case.
24 (Doc. No. 244 at 23.) DFP’s summary judgment motion then asserted that as SDCC’s
25 trademarks were “generic ab initio,” SDCC’s Teflon survey was irrelevant. (Id. at 23–24.)
In contrast to the above, DFP’s expert Jeffrey Kaplan stated in his report that he was hired
26 to “offer linguistic evidence supporting [his] opinion that the expression ‘comic con’ was
27 generic at the time the above-captioned law suit was filed, and is currently generic[.]” (Doc.
No. 91-2 at 3 (emphasis added).) This discrepancy was noted by the Court in its summary
28 judgment order. (Doc. No. 263 at 12.)
10
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1 of SDCC’s alleged fraud on the USPTO to the jury. (Doc. No. 319.) The Court ultimately
2 denied the motion after reminding DFP that it had already gotten rid of the fraud claim.
3 (Transcript of Motion in Limine hearing at 141:20–22, November 14, 2017.) In sum, fraud
4 was re-argued two times.
5 Ultimately, resembling a broken record, DFP has repetitively restated and rehashed
6 several contentions that they were unable to advance successfully prior to trial. This type
7 of cyclical motion practice is objectively unreasonable and has justified attorneys’ fees
8 under the Lanham Act. See Parks, LLC v. Tyson Foods, Inc., No. 5:15-cv-00946, 2017 WL
9 3534993, at *1 (E.D. Pa. Aug. 17, 2017) (holding that the hallmark of a case that has been
10 litigated in an unreasonable manner is one that involves “wasteful procedural maneuvers
11 or dilatory tactics”) (citation and internal quotation marks omitted); see also Cognex Corp.
12 v. Microscan Sys., Inc., No. 13- CV-2027 JSR, 2014 WL 2989975, at *4 (S.D.N.Y. June
13 30, 2014) (criticizing the plaintiff for post-trial motions that simply sought to relitigate
14 issues decided during trial and awarding fees at least as to those motions); Precision Links
15 Inc. v. USA Prods. Grp., Inc., No. 3:08-cv-00576-MR, 2014 WL 2861759, at *3 (W.D.N.C.
16 June 24, 2014) (criticizing the plaintiff for seeking a preliminary injunction based in large
17 part on a previously rejected theory of liability and for filing frivolous post dismissal
18 motions).
19 b. DFP’s Objectively Unreasonable Legal Arguments
20 DFP’s efforts to formulate legal arguments based on factually and legally irrelevant
21 case law also help bolster this Court’s conclusion that the instant matter is not a middle-of
22 the-road trademark case. The Court notes that at certain points, DFP’s zealous advocacy
23 has turned into gamesmanship.
24 To begin with, the Court focuses on DFP’s motion to amend their pleading. DFP
25 sought to amend so that they could allege that SDCC committed fraud on the USPTO. (See
26 generally Doc. No. 204-1.) However, DFP’s motion failed to cite to the correct legal
27 standard to support such a claim. Instead, DFP pointed the Court to a list of inapplicable
28 patent cases. (Id. at 5.)
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1 Further, DFP requested amendment so as to add a defense of inequitable conduct.

2 (Id. at 16.) However, as the Court pointed out in its order, inequitable conduct is a defense
3 raised in patent infringement cases. (Doc. No. 202 at 11 (see Mag Instrument, Inc. v. JS
4 Prods., Inc., 595 F. Supp. 2d 1102, 1109 (C.D. Cal. 2008) (holding that inequitable conduct
5 consists of several elements including “the failure to disclose known material information
6 during the prosecution of a patent, coupled with the intent to deceive the PTO.”)).)
7 DFP’s motion in limine proffering evidence of a naked license is yet another
8 example of DFP’s faulty, hodgepodge legal reasoning. (Doc. No. 344.) DFP states:
9 Second, “where circumstances or the previous course of dealing between the
parties places the offeree under a duty to act or be bound, his silence or
10
inactivity will constitute his assent”: SDCC’s silence, on the heels of its
11 “threatened immediate or vigorous enforcement,” was “intentionally
misleading”—and gave SDCC “a duty to speak,” especially when coupled
12
with Reed’s communicated reliance on its remedial measures’ sufficiency and
13 years of friendly intercourse. Third, “implied license may arise by …
acquiescence”; “permission or lack of objection is … equivalent to …
14
license”; thus SDCC’s longstanding tolerance of Reed’s use is enough to show
15 a license.
16 (Id. at 6 (internal footnotes omitted).) The Court illustrates that in total, DFP selectively
17 chose and blended together specific phrases from five different cases. Specifically, DFP
18 quotes from: Beatty Safway Scaffold, Inc. v. Skrable, 180 Cal. App. 2d 650, 655 (1960);
19 Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 1574 (Fed. Cir. 1987); Scholle Corp. v.
20 Blackhawk Molding Co., 133 F.3d 1469, 1472 (Fed. Cir. 1998); I.A.E., Inc. v. Shaver, 74
21 F.3d 768, 775 (7th Cir. 1996); and Winbond Elec. Corp. v. ITC, 262 F.3d 1363, 1374 (Fed.
22 Cir. 2001). (Id.) However, DFP’s reliance on the foregoing cases is misplaced—both Hottel
23 Corp. and Scholle Corp., analyze equitable estoppel defenses in the patent infringement
24 context, 833 F.2d at 1574; 133 F.3d at 1472, Shaver, examined how a copyright owner
25 could transfer to another person any exclusive rights an owner has in a copyright, 74 F.3d
26 at 774–75, and Winbond examined an implied license/waiver in a patent infringement case,
27 262 F.3d 1374.
28
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1 A final example of DFP’s groundless legal reasoning comes from their opposition
2 brief to SDCC’s instant motion. DFP’s brief cites to Kellogg Co., to demonstrate that Mr.
3 Brandenburg did not admit that Comic Con is a brand. (Doc. No. 512 at 10–11.) Instead,
4 DFP claims that what Mr. Brandenburg meant when he said “brand” was the “goodwill”
5 of SDCC’s events, not that he meant “brand” in a legal trademark sense. (Id. at 11.) The
6 portion of Kellogg DFP employs is:
7 Kellogg Company is undoubtedly sharing in the goodwill of the article known
as “Shredded Wheat”; and thus is sharing in a market which was created by
8
the skill and judgment of plaintiff’s predecessor and has been widely extended
9 by vast expenditures in advertising persistently made. But that is not unfair.
Sharing in the goodwill of an article unprotected by patent or trade-mark is
10
the exercise of a right possessed by all—and in the free exercise of which the
11 consuming public is deeply interested.
12 Id. (citing Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 122 (1938)).
13 It is plainly clear to the Court and should be evidently unmistakable to DFP that
14 Kellogg is factually immaterial. In Kellogg, the plaintiff did not have an exclusive right to
15 the use of the term “Shredded Wheat” as a trade name as it was determined that the term
16 was generic of the article it described. Id. at 116 (emphasis added). In fact, “Shredded
17 Wheat” was never used as a trademark. Id. at 117. Additionally, the patent for the product
18 and the process of making the item was “dedicated to the public” as the patent had expired
19 on October 15, 1912. Id. The present matter involves three incontestable trademarks—
20 trademarks DFP knew were registered with the USPTO—and there is no patent in play.5
21 (Doc. No. 394 at 21.)
22 The above-mentioned examples are simply a small collection of DFP’s unreasonable
23 manner of litigation and do not encompass every instance they misrepresented a case for
24 their own benefit. This type of frivolous motion practice should be deterred. See Monolithic
25
26 5
The Court notes that Kellogg is also a recycled argument, having already determined its
27 inapplicability during motion in limine. (See generally Doc. No. 314; Transcript of Motion
in Limine Hearing at 29:5–19, November 14, 2017.)
28
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1 Power Sys., Inc. v. O2 Micro Int’l Ltd., 726 F.3d 1359, 1366 (Fed. Cir. 2013) (“[L]itigation
2 misconduct and unprofessional behavior may suffice, by themselves, to make a case
3 exceptional . . . .”).
4 Beyond gamesmanship, there has been inappropriate citation to as well as
5 incomplete or inaccurate references to purported case authority throughout this litigation
6 by DFP. In each order on every post-trial matter, DFP has been called out in this regard.
7 c. DFP’s Objectively Unreasonable Responses to this Litigation
8 More convincing evidence of this case’s exceptional nature materializes itself in
9 DFP’s unreasonable responses to this litigation. DFP admits to receiving SDCC’s cease
10 and desist letter. (Doc. No. 383 at 92:9–20; Tr. Ex. 127.) However, instead of consulting
11 an attorney or trying to reach out to SDCC’s legal team, DFP continued to use “Comic
12 Con” in their event name. (Id. at 92:13–23.) Moreover, within a week of receiving the cease
13 and desist letter and with full knowledge of SDCC’s trademark registrations, DFP sought
14 and successfully registered their Salt Lake Comic Con mark with the USPTO. (Doc. No.
15 304-1 at 2.) The Court finds DFP’s foregoing reactions to be both factually and legally
16 unreasonable.
17 DFP asserts that since the jury sided with them on willfulness, the Court may not
18 reach a different result by applying the same stipulated definition of willfulness to the same
19 body of evidence and return a different result. (Doc. No. 512 at 13.) DFP then asserts that
20 willfulness in the trademark infringement context is the same as “motivation” under §
21 1117(a). (Id. at 12–13.) The Court disagrees.
22 First, DFP’s assertion that the definition of “willfulness” mirrors “motivation” is
23 completely unsupported. This is simply a legal theory conjured up by DFP. Second, a
24 finding of exceptionality pursuant to § 1117(a) includes examining the totality of the
25 circumstances, which includes factors such as objective unreasonableness, frivolousness,
26 compensation, deterrence, and motivation. SunEarth, Inc., 839 F.3d at 1181. Thus, the
27 Court is not altering the jury’s willfulness verdict as DFP suggests. Instead, the Court is
28
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1 reviewing the circumstances of this case under the lens of § 1117(a), a review process that
2 is distinct from a willfulness analysis.
3 Accordingly, the Court finds DFP’s various reactions listed above objectively
4 unreasonable pursuant to § 1117(a). See Decus, Inc. v. Heenan, No. 16-5849, 2018 WL
5 1082842, at *3 (E.D. Pa. Feb. 27, 2018) (“Cases finding exceptionality based on litigation
6 in an ‘unreasonable manner’ include a defendant’s continued trademark infringement after
7 it knew, through the [USPTO] and plaintiff’s cease and desist letters, its mark ‘was
8 confusingly similar’ to plaintiff’s mark[.]”); see also Mountz, Inc. v. Northeast Indus.
9 Bolting and Torque, LLC, No. 15-cv-04538-JD (MEJ), 2017 WL 780585, at *2 (N.D. Cal.
10 Jan. 27, 2017) (“Defendant’s response to the litigation, including the threats to Plaintiff’s
11 business, the attempt to register the offending mark with the PTO, and the failure to respond
12 to the Complaint, was objectively unreasonable.”).
13 d. Objectively Unreasonable Litigation Conduct
14 An additional component to the Court’s analysis is DFP’s misconduct during trial.
15 SDCC places a great emphasis on this conduct, (Doc. No. 425-1 at 22–26), while DFP’s
16 opposition brief focuses the Court’s attention on SDCC’s misconduct during trial, (Doc.
17 No. 512 at 27–30). The Court finds SDCC’s assertions more persuasive.
18 At the outset, DFP’s opening statement included the following comment:
19 The fact is Comic Con is thriving. Okay. They made more money each year
since Salt Lake Comic Con came on the scene. They haven’t lost a single
20
customer to us . . . We’re small potatoes. They also have $15 million in cash
21 sitting in their bank. They own a downtown office building they paid $5 million
cash for. They’re not for-profit, but they’re the deep pocket.
22
...
23 So Defendants, if they have to pay even a fraction of what CCI asks would be
put out of business and the people of Utah would be paying for it. But they’re
24
also suing them individually. So they would be pushing them to bankruptcy.
25
26 (Doc. No. 381 at 52:12–53:24.) Referencing a party’s wealth to play off the bias of the jury
27 is clear misconduct. See Hoffman v. Brandt, 65 Cal. 2d 549, 552–53 (1966) (“The argument
28 was clearly error . . . a deliberate attempt by counsel to appeal to social or economic
15
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1 prejudices of the jury, including the wealth or poverty of the litigants, is misconduct where
2 the asserted wealth or poverty is not relevant to the issues of the case.”); see also Martinez
3 v. Dep’t of Transp., 238 Cal. App. 4th 559, 566 (2015) (“The law, like boxing, prohibits
4 hitting below the belt. The basic rule forbids an attorney to pander to the prejudice, passion
5 or sympathy of the jury. In more concrete terms, attorneys cannot make appeals based on
6 irrelevant financial aspects of the case such as the hardship that would be visited on a
7 defendant from a plaintiff’s verdict.”) (internal citation omitted).
8 During trial, DFP also introduced different concepts that played off of their “generic
9 ab initio” theory of defense—a defense that this Order clearly delineates was excluded at
10 summary judgment, the pre-trial conference, and motion in limine. For instance, DFP made
11 references to a “generic brand.” (Doc. No. 381 at 35:19–20.) SDCC objected to such
12 classification and the Court sustained the objection stating that it was a
13 “mischaracterization” and asked the jury to disregard the comment. (Id. at 35:24–36:5.)
14 DFP however did not stop in their quest to put this legally flawed notion before the
15 jury. After being admonished, DFP began referring to Comic-Con as a “national brand.”
16 (Id. at 39:18.) For example, during Mr. Brandenburg’s testimony, the Court had to censure
17 DFP.
18 Q. And when you said, but we are hijacking the brand, were you referring to
San Diego’s brand?
19
A. No, I was not.
20 Q. Whose brand were you referring to?
A. As you can see in the next sentence, I clarify what I was referring to was
21
the national Comic Con brand.
22 Ms. Bjurstrom: Objection, your honor.
The Court: Sustained. Jury will disregard the last comment.
23
Mr. Katz: I’m not sure why.
24 The Court: There is no evidence of a national comic brand, sir.
25 (Doc. No. 383 at 123:23–124:9.) Then during closing arguments, despite the Court’s
26 previous rulings, DFP continued to use the phrases “Comic Con circuit” and “Comic Con
27 Brand.” (Doc. No. 403 at 40:9–43:5.)
28
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1 Further, DFP misstated the law. For instance, DFP argued a “substantial confusion”
2 standard instead of the likelihood of confusion test utilized by the Ninth Circuit. (Id. at
3 46:9–14.) Moreover, DFP constantly and repeatedly referred to SDCC’s trademark as
4 “Comic dash Con.” (Doc. No. 381 at 37:2–4 (“And you saw on the screen that Plaintiff’s
5 showed you, Comic-Dash-Con as she described each era of Comic Con.”); Id. at 39:11–16
6 (“In fact, in 1998, there were 30 events that called themselves Comic Con, and that’s ten
7 years before San Diego Comic Convention, or SDCC, ever applied for their mark in
8 Comic-Dash-Con alone.”).)
9 The Ninth Circuit has repeatedly emphasized that similarity of two marks is first
10 “considered in their entirety[.]” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206
11 (9th Cir. 2000). Second, “similarity is adjudged in terms of appearance, sound, and
12 meaning, and third, similarities are weighed more heavily than differences.” Id. (internal
13 citations omitted). Under this standard, cases from this district as well as others have held
14 that a dash or hyphen is inconsequential in determining the similarity of two marks. See
15 Maxim Integrated Prods., Inc. v. Quintana, 654 F. Supp. 2d 1024, 1031–32 (N.D. Cal.
16 2009) (placing little emphasis on the hyphen in the mark “My-iButton” when comparing
17 its similarity to “i Button”); see also Therma-Scan, Inc., v. Thermoscan, Inc., 295 F.3d 623,
18 633–34 (6th Cir. 2002) (finding the dash insignificant in the mark Therma-Scan when
19 comparing its similarity to the mark Thermoscan).
20 Despite the foregoing, at trial, DFP proceeded under the belief that the dash was
21 significant in determining the similarity of their mark and SDCC’s “Comic-Con”
22 trademark. For example, DFP stated:
23 Mr. Katz: It’s Comic-Dash-Con, and their position is it’s enforceable as
Comic Con with nothing in between, a space, a dash. You know, they use the
24
dash when they use it alone, and they use the space when they use it with
25 something else.
...
26
Ms. Bjurstrom: We have Comic Con International without a dash, and we
27 have San Diego Comic Con International without a dash.
...
28
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1 The Court: But as to Comic Con with the dash, does the mark cover Comic
Con without the dash in its plain and literal meaning?
2
Ms. Bjurstrom: Absolutely.
3 The Court: How?
Ms. Bjurstrom: It is. It’s likely to be confusing. You don’t say Comic-Hyphen-
4
con.
5 Mr. Katz: That’s what we’re trying to establish, that it is not likely to be
confusing.
6
Ms. Bjurstrom: It’s the same mark.
7 The Court: So if - -
Ms. Bjurstrom: You look at how it looks, how it sounds, how it’s perceived.
8
You don’t say Comic - -
9 Mr. Katz: We disagree.
Ms. Bjurstrom: Please. You don’t say Comic-Hyphen-Con. You don’t say
10
Coca-Hyphen-Cola. You say Coca-Cola.
11
(Doc. No. 382 at 58:10–59:13.)
12
In light of the case law from this district, DFP’s forceful attempts to draw the jury’s
13
attention to the dash in “Comic-Con” in analyzing the similarity of the two trademarks at
14
issue is legally groundless. See Super-Krete Int’l, Inc. v. Sadleir, 712 F. Supp. 2d 1023,
15
1032 (C.D. Cal. 2010) (“While Defendants argue that the hyphen is significant in
16
modifying the term, this argument is contrary to the case law—and common sense.”).
17
Finally, during closing argument, DFP doubled down and broke the “Golden Rule.”
18
DFP’s counsel stated:
19
Even if you accept the dismissive “they’re just infringers, we’ll get to them.”
20 Okay. They’ve caused harm, too. What share of the harm did they cause to
21 this brand erosion that we haven’t seen any measure of? So we are just asking
you to think critically about the evidence. Think about what it means. And
22 what it would mean to you if you were personally involved in this.
23 The Court: Golden Rule. Jury is not--you are not to put the jury in the place
of either party. The jury will disregard the last comment.
24 Mr. Katz: I apologize for that. I will state it differently.
25
(Doc. No. 403 at 71:2–13.) The “Golden Rule” argument, “asking the jury to put itself in
26
the position of the party, is improper.” Reynolds v. Gerstel, No. 1:09-cv-00680-SAB, 2013
27
WL 4815788, at *5 (E.D. Cal. Sept. 9, 2013); see also Lovett v. Union Pac. R.R. Co., 201
28
18
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1 F.3d 1074, 1083 (8th Cir. 2000) (explaining that the Golden Rule “argument is universally
2 condemned because it encourages the jury to depart from neutrality and to decide the case
3 on the basis of personal interest and bias rather than on the evidence.”) (citation omitted).
4 In sum, DFP’s trial misconduct further supports the Court’s conclusion that this case
5 is “exceptional” pursuant to § 1117(a).
6 iv. Remaining Issues
7 One additional factor in determining the exceptionality of a case under the Lanham
8 Act is the substantive strength of a party’s litigating position. See Veracode, 137 F. Supp.
9 3d at 101. SDCC points to the following pieces of evidence to demonstrate the strength of
10 its case: (1) the incontestable status of its trademarks; (2) its trademark survey that
11 demonstrated that 83% of consumers recognize it as a brand; (3) Mr. Brandenburg’s
12 admission that Comic-Con is a brand; and (4) the commercial strength of its marks. (Doc.
13 No. 425-1 at 11–12.) In opposition, DFP argues that their case is equally strong. (Doc. No.
14 512 at 9–10.)
15 The Court finds that this case is not so “deeply lopsided” in regards to strength to
16 warrant finding it exceptional under this specific factor. See Veracode, Inc., 137 F. Supp.
17 3d at 101 (holding that a case must present the “indicia of a deeply lopsided case” for the
18 moving party to satisfy this element). The Court explicates that though SDCC’s case is
19 compelling and heavily supported by persuasive evidence, DFP’s case, including the
20 evidence of over one hundred comic events using “comic con” in their event name, is not
21 objectively frivolous.
22 Thus, this factor weighs neutrally. See Gametek LLC v. Zynga, Inc., No. CV 13-2546
23 RS, 2014 WL 4351414, at *3 (N.D. Cal. Sept. 2, 2014) (explaining that although the
24 opposing party’s briefing “consisted of granular parsing of the claimed steps rather than
25 any substantive explanation of how this differed from the underlying abstract idea[,] [i]t
26 did not . . . descend to the level of frivolous argument or objective unreasonableness.”).
27 Next, the Court turns to SDCC’s argument that DFP’s abuse of the media makes this
28 case “exceptional.” (Doc. No. 425-1 at 7, 8, 14–15.) Specifically, SDCC takes issue with
19
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1 the press releases and interviews DFP gave after they received SDCC’s cease and desist
2 letter, their articles published through social media that attacked SDCC and its executives,
3 and DFP’s alleged “public bullying strategy” that persisted over three years all aimed at
4 denigrating SDCC before the public. (Id.) DFP asserts that they cannot be punished for
5 exercising their First Amendment rights. (Doc. No. 512 at 15–16.)
6 The Court’s analysis under this factor is best explained by quoting to Defendant
7 Brandenburg himself. In a news article, Mr. Brandenburg explained his reaction to
8 receiving SDCC’s cease and desist letter:
9 “Our knee jerk reaction was that [SDCC was] trying to intimidate us” . . . “We
were not going to cease and desist using the name. We decided to go public
10
about it.” After consulting with their lawyers, the team behind the Salt Lake
11 Comic Con knew they had strong legal ground to stand on, but they didn’t
want to go to court, they wanted to win in the court of public opinion . . .
12
“Everyone said that San Diego had no leg to stand on, but the only way to win
13 this would be to outspend them on legal fees” . . . “Our strategy was, if we
are going to spend legal fees vs. legal fees, we wanted to be creative. We put
14
it out to the public, challenging the cease and desist letter publically.”
15
16 (Doc. No. 126-3 at 2–3.)
17 Refusing to cease and desist and turning to the media to litigate a trademark
18 infringement case in the court of “public opinion” is objectively irrational. The Court
19 clarifies that it is not maintaining that Mr. Brandenburg was not entitled to his First
20 Amendment rights. Instead, looking to the standard proscribed by the Ninth Circuit,
21 objectively, DFP’s reaction and actions in response to SDCC’s cease and desist letter force
22 this case to stand out from others. Nevertheless, the Court notes that this argument is but
23 one small factor in this Order’s analysis. In fact, even without this element, the
24 circumstances discussed supra pp. 7–18 adequately and reasonably justify SDCC’s request
25 for attorneys’ fees pursuant to § 1117(a).
26 Finally, DFP’s opposition brief is littered with statements such as: “The jury
27 disagreed; but in finding no willfulness, the jury accepted DFP’s explanation that when the
28 defendants used the term ‘brand,’ they were referring to that goodwill, the goodwill of the
20
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1 events.” (Doc. No. 512 at 11.) These blatant, unsupported statements are plainly specious—
2 DFP has no idea what the jury believed or how they understood the evidence. Thus, the
3 Court ignored such statements in coming to its conclusion.
4 v. Conclusion
5 SDCC’s motion is bursting at the seams with incidents that it believes demonstrates
6 the exceptional nature of this case. After careful consideration of the totality of the
7 circumstances, the Court agrees with SDCC and finds that it has satisfied its burden.
8 Accordingly, the Court GRANTS SDCC’s motion for attorneys’ fees and costs, subject to
9 the deductions delineated below. See Kilopass Tech. Inc. v. Sidense Corp., No. C 10-02066
10 SI, 2014 WL 3956703, at *10–14 (N.D. Cal. Aug. 12, 2014) (concluding that the case was
11 exceptional based on the defendant’s “exceptionally meritless” claims, the unreasonable
12 manner in which the case was litigated, the defendant’s shifting theories of infringement,
13 and conduct that amounted to gamesmanship).
14 B. SDCC’s Requested Fees are Subject to Deductions
15 SDCC argues that its fees and the allocated time spent are reasonable. (Doc. No.
16 425-1 at 27–29.) DFP’s opposition brief devotes the last two pages to arguing that
17 bifurcation is proper in the instant matter as they could not “fully respond to both liability
18 and the proper amount of any award” in their opposition brief. (Doc. No. 512 at 30.) DFP
19 then requests that an additional proceeding be had on the amount. (Id.)
20 The Court declines DFP’s request for bifurcation and for a further proceeding. DFP
21 was provided the opportunity to oppose SDCC’s motion. Their decision to forego the
22 chance to rebut the rates of SDCC’s attorneys and the reasonableness of their time sheets,
23 not only fails to satisfy their burden at this stage of the litigation, but also acts as a waiver
24 to any arguments not presented in their opposition brief. See Stichting Pensioenfonds ABP
25 v. Countrywide Fin. Corp., 802 F. Supp. 2d 1125, 1132 (C.D. Cal. 2011) (“In most
26 circumstances, failure to respond in an opposition brief to an argument put forward in an
27 opening brief constitutes waiver or abandonment in regard to the uncontested issue.”)
28 (citation omitted).
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1 Moreover, as DFP has failed to challenge or dispute SDCC’s hourly rate or provide
2 substantial assertions opposing SDCC’s hours logged, the Court’s inquiry ends after it
3 determines whether the fee request is reasonable. See United States v. $28,000.00 in U.S.
4 Currency, 802 F.3d 1100, 1105 (9th Cir. 2015) (“When … a fee target has failed to offer
5 either countervailing evidence or persuasive argumentation in support of its position, we
6 do not think it is the court’s job either to do the target’s homework or to take heroic
7 measures aimed at salvaging the target from the predictable consequences of self-indulgent
8 lassitude.”) (citation omitted).
9 The Court now turns to an evaluation of the reasonableness of SDCC’s fees. Courts
10 typically determine reasonableness by conducting a lodestar analysis of the hours expended
11 and the hourly rate charged. See McGrath v. Cty. of Nevada, 67 F.3d 248, 252 (9th Cir.
12 1995); see also Camacho v. Bridgeport Fin., Inc., 523 F.3d 973, 978 (9th Cir. 2008)
13 (explaining that in the Ninth Circuit, courts calculate an award of attorneys’ fees using the
14 lodestar method, multiplying “the number of hours the prevailing party reasonably
15 expended on the litigation by a reasonable hourly rate.”) (citation omitted). The burden is
16 on the fee applicant to demonstrate that the number of hours spent were “reasonably
17 expended” and that counsel made a “good faith effort to exclude from [the] fee request
18 hours that are excessive, redundant, or otherwise unnecessary[.]” Hensley, 461 U.S. at 434.
19 The district court has broad discretion in determining the reasonableness of attorney’s fees.
20 See Gates v. Deukmejian, 987 F.2d 1392, 1398 (9th Cir. 1992).
21 Additionally, “[a]lthough in most cases, the lodestar figure is presumptively a
22 reasonable fee award, the district court may, if circumstances warrant, adjust the lodestar
23 to account for other factors which are not subsumed within it.” Ferland v. Conrad Credit
24 Corp., 244 F.3d 1145, 1149 n.4 (9th Cir. 2001). The factors are:
25 (1) the time and labor required, (2) the novelty and difficulty of the questions
involved, (3) the skill requisite to perform the legal service properly, (4) the
26
preclusion of other employment by the attorney due to acceptance of the case,
27 (5) the customary fee, (6) whether the fee is fixed or contingent, (7) time
limitations imposed by the client or the circumstances, (8) the amount
28
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1 involved and the results obtained, (9) the experience, reputation, and ability
of the attorneys, (10) the “undesirability” of the case, (11) the nature and
2
length of the professional relationship with the client, and (12) awards in
3 similar cases.
4
Ballen v. City of Redmond, 466 F.3d 736, 746 (9th Cir. 2006) (citation omitted).
5
In total, SDCC requests $4,994,245.20 in attorneys’ fees and costs incurred by it
6
from the inception of this case through August 10, 2018. (Doc. No. 527 ¶ 5.) In addition,
7
SDCC also requests certain non-taxable costs, including $243,833.06 that SDCC paid to
8
its two expert witnesses: Matthew G. Ezell and Patrick Kennedy, along with their
9
assistants. (Doc. No. 425-3 ¶ 24.)
10
i. Reasonable Hourly Rate
11
The determination of reasonable hourly rates is made by examining the prevailing
12
market rates in the relevant community charged for similar services by “lawyers of
13
reasonably comparable skill, experience, and reputation.” Davis v. City and Cty. of San
14
Francisco, 976 F.2d 1536, 1546 (9th Cir. 1992) (citation omitted), opinion vacated on
15
other grounds by 984 F.2d 345 (9th Cir. 1993). The “relevant community” for these
16
purposes is the district in which the lawsuit proceeds. Barjon v. Dalton, 132 F.3d 496, 500
17
(9th Cir. 1997).
18
The moving party has the burden to produce “satisfactory evidence, in addition to
19
the affidavits of its counsel, that the requested rates are in line with those prevailing in the
20
community for similar services of lawyers of reasonably comparable skill and reputation.”
21
Jordan v. Multnomah Cty., 815 F.2d 1258, 1263 (9th Cir. 1987). Once the fee applicant
22
has met its burden, the opposing party “has a burden of rebuttal that requires submission
23
of evidence to the district court challenging the accuracy and reasonableness of the hours
24
charged or the facts asserted by the prevailing party in its submitted affidavits.” Gates, 987
25
F.2d at 1397–98.
26
SDCC cites to several Southern District of California cases as well as employs the
27
declarations of Callie A. Bjurstrom and Peter K. Hahn to illustrate that its attorney rates
28
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1 are reasonable. The following are the rates for the SDCC attorneys, paralegals, and
2 litigation support team members who worked on the present matter.
3 1. Callie A. Bjurstrom, lead trial attorney with over twenty-nine years of experience—
4 $675.00 to $760.00 an hour.
5 2. Peter K. Hahn, a partner and member of Pillsbury’s Intellectual Property (“IP”)
6 Section with over twenty-eight years of experience—$675.00 to $760.00 an hour.
7 3. Michelle A. Herrera, an attorney with over sixteen years of litigation experience—
8 $525.00 to $585.00 an hour.
9 4. Conor Civins, a partner with over fourteen years of experience—$550.00 to $685.00
10 an hour.
11 5. Kirsten Gallacher, an associate in Pillsbury’s IP section—$385.00 to $545.00 an
12 hour.
13 6. Nathaniel Smith, a University of San Diego School of Law 2007 graduate—$550.00
14 to $730.00 an hour.
15 7. Matthew Stephens, an associate in Pillsbury’s IP Section—$545.00 an hour.
16 8. Tim Rawson, a 2014 Pepperdine University School of Law graduate—$545.00 an
17 hour.
18 9. Lauren Wardle, an associate in Pillsbury’s IP Section—$560.00 an hour.
19 10. David Stanton, a partner and member of Pillsbury’s Litigation section—$765.00 an
20 hour.
21 11. Andrew Chevalier, William Collier, Carl DiCarlo, Benton McDonough, Wilton
22 McNair, Allison Porter, Candes Prewitt, Jennifer Romeo, Kelly Sims, Jenny
23 Villalobos, Eboni Wooden, and Calumn Yeaman, contract attorneys who work out
24 of Pillsbury’s office in Nashville, Tennessee who assisted with eDiscovery,
25 document review, and legal research—$110.00 an hour.
26 12. Sandra Edge, a senior legal analyst in Pillsbury’s IP Section with over thirty years
27 of experience—$285.00 to $315.00.
28 13. Cody Gartman, a trial paralegal with over seven years of experience—$245.00 an
24
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1 hour.
2 14. Louie Perez, a senior legal analyst in Pillsbury’s IP section with over five years of
3 experience—$295.00.
4 15. Colin Drake, a Litigation Support Project Management Coordinator with over ten
5 years of experience—$275.00 to $305.00 an hour.
6 16. Val Trinidad, a Senior Litigation Support Analyst with over nine years of
7 experience—$295.00 to $305.00 an hour.
8 17. John Monarrez, a Research Specialist—$150.00 an hour.
9 18. Stacey Barnes, a paralegal in Pillsbury’s IP section—335.00 an hour.
10 19. Martin Bridges, a consulting manager in Pillsbury’s Corporate Securities Group
11 whose testimony was read into the record at trial—$425.00 an hour.
12 20. Thomas Brooks, the Discovery Project Manager—$305.00 an hour.
13 21. Stacey Campbell, a paralegal in Pillsbury’s IP section who provided trial
14 preparation support—$285.00 an hour.
15 22. John Farahjood, a Litigation Support Specialist who assisted with review of
16 electronically stored information—$305.00 an hour.
17 23. Gordon Moffat, Director of Litigation Support Services—$390.00 an hour.
18 24. Patrick Ng, a Litigation Support Project Manager—$305.00 an hour.
19 25. Anthony Vugrinecz, a Senior Litigation Support Analyst—$299.42 an hour.
20 (Doc. No. 425-3 ¶¶ 2–16; Doc. Nos. 527-2, 530.)
21 Ultimately, the Court finds that SDCC has satisfied its initial burden and guided the
22 Court as to the reasonable hourly rate prevailing in the community for similar work
23 performed by attorneys of comparable skill and reputation. See Chalmers v. City of Los
24 Angeles, 796 F.2d 1205, 1210 (9th Cir. 1986). First, as to the two cases provided by SDCC,
25 the hourly rates determined to be reasonable were $607.50 for Ms. Bjurstrom, $472.50 for
26 Ms. Herrera, (Doc. No. 425-4 at 17), and $630 an hour for a partner and $495 an hour for
27 an associate, (Id. at 24). The remainder of the cases cited to by SDCC demonstrate that
28 rates for attorneys in the intellectual property division have earned upwards of $800.00 an
25
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1 hour. See Zest IP Holdings, LLC v. Implant Direct Mfg., LLC, No. 10-CV-0541-GPC
2 (WVG), 2014 WL 6851612, at *5–6 (S.D. Cal. Dec. 3, 2014) (finding rates reasonable
3 where plaintiffs sought “an hourly rate of between $170 per hour and $895 per hour
4 depending on the particular attorney or paralegal” for work by a “multi-state/national law
5 firm”). Thus, based off the cases delineated above, the Court finds SDCC’s unopposed
6 attorneys’ rates listed supra pp. 23–24 reasonable.
7 The Court notes that DFP’s response to SDCC’s supplemental fee brief argues that
8 SDCC has not justified its lawyers’ hefty year-over-year rate increases. (Doc. No. 532 at
9 6.) DFP then requests that the Court should substantially lower rates in calculating the
10 lodestar. (Id. at 7.) This argument is nonsensical. DFP produces no rational justification for
11 why SDCC’s lawyers should not receive raises each year they progress within their firm.
12 Moreover, DFP’s conclusory arguments, unsupported by evidence or case law, do not
13 satisfy their burden of rebuttal.
14 Next as to the paralegal rates, SDCC fails to provide any case law to support the
15 rates of its paralegals and litigation support team members.6 See Blum v. Stenson, 465 U.S.
16 886, 895 n.11 (1984) (“To inform and assist the court in the exercise of its discretion, the
17 burden is on the fee applicant to produce satisfactory evidence—in addition to the
18 attorney’s own affidavits—that the requested rates are in line with those prevailing in the
19 community for similar services . . . .”). Nevertheless, the Court may consider SDCC’s
20 declaration in addition to similar cases and its own knowledge and familiarity with the
21 Southern District of California legal market in setting a reasonable hourly rate. See Ingram
22 v. Oroudjian, 647 F.3d 925, 928 (9th Cir. 2011).
23 Reasonable rates for paralegals in this district have ranged from $125 to $225. See
24 In re Maxwell Techs., Inc., Derivative Litig., No. 13CV966 BEN (RBB), 2015 WL
25 12791166, at *5 (S.D. Cal. July 13, 2015) (awarding $225 paralegal rate to paralegals with
26

27
6
For purposes of this Order, the Court will group SDCC’s paralegals, legal analysts,
28 litigation support team members, and research specialists into one group.
26
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1 “significant experience”); see also Flowrider Surf, Ltd. v. Pac Surf Designs, Inc., No.
2 15cv1879-BEN (BLM), 2017 WL 2212029, at *2–3 (S.D. Cal. May 18, 2017) (awarding
3 paralegal fees of $150 per hour in a patent infringement case); LG Corp. v. Huang Xiaowen,
4 No. 16-CV-1162-JLS (NLS), 2017 WL 3877741, at *3 (S.D. Cal. Sept. 5, 2017) (finding
5 reasonable a rate of $225 per hour for a paralegal with over twenty years of experience).
6 At its highest, this district has approved a paralegal rate of $290.00. See In re Maxwell
7 Techs., Inc., 2015 WL 12791166, at *5.
8 Pillsbury is an American Lawyer Top 100 law firm with its IP litigation practice
9 named in the Best Lawyers in America for 2017. (Doc. No. 425-3 ¶ 17.) Thus, the Court
10 does not dispute the quality of the work Pillsbury’s paralegals provided. However, SDCC
11 has failed to produce evidence to demonstrate that its paralegal rates of over $300.00 an
12 hour are reasonable. Accordingly, taking into consideration Pillsbury’s national and global
13 presence, the Court will cap SDCC’s paralegal, legal analysts, and litigation support team
14 members’ hourly rates at $290.00—the high end of paralegal rates provided by this district.
15 See Carr v. Tadin, Inc., 51 F. Supp. 3d 970, 981 (S.D. Cal. 2014) (listing paralegal rates
16 that ranged from $110.00 to $295.00, but concluding that as rates of $125–$150
17 predominated, a $150.00 per hour rate for paralegals was reasonable). The final award will
18 be adjusted in light of the above mentioned modification.
19 In sum, the Court finds SDCC’s attorneys’ rates in this case reasonable—these rates
20 were largely unopposed by DFP. The paralegals and litigation support team members with
21 rates over $290.00 an hour will be capped at $290.00. The remainder of the paralegal rates
22 that do not exceed $290.00 are considered reasonable.
23 ii. Hours Reasonably Spent
24 “The moving party bears the burden of documenting the appropriate hours spent in
25 the litigation and submitting evidence in support of the hours worked.” Zest IP Holdings,
26 2014 WL 6851612, at *6. After the moving party provides evidence of the hours billed, the
27 opposing party has the burden of submitting evidence “challenging the accuracy and
28 reasonableness of the hours charged or the facts asserted by the prevailing party in its
27
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1 submitted affidavits.” Gates, 987 F.2d at 1398. “Even if the opposing party has not objected
2 to the time billed, the district court ‘may not uncritically accept a fee request,’ but is
3 obligated to review the time billed and assess whether it is reasonable in light of the work
4 performed and the context of the case.” Rodriguez v. Barrita, Inc., 53 F. Supp. 3d 1268,
5 1280 (N.D. Cal. 2014).
6 District courts have discretion to reduce the number of hours that were not
7 reasonably expended. Hensley, 461 U.S. at 434. When determining whether the number of
8 hours expended is reasonable, the following criterion may be taken into account, but each
9 factor cannot be an independent basis to reduce hours: “(1) the novelty and complexity of
10 the issues, (2) the special skill and experience of counsel, (3) the quality of representation,
11 and (4) the results obtained.” Cabrales v. Cty. of Los Angeles, 864 F.2d 1454, 1464 (9th
12 Cir. 1988) (citation omitted), judgment vacated on other grounds by 490 U.S. 1087 (1989).
13 SDCC requests all hours billed from the inception of this case to August 10, 2018.
14 (Doc. No. 527 ¶¶ 3, 4.) In analyzing reasonableness, the Court first notes that DFP requests
15 a deduction for quarter-hour billing. (Doc. No. 512 at 30.) Courts have recognized that
16 billing by the quarter-hour, not by the tenth is a “deficient” practice “because it does not
17 reasonably reflect the number of hours actually worked.” See Zucker v. Occidental
18 Petroleum Corp., 968 F. Supp. 1396, 1403 n.11 (C.D. Cal. 1997) (demonstrating that an
19 attorney with a $300 hourly rate who works six minutes on a matter would charge $30 if
20 he bills by the tenth of an hour and $75 if he bills by the quarter hour). Due to this, courts
21 have reduced the fee award by a percentage to account for the unearned increment based
22 on quarter-hour billing. See Preseault v. United States, 52 Fed. Cl. 667, 680–81 (Fed. Cl.
23 2002). In the present case, the Court in its discretion reduces SDCC’s attorneys’ fee award
24 by twenty percent to account for the practice of billing by the quarter-hour. See Zest IP
25 Holdings, 2014 WL 6851612, at *10 n.2 (taking a 20% overall reduction in fees based on
26 quarter-hour billing).
27 DFP also briefly asserts that a reduction is appropriate as SDCC failed to delegate
28 tasks to staff or colleagues with lower billing rates. (Doc. No. 512 at 30–31.) The Court
28
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1 disagrees. As SDCC’s time sheet demonstrates, the senior attorneys such as Ms. Herrera,
2 Ms. Bjurstrom, and Mr. Hahn were mainly in charge of researching and drafting the
3 dispositive motions in this case as well as settlement and discovery matters. (Doc. No. 507
4 at 23, 29.) It is only logical to have the more senior attorneys personally involved in these
5 major parts of the litigation process. Moreover, the timesheet demonstrates that SDCC did
6 in fact delegate other more basic legal tasks to associate attorneys with lower billing rates
7 such as Lauren Wardle and Tim Rawson. (Doc. No. 507 at 102, 103, 105, 159, 163.)
8 The Court notes however that it finds that some tasks were not properly delegated
9 amongst SDCC’s paralegal and litigation support team members. For example, on June 7,
10 2017, John Farahjood was given the task of printing redacted PDF files. Printing files is
11 not a reasonable use of a litigation support specialist who has a rate of $305.00 an hour.
12 (Doc. No. 507 at 122 (see Banas v. Volcano Corp., 47 F. Supp. 3d 957, 970 (N.D. Cal.
13 Dec. 12, 2014).) Thus, a reduction in the final lodestar amount is warranted.
14 Finally, DFP spends a sentence broadly concluding that SDCC’s task descriptions
15 are highly general and frequently redacted and therefore warrant closer scrutiny. (Doc. No.
16 512 at 30.) First, as to the redactions, “[a] party seeking fees may redact certain portions of
17 the relevant time entries when doing so is necessary to protect the attorney client privilege,
18 so long as the unredacted portions still afford[] the Court sufficient detail to determine the
19 reasonableness of the hours requested.” Shame on You Productions, Inc. v. Banks, CV 14-
20 03512-MMM (JCx), 2016 WL 5929245, at *16 (C.D. Cal. Aug. 15, 2016) (citation and
21 internal quotation marks omitted).
22 The Court notes that there are certain time entries that have been so heavily redacted
23 that the Court cannot assess the reasonableness of the time expended. For example on
24 August 6, 2017, Michelle Herrera stated “Research regarding [REDACTED].” (Doc. No.
25 507 at 150.) This type of redaction has resulted in courts declining to award fees as to those
26 heavily redacted billing entries. See Shame on You Productions, 2016 WL 5929245, at *16.
27 However, in the instant matter, SDCC redacted time entries, but also made the entries
28 available to the Court for in-camera review. (Doc. No. 425-3 ¶ 23.) Thus, DFP’s attack on
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1 SDCC’s redacted time entries fails. See Vogel v. Tulaphorn, CV 13-464 PSG (PLAx), 2014
2 WL 12629679, at *10 (C.D. Cal. Jan. 30, 2014) (refusing to reject the defendant’s request
3 for fees as it willingly stated that it could provide the redacted entries for in-camera
4 review); see also R.M. v. Encinitas Union Sch. Dist., No. 08cv412-L (JMA), 2013 WL
5 3873069, at *3 (S.D. Cal. July 25, 2013) (conducting an in-camera review of the
6 defendant’s invoice to determine reasonableness).
7 Next, as to DFP’s assertion that the time entries are too general, the Court agrees in
8 part. Though, SDCC’s counsel “is not required to record in great detail how each minute
9 of his [or her] time was expended,” Lytle v. Carl, 382 F.3d 978, 989 (9th Cir. 2004), a
10 certain amount of specificity is required. Presently, some entries are incredibly vague. For
11 instance, there are several entries that simply state in some form: “Assist with review
12 project.” (Doc. No. 507 at 121, 122, 124, 136.) Additionally, on October 28, 2016, the time
13 entry states: “Call with S. Edge regarding additional documents for review and review
14 plan,” (Id. at 61), and on November 29, 2016, the narrative described states: “Document
15 review,” (Id. at 67). This is a billing deficiency that justifies a reduction.
16 In that same vein the Court also reduces the amount of hours SDCC requests for
17 duplicative attorney effort. Although it has been recognized that “the participation of more
18 than one attorney does not necessarily constitute an unnecessary duplication of effort[,] see
19 McGrath, 67 F.3d at 255, the Court believes that certain hours were not reasonably
20 expended. For example in July of 2017, Mr. Hahn, Ms. Herrera, and Mr. Smith all took
21 turns revising a sanctions motion. (Doc. No. 507 at 136.) Similarly, in that same month,
22 Mr. Hahn, Mr. Smith, Mr. Stephens, Ms. Bjurstrom, and Ms. Herrera all billed for
23 reviewing the opposition brief to DFP’s motion for leave to amend the pleading. (Id. at
24 140.) Thus, another reduction in the lodestar figure is appropriate. See Mogck v. Unum Life
25 Ins. Co. of Am., 289 F. Supp. 2d 1181, 1195 (S.D. Cal. 2003) (finding a reduction of fees
26 reasonable as both attorneys billed for reviewing the defendant’s objection and two
27 attorneys billed for reviewing the Ninth Circuit opinion in the case); see also Hensley, 461
28 U.S. at 432–34 (holding that counsel submitting fee applications must exclude hours that
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1 are “excessive, redundant, or otherwise unnecessary[.]”); AT&T Mobility LLC v. Yeager,

2 No. 2:13-cv-00007 KJM DB, 2018 WL 1567819, at *2 (E.D. Cal. Mar. 30, 2018)
3 (highlighting that the court has broad discretion to adjust the lodestar fee downward if it
4 concludes the attorneys performed work that was excessive or duplicative).
5 Finally, the Court addresses the arguments present in DFP’s response to SDCC’s
6 supplemental brief. (Doc. No. 532.) Finding that most of DFP’s qualms have already been
7 addressed above, the Court focuses solely on the assertion that a reduction is justified based
8 on overstaffing. (Id. at 4.) Here, the Court agrees with DFP that SDCC’s decision to send
9 three lawyers to the post-trial motion hearing is an unreasonable use of time. As Mr. Hahn
10 did not actively participate at the hearing, the Court will not award Mr. Hahn’s fees totaling
11 $3,532.50 in relation to this matter. (Doc. No. 527-1 at 15.)
12 In sum, the Court reduces SDCC’s fee request by 20% for quarter-hour billing.
13 Additionally, based on the other billing deficiencies delineated above, an additional 5%
14 reduction is warranted as well as a reduction of $3,532.50 for overstaffing. As to the
15 remainder of the hours, after an in-camera review, the Court finds the billed hours are well
16 within the bounds of reason and include sufficient descriptions reflecting the date, amount,
17 and nature of the work SDCC’s attorney’s performed. See LG Corp., 2017 WL 3877741,
18 at *4. Thus, the Court finds no further deduction necessary based on the nature and context
19 of the case, quality of the representation, and result obtained.
20 iii. Lodestar Calculation
21 Table 1: Hourly
Rates
22
2014
23 Timekeeper Hourly Rate Billed Hourly Rate Time Billed
24 Awarded
25 Bjurstrom, Callie A. $675.00 $675.00 24.05 hours
26 Hahn, Peter K. $675.00 $675.00 89 hours
27 Herrera, Michelle A. $525.00 $525.00 41.20 hours
28
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1 Drake, Colin B. $275.00 $275.00 0.50 hours

2 Edge, Sandra V. $285.00 $285.00 19.25 hours
3
4 Table 2: Hourly
5 Rates
2015
7 Awarded
8 Bjurstrom, Callie A. $705.00 $705.00 24 hours
9 Gallacher, Kirsten F. $385.00 $385.00 10.25 hours
10 Hahn, Peter K. $705.00 $705.00 174 hours
11 Herrera, Michelle A. $550.00 $550.00 72 hours
12 Drake, Colin B. $290.00 $290.00 5.25 hours
14
15 Table 3- Hourly
16 Rates
2016
17
Timekeeper Hourly Rate Billed Hourly Rate Time Billed
18
Awarded
19
Bjurstrom, Callie A. $735.00 $735.00 93.25 hours
20
Gallacher, Kirsten F. $480.00 $480.00 98.75 hours
21
Hahn, Peter K. $735.00 $735.00 480.75 hours
22
Herrera, Michelle A. $565.00 $565.00 229.50 hours
23
Stanton, David $765.00 $765.00 0.25 hours
24
Drake, Colin B. $295.00 $290.00 16.50 hours
25
Edge, Sandra V. $305.00 $290.00 172.50 hours
26
Trinidad, Val $295.00 $290.00 6.25 hours
27
28
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1 Table 4-Hourly
Rates
2
2017
4 Awarded
5 Bjurstrom, Callie A. $760.00 $760.00 1085 hours
6 Chevalier, Andrew $110.00 $110.00 85.25
7 Civins, Conor M. $608.16 $608.16 283.75 hours
8 Collier, William E. $110.00 $110.0 167.50 hours
9 DiCarlo, Carl $110.00 $110.00 205.50 hours
10 Gallacher, Kirsten $545.00 $545.00 119 hours
11 F.
12 Hahn, Peter K. $760.00 $760.00 1422.75 hours
13 Herrera, Michelle A. $585.00 $585.00 967.55 hours
14 McDonough, $110.00 $110.00 88.25 hours
15 Benton
16 McNair, Wilton A. $110.00 $110.00 85.75 hours
17 Porter, Allison $110.00 $110.00 69 hours
18
Prewitt, Candes V. $110.00 $110.00 81.75 hours
19
Rawson, P.E., Tim $485.35 $485.35 50.25 hours
20
Romeo, Jennifer R. $110.00 $110.00 123.25 hours
21
Sims, Kelly J. $110.00 $110.00 184.75 hours
22
Smith, Nathaniel R. $578.42 $578.42 45.00 hours
23
Stanton, David $790.00 $790.00 12.75 hours
24
Stephens, Matthew $545.00 $545.00 200.75 hours
25
R.
26
Villalobos, Jenny R. $110.00 $110.00 167.25 hours
27
Wardle, Lauren E. $560.00 $560.00 145.45 hours
28
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1 Wooden, Eboni T. $110.00 $110.00 141.75 hours

2 Yeaman, Calumn J. $110.00 $110.00 98.75 hours
3 Barnes, Stacey $335.00 $290.00 5 hours
4 Bridges, Martin $425.00 $290.00 1 hour
5 Brooks, Thomas $305.00 $290.00 1 hour
6 Campbell, Stacey $285.00 $285.00 7.25 hours
7 Drake, Colin B. $305.00 $290.00 89 hours
8 Edge, Sandra V. $315.00 $290.00 1,195.75 hours
9 Farahjood, John $305.00 $290.00 17 hours
10 Gartman, Cody A. $245.00 $245.00 224.80 hours
11 Moffat, Gordon $390.00 $290.00 15.75 hours
12 Monarrez, John D. $150.00 $150.00 12.75 hours
13 Ng, Patrick $305.00 $290.00 0.50 hours
14
Perez, Louie $295.00 $290.00 120.25 hours
15
Trinidad, Val $300.63 $290.00 151 hours
16
Vugrinecz, J. $299.42 $290.00 18.75 hours
17
Anthony
18
19
Table 5-Hourly
20 Rates
21 2018
Timekeeper Hourly Rate Billed Hourly Rate Time Billed
22
Awarded
23
Bjurstrom, Callie A. $795.00 $795.00 221.70 hours
24
Civins, Conor M. $675.00 $675.00 14.25 hours
25
Hahn, Peter K. $785.00 $785.00 221 hours
26
Herrera, Michelle A. $605.00 $605.00 330.30 hours
27
Wardle, Lauren E. $615.00 $615.00 120.75 hours
28
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2 Monarrez, John D. $300.00 $290.00 0.25 hours
3
4 SDCC requests $4,994,245.20 in attorneys’ fees and costs. (Doc. No. 527 ¶ 5.) The
5 Court notes however, that the lodestar number based off of the declarations provided by
6 SDCC is $5,278,438.88. This discrepancy is due to the fact that the lodestar number does
7 not include courtesy discounts that occurred in March 2017 ($11,000), April 2017
8 ($30,000), May 2017 ($30,000), June 2017 ($50,000), July 2017 ($20,000), August 2017
9 ($25,000), September 2017 ($25,000), October 2017 ($30,000), November 2017
10 ($55,000), December 2017 ($20,000), January 2018 ($10,000), and February 2018
11 ($10,000). In total, SDCC provided $316,000 in courtesy discounts. Subtracting the
12 courtesy discounts, the new lodestar number is 4,962,438.88. After the 20% reduction for
13 quarter-hour billing, the 5% reduction for other billing deficiencies, and the $3,532.50 for
14 overstaffing, the final lodestar number is $3,767,921.06.
15 iv. Expert Costs
16 The Lanham Act provides that “[w]hen a violation of any right of the registrant of a
17 mark registered in the Patent and Trademark Office . . . have been established in any civil
18 action . . . the plaintiff shall be entitled to . . . (3) the costs of the action.” 15 U.S.C. §
19 1117(a). Under Federal Rule of Civil Procedure 54, costs other than attorney’s fees may
20 be allowed to the prevailing party unless a federal statute or a court order provides
21 otherwise. Fed. R. Civ. P. 54(d)(1).
22 SDCC seeks to recover certain non-taxable costs. Specifically, SDCC requests
23 $243,833.06 that SDCC paid to its two experts: Matthew G. Ezell and Patrick Kennedy,
24 along with their assistants. (Doc. No. 425-3 ¶ 24.) DFP does not oppose this request. (See
25 generally Doc. No. 512.)
26 Ms. Bjurstrom’s declaration delineates the various benefits and advantages provided
27 by both experts. For instance, Mr. Ezell conducted the Teflon Survey that addressed the
28 primary significance of “Comic-Con” to the public. (Doc. No. 425-3 ¶ 25.) Additionally,
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1 Mr. Ezell performed substantive research and helped analyze and develop a response to the
2 report prepared by DFP’s expert Jeffrey Kaplan. (Id.) As to Mr. Kennedy, he was hired to
3 assess SDCC’s damage remedies and also prepared and submitted a detailed expert report
4 and supplemental report. (Id. ¶ 26.) Both experts’ invoices were provided to the Court.
5 (Doc. No. 425-6.)
6 It is clear from the record that Mr. Ezell’s work was critical to SDCC’s ultimate
7 success in the action—specifically to its trademark infringement claim. Thus, given the
8 reliance on Mr. Ezell and his survey, his fee of $92,323.56 for his work in connection with
9 this matter was reasonably necessary for the prosecution of SDCC’s case. See SAS v.
10 Sawabeh Info. Servs. Co., No. CV 11-04147 MMM (MANx), 2015 WL 12763541, at *35
11 (C.D. Cal. June 22, 2015.) The Court will thus award $92,323.56 in costs.
12 In comparison, Mr. Kennedy’s necessity is less clear. Though he testified to various
13 important financial matters, his corrective advertising report stating that a brand repair
14 program would cost $9.62 million was not well-received by the jury as evidenced by the
15 jury award of only $20,000. (Doc. No. 234-1 at 22; Doc. No. 395 at 8.) Based on the
16 foregoing, the Court in its discretion, advances only $120,000.00 instead of $151,509.50
17 as costs to cover Mr. Kennedy’s expenses. (Doc. No. 423-3 ¶ 26 (see Brighton Collectibles,
18 LLC v. Believe Production, Inc., No. 2:15-cv-00579-CAS (ASx), 2018 WL 1381894, at *5
19 (C.D. Cal. Mar. 15, 2018)).)
20 Accordingly, the Court awards SDCC $212,323.56 to cover the costs of its two
21 experts. See Lanyard Toys Ltd. v. Novelty, Inc., No. CV 05-8406-GW (JWJx), 2008 WL
22 11333941, at *21 (C.D. Cal. Mar. 18, 2008) (explaining that the district courts “may award
23 otherwise non-taxable costs . . .”) (citation omitted).
24 CONCLUSION
25 The Court has exhaustively and carefully considered the totality of the
26 circumstances in this case. Having done so, the Court finds that this case stands out when
27 compared to run of the mill trademark infringement cases. Accordingly, in its discretion,
28
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1 finding this case “exceptional” pursuant to 15 U.S.C. § 1117(a), SDCC as the prevailing
2 party is awarded attorneys’ fees and costs subject to the deductions listed above.
3 It is accordingly ORDERED that SDCC is awarded attorneys’ fees and costs
4 totaling $3,962,486.84.7 This award includes $3,767,921.06 in attorneys’ fees and
5 $212,323.56 in expert costs. The Clerk of Court must enter judgment for SDCC and against
6 DFP, and each of them, in this amount, as well as the $20,000 awarded by the jury, in this
7 case. The Clerk of Court is also directed to issue the permanent injunction. As no issues
8 remain, the Clerk is instructed to CLOSE the docket of this case. Accordingly, SDCC’s
9 motion for attorneys’ fees and costs is GRANTED IN PART AND DENIED IN PART.
10
12
14
15
16
17
18
19
20
21
22
23
24
25
7
The Court notes that the final award was adjusted by deducting $17,757.78 in attorneys’
26 fees that were awarded to SDCC and paid by DFP in relation to DFP’s unsuccessful motion
27 for sanctions. (Doc. Nos. 484, 522; Doc. No. 532 at 3.) The Court disagrees with DFP that
the award should be reduced by $23,238, which is the amount SDCC initially requested.
28 (Doc. No. 532 at 3.)
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EXHIBIT 14
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1 Michael I. Katz (SBN 181,728)

mkatz@mabr.com
2
L. Rex Sears (SBN 294,533)
3 rsears@mabr.com
4
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
cveverka@mabr.com
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13

DEFENDANTS’ NOTICE OF
19 Plaintiff, APPLICATION AND EX PARTE
20 v. APPLICATION TO STAY
ENFORCEMENT OF
21 DAN FARR PRODUCTIONS, a Utah limited JUDGMENT
22 liability company; and DANIEL FARR and
BRYAN BRANDENBURG, individuals, [Memorandum of points and
23 authorities and declarations of Bryan
Defendants.
24 Brandenburg, Daniel Farr, Ben
McAdams, Kat Martin, and L. Rex
25 Sears submitted herewith]
26
AND RELATED COUNTERCLAIMS Courtroom: 4A (4th Floor Schwartz)
28
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1 TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE

2 NOTE THAT counsel for defendants and counterclaimants Dan Farr Productions
3 (“DFP”), Daniel Farr, and Bryan Brandenburg will and do hereby move the above-
4 entitled Court (Hon. Anthony Battaglia, presiding) for an ex parte order (1) staying
5 execution on the monetary component, and (2) exempting certain conduct (as more fully
6 described in the accompanying memorandum) from the injunctive component, of the
7 “Judgment in a Civil Case” entered August 23, 2018 in favor of San Diego Comic
8 Convention (“SDCC”), under FEDERAL RULE OF CIVIL PROCEDURE 62. Failing that, DFP,
9 Farr, and Brandenburg ask the Court to stay execution while a motion for relief under
10 FEDERAL RULE OF APPELLATE PROCEDURE 8 is made to the Ninth Circuit.
11 This application is and will be supported by the accompanying memorandum of
12 points and authorities and exhibits thereto, by the accompanying declarations of Bryan
13 Brandenburg, Ben McAdams, Kat Martin, and L. Rex Sears, and by such other evidence
14 and argument as may be presented at or before any hearing on the application. This
15 application is accompanied by a declaration of counsel certifying compliance with the
16 Court’s Civil Case Procedure III.1 and Local Rule 83.3(2). Counsel for SDCC has
17 indicated that SDCC will oppose this request.
18
DATED: September 18, 2018 Michael I. Katz
20 L. Rex Sears
23 Attorneys for Defendants and Counterclaimants DAN
FARR PRODUCTIONS, LLC,
25
26
27
28
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3 foregoing document has been served on September 18, 2018 to all counsel of record who
5 Civil Local Rule 5.4. Any other counsel of record will be served by electronic mail,
6 facsimile and/or overnight delivery.
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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1 Michael I. Katz (SBN 181728)

mkatz@mabr.com
2
L. Rex Sears (SBN 294,533)
3 rsears@mabr.com
4
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
cveverka@mabr.com
9
11
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13

DEFENDANTS’
19 Plaintiff, MEMORANDUM OF POINTS
20 v. AND AUTHORITIES IN
SUPPORT OF DEFENDANTS’
21 DAN FARR PRODUCTIONS, a Utah limited EX PARTE APPLICATION TO
22 liability company; and DANIEL FARR and STAY ENFORCEMENT OF
BRYAN BRANDENBURG, individuals, JUDGMENT
23
Defendants.
24 Courtroom: 4A (4th Floor Schwartz)
25
26
28

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1 I. INTRODUCTION
2 On August 23, 2018, this Court entered final judgment, awarding both monetary and
3 injunctive relief to plaintiff San Diego Comic Convention (“SDCC”). The monetary
4 award consists mostly of attorney and expert fees totaling nearly $4 million, “against
5 DFP, and each of them.” (ECF Doc. 543.) On Friday, September 14, 2018, defendants
6 Dan Farr Productions, LLC (“DFP”), Daniel Farr, and Bryan Brandenburg appealed the
7 judgment to the Ninth Circuit. (ECF Doc. 549.)
8 By this application, DFP—joined, to the extent the judgment is against them
9 individually, by Farr and Brandenburg—seeks interim relief from the judgment, pending
10 appeal, under FEDERAL RULE OF CIVIL PROCEDURE (“Rule”) 62(c) and (d). Specifically,
11 DFP asks the Court to: (1) set bond in an amount sufficient to secure the jury’s $20,000
12 damages award, but not the multi-million attorney- and expert-fee awards, and
13 (2) exempt the following, to the extent they would otherwise be prohibited, from the
14 injunctive provisions of the judgment:
15 (a) continued operation of a Facebook group page at the URL
16 https://www.facebook.com/groups/saltlakecomiccon/;
17 (b) continued operation of a YouTube channel at the URL ; and
18 (b) continuing to receive emails at (but not send emails from) addresses on the
19 saltlakecomiccon.com and slcomiccon.com domains.
20 In addition, several DFP websites and social media sites include legacy content (postings,
21 pictures, videos) that include the words “Salt Lake Comic Con” and images or audio of
22 the name “Salt Lake Comic Con.” The judgment does not speak explicitly to whether
23 “Salt Lake Comic Con” must be scrubbed from legacy content. But if the Court believes
24 that its injunction does require old references to be scrubbed then DFP also seeks relief
25 from that requirement, pending appeal.
26 DFP asks that the requested stays be made for the duration of the appeal. But failing
27 that, it asks the Court to at least stay execution and enforcement at least until the Ninth
28 Circuit acts on a motion under FEDERAL RULE OF APPELLATE PROCEDURE 8.

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1 II. LEGAL STANDARDS

2 A. Bond amount
3 “Typically, the amount of the bond matches the full amount of the judgment,”1 but
4 “[d]istrict courts … have inherent discretionary authority in setting supersedeas bonds.”2
5 That includes the discretion to waive bond altogether.3 “In making that determination we
6 look to general equitable principles. Accordingly, when setting supersedeas bonds courts
7 seek to protect judgment creditors as fully as possible without irreparably injuring
8 judgment debtors.”4
9 B. Modification or stay of injunction
10 “While an appeal is pending from [a] … final judgment that grants … an injunction,
11 the court may suspend [or] modify … an injunction …”5 The following four-factor test
12 governs requests for stay under Rule 62(c): “(1) whether the stay applicant has made a
13 strong showing that he is likely to succeed on the merits; (2) whether the applicant will be
14 irreparably injured absent a stay; (3) whether issuance of the stay will substantially injure
15 the other parties interested in the proceeding; and (4) where the public interest lies.”6
16
17
18
19
1
Olcott v. Delaware Flood Co., 76 F.3d 1538, 1559 (10th Cir. 1996).
20 2
Miami Int’l Realty Co. v. Paynter, 807 F.2d 871, 873 (10th Cir. 1986).
21 3
See Sealover v. Carey Canada, 806 F. Supp. 59, 61 (M.D. Pa. 1992) (“A district court
22 may exercise its discretion to waive the bond requirement imposed by Rule 62(d).”).
4
23 Id. (italics added) (quoting Texaco Inc. v. Pennzoil Co., 784 F.2d 1133, 1154 (2d Cir.
1986), rev’d on other grounds, 481 U.S. 1); see also Miami Int’l, 807 F.2d at 874 (“The
24
court did not err in granting a stay without a supersedeas bond for the full amount of …
25 judgment” where the judgment debtor “did not have sufficient assets to post a
supersedeas bond … above his malpractice coverage” and “execution of the judgment
26
would cause him irreparable harm and place him in insolvency”).
27 5
FED. R. CIV. P. 62(c).
28 6
Hilton v. Braunskill, 481 U.S. 770, 776 (1987).

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1 (Those so-called “Hilton factors” have been more broadly used to determine whether to
2 grant a stay of enforcement for a judgment with a monetary component as well.7)
3 Courts have recognized the difficulty with asking a court to acknowledge any
4 vulnerability in its rulings as a condition of granting a stay of enforcement.8 But the Court
5 does not need to agree that any of its rulings were incorrect to find a basis for granting the
6 stay of enforcement requested by DFP.9 The Hilton factors correspond to the preliminary-
7 injunction standard. Alliance for the Wild Rockies v. Cottrell discusses at length the Ninth
8 Circuit’s position that the test for an injunction should be applied on a sliding scale,10 on
9 which relief is available when “serious questions going to the merits were raised and the
10 balance of hardships tips sharply in the [applicant’s] favor.”11 Thus, where the appealable
11 merits present at least “serious questions,” hardship to the movant can justify a stay.
12 III. BACKGROUND
13 The judgment’s injunction is set forth in six numbered paragraphs, of which two are
14 most relevant to this application:
15 1) DFP is enjoined from use of SDCC’s three trademarks asserted in this case,
[or] any confusingly similar marks (i.e. Comicon or Comiccon) … in the name
16
of any comic or popular arts convention or event or in connection with the
17 promotion, advertising, products or marketing of any comic or popular arts
convention or event. …
18
19
20 7
See Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., Case No. CV 02–1087–VAP
21 (CWx), 2008 WL 11336665, *2-3 (C.D. Cal. July 14, 2008).
8
22 Gen. Teamsters Union Local 439 v. Sunrise Sanitation Servs., Inc., No. CIV. S-05-1208
WBS JFM, 2006 WL 2091947, *3 (E.D. Cal. July 26, 2006) (explaining that a rigid
23
application of the success on the merits element would require the district court to
24 conclude that it was probably incorrect in its determination of the merits).
9
25 Washington Metropolitan Area Transit Comm’n v. Holiday Tours, Inc., 559 F.2d 841,
843 (D.C. Cir. 1977).
26 10
632 F.3d 1127, 1134–35 (9th Cir. 2011) (quoting Lands Council v. McNair, 537 F.3d
27 981, 987 (9th Cir. 2008) (en banc)).
28 11
Id.

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1 4) DFP is enjoined from registering or using a domain name that incorporates

any of SDCC’s three trademarks asserted in this case, [or] any confusingly
2 similar mark (i.e. Comicon or Comiccon) … in relation to any comic arts or
3 popular fiction conventions or subject related events or in such a way that
would lead consumers to believe that DFP is sponsored by or related to SDCC.
4
As the Court is aware, as soon as the verdict came down, DFP quickly began moving
5
away from “Salt Lake Comic Con”—even before judgment was entered; and as set forth
6
in the accompanying Brandenburg declaration, DFP has since made additional efforts to
7
conform. However, there remain a few sticking points.
8
A. Unchangeable URLs
9
As the accompanying Brandenburg declaration explains, DFP has changed all the
10
branding and most of the URLs for its online assets. But DFP has not found a way to
11
change three: https://www.facebook.com/groups/saltlakecomiccon/, https://www.
12
youtube.com/user/SLComicCon, and https://plus.google.com/+SLComicCon.
13
The Facebook URL is for a group page. As Brandenburg explains, this is not the
14
same as DFP’s ordinary, public Facebook page but a page for DFP’s “super fans.” Access
15
to the group page is restricted to group members. Membership requires filling out an
16
online application. The group has about 32,000 members, most of whom have been
17
members for years. The group page gets about 10,000-20,000 visits from its members
18
each day. The group’s membership is keenly aware that DFP is not affiliated with SDCC,
19
if for no other reason than that this litigation has been a recurring topic of discussion on
20
the page. DFP has established a new group page, which it has invited members of the
21
existing group to join—but DFP has no way itself of migrating the membership to a
22
different URL. The years of group discussion and other content already accumulated on
23
the existing group page is not portable to the new group page, at all.
24
The YouTube URL is for DFP’s YouTube channel, which has over 500 videos and
25
thousands of subscribers. DFP could avoid the URL by shutting the channel down,
26
entirely—but DFP has found no way to migrate the existing content and subscriber base
27
to a new URL.
28

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1 The Google URL is for DFP’s entry in Google+, Google’s online business directory.
2 The directory includes contact and other information about the business—as well as
3 reviews. Again, DFP could have its existing entry in the directory removed, entirely—but
4 DFP has not found a way to shift the reviews and other content to a new URL.
5 B. Previously registered domains
6 For years, DFP has had registrations for saltlakecomiccon.com and slcomiccon.com.
7 As the Court is aware, DFP no longer hosts online content at those domains. However,
8 DFP continues to receive (but not send) email using addresses on those domains—e.g.,
9 dan@slcomiccon.com.
10 C. Retroactive “scrubbing”
11 The first injunctive provision quoted above directs DFP not to “use of SDCC’s three
12 trademarks asserted in this case, [or] any confusingly similar marks (i.e. Comicon or
13 Comiccon) … in the name of any comic or popular arts convention.” From that, DFP
14 understands it should not, going forward, refer to its convention as “Salt Lake Comic
15 Con.” But what about existing online content? Must it be modified to remove references
16 to “Salt Lake Comic Con”?
17 By way of elaboration, the primary concern here is with older posts about prior
18 conventions, pictures taken at earlier conventions that include “Salt Lake Comic Con”
19 logos, and videos taken at earlier conventions that include either pictures of “Salt Lake
20 Comic Con” logos or audio of people speaking the words “Salt Lake Comic Con.” Active
21 content on DFP’s websites can be, and has been, searched and edited using digital
22 automation tools (e.g., “find and replace”). The text of older posts could be searched for
23 the words “Salt Lake Comic Con” but that text could not be edited out; instead, posts
24 containing those words would have to be removed, in their entirety. Pictures and videos
25 cannot be digitally searched for the words, at all, so the only realistic compliance option
26 would be to eliminate these content categories altogether. DFP would lose six years of
27 irreplaceable content from enthusiastic fans, and have to rebuild its online presence
28 almost from scratch.

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1 D. Bonding efforts
2 As attested in the accompanying Farr and Brandenburg declarations, DFP’s
3 representatives have made efforts to obtain a supersedeas bond covering the entire
4 amount of the judgment, including the fee awards, but without success. Those efforts
5 have failed because sureties do not consider DFP’s most valuable assets as suitable
6 collateral.
7 DFP’s annual event continues to be a great success. Attendance this year was about
8 110,000. The problem is that DFP’s enduring, productive wealth is in intangibles,
9 including its reputation, established fan-base, expertise, and connections. Sureties want a
10 security interest in hard or liquid assets, in order to post bond. They will not accept DFP’s
11 going-concern value as collateral.
12 Net proceeds from this year’s event are healthy but not enough to pay (or bond) the
13 attorney-fees award. In order to continue in business, DFP needs most of that money to
14 seed next year’s event. If DFP’s accounts are frozen or subject to garnishment then DFP
15 will not be able to, for example, secure the celebrity appearances that drive fan
16 attendance, or engage in the presale promotions that sell tickets.
17 IV. ARGUMENT
18 A. There are serious questions going to the merits of DFP’s appeal.
19 Less than a month ago, the Court issued several orders disposing of post-verdict
20 motions that covered many of the major issues in the case.12 DFP will not burden the
21 Court with repetition of matters presented in those recently decided motions. DFP
22 respectfully submits, and hopes the Court will agree, that although the Court did not
23 accept DFP’s contentions, those contentions at least raise serious questions going to the
24 merits.
25
26
27
28 12
See, e.g., ECF Docs. 534, 536, 537, 538, 542.

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1 B. DFP will be irreparably injured absent a stay.

2 1. Requiring DFP to bond the fees awards will inflict irreparable harm.
3 If this Court does not stay execution of the multi-million dollar fee awards by which
4 it augmented the jury’s $20,000 damages verdict, pending appeal, then it will have armed
5 SDCC with the weapon it needs to drive DFP out of business, altogether. SDCC will,
6 through execution, prevent DFP from making the investments needed to put on
7 successful productions in future, and it will deprive DFP even of the resources it needs to
8 prosecute its appeal.
9 Bond is properly waived to prevent “irreparable harm in the form of employee
10 layoffs, immediate insolvency, and, possibly, extinction.”13 That is the case, here. Also,
11 irreparable harm results where failure to grant a stay “will entirely destroy appellants’
12 rights to secure meaningful review” of the district court’s decision.14 Denying relief
13 threatens DFP’s right to meaningful appellate review by threatening to destroy DFP
14 itself, before it can prosecute its appeal.
15 2. DFP will be irreparably harmed without exemptions from the injunctive
16 elements of the judgment.
17 a. URLs that include “comiccon” in the post-domain path should be
18 exempted.
19 As explained above, DFP asks the Court to exempt three URLs, if covered by the
20 injunction, from the injunction. In those URLs, the domains are facebook.com,
21 youtube.com, and google.com; “comiccon” appears only as part of the post-domain path.
22 The Court’s judgment prohibits using domains that include “comiccon” but does not
23 address URLs. The discussion section of the Court’s injunction order, however, indicates:
24
25 13
Standard Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 515 (Fed. Cir.
26 1990).
14
27 Providence Journal Co. v. FBI, 595 F.2d 889, 890 (1st Cir. 1979) (allowing a stay
pending appeal in a case concerning the surrender of confidential documents because “the
28 status quo could not be restored”).

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1 “DFP is further enjoined from using … or operating a website domain name or URL that
2 feigns a relationship with SDCC through the use of … “Comic Con” …”15
3 “Injunctive relief should be no more burdensome to the defendant than necessary to
4 provide complete relief to the plaintiffs.”16 The judgment comports better with that rule
5 by narrowing the scope from URLs to domains, specifically, because “post-domain paths
6 do not typically signify source” and thus “it is unlikely that the presence of another’s
7 trademark in a post-domain path of a URL would ever violate trademark law.”17
8 The three URLs DFP asks the Court to exempt cannot be changed. The only way
9 DFP has found to stop using the URLs is to abandon the resources altogether. The point
10 is not the URLs themselves, which DFP would change if it could, but what they tap into:
11 tens of thousands of superfans and subscribers, years of accumulated journaling and
12 memories, and all the goodwill that represents. Requiring DFP to abandon all that would
13 be irreparably harmful—and to no purpose: superfans on the Facebook group page and
14 subscribers to DFP’s YouTube channel, for example, are a special class of motivated and
15 invested followers, whom there is no risk of confusing by continuing to use those URLs.
16 b. DFP should be allowed to continue receiving emails at the
17 saltlakecomiccon.com and slcomiccon.com domains.
18 For outbound email, DFP now uses the fanxsaltlake.com. When DFP gives out email
19 addresses, it gives out fanxsaltlake.com addresses. But some people, whose relationship
20 with DFP predates the name change, still have and send email to DFP using addresses at
21 the old saltlakecomiccon.com and slcomiccon.com domains.
22 To the extent it is encompassed by paragraph 4 of the judgment’s injunction,
23 receiving emails at old domains should be exempted. First, the only people who have the
24
15
25 ECF Doc. 538 at 13:2-4.
16
26 Los Angeles Haven Hospice, Inc. v. Sebelius, 638 F.3d 644, 664 (9th Cir. 2011)
(quoting Califano v. Yamasaki, 442 U.S. 682, 702 (1979)).
27 17
Interactive Prod. Corp. v. a2z Mobile Office Sols., Inc., 326 F.3d 687, 698 (6th Cir.
28 2003).

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1 old addresses are people whose relationship with DFP predates the change from Salt
2 Lake Comic Con to FanX Salt Lake Comic Convention—and there is no reason to
3 believe those people will be confused by DFP continuing to receive email at the same
4 address as before. Second, terminating receipt of email at those addresses threatens to
5 disrupt DFP’s existing relationships with current customers.
6 c. Content should not be scrubbed, pending appeal.
7 Finally, if the judgment were found to require scrubbing, or a retroactive purge, of
8 references to “Salt Lake Comic Con” from existing internet posts, DFP should be
9 excused from performing that purge, pending appeal.
10 As the accompanying Brandenburg declaration explains, several of DFP’s websites
11 and social media sites have “infinite scrolling”—which means that as a user of the site
12 continues to scroll down, older and older content is loaded for display. In theory,
13 thousands of posts may thus be retrieved, extending back to the launch of the sites. To
14 review and scrub each of those posts would be impractical.18 Thus the only way to
15 comply would be to destroy the existing sites altogether. DFP has spent years building up
16 goodwill and a following. Both would be irretrievably harmed if its existing sites were
17 destroyed. Thus, if the injunction were construed to require retroactive scrubbing of
18 existing posts, enforcement of that requirement should be stayed pending appeal because
19 “the status quo could not be restored.”19
20 C. SDCC Will Not Be Substantially Injured by a Stay.
21 Staying enforcement will not harm SDCC. First, SDCC does not need the money:
22 its public tax returns show more than $20 million in a bank account that grows by several
23 more millions each year.20 Second, although SDCC might prefer destroying DFP to
24
18
25 Cf. Maggio v. Zeitz, 333 U.S. 56, 69 (1948) (“Every precaution should be taken that
orders issue … only when it appears that obedience is within the power of the party being
26 coerced by the order.”).
27 19
See Providence Journal, 595 F.2d at 890.
28 20
See ECF Doc. 374 at 85:21-25.

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1 receiving money it doesn’t need—SDCC’s odds of getting paid in full go up, not down,
2 the longer DFP stays in business. Third, SDCC will not be harmed by the modest
3 exemptions from the injunction that DFP has requested.
4 D. Public Interest Supports a Stay Pending Appeal.
5 This case “has drawn nationwide attention … in part because ‘comic cons’ have
6 been held in hundreds of venues across the United States.”21 Producers and patrons of
7 those other conventions have an interest in DFP’s appeal being litigated to conclusion,
8 which cannot happen if SDCC uses execution of this Court’s attorney fees award to drive
9 DFP out of business. Also, the accompanying declarations from Salt Lake County’s
10 mayor (Ben McAdams) and a local artist (Kat Martin) attest to the cultural and economic
11 impacts on Utah, ranging far beyond DFP’s own personal interests.
12 V. CONCLUSION
13 Because the factors for a stay each support granting the relief requested, DFP
14 respectfully requests that the Court stay execution and grant the limited exemptions from
15 its permanent injunction for the duration of its appeal—or, in the alternative, at least long
16 enough for the Ninth Circuit to hear and decide a motion for relief under FEDERAL RULE
17 OF APPELLATE PROCEDURE 8.
18
DATED: September 18, 2018 Michael I. Katz
20 L. Rex Sears
23 Attorneys for Defendants and Counterclaimants
DAN FARR PRODUCTIONS, LLC,
25
26
27
28 21
In re Dan Farr Productions, 874 F.3d 590, 591 (9th Cir. 2017).

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EXHIBIT 17
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2 mkatz@mabr.com
L. Rex Sears (SBN 294533)
3 rsears@mabr.com
6 Irvine, California 92618
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
8 Charles J. Veverka (pro hac vice, UT SBN 7110)
cveverka@mabr.com
9
11
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13
SAN DIEGO COMIC CONVENTION, a Case No. 14-cv-1865-AJB-JMA
17
18 DECLARATION OF DANIEL FARR
Plaintiff, IN SUPPORT OF DEFENDANTS’
19
v. EX PARTE APPLICATION TO
20 STAY ENFORCEMENT OF
DAN FARR PRODUCTIONS, a Utah limited JUDGMENT
21 liability company; and DANIEL FARR and
22 BRYAN BRANDENBURG, individuals, Courtroom: 4A (4th Floor Schwartz)
23 Defendants. Judge: Hon. Anthony Battaglia
24
25
26
27
28
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1 I, Daniel Farr, declare and state as follows:

2 1. I am over the age of eighteen, have personal knowledge of the matters set
3 forth below, have relied upon documents kept in the ordinary course of Dan Farr
4 Productions, LLC’s business to which I have access, and if called as a witness, could
5 competently testify to the matters set forth herein.
6 Background
7 2. I, along with Bryan Brandenburg and Dan Farr Productions, LLC (“DFP”)
8 am a defendant in the above-captioned case.
9 3. I make this declaration in support of Defendants’ Ex Parte Application to
10 Stay Enforcement of Judgment.
11 4. I am the Producer and Co-Founder of DFP which organizes and produces an
12 annual event in Salt Lake City, Utah called FanX Salt Lake Comic Convention (“FanX”).
13 FanX was formerly called Salt Lake Comic Con.
14 5. DFP produced its first comic convention in 2013 and has produced two
15 comic conventions in Salt Lake City every year since except for 2018, which we
16 produced only one. Each successive summer comic convention produced and organized
17 by DFP has drawn more participants and revenue than the last through 2015, which was
18 our best year. Growth was flat for two years and this event in 2018 was better than the
19 two previous years. With the name change behind us, I expect a very positive growth
20 curve to continue for future FanX events.
21 6. DFP presently employs 12 full and part-time employees (not including
22 Bryan and myself). In the weeks before and during FanX, DFP employs an additional 6
23 temporary employees and multiple contractors.
24 7. Presently, DFP’s annual payroll budget is $700,000.
25 Judgment and Injunction Against Defendants
26 8. On December 8, 2017, by special verdict, the jury in the above-captioned
27 case found (1) trademark infringement, (2) no willfulness, (3) no false designation of
28 origin, and (4) $20,000 in damages.
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1 9. On August 23, 2018 this Court granted motions by plaintiff-San Diego

2 Comic Convention for permanent injunction and attorney fees. This Court entered
3 judgement on the same day.
4 10. The fee award entered by this Court was $3,962,486.84.
5 Irreparable Harm
6 11. DFP, Bryan Brandenburg and I will face irreparable harm absent a stay of
7 (1) execution on the attorney-fees award, without bond, and (2) certain provisions of the
8 injunction.
9 Execution of the Judgment
10 12. After entry of judgement by this Court, Bryan Brandenburg and I through
11 our attorneys contacted surety companies seeking issuance of a supersedeas bond to
12 secure the amount of judgment while an appeal of the judgment is pending.
13 13. DFP, Bryan Brandenburg and I were not able to obtain a supersedeas bond
14 because sureties will not accept the substantial going-concern value of DFP as collateral
15 and Bryan Brandenburg and I do not have sufficient personal assets to provide of
16 sufficient collateral.
17 14. DFP’s continuing and productive assets are primarily intangibles, including
18 its reputation, established fan-base, expertise, and connections—not hard assets that can
19 be mortgaged as security for a bond.
20 15. The net proceeds from this year’s FanX were strong but not enough to pay
21 (or bond) the attorney-fees award. Additionally, in order to stay in business, DFP must
22 use the proceeds of this year’s FanX comic convention to seed next year’s event. If
23 DFP’s accounts are frozen or subject to garnishment, then DFP will not be able to, for
24 example, secure the celebrity appearances that drive fan attendance, or engage in presale
25 promotions that sell tickets, secure event location, pay marketing, PR and advertising
26 expenses, and pay exhibition services and AV vendors.
27
28
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1 16. If the attorney fees award is enforced against DFP, it will be forced out of
2 business, resulting in the layoffs of all of its employees, insolvency of the company and
3 the cessation of DFP’s annual FanX comic convention in Salt Lake City.
4 17. Together, Bryan Brandenburg and I do not have sufficient personal assets to
5 use as collateral to obtain a supersedeas bond or withstand enforcement of the attorney
6 fees award without suffering personal insolvency.
7 Impact to the Salt Lake City Community
8 18. FanX Salt Lake Comic Convention is presently the most attended
9 convention in the State of Utah.
10 19. The first comic convention held by DFP in 2013 was attended by
11 approximately 72,000 people. The second comic convention had an estimated attendance
12 of 100,000. These two conventions boosted business at nearby restaurants during the
13 events by an estimated 10 to 15 percent, created significant revenue for local artists, and
14 each collected more than $100,000 in taxes on ticket sales alone and the latest event will
15 be approximately $250,000 in ticket and photo-op sales tax.
16 20. The estimated economic impact of the inaugural event was in the tens of
17 millions of dollars.
18 21. Since then, attendance at DFP’s events has grown. The most recent FanX
19 Salt Lake Comic Convention brought in an estimated 110,000 attendees. Approximately
20 a quarter of those attendees came from the Intermountain West, which positively impacts
21 restaurants, transportation companies, and hotels. Indeed, many Salt Lake hotels sell out
22 for the event with the number of room nights increasing almost every year.
23 22. Where possible, DFP leverages its popularity to benefit nonprofits and the
24 community. DFP has donated almost $2 million in cash and in-kind to dozens of
25 nonprofits, local law enforcement and the military (Utah National Guard, and Hill AFB
26 where Bryan Brandenburg and I are Honorary Commanders of the 419th and 388th
27 Fighter Wings).
28
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1 23. DFP uses a charity affiliate program to donate a portion of ticket sales to
2 charity partners including, among others, the Utah Pride Center (which supports Utah’s
3 LGBTQ+ community); The Road Home (which assists individuals and families
4 experiencing homelessness in the Salt Lake area); Operation Underground Railroad
5 (which fights child sex trafficking); Habitat for Humanity of Utah County (which
6 provides affordable housing to local families); the Huntsman Cancer Foundation (which
7 funds efforts in cancer research); Humane Society of Utah and the Best Friends Animal
8 Society (which runs animal rescue and spay/neuter programs).
9 24. DFP also donates floor space at its events to community organizations. At
10 the most recent FanX Salt Lake Comic Convention, DFP provided free booths to the
11 Utah Courts, Operation Underground Railroad, the Utah Coalition against Sexual
12 Assault, and many others.
13 25. These efforts and the conventions’ steady success and economic impact have
14 attracted widespread support and recognition from the community and Civic Leaders.
15 26. For example, in 2014, Utah’s Governor, Gary Herbert, declared April 17 as
16 Comic Con Hero’s Day, stating that the events organized by DFP “showed us that it’s
17 good to follow our passions and act like, dress like, live like – nay, to be heroes.” A true
18 and correct copy of this declaration is attached hereto as Exhibit A.
19 27. The following year, Salt Lake City Mayor Ralph Becker proclaimed January
20 29, 2015 as Salt Lake Comic Con Day of Heroes in a statement that explained “The
21 comic books, movies and television shows that inspire Salt Lake Comic Con inspire the
22 people of this city to become heroes in their own ways” and that DFP “offers to heroes of
23 Salt Lake City a place to congregate and inspire even more acts of heroism and
24 creativity.”
25 28. This year the Utah Attorney General Sean Reyes recognized Bryan
26 Brandenburg and I “for our support of the Utah Attorney General’s Office and law
27 enforcement across the State of Utah … and our contributions to the community and
28 culture of Utah.”
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1 29. If DFP is forced out of business and FanX ceases to exist, this positive
2 economic and cultural impact on Salt Lake City and its surrounding areas will be lost.
3
4 Executed on September 18, 2018 By:
5 Daniel Farr
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3 foregoing document has been served on September 18, 2018, to all counsel of record who
4 are deemed to have consented to electronic service.
5 /s/ L. Rex Sears
6
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mkatz@mabr.com
2
L. Rex Sears (SBN 294533)
3 rsears@mabr.com
4
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
8 Charles J. Veverka (pro hac vice, UT SBN 7110)
cveverka@mabr.com
11
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13
18 DECLARATION OF BRYAN
Plaintiff, BRANDENBURG IN SUPPORT
19 OF DEFENDANTS’ EX PARTE
20 v. APPLICATION TO STAY
ENFORCEMENT OF
21 DAN FARR PRODUCTIONS, a Utah limited JUDGEMENT
liability company; and DANIEL FARR and
22 BRYAN BRANDENBURG, individuals,
23
Defendants.
24
26
27
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1 I, Bryan Brandenburg, declare and state as follows:

2 1. I am over the age of eighteen, have personal knowledge about the matters set
3 forth, have relied on documents maintained in the ordinary course of Dan Farr
4 Productions, LLC’s business to which I have access, and if called as a witness, could
5 competently testify to the matters set forth herein.
6 Background
7 2. I, along with Daniel Farr and Dan Farr Productions, LLC (“DFP”) am a
8 defendant in the above-captioned case.
9 3. I make this declaration in support of Defendants’ Ex Parte Application to
10 Stay Enforcement of Judgment.
11 4. I am the Chief Marketing Officer and Co-Founder of DFP which organizes
12 and produces an annual event in Salt Lake City, Utah called FanX Salt Lake Comic
13 Convention (“FanX”). FanX was formerly called Salt Lake Comic Con.
14 5. DFP produced its first comic convention in 2013 and has produced two
15 comic conventions in Salt Lake City every year since except for 2018, which we
16 produced only one. Each successive summer comic convention produced and organized
17 by DFP has drawn more participants and revenue than the last through 2015, which was
18 our best year. Growth was flat for two years and this event in 2018 was better than the
19 two previous years. With the name change behind us, I expect a very positive growth
20 curve to continue for future FanX events.
21 Judgment and Injunction Against Defendants
22 6. On December 8, 2017, by special verdict, the jury in the above-captioned
23 case found (1) trademark infringement, (2) no willfulness, (3) no false designation of
24 origin, and (4) awarded $20,000 in damages.
25 7. On August 23, 2018 this Court granted motions by plaintiff-San Diego
26 Comic Convention for permanent injunction and attorney fees. This Court entered
27 judgement on the same day.
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1 8. The fee award entered by this Court was $3,962,486.84.

2 Defendants Injunction Compliance
3 9. DFP has undertaken extensive efforts to comply with the Court’s Injunction.
4 10. DFP has ceased using Salt Lake Comic Con as the name of its annual comic
5 convention, and has adopted a new name of FanX Salt Lake Comic Convention. DFP has
6 since utilized this new convention name in its advertising and branding.
7 11. To the extent technically feasible, DFP has changed the names, descriptions,
8 and associated URL’s of its social media sites to not incorporate “comic con” in any
9 form.
10 12. DFP has taken steps to remove all known instances of the use of “formerly
11 known as Salt Lake Comic Con” from its web and social media sites, and other
12 advertising materials.
13 13. DFP has migrated from its former domain, www.saltlakecomiccon.com, to a
14 new domain, www.fanxsaltlake.com. This domain migration also includes migration to
15 fanxsaltlake.com email addresses. DFP has also investigated a mechanism to initiate
16 search engine crawls so that search engine results do not contain outdated metadata.
17 14. DFP has also ceased using www.saltlakecomiccon.com and
18 www.slcomiccon.com as forwarding addresses, and does not populate these pages with
19 content, but it does continue to own the domains’ registrations.
20 Irreparable Harm
21 15. DFP, Daniel Farr and I will face irreparable harm absent a stay of (1)
22 execution on the attorney-fees award, without bond, and (2) certain provisions of the
23 injunction.
24 Execution of the Judgment
25 16. After entry of judgement by this Court, Daniel Farr and I had our attorneys
26 contact several surety companies seeking issuance of a supersedeas bond to secure the
27 amount of judgment while an appeal of the judgment is pending.
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1 17. DFP, Daniel Farr and I were not able to obtain a supersedeas bond because
2 sureties will not accept the substantial going-concern value of DFP as collateral and
3 Daniel Farr and I do not have sufficient personal assets to provide sufficient collateral.
4 Almost our entire net worth resides in our company. It would be a flourishing business
5 aside from having to divert all of its profits towards legal fees (over $2.2 million since
6 2014).
7 18. DFP’s continuing and productive assets are primarily intangibles, including
8 its reputation, established fan-base, expertise, and connections—not hard assets that can
9 be mortgaged as security for a bond.
10 19. The net proceeds from this year’s FanX were healthy but not enough to pay
11 (or bond) the attorney-fees award. Additionally, in order to stay in business, DFP must
12 use the proceeds of this year’s FanX comic convention to seed next year’s event. If
13 DFP’s accounts are frozen or subject to garnishment, then DFP will not be able to, for
14 example, secure the celebrity appearances that drive fan attendance, or engage in presale
15 promotions that sell tickets, or pay for convention space, contractors, and advertising
16 necessary to promote the event.
17 20. If the attorney fees award is enforced against DFP, it will certainly be forced
18 out of business, resulting in the layoffs of all of its employees, insolvency of the company
19 and the cessation of DFP’s annual FanX comic convention in Salt Lake City.
20 21. Together, Daniel Farr and I do not have sufficient personal assets to use as
21 collateral to obtain a supersedeas bond or withstand enforcement of the attorney fees
22 award without suffering personal insolvency.
23 Permanent Injunction
24 22. Provided in the table below is a listing of social media sites associated with
25 DFP, and the number of followers and posts/likes for each respective site:
26
27
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1 Social Media Site Approximate Number of Number of Posts / Reach

2 Followers
3 Twitter 33,000 32,500
4 Instagram 35,700 4,212
5 Tumblr 4,960 13,826
6 Pinterest 35,303 9,035
7 Facebook 306,000 1,000,000+
8 Reach per month
9 787K
10 Engagements last month
11 Facebook Group 33,002 313,701 (likes)
12 471,200 (posts - last 28 days)
13 YouTube 3,783 1,573,852 views
14 Google Plus 1,831 5,000,000+ views
15
16 23. If Defendants are not allowed to renew and otherwise maintain our existing
17 domain names (i.e., www.saltlakecomiccon.com, www.slcomiccon.com) then we face
18 irreparable harm because not allowing us to renew or maintain those domains would then
19 allow them to be registered by someone else, who would not have to return them to DFP
20 after appeal. The loss of these domain registrations would make it impossible for DFP to
21 monitor emails sent from existing customers and vendors to email addresses housed
22 within those domain names for appropriate follow up under the www.fanxsaltlake.com
23 email addresses.
24 24. A new registrant could also then continue to operate the site in a manner
25 detrimental to DFP, such as using the domain names and associated email addresses to
26 contact and market to DFP’s customers or vendors under the guise of being FanX or Salt
27 Lake Comic Con.
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1 25. Many of DFP’s social media sites make historical content permanently
2 available to users (e.g. Facebook, Twitter, Instagram, Tumblr, Pinterest, YouTube).
3 Because of the availability of this historical content, in order to remove all references to
4 “Salt Lake Comic Con”, DFP would either be required to irretrievably delete extensive
5 content from the various pages, or be required to start new social media pages,
6 permanently and irreversibly abandon the content on the prior social media pages, as well
7 as abandon the over 400,000 followers associated with those pages.
8 26. In addition to the irreparable harm that the irretrievable deletion of content
9 from DFP’s various social media pages would cause, such an undertaking would be an
10 extraordinarily complex and labor intensive process. The process would involve
11 manually seeking out potentially non-compliant content from approximately 500,000
12 posts across all DFP’s platforms, and manually deleting or editing that content on a post
13 by post basis. Furthermore, much of the content is not searchable, such as videos, thus
14 requiring DFP to investigate each video for potentially non-compliant terms. In addition,
15 DFP would potentially need to seek out content created by third parties, and delete that
16 content as well, which is impossible with less than an army of personnel. Policing this
17 third party content would be an enormous undertaking as DFP’s social media has over
18 400,000 followers across all platforms with hundreds of third party posts and comments
19 that could be potentially infringing each day.
20 27. Despite DFP’s extensive efforts to alter URL’s associated with DFP, three of
21 DFP’s social media sites (YouTube, a Facebook Group, and Google Plus) do not provide
22 DFP with the technical capability of altering the content of their respective URLs, even
23 though each page’s title and descriptions have been changed to the FanX Salt Lake
24 Comic Convention branding. Eliminating “Comic Con” from all URLs would thus
25 require DFP to permanently and irreversibly delete these accounts, along with their
26 respective followers. In the case of DFP’s Facebook group, such a permanent deletion
27 could cause the irreversible loss of up to 33,000 followers, solely because the URL
28

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1 contains unchangeable material in the post-domain file path. Our Google+ and YouTube
2 pages receive hundreds of thousands of impressions a month.
3 28. The ban on forwarding addresses and identifying our event as f/k/a Salt Lake
4 Comic Con would result in unquantifiable and irreversible disruption of our customer
5 relationships.
6 29. The worst impact is the thousands of photos and memories that reside on our
7 social media sites. This is history and once in a life time experiences that would be forced
8 to be deleted without any hope of recovery.
9
I declare under penalty of perjury under the laws of the United States that the foregoing is
10
true and correct to the best of my personal knowledge.
11
12
Executed on September 18, 2018
13
14
By:
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258 1 of 3
1 CALLIE A. BJURSTROM (State Bar No. 137816)

PETER K. HAHN (State Bar No. 165692)
2 MICHELLE A. HERRERA (State Bar No. 209842)
3 501 West Broadway, Suite 1100
San Diego, CA 92101-3575
4 Telephone: 619.234.5000
Facsimile: 619.236.1995
5 Email: callie.bjurstrom@pillsburylaw.com
6 michelle.herrera@pillsburylaw.com
7 Attorneys for Plaintiff
8 a California non-profit corporation
9
12 SAN DIEGO COMIC CONVENTION, Case No. 3:14-cv-01865 AJB (JMA)
a California non-profit corporation,
13
Plaintiff, NOTICE OF EX PARTE
14 APPLICATION AND EX PARTE
v. APPLICATION BY PLAINTIFF
15 SAN DIEGO COMIC
DAN FARR PRODUCTIONS, a CONVENTION TO CERTIFY
16 Utah limited liability company; JUDGMENT FOR REGISTRATION
DANIEL FARR, an individual; and IN THE DISTRICT OF UTAH
17 BRYAN BRANDENBURG, an
individual, Courtroom: 4A
18 Judge: Hon. Anthony J. Battaglia
Defendants.
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1 TO DEFENDANTS AND THEIR COUNSEL OF RECORD:

2 PLEASE TAKE NOTICE that Plaintiff San Diego Comic Convention
3 (“SDCC”) will and hereby does move the Court for an Order Certifying Judgment
4 for Registration in the District of Utah, pursuant to 28 U.S.C. § 1963.
5 This application is based upon this Notice of Ex Parte Application and Ex
6 Parte Application, the accompanying Memorandum of Points and Authorities, the
7 accompanying Declaration of Michelle A. Herrera and the exhibits attached
8 thereto, the records and files herein, and such other and further documentary,
9 demonstrative and oral evidence as may be requested or permitted by the Court.
10 The Declaration of Michelle A. Herrera includes a certification of compliance with
11 Local Rule 83.3(g)(2) and this Court’s Civil Case Procedure III.
12
13 Dated: September 19, 2018 PILLSBURY WINTHROP SHAW
PITTMAN LLP
14
15
By: /s/ Michelle A. Herrera
16 CALLIE A. BJURSTROM
PETER K. HAHN
17 MICHELLE A. HERRERA
20
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2 The undersigned hereby certifies that a true and correct copy of the above
3 and foregoing documents have been served on September 19, 2018, to all counsel
4 of record deemed to have consented to electronic service via the Court’s CM/ECF
5 system per Civil Local Rule 5.4. Any other counsel of record will be served by
6 electronic mail, facsimile, and/or overnight delivery.
7
/s/ Michelle A. Herrera
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4 Telephone: 619.234.5000
Facsimile: 619.236.1995
9
13 MEMORANDUM OF POINTS AND
Plaintiff, AUTHORITIES IN SUPPORT OF
14 PLAINTIFF SAN DIEGO COMIC
v. CONVENTION’S EX PARTE
15 APPLICATION TO CERTIFY
DAN FARR PRODUCTIONS, a JUDGMENT FOR REGISTRATION
16 Utah limited liability company; IN THE DISTRICT OF UTAH
DANIEL FARR, an individual; and
17 BRYAN BRANDENBURG, an
individual, Courtroom: 4A
18 Judge: Hon. Anthony J. Battaglia
Defendants.
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1 I. INTRODUCTION
2 Plaintiff San Diego Comic Convention (“SDCC”) requests that the Court
3 certify the judgment issued on August 23, 2018, for registration in the District of
4 Utah. Pursuant to 28 U.S.C. § 1963, while an appeal of a judgment is pending a
5 district court may certify the judgment for registration in a foreign district court
6 upon a showing of good cause.
7 Good cause exists here because (1) Defendants have no assets in this judicial
8 district, (2) Defendants have substantial assets in the District of Utah, and
9 (3) Defendants cannot obtain a statutory stay of enforcement because, by their own
10 admission, they cannot procure a supersedeas bond sufficient to cover the amount
11 of the judgment.
12 Defendants recently held what they hail as their most successful comic
13 convention since 2015. SDCC needs to act quickly to collect on the judgment
14 before Defendants dilute or transfer the proceeds of their convention, and any other
15 assets SDCC might attach to satisfy the judgment. SDCC requests that the Court
16 promptly certify the judgment for registration in the District of Utah.
17 II. STATEMENT OF FACTS
18 On August 23, 2018, this Court entered judgment in favor of SDCC and
19 against Defendants Dan Farr Productions, LLC (“DFP”), Daniel Farr and Bryan
20 Brandenburg, jointly and severally, in the amount of $3,982,486.84. (ECF Doc.
21 543.) Under Federal Rule of Civil Procedure 62(a), the judgment became
22 enforceable on September 7, 2018. Defendants filed a notice of appeal on
23 September 14, 2018. (ECF Doc. 549.) In order to obtain a statutory stay of
24 enforcement of the judgment pending appeal, Defendants must post a supersedeas
25 bond in an amount sufficient to cover the judgment. Fed. R. Civ. P. 62(d).
26 Defendants have not posted a bond. On September 18, 2018, Defendants’
27 counsel informed SDCC that Defendants do not have sufficient hard assets to
28 collateralize a supersedeas bond to cover the judgment. (Exh. 1 to Herrera Decl.
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1 See also Doc. 553-4, ¶¶ 12-14, 17; 553-5, ¶¶ 16-18, 21.) SDCC rejected
2 Defendants’ request to waive the bond, or reduce the bond to an amount sufficient
3 to cover $20,000, which is less than 1% of the amount of the judgment. (Exh. 1 to
4 Herrera Decl.)
5 According to Defendants, their primary asset is the “going-concern value” of
6 their comic convention, the most recent of which took place September 6th through
7 September 8th, 2018. (Exh. 1 to Herrera Decl.) According to Mr. Brandenburg,
8 this was Defendants’ “most successful convention ever” and Defendants are now
9 “a force to be reckoned with, to be watched, to be modeled, to be admired.” (Exh.
10 2 to Herrera Decl. See also Exh. 3 to Herrera Decl.; Doc. 553-4, ¶ 5; Doc. 553-5,
11 ¶ 5.) In view of Defendants’ appeal and the ex parte application they filed on
12 September 18, 2018 (ECF Doc. 553), it is clear Defendants have no intention of
13 voluntarily paying any part of the judgment and will instead undertake efforts to
14 thwart collection.
15 SDCC has performed asset searches for DFP, for Mr. Farr, and for
16 Mr. Brandenburg. Those searches indicate that DFP, Mr. Farr and
17 Mr. Brandenburg have no assets in this judicial district. (Herrera Decl., ¶¶ 3, 6.)
18 DFP is a limited liability company organized under the laws of the State of Utah,
19 and has its principal place of business in Salt Lake City, Utah. (ECF Doc. 27, p. 1,
20 ¶2.) Mr. Brandenburg owns real property in Salt Lake City, Utah and owns
21 vehicles registered in the state of Utah. (Exh. 4 to Herrera Decl.) Further, Mr.
22 Brandenburg appears to be the owner of several business registered with the Utah
23 Secretary of State. (Exh. 5 to Herrera Decl.) Mr. Farr likewise owns real property
24 in Draper, Utah and Herriman, Utah, and owns vehicles registered in the state of
25 Utah. (Exh. 6 to Herrera Decl.) Mr. Farr also appears to be the owner of several
26 businesses registered with the Utah Secretary of State. (Exh. 7 to Herrera Decl.)
27 SDCC is informed and believes that all three Defendants have bank accounts in
28 Utah.
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1 III. AUTHORITY AND ARGUMENT

2 Pursuant to Federal Rule of Civil Procedure 62(a), a judgment becomes final
3 and enforceable 14 days after it is entered. Pending appeal, however, the judgment
4 is only enforceable in the district in which it was rendered, unless the judgment is
5 ‘registered’ in another district by court order.” Columbia Pictures Television, Inc.
6 v. Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1197 (9th Cir. 2001).
7 The process for registering a judgment in another district is set forth in 28
8 U.S.C. § 1963, which states, in relevant part:
9 A judgment in an action for the recovery of money or
property entered in any court of appeals, district court,
10 bankruptcy court, or in the Court of International Trade
may be registered by filing a certified copy of the
11 judgment in any other district[,] . . . when the judgment
has become final by appeal or expiration of the time for
12 appeal or when ordered by the court that entered the
judgment for good cause shown. . . . A judgment so
13 registered shall have the same effect as a judgment of the
district court of the district where registered and may be
14 enforced in like manner.
15 28 U.S.C.A. § 1963.
16 “Although there is no Ninth Circuit law defining ‘good cause,’ ‘the courts
17 that have found good cause have generally based their decisions on an absence of
18 assets in the judgment forum, coupled with the presence of substantial assets in the
19 registration forum.’” Columbia Pictures Television, 259 F.3d at 1197-98 (9th Cir.
20 2001) (quoting Dyll v. Adams, 1998 WL60541 at *1 (N.D. Tex. 1998), and citing
21 several decisions from other jurisdictions).
22 District courts within this circuit consistently certify judgments for
23 registration in a foreign district where the debtor lacks assets within the forum
24 district but possesses assets elsewhere that may satisfy the judgment. See, e.g.,
25 Brighton Collectibles, Inc. v. Marc Chantal USA, Inc., No. 06-CV-1584 H (POR),
26 2009 WL 10674204, at *1-2 (S.D. Cal. Aug. 17, 2009) (Hon. Marilyn L. Huff
27 granting judgment creditor’s motion to certify judgment for registration in foreign
28 districts where the judgment debtor owns property that may satisfy the judgment).
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1 In F.D.I.C. v. Tarkanian, No. 10CV980-WQH-BGS, 2012 WL 5944623 (S.D. Cal.

2 Nov. 26, 2012), the Hon. William Q. Hayes granted the plaintiff’s motion to certify
3 the judgment for registration in foreign districts, finding the following established
4 good cause: (1) defendants did not have any assets in the judgment forum;
5 (2) defendants had substantial assets in Nevada and the Eastern District of
6 California; and (3) defendants indicated an inability to post any bond pending their
7 appeal of the judgment. Id. at *2.1
8 Here, SDCC performed asset searches for all three Defendants, and none of
9 the searches revealed any assets located within this judicial district. (Herrera
10 Decl., ¶ 6.) In fact, the searches indicate that the only assets Defendants have that
11 may satisfy the judgment are in Utah. (See Exhs. 4 through 7.) Defendants hold
12 their FanX Salt Lake Comic Convention in Salt Lake City, Utah, and presumably
13 receive significant revenue from ticket, autograph and merchandise sales in Salt
14 Lake City. Defendants boasted that 110,000 people attended their most recent
15 event. (Exh. 2 to Herrera Decl.) Single day tickets sold for $15 (Thursday), $35
16 (Friday) and $45 (Saturday). (Exh. 8 to Herrera Decl.) When these figures are
17 averaged and then multiplied by the number of attendees, Defendants brought in
18 more than $3,400,000 in revenue for this event alone.2 Based on information
19 provided by Defendants in discovery, SDCC is informed and believes that DFP
20 holds bank accounts in Utah. (Herrera Decl., ¶ 12.) As Utah residents, it is highly
21 likely that Mr. Brandenburg and Mr. Farr also hold bank accounts in Utah. And, as
22
23
24 1 See also Del Amo v. Baccash, No. CV 07-663 PSG (JWJX), 2009 WL 10675203,
at *1-2 (C.D. Cal. May 12, 2009) (certifying judgment that included damages and
25 attorney fee award for registration in foreign district); UMG Recordings, Inc. v.
BCD Music Grp., Inc., No. CV0705808SJOFFMX, 2012 WL 12882702, at *4
26 (C.D. Cal. Oct. 3, 2012) (granting plaintiff’s ex parte application to certify
judgment for registration in the Southern District of New York).
27 2 It is likely that this figure is significantly understated, as it does not take into
28 account 3-day ticket sales that ranged from $60 to $250 (“VIP Pass”). (Exh. 8 to
Herrera Decl.)
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1 stated above, Mr. Brandenburg and Mr. Farr own real property and other tangible
2 assets located in Utah upon which SDCC may execute the judgment.
3 The need to certify the judgment for registration in the District of Utah is
4 even more compelling in view of representations Defendants made in their ex parte
5 application to stay enforcement of the judgment filed on September 18, 2018.
6 (ECF Doc. 553.) Defendants concede they do not have sufficient assets to obtain a
7 bond to stay enforcement. Unless the judgment is registered in the District of
8 Utah, and SDCC quickly undertakes collection efforts in Utah, it is likely that
9 Defendants will deplete their assets leaving SDCC in a position where it may never
10 collect on the multi-million-dollar judgment this Court entered in favor of SDCC.3
11 IV. CONCLUSION
12 For the reasons stated above, SDCC respectfully requests that the Court
13 issue an Order certifying the judgment for registration in the District of Utah.
14
PITTMAN LLP
16
18 PETER K. HAHN
MICHELLE A. HERRERA
SAN DIEGO COMIC CONVENTION
20
21
22
23
24
25
26
3 As the Court may recall, testimony at trial demonstrated Mr. Brandenburg and
27 Mr. Farr took significant distributions from DFP right before trial. SDCC is
legitimately concerned that Defendants may likewise drain the revenues received
28 by DFP in connection with their most recent convention.
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3 and foregoing documents has been served on September 19, 2018, to all counsel of
4 record deemed to have consented to electronic service via the Court’s CM/ECF
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8 /s/ Michelle A. Herrera
MICHELLE A. HERRERA
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4 Telephone: 619.234.5000
Facsimile: 619.236.1995
9
13 PLAINTIFF SAN DIEGO COMIC
Plaintiff, CONVENTION’S OPPOSITION TO
14 DEFENDANTS’ EX PARTE
v. APPLICATION TO STAY
15 ENFORCEMENT OF JUDGMENT
DAN FARR PRODUCTIONS, a
16 Utah limited liability company;
DANIEL FARR, an individual; and Courtroom: 4A
17 BRYAN BRANDENBURG, an Judge: Hon. Anthony J. Battaglia
individual,
18
Defendants.
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1 I. INTRODUCTION
2 Defendants’ ex parte submission is confusing. In their application,
3 Defendants ask the Court to waive the bond required by Federal Rule of Civil
4 Procedure 62(d) to stay enforcement of the judgment. In their memorandum of
5 law, Defendants ask the Court to set bond at an amount sufficient to ensure
6 SDCC’s ability to collect $20,000, and stay enforcement of the judgment. The
7 Court should deny both requests. Under Ninth Circuit law, (1) the court must set a
8 bond in an amount that will protect the status quo on appeal in order to stay
9 enforcement of a judgment, and (2) the court may waive the bond requirement and
10 stay enforcement of a judgment pending appeal only in extraordinary
11 circumstances. The circumstances here are nowhere near extraordinary, and
12 waiving or reducing the amount bonded would destroy the status quo.
13 Defendants are similarly equivocal on the relief they seek with respect to the
14 injunction. In their application, Defendants ask the Court to exempt certain
15 conduct from the injunction, i.e. to modify the injunction. In their memorandum of
16 law, Defendants ask the Court to stay the injunction pending appeal. Again, both
17 arguments fail. Under Ninth Circuit law, this Court lacks jurisdiction to modify
18 the injunction in the manner urged by Defendants because it alters the status quo of
19 the injunction pending appeal. As for a stay of the injunction pending appeal,
20 Defendants have not made a strong showing of success on the merits, irreparable
21 harm, a lack of substantial injury to SDCC, or that staying the injunction serves the
22 public interest. Indeed, the only interest a stay would serve is Defendants’ private
23 interest in continuing to exploit SDCC’s trademarks in connection with their comic
24 conventions.
25 The Court should deny all requests Defendants make in their ex parte
26 application.
27 / / /
28 / / /
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1 II. THE COURT SHOULD DENY DEFENDANTS’ REQUEST TO STAY

2 EXECUTION OF THE JUDGMENT
3 This Court issued one judgment in favor of SDCC. In order to obtain a stay
4 under Rule 62(d), an appellant is ordinarily required to post a bond sufficient to
5 cover the amount of the judgment appealed. Defendants vacillate between asking
6 the Court to waive the bond requirement entirely and asking the Court to reduce
7 the bonded amount to $20,000, and they draw an artificial distinction between the
8 damages component of the judgment and the attorneys’ fees and costs component.
9 Defendants cite no authority that would support either waiving the bond or
10 reducing the bond to an amount that covers less than 1% of the judgment.1 As
11 such, their request for a stay under Rule 62(d) must be denied.
12 a. Waiver or Reduction of the Bond Would Destroy the Status Quo
13 The purpose of the bond required by Rule 62(d) is to “preserve the status
14 quo during a stay pending appeal of a district court decision.” Bass v. First Pac.
15 Networks, Inc., 219 F.3d 1052, 1055 (9th Cir. 2000). See also Rachel v. Banana
16 Republic, Inc., 831 F.2d 1503, 1505 n.1 (9th Cir. 1987) (“The purpose of a
17 supersedeas bond is to secure the appellees from a loss resulting from the stay of
18 execution and a full supersedeas bond should therefore be required.”)
19 Here, the status quo is that SDCC has a multi-million dollar judgment
20 against Defendants. Defendants admit they do not have sufficient assets to pay the
21 judgment or obtain a bond on the full amount of the judgment. If the Court waives
22 the bond or reduces the amount bonded to $20,000 and stays enforcement of the
23 judgment, and Defendants’ lose on appeal, SDCC will be entirely unprotected and
24 will likely never be able to collect the full amount of the judgment from
25
26 1 True
to form, Defendants cite only out-of-circuit case law in support of their
request to waive or reduce the bond and stay enforcement of the judgment. It has
27 no precedential value, and Defendants fail to address Ninth Circuit law that sets
28 forth the standards applicable to Defendants’ requests for relief.
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1 Defendants. Instead, SDCC’s sole source of collection will likely be the $20,000
2 bonded by the surety. Such a result would directly contravene Ninth Circuit law.
3 See, e.g., N.L.R.B. v. Westphal, 859 F.2d 818, 819 (9th Cir. 1988) (“The posting of
4 a bond protects the prevailing plaintiff from the risk of a later uncollectible
5 judgment and compensates him for delay in the entry of the final judgment.”);
6 Schutza v. City of San Diego, No. 313CV02992CABKSC, 2018 WL 2018041, at
7 *3 (S.D. Cal. Apr. 30, 2018) (the bond requirement was designed to avoid placing
8 the plaintiff at risk of having an uncollectible judgment).
9 b. The Court Should Not Waive or Reduce the Bond
10 District courts have inherent discretionary authority in setting the amount of
11 the bond, and may waive the bond. Schutza, 2018 WL 2018041, at *2. However,
12 an appellant is only entitled to waiver of a bond and a discretionary stay in
13 “extraordinary cases.” Bemo USA Corp. v. Jake's Crane, Rigging & Transp. Int'l
14 Inc., No. 2:08-CV-745 JCM PAL, 2010 WL 4604496, at *1 (D. Nev. Nov. 5,
15 2010); see also Salameh v. Tarsadia Hotel, No. 09cv2739-GPC (BLM), 2015 WL
16 13158486, at *2 (S.D. Cal. May 19, 2015) (“When a party wishes a court to depart
17 from the usual requirement of a full security supersedeas bond, the burden is on the
18 moving party to show reasons for the departure from the normal practice” (internal
19 citations omitted).)
20 The Ninth Circuit has not articulated what factors district courts should
21 consider when determining whether to waive the bond requirement. District courts
22 within the Ninth Circuit usually consider the following factors set forth in Dillon v.
23 City of Chicago, 866 F.2d 902 (7th Cir. 1989).
24 (1) the complexity of the collection process; (2) the amount of time
required to obtain a judgment after it is affirmed on appeal; (3) the
25
degree of confidence that the district court had in the availability
26 of funds to pay the judgment; (4) whether the defendant’s ability
to pay the judgment is so plain that the costs of a bond would be a
27
waste of money; and (5) whether the defendant is in such a
28 precarious financial situation that the requirement to post a bond
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1 would place other creditors of the defendant in an insecure

2 position.
3 Id. at 904-07. See also Schutza, 2018 WL 2018041, at *2.

4 Here, the third, fourth and fifth factors are critical. This Court should have
5 no confidence in Defendants’ ability to pay the judgment if they are unsuccessful
6 on appeal. Defendants’ ability to pay the judgment is not so plain that the costs of
7 a bond would be a waste of money; in fact, Defendants’ ex parte application and
8 the declarations submitted by Mr. Farr and Mr. Brandenburg in support indicate
9 the exact opposite. Defendants have likewise not shown that they are in such a
10 precarious financial position that posting a bond sufficient to cover the full amount
11 would place their other creditors in an insecure position. Defendants offer only
12 speculative generalizations about their financial condition and the harm they will
13 purportedly suffer if the Court does not stay enforcement of the judgment. Such is
14 insufficient to support waiving the bond. See Schutza, 2018 WL 2018041, at *2
15 (“[T]he Court is unable to make any determination as to Air California’s financial
16 condition, establish any degree of confidence in its ability to pay the judgment, nor
17 ascertain what, if any, ramifications would ensue if it was required to post a
18 bond.”); Hines v. California Pub. Utilities Comm'n, No. C07-04145CW, 2010 WL
19 3565498, at *1 (N.D. Cal. Sept. 10, 2010) (denying motion to waive bond where
20 party offered no evidence of its financial condition).
21 Further, “a waiver should be granted only if the filing of a supersedeas bond
22 would irreparably harm the judgment debtor and, at the same time, such a stay
23 would not unduly endanger the judgment creditor's interest in ultimate recovery.”
24 Bemo, 2010 WL 4606696, at *1. On this point, Defendants summarily aver that
25 without a stay they will be put out of business altogether,2 will not be able to make
26
27 2 Defendants
repeatedly claim that SDCC’s goal is to destroy Defendants and drive
28 them out of business. There is no support for such reckless accusations.
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1 investments needed for future conventions, and will not be able to fund their
2 appeal. (ECF Doc. 553-1, 7:3-8.) Defendants present no credible evidence to
3 support these claims. Defendants do not even address the second half of their
4 burden, .i.e. establishing that a stay would not unduly endanger SDCC’s interest in
5 its ultimate recovery.3 For the reasons stated above, and in view of Defendants’
6 claimed financial situation, a stay of enforcement based on a waiver or reduction of
7 the amount bonded will, without question, prevent SDCC from recovering the full
8 amount of the judgment from Defendants after appeal.
9 To be clear, the Court should not reduce the bond by any amount. “In
10 setting the amount of the bond or other appropriate security, the court is to be
11 guided by general equitable principles, with the overarching purpose being to
12 safeguard the judgment creditors as completely as possible without irreparably
13 injuring the judgment debtors.” Abbywho, Inc. v. Interscope Records, No.
14 CV0606724MMMJTLX, 2008 WL 11406049, at *3 (C.D. Cal. Aug. 25, 2008)
15 (internal quotations and citation omitted). “[T]he standard practice of district
16 courts is to require that the supersedeas bond be a surety bond, and that it be for the
17 full amount of the judgment plus interest, costs, and an estimate of any damages
18 attributed to the delay.” Antoninetti v. Chipotle Mexican Grill, Inc., No.
19 05CV1660-J (WMC), 2009 WL 1390811, at *2 (S.D. Cal. May 15, 2009) (internal
20 quotations and citation omitted).
21 “If the judgment debtor is unable to post a full supersedeas bond, it is the
22
23 3 Defendants claim that SDCC will not be “substantially injured” by a stay because
24 it “just does not need the money” this Court awarded to SDCC. (ECF DOC. 553-
1, 9:21-23.) That is not the test. See Salameh, 2015 WL 13158486, at *3 (“[T]he
25 issue is not whether they will be harmed but whether Defendants will be protected
26 from any loss resulting from being forced to halt execution on the judgment.”)
Defendants yet again seek to influence decisions in this case based on improper
27 factors such as the ultimate financial status of SDCC (i.e. to deprive SDCC of the
28 protections offered any Ninth Circuit law because it has money).
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1 judgment debtor's responsibility to convince the court that posting a full bond is
2 impracticable and to propose an alternative plan that would sufficiently
3 guarantee the judgment creditor's interests.” LPP Mortg. Ltd. v. Gardner, No.
4 CIV. 02-1331-AS, 2005 WL 2078339, at *1 (D. Or. Aug. 16, 2005) (emphasis
5 added). Here, Defendants have not offered any alternative plan that would protect
6 SDCC’s interests in recovering the full amount of the judgment. Defendants brag
7 that they have created a phenomenal convention that continues to grow, and they
8 are highly regarded in the Salt Lake community. If that is true, they should be able
9 to attract investors to fund their next convention, and use the proceeds from their
10 most recent convention to obtain a bond. The fact of the matter is that Defendants
11 do not want to pay. Such is an insufficient ground to reduce the amount of the
12 bond. See Abbywho, Inc., 2008 WL 11406049, at *4 (“The court will not
13 arbitrarily limit the amount of the supersedeas bond based on the limited
14 information in the record, and in the absence of some effort by plaintiffs to suggest
15 how defendants’ interest in securing payment can be protected.”)
16 The Court should not waive the bond, should not reduce the bond, and
17 should not stay enforcement of the money judgment.
18 III. THE COURT SHOULD NOT MODIFY
19 OR STAY THE INJUNCTION
20 Defendants ask the Court to modify the injunction by making “exemptions”
21 to its terms. While a district court may, in its discretion, modify an injunction
22 while an appeal is pending, “[t]he modification may serve only to maintain the
23 status quo pending appeal.” BBU, Inc. v. Sara Lee Corp., No. 09CV1787 DMS
24 (RBB), 2009 WL 10672191, at *1 (S.D. Cal. Sept. 29, 2009), aff'd, 361 F. App'x
25 775 (9th Cir. 2010). As the Ninth Circuit Court of Appeal has explained:
26 Rule [62(c)] grants the district court no broader power than it has
27 always inherently possessed to preserve the status quo during the
pendency of an appeal; it does not restore jurisdiction to the district
28 court to adjudicate anew the merits of the case. Thus, any action
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1 taken pursuant to Rule 62(c) may not materially alter the status of the
2 case on appeal.
3 Nat. Res. Def. Council, Inc. v. Sw. Marine Inc., 242 F.3d 1163, 1166 (9th Cir.
4 2001); accord Nat'l Grange of the Order of Patrons of Husbandry v. California
5 State Grange, 182 F. Supp. 3d 1065, 1072 (E.D. Cal. 2016). See also In re TFT-
6 LCD (Flat Panel) Antitrust Litig., No. C 07-01827 SI, 2013 WL 6055079, at *1
7 (N.D. Cal. Nov. 13, 2013) (“[W]hile an appeal is pending, the district court may
8 act to preserve the status quo at the time the appeal was filed, and may not take any
9 action that would change the core issues before the appellate court or that could not
10 later be undone on appeal.”)
11 The status quo is that Defendants are enjoined, inter alia, from:4
12 1. The use or operation of any social media site that incorporates
SDCC’s asserted trademarks, or any mark similar thereto, into the
13
name of any comic arts, popular fiction, or subject related event.
14 (ECF Doc. 538, 15:5-10.)
15
2. Using a website domain name or URL that incorporates any of
16 SDCC’s asserted trademarks, or any mark similar thereto, in
relation to any comic arts or popular fiction conventions or subject
17
related events, or feigns a relationship with SDCC through the use
18 of SDCC’s asserted trademarks, “Comic Con,” its phonetic
equivalent or any confusingly similar mark. (Id., 13:1-5, 15:4-20.)
19
20 3. The use of SDCC’s asserted trademarks, or confusingly similar
21 marks, in connection with the promotion, advertising or marketing
of any comic or popular arts convention or event. (Id., 14:25-15:4.)
22
23 Defendants ask this Court to modify the injunction so that they can:
24 1. Maintain certain of their social media sites that incorporate

25 “comiccon” in the name of their event within the URL.
26
27 4 The
status quo is measured at the time the appeal is filed. Nat'l Grange of the
28 Order of Patrons of Husbandry, 182 F. Supp. 3d at 1072.
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1 2. Use the domain names “saltlakecomiccon.com” and

2 “slcomiccon.com” to receive emails.
3 3. Leave intact references to “Salt Lake Comic Con” appearing in

posts on their website and social media sites.
4
5 Defendants are asking this Court to adjudicate anew the merits of the
6 injunction, and enter an injunction that is materially different from the one before
7 the Ninth Circuit on appeal. Because Defendants have appealed the injunction,
8 this Court cannot materially alter its terms and the Court should deny Defendants’
9 request to modify the injunction on this basis alone.
10 The Court should also deny what appears to be Defendants’ alternative
11 request to stay the injunction entirely pending appeal. As a threshold mater, Rule
12 62(c) states: “While an appeal is pending from an interlocutory order or final
13 judgment that grants, dissolves, or denies an injunction, the court may suspend,
14 modify, restore, or grant an injunction on terms for bond or other terms that
15 secure the opposing party’s rights.” Fed. R. Civ. P. 62 (emphasis added). For the
16 reasons stated in Section II above, Defendants’ request to waive or reduce the bond
17 does not protect SDCC’s ability to collect on the judgment.
18 Further, although Defendants’ correctly state the law applicable to a request
19 to stay an injunction under Rule 62(c),5 they have not satisfied any of the four
20 Hilton factors. First, Defendants have not made a strong showing that they are
21 likely to succeed on the merits. On this point, they merely claim that the
22 contentions they made in post-trial motions they lost “at least raise serious
23 questions going to the merits.” (ECF Doc. 553-1, 6:18-24.) Such is purely
24 speculative and conclusory.
25
26 5 See
Saldate v. Adams, 573 F. Supp. 2d 1303, 1315 (E.D. Cal. 2008), quoting
Hilton v. Braunskill, 481 U.S. 770, 776, 107 S.Ct. 2113, 95 L.Ed.2d 724 (1987).
27 Accord, Mytee Prod., Inc. v. Harris Research, Inc., No. 06CV1854 CAB, 2010
28 WL 11509027, at *1 (S.D. Cal. June 25, 2010).
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1 Second, Defendants have not established they will be irreparably harmed

2 without a stay.6 Instead, Defendants establish that if the injunction is stayed, they
3 will continue to infringe SDCC’s asserted trademarks and trade on the goodwill
4 and reputation associated with those marks. Defendants claim there is no way to
5 change the infringing URLs to a different name, no way to migrate their contents
6 to another URL, and if Defendants delete these accounts they will lose hundreds of
7 thousands of followers. Defendants misapprehend the point – they attracted their
8 throngs of followers by operating social media sites with names that infringe
9 SDCC’s trademarks! As the Hon. Cathy A. Bencivengo has noted:
10 The loss of sales dependent on the continued use of an infringing
11 product does not constitute irreparable harm from which the infringer
should be shielded. One who elects to build a business on a product
12 found to infringe cannot be heard to complain if an injunction against
13 continuing infringement destroys the business so elected.
14 The Mytee Prod., Inc. v. Harris Research, Inc., No. 06CV1854 CAB, 2010 WL
15 11509027, at *2 (S.D. Cal. June 25, 2010) (internal quotations and citations
16 omitted). Defendants have been very successful in exploiting SDCC’s trademarks
17 for the past five years to get them to where they are now, but that does not mean
18 they are entitled to continue to infringe SDCC’s marks.
19 The same reasoning applies to Defendants’ claim that they will be
20 irreparably harmed if they cannot receive emails sent to addresses on their
21 infringing domains saltlakecomiccon.com and slcomiccon.com. As for
22 Defendants’ lament that “scrubbing” all references to “Salt Lake Comic Con” on
23 their websites and social media sites would take a lot of work, Defendants have
24
25 “In evaluating the harm that will occur depending upon whether the stay is
6
26 granted, a court may consider: (1) the substantiality of the injury alleged; (2) the
likelihood of its occurrence; and (3) the adequacy of the proof provided.” Saldate,
27 573 F. Supp. 2d at 1315 (internal quotations and citations omitted). The adequacy
28 of the “proof” Defendants offer in support of irreparable harm is abysmal.
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1 only themselves to blame for their pervasive use of SDCC’s trademarks and the
2 burden they now complain will ensue if they are required to remove infringing
3 posts and other content. Defendants’ claim of irreparable harm is specious.
4 Third, a stay of the injunction will substantially injure SDCC. Defendants
5 do not even address this factor. They only claim that SDCC will not be harmed by
6 the “modest exemptions from the injunction” that Defendants have requested. The
7 Court previously determined, when it entered the injunction, that SDCC will likely
8 suffer irreparable harm if Defendants are not enjoined from the infringing use of
9 SDCC’s trademarks and marks confusingly similar thereto. (ECF Doc. 538, 3:14-
10 18; 5:8-28.) Nothing has changed since then, and staying the injunction now will
11 indeed substantially injure SDCC, its goodwill and its reputation,
12 Fourth, the public interest does not support staying the injunction. “There
13 are rare and limited circumstances in which an injunction would be contrary to a
14 significant public interest such as health and safety concerns.” Mytee Prod., 2010
15 WL 11509027, at *3 (internal quotations and citation omitted). Defendants’
16 reliance on gratuitous declarations attesting to laudable benefits their convention
17 confers on the Salt Lake community is not the type of “public interest” that would
18 support staying the injunction.
19 IV. CONCLUSION
20 For all of the reasons stated above, SDCC requests that the Court deny
21 Defendants’ ex parte application in its entirety.
PITTMAN LLP
23
PETER K. HAHN
SAN DIEGO COMIC CONVENTION
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3 and foregoing documents has been served on September 21, 2018, to all counsel of
4 record deemed to have consented to electronic service via the Court’s CM/ECF
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/s/ Michelle A. Herrera
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mkatz@mabr.com
2
3 rsears@mabr.com
4
6
Telephone: (949) 202-1900
7 Facsimile: (949) 453-1104
cveverka@mabr.com
12 Telephone: (435) 252-1360
Facsimile: (435) 252-1361
13
15
16
17
19 DEFENDANTS’ OPPOSITION TO
Plaintiff, PLAINTIFF’S EX PARTE
20
v. APPLICATION TO REGISTER
21 JUDGMENT
22
liability company; and DANIEL FARR and [Declaration of Daniel Farr filed under
23 BRYAN BRANDENBURG, individuals, seal herewith]
24 Defendants.
Courtroom: 4A (4th Floor Schwartz)
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1 Defendants and counterclaimants Dan Farr Productions (“DFP”), Daniel Farr, and
2 Bryan Brandenburg hereby oppose the “… Ex Parte Application … to Certify Judgment
3 for Registration in the District of Utah” (“Application,” ECF Doc. 557) by plaintiff and
4 counterdefendant San Diego Comic Convention (“SDCC”). As shown below:
5 1. Registration should be denied, altogether, at least for the time being;
6 2. If registration is not denied outright then the matter should be re-set for
7 disposition as a regularly noticed motion, not decided ex parte; and
8 3. SDCC’s Application corroborates and even supplements the irreparable harm
9 showing defendants made in their ex parte application to stay enforcement.1
10 I. INTRODUCTION
11 Were there any doubt about SDCC’s intentions, or the effect of allowing
12 enforcement to proceed while defendants’ appeal is pending, the Application has
13 removed it: SDCC wants its judgment registered in Utah immediately so it can use this
14 Court’s attorney-fee award to (1) take the individual defendants’ homes and (2) clean out
15 DFP’s accounts so it is unable to put on its next show and instead is driven out of
16 business—even though the net recovery to SDCC will be less than if DFP survives and
17 continues producing successful events. SDCC is so eager to ruin the individual
18 defendants and destroy DFP that it wants to register the judgment in its existing form,
19 without even waiting for correction of the clerical error identified by the Court in its
20 September 19, 2018 “Order Setting Briefing Schedule.”2
21 Defendants do not dispute the general proposition that “an absence of assets in the
22 judgment forum, coupled with the presence of … assets in the registration forum” 3 might,
23 in some cases, amount to good cause warranting relief under § 1963. But “plaintiff has
24 not provided a case … that stands for the proposition that an automatic presumption of
25
1
See ECF Doc. 553.
26 2
ECF Doc. 554 at 2:6–9.
27 3
See ECF Doc. 557-1 at 3:17–19 (quoting Columbia Pictures Television, Inc. v. Krypton
28 Broad. of Birmingham, Inc., 259 F.3d 1186, 1197–98 (9th Cir. 2001)).

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1 ‘good cause’ is established by the fact that a defendant has a different residence than that
2 of the rendering district.”4
3 DFP generates enough revenue to both continue in business and pay the Court’s
4 attorney-fee award in full, given time. But if execution proceeds immediately, SDCC will
5 recover only a fraction of the judgment before insolvency forces (1) the individual
6 defendants to seek discharge and (2) DFP to seek restructuring—or worse, liquidation—
7 in bankruptcy. Thus premature execution threatens to weaponize this Court’s fee award
8 by converting it from a compensatory instrument into a tool that SDCC can and will use
9 to wreak vengeance. The question now before the Court is whether to facilitate that
10 noxious and unwarranted outcome.
11 II. ARGUMENT
12 A. Registration should be denied, outright.
13 1. Registration should be denied because enforcement should be stayed.
14 Instead of authorizing further execution efforts in Utah, the Court should stay all
15 efforts to collect on the fee awards upon posting of bond sufficient to cover the jury’s
16 damages verdict—as defendants have requested and for reasons they have more fully
17 articulated in their application to stay enforcement.5
18 2. Registration should be denied because the judgment has “a clerical
19 mistake.”
20 Even if collection is not stayed entirely, registration should be denied as premature
21 because the judgment SDCC seeks to register needs to be corrected. According to the
22 Court’s “Order Setting Briefing Schedule,” the existing judgment has “a clerical
23 mistake,” correction of which will require “leave … from the Court of Appeal pursuant to
24 Rule 60(a).”6 Upon correction, the judgment would have to be re-registered; and any
25
26 4
Bingham v. Zolt, 823 F. Supp. 1126, 1136 (S.D.N.Y. 1993).
27 5
See ECF Doc. 553.
28 6
ECF Doc. 554 at 2:8–9.

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1 execution proceedings had in Utah before the judgment is corrected would proceed under
2 a cloud of uncertainty as to its enforceability, at least against the individual defendants
3 and perhaps even against DFP, arising from the acknowledged need for correction. This
4 Court should not burden the Utah court with managing efforts to enforce a judgment that
5 still requires correction—efforts that could be complicated by, inter alia, litigation over
6 threshold enforceability issues.
7 3. Registration should be denied because defendants are not trying to “thwart
8 collection.”
9 SDCC’s contention that “Defendants have no intention of voluntarily paying any
10 part of the judgment and will instead undertake efforts to thwart collection”7 is
11 inadmissible (see evidentiary objections, below), unsupported, and untrue. If the
12 judgment is affirmed on appeal, and defendants are allowed the time they need to
13 generate the money, the judgment will be paid.8 The only thing defendants are trying to
14 thwart is being utterly ruined before they can (1) exercise their constitutional and legal
15 right to meaningful appellate review9 and, if the appeal fails, (2) earn enough money to
16 pay the entire judgment.10
17 Although net revenues from this year’s FanX Salt Lake Comic Convention, for
18 example, are not enough to immediately satisfy the judgment, defendants have paid out
19 about $1.3 million in legal fees associated with this case over the past year and about $2.2
20
21 7
ECF Doc. 557-1 at 2:12–14.
22 8
See Cheminova A/S v. Griffin L.L.C., 182 F. Supp. 2d 68, 80 (D.D.C. 2002) (“in
23 consideration of Griffin’s good faith offer to pay the award or post bond if so ordered by
the Court, Cheminova's request to register the award outside the District of Columbia will
24 be denied”).
25 9
See Providence Journal Co. v. FBI, 595 F.2d 889, 890 (1st Cir. 1979) (“While we give
26 weight to the views of the district court, the Constitution and laws entitle litigants to have
their cases independently reviewed by an appellate tribunal”).
27 10
See the accompanying Declaration of Daniel Farr in Support of Defendants’
28 Opposition to Plaintiff’s Ex Parte Application to Register Judgment (“Farr decl.”) ¶ 2.

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1 million in legal fees over the course of this litigation;11 but illustrating the difference
2 between what DFP can pay over time as opposed to what it can pay right now, it still
3 owes its counsel a little less than a million dollars. By the time the appeal concludes, DFP
4 expects to have paid all its own counsel’s fees; and if it loses the appeal then it will be
5 able to redirect to satisfaction of the fees award what it has been paying to its own
6 counsel to defend (and now appeal) the case—unless premature execution drives DFP out
7 of business.
8 Further underscoring the divergence between DFP’s going-concern value and its
9 cash-on-hand, over the years DFP has been approached several times by various entities
10 interested in acquiring its event. The success of this year’s event re-ignited discussions
11 with one of those potential acquirers, which are now proceeding subject to an NDA. The
12 acquisition prices under discussion would be more than enough to satisfy the judgment.12
13 None of that can happen—DFP cannot generate enough revenues to pay the
14 judgment, and the individual defendants cannot sell DFP for enough to pay the
15 judgment—if premature, bloodthirsty execution drives DFP out of business by depriving
16 it of the seed money it needs to continue putting on shows.13 SDCC, with more cash in
17 the bank than it can use, seems more bent on ruining defendants than collecting on this
18 Court’s judgment—but that is not a proper use of registration under 28 U.S.C. § 1963, or
19 indeed of any aspect of the federal judiciary’s machinery.
20 4. Registration should be denied because SDCC has not presented admissible
21 evidence of the existence or availability of “substantial assets” in Utah.
22 Especially when the evidentiary defects noted below are taken into account, it is
23 apparent that SDCC has not met its burden of proof. Post-appeal, the statute allows
24 registration as of right; but while an appeal is pending, registration may be had only if
25
26 11
Farr decl. ¶¶ 3–6; ECF Doc. 553-5, 3:4–6.
27 12
Farr decl. ¶¶ 7–8.
28 13
See ECF Doc. 553, 6:12–16; ECF Doc. 553-4, 2:20–26; ECF Doc. 553-5. 3:10–16.

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1 ordered “for good cause shown.”14 To show “good cause,” SDCC must show both “an
2 absence of assets in the judgment forum” and also “substantial assets in the registration
3 forum.”15 “SDCC is informed and believes that DFP holds bank accounts in Utah,” and
4 SDCC thinks “it is highly likely that Mr. Brandenburg and Mr. Farr also hold bank
5 accounts in Utah”16—but that is not evidence of anything, let alone that defendants have
6 assets in Utah that are (1) “substantial,” (2) recoverable from the individual defendants as
7 non-exempt assets,17 or (3) are presently sufficient in amount to satisfy the judgment debt
8 in full or even in substantial part.
9 The paucity of admissible proof adduced by SDCC matters, and it is acutely
10 important that the party charged with the burden of proof on “good cause” meet its
11 complete burden. If DFP is forced out of business by the restrictive choking that would
12 accompany immediate and unrestrained Utah judgment enforcement, that destruction
13 would eliminate the potential for any substantial debt repayment altogether—either short
14 term or long term. What SDCC seeks instead of any substantial recovery is a
15 counterproductive rush to disassemble assets that could otherwise be used to generate
16 revenue, not to recover the prompt payment of a judgment for money damages. SDCC
17 has not met its burden of proof. Its Application for ex parte registration should be denied.
18 5. SDCC has not presented admissible evidence.
19 Defendants object to the Declaration of Michelle A. Herrera in Support of Plaintiff
20 San Diego Comic Convention’s Ex Parte Application to Certify Judgment for
21 Registration in the District of Utah (“Declaration,” ECF Doc. 557-2) and its
22 accompanying exhibits as follows:
23
14
24 28 U.S.C. § 1963.
15
25 Columbia Pictures Television, Inc. v. Krypton Broadcasting of Birmingham, Inc., 259
F.3d 1186, 1197–98 (9th Cir. 2001).
26 16
ECF Doc. 557-1 at 4:19–21.
27 17
See, e.g., Utah Code § 78B-5-5-3(3) (establishing homestead exemption “from judicial
28 lien and from levy, execution, or forced sale”).

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1 Defendants object to the Exhibit 2 under FEDERAL RULE OF EVIDENCE 402. This
2 exhibit is offered as evidence of defendants’ assets within the District of Utah. It is a
3 Facebook post, expressing Brandenburg’s appreciation for FanX fans. The sentence
4 quoted by SDCC references the convention’s “success”—but without any indication of
5 his personal measurement or definition of “success,” or any mention of revenue, factors
6 related to revenue, or defendants’ assets.
7 Defendants object to Exhibit 3 under FEDERAL RULES OF EVIDENCE 402, 802. First,
8 Exhibit 3 is inadmissible hearsay as to what Brandenburg said. Second, the attendance
9 estimates attributed to Brandenburg are irrelevant without a sufficient connection to
10 Defendants’ assets.
11 Defendants object to Exhibits 4 through 7 as hearsay and for lack of foundation. See
12 Fed. R. Evid. 802, 901. First, the exhibits are hearsay as to both defendants’ assets and
13 what appears in public records; second, to the extent SDCC seeks to escape the hearsay
14 rule by invoking the public records exception, no foundation has been laid that these are,
15 in fact, public records. In fact the Lexis Current Assert Search explicitly states that the
16 data “is sometimes entered poorly, processed incorrectly and is generally not free from
17 defect” and “should be independent verified.” Indeed no proper foundation has been laid
18 for these documents even as asset searches from Lexis and Westlaw because according to
19 paragraph 6 of the Declaration, the searches were allegedly conducted by someone other
20 than the declarant.
21 Defendants object to the statements in paragraph 2 of the Declaration that
22 “Defendants appear to have no assets in this judicial district,” “Defendants have
23 substantial assets in the state of Utah that may satisfy the judgment,” and “Defendants
24 received significant revenues in connection with that event, and those revenues are a
25 source to satisfy the judgment” under FEDERAL RULE OF EVIDENCE 602 because the
26 declarant has no personal knowledge of, or other basis for testifying to, those supposed
27 “facts.”
28

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1 B. Registration should not be granted ex parte.

2 SDCC has not shown why relief is required ex parte. The defendants’ homes and
3 other real estate on which SDCC is anxious to execute, for example, are durable assets
4 that are not going anywhere. Unless the Court denies registration outright, the defendants
5 respectfully request that the Court set the matter for briefing and disposition as a
6 regularly noticed motion, set for hearing and disposition after the clerical error in the
7 existing judgment is corrected.
8 C. SDCC’s Application further supports defendants’ demonstration that
9 enforcement should be stayed pending appeal, to avoid irreparable harm.
10 As defendants showed in their application to reduce the amount of bond required
11 stay enforcement, execution on the attorney-fee award threatens the defendants with
12 several forms of irreparable injury, including (1) “irreparable harm in the form of
13 employee layoffs, immediate insolvency, and, possibly, extinction”18 and also (2) the
14 destruction of their constitutional and legal “rights to secure meaningful [appellate]
15 review.”19 SDCC’s Application supports that analysis by confirming that SDCC’s
16 enforcement efforts will target all the defendants’ bank accounts,20 and thereby deprive
17 them of the seed money they need to continue putting on the shows that would otherwise
18 fund both continuing business operations and appeal to the Ninth Circuit—and even
19 safeguard SDCC’s interest as judgment creditor by ultimately paying off the entire
20 judgment, if it is affirmed on appeal. SDCC’s Application also discloses yet another form
21
22
23
24 18
Standard Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 515 (Fed. Cir.
25 1990).
19
26 See Providence Journal, 595 F.2d at 890.
20
27 See ECF Doc. 557-1 at 4:20–21 (“SDCC is informed and believes that DFP holds bank
accounts in Utah. [Citation.] As Utah residents, it is highly likely that Mr. Brandenburg
28 and Mr. Farr also hold bank accounts in Utah.”).

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1 of irreparable harm: SDCC wants to use execution on the fee award to take away from
2 them the defendants’ homes (and other real property holdings).21
3 III. CONCLUSION
4 Defendants respectfully request this Court deny SDCC’s Application outright and
5 grant instead their application to reduce bond—or at the very least, set the matter for
6 briefing and disposition in the ordinary course, after the clerical error in the existing
7 judgment is corrected.
8
9 DATED: September 24, 2018 Michael I. Katz
Charles J. Veverka
10
L. Rex Sears
12
14 Attorneys for Defendants and
15 Counterclaimants DAN FARR PRODUCTIONS,
DANIEL FARR, AND BRYAN BRANDENBURG
16
17
18
19
20
21
22
23
24
25 21
See ECF Doc. 557-1 (“Mr. Brandenburg and Mr. Farr own real property and other
26 tangible assets located in Utah upon which SDCC may execute the judgment.”); Park
27 Village Apt. Tenants v. Mortimer Howard Trust, 636 F.3d 1150, 1159 (9th Cir. 2011) (“It
is well-established that the loss of an interest in real property constitutes an irreparable
28 injury.”).

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3 foregoing document has been served on September 24, 2018, to all counsel of record who
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

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EXHIBIT 24
SEALED
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1
2
3
4
5
6
7
10
11 SAN DIEGO COMIC CONVENTION, a Case No.: 14-CV-1865 AJB (JMA)
12
Plaintiff, ORDER DENYING DEFENDANTS’
13 EX PARTE APPLICATION TO
v. STAY ENFORCEMENT OF
14
DAN FARR PRODUCTIONS, a Utah JUDGMENT
15 limited liability company; DANIEL
16 FARR, an individual; and BRYAN (Doc. No. 553.)
17
Defendants.
18
19
Presently before the Court is Defendants’ ex parte application to stay enforcement
20
of judgment. (Doc. No. 553.) Plaintiff opposes the motion. (Doc. No. 560.) As explained
21
more fully below, the Court DENIES Defendants’ ex parte application to stay enforcement
22
of judgment.
23
BACKGROUND
24
The Court is already well-versed as to the events leading up to the institution of this
25
action. Thus, for the purposes of this Order, the Court will only provide a narrow review
26
of this lawsuit’s factual and procedural background.
27
On August 7, 2014, Plaintiff San Diego Comic Convention (“SDCC”) filed a lawsuit
28
1
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1 against Defendants Dan Farr Productions, LLC (“DFP”), Daniel Farr, and Bryan
2 Brandenburg (collectively, “Defendants”) alleging two causes of action: (1) Federal
3 Trademark Infringement, 15 U.S.C. § 1114; and (2) False Designation of Origin, 15 U.S.C.
4 § 1125(a). (See generally Doc. No. 1.) On August 23, 2018, this Court entered final
5 judgment, awarding SDCC both monetary and injunctive relief. (Doc. No. 553-1 at 2; see
6 generally Doc. Nos. 538, 543.) In relevant part, the injunction enjoined Defendants from
7 the following:
8 1. The use of SDCC’s three trademarks asserted in this case,
any confusingly similar marks, or any phonetic
9
equivalents, in the name of any comic or popular arts
10 convention or event or in connection with the promotion,
advertising, products or marketing of any comic or popular
11
arts convention or event.
12
2. The use or operation of any social media site (i.e.
13
Facebook, Twitter, Instagram, Pinterest, or Snapchat) that
14 incorporates into the name of any comic arts, popular
fiction, or subject related event, any of SDCC’s three
15
trademarks asserted in this case, any confusingly similar
16 marks, or any phonetic equivalents.
17
3. Registering or using a domain name that incorporates any
18 of SDCC’s three trademarks asserted in their case, any
confusingly similar mark or any phonetic equivalents in
19
relation to any comic arts or popular fiction conventions
20 or subject related events or in such a way that would lead
consumers to believe that DFP is sponsored by or related
21
to SDCC.
22
(Doc. No. 538 at 14–15.) The final judgment was in the amount of $3,982,486.84. (Doc.
23
No. 543.) On September 14, 2018, Defendants appealed the judgment to the Ninth Circuit.
24
(See generally Doc. No. 549.)
25
On September 18, 2018, Defendants filed the present matter, their ex parte motion
26
to stay enforcement of judgment. (Doc. No. 553.) This Order follows.
27
///
28
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1 LEGAL STANDARD
2 A. Modification or Waiver of the Bond Requirement
3 Federal Rule of Civil Procedure 62(d) permits a stay of the execution of a final
4 judgment pending appeal if the moving party obtains a supersedeas bond. “The bond may
5 be given upon or after filing the notice of appeal or after obtaining the order allowing the
6 appeal. The stay takes effect when the court approves the bond.” Fed. R. Civ. P. 62(d). The
7 Court does have “inherent discretionary authority in setting supersedeas bonds,” Rachel v.
8 Banana Republic, Inc., 831 F.2d 1503, 1505 n.1 (9th Cir. 1987), and may even “waive the
9 bond requirement if it sees fit.” Townsend v. Holman Consulting Corp., 881 F.2d 788, 796–
10 97 (9th Cir. 1989), vacated en banc on other grounds, 929 F.2d 1358 (9th Cir. 1990).
11 “When a party wishes a court to depart from the usual requirement of a full security
12 supersedeas bond, the burden is on the moving party to show reasons for the departure
13 from the normal practice.” Salameh v. Tarsadia Hotel, No. 09-CV-2739-GPC (BLM),
14 2015 WL 13158486, at *2 (S.D. Cal. May 19, 2015) (internal citations omitted). “Although
15 the Ninth Circuit has not articulated what factors should be considered when determining
16 whether to waive the bond requirements, courts within the circuit have often considered
17 those laid out in Dillon v. City of Chicago, 866 F.2d 902 (7th Cir. 1988).” Schutza v. City
18 of San Diego, 13-CV-2992-CAB (KSC), 2018 WL 2018041, at *2 (S.D. Cal. Apr. 30,
19 2018) (citing ThermoLife Int’l, LLC v. Myogenix, Case No.: 13-CV-651-JLS (MDD), 2018
20 WL 1001095, at *1 (S.D. Cal. Feb. 21, 2018) (“In determining whether to waive the posting
21 of a bond, the Court considers what is known as the Dillon factors”); Salameh, 2015 WL
22 13158486, at *2 (citing Dillon factors); Kranson v. Fed. Express Corp., No. 11-CV-5826-
23 YGR, 2013 WL 6872495, at *1 (N.D. Cal. Dec. 31, 2013) (“Courts in the Ninth Circuit
24 regularly use the Dillon factors in determining whether to waive the bond requirement”).
25 The Dillon factors are as follows:
26 (1) the complexity of the collection process; (2) the amount of
time required to obtain a judgment after it is affirmed on appeal;
27
(3) the degree of confidence that the district court had in the
28 availability of funds to pay the judgment; (4) whether the
3
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1 defendant’s ability to pay the judgment is so plain that the costs

of a bond would be a waste of money; and (5) whether the
2
defendant is in such a precarious financial situation that the
3 requirement to post a bond would place other creditors of the
defendant in an insecure position.
4
5 Dillon, 866 F.2d at 904–07.
6 B. Modification or Stay of the Injunction
7 Federal Rule of Civil Procedure 62(c) permits a court to “suspend, modify, restore,
8 or grant an injunction,” while an appeal is pending from a final judgment that grants an
9 injunction. To determine whether a stay pending appeal under Rule 62(c) should be
10 granted, the court must evaluate the following four Hilton factors: “(1) whether the stay
11 applicant has made a strong showing that he is likely to succeed on the merits; (2) whether
12 the applicant will be irreparably injured absent a stay; (3) whether issuance of the stay will
13 substantially injure the other parties interested in the proceeding; and (4) where the public
14 interest lies.” Hilton v. Braunskill, 481 U.S. 770, 776 (1987).
15 DISCUSSION
16 Defendants’ ex parte application requests that the Court reduce the amount of the
17 bond or waive the bond requirement as well as modify or stay the injunction. (Doc. No.
18 553.)
19 A. Modification or Waiver of the Bond Requirement
20 Defendants request that the Court set the bond amount sufficient to secure only the
21 jury’s $20,000 damages award, waive the bond requirement as to the fee award, and stay
22 execution of the fee award pending appeal without a supersedeas bond. (See generally Doc.
23 No. 553-1.) Defendants contend that “DFP’s representatives have made efforts to obtain a
24 supersedeas bond covering the entire amount of the judgment, including the fee awards,
25 but without success.” (Id. at 7.) SDCC asserts that if the Court reduces the bond amount or
26 stays enforcement of the judgment, it will be unprotected and likely will never be able to
27 collect the full judgment amount from Defendants if Defendants are unsuccessful on
28 appeal. (Doc. No. 560 at 3.)
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1 First, the Court notes that Defendants have not provided the Court with any evidence
2 regarding their contention that sureties will not accept DFP’s “going-concern value” as
3 collateral. (Doc. No. 553-1 at 7.) Defendants’ affidavits provided in support simply state
4 that sureties will not accept the going-concern value of DFP as collateral. (Doc. No. 553-4
5 at 3; Doc. No. 553-5 at 4.) Defendants have made no indication of their efforts nor have
6 they provided any support from a bond broker or any objective third party as to whether
7 DFP’s going-concern value is sufficient collateral. Therefore, the Court declines to set
8 bond in an amount sufficient to secure only the jury’s $20,000 damages award.
9 Second, the Court finds that the Dillon factors do not weigh in favor of waiving the
10 bond requirement. Based on Defendants’ ex parte application, the Court is not confident in
11 Defendants’ ability to pay the judgment if they are unsuccessful on appeal, and further,
12 Defendants’ ability to pay the judgment is not so plain that the costs of a bond would be a
13 waste of money. See Dillon, 866 F.2d at 904–07. Defendants plainly admit that “[n]et
14 proceeds from this year’s event are healthy but not enough to pay (or bond) the attorney-
15 fees award.” (Doc. No. 553-1 at 7.) Further, Defendants do not offer real evidence to
16 establish that they are in such a precarious financial situation that the requirement to post
17 a bond would place other creditors of Defendants in an insecure position. See Dillon, 866
18 F.2d at 904–07. Rather, Defendants claim that the net proceeds are needed from this year’s
19 event to fund next year’s event. (Doc. No. 553-1 at 7.) Defendants also assert that DFP will
20 be deprived of the resources necessary to prosecute its appeal. (Id. at 8.) Again, Defendants
21 do not provide the Court with financial statements or any evidence to support their
22 conclusory statements. Further, Defendants have been able to conduct their business and
23 plan events during the course of this present litigation. Indeed, Defendants recently
24 proposed to add two major law firms (Horvitz & Levy LLP and Procopio, Cory,
25 Hargreaves & Savitch LLP) as attorneys as reflected in the Joint Motion to Amend the
26 Protective Order in this case. (Doc. No. 572) Thus, the Court finds Defendants’ arguments
27 for waiving the bond requirement unconvincing.
28 Third, Defendants assert that SDCC will not be prejudiced by staying enforcement
5
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1 of the judgment because SDCC “does not need the money.” (Doc. No. 533-1 at 10–11.)
2 However, “the issue is not whether they will be harmed,” but whether SDCC “will be
3 protected from any loss resulting from being forced to halt execution on the judgment.”
4 See Salameh, 2015 WL 13158486, at *3. Again based on Defendants’ own admissions,
5 SDCC will not be protected from the loss of its judgment if affirmed on appeal since
6 Defendants cannot afford to bond around the fee award. (See Doc. No. 533-1 at 7.)
7 Lastly, Defendants have not offered an alternative plan to a supersedeas bond that
8 would secure SDCC’s interests in recovering the full amount of the judgment. See
9 Salameh, 2015 WL 13158486, at * 2 (citing Bolt v. Merrimack Pharms, Inc., No. S-04-
10 893-WBS DAD, 2005 WL 2298423, at *4 (E.D. Cal. Sept. 20, 2005)). Defendants
11 requesting that the Court set bond in an amount sufficient to secure only the jury’s $20,000
12 damages award is not a sufficient alternative. This does not secure the full amount of the
13 judgment that SDCC was awarded.
14 Therefore, the Court DENIES Defendants’ ex parte application for an order
15 reducing the bond amount and staying enforcement of the judgment without posting a
16 supersedeas bond.
17 B. Modification or Stay of the Injunction
18 Defendants seek to exempt the following from the injunction:
19 1. Maintain and continue operation of social media sites (i.e.
Facebook and YouTube) that contain “comiccon” in the
20
URL.
21
2. Continue to receive emails at domain names
22
“saltlakecomiccon.com” and “slcomiccon.com.”
23
3. Leave intact references to “Salt Lake Comic Con”
24
appearing in legacy content on their website and social
25 media sites.
26
(Doc. No. 553-1 at 2; Doc. No. 560 at 9.) Defendants contend that they will be irreparably
27
harmed if these items are not exempt from the injunction. However, Defendants have failed
28
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1 to satisfy the four Hilton factors.

2 First, Defendants have not made a strong showing that they are likely to succeed on
3 the merits. Defendants contend that their post-verdict motions, that this Court denied,
4 raised “serious questions going to the merits.” (Doc. No. 553-1 at 7.) This conclusory
5 statement does not establish that Defendants are likely to succeed on the merits.
6 Second, Defendants have not established they will be irreparably harmed without a
7 stay or modification. Defendants contend that if forced to delete this content, Defendants
8 will lose followers, disrupt existing relationships, and lose legacy content. However,
9 Defendants attracted those followers and established those relationships based on operating
10 social media sties and websites that infringe on SDCC’s trademarks. See The Mytee Prod.,
11 Inc. v. Harris Research, Inc., No. 06-CV-1854-CAB, 2010 WL 11509027, at *2 (S.D. Cal.
12 June 25, 2010) (“The loss of sales dependent on the continued use of an infringing product
13 does not constitute irreparable harm from which the infringer should be shielded. One who
14 elects to build a business on a product found to infringe cannot be heard to complain if an
15 injunction against continuing infringement destroys the business so elected.”)
16 Third, Defendants contend that SDCC will not be harmed by a stay or modification,
17 but again provide no support for this baldly-asserted contention. (Doc. No. 553-1 at 11.)
18 This Court has previously determined that SDCC will likely suffer irreparable harm if
19 Defendants are allowed to continue to infringe on SDCC’s trademarks when the Court
20 ordered the injunction. (See generally Doc. No. 538.)
21 Finally, Defendants’ argument that the public interest lies in staying the injunction
22 is two-fold. Defendants contend first, that other conventions have an interest in
23 Defendants’ appeal being litigated to conclusion and second, DFP has a beneficial impact
24 on the culture and economy of Utah. (Doc. No. 553-1 at 12.) The Court agrees with SDCC
25 that this is simply not the type of “public interest” that would support staying an injunction.
26 Therefore, the Court DENIES Defendants’ ex parte application for an order
27 modifying or staying the injunction.
28 ///
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Case: 18-56221, 10/10/2018,
Document
ID: 11041285,
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1 CONCLUSION
2 As explained more thoroughly above, the Court DENIES Defendants’ ex parte
3 application to stay enforcement of judgment. (Doc. No. 553.) Further, no later than
4 October 22, 2019, Defendants must be in compliance with the injunction order, (Doc. No.
5 538), and file with the Court and serve on SDCC a report in writing under oath, setting
6 forth the manner and form in which Defendants have complied with the injunction order.
7 IT IS SO ORDERED.
8 Dated: October 5, 2018
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9th Circuit Case Number(s) 18-56221
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(1 of 331)

Case: 18-56221, 10/10/2018, ID: 11041285, DktEntry: 11-1, Page 1 of 73

SAN DIEGO COMIC CONVENTION,

DAN FARR PRODUCTIONS, DANIEL FARR, and BRYAN

APPELLANTS’ EMERGENCY MOTION UNDER CIRCUIT RULE 27-3

HORVITZ & LEVY LLP MASCHOFF BRENNAN PLLC

ATTORNEYS FOR DEFENDANTS-APPELLANTS

CIRCUIT RULE 27-3 CERTIFICATE

Counsel for Plaintiff-Appellee Callie A. Bjurstrom

Facts showing the existence and nature of the emergency

and Bryan Brandenburg, were sued by San Diego Comic Convention

(SDCC) for trademark infringement because they named their comic

convention “Salt Lake Comic Con.” According to SDCC, using a name

that includes “comic con”—a commonplace abbreviation for comic

conventions, attended by fans of comic books and related media—was

infringement. The jury awarded just $20,000 in damages, and found no

willful infringement. The district court nonetheless declared the case

costs, plus injunctive relief irreversibly harmful to DFP. Defendants

The district court has denied a stay of enforcement and ordered

compliance with the injunction by October 22. Practically, this means

to register the judgment in Utah so it can seize DFP’s operating capital

SDCC’s enforcement efforts would likely foreclose appellate review

of the questionable verdict and the erroneous determination that this

case is “exceptional,” purportedly justifying $3.9 million in fees on a

$20,000 judgment. And if SDCC enforces the judgment, DFP’s

changed the name of its future conventions.

This Court should immediately, temporarily stay enforcement to

enforcement of the fees award and key components of the injunction

Notice to other parties

On October 9, 2018, Defendants’ counsel, Rex Sears, emailed

SDCC’s counsel, Michelle Herrera, that Defendants would be filing this

attorney. SDCC’s counsel were served by ECF and separate email.

Relief sought in the district court

On September 18, Defendants applied ex parte for the relief sought

by this motion—a stay of enforcement pending appeal. (Ex. 16.) SDCC

responded on September 21. On October 5, the district court denied a

Defendants therefore request a stay from this Court. Fed. R. App. P.

CIRCUIT RULE 27-3 CERTIFICATE ....................................................... i

A. The verdict: The district court erroneously barred

1. The district court erred in ruling that “[t]here ain’t

2. The district court erroneously excluded additional,

B. The fees order: The award of nearly $4 million in fees on

1. If the verdict falls, so will the fees order. .................... 10

2. The district court erroneously grounded its award

3. The district court erroneously based its fees order

4. The excessive fees award bears no relationship to

C. The injunction: The overbroad injunction is likely to be

II. Immediately enforcing the monetary judgment will destroy

III. The injunction also threatens irreparable harm to

IV. Staying enforcement serves the public interest. ........................... 25

V. The Dillon factors also support a stay. .......................................... 25

CERTIFICATE OF COMPLIANCE WITH WORD LIMIT AND

Declaration of Sean Reyes....................................................................... 29

Declaration of Bryan M. Brandenburg ................................................... 32

Declaration of Daniel Farr ...................................................................... 40

Declaration of William Smelko ............................................................... 42

Declaration of Clarke B. Nelson ............................................................. 45

Advertise.com, Inc. v. AOL Advertising, Inc.,

Amusement Art, LLC v. Life is Beautiful, LLC,

Ault v. Hustler Magazine, Inc.,

BellSouth Corp. v. DataNational Corp.,

Christensen v. Stevedoring Services of America, Inc.,

Dan Farr Productions v. United States District Court,

Dillon v. City of Chicago,