Farr Motion For New Trial

Case 3:14-cv-01865-AJB-JMA Document 436-1 Filed 01/16/18 PageID.
39556 Page 1 of 31
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
SOUTHERN DISTRICT OF CALIFORNIA
17
18 SAN DIEGO COMIC CONVENTION, a Case No. 14-cv-1865-AJB-JMA
California nonprofit corporation,
19 DEFENDANTS’ MEMORANDUM
Plaintiff, IN SUPPORT OF MOTION FOR
20
v. NEW 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
27
28
Case 3:14-cv-01865-AJB-JMA Document 436-1 Filed 01/16/18 PageID.39557 Page 2 of 31
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
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i Case No. 14-cv-1865-AJB-JMA

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

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

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
24
25
26
27
28
iv Case No. 14-cv-1865-AJB-JMA

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)
1 Case No. 14-cv-1865-AJB-JMA
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.”)
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.”).
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.
Case 3:14-cv-01865-AJB-JMA Document 436-1 Filed 01/16/18 PageID.39565 Page 10 of
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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).
31
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).
31
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.
31
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”).
31
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
31
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.
31
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). .
31
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.”).
31
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”).
31
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.
31
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).
31
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.
31
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
31
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.
31
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.
31
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.
31
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
31
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).
31
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.
31
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
31
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
GILMORE ISRAELSEN & WRIGHT, PLLC
14
15 By: /s/ L. Rex Sears
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.”).
31
1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on January 16, 2018, to all counsel of record who
4 are deemed to have consented to electronic service via the Court’s CM/ECF system per
5 Civil Local Rule 5.4.
6 By: /s/ L. Rex Sears
7
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Case 3:14-cv-01865-AJB-JMA Document 436-1 Filed 01/16/18 PageID.

1 Michael I. Katz (CA State Bar No. 181,728)

5 A. DFP Is Entitled to a Proper Adjudication of its Naked Licensing Defense ....... 2

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

8 Butler v. Home Depot, Inc.

19 Horizon Mills Corp. v. QVC, Inc.

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

1 Madrigal v. Allstate Indemnity Co.

10 Montgomery Ward & Co. v. Duncan

21 Solid 21, Inc. v. Hublot of America

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

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

9 FEDERAL RULE OF EVIDENCE 702......................................................................................... 9

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

1 III. VALIDITY SHOULD BE RETRIED

1 is generic. This is because a trademark owner is not obligated to pursue

1 Academy of Comic-Book Fans & Collectors, with chartered members in 23

1 “somebody with personal knowledge as to the methodology in collecting this,” it erred.

1 IV. INFRINGEMENT SHOULD BE RETRIED

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

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