Currently, in the midst of a jury trial in U.S. federal court, the San Diego Comic Convention (SDCC) has had a bumpy ride in its trademark suit in the Southern District of California against Dan Farr Productions and its co-founders for their use of the name Salt Lake Comic Con. On October 26, the Ninth Circuit Court of Appeals reversed the district court’s “gag order,” which essentially prevented the defendants from posting about the case on any social media platform.

Since SDCC formed as a non-profit corporation in 1975, its comic conventions have grown in size and notoriety, with attendance at its three-day conventions reaching well over 100,000. It has several federal registrations for the COMIC-CON trademark.

In its 2014 complaint, SDCC alleged that the defendants had infringed its trademark rights by using the term “Comic Con” to name their event. The defendants, pointing to the hundreds of “comic cons” held across the United States, argued that the term was generic for comic conventions, or had become generic through SDCC’s failure to police its marks and its broad licensing agreements.

As is common in disputes between large and small organizations, the “little guys” took to social media. They claimed that SDCC for brought allegedly fraudulent claims, and gave a play-by-play of the proceedings to their social media following of several thousand users.  SDCC sought a asked the court to bar any posting to social media accusing SDCC of lying or committing fraud and any statements on the issues in the case (relating to genericness, descriptiveness, and abandonment of the COMIC-CON mark).

The district court, recognizing that the gag order was a prior restraint (the most suspect type of restriction of speech under the First Amendment), found it was justified because the defendants’ social media postings posed a “clear and present danger or a serious and imminent threat” to SDCC’s Sixth Amendment right to a fair trial. The court found comments on the defendants’ posts that SDCC had committed perjury and fraud especially troubling.  In addition to barring the defendants from posting about the case on social media, the court also required them to post a “disclaimer” on their social media pages stating that the court had barred comments about the litigation.  The Ninth Circuit reversed this mandate, noting that it “at the very least, incriminates and disparages their previously expressed opinions.”

Concern about a tainted jury pool due to media attention is nothing new, however, the effect of parties’ social media use on the jury pool is more novel. We’ve written previously about jurors and social media, noting that jury instructions have been shown to be effective in deterring juror use of social media during a trial.  Here, too, the Ninth Circuit concluded that voir dire, sequestration, and jury instructions are sufficient for a fair trial.

Specifically, the Ninth Circuit held that, because this case was merely a “run-of-the-mill” trademark dispute, as opposed to “other cases involving attorneys or the press, grisly crimes or national security,” pretrial publicity did not present a serious constitutional issue. The court also pointed out that there was no evidence of serious overlap between the defendants’ roughly 35,200 Twitter followers and the San Diego-area jury pool.

A takeaway from this case for brand owners looking to enforce their trademarks is that they should consider the potential defendants’ social media following. Defendants typically have a First Amendment right to post on social media about the case.  Unless there is tremendous overlap with the defendant’s social media following and the jury pool, a brand owner likely will be unable to challenge the posts.  Therefore, brand owners should include the PR implications of taking action into the analysis of whether and how to address social media savvy infringers.