Hidden San Diego Fights Trademark Rights With Local Magazine 0

Last September, San Diego Magazine published an issue that used the name “Hidden San Diego” on its cover, an editorial decision that sparked a dispute between the magazine and Hidden San Diego. The latter is a website that has been sharing special places and landmarks in San Diego since 2010. Jessica Johnson, the founder of Hidden San Diego, told Tellus News Digest that San Diego Magazine had asked her to do an interview about a “Secret San Diego” story in August of 2014.  Johnson replied three weeks later, but the magazine had already gone ahead with using the name”Hidden San Diego” on its cover without her consent.

“I emailed the editor-in-chief asking if I could get a courtesy link to my website because it obviously inspired their article,” Johnson said. “She responds no and that I am not trademarked so they are free to do whatever they want. A few days after I emailed her, they changed the online article to ‘Secret San Diego’ instead of ‘Hidden San Diego’.”

Even though Johnson has owned the domain name “HiddenSanDiego.net” since 2010, as indicated on Whois.com, that did not stop San Diego Magazine from filing a trademark application for the name “Hidden San Diego” on September 12. In response, Johnson filed for trademark rights 10 days later.  The case is still in progress and the outcome is unknown.

“The basic rule in trademark law is that the person who uses the mark first (called priority) has right to stop anyone who is using something confusingly similar,” said Rachel Wenzel, an intellectual property law attorney who represents Johnson. “At the same time, there are a lot of factors and defenses that may be at play.”

“Hidden San Diego was inspired many, many years before I even created the website,” Johnson told Tellus. “I would constantly explore hidden and creepy areas, photograph them, and then write about them on my blog. As my blog became more popular, I decided to create a website to make it more official. Back then there were little to no resources for exploring the off-beaten paths in San Diego.”

Last December, Johnson posted the cover of San Diego Magazine on Hidden San Diego’s Facebook page, which instigated a barrage of comments and criticism against the local magazine by Hidden San Diego fans. Erin Chambers Smith, the current editor-in-chief of San Diego Magazine, publicly responded on the magazine’s website a day after Johnson posted the cover and an angry fan posted on Twitter. She argued that “Hidden San Diego” was not trademarked nor was it an original idea, citing seven sources that also used the idea of “secret” or “hidden” San Diego. Smith did not reply to Tellus‘ email regarding the dispute.

This case caught the attention of two business law attorneys, Nasir Pasha and Matt Staub, who discussed it in a podcast posted on pashalaw.com.  In the podcast, they point out that San Diego Magazine filed under a magazine class while Johnson filed under the “Education and Entertainment Services” class. Whether this would affect the usage of the name “Hidden San Diego” or not has yet to be determined.

A similar dispute happened between Hidden LA and Los Angeles Magazine in 2011 when the magazine published a “Hidden L.A. cover package,” which was briefly covered in LA Observed. W. Lynn Garret, who founded Hidden LA, had already trademarked the name before Los Angeles Magazine published it without her consent or approval. In 2013, Garret sued Los Angeles Magazine for trademark infringement after the magazine used “Hidden LA” again. LA Observed wrote that Hidden LA has more than 270,000 likes (in March 2013) and “it’s easy to see why Los Angeles would want to ride Hidden LA’s media jet stream.”

While Hidden San Diego currently has about 7,500 likes on Facebook, Johnson said that Hidden San Diego gets about 160,000 views per month on her website with a faithful following. Part of the reason that she started Hidden San Diego was to motivate people to go outdoors and explore the city. “I noticed that so many people were getting into drugs or just bored and dying for entertainment,” Johnson said. “I wanted to help combat these issues by re-inspiring people to get outdoors, to reconnect with nature, and to see all the beauty this city has to offer.”