Donchez v. Coors Brewing Co.

• Decision Date: 22 December 2004
• Docket Number: No. 03-1462.,03-1462.
• Citation: 392 F.3d 1211
• Parties: Robert DONCHEZ, Plaintiff-Appellant, v. COORS BREWING COMPANY, a Colorado corporation; Foote, Cone & Belding Advertising, a Delaware corporation, Defendants-Appellees.
• Court: U.S. Court of Appeals — Tenth Circuit

392 F.3d 1211

Robert DONCHEZ, Plaintiff-Appellant, v. COORS BREWING COMPANY, a Colorado corporation; Foote, Cone & Belding Advertising, a Delaware corporation, Defendants-Appellees.

No. 03-1462.

United States Court of Appeals, Tenth Circuit.

December 22, 2004.

COPYRIGHT MATERIAL OMITTED

A. Bruce Jones (Craig M.J. Allely and Nicholas M. Billings with him on the briefs), Holland & Hart LLP, Denver, CO, for the plaintiff-appellant.

K. Preston Oade Jr. (Richard L. Gabriel and Michael J. Hofmann with him on the brief), Holme Roberts & Owen LLP, Denver, CO, for the defendants-appellees.

Before BRISCOE, HARTZ and McCONNELL, Circuit Judges.

BRISCOE, Circuit Judge.

Plaintiff Robert Donchez filed suit against defendants Coors Brewing Company (Coors) and Foote Cone & Belding Advertising, Incorporated (FCB), claiming they violated the Lanham Act, federal common law, and Colorado state law by misappropriating for use in a national advertising campaign a unique beer-vending character he had created, as well as a related term, "beerman," that he alleged was associated with the character. The district court granted summary judgment in favor of defendants on all claims. Donchez appeals. We exercise jurisdiction pursuant to 28 U.S.C. § 1291 and affirm.

I.

Donchez is a Colorado resident. In January 1993, he applied to become a beer vendor for the Colorado Rockies baseball team. The Rockies hired Donchez and assigned him badge number "0001," identifying him as the first licensed beer vendor in Rockies' history. In his work as a vendor, Donchez allegedly "created an image of a distinct, outspoken, quick-witted character" and named him "Bob the Beerman." Aplt.App. at 37. The "Bob the Beerman" character "used beer, peanuts and Cracker Jacks(R) as props to entertain crowds." Id. The "Bob the Beerman" character also used various catch phrases, including the following: "My favorite word in the English language: Beer! Two favorite words: Cold Beer! Three favorite words: Cold Beer Man!" Id. at 448. In the fall of 1993, Donchez filed for service mark protection for the "Bob the Beerman" character pursuant to Colorado law. Donchez' mark, "Bob the Beerman," was registered by the State of Colorado, under the class of "Education and Entertainment Services," on October 7, 1993. Id. at 327.

Acting as "Bob the Beerman," Donchez worked as a vendor not only at Rockies' baseball games, but also at "football, hockey and basketball events" in the Denver area and in other cities. Id. at 37. Donchez also "provided entertainment services... on television, radio and [in] print as well as appearing live at a number of charitable and other events" in the Denver area and other cities. Id. In 1994, Donchez authored a book titled "A View from the Stands: A Season with Bob the Beerman," that described his character's antics and experiences during his first season vending beer at Rockies' baseball games. Id. at 40. In 1995, Donchez "starred and collaborated in and co-directed a video production entitled `Ultimate Bob: Vendors: A Profile in Courage.'" Id. at 40.

During the course of his work for the Rockies, Donchez "was encouraged by Steve Saunders, an employee of Coors, to contact Coors ... to see if Coors would be interested in a promotional theme based upon" his "Bob the Beerman" character. Id. at 41. Saunders assisted Donchez in arranging a meeting with Integer Group, LLC (Integer), a company that performed local promotions work for Coors, in January 1996 in Golden, Colorado. During the meeting, Donchez suggested to Tom Hohensee, an Integer employee, that Coors should feature his "Bob the Beerman" character in an advertising campaign. In support of that suggestion, Donchez appeared in his Bob the Beerman costume and gave Hohensee a copy of his book and videotape. However, Coors and Integer ultimately decided not to enter into any type of contractual arrangement with Donchez.¹

In April 1997, Coors began a national television advertising campaign for its Coors Light product utilizing "many different actors and an actress portraying beer vendors." Id. at 279. The advertisements featured the vendors "interacting with the crowd in amusing ways at sporting events." Id. "Some of the vendors call[ed] themselves or [we]re referred to by customers as `beerman,' or `the beerman,' or `Hey, beerman,' or `Hey, beerstud.'" Id. The advertisements were produced by defendant FCB.

According to Donchez, friends, acquaintances, and fans at the Rockies' ballpark began making comments to him regarding the Coors advertising campaign. Some, according to Donchez, assumed Coors had purchased his character, or that Donchez was somehow affiliated with the Coors' advertising campaign, while a few assumed he was copying the Coors' advertisements.

On March 19, 1999, Donchez filed suit against Coors and FCB asserting claims for violation of the common law right of publicity, service mark infringement under Colorado law, common law service mark infringement, unfair competition in violation of the Lanham Act, violation of the Colorado Consumer Protection Act, unjust enrichment, and unfair misappropriation and exploitation of business value. Following extensive discovery, defendants moved for summary judgment. On September 23, 2003, the district court granted defendants' motion with respect to all claims.

II.

Donchez contends the district court erred in granting summary judgment in favor of defendants on all his claims. In particular, Donchez contends the district court "usurped the role of the jury" by "ma[king] credibility assessments and weigh[ing] the evidence relevant to each of [his] claims." Aplt. Br. at 15. Further, Donchez contends the district court "decided disputed fact issues such as whether BEERMAN is generic both generally and as used by Defendants and whether Defendants' advertisements appropriated [his] likeness." Id. Lastly, Donchez contends the district court "extended its initial findings to [his] other state law claims ... without properly analyzing the distinct elements and nature of these claims." Id.

We review de novo a district court's grant or denial of summary judgment, applying the same standard as the district court. See Alexander v. Oklahoma, 382 F.3d 1206, 1215 (10th Cir.2004). Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). We "view the evidence, and draw reasonable inferences therefrom, in the light most favorable to the nonmoving party." Combs v. Pricewaterhousecoopers, LLP, 382 F.3d 1196, 1199 (10th Cir.2004).

Service mark-related claims

In the final pretrial order, Donchez characterized three of the claims in his complaint as being dependent on his service mark rights. These three claims included: service mark infringement under Colo.Rev.Stat. § 7-70-111 (the second claim for relief in the complaint); common law service mark infringement (the third claim for relief in the complaint); and unfair competition under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (the fourth claim for relief in the complaint). We address these claims in reverse order.

Unfair competition in violation of § 43(a) of Lanham Act

"Section 43(a) of the Lanham Act, prohibiting the use of false designations of origin, protects against service mark infringement even if the mark has not been federally registered." U.S. Search, LLC v. U.S. Search.com, Inc., 300 F.3d 517, 522 (4th Cir.2002). To prevail in an action for unfair competition under § 43(a), "a plaintiff must establish that (1) her mark is protectable, and (2) the defendant's use of [an identical or similar] mark is likely to cause confusion among consumers." Packman v. Chicago Tribune Co., 267 F.3d 628, 638 (7th Cir.2001); see U.S. Search, 300 F.3d at 523. For the reasons that follow, we conclude Donchez has failed to present sufficient evidence to allow a reasonable jury to find in his favor on the first of these elements, and thus the district court properly granted summary judgment in favor of defendants.

Federal law defines a service mark to include "any word ... or any combination thereof ... used by a person ... to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown." 15 U.S.C. § 1127. To be protectable, "a mark must be capable of distinguishing the products [or services] it marks from those of others." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir.1999). "There are five different categories of terms with respect to the protection of a mark: generic, descriptive, suggestive, arbitrary, and fanciful." Id. The five categories have been succinctly described in the following manner:

A mark is generic if it is a common description of products [or services] and refers to the genus of which the particular product [or service] is a species. A mark is descriptive if it describes the product's [or service's] features, qualities, or ingredients in ordinary language or describes the use to which the product [or service] is put. A mark is suggestive if it merely suggests the features of the product [or service], requiring the purchaser to use imagination, thought, and perception to reach a conclusion as to the nature of the goods [or services]. An arbitrary mark applies a common word in an unfamiliar way. A fanciful mark is not a real word at all, but is invented for its use as a mark.

Id.

These categories "reflect both the eligibility for protection and the degree of protection accorded" a particular mark. Id."If a term is generic (the common name for a product or service), it is ineligible for protection" because "[t]he public has an inherent right to call a product or service by its...