King of the Mountain Sports v. Chrysler Corp.

• Decision Date: 01 July 1997
• Docket Number: Civil Action No. 96-B-250.
• Citation: 968 F.Supp. 568
• Parties: KING OF THE MOUNTAIN SPORTS, INC., Plaintiff, v. CHRYSLER CORPORATION, a Michigan Corporation; Eclipse Television and Sports Marketing LLC, a Colorado Limited Liability Company; Eclipse Television and Sports Marketing, Inc., a California Corporation; Bogner of America, Inc., a Delaware Corporation; Henry Schneidman, an individual; and Mark Schelde, an individual, Defendants.
• Court: U.S. District Court — District of Colorado

968 F.Supp. 568

KING OF THE MOUNTAIN SPORTS, INC., Plaintiff, v. CHRYSLER CORPORATION, a Michigan Corporation; Eclipse Television and Sports Marketing LLC, a Colorado Limited Liability Company; Eclipse Television and Sports Marketing, Inc., a California Corporation; Bogner of America, Inc., a Delaware Corporation; Henry Schneidman, an individual; and Mark Schelde, an individual, Defendants.

Civil Action No. 96-B-250.

United States District Court, D. Colorado.

July 1, 1997.

COPYRIGHT MATERIAL OMITTED

Donald A. Degnan, Scott S. Havlick, Holland & Hart, Boulder, CO, Lile H. Deinard, Alan Mansfield, David M. Elkins, Greenberg, Traurig, Hoffman, Lipoff, Rosen & Quentel, New York City, for King of the Mountain Sports, Inc.

Richard P. Holme, Glenn K. Beaton, Barry Bartel, Davis, Graham & Stubbs, Denver, CO, for Chrysler Corporation, Eclipse Television and Sports Marketing LLC, Eclipse Television and Sports Marketing, Inc., Henry Schneidman, and Mark Schelde.

Judith Keene Rosenblum, Rosenblum Law Office, Denver, CO, for Bogner of America, Inc.

MEMORANDUM OPINION & ORDER

BABCOCK, District Judge.

Plaintiff asserts claims for trademark infringement under federal and common law, trademark dilution, and violation of the Colorado Consumer Protection Act. Defendants move for summary judgment on all of plaintiff's claims or, in the alternative, for summary judgment on plaintiff's claims for monetary damages. The motion is adequately briefed and oral argument would not materially aid me in deciding it. For the following reasons, I will grant defendants' motion for summary judgment on all of plaintiff's claims.

I.

Plaintiff, King of the Mountain Sports, Inc., is based in Loveland, Colorado, and sells camouflage-patterned natural fiber clothing manufactured by the Pendleton Wool Company. Plaintiff obtained a federal registration for a first stylized trademark on June 4, 1991, and on a second mark on September 28, 1993. The first mark consists of the words "King of the Mountain Sports Inc." in Gothic lettering superimposed on the outline of a mountain and enclosed by a thin, rectangular border. Pltf. Exh. 6. The words "King" and "Sports" appear as the most dominant portions of the mark. The second mark consists of the words "King of the Mountain" in Gothic lettering superimposed over the outline of a mountain. Pltf. Exh. 7. As used, plaintiff's marks generally employ dark lettering and backgrounds of black, brown, and green. See, e.g., Pltf. Exhs. 4, 5. Plaintiff's clothing is marketed primarily through catalog sales and through direct sales at sport shows. Deft. Exh. 11, Cavalier Depo. at 16-17.

Defendant Eclipse Television and Sports Marketing LLC (Eclipse) was formed in 1995 and purchased the right to contract with Chrysler to use the "Jeep KING OF THE MOUNTAIN DOWNHILL SERIES" logo from Eclipse Television and Sports Marketing, Inc. (Eclipse California). Schneidman Aff. at ¶ 3. Eclipse produces sporting events, including the Jeep KING OF THE MOUNTAIN DOWNHILL SERIES (defendants' logo), which consisted of five downhill ski races in the 1995-96 series. Id. at ¶ 4. Defendants Schneidman and Schelde work for Eclipse and were involved in the selection of the defendants' logo. Defendant Chrysler, manufacturer of automobiles, including the "Jeep" line of vehicles, sponsored the series of ski races produced by Eclipse California in the 1993-94 (one race) and 1994-95 (three races) seasons and by Eclipse in the 1995-96 (five races) season.

Defendants' primary logo consists of the word "Jeep" in largest, purple type above the words "KING OF THE MOUNTAIN" in smaller, blue type, and the words "DOWNHILL SERIES" in even smaller, red type at the bottom of the logo. The words are superimposed over a blue outline of a mountain with a picture of a red ski racer in a tucked position and a series of red and orange straight lines stretched out behind him to suggest the speed with which he is racing. Defendants' logo, however, does not always appear in this form. The least colorful version of defendants' logo appearing in the record consists of the words "Jeep King of the Mountain" in white, bold type on a bright blue background. See Pltf. Exh. 25. The words "Downhill Series" were not added until 1994, and are still not always used. See Pltf. Exhs. 15, 25.

Defendants have used the logo to promote the ski races on billboards, ski bibs, magazines, etc. Defendants have also placed the logo on several items of clothing, which have been given away to participants and spectators at the races. See Deft. Exh. 20, Interrog. Answ. Nos. 5, 6. Defendant Bogner manufactures the ski jackets on which defendants placed their logo; however, no such jackets have been sold. Id. Television commentators have worn the Bogner jackets with defendants' logo on television during coverage of the ski races.

Plaintiff asserts claims for (1) trademark infringement under 15 U.S.C. § 1114(1); (2) trademark infringement (false designation of origin) under 15 U.S.C. § 1125(a); (3) trademark dilution under 15 U.S.C. § 1125(c); (4) common law trademark infringement and unfair competition; and (5) violation of Colorado Consumer Protection Act, Colo.Rev.Stat. § 6-1-105(1)(a), (b), (c), (e), (h). Defendants Eclipse and Chrysler moved for summary judgment on all of plaintiff's claims on October 7, 1996. Eclipse California, Schneidman, and Schelde were then added as defendants by plaintiff's first amended complaint, and those defendants moved for summary judgement on January 24, 1997, incorporating the arguments made in the motion and brief of Eclipse and Chrysler. Defendant Bogner joined the summary judgment motion on June 2, 1997. I will treat all defendants as having moved for summary judgment based upon the October 7, 1996, motion and brief and the April 15, 1997, reply brief.

II.

The very purpose of a summary judgment motion is to assess whether trial is necessary. White v. York Int'l Corp., 45 F.3d 357, 360 (10th Cir.1995). Fed.R.Civ.P. 56 provides that summary judgment shall be granted if the pleadings, depositions, answers to interrogatories, admissions, or affidavits show that there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The nonmoving party has the burden of showing that there are issues of material fact to be determined. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). A party seeking summary judgment bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of the pleadings, depositions, interrogatories, and admissions on file together with affidavits, if any, that it believes demonstrate the absence of genuine issues for trial. Celotex, 477 U.S. at 323, 106 S.Ct. at 2552-53; Mares v. ConAgra Poultry Co., Inc., 971 F.2d 492, 494 (10th Cir.1992). The moving party need not negate the nonmovant's claims, but need only point out that "there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 325, 106 S.Ct. at 2554.

Once a properly supported summary judgment motion is made, the opposing party may not rest on the allegations contained in his complaint, but must respond with specific facts showing the existence of a genuine factual issue to be tried. Otteson v. U.S., 622 F.2d 516, 519 (10th Cir.1980); Fed.R.Civ.P. 56(e). These specific facts may be shown "by any of the kinds of evidentiary materials listed in Rule 56(c), except the pleadings themselves." Celotex, 477 U.S. at 324, 106 S.Ct. at 2553. An issue of fact is "genuine" if a "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient" to defeat a properly supported motion for summary judgment. Id. at 252, 106 S.Ct. at 2512. However, summary judgment should not enter if, viewing the evidence in a light most favorable to the nonmoving party and drawing all reasonable inferences in that party's favor, a reasonable jury could return a verdict for that party. Anderson, 477 U.S. at 250-52, 106 S.Ct. at 2511-12; Mares, 971 F.2d at 494.

III.

Defendants argue: (1) there is no likelihood of confusion and, therefore, defendants cannot be liable for federal or common law trademark infringement; (2) plaintiff's mark is not "famous" within the meaning of the anti-dilution statute; and (3) plaintiff cannot show a violation of the Colorado Consumer Protection Act. Therefore, defendants argue that they cannot be liable on any of plaintiff's claims. In the alternative, defendants argue that they cannot be liable for money damages, and plaintiff should be limited to injunctive relief if defendants are found liable. I agree that defendants are not liable on any of plaintiff's claims.

A. Trademark Infringement (Likelihood of Confusion)

Plaintiff agrees that to prevail on its claims for federal or common law trademark infringement it must show that defendants' use of the logo in question is likely to cause confusion. The unauthorized use of "any reproduction, counterfeit, copy, or colorable imitation" of a registered trademark in a way that "is likely to cause confusion or to cause mistake, or to deceive" constitutes trademark infringement under the Lanham Act. 15 U.S.C. § 1114(1)(a); see also Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir.1987) (noting that a similar test is used for false designation of origin claims under 15 U.S.C. § 1125(a)). It is not necessary that the alleged infringer directly compete with the trademark holder to constitute infringement. Amoco Oil Co. v. Rainbow Snow, 748 F.2d 556, 558 (10th Cir.1984); McCarthy on Trademarks and Unfair Competition, 4th Ed., Chp. 24 (1997). Rather, plaintiff need only prove that the public is likely to be confused...