* This order and judgment is not binding precedent, except under the doctrines of

law of the case, res judicata, and collateral estop pel. The court generally disfavors the citation of orders and judgments; nev ertheless, an order and judgment may be cited under the terms and conditions of 10 TH C IR
. R. 36.3.

** The Honorable Robert C. Brack, United States Distr ict Judge for the District of New Mexico, sitting by designation. 

## F I L E D United States Court of Appeals Tenth Circuit 

### August 15, 2005 

### PATRICK FISHER Clerk UNITED STATES COURT OF APPEALS

TENTH CIRCUIT

PROFESSIONAL BULL RIDERS, INC., a Colorado corporation,Plaintiff-Appellant/CrossAppellee,

v. AUTOZONE, INC., a Nevada corporation,Defendant-Appellee/CrossAppellant, SPEEDBAR, INC.,Intervenor-CounterclaimantCross-Appellant. Nos. 03-1544 and 04-1029 D.C. No. 02-D-841 (DES) (D. Colorado)

ORDER AND JUDGMENT *

Before HENRY, LUCERO, Circuit Judges, and BRACK , District Judge. **-2-

Professional Bull Riders, Inc. (PBR) filed this bre ach of contract action against AutoZone, arguing that AutoZone entered int o and then breached an oral agreement to sponsor certain PBR events during 2001 and 2002: the Bud Light Cup Professional Bull Rider Series and the Related Championship Finals. In response, AutoZone argued that the agreement could not be performed within a year and was therefore void under the Colorado statute of frauds, Colo. Rev. Stat. § 38-10-112. AutoZone and Speedbar, Inc. (its whol ly- owned subsidiary and the owner of the trademark “AutoZone”) also asserted co unterclaims for service mark infringement, trademark infringement, unfair compet ition, and service mark dilution. The district court granted summary judgment to Auto Zone on PBR’s breach of contract claim. However, as to the trademark in fringement counterclaims, the court ruled against AutoZone and Speedbar, granting summary judgment to PBR on the grounds that AutoZone and Speedbar had faile d to offer any evidence that they had suffered actual damages. The parties appealed, and, in a prior order, we certified a question involving the Colorado statute of frauds to the Col orado Supreme Court. See Professional Bull Riders, Inc. v. AutoZone, Inc. , Nos. 03-1544, 04-1029, 2005 WL 34494801 (10th Cir. Feb 03, 2005). The Colorado Supreme Court has now answered our question. See Professional Bull Riders, Inc. v. AutoZone, Inc. , 113-3-

P.3d 757 (Colo. 2005). In light of that answer, we conclude that the district court erred in granting summary judgment to AutoZone on P BR’s breach of contract claim. We further conclude that the district courterred in granting summary judgment to PBR on the counterclaims asserted by AutoZone and Speedbar. We therefore reverse the district court’s decisions an d remand for proceedings consistent with this order and judgment.

I. BACKGROUND In the years leading up to this dispute, AutoZone s ponsored events conducted by PBR. For the years 2001 and 2002, PBRprepared a proposed written agreement to provide for AutoZone’s sponsor ship. Section I of that document states: The term of this Agreement shall commence as of December 29, 2000 and end on December 31, 2002, unl ess terminated earlier in accordance with the provision s of this Agreement. Notwithstanding the preceding sentence, AutoZone may, at its option, elect to terminate thi s Agreement and its sponsorship of PBR and the [Bud L ight Cup Professional Bull Rider] Series and the Related effective as of the end of the [Championship] Final s in 2001, by giving PBR written notice of termination b y no later than August 15, 2001. Aplt’s App. at 18.-4-

AutoZone never executed this document. However, PB R alleges that by its actions, AutoZone tacitly accepted its terms and th at, as a result, the parties entered into an oral agreement mirroring the terms set forth in writing. There appears to be a factual dispute as to the com munications between the parties during 2001. However, it appears undispute d that, in January 2002, AutoZone notified PBR that AutoZone would not be sp onsoring PBR events in 2002. Despite this notice, AutoZone alleges, PBR c ontinued to use AutoZone’s protected trade name and service mark. PBR then filed this action against AutoZone, allegi ng breach of the oral sponsorship agreement. Speedbar, a wholly-owned su bsidiary of AutoZone and the owner of the trade name and service mark “AutoZ one,” intervened. AutoZone and Speedbar filed counterclaims alleging service a nd trademark infringement, unfair competition, and service mark dilution underthe Federal Trademark Act, 15 U.S.C. §§ 1114 and 1125 and the common law. The y contended that PBR had displayed the “AutoZone” mark without permission. They sought declaratory and injunctive relief and an order that PBR return prof its resulting from alleged unauthorized used of the “AutoZone” mark. As we have noted, the district court granted summary judgment to AutoZone on PBR’s breach of contract claim. The co urt applied the Colorado statute of frauds, Colo. Rev. Stat. § 38-10-112, wh ich provides, in part:-5- (1) Except for contracts for the sale of goods . . . and lease contracts . . . , in the following cases every agre ement shall be void, unless such agreement or some note o r memorandum thereof is in writing and subscribed by the party charged therewith: (a) Every agreement that by the terms is not to be performed within one year after the making thereof.
Citing the provision of the alleged PBR-AutoZone ag reement that allowed AutoZone to terminate the agreement after one year, the district court reasoned that “‘the fact either party has an option to put a n end to the contract within a year does not take it out of the operation of the statut e if, independent of the exercise of such power, the agreement cannot be performed wi thin a year.” Aplt’s App. at 114-15 (Order, filed Dec. 18, 2003) (quoting Klinke v. Famous Recipe Fried Chicken, Inc. , 600 P.2d 1034, 1038 (Wash. Ct. App. 1979)). Because the alleged agreement was not in writing, the district court co ncluded, the agreement was void under § 38-10-112(1)(a). The district court also granted summary judgment to PBR on AutoZone’s and Speedbar’s counterclaims. The court reasoned that AutoZone and Speedbar had failed to offer any evidence that they had suff ered actual damages. The parties appealed, and we then certified the fol lowing question to the Colorado Supreme Court:

Under Colo. Rev. Stat. § 38-10-112(1)(a), is an ora l agreement void when: (1) the agreement contemplates-6- performance for a definite period of more than one year but (2) allows the party to be charged an option to terminate the agreement by a certain date less than a year from the making of the agreement and when (3) the p arty to be charged has not exercised that option to term inate the agreement?
See Professional Bull Riders, Inc. v. AutoZone, Inc. , Nos. 03-1544, 04-1029, 2000 WL 34494801 (10th Cir. Feb 03, 2005). The Colorado Supreme Court has now answered our que stion. See Professional Bull Riders , 113 P.3d at 759-61. Analyzing the alleged agreem ent between PBR and Autozone, the court concluded that it “expressly provided, by its own terms, an alternative performance that could be completed in less than a year.” Accordingly, the statute of frauds did not apply:

Because exercise of the option to terminate could reasonably be construed, by the terms of the agreem ent, to constitute complete performance of AutoZone’s sponsorship obligation, whether or not it effective ly exercised that option, nothing in § 38-10-112(1)(a), C .R S. (2004), renders the agreement void. We therefore an swer the certified question in the negative. Professional Bull Riders , 113 P.3d at 761-62.

II. DISCUSSION PBR challenges the district court’s application of the Colorado statute of frauds, Col Rev. Stat. § 38-10-112(1)(a), to forecl ose in breach of contract claim. In their cross-appeal, AutoZone and Speedbar mainta in that the district court erred-7-

in ruling that they could not prevail on their coun terclaims because they had failed to offer evidence of actual damages. We review the district court’s grant of summary jud gment de novo, applying the same legal standard used by the district court. Coldesina v. Estate of Simper , 407 F.3d 1126, 1131 (10th Cir. 2005). “Summary jud gment is appropriate ‘if . . . there is no genuine issue as to any material fact a nd . . . the moving party is entitled to a judgment as a matter of law.” Fed. R . Civ .P. 56(c). Because we are sitting in diversity, we look to the law of the for um state, here Colorado. Houston
Gen. Ins. Co. v. Am. Fence Co. , 115 F.3d 805, 806 (10th Cir.1997).

A. PBR’s Breach of Contract Claim In challenging the district court’s ruling on its b reach of contract claim, PBR urges this court to adopt the view that a contr act subject to a right of termination by either party within one year is not within the statute of frauds, even though, absent the termination clause, the contractcould not be performed within one year. In response, AutoZone acknowledges a spl it of authority on this issue. However, it contends, the better view is that a rig ht to terminate an oral agreement within one year does not render that agreement enfo rceable if, absent the termination clause, the agreement could not be perf ormed within one year.-8-

In considering the facts of this case and respondin g to our certified question, the Colorado Supreme Court concluded that the alleg ed agreement was not barred by the statute of frauds, though its reasoning diff ered from PBR’s. The court concluded that the alleged oral agreement between P BR and AutoZone “provided AutoZone with two alternative ways of satisfying it s obligations as contemplated by the agreement.” Professional Bull Riders , 113 P.3d at 761. In particular, “[a]lthough the agreement contemplated performance for two seasons . . . , if AutoZone chose that option, it also contemplated th at AutoZone could completely perform its obligation by sponsoring PBR for one fu ll season.” Id. The fact that AutoZone could fully perform the agre ement within one year was controlling: Under the circumstances of this case, it is

unnecessary for us to decide whether an option to t erminate a contract must always be construed as an alternati ve and sufficient means of performance. Where the terms of an agreement can fairly and reasonably be interpreted to define alternate obligations, one or more of which can be performed within one year, the agreement in questio n may be fairly and reasonably interpreted such that it m ay be performed within one year. The one-year provision therefore does not bring such an agreement within t he statute of frauds. And at least where, as here, the word “terminate” not only applies to the agreement itsel f but expressly limits the electing party’s performance o bligation to a specific task-sponsorship for one season-an interpretation of the election as defining alternat e obligations is not only fair and reasonable, it is clear. Id. (citation omitted).-9-

The Colorado Supreme Court’s ruling establishes that the district court erred in holding that the statute of frauds rendered the alleged agreement void. Accordingly, we must remand this case for further p roceedings on PBR’s breach of contract claim.

B. AutoZone and Speedbar’s Cross-Appeal on the Trademark In fringement Counterclaims In their cross-appeal, AutoZone and Speedbar argue that the district court erred in concluding that their trademark and servic e mark counterclaims should be dismissed because they failed to provide evidence o f actual damages. On this point, the law is with AutoZone and Speedbar. Federal trademark laws provide for injunctive relief. See 15 U.S.C. § 1116(a); see also Caesars World, Inc. v. Venus Lounge, Inc. , 520 F.2d 269, 274 (3d Cir. 1975) (noting that “[i]f the record in the district court contains no evidence of actual damage or actual profit in dollars and cents no monetary awar d may be made . . . and the trademark owner must be content with injunctive rel ief”). Moreover, despite a lack of actual damages, AutoZon e and Speedbar may also seek an accounting of PBR’s profits. As this circuit explained, “the unavailability of actual damages as a remedy . . . does not preclude plaintiff from recovering an accounting of defendant’s profits.” Bishop v. Equinox Int’l Corp. , 154 F.3d 1220, 1223 (10th Cir. 1998) (internal quot ation marks omitted). Even in-10-

the absence of actual damages, an accounting may pr event unjust enrichment of the infringing party and may also deter willful violati ons of the trademark laws. Id. Although it acknowledges these principles, PBR nev ertheless contends that the district court’s grant of summary judgment agai nst AutoZone and Speedbar should be affirmed. According to PBR, the districtcourt implicitly made an equitable determination that an accounting of PBR’s profits was not warranted because PBR’s alleged violation was not willful. S ee Aplt’s Reply Br. at 14-17. PBR also argues that the record establishes that ithas ceased using the “AutoZone” mark and that injunctive relief is thus not warrant ed. PBR’s argument reads too much into the district cou rt’s brief comments. We see no indication that the district court made find ings as to the willfulness of PBR’s alleged conduct. Moreover, the record before us do es not allow us to reach a definitive conclusion on that issue or on the matte r of injunctive relief. Accordingly, we conclude that the district court er red in granting summary judgment to PBR on AutoZone and Speedbar’s counterc laims.

III. CONCLUSION We REVERSE the district court’s grant of summary ju dgment to AutoZone and Speedbar on PBR’s breach of contract claim, and we REVERSE the district court’s grant of summary judgment to PBR on AutoZon e and Speedbar’s-11-

counterclaims for service mark infringement, tradem ark infringement, unfair competition, and service mark dilution. We REMAND the case for further proceedings consistent with this order and judgment

.

Entered for the Court,

Robert H. Henry United States Circuit Judge