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Underwood v. Bank of America Corp.

United States District Court, D. Colorado

December 19, 2018

ERIK M. UNDERWOOD, a Colorado citizen, and MY24HOURNEWS.COM, INC., a Colorado corporation, Plaintiffs,
v.
BANK OF AMERICA CORPORATION, a Delaware corporation, Defendant.

          ORDER

          PHILIP A. BRIMMER, UNITED STATES DISTRICT JUDGE

         This matter comes before the Court on Plaintiff's Motion and Memorandum of Law Pursuant to Fed.R.Civ.P. 65 [Docket No. 7]. The Court has jurisdiction pursuant to 28 U.S.C. § 1331.

         I. BACKGROUND

         Plaintiffs Erik M. Underwood and My24HourNews.com, Inc. filed this action on September 11, 2018. Docket No. 1. Plaintiffs assert five claims for relief: (1) false association under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A); (2) common law service mark infringement; (3) common law unfair competition; (4) unfair or deceptive trade practice under the Colorado Consumer Protection Act, Colo. Rev. Stat. § 6-1-101 et seq.; and (5) service mark infringement under Georgia law, Ga. Code Ann. § 10-1-450. Id. at 5-10, ¶¶ 31-73. On September 12, 2018, plaintiffs filed a motion for a preliminary injunction on their federal false association claim. Docket No. 7. The Court held an evidentiary hearing on the preliminary injunction motion on November 27, 2018. Docket No. 38. The Court heard testimony from the following witnesses: (1) Todd Olson, former senior director for professional services at Verio, Inc.; (2) plaintiff Erik M. Underwood; (3) Dr. Deborah Jay, principal of Jay Survey Strategics; and (4) Theresa Payton, chief executive officer at Fortalice Solutions. Id.

         II. FINDINGS OF FACT

         The Court makes the following findings of fact based on the parties' filings and the evidence presented at the November 27, 2018 evidentiary hearing.

         Plaintiff My24HourNews.com is a media technology company based in Colorado. Docket No. 1 at 2, ¶ 10. Plaintiff Erik M. Underwood is the creator and president of My24HourNews.com. Id.; Docket 17-1 at 1, ¶ 1. Mr. Underwood testified that, beginning in about 2006, he developed an idea to present news to the public in forty seconds or less as part of a smart phone or tablet application. As part of that idea, Mr. Underwood purchased the domain name “My24HourNews.com” in 2008 and developed a business plan in approximately mid-2010. Exh. 24.

         Another part of Mr. Underwood's idea was E.R.I.C.A. (Electronic Repetitious Informational Clone Application). Mr. Underwood conceived of E.R.I.C.A. as a “fully interactive” virtual news anchor who would “give customizable, regional news” as part of My24HourNews.com. Id. at 12. In his business plan for My24HourNews.com, Mr. Underwood stated that E.R.I.C.A. “will talk, speak, and have a personality; and the user can customize the news that she reports.” Id. Mr. Underwood further described E.R.I.C.A. as “fully interactive, ” “a type of artificial intelligence, ” and “ultimately a soul without a body.” Id. In October 2010, Mr. Underwood filed a Georgia trademark registration application for “E.R.I.C.A. (Electronic Repititious Informational Clone Application).” Exh. M.[1] On the application, Mr. Underwood described E.R.I.C.A. as “a multi national computer animated woman that has slanted blue eyes and full lips.” Id. Mr. Underwood stated that the E.R.I.C.A. service mark was being used in connection with “verbally tell[ing] the news and current events through cell phone[s] and computer applications.” Id. Mr. Underwood attached an image of E.R.I.C.A., a computer-animated female head, to the trademark application. Id.

         In spring 2011, plaintiffs began to work with Verio, Inc., to build out their broadcast platform. Docket 17-2 at 2, ¶ 6. Verio is a provider of online business solutions. Id. at 1, ¶ 5. At the time, Verio was acting as a subcontractor for AT&T for web-based services. Id. Todd Olson, who was Verio's senior director of professional services at the time, testified that he worked with plaintiffs to develop My24HourNews.com and E.R.I.C.A.

         On May 31 and June 1, 2012, plaintiffs met with AT&T representatives in Atlanta, Georgia with the intent of securing investment funds to launch My24HourNews.com and E.R.I.C.A. Docket 17-2 at 5-6 (meeting agenda). Mr. Olson and Mr. Underwood testified that they presented a “demo” of E.R.I.C.A. at this meeting. At the evidentiary hearing, the Court viewed this demo, which consists of a Powerpoint slide deck that runs for about 45 seconds.[2] The slide first shows a wire-frame image of a person. Next, the image of E.R.I.C.A. from the Georgia trademark registration enters the screen and settles on top of the wire-frame image. This image does not move and is not animated. Finally, a text bubble appears next to the image of the woman. The text bubble reads:

Hello My Name Is E.R.I.C.A., Welcome To My24HourNews.Com. I Can Offer You Varied News and Current Events of Your Region Or Country. In Addition, Specify Your Particular Interests, Such As, International Events, Political News, Financial World Markets, Weather, Sports, Or Entertainment.

         There is no sound associated with the slide. The meeting concluded without a clear resolution.[3] Plaintiffs showed this E.R.I.C.A. demo to several other people during development. Docket No. 17-3, 17-4, 17-5.[4] The My24HourNews.com project stalled, and plaintiffs do not currently use E.R.I.C.A. in association with that site.

         At some point before March 2015, Mr. Underwood acquired the domain name “My24Erica.com.”[5] The website currently operates as a searchable movie database. Exh. 3. Mr. Underwood testified that he pays a licensing fee to a company called CodeCanyon for the right to post the code for a movie database called The Movie Database on My24Erica.com. Mr. Underwood testified that users are able to create an account on the site to bookmark their favorite movies. Plaintiffs did not establish how many users the site has or how much web traffic the site receives.[6] Further, plaintiffs did not establish that My24Erica.com generates revenue.[7]

         Mr. Underwood testified that a “first-generation” version of E.R.I.C.A. functions on My24Erica.com. The home page of the website features the image of E.R.I.C.A. included in the Georgia trademark registration. Id. The website includes a page called “About ERICA” with the same image. Exh. 12. Mr. Underwood testified that currently E.R.I.C.A. functions as a base-level artificial intelligence personal assistant that can offer suggestions of her favorite movies. The Court assigns little weight to Mr. Underwood's testimony on this point. Plaintiffs offered no other evidence demonstrating that E.R.I.C.A. functions as Mr. Underwood described, such as screenshots or demonstrations showing that kind of functionality. The content on My24Erica.com is licensed from CodeCanyon, and plaintiffs have not described precisely what E.R.I.C.A. does with that content. Further, it is unclear to the Court how users would associate the search function on the site with “E.R.I.C.A.” The search bar is beneath the image of E.R.I.C.A., but without any text connecting the image to ...


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