United States District Court, D. Colorado
ERIK M. UNDERWOOD, a Colorado citizen, and MY24HOURNEWS.COM, INC., a Colorado corporation, Plaintiffs,
BANK OF AMERICA CORPORATION, a Delaware corporation, Defendant.
A. BRIMMER, UNITED STATES DISTRICT JUDGE
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.
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.
FINDINGS OF FACT
Court makes the following findings of fact based on the
parties' filings and the evidence presented at the
November 27, 2018 evidentiary hearing.
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.
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. 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.
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
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. 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.
is no sound associated with the slide. The meeting concluded
without a clear resolution. Plaintiffs showed this E.R.I.C.A.
demo to several other people during development. Docket No.
17-3, 17-4, 17-5. The My24HourNews.com project stalled, and
plaintiffs do not currently use E.R.I.C.A. in association
with that site.
point before March 2015, Mr. Underwood acquired the domain
name “My24Erica.com.” 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. Further, plaintiffs did not establish
that My24Erica.com generates revenue.
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